Ex Parte Nymark et alDownload PDFPatent Trial and Appeal BoardDec 27, 201612351016 (P.T.A.B. Dec. 27, 2016) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/351,016 01/09/2009 Niels NYMARK 042933/407267 7965 10949 7590 12/29/2016 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER CHOWDHURY, AFROZA Y ART UNIT PAPER NUMBER 2628 NOTIFICATION DATE DELIVERY MODE 12/29/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIELS NYMARK and THOMAS BOVE Appeal 2016-001564 Application 12/351,016 Technology Center 2600 Before ROBERT E. NAPPI, NORMAN H. BEAMER, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) from a final rejection of claims 16, 17, 19, 20, and 22^40, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Nokia Technologies Oy. App. Br. 2. Appeal 2016-001564 Application 12/351,016 STATEMENT OF THE CASE The Invention According to the Specification, the invention relates to “a mobile electronic device that generates a signal when an event occurs in said device in order to inform the user of the device about the occurrence of the event.” Spec. 11,2 The device includes “an orientation sensor or a movement sensor” and “is configured to adapt the signal that is generated upon occurrence of an event when the device detects that the orientation of the device is changed or that the device is moved.” Abstract; see Spec. 14. In addition, the device “enabl[es] a portion of a user interface that was previously disabled in response to a device generated event.” App. Br. 4. Exemplary Claim Independent claim 16 exemplifies the subject matter of the claims under consideration and reads as follows: 16. An apparatus comprising a processor and a memory storing computer program instructions, the memory and computer program instructions being configured to, with the processor, cause the apparatus to at least: receive an indication of orientation or movement from at least one movement or orientation sensor in communication with the apparatus; 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed January 9, 2009; “Final Act.” for the Final Office Action, mailed August 14, 2014; “App. Br.” for the Appeal Brief, filed May 14, 2015; “Ans.” for the Examiner’s Answer, mailed September 10, 2015; and “Reply Br.” for the Reply Brief, filed November 9, 2015. 2 Appeal 2016-001564 Application 12/351,016 detect an occurrence of a device-generated event in the apparatus, the event being distinct from orientation and movement; and cause at least a portion of a user interface that was previously disabled to be enabled in response to the indication of orientation or movement; wherein causing at least a portion of the user interface to be enabled is conditioned upon the occurrence of the device-generated event and comprises causing at least a portion of the user interface that was previously disabled to be configured to receive user input. App. Br. 8 (Claims App.). The Prior Art Supporting the Rejection on Appeal As evidence of unpatentability, the Examiner relies on the following prior art: Coxhill et al. US 2008/0280642 A1 Nov. 13, 2008 (“Coxhill”) Wardimon US 7,498,951 B2 Mar. 3,2009 (filed Oct. 18, 2004) The Rejection on Appeal Claims 16, 17, 19, 20, and 22-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Coxhill and Wardimon. Final Act. 3—9; Ans. 4. ANALYSIS We have reviewed the rejections of claims 16, 17, 19, 20, and 22^40 in light of Appellants’ arguments that the Examiner erred. For the reasons explained below, we disagree with Appellants’ assertions regarding error by 3 Appeal 2016-001564 Application 12/351,016 the Examiner. We adopt as our own the Examiner’s findings in the Final Office Action and Answer and add the following primarily for emphasis. The Rejection of Claims 16, 20, and 31 Under 35 U.S.C. § 103(a) Appellants argue that the Examiner erred in rejecting independent claims 16, 20, and 31 because Coxhill and Wardimon “fail to teach or suggest conditioning the enablement of at least a portion of the user interface upon a device generated event that is distinct from orientation and movement” according to the claims. App. Br. 6; Reply Br. 1. In particular, Appellants contend that “the independent claims do not simply recite that the enablement of at least a portion of the user interface is conditioned upon any device generated event” but instead require that “the device generated event is ‘distinct from orientation and movement’.” App. Br. 5—6. Appellants seek to distinguish Coxhill from the independent claims by asserting that Coxhill describes controlling a user interface “by emitting an alert if the mobile device is not moved within a predefined period of time following the occurrence of an event with the alert continuing until the event is dealt with.” App. Br. 5. Appellants also assert that Coxhill’s events “are not device-generated events that are distinct from orientation and movement upon which the enablement of at least a portion of the user interface is conditioned” according to the claims. Id. at 7; see Reply Br. 4. Appellants seek to distinguish Wardimon from the independent claims by asserting that Wardimon’s events “are not distinct from orientation or movement, but are, instead, dependent upon orientation or movement,” e.g., “the user picking up the device or the user leaving the device on a table.” App. Br. 6. 4 Appeal 2016-001564 Application 12/351,016 Appellants also argue that Coxhill and Wardimon “cannot properly be combined” because they teach away from each other. Reply Br. 2. Appellants base that argument on the contentions that: (1) an alert in Coxhill occurs “only when a device-generated event is detected AND there not been any movement of the device”; (2) backlight illumination in Wardimon “only occurs upon movement of the device”; and (3) “it would be improper to combine” a reference teaching an action occurring absent movement (Coxhill) and a reference teaching an action occurring after movement (Wardimon). Id. at 2—3. Further, Appellants argue that Coxhill provides “the only disclosure of enablement of a user interface in response to a device-generated event,” i.e., “an alert only in case the device has not been moved.” Id. at 3. We are not persuaded by Appellants’ arguments because they address the references individually. Where a rejection rests on a combination of references, appellants cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the rejection rests on the combination of disclosures in Coxhill and Wardimon. Final Act. 3—5; Ans. 4. “[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants do not address what the Coxhill-Wardimon combination “taken as a whole would suggest to one of ordinary skill in the art” and, therefore, have not established Examiner error. App. Br. 4—6. 5 Appeal 2016-001564 Application 12/351,016 The Examiner finds that Coxhill teaches detecting a device-generated event with “the event being distinct from the orientation and movement,” including “an event such as an incoming call, text, email, etc.” Ans. 2-4 (citing Coxhill || 9, 63, 68, Fig. 7); Final Act. 3. The Examiner also finds that Coxhill teaches enabling at least a portion of a user interface “conditioned upon the occurrence of the device-generated event.” Ans. 4 (citing Coxhill 168, Fig. 7). Further, the Examiner finds that Wardimon teaches “activating [a] backlight and/or unlocking the device without requiring the user to press a key on the keypad,” thus enabling a user interface “that was previously disabled” to “receive user input.” Final Act. 4 (citing Wardimon 1:41—61, 7:51—65); Ans. 4—5 (citing Wardimon 7:51—65). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim” because the analysis “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. A person of ordinary skill will be able to fit together the teachings of multiple references. See id. at 420. Here, contrary to Appellants’ contentions, the teachings of Coxhill and Wardimon taken as a whole suggest “conditioning the enablement of at least a portion of the user interface upon a device generated event that is distinct from orientation and movement” according to the independent claims. See App. Br. 6; Reply Br. 1. In addition, Coxhill and Wardimon do not conflict with or teach away from each other. Coxhill discloses a device that takes no special action after a device-generated event occurs if the device detects recent movement. 6 Appeal 2016-001564 Application 12/351,016 Coxhill Fig. 7; see Ans. 2—3. Wardimon discloses a device that activates a backlight and/or deactivates a lock mechanism if the device detects movement. Wardimon 7:51—67; see Final Act. 4. A device according to Coxhill could have a backlight turned off or a lock mechanism activated before a device-generated event occurs. Wardimon’s teaching applies in that situation, e.g., to unlock the Coxhill device upon detecting movement to permit a previously locked user interface to receive user input after a device generated event occurs in the Coxhill device. To teach away, a reference must “criticize, discredit, or otherwise discourage” the subject matter claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellants identify no portions of Coxhill or Wardimon that “criticize, discredit, or otherwise discourage” the subject matter of claims 16, 20, and 31. Reply Br. 2—3. For the reasons discussed above, Appellants’ arguments have not persuaded us that the Examiner erred in rejecting claims 16, 20, and 31 for obviousness based on Coxhill and Wardimon. Hence, we sustain the rejection. The Rejection of Claims 38—40 Under 35 U.S.C. § 103(a) Dependent claims 38-40 each specify that “the event comprises one of an incoming message, an incoming phone call, a warning for a low battery level, or a download being completed.” App. Br. 12 (Claims App.). Appellants admit that Coxhill describes various events, including “a call, a text message, an email, an advertisement[,] a calendar reminder or an alarm.” Reply Br. 3 (citing Coxhill 19); see App. Br. 6—7 (citing Coxhill 122). But Appellants argue that the Examiner erred in rejecting these dependent claims because Coxhill’s events “are not device-generated events 7 Appeal 2016-001564 Application 12/351,016 that enable at least a portion of the user interface once an indication of orientation or movement has been received” according to the independent claims. Reply Br. 4; see App. Br. 7. As explained above, however, the combination of disclosures in Coxhill and Wardimon suggests that feature of the independent claims. Further, the events specified disjunctively in claims 38-40 overlap with the events described in Coxhill, e.g., messages and calls. Consequently, Appellants’ arguments have not persuaded us that the Examiner erred in rejecting claims 38-40 for obviousness based on Coxhill and Wardimon. Hence, we sustain the rejection. The Rejection of Claims 17, 19, 22—30, and 32—37 Under 35 U.S.C. § 103(a) Appellants do not articulate any patentability arguments for dependent claims 17, 19, 22—30, and 32—37 beyond the arguments regarding the associated independent claims. App. Br. 4—7; Reply Br. 1^4. Because Appellants do not argue these dependent claims separately, they stand or fall with the associated independent claims. See 37 C.F.R. § 41.37(c)(l)(iv). Hence, we sustain the obviousness rejection of claims 17, 19, 22—30, and 32-37. DECISION We affirm the Examiner’s decision to reject claims 16, 17, 19, 20, and 22-40. 8 Appeal 2016-001564 Application 12/351,016 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation