Ex Parte Pahlavan et al

Patent Trial and Appeal Board

Jun 27, 2016

12546679 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/546,679 08/24/2009
31625 7590 06/29/2016
BAKER BOTTS LLP,
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Babak P AHLA VAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
016295.4743 3816
EXAMINER
HENRY, MARIEGEORGES A
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
DLAustinRecordsManagement@BakerBotts.com
tracy.perez@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BABAK P ARLA VAN, RONALD H. NICHOLSON JR.,
NANDAKUMAR SARUN MADARAKAL, and
DANIEL ERNESTO BARRETO
Appeal2014--009189 1
Application 12/546,679
Technology Center 2400
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and KARA L.
SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-3, 5, 7, 8, 11, 14, 16-18, 20-22, 24--
30, and 37--46. Claims 4, 6, 9, 10, 12, 13, 15, 19, 23, 31-36 have been
canceled. Claims App. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Wyse Technology L.L.C.
Br. 3.
Appeal2014--009189
Application 12/546,679
Appellants' Invention
Appellants' invention is directed to a method and system for allowing
the user of a portable communication device (202) to remotely scroll an
application running on a server (204). Spec. i-f 60, Fig. 2. In particular, upon
the user performing a scrolling gesture on a local copy of the application
displayed on the portable device, a corresponding scrolling command is
generated to control the application on the remote server. Id. i-fi-192-98.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A system for communication and for scrolling a remote
application, the system comprising:
a processor;
a memory communicatively coupled to the processor; and
instructions encoded in the memory, the instructions,
when executed by the processor, operable to perform operations
compnsmg:
receiving, at the system from a remote server over a
remote access connection between the system and the remote
server during a remote connection session, an overall content size
of a remote application running on the remote server, wherein
the overall content size corresponds to at least one of an amount
of memory, a resolution, or a display area associated with the
remote application,
generating a scrolling command to control a first remote
application view at the system of the remote application, the
scrolling command based on one or more native scrolling
gestures, a first display output at the system of the remote
application and the overall content size of the remote application;
and
facilitating sending, from the system to the remote server
over the remote access connection, the scrolling command.
2
Appeal2014--009189
Application 12/546,679
Rejections on Appeal
Appellants request review of the following Examiner's rejections:
Claims 1-3, 5, 7, 8, 11, and 17 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter, which Appellants regard as the
invention. 2
Claims 1, 7, 8, 14, 16, 28, 29, and 42--44 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Hobbs (US
7,747,086 Bl; iss. June 29, 2010) ("Hobbs") and Cotner (US 6,990,477 B2;
iss. Jan. 24, 2006). ("Cotner").
Claims 2, 3, 5, 11, 17, 18, 20, 25-27, 30, 37--41, 45, and 46 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Hobbs, Cotner, and Naughton (US 6,020,881; iss. Feb. 1,
2000). ("Naughton").
Claims 21, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hobbs, Cotner, Naughton, and
Fok (US 2011/0099497 Al; pub. Apr. 28, 2011). ("Fok").
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 8-16. 3
2 Although this rejection is omitted from the Answer, the record before us
does not indicate that it has been withdrawn at any point during prosecution.
Because Appellants have not presented any rebuttal arguments against this
rejection, we summarily affirm the rejection.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed February 7, 2014), and the Answer (mailed
June 16, 2014) for their respective details. We have considered in this
Decision only those arguments Appellants actually raised in the Brief. Any
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Appeal2014--009189
Application 12/546,679
Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Hobbs and Cotner teaches or suggests generating
a scrolling command to control a remote application on a server based on a
native scrolling gesture made at a client device, as recited in independent
claim 1?
First, Appellants argue Cotner' s disclosure of a client device sending
a scrollable cursor command to a remote server database does not cure the
admitted deficiencies of Hobbs, and thereby does not teach or suggest the
disputed limitations emphasized above. Br. 11. According to Appellants,
Cotner's scrollable cursor is an SQL command for fetching in the
database/result table a row of interest that satisfies the command (id. citing
Cotner 5:64-- 6:4). Therefore, Appellants submit the scrollable cursor in
Cotner simply allows a program to move forward and backward within the
result table, and is not based on native gestures of any kind, as required by
the claim. Id. at 12. This argument is not persuasive.
At the outset, we note Appellants' Specification does not define
"native scrolling gestures." Therefore, we broadly but reasonably construe
the cited phrase consistent with the Specification as a gesture performed by a
user to activate a cursor on a particular computing device. Spec. i-fi-1 92-100.
Cotner discloses a client device, upon receiving an SQL OPEN CURSOR
request to initialize a scrollable cursor, generates an OPNQRY message to a
server, which allows the client to retrieve a row of interest from the
database. Cotner 5:64--6:4. Because the scrollable cursor command is
other arguments Appellants could have made but chose not to make in the
Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Appeal2014--009189
Application 12/546,679
invoked by a user's gesture to activate a cursor on a client device,4 we agree
with the Examiner that the scrollable cursor command is based on a native
scrolling gesture, as construed above. Ans. 3.
Second, Appellants argue that the Examiner has relied upon
impermissible hindsight for the proposed combination of Hobbs with Cotner
because the Examiner relied on information gleaned from the Specification.
Br. 13. This argument is not persuasive.
We do not agree with Appellants that the Examiner reviewing the
Specification in rejecting the claim is tantamount to using impermissible
hindsight. As noted above, because the scope and meaning of the claim
limitation "native scrolling gestures" are not readily ascertainable, the cited
limitation must be given its broadest reasonable interpretation consistent
with Appellants' disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they \vould be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that "claims must be interpreted
as broadly as their terms reasonably allow."). Our reviewing court further
states, "the 'ordinary meaning' of a claim term is its meaning to the ordinary
artisan after reading the entire patent." Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en bane). Consequently, we conclude that
merely looking to Appellants' Specification to construe a disputed claim
4 Cotner 2:19-22, 55---64.
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Appeal2014--009189
Application 12/546,679
limitation, which is not readily ascertainable to the ordinarily-skilled artisan,
is not tantamount to using impermissible hindsight.
Third, Appellants argue that the Examiner has not provided a rationale
or any evidence that the combination of Hobbs and Cotner inherently
teaches the disputed limitation. Br. 14--15. This argument is not persuasive.
Although we join Appellants in disagreeing with the Examiner's
assertion that "a keyboard is always is used when a user is accessing a
computer," we do not agree with Appellants that the combination of Hobbs
and Cotner is not properly supported by sufficient rationale. Id. at 14 (citing
Advisory Action, page 2).
The Supreme Court instructs that an obviousness analysis "need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court 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). As such, we concur with the
Examiner that modifying Hobbs' processor to utilize Cotner' s scrollable
cursor would predictably result in generating a scrolling command at a client
device to control an application running at a remote server, 5 thereby yielding
no more than one would expect from such an arrangement. Id. at 416. The
ordinarily-skilled artisan, being "a person of ordinary creativity, not an
automaton," would be able to fit the teachings of Hobbs and Cotner together
like pieces of a puzzle. Id. at 420-21.
Because we agree with the Examiner that the combination of Hobbs
and Cotner teaches the disputed limitations, Appellants have not shown the
5 Fin. Act. 5.
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Appeal2014--009189
Application 12/546,679
Examiner erred in concluding the proffered combination renders claim 1
unpatentable.
Regarding the rejections of claims 2, 3, 5, 7, 8, 11, 14, 16-18, 20-22,
24--30, and 37--46, because Appellants have either not presented separate
patentability arguments or have reiterated substantially the same arguments
as those previously discussed for patentability of claim 1 above, claims 2, 3,
5, 7, 8, 11, 14, 16-18, 20-22, 24--30, and 37--46 fall therewith. See 37
C.F.R. § 41.37(c)(l)(iv) (2013).
DECISION
We affirm the Examiner's rejections under 35 U.S.C. 112, second
paragraph of claims 1-3, 5, 7, 8, 11, and 17 and under 35 U.S.C. § 103 (a) of
claims 1-3, 5, 7, 8, 11, 14, 16-18, 20-22, 24--30, and 37--46.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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