Ex Parte Pryor

Patent Trial and Appeal Board

Sep 26, 2016

12468401 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/468,401 05/19/2009
69753 7590 09/28/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Timothy Pryor
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.
106842036620 9876
EXAMINER
SHARIFI-TAFRESHI, KOOSHA
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY PRYOR
Appeal2014-007957
Application 12/468,401
Technology Center 2600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-11, 15-17, and 20-25. (See App. Br.
2.)1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We refer to Appellant's Specification ("Spec.") filed May 19, 2009
(claiming benefit of numerous applications including US 10/934,762 filed
Sept. 7, 2004 and US 61/054,643 filed May 20, 2008) and Appeal Brief
("App. Br.") filed March 10, 2014. We also refer to the Examiner's Answer
("Ans.") mailed May 8, 2014, and Final Office Action (Final Rejection)
("Final Act.") mailed Sept. 10, 2013.
Appeal2014-007957
Application 12/468,401
Appellant's Invention
The invention at issue on appeal concerns a central control apparatus
including device interfaces communicating with peripheral devices including
a handheld computing device and a control panel which also communicates
with the device interfaces. The control panel includes a display (surface)
capable of displaying an image including one or more user interface
elements corresponding to the peripheral devices. The control panel also
communicates with the peripheral devices via the device interfaces and
senses control signals associated with the user interface elements. (Spec. i-fi-1
4, 9-20; Abstract.)
Illustrative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A central control apparatus, comprising:
one or more device interfaces configured for
communicating with one or more peripheral devices including at
least a handheld computing device; and
a control panel communicatively coupled to the one or
more device interfaces and having a surface at which an image
including one or more user interface elements can be displayed;
wherein the control panel is configurable for
communicating with the one or more peripheral devices, sensing
a control signal relating to one or more objects detected in
proximity to one or more user interface elements displayed at the
surface of the control panel, the displayed user interface elements
corresponding to a screen image of one of the peripherals, and
causing at least one function to be performed in response to the
detected one or more objects.
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Application 12/468,401
Rejections on Appeal
1. The Examiner rejects claims 1-5, 7, 16, 17, 20-22, and 25
under 35 U.S.C. § 102(b) as being anticipated by Craven et al. (US
2003/0038849 Al; published Feb. 27, 2003) ("Craven").
2. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Craven and Jaeger et al. (US 5,982,355; issued Nov. 9,
1999) ("Jaeger").
3. The Examiner rejects claims 8-11under35 U.S.C. § 103(a) as
being unpatentable over Craven and Tani et al. (US 2004/0227739 Al;
published Nov. 18, 2004 (filed June 25, 2004)) ("Tani").
4. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over Craven and Zadesky et al. (US 2003/0076306 Al;
published Apr. 24, 2003) ("Zadesky").
5. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Craven and Schmidt et al. (US 2003/0001010 Al;
published Jan. 2, 2003) ("Schmidt").
6. The Examiner rejects claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over Craven and Smith et al. (US 7,675,504 Bl; issued
Mar. 9, 2010 (filed Mar. 9, 2006, claiming benefit of numerous applications
including US 09/974,250, filed Oct. 10, 2001 and US 60/660,328, filed on
Mar. 11, 2005)) ("Smith").
ISSUE
Based upon our review of the administrative record, Appellant's
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Application 12/468,401
contentions, and the Examiner's findings and conclusions, the dispositive
issue before us follows:
Does the Examiner err in finding that Craven discloses a "central
control apparatus, comprising" "one or more device interfaces" "and a
control panel communicatively coupled to the one or more device interfaces
and having a surface at which an image including one or more user interface
elements can be displayed" "wherein ... the displayed user interface
elements corresponding to a screen image of one of the peripherals" as
recited in Appellant's claim 1?
ANALYSIS
Appellant contends that Craven does not disclose the disputed features
of independent claim 1. App. Br. 2---6. Specifically, Appellant contends that
claim 1 requires a control panel in a central control apparatus and Craven's
personal communication assistant (PCA) is a peripheral, not a control panel
in a central control apparatus. App. Br. 4--5. Appellant further contends that
claim 1 requires displaying a "screen image of one of the peripherals
[(peripheral devices)]" (claim 1) and Craven's PCA does not display such a
screen image of the peripheral devices - "the PCA 20 in Craven does not
display user interface elements 'corresponding to a screen image of one of
the peripherals' ... as required by claim 1" (App. Br. 5 (emphasis omitted)),
at "most, the PCA 20 is understood to display a user interface with different
features (e.g[.], nested menus as described in paragraph [0049]) in order to
provide the necessary functionality" (App. Br. 5---6). See App. Br. 5---6.
Appellant persuades us of error in the anticipation rejection of claim
1. Appellant's claim 1 requires a contro 1 panel that is part of a central
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Application 12/468,401
control apparatus (that the central control apparatus comprises "one or more
device interfaces" and "a control panel communicatively coupled to the one
or more device interfaces" (claim 1 (emphasis added))) and that has a
display (surface) capable of displaying/presenting an image including user
interface elements corresponding to peripherals devices).
The Examiner maintains that Craven describes such a control panel -
Craven's PCA (20) (Final Act. 4)- in that the PCA is commutatively
coupled with Craven' s gateway device ( 6) and is utilized to control other
electronic devices. Final Act. 4--5; Ans. 3--4. The Examiner further
maintains that Craven's PCA has a display surface which displays user
elements in that the display (32) indicates the status of the electronic
devices. Final Act. 4--5. In the Examiner's Answer, the Examiner attempts
to expand the basis of the rejection stating that the gateway and PCA
combined equate to the central control apparatus. Ans. 3--4.
We disagree with the Examiner's attempt to interpret Craven and find
that the Examiner has not provided sufficient support for the anticipation
rejection in the cited portions of Craven. 2 Craven explicitly describes the
PCA as a remote device separate from the gateway. Craven i-f 32; Fig. 2.
The Examiner has not provided any support in Craven that the PCA and
gateway device are combined into a central unit. Lacking such a showing
2 We note the Examiner has it backwards: it is improper to read the
reference on the claim. Rather, the correct approach is to construe the
contested claim term( s) under BRI and then read the properly construed
claim term( s) on the corresponding feature( s) found in the reference.
Compare with Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed
Cir. 1999) ("Anticipation of a patent claim requires a finding that the claim
at issue 'reads on' a prior art reference.").
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Application 12/468,401
the Examiner concludes "under the doctrine of Broadest Reasonable
Interpretation (BRI), the gateway 6 in combination with the PCA 20, as
illustrated by the two arrows in Appellant's representation of the Examiner's
mapping, as Appellant's central control apparatus (e.g. gateway 6 and PCA
20) comprising a control panel." Ans. 3. Such an interpretation of Craven
misconstrues both the law of anticipation and the doctrine of broadest
reasonable interpretation - which applies to patent applications under
review, not prior art references. See n.2, supra.
To the extent the Examiner attempts to combine disparate elements of
Craven, in an anticipation rejection, "it is not enough that the prior art
reference ... includes multiple, distinct teachings that [an] artisan might
somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must "clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference." Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while "[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection ... it
has no place in the making of a 102, anticipation rejection." Arkley, 455
F.2d at 587-88.
This reasoning is applicable here. The Examiner merely points to
disclosures in Craven that explain that the PCA may display the status of
other electronic devices to which it is linked (communicatively coupled).
See Final Act. 4--5; Craven i-fi-132, 38, 49-52. Craven, however, does not
describe displaying user interface elements corresponding to a screen image
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Application 12/468,401
of peripheral devices. At best, Craven describes displaying a status indicator
of a separate electronic device. The recited user interface elements must
allow user interaction ("sensing a control signal relating to one or more
objects detected in proximity to one or more user interface elements
displayed at the surface of the control panel" (claim 1)). A status indicator
(as described in Craven) does not necessarily allow such user interaction.
The basis of the rejection is anticipation not obviousness. 3 Thus, we cannot
agree with the Examiner's interpretation of Craven.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Craven discloses the disputed limitations of
Appellant's claim 1. Claims 2-5, 7, 16, 17, 20-22, and 25 depend on claim
1. Accordingly, we reverse the Examiner's anticipation rejection of claims
1-5, 7, 16, 17, 20-22, and 25.
The§ 103 Rejections of Claims 6, 8-11, 15, 23, and 24
\Vith respect to the obviousness rejections of dependent claims 6, 8-
11, 15, 23, and 24, rejected as obvious over Craven as well as Jaeger, Tani,
Zadesky, Schmidt, or Smith, we reverse the Examiner's obviousness
rejections for the same reasons set forth with respect to claim 1 (supra). The
Examiner improperly cites Craven as teaching the recited central control
apparatus and user interface elements without any additional exposition.
3 Upon further prosecution the Examiner may consider whether, under 35
U.S.C. § 103(a), it would have been obvious to one of ordinary skill in the
relevant art to combine a remote control (such as Craven's PCA) and a
central gateway device into a central control apparatus. Similarly the
Examiner may consider whether displaying status of remote electronic
devices would have taught or suggested displaying user interface elements
corresponding to a screen image of peripheral devices.
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Application 12/468,401
(See Final Act. 10-17; Ans. 4-5.). On this record, the Examiner has not
established how the additionally cited secondary references overcome the
aforementioned deficiencies regarding Craven, as discussed above regarding
claim 1. Accordingly, we reverse the Examiner's obviousness rejections of
claims 6, 8-11, 15, 23, and 24.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1-5,
7, 16, 17, 20-22, and 25 under 35 U.S.C. § 102(b).
Appellant has shown that the Examiner erred in rejecting claims 6, 8-
11, 15, 23, and 24 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 1-11, 15-17, and 20-
25.
REVERSED
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