Ex Parte Robertson et al

Patent Trial and Appeal Board

Apr 19, 2016

13555582 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/555,582 07/23/2012
82313 7590 04/21/2016
Conley Rose - BlackBerry Files
Attn: J. Robert Brown
5601 Granite Parkway, Suite 500
Plano, TX 75024
FIRST NAMED INVENTOR
Ian M. Robertson
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.
10577-US-DIV2
4214-62804
3149
EXAMINER
TN, BACKHEAN
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
ConleyRoseReporting@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN M. ROBERTSON and DAVID F. TAPUSKA
Appeal2014-003869
Application 13/555,582
Technology Center 2400
Before ROBERT L. KINDER, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-7 and 9-19, which are all the pending claims. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Research in Motion
Limited. (App. Br. 3.)
2 Claim 8 has been canceled. (Final Act. 2.)
Appeal2014-003869
Application 13/555,582
EXEMPLARY CLAIM
Claim 1 is exemplary and is reproduced below with disputed
limitations italicized:
1. A wireless communication device comprising:
a user input device;
a buff er configured to store characters of an electronic
message as the characters are being input via the input device;
and
a controller configured to wirelessly transmit the stored
characters over a wireless network, without receiving user entry
of a submit input, in response to a pause, in the input of
characters, exceeding a threshold time period.
REJECTIONS 3
Claims 1, 2, 6, 7, 9, 10, 14, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kim (US 2002/0058522 Al; published
May 16, 2002), Price (EP 0396309 A2; published Nov. 7, 1990), and Lowe
(US 6,189,066 Bl; issued Feb. 13, 2001). (Final Act. 3-5.)
Claims 3 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Price, Lowe, and Spaur (US 6,516, 192 B 1; issued
Feb. 4, 2003). (Id. at 5---6.)
Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Price, Lowe, and Westerberg (US 6,058,302; issued
May 2, 2000). (Id. at 6-7.)
Claims 5, 13, and 15-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kim, Price, Lowe, and Official Notice. (Id. at 7-9.)
3 The Examiner has withdrawn the obviousness-type double patenting
rejection of claims 1-17. (Ans. 3.)
2
Appeal2014-003869
Application 13/555,582
INDEPENDENT CLAIMS 1 9 AND 15
' '
Issues
Did the Examiner err in finding the combination of Kim, Price, and
Lowe teaches or suggests transmitting characters "without receiving user
entry of a submit input, in response to a pause, in the input of characters,
exceeding a threshold time period," as recited in claim 1, and similarly
recited in claims 9 and 15?
Did the Examiner improperly combine Kim and Price?
Analysis
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the Final Action (Final Act. 3-10) from which this appeal is
taken and the findings and reasons set forth in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 3-11). We highlight and address
specific findings and arguments for emphasis as follows.
Appellants argue Price does not teach or suggest transmitting
characters "without receiving user entry of a submit input, in response to a
pause, in the input of characters, exceeding a threshold time period," as
recited in claim 1, and similarly recited in claims 9 and 15. (App. Br. 6-8;
Reply Br. 2.) Specifically, Appellants argue Price "differs from the present
claim limitation" for four reasons: "1) what data is being received; 2) what
activity is paused; 3) whether a user has entered a submit input; and 4) from
what device is the data received." (App. Br. 7-8.)
3
Appeal2014-003869
Application 13/555,582
We are not persuaded by any of these four arguments, which we
address in tum below. The Examiner finds, and we agree, Kim teaches a
device which wirelessly transmits text messages input by a user. (Final Act.
4 (citing Kim i-fi-154--59, Figs. 1, 2A-2C); Ans. 3, 6.) The Examiner further
finds, and we agree, Price teaches a Packet Assembler/Disassembler (PAD)
which receives data and then transmits the received data after an idle time
period during which no additional data is received by the PAD (i.e., a pause
in received data). (Ans. 4 (citing Price Abstract, 4:1-18); Final Act. 4, 10;
see Price Fig. 4, 8: 1-30.) The Examiner concludes, and we agree, that it
would have been obvious to incorporate Price's data transmission technique
into Kim's device in order to transmit a text message after a pause in user
inputted text. (Ans. 6; Final Act. 10.)
Appellants' first argument, that the data transmitted in Price is not "a
message as claimed nor [is it] being currently input by a user" (App. Br. 7;
Reply Br. 2), is unpersuasive because it does not address the Examiner's
finding that Kim transmits text messages input by a user (Ans. 3 (citing Kim
i-fi-154--59, Figs. 1, 2A---C); Final Act. 4).
Appellants' second argument, that Price's pause "is not a pause in
user input of characters" (App. Br. 7; Reply Br. 2), is unpersuasive because
it attacks Price individually when the rejection is based on a combination of
references, i.e., Kim and Price. In re Keller, 642 F.2d 413, 426 (CCPA
1981) (citation omitted). The Examiner's combination of Kim and Price
applies Price's idle time period, i.e., a pause in the receipt of data, to Kim's
received user inputted text data, resulting in a pause in user inputted text
data. (Ans. 6; Final Act. 10.)
4
Appeal2014-003869
Application 13/555,582
Appellants' third argument, that Price transmits a data file "in
response to receiving user-entry of a submit-input" rather than transmitting
data without user entry of a submit input (App. Br. 7 (citing Price 2:7-8)
(emphasis omitted)) is not persuasive because it addresses an embodiment in
Price upon which the Examiner does not rely. Specifically, Appellants cite
an embodiment in Price in which block transfers of data occur in response to
a user's command (id. (citing Price 2:7-8)), but the Examiner relies on a
different portion of Price teaching data transmission is based on the
expiration of an idle time period (Ans. 4 (citing Price Abstract, 4: 1-18);
Final Act. 4, 10; see Price Fig. 4, 8: 1-30).
Appellants' fourth argument, that the device in Price which transmits
data is "separate from the device that inputs characters from the user" (App.
Br. 7 (emphasis omitted)), is unpersuasive because it does not address the
Examiner's finding that Kim's device both accepts user inputted text
messages and transmits those text messages (Ans. 6; Final Act. 4 (citing
Kim Figs. 1, 2A--C, ifif 54--59)).
Appellants further argue that MPEP § 2143 .02 requires "that features
being incorporated into a primary reference must be 'with no change in their
respective functions,"' but Appellants' argument takes that statement out of
context. (App. Br. 8 (citations omitted).) The portion of MPEP § 2143.02
cited discusses "[a] rationale" for an obviousness conclusion, but that section
goes on to state: "Where there is a reason to modify or combine the prior art
to achieve the claimed invention, the claims may be rejected as prima facie
obvious provided there is also a reasonable expectation of success." MPEP
§ 2143.02 (citations omitted). Appellants have not presented persuasive
evidence and arguments that one of ordinary skill in the art would not have
5
Appeal2014-003869
Application 13/555,582
reasonably expected success in combining Kim and Price. (See id. at 6-8.)
Accordingly, we are not persuaded the Examiner erred by finding the
combination of Kim, Price, and Lowe teaches or suggests transmitting
characters "without receiving user entry of a submit input, in response to a
pause, in the input of characters, exceeding a threshold time period," as
recited in claim 1, and similarly recited in claims 9 and 15.
Additionally, Appellants argue Price teaches away from transmitting
inputted text after a pause because Price teaches transmitting characters
without a pause in an echoplexing mode. (Id. at 8 (citing Price Abstract,
1:54; 5:8-12).) We are not persuaded. To teach away, a reference must
actually "criticize, discredit, or otherwise discourage" investigation into the
claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants highlight an alternative embodiment in Price in which data is
transmitted without a pause, but have not proffered evidence showing that
Price actually criticizes, discredits, or otherwise discourages transmitting
data after a pause. (See App. Br. 8.) Furthermore, Price's echoplexing
mode is a process in which "a character which is transmitted to and then is
echoed back by the" receiving terminal (Price 1 :54--2:2), but Kim's text
messages are not transmitted in an echoplexing mode because there is no
text echoed back by a receiving device (see Kim i-fi-154--59, Figs. 1, 2A---C).
Appellants' reliance on an optional embodiment-particularly one that the
Examiner's combination does not rely on---does not persuade us that Price
teaches away from transmitting text messages after a pause.
Additionally, Appellants argue "in the absence of hindsight from the
present application, the skilled person would have considered it
counterintuitive to wirelessly transmit a portion of a message before the
6
Appeal2014-003869
Application 13/555,582
message's drafter indicates he/she wants it to be transmitted." (App. Br. 8.)
We are not persuaded. The Examiner finds "a long pause could indicate a
finished message." (Ans. 7.) The Examiner's reason to combine Price and
Kim, transmitting finished text messages, is supported by rational
underpinning, avoiding the storage of data that should be sent. (Ans. 6-7;
see Final Act. 4.) Because Appellants do not address the Examiner's
articulated reason to combine Kim and Price (see App. Br. 8; see also Reply
Br. 2), we are not persuaded the Examiner impermissibly used hindsight
reasoning and improperly combined Kim and Price.
DEPENDENT CLAIMS 2--4, 10-12, AND 17
Issues
Did the Examiner err in finding the combination of Kim, Price, and
Lowe teaches or suggests "dynamically adjust[ing] the threshold," as recited
in claim 2, and similarly recited in claims 3, 4, 10-12, and 17?
Did the Examiner err in finding the combination of Kim, Price, Lowe,
and Spaur teaches or suggests "the threshold based on at least one of a
latency and a bandwidth," as recited in claims 3 and 11?
Did the Examiner err in finding the combination of Kim, Price, Lowe,
and Westerberg teaches or suggests "the threshold based on processing
resources," as recited in claims 4 and 12?
Analysis
Appellants argue Lowe does not teach or suggest "dynamically
adjust[ing] the threshold" time period before transmitting a message as
recited in claim 2, and similarly recited in claims 3, 4, 10-12, and 17. (App.
7
Appeal2014-003869
Application 13/555,582
Br. 9; Reply Br. 2.) Specifically, Appellants argue the time threshold that
"Lowe dynamically adjusts is unrelated to the claimed time threshold for
wirelessly transmitting a message." (App. Br. 9; Reply Br. 2.)
We are not persuaded. The Examiner finds, and we agree, Lowe
teaches a technique to dynamically adjust a threshold time period for
network communications. (Ans. 8 (citing Lowe 17:24--36, 18:35--45, 18:65-
19:6); Final Act. 4.) We also agree with the Examiner's conclusion that it
would have been obvious to use the technique taught in Lowe to
dynamically adjust the threshold time period for a pause in the text input
taught by the Kim and Price combination (Ans. 8). Appellants argue Price's
time period is for data transmission while Lowe's time period is for
interrupts (App. Br. 9; Reply Br. 2), but highlighting differences in the type
of time period does not persuasively show that applying Lowe's technique to
dynamically adjust the threshold time period in the Kim and Park
combination would have been "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Accordingly, we are not persuaded the Examiner erred by
finding the combination of Kim, Price, and Lowe teaches or suggests
"dynamically adjust[ing] the threshold" time period as recited in claim 2,
and similarly recited in claims 3, 4, 10-12, and 17.
Additionally, Appellants argue Spaur does not teach or suggest
adjusting a time threshold "based on at least one of a latency and a
bandwidth," as recited in claims 3 and 11, and Appellants also argue
Westerberg does not teach or suggest adjusting a time threshold "based on
processing resources available on the device," as recited in claims 4 and 12.
8
Appeal2014-003869
Application 13/555,582
(App. Br. 9; Reply Br. 2.) Specifically, Appellants argue "just because
[latency, bandwidth, and processing resources] are known to exist does not
suggest they be used as a basis for adjusting a pause threshold as claimed."
(Reply Br. 2; App. Br. 9.)
We are not persuaded by Appellants' arguments against Spaur and
Westerberg individually. See Keller, 642 F.2d at 426 (citation omitted). As
discussed supra, the Examiner's combination of Kim, Price, and Lowe
teaches adjusting a pause threshold time period. (Final Act. 6-7; Ans. 8.)
The Examiner modifies the Kim, Price, and Lowe combination to adjust the
pause threshold time period based on latency and bandwidth, taught by
Spaur (Final Act. 6 (citing Spaur 7:45-65, 8:7-10); Ans. 9-10), or
processing resources, taught by Westerberg (Final Act. 6-7 (citing
Westerberg 2:55-57); Ans. 10-11). Appellants' arguments do not
persuasively address the combination of Kim, Price, Lowe, and Spaur or the
combination of Kim, Price, Lowe, and Westerberg. (See App. Br. 9; see
also Reply Br. 2.) Furthermore, Appellants do not address the Examiner's
rationales for the combinations, optimizing data transfer (Ans. 1 O; Final Act.
6) and ensuring a device has enough processing resources to perform a
function (Ans. 11; Final Act. 7). Accordingly, we are not persuaded the
Examiner erred by finding the combination of Kim, Price, Lowe, and Spaur
teaches or suggests adjusting a time threshold "based on at least one of a
latency and a bandwidth," as recited in claims 3 and 11 and the combination
of Kim, Price, Lowe, and Westerberg teaches or suggests adjusting a time
threshold "based on processing resources available on the device," as recited
in claims 4 and 12.
9
Appeal2014-003869
Application 13/555,582
DEPENDENT CLAIMS 5-7, 13, 14, 16, 18, AND 19
Appellants have not separately argued dependent claims 5-7, 13, 14,
16, 18, and 19. (See App. Br. 6-9.) For the reasons set forth above,
therefore, we are not persuaded the Examiner erred in rejecting these claims.
See In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) ("We conclude that
the Board has reasonably interpreted Rule 41.37 to require applicants to
articulate more substantive arguments if they wish for individual claims to
be treated separately."). Accordingly, we sustain the Examiner's decision to
reject dependent claims 5-7, 13, 14, 16, 18, and 19. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
For the above reasons, the Examiner's rejection of claims 1-7 and 9-
19 is affirmed
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
10