Ex Parte Sarkaria

Patent Trial and Appeal Board

Dec 6, 2016

12491729 (P.T.A.B. Dec. 6, 2016)

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.
12/491,729 06/25/2009 Sarbjit Singh SARKARIA P2621US00 5945
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
12/08/2016 EXAMINER
NAB I, REZA U
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte S ARB JIT SINGH SARKARIA
Appeal 2015-006527
Application 12/491,729
Technology Center 2100
Before MAHSHID D. SAADAT, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—18, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Nokia Corporation.
App. Br. 1.
Appeal 2015-006527
Application 12/491,729
STATEMENT OF THE CASE
The Invention
The Specification describes one embodiment of the invention as
“a method [that] comprises receiving a request for information regarding one
or more applications installed on a user equipment in a category of
applications,” where “the request includes a respective unique identifier for
the one or more applications,” and “initiating transmission of the
information including an icon corresponding to the one or more applications
compiled using the respective unique identifier for the one or more
applications.” Spec. 12.2 The Specification explains that the invention
permits “acquiring information regarding installed applications on a user
equipment.” Abstract. The Specification also explains that the invention
“could be used to provide a game viewer or browser on the user device for
all games on the user device, which can be used by the user to access the
games.” Spec. 129.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A method comprising:
receiving a request for information regarding one or more
applications installed on a user equipment in a category of
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed June 25, 2009; “Final Act.” for the Final Office Action,
mailed June 19, 2014; “Adv. Act.” for the Advisory Action, mailed
October 2, 2014; “App. Br.” for the Appeal Brief, filed December 22, 2014;
“Ans.” for the Examiner’s Answer, mailed April 24, 2015; and “Reply Br.”
for the Reply Brief, filed June 23, 2015.
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Application 12/491,729
applications, wherein the request includes a respective unique
identifier for the one or more applications;
compiling the information corresponding to the one or
more applications based on the respective unique identifier; and
initiating transmission of the information including an
icon corresponding to the one or more applications compiled
using the respective unique identifier for the one or more
applications.
App. Br. 26 (Claims App.).
The Prior Art Supporting the Rejection on Appeal
Mehta et al. (“Mehta”) US 2008/0301231 A1 Dec. 4, 2008
Lemay et al. (“Lemay”) US 2009/0307105 Al Dec. 10, 2009
De Atley et al. (“Atley”) US 2010/0313196 Al Dec. 9, 2010
The Rejection on Appeal
Claims 1—18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lemay, Mehta, and Atley. Final Act. 2—21; Reply Br. 2.
ANALYSIS
We have reviewed the rejection of claims 1—18 in light of Appellant’s
arguments that the Examiner erred. For the reasons explained below, we are
not persuaded by Appellant’s arguments.
The Rejection of Claim 1 Under 35 U.S.C. § 103(a)
The Teaching or Suggestion
of Every Limitation in Claim 1
Appellant argues that the Examiner erred in rejecting claim 1 because
the references fail to teach or suggest (1) “compiling the information
corresponding to” an application based on a “unique identifier” for the
application and (2) “initiating transmission of the [compiled] information
including an icon corresponding to” the application. App. Br. 7—12; see
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Reply Br. 2—3. Appellant admits, however, that “Mehta ‘compiles and
returns a list of applications that are available and appropriate based on the
subscriber, application profiles, and device profiles.’” App. Br. 10 (quoting
Mehta 172). Appellant seeks to distinguish Mehta by asserting that Mehta’s
list of applications “based on the subscriber, application profiles, and device
profiles” differs from the claimed compilation of information based on a
“unique identifier.” Id. at 10-11; see Reply Br. 2—3. Appellant contends
that Mehta’s list of applications “does not have to include any information
corresponding to the applications.” App. Br. 10.
For Lemay, Appellant admits that it discloses a list of game
applications or “game objects” that “may include” icons. App. Br. 11.
Appellant, however, argues that each game object indicates only “whether or
not the user has already installed the particular game.” Id. (citing Lemay
1110). Appellant also argues that Lemay’s “app store simply transitions to
an app store interface” listing game applications “within the app store”
rather than information regarding applications installed on the user
equipment. Reply Br. 3. Appellant further argues that Lemay does not
“include any form of unique identifier for the applications installed.” Id.
For Atley, Appellant admits that it discloses a unique identifier used
to launch an application. App. Br. 12; see Reply Br. 3. Appellant, however,
argues that Atley fails to disclose a unique identifier used in “a request for
information regarding” an application and that “just using a unique id to
launch an application is not the same as requesting information with a
unique id.” App. Br. 12—13. Appellant also argues that claim 1 requires
more than the mere use of a unique identifier and in particular requires the
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Application 12/491,729
unique identifier’s use for “compiling information corresponding to the
applications . . . Reply Br. 3.
We are not persuaded by Appellant’s arguments because they attack
the references individually. Where a rejection rests on a combination of
references, an appellant 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 Lemay, Mehta, and Atley. Final Act. 2—5, 24—25; Adv. Act. 2; Ans. 6.
“[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). Appellant does not address what the Lemay-Mehta-Atley
combination “taken as a whole would suggest to one of ordinary skill in the
art” and, therefore, has not established Examiner error. App. Br. 7—13;
Reply Br. 2-A.
The Examiner finds, and we agree, that Lemay “facilitates installing
application^] on the user equipment, which implies compiling, packaging,
downloading and finally installing on the user equipment.” Final Act. 3
(citing Lemay ^fl[ 100, 110, Fig. 10); see Adv. Act. 2. The Examiner further
finds that Lemay discloses that when a user selects the app store interface
icon, the “user equipment loads [the] app store application . . . onto the user
equipment device.” Final Act. 22. Based on Lemay Figure 10, the
Examiner determines that Lemay teaches (1) a user request “for application
information for a category,” e.g., games; (2) a response to the user request
that “is rendered onto the user equipment device”; and (3) the response to
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the user request includes information about a plurality of applications within
the selected category. Id.
Lemay Figure 10 is reproduced below:
Lemay Fig. 10. Lemay Figure 10 shows a response to a user request
regarding the games category and includes a list of game applications or
“game objects” with information about the respective applications, e.g.,
“game objects” 1012, 1014, and 1016 corresponding to games 1, 2, and 3,
respectively. Id. H 19, 105—110. The information about the respective
applications indicates, among other things, “whether or not the user has
already installed the particular game.” Id. 1110.
The Examiner finds that Lemay Figure 10 displays a “separate icon,
distinct name, and review associated with each application returned as a
response to [a] search” for game applications. Final Act. 22; see Ans. 3.
The Examiner reasons that a “skilled artisan would appreciate that without
having [a] unique id for [each] application such association would not [be]
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possible.” Final Act. 22—23; see Adv. Act. 2. Even though the Examiner
finds that Figure 10 implies using a unique identifier, the Examiner cites
Atley “to show explicit teaching of unique id associated with [an]
application . . . .” Final Act. 23; see Adv. Act. 2; Ans. 8.
In addition, the Examiner finds that Mehta teaches a system and
method relating to “application discovery” where a user request results in the
compilation and return of a list of available applications. Final Act. 3^4
(citing Mehta ^fl[ 69, 72); see Adv. Act. 2; Ans. 5—6. Mehta’s list of
applications must include some mechanism, such as a name or description,
for distinguishing among the various available applications to permit a user
to select a particular application to download. See Mehta ^fl[ 69, 72. Thus,
Appellant’s contention that Mehta’s list of applications “does not have to
include any information corresponding to the applications” does not
persuade us of error. See App. Br. 10. Moreover, the Examiner relies on
Lemay, not Mehta, as teaching the display of information corresponding to
applications in response to a user request. Final Act. 22 (citing Lemay
Fig. 10); see Ans. 3—5 (citing Lemay 1110, Fig. 10).
As for Appellant’s assertion that Mehta’s list of applications “based
on the subscriber, application profiles, and device profiles” differs from the
claimed compilation of information based on a “unique identifier,” that
assertion does not address the rejection because the Examiner relies on
Atley, not Mehta, for the “unique identifier.” Final Act. 4—5, 22—23; see
Ans. 5—6.
As for Appellant’s argument that Lemay simply lists game
applications “within the app store” rather than information regarding
applications installed on the user equipment, that argument disregards
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Lemay’s disclosure that the information displayed for a game application
indicates, among other things, “whether or not the user has already installed
the particular game.” See Lemay 1110, Fig. 10; see also Final Act. 3, 23;
Ans. 3. For an installed application, a user would also see a “separate icon,
distinct name, and review associated with each application . . . .” Final
Act. 22 (citing Lemay Fig. 10); see Ans. 3.
Appellant refers to the Examiner’s statement that certain features
taught by Mehta and Atley are “common knowledge” to person of ordinary
skill in the art. Reply Br. 3; see Ans. 5. Appellant then argues that “[i]f the
Examiner believes this is ‘common knowledge’ then the Examiner should
have brought the rejection with Official Notice.” Reply Br. 3. We are not
persuaded that the Examiner erred by citing Mehta and Atley instead of
taking official notice. “In KSR, the Supreme Court criticized a rigid
approach to determining obviousness based on the disclosures of individual
prior-art references, with little recourse to the knowledge, creativity, and
common sense that an ordinarily skilled artisan would have brought to bear
when considering combinations or modifications.” Randall Mfg. v. Rea,
733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398,415-22 (2007)).
Motivation to Combine
Appellant argues that “[tjhere is no basis for applying De Atley’s use
of [a] unique id to combine with Lemay to use the unique id for information
requests.” App. Br. 13. But the Examiner finds, and we agree, that the
motivation to combine comes from the references themselves and the goal of
improving performance. Final Act. 4—5; Adv. Act. 2; Ans. 5—6. For
instance, the Examiner determines that use of a unique identifier as disclosed
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in Mehta would “make the system more efficient” by passing just the
identifier instead of unnecessary information, thus conserving bandwidth
and reducing response time. Final Act. 5; Adv. Act. 2; Ans. 6. “[T]he desire
to enhance commercial opportunities by improving a product or process is
universal. . . .” DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006). “[A]n implicit motivation to combine” may
result from a desire to make a product or process “stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient.” Id.
Accordingly, the Examiner has articulated reasoning with a rational
underpinning for why a person of ordinary skill in the art at the time of
invention would have combined the references, including identifying
advantages achieved with the combination. Final Act. 4—5; Adv. Act. 2;
Ans. 5—6. Appellant does not address the Examiner’s findings regarding
motivation to combine. Reply Br. 2-4.
Summary for Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Lemay, Mehta, and Atley. Hence, we sustain the rejection.
The Rejections of Claims 2—18 Under 35 U.S.C. § 103(a)
For independent claims 4, 7, and 12, Appellant recites various
limitations in the claims and then asserts that “Lemay in view of Mehta and
De Atley, even if combined, do not make obvious all the features of
independent claim 1 (Group I), and similarly recited in independent claims 4
(Group III), 7 (Group V), and 12 (Group VII).” App. Br. 13. “A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” 37 C.F.R.
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§ 41.37(c)(l)(iv). For the same reasons stated for independent claim 1, we
sustain the rejection of claims 4, 7, and 12.
Claims 2 and 3 depend from claim 1; claims 5 and 6 depend from
claim 4; claims 8—11 depend from claim 7; and claims 13—18 depend from
claim 12. App. Br. 16—20 (Claims App.). Appellant does not make any
separate patentability argument for any dependent claim. App. Br. 14;
Reply Br. 2-4. For the same reasons stated for their base claims, we sustain
the rejections of claims 2, 3, 5, 6, 8—11, and 13—18.
DECISION
We affirm the Examiner’s decision to reject claims 1—18.
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
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