Ex Parte Smirnova

Patent Trial and Appeal Board

Jun 22, 2016

12906492 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/906,492 10/18/2010
63206 7590 06/24/2016
BlackBerry Limited (Novak Drnce)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
Irina SMIRNOV A
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.
9507.022.NPUSOO 1192
EXAMINER
BURWELL, JOSEPH R
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
patdoctc@fr.com
ptoboca@fggbb.com
portfolioprosecution@blackberry.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRINA SMIRNOV A
Appeal2014-005906
Application 12/906,492
Technology Center 2100
Before MAHSHID D. SAADAT, TERRENCE W. McMILLIN, and
JOYCE CRAIG, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7-15, and 17-21. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, the real party in interest is BlackBerry Limited
(Reply Br. 3).
Appeal2014-005906
Application I2/906,492
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention relates to computing devices, and in particular
"to a method and apparatus for designating a given file as selected in a
computing device" (Spec. i-f 2). Claim I is illustrative of the invention and
reads as follows:
I. A method for designating a given file as selected in a
computing device, said computing device comprising a
processing unit interconnected with a memory for storing files,
a display device and an input device, said method
implementable in said processing unit, said method comprising:
providing a list of file types at said display device in
response to receiving a first indication that a file is to be
selected from said input device, said first indication received
within a first application being processed by said processing
unit;
launching a native application associated with a given
file type in response to receiving a second indication that said
given file type has been selected from said list, said native
application for processing said given file type; and
receiving a third indication that said given file has been
selected within said native application, thereby designating said
given file as selected in said first application, said third
indication comprising data indicating that a select file option
has been selected within a menu in said native application, said
menu provided at said display device, said select file option
provided to indicate that said given file can be designated as
selected in said first application.
The Examiner's Rejection
Claims I-5, 7-I5, and I 7-2I stand rejected under 35 U.S.C. § I02(b)
as anticipated by GI-UM (T-Mobile GI User Manual, published May 27,
2009) (see Final Act. 2-8).
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Appeal2014-005906
Application 12/906,492
ANALYSIS
With respect to the rejection of claim 1, Appellant argues that:
As recited in the claims, and described at, for example,
paragraph [0054] and FIG. 3 of the application as filed, the
select file option within a menu in the native application (e.g.
the "Select Picture" option in FIG. 8) is provided to indicate
that the file can be designated as selected in the first application
(i.e. an application other than the native application). This is
distinct from merely selecting a file within a native application
for further processing or use by the same (native) application.
(App. Br. 12-13.) Appellant further argues the cited passages in page 87 of
GI-UM merely disclose:
[t]he ability to browse through saved pictures within the
"Gallery" application. Other features disclosed at page 87
include: choosing to display small or large thumbnails, sorting
an album, ordering the display of the pictures within an album
and changing the orientation of pictures within an album. All
of these functions are performed entirely within the Gallery
application.
(App. Br. 13).
The Examiner explains the disclosure of G 1-UM on page 87 was
relied on as showing the "Gallery" application has functionality similar to
the claimed menu features (Ans. 10). The Examiner further finds the
messaging application described on pages 52 and 53 of the reference teaches
or suggests interaction between the Messaging application and the Gallery
application, as recited in claim 1 (Ans. 11 ). In response, Appellant argues
the phrase "Attach" is selected from a menu in Messaging application, as
described on page 53 of G 1-UM, whereas claim 1 requires modifying a
selection in the first application (Messaging application) by selecting a select
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Appeal2014-005906
Application 12/906,492
file option within the native application (Gallery application) (Reply Br. 6-
7).
We agree with Appellant that cited portions of G 1-UM do not disclose
modifying a selection status in the first application by the native application.
Contrary to the Examiner's assertion, interaction between the Messaging
application and the Gallery application, as described on pages 52 and 53 of
G 1-UM, does not include "said third indication comprising data indicating
that a select file option has been selected within a menu in said native
application, ... , said select file option provided to indicate that said given
file can be designated as selected in said first application," as recited in
claim 1.
Accordingly, we do not sustain the rejection of claim 1, independent
claims 11 and 21 which recite similar features, or the remaining claims
dependent therefrom.
DECISION
The decision of the Examiner to reject claims 1-5, 7-15, and 17-21 is
reversed.
REVERSED
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