Ex Parte Smith

Patent Trial and Appeal Board

May 31, 2017

13912980 (P.T.A.B. May. 31, 2017)

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.
13/912,980 06/07/2013 Ian C. Smith BN01.701US 2984
107909 7590 06/02/2017
R&N / Fin oh fr Malnne.v PT T C EXAMINER
50 Commercial Street
Manchester, NH 03101
ROSARIO, NELSON M
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
docketing @ finchmaloney .com
nmaloney @ finchmaloney .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN C. SMITH
Appeal 2017-000064
Application 13/912,980
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—7 and 12—20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 8—11 are objected to as being dependent upon a rejected base claim.
See Final Act. 11.
Appeal 2017-000064
Application 13/912,980
STATEMENT OF THE CASE
Introduction
Appellant’s disclosure relates to a system and computer program
product with a “simplified UI mode [] for computing devices, where
complex user interface elements are replaced with simpler ones.” Abstract.
Claims 1,16, and 19 are independent. Claim 1 is reproduced below
for reference:
1. A computing system, comprising:
a display for presenting content to a user;
a processor; and
a simplified user interface mode executable on the
processor and configured to present selectable content for display
in a list format, wherein that selectable content is presented for
display in a non-list format when the system is not in the
simplified user interface mode.
The Examiner’s References and Rejections
Claims 1—5, 16, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zilberman (US 2014/0215329 Al; July
31, 2014) in view of Pasquero (US 2011/0304558 Al; Dec. 15, 2011). Final
Act. 4.2
Claims 6, 7, 12—15, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zilberman, Pasquero, and Lozinski (WO
2012/170745 A2; Dec. 13, 2012). Final Act. 7.
2 Although the heading of the rejection does not indicate independent claims
16 and 19 are rejected (see Final Act. 4), independent claims 16 and 19 are
included in the body of the rejection. See Final Act 6. Thus we consider
these claims as rejected and before us.
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Appeal 2017-000064
Application 13/912,980
ANALYSIS
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). We are not persuaded the Examiner erred, and we
adopt as our own the findings and reasons set forth by the Examiner. We
highlight and address specific findings and arguments for emphasis as
follows.
Priority Claim
The present application was filed on June 7, 2013, and claims priority
to two Provisional Patent Applications filed June 7, 2012.3 See App. Br. 5.
Zilberman was published on July 31, 2014 and claims the priority of a PCT
application filed August 12, 2012, which claims the benefit of Provisional
Application No. 61/524,338 (“Provisional Zilberman”) filed on August 17,
2011.
Based on the various filing dates, Appellant argues Zilberman “is not
prior art to the pending application . . . due to differences
between the disclosures of Zilberman and Provisional Zilberman.” App. Br.
5, citing MPEP 211.05; 35 U.S.C. § 112, first paragraph. Appellant’s
arguments do not demonstrate, however, that Provisional Zilberman fails to
properly enable Zilberman’s claims. See App. Br. 5—8. The Examiner finds
3 The Examiner does not contradict Appellant’s statement that “the pending
application [] has a priority date of June 7, 2012.” App. Br. 5. Thus, for
purposes of this decision, we treat the pending claims as properly claiming
priority to one or more of the Provisional Patent Applications filed June 7,
2012. See MPEP 211.05.
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Appeal 2017-000064
Application 13/912,980
Provisional Zilberman supplies both written description and enablement for
the claimed subject matter of Zilberman. See Ans. 12—14. Appellant does
not contest the Examiner’s findings in the Reply. See Reply Br. 2-4.
Therefore, on the record before us, we do not find error with the Examiner’s
determination that Zilberman may claim benefit to the filing date of
Provisional Zilberman of August 17, 2011, making Zilberman prior art to
Appellant’s application. See In re Giacomini, 612 F.3d 1380 (Fed. Cir
2010) (“[sjection 119(e) treats a nonprovisional application as though filed
on the date of its corresponding provisional application,” but “[a]n important
limitation is that the provisional application must provide written description
support for the claimed invention”).
Display in a List/Non-List Format
Appellant argues “Provisional Zilberman does not disclose or suggest
selectable content that is displayed in either one of two alternative display
modes” as claimed (App. Br. 6; see App. Br. 6—8, reproducing Provisional
Zilberman Figs. 1—2), and extends this argument to contend that “Zilberman
discloses different formats for different types of content” (Reply Br. 4; see
Reply Br. 2—4, reproducing Zilberman Figs. 1—2). Appellant argues the
Examiner erred
[bjecause the references do not disclose or suggest “a simplified
user interface mode executable on the processor and configured
to present selectable content for display in a list format, wherein
that selectable content is presented for display in a non-list
format when the system is not in the simplified user interface
mode.”
Reply Br. 4, emphasis in original.
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Appeal 2017-000064
Application 13/912,980
We are not persuaded of Examiner error. The Examiner finds the
claimed “selectable content for display in a list format” broadly but
reasonably encompasses the books list appearing in Zilberman’s Figure 2,
and the claimed “selectable content is presented for display in a non-list
format” encompasses the books function icon appearing in Zilberman’s
Figure 1. Ans. 14—15; see also Zilberman Provisional Figs. 1—2. We agree,
as Appellant’s claim, in light of the Specification, does not preclude
Zilberman’s displays presenting the books icon format and the books list
format. See Figs. 4a-4b, Spec. || 41—42, 59—61; compare Zilberman Figs.
1—2; || 96—97. That is, Zilberman’s books icon presents selectable content
that is presented “for display in” Zilberman’s books list, within the meaning
of the claim. See Zilberman Figs. 1—2; Ans. 16—17.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, independent claims 16 and 19 not argued separately (see App. Br.
8), and the claims which depend therefrom.
DECISION
We affirm the Examiner’s rejection of claims 1—20.
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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