Ex Parte Steeves et al

Patent Trial and Appeal Board

Sep 9, 2016

12731794 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121731,794 03/25/2010
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
09/13/2016
FIRST NAMED INVENTOR
Gregory Steeves
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.
P3903USOO 1810
EXAMINER
BHARGA VA, ANIL K
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/13/2016 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 GREGORY STEEVES, BRIAN DAVIDSON, and
MIKKO ANTERO NURMI
Appeal2013-008356
Application 12/731,794
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-008356
Application 12/731,794
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. Claims 21-58 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm the Examiner's (i) anticipation rejection of
claims 1, 4, 8, 9, 12, and 17-20, and (ii) obviousness rejections of claims 2,
3, 6, 7, 10, 11, and 14--16; we reverse the Examiner's obviousness rejection
of claims 5 and 13. Therefore, we affirm-in-part.
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary independent claim 1 and dependent claim 5, which are
reproduced below with emphasis added:
1. A method comprising:
causing, at least in part, presentation of a first content on a first
display;
receiving an input for activating one or more second displays;
selecting a second content based, at least in part, on the first
content and the input; and
causing, at least in part, presentation of the second content on
the one or more second displays.
5. A method of claim 1, wherein the input is a physical action
resulting in movement of the first display with respect to the
second display.
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Appeal2013-008356
Application 12/731,794
The Examiner's Rejections
(1) The Examiner rejected claims 1, 4, 8, 9, 12, and 17-20 under
35 U.S.C. § 102(b) as being anticipated by Lee '789 (US 2007/0087789 Al;
published Apr. 19, 2007). Final Act. 2-5.
(2) The Examiner rejected claims 2, 3, 5, 6, 10, 11, and 13-15 under
35 U.S.C. § 103(a) as being unpatentable over Lee '789 and Lee '759 (US
2007 /0085759 Al; published Apr. 19, 2007). Final Act. 6-10.
(3) The Examiner rejected claims 7 and 16 as being unpatentable
under 35 U.S.C. § 103(a) over Lee '789 and Hull (US 2007 /0052997 Al;
published Mar. 8, 2007). Final Act. 10-11.
Principal Issues On Appeal1,2
Based on Appellants' arguments in the Appeal Brief (App. Br. 5-10)
and the Reply Brief (Reply Br. 2-5), the following three issues are presented
on appeal:
(1) Did the Examiner err in rejecting (i) claims 1, 4, 8, 9, 12,
and 17-20 under 35 U.S.C. § 102(b) as anticipated by Lee '789; (ii)
claims 2, 3, 6, 10, 11, 14, and 15 under 35 U.S.C. § 103(a) over the
combination of Lee '789 and Lee '759; and (iii) claims 7 and 16 under
1 Appellants present arguments primarily as to claim 1 (App. Br. 5-8; Reply
Br. 2-3), and argues claims 4, 8, 9, 12, and 17-20 on the same basis. We
select claim 1 as representative of the group of claims rejected for
anticipation (claims 1, 4, 8, 9, 12, and 17-20).
2 Claims 2, 3, 6, 10, 11, 14, and 15 ultimately depend from independent
claims 1 and 9, and thus contain the same disputed features as independent
claims 1 and 9. Based on Appellants' failure to address the Examiner's
prima facie case of obviousness as to claims 2, 3, 6, 10, 11, 14, and 15,
Appellants have failed to show that the Examiner erred in rejecting claims 2,
3, 6, 10, 11, 14, and 15 as being obvious over Lee '789 and Lee '759.
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Application 12/731,794
35 U.S.C. § 103(a) over the combination of Lee '789 and Hull
because Lee '789 fails to disclose "selecting a second content based,
at least in part, on the first content and the input," as recited in
representative independent claim 1?
(2) Did the Examiner err in rejecting claims 7 and 16 under
35 U.S.C. § 103(a) over the combination of Lee '789 and Hull
because the combination fails to teach or suggest providing the first
and second displays "in a device configured to include a projector," as
recited in dependent claim 7, and an "apparatus configured to include
a projector," as recited in dependent claim 16?
(3) Did the Examiner err in rejecting claims 5 and 13 under
35 U.S.C. § 103(a) over the combination of Lee '789 and Lee '759
because the combination fails to teach or suggest "wherein the input is
a physical action resulting in movement of the first display with
respect to the second display," as recited in representative dependent
claim 5, and as similarly recited in dependent claim 13?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-11) in light
of Appellant's contentions in the Appeal Brief (App. Br. 5-11) and the
Reply Brief (Reply Br. 2---6) that the Examiner has erred, as well as the
Advisory Action mailed January 4, 2013, and the Examiner's response to
Appellants' Appeal Brief (Ans. 3---6).
Obviousness Rejection of Claims 5 and 13
We agree with Appellants' conclusions with respect to the
obviousness rejection of claims 5 and 13 (see App. Br. 10; Reply Br. 4--5).
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Application 12/731,794
Paragraphs 41, 44, and 54 describe the physical movement of the user
equipment (UE) as being a "sliding" motion that causes the second display
to be revealed. Therefore, we cannot agree with the Examiner that Lee
'7 59' s disclosure of the movement of an email 901 from one screen (105 in
Fig. lOA) to another (106 in Fig. lOA) constitutes a physical movement of
the first display 105 in relation to the second display 106 (see Ans. 5 citing
Lee '759, Figs. lOA and lOB; i-fi-150-53). Appellants' arguments (App. Br.
10; Reply Br. 4--5) that Lee '759's Figures lOA and lOB and paragraphs 50-
53 only teach or suggest changing of displayed content and not a physical
movement of the first display with respect to the second display as recited in
claims 5 and 13 is persuasive. Accordingly, we do not sustain the
Examiner's obviousness rejection of claims 5 and 13 over the combination
of Lee '789 and Lee '759.
Anticipation Rejections of Claims 1, 4, 8, 9, 12, and 17-20 and Obviousness
Rejection of Claims 2, 3, 6, 7, 10, 11, and 14-16
However, with regard to (i) the anticipation rejections of claims 1, 4,
8, 9, 12, and 17-20 over Lee '789; (ii) the obviousness rejection of claims 2,
3, 6, 10, 11, 14, and 15 over Lee '789 and Lee '759; and (iii) the
obviousness rejection of claims 7 and 16 over the combination of Lee '789
and Hull, we agree with the Examiner's conclusions that Lee '789 teaches or
suggests "selecting a second content based, at least in part, on the first
content and the input," as recited in representative independent claim 1
(Advisory Action, p. 2; Final Act. 2-3; Ans. 3--4). The Examiner finds
(Ans. 3--4; Advisory Act., p. 2), and we agree, that Lee '789's Figures 2--4
and paragraphs 47-51 discloses selecting second content (see Fig. 3)
presented on a second display 200 based on first content presented on a first
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Application 12/731,794
display 100 by using function buttons 204.
In view of the foregoing, we sustain the Examiner's anticipation
rejection of claim 1, as well as claims 4, 8, 9, 12, and 17-20 grouped
therewith. For similar reasons as provided for claim 1, and because Hull
teaches a client device 106 that can be configured to be a projector (i-f 292),
we also sustain the Examiner's obviousness rejections of claims 7 and 16.
We sustain the obviousness rejection of claims 2, 3, 6, 10, 11, 14, and 15 not
separately argued for the same reasons as claims 1 and 9 from which these
claims depend.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 4, 8, 9, 12, and 17-
20 under 35 U.S.C. § 102(b) because Lee '789 discloses "selecting a second
content based, at least in part, on the first content and the input," as recited
in representative independent claim 1.
(2) Appellants have not presented any arguments as to claims 2, 3, 6,
10, 11, 14, and 15 rejected under 35 U.S.C. § 103(a) over Lee '789 and Lee
'759 or otherwise shown the rejection of these claims to be in error.
(3) The Examiner erred in rejecting claims 5 and 13 under 35 U.S.C.
§ 103(a) over the combination of Lee '789 and Lee '759 because the
combination, and specifically Lee '759, fails to teach or suggest "wherein
the input is a physical action resulting in movement of the first display with
respect to the second display," as recited in dependent claims 5 and 13.
(4) The Examiner did not err in rejecting claims 7 and 16 under
35 U.S.C. § 103(a) over the combination of Lee '789 and Hull because the
combination Hull teaches a client device that can be a projector (Hull, i1
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Application 12/731,794
292), and the combination of Lee '789 and Hull teaches or suggests
providing the first and second displays "in a device configured to include a
projector," as recited in dependent claim 7, and an "apparatus configured to
include a projector," as recited in dependent claim 16.
DECISION
The Examiner's (i) anticipation rejection of claims 1, 4, 8, 9, 12, and
17-20, and (ii) obviousness rejections of claims 2, 3, 6, 7, 10, 11, and 14--16
are affirmed. The Examiner's obviousness rejection of claims 5 and 13 is
reversed.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).
AFFIRMED-IN-PART
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