Ex Parte Stochosky et al

Patent Trial and Appeal Board

Jun 2, 2016

12135105 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/135, 105 06/06/2008
61947 7590 06/06/2016
Apple - Blank Rome
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
HOUSTON, TX 77002
FIRST NAMED INVENTOR
Michael Stochosky
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.
P5460US1 (119-0362US1) 3094
EXAMINER
HO,RUAYL
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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):
mbrininger@blankrome.com
houstonpatents@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL STOCHOSKY and WSTIN WOOD
Appeal2014-007483
Application 12/135, 105
Technology Center 2100
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final Rejection of claims 1-19 and 24--28. Claims 20-23 are cancelled. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention on appeal "relates to message delivery" (Spec. i-f 2).
1 See Non-Final Rejection (2), mailed May 30, 2013; see also App. Br. 24,
"Claims Appendix."
Appeal2014-007483
Application 12/135, 105
Representative Claim
1. A method, performed using a processor, comprising:
presenting a user interface that includes a contacts area and a
conversation area, wherein the contacts area includes a representation of
each of a plurality of contacts;
receiving a text message from a first contact of the plurality of
contacts;
[L 1] determining whether the representation of the first contact is
selected in the contacts area;
[L2] presenting the text message in the conversation area when it is
determined that the representation of the first contact is selected in the
contacts area; and
[L3] presenting a message container containing at least a portion of
the text message proximate to the representation of the first contact in the
contacts area when it is determined that the representation of the first
contact is not selected in the contacts area.
(Bracketed matter and emphasis added regarding the contested limitations,
labeled as "L 1," "L2," and "L3 ").
Rejections
A. Claims 1-5, 9-19,2 and 24--28 are rejected under 35 U.S.C. § 102(e)
as anticipated by Van Dok et al. (US 2004/0268263 Al; pub. Dec. 30,
2004) ("Van Dok").
2 We note Appellants repeatedly refer to "independent claims 1, 12, and 19."
See e.g., App. Br. 11, 13, 16, and 17. This appears to be a typographical
error, as claim 19 is not an independent claim. It appears Appellants
intended to refer to independent claims 1, 12, and 18, and we interpret
Appellants' remarks accordingly.
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Application 12/135, 105
B. Claims 6-8 are rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Van Dok et al. and Sirhall (US
2004/0205559 Al; pub. Oct. 14, 2004).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of claims 1-5,
9-19, and 24--28, rejected under anticipation rejection A, on the basis of
representative Claim 1. We address remaining claims 6-8, rejected under 35
U.S.C. § 103(a), separately, infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments (Ans. 8-11). We further
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection A of claims 1-5, 9-19, and 24--28 under 35 U.S.C. § 102(e)
Claim 1 - Limitation LI
First Issue: Did the Examiner err in finding Van Dok expressly or
inherently discloses contested limitation LI: "determining whether the
representation of the first contact is selected in the contacts area," (emphasis
added), within the meaning of claim 1?
In support of the finding that Van Dok anticipates contested limitation
LI, the Examiner cites to paragraph 39, and figures 3A and 3B. The
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Application 12/135, 105
Examiner finds these cited portions indicate: "Bryan receives a text message
322 from contact Jena who is to be determined as a 'selected' contact or
not." (Non-Final Act. 4).
Appellants initially contend "there is no indication [in Van Dok]
... that any representation of any contact is selected as claimed" (App. Br.
7), and further contend, "[t]he Office Action's attempt to comingle elements
from 'Before' and 'After' violates the continuity of time." (Id. at 9).
Appellants additionally contend, by "combining the embodiment[] of FIG.
3A with the embodiment of FIG. 3B, the Office Action is repudiating the
very reason Van Dock teaches two embodiments" and, "[t]he Office
Action's proposed interpretation 'un-does' the very aspects of the user
interface that Van Dock sought to distinguish." (Id. at 9-10). 3
The Examiner disagrees (Ans. 8-10), and refers to his previous
findings set forth in the Non-Final Action (Id. at 10). The Examiner finds
the determining step or act (L 1) "is performed in the selection process by the
second contact, Mike" (Id. at 9).
In the Reply Brief (5), Appellants respond by contending: (1) "[t]he
Examiner appears to confuse the act of selecting with the state or status of
selected," and (2), "[t]he claim does not require the act of selecting a
3 To the extent Appellants appear to be arguing that Figs. 3A and 3B of Van
Dok "teach away" from the claimed invention, we find this argument
misplaced because "[t]eaching away is irrelevant to anticipation."
Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir.
2005). "A reference is no less anticipatory if, after disclosing the invention,
the reference then disparages it .... [T]he question whether a reference
'teaches away' from the invention is inapplicable to an anticipation
analysis." Celeritas Techs., Ltd. v. Rockwell Int'! Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998).
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Appeal2014-007483
Application 12/135, 105
representation of a contact in a contacts area" but instead "the claim requires
the act of determining whether the representation is selected, that is, whether
the representation is in the state of currently being selected."
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987); see also In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (The "name of the game is the claim" and unclaimed
features cannot impart patentability to claims).
In determining whether Van Dok anticipates contested limitation L 1,
we must consider the claim as a whole, and accord proper weight to the
antecedent basis for "the first contact" (L 1 ), which is introduced in the
preceding step or act of "receiving a text message from a first contact of the
plurality of contacts" (emphasis added), because of the requirement in
"determining" step LI as to "whether the representation of the first contact
is selected in the contacts area." (Claim 1, emphasis added).
In reviewing the cited portions of Van Dok, we are not persuaded the
Examiner erred. Van Dok (i-f37) discloses user Bryan 310 monitors (i.e.,
receives) a text message 322 from user Jena 320 (e.g., "a first contact") from
the plurality of contacts comprising Jena, Mike, and Kurt (Van Dok i139,
Fig. 3A). Van Dok further explains that if user Bryan does not interact with
message 322, "the sending contact's [Jena's] representation 325 in the
'After' sequence may be highlighted" (emphasis added), and in the example
given, Jena's icon 325 (i.e., "the representation of the first contact") "is
shown outlined" (i.e., is "selected in the contacts area") (Van Dok i139, Fig.
3A). Thus, we find by determining to select Jena's icon 325, Van Dok is
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Appeal2014-007483
Application I2/135, I 05
"determining whether the representation [icon 325] of the first contact [Jena
320] is selected in the contacts area," as recited in limitation LI of claim 1.
Moreover, under a broad but reasonable interpretation, we conclude
claim I is silent regarding any restriction on the specific order or timing
between the "determining" and the selection of "the representation of the
first contact." (Claim I, limitation LI). 4 5 Therefore, we find unavailing
Appellants' contentions regarding an unclaimed "continuity of time." (App.
Br. 9-IO). Accordingly, we are not persuaded the Examiner erred in finding
Van Dok anticipates contested limitation LI of claim I .
Claim 1 - Limitation L2
Second Issue: Did the Examiner err in finding Van Dok expressly or
inherently discloses contested conditional limitation L2: ''presenting the text
message in the conversation area when it is determined that the
representation of the first contact is selected in the contacts area," within the
meaning of claim I? (emphasis added).
In finding Van Dok anticipates contested conditional limitation L2,
the Examiner cites to Van Dok, at Paragraph 33, and Figure 2A (Non-Final
Act. 4--5).
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d I374, I379 (Fed.
Cir. 2007) (citation omitted).
5 Altiris, Inc. v. Symantec Corp., 3 I8 F.3d I363, I37I (Fed. Cir. 2003)
(Although the specification discussed only a single embodiment, the court
held that it was improper to read a specific order of steps into method claims
where, as a matter of logic or grammar, the language of the method claims
did not impose a specific order on the performance of the method steps, and
the specification did not directly or implicitly require a particular order).
6
Appeal2014-007483
Application I2/135, I 05
Appellants contend, "[b ]ecause Van Dok fails to disclose the claimed
act of 'determining' [i.e., limitation LI] it must also necessarily fail to
disclose presenting a text message in a conversation area based on such
determination" and, "because there is no determination of whether a
representation of a contact from whom a message is received is selected in
Van Dok, the presentation of messages in Van Dok is obviously not related
to such a determination." (App. Br. I I-I2).
The Examiner disagrees, because the Examiner previously found Van
Dok discloses the contested limitation LI step of "determining." (Ans. IO).
We agree with the Examiner's findings. Appellants' argument
regarding contested limitation L2 is grounded on an erroneous premise-that
Van Dok does not disclose the "determining" step (limitation LI), of claim
I. We found this argument unpersuasive for the reasons discussed above.
Therefore, by a preponderance of the evidence, and on this record, we are
not persuaded the Examiner erred in finding that Van Dok anticipates
contested limitation L2 of claim I.
Claim 1 - Limitation L3
Third Issue: Did the Examiner err in finding Van Dok expressly or
inherently discloses contested conditional limitation L3: ''presenting a
message container containing at least a portion of the text message
proximate to the representation of the first contact in the contacts area when
it is determined that the representation of the first contact is not selected in
the contacts area," within the meaning of claim I? (emphasis added).
In finding Van Dok anticipates contested conditional limitation L3,
the Examiner cites to Van Dok, at Paragraph 39 (describing figure 3A), and
figures 3B-3C (Non-Final Act. 5). Specifically, the Examiner finds the
7
Appeal2014-007483
Application I2/135, I 05
claimed "message container" is anticipated by notification 322 (Non-Final
Act. 5, citing Van Dok, Fig. 3A, 322).
In the Answer, the Examiner further explains that, by appearing
"beside or adjacent to conversation representation 327," the notification
322 (i.e., corresponding to Appellants' claimed "message container") is
"proximate" to the representation of the first contact. (Ans. I I; see also Van
Dok, Fig. 3A, 322, 327).
Appellants again urge: "[b]ecause Van Dok fails to disclose the
claimed act of 'determining' ... [i.e., limitation LI,] it must also necessarily
fail to disclose presenting a message proximate [to] the sender's
representation (in a contacts area) based on such determination." (App. Br.
I3). Appellants additionally contend:
[T]he Office's assertion that "[t]he message notification 322
from Jena to Bryan is, from Bryan's point of view, a message
from a non-selected contact ... ,"the presentation of the
message from Jena to Mike as viewed by Bryan is entirely
unrelated to whether a representation of Jena is selected in a
contacts area. Moreover, even if the presentation of the
message from Jena to Mike could be considered to be based on
whether Jena's representation was selected (which it cannot),
the message is still not presented proximate to Jena's
representation.
(Id. at I4).
For the same reasons previously discussed regarding limitations LI
and L2, we find Appellants' first contention is grounded on an erroneous
premise. We do not find Appellants' second contention persuasive for the
following reasons:
We find Van Dok discloses presenting a message container
8
Appeal2014-007483
Application 12/135, 105
/ ,•rw ,• ,...,.,.....,..... --.---,• ,...,. "-" , • • , .,. , ,• ro,.,. , , h.
~nouncauon jLL, !'1g. jAJ comammg at least a pon10n or me text message v
proximate to the representation (icon 325) of the first contact (Jena 320,
and/or conversation representation 327, Fig. 3A), as claimed. (Van Dok i-f
39, Fig. 3A).
Whether Van Dok's text message 322 (Fig. 3A) is "proximate to" the
representation (icon 325, and/or conversation representation 327) of the first
6 Regarding the "text message" and the "message container containing at
least a portion of the text message" that appear to be presented to the user
(claim 1), the MPEP guides: "where the claim as a whole is directed [to]
conveying a message or meaning to a human reader independent of the
intended computer system, and/or the computer-readable medium merely
serves as a support for information or data, no functional relationship
exists." MPEP § 2111.05 (III.) (9th Ed., Mar. 2014). Therefore, we
broadly but reasonably construe the recited "text message" and the "message
container containing at least a portion of the text message" as non-functional
descriptive material (NFDM) merely intended for human perception. (Claim
l ). \Ve also conclude the recited (1) "text message" and, (2) the "message
container containing at least a portion of the text message" (i.e., NFDM)
presented to the user for human perception do not further limit the structure
of the apparatus of system claim 18. The PTAB has provided guidance in
decisions on the appropriate handling of claims that differ from the prior art
only based on "non-functional descriptive material." See Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of the
information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process.").
In our analysis herein, we consider the extrinsic MPEP descriptions(§
2111.05) regarding NFDM (reflecting official current USPTO policy and
procedural guidance) as underlying subsidiary facts which inform our claim
construction for all claims before us on appeal. See Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015) ("we review the
Board's ultimate claim constructions de novo and its underlying factual
determinations involving extrinsic evidence for substantial evidence." See
also Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841--42 (2015).
9
Appeal2014-007483
Application 12/135, 105
, , /T ,...,."'A --.---,• ,...,. .l >. , "I • , , • '7 T • • ,"I
contact ~Jena jLU, !'1g. jAJ turns on ciam1 construcuon. ' in rev1ewmg me
record, we are not persuaded the Examiner's interpretation of the claim term
"proximate" as meaning "near" or "adjacent" is overly broad or
unreasonable. (Ans. 11, claim 1). Appellants do not argue any definition or
express disclaimer in the original Specification that would limit the scope of
the contested claim term "proximate." 8 (Claim 1 ).
7 111 the event of fmiher prosecution of this application, \Ve leave it to the
Examiner to consider whether at least independent claims l, 12, and 18
should be rejected under 35 U.S.C. § 112, second paragraph, as indefinite
under 35 U.S.C. § 112, second paragraph. We leave it to the Examiner to
consider whether the claim term "proximate" is an indefinite subjective term
amenable to two or more plausible claim constructions. "[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim ... indefinite. " Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). See
also In re Packard, 2013-1204, WL 1775996 at *15 (Fed. Cir. May 6, 2014),
(J. Plager concurring)(" In my vie\v (and that of the per curiam court), it is
within the authority of the USPTO to so interpret the applicable standard").
Claim scope cannot depend solely on the unrestrained, subjective opinion of
a particular individual purported to be practicing the invention. Datamize
LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005); see
also Manual of Patent Examining Procedure (MPEP) § 2173.05(b)(IV) (9th
Ed., Mar. 2014). Although the Board is authorized to reject claims under 37
C.F .R. § 41 .50(b ), no inference should be drawn when the Board elects not
to do so. See MPEP § 1213.02.
8 It is the Appellants' burden to precisely define the invention, not the
PTO's. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a
patent applicant is entitled to be his or her own lexicographer of patent claim
terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d
578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to
be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
10
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Application 12/135, 105
Therefore, we conclude, under a broad but reasonable interpretation,
the claim term "proximate to" at least covers the distance between text
message 322, and Jena's representation icon 325 (and/or conversation
representation 327), as depicted in Van Dok's Fig. 3A. 9
Moreover, the temporal claim term "when" (limitation L3) merely
establishes that the determination that the representation of the first contact
is not selected is a predicate condition for presenting the message container
proximate to the representation of the first contact.
Therefore, on this record, and based on a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's finding of
anticipation with respect to contested limitations L 1-L3 of claim 1. We
sustain the Examiner's Rejection A of representative claim 1, and Rejection
A of the grouped claims, which fall with claim 1. See Grouping of Claims,
supra.
Rejection B of claims 6--8
Appellants advance no separate arguments regarding the remaining
claims rejected under§ 103 Rejection B. Arguments not made are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain
the Examiner's rejection B of claims 6-8.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
9 See n.4 supra.
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Application 12/135, 105
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner's decision rejecting claims 1-19 and 24--28.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
12