Ex Parte Webber

Patent Trial and Appeal Board

Jun 30, 2017

13299271 (P.T.A.B. Jun. 30, 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.
13/299,271 11/17/2011 Paul Webber 6583-145 2025
111285 7590
Sheridan Ross P.C.
1560 Broadway
Suite 1200
Denver, CO 80202
07/05/2017 EXAMINER
DRAGOESCU, CLAUDIA B
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
edocket @ sheridanross .com
flexpatents-sr@ sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL WEBBER
Appeal 2016-001430
Application 13/299,2711
Technology Center 2100
Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to a device with two screens that can change
“from a single screen operating mode to a multiple screen operating mode.”
Spec. Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1 According to Appellant, the real party in interest is Z124. App. Br. 2.
Appeal 2016-001430
Application 13/299,271
1. A method, comprising:
providing a device having at least first and second screens,
physically connected by a hinge, wherein, in an open
configuration, the first and second screens face in a similar
direction, wherein, in a closed configuration, the first and second
screens are back-to-back in different planes and face in an
opposite direction;
in a first display mode in the closed configuration,
presenting a first user interface for an email application on a first
screen, wherein the first display mode includes displaying
content in a landscape orientation and displaying content on the
first screen;
receiving input from a user, wherein the input includes a
change in the number of screens that are in view of the user by
opening the device into the open configuration;
in response to opening the device into the open
configuration, determining a second display mode in the open
configuration, wherein the second display mode includes
displaying content in a landscape orientation and displaying
content on at least the first and second screen;
in response to the change from the closed configuration to
the open configuration that changes the number of screens that
are in view of the user and the determination that the device is in
a second display mode, presenting the first user interface on a
first screen;
in response to the change from the closed configuration to
the open configuration that changes the number of screens that
are in view of the user and the determination that the device is in
a second display mode, presenting a second user interface on a
second screen, wherein the second user interface is also
associated with the email application, and wherein the second
user interface providing content different from and not
previously provided in the first user interface.
Rejection
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Ohki et al. (US 2007/0285401 Al; Dec. 13, 2007),
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Application 13/299,271
Chiang et al. (US 2010/0081475 Al; Apr. 1, 2010), and Freund (US
2010/0060587 Al; Mar. 11, 2010). Final Act. 2-3.
ISSUES
1. Did the Examiner err in finding the combination of Ohki and
Chiang teaches or suggests the following limitation recited in claim 1:
in response to the change from the closed configuration to the
open configuration that changes the number of screens that are
in view of the user and the determination that the device is in a
second display mode, presenting a second user interface on a
second screen, wherein the second user interface is also
associated with the email application, and wherein the second
user interface providing content different from and not
previously provided in the first user interface?
2. Did the Examiner err by improperly combining the teachings
and suggestions of Ohki and Chiang?
ANALYSIS
Claim 1 recites “in response to the change from the closed
configuration to the open configuration that changes the number of screens
. . ., presenting a second user interface on a second screen . . . associated
with the email application . . . [and] providing content different from and not
previously provided in the first user interface.”
The Examiner relies on the combination of Ohki and Chiang for
teaching or suggesting this limitation. The Examiner finds “Ohki teaches a
device with two screens that can operate in one-screen mode when closed, or
in two-screen mode when open.” Ans. 3. In Ohki, when “the user opens the
device to display two screens,” the “second screen displays a keyboard for
entering text in a new email.” Id. (citing Ohki Fig. 7). Appellant, however,
contends that the keyboard “is a separate input application that is not
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Application 13/299,271
associated with the email application.” App. Br. 8.2
For the second reference, the Examiner finds “Chiang teaches a
device with one screen that can operate in one-window mode or two-
windows mode.” Ans. 3. Thus, Chiang teaches displaying multiple
windows for the same application on one screen. For example, “in two-
windows mode, one window displays the list of emails, and the other
window displays text of a selected email, thus the second window provides
content different from the first window.” Id. (citing Chiang Fig. 10A, 1 55).
Appellant, however, argues “Chiang only describes a single screen” and thus
Chiang’s device “cannot open or respond to opening.” App. Br. 9.
We are not persuaded by Appellant’s arguments attacking Ohki and
Chiang individually. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). We agree with the Examiner that the “combination of Ohki and
Chiang teaches a device that can open from one screen to two screens [as in
Ohki], and both screens [as in Ohki] display different views of an email
application [as in Chiang].” Ans. 4 (emphasis added). Thus, in the
combination, upon opening the device in Ohki, Ohki’s second screen
displays Chiang’s second window for an email application. It follows that
we are not persuaded the combination of Ohki and Chiang fails to teach or
suggest the disputed “in response to” limitation recited in claim 1.
Appellant further contends no motivation exists to combine Ohki and
2 Although not necessary for our decision, we note Figure 61C of the present
application depicts the second screen showing a “Keyboard — Email
Layout,” similar to Ohki’s teaching in Figure 7 of the second screen
displaying a keyboard for email input. See Spec. 1412.
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Application 13/299,271
Chiang. App. Br. 10. The Examiner, however, finds
Chiang teaches splitting the screen . . . automatically, for
example when the device orientation changes .... Thus the
screen is split when the aspect ratio of the screen changes. . . .
The aspect ratio of the screen also changes when the second
screen [of Ohki] is opened, therefore it would be obvious to apply
the teaching of Ohki to split the screen when the total screen area
changes by opening another screen.
Ans. 5. Thus, it would have been “obvious to expand displaying the email
application from one view on one screen to two views on two screens, when
the device is opened.” Id. Given the record before us, we agree with the
Examiner. “Both Ohki and Chiang are from the same field of endeavor”
(Ans. 4), and the aspect ratio changing in Ohki when adding a second screen
would have motivated a person of ordinary skill in the art to consider various
user interfaces for dealing with the changed aspect ratio, including
displaying a second window for the same application as taught by Chiang.
The Examiner correctly finds Ohki already teaches “the second screen
displays a keyboard for entering text in a new email” (Ans. 3), and as the
Supreme Court has said, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
Appellant also argues the combination would (1) “require significant,
and improper, redesign”; (2) violate “the principle of operation for both of
these references”; and (3) “render the systems inoperable.” App. Br. 10.
Yet aside from these conclusory assertions, Appellant proffers no evidence
or argument to persuade us the combination would result in any of these
outcomes. Appellant further argues “the references actually teach away
from the combination as the combination would require the devices to do
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Application 13/299,271
something different from what is described in the references.” App. Br. 10.
We are not persuaded by Appellant’s arguments. “A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted). Here, there is no evidence of criticism, discrediting, or
discouragement. Other than conclusory attorney argument, Appellant
“presents no evidence that the [Examiner’s proposed modification] was
uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007). As such, we are not persuaded the Examiner improperly combined
the teachings and suggestions of the references. Thus, we are not persuaded
of error in the Examiner’s proposed combination.
Appellant also argues dependent claims 4, 7, and 10 for the same
reasons as discussed above. App. Br. 11. We agree with the Examiner,
however, for the reasons discussed above and in the Answer. Ans. 6—8.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2—20, which Appellant argues are patentable for similar reasons. See
App. Br. 11-12; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—20. No time for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 41.50(f).
AFFIRMED
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