Ex Parte Ylitalo

Board of Patent Appeals and Interferences

Jun 27, 2012

10304776 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/304,776 11/26/2002 Jouni Ylitalo 800.0882.U1 (US) 6874
10948 7590 06/27/2012
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
CHO, UN C
ART UNIT PAPER NUMBER
4133
MAIL DATE DELIVERY MODE
06/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOUNI YLITALO
____________

Appeal 2010-002786
Application 10/304,776
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12, 15, and 18-30. Claims 13, 14, 16, and 17 have been
indicated as containing allowable subject matter. App. Br. 3; Ans. 9. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention performs software functions in a mobile station
when keys are pressed down while the keypad is locked. See generally
Abstract. Claim 1 is illustrative:

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1. A method comprising:

detecting that one or more keys are kept pressed down when a keypad
is locked, the one or more keys being associated with a predetermined
application view containing information that is to be retrieved during keypad
lock,

performing software functions for retrieving the information of the
predetermined application view when said one or more keys are kept pressed
down while the keypad is locked, and

showing the retrieved information of the application view on one or
more mobile station displays when said one or more keys are kept pressed
down while the keypad is locked.

THE REJECTIONS
1. The Examiner rejected claims 1-4, 9-12, 15, 18-21, and 26-30
under 35 U.S.C. § 103(a) as unpatentable over Carley (US 6,574,484 B1;
June 3, 2003 (filed Dec. 2, 1999)), Robertson (US 2002/0160807 A1; Oct.
31, 2002), and Kim (US 6,591,117 B1; July 8, 2003 (filed Dec. 29, 1998)).
Ans. 3-7.1
2. The Examiner rejected claims 5 and 22 under 35 U.S.C. § 103(a)
as unpatentable over Carley, Robertson, Kim, and Masuda (US
2002/0004408 A1; Jan. 10, 2002). Ans. 7-8.
3. The Examiner rejected claims 6-8 and 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over Carley, Robertson, Kim, and Martensson (US
5,241,583; Aug. 31, 1993). Ans. 8-9.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed June 8,
2009; (2) the Examiner’s Answer mailed September 16, 2009; and (3) the
Reply Brief filed November 16, 2009.
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THE OBVIOUSNESS REJECTION OVER CARLEY, ROBERTSON, AND KIM
The Examiner finds that Carley discloses every recited feature of
representative claim 1 except for (1) executing an application when one or
more keys are kept pressed down, and (2) showing retrieved information of
the application view on one or more mobile station displays, but cites
Robertson and Kim for respectively teaching these features in concluding
that the claim would have been obvious. Ans. 3-5, 10-12.
Appellant argues that the cited prior art does not teach or suggest
performing software functions for retrieving information of the
predetermined application view while the keypad is locked as claimed. App.
Br. 9-11; Reply Br. 3. Appellant adds that combining the references as the
Examiner proposes not only undermines Carley’s teachings, but also
constitutes a new ground of rejection since the Examiner’s reason to
combine the references articulated in the Answer is said to be different from
that indicated in the Final Rejection. App. Br. 12-13; Reply Br. 4-5, 7-9.
Appellant also argues limitations of claim 9 noted below.

ISSUES
1. Under § 103, has the Examiner erred by finding that Carley,
Robertson, and Kim collectively would have taught or suggested:
(a) performing software functions for retrieving information of a
predetermined application view when one or more keys associated with the
view are kept pressed down while a keypad is locked as recited in claim 1?
(b) determining in user profiles one or more keys to correspond with
particular software functions for retrieving the application view as recited in
claim 9?
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2. Is the Examiner’s reason to combine the teachings of Carley,
Robertson, and Kim supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 1-4, 11, 12, 15, 18-21, and 26-30
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1. The Examiner finds that
Carley detects that one or more keys are pressed down when a keypad is
locked, and if the values entered via these keys match known emergency
numbers stored in the phone’s memory (e.g., 911), then the phone sends the
emergency call even if the phone is locked. Ans. 4, 10 (citing Carley, col. 1,
l. 63 – col. 2, l. 21; col. 4, l. 49 – col. 5, l. 12). Notably, the Examiner finds
that Carley’s placing an emergency call when the phone is locked executes
an application (Ans. 4, 10)—a reasonable finding given the functionality of
the phone’s controller 300 which (1) recognizes the entered values; (2)
compares them to stored values in memory 310; and, if there is a match, (3)
directs the phone to call the emergency number. See Carley, Abstract; col.
4, ll. 48-65; Fig. 5. This automatic controller-based functionality reasonably
comports with the plain meaning of “application,” namely “[a] program
designed to assist in the performance of a specific task. . . .”2
Carley also at least suggests an “application view” as claimed since,
as Appellant acknowledges (Reply Br. 4), Carley displays a dialed number
on the phone itself. See Carley, Figs. 1, 3 (showing “911” on display 110).
Since this entered emergency number “911” is associated with the

2 MICROSOFT COMPUTER DICTIONARY 31 (5th ed. 2002).
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application that enables bypassing the phone’s locked status (see, e.g.,
Carley, Abstract), the phone’s keys are therefore associated with this
“application view” as claimed. Moreover, Carley at least suggests
performing at least some software functions to retrieve associated
information during this locked condition, particularly in view of the phone’s
controller functions noted above. Appellant’s contentions to the contrary
(App. Br. 10; Reply Br. 3) are unavailing, for they rely on non-limiting,
exemplary implementations that are not claimed as the Examiner indicates.
Ans. 11.3 Accordingly, Appellant’s arguments are not commensurate with
the scope of the claim, which does not preclude Carley’s “application view”
and its associated retrieved information.
Nor are we persuaded of error in the Examiner’s reliance on
Robertson, for it was cited merely to show that it is known to make
emergency calls when one or more keys are kept pressed down for a certain
time period. Ans. 4, 10 (citing Robertson, ¶ 0031). We see no reason why
skilled artisans would not apply such a technique to Carley’s system as the
Examiner proposes, for it would provide a user-friendly alternative to
entering emergency numbers (e.g., “911”) as the Examiner suggests. See
Ans. 4. Although this stated rationale differs somewhat from that articulated
in the Final Rejection as Appellant indicates (Reply Br. 7), the Examiner’s
rationale regarding the feature of placing emergency calls by pressing
buttons down for a predetermined time nonetheless does not change the
overall thrust of the rejection, which was based on the obviousness of

3 Accord Spec. ¶ 0022 (noting that a local application “may be for instance a
calendar, a text message, a list of tasks, a timer, a date or another piece of
local information in the mobile station”) (emphasis added).
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providing this feature in Carley—a system that likewise uses keys to make
emergency calls. Compare Ans. 4 with Fin. Rej. 3. In short, the Examiner’s
proposed combination predictably uses prior art elements according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). In any event, Appellant’s
contention that the Examiner improperly entered new grounds of rejection
(Reply Br. 7-8) is a petitionable—not appealable—matter and is therefore
not before us.4
We are also not persuaded of error in the Examiner’s reliance on Kim
(Ans. 4-5, 10-11) merely to show that it is known to inform the user by
displaying a function that was selected via pressing particular keys. See
Kim, col. 2, ll. 67; Figs. 1-2 (describing displaying a message indicating
whether the user designates a phone’s “OK” key as a store or recall key
depending on whether the “OK” key was pressed after a numeric key). We
see no reason why such a display of retrieved status information could not be
displayed in connection with the application view of the Carley/Robertson
system as the Examiner proposes, particularly in view of Carley’s display
that at least suggests indicating entered emergency call numbers when
locked as noted previously. Although the Examiner’s rationale to combine
Kim with the other references differs somewhat from that articulated in the
Final Rejection as Appellant contends (Reply Br. 7 (comparing Ans. 5 with
Fin. Rej. 4)), the Examiner’s rationale based on the obviousness of providing
an indication on a display as suggested by Kim in the Carley/Robertson

4 See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”).
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system nevertheless does not change the overall thrust of the rejection. In
any event, the Examiner’s proposed combination predictably uses prior art
elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. at 417. We therefore find the Examiner’s reason to
combine the teachings of the cited references supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-4, 11, 12, 15, 18-21, and 26-30, not
separately argued with particularity.

Claims 9 and 10
We will not, however, sustain the Examiner’s rejection of claim 9,
which recites determining in user profiles one or more keys to correspond
with particular software functions for retrieving the application view. As
Appellant indicates (App. Br. 4; Reply Br. 11), the recited “user profiles” are
associated with particular users and enable storing and controlling various
settings for group functions. See, e.g., Spec. ¶ 0014 (noting that changing
the user profile enables the user to simultaneously affect several apparatus
settings, such as ring type, tone, etc.); see also Spec. ¶ 0021 (describing
different user profiles and their associated software functions).
Although the Specification does not explicitly define the term “user
profile,” this description nonetheless informs our construction of the term
and reasonably comports with its plain meaning, namely “[a] computer-
based record maintained about an authorized user of a multiuser computer
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system.”5 Accordingly, the Examiner’s mapping a particular storage
location in Carley’s memory to the recited “user profile” (Ans. 5, 12) does
not reasonably comport with this construction when interpreted in light of
the Specification.
We are therefore persuaded that the Examiner erred in rejecting claim
9 and dependent claim 10 for similar reasons.

THE REJECTION OVER CARLEY, ROBERTSON, KIM, AND MASUDA
We will, however, sustain the Examiner’s obviousness rejection of
claims 5 and 22. Ans. 7-8. Despite nominally arguing these claims
separately, Appellant reiterates similar arguments made in connection with
claim 1 and alleges that Masuda fails to cure those purported deficiencies.
App. Br. 13-14. We are not persuaded by these arguments, however, for the
reasons previously discussed.

THE REJECTION OVER CARLEY, ROBERTSON, KIM, AND MARTENSSON
Regarding representative claim 6, the Examiner finds that the cited
prior art discloses every recited feature except for interrupting performing
software functions for retrieving the application view when a call arrives at
the mobile station, but cites Martensson as teaching this feature in
concluding that the claim would have been obvious. Ans. 8-9, 13-14.
Appellant argues that not only does Martensson fail to interrupt
performing the recited software functions as recited in claim 6, these
software functions are not performed during data transmission as recited in
claim 8. App. Br. 14-15. Appellant adds that the Examiner’s reason to

5 MICROSOFT COMPUTER DICTIONARY 544 (5th ed. 2002).
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combine the references is improper and, in any event, constitutes a new
ground of rejection. App. Br. 15-16; Reply Br. 8.

ISSUES
1. Under § 103, has the Examiner erred by finding that Carley,
Robertson, Kim, and Martensson collectively would have taught or
suggested:
(a) interrupting performing software functions for retrieving an
application view when a call arrives at the mobile station apparatus6 as
recited in claim 6?
(b) performing the software functions during data transmission as
recited in claim 8?
2. Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 6, 7, 23, and 24
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 6, which recites, in pertinent part,
interrupting performing software functions for retrieving an application view
when a call arrives at a mobile station. As the Examiner indicates,
Martensson automatically disables a locked keyboard in a mobile phone
responsive to a received incoming call to permit the user to answer the call.

6 We note in passing that no antecedent basis exists for “the mobile station
apparatus” in claim 6.
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Ans. 13-14 (citing Martensson, col. 5, ll. 42-49). Despite Appellant’s
arguments to the contrary (App. Br. 14-16), we see no reason why such a
teaching could not be applied to the Carley/Robertson/Kim system as the
Examiner proposes, for providing such an automatic interruption of the
previously-described software functions would, among other things, enable
the user to answer incoming calls.
Although the Examiner’s rationale to combine Martensson with the
other references differs somewhat from that articulated in the Final
Rejection as Appellant contends (Reply Br. 8 (comparing Ans. 8 with Fin.
Rej. 7)), the Examiner’s rationale based on the obviousness of interrupting
software functions as suggested by Kim in the Carley/Robertson/Kim system
nevertheless does not change the overall thrust of the rejection. In any
event, the Examiner’s proposed combination predictably uses prior art
elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. at 417. Accordingly, we find the Examiner’s reason to
combine the teachings of the cited references supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 6, and claims 7, 23, and 24, not separately argued with
particularity.

Claims 8 and 25
We also sustain the Examiner’s rejection of representative claim 8
reciting performing software functions for retrieving the application view
during data transmission. We see no error in the Examiner’s reliance on
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Martensson’s column 5, lines 50-57 (Ans. 9, 14) for at least suggesting this
feature since this passage teaches that a keyboard lock may be manually
reset during incoming and outgoing calls, which the Examiner equates to the
recited data transmissions. Although this reset is a manual operation as
Appellant indicates (App. Br. 15), skilled artisans would nonetheless
recognize that the underlying reset functionality would involve some
software functions. Nor do we see any reason why this teaching of
performing software functions during data transmissions could not be
applied to those functions for retrieving an application view in the
Carley/Robertson/Kim system as the Examiner proposes.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 8, and claim 25, not separately argued with
particularity.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1-8, 11, 12,
15, and 18-30, but erred in rejecting claims 9 and 10.

ORDER
The Examiner’s decision rejecting claims 1-12, 15, and 18-30 is
affirmed-in-part.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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