Fitbit, Inc.

Patent Trials and Appeals Board

Mar 16, 2021

2019004393 (P.T.A.B. Mar. 16, 2021)

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.
15/826,650 11/29/2017 Heiko Behrens 049242.000802 8422
146641 7590 03/16/2021
Jason Lohr-Fitbit
Hogan Lovells US LLP
Three Embarcadero Center Suite 1500
San Francisco, CA 94111
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
03/16/2021 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):
hlusdocketing@hoganlovells.com
ip@fitbit.com
teri.nelmark@hoganlovells.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEIKO BEHRENS, HENRY LEVAK, and YOON KEAN WONG

Appeal 2019-004393
Application 15/826,650
Technology Center 2400
____________

Before JAMES R. HUGHES, CARL L. SILVERMAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–21, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Fitbit
Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s disclosure is directed to notification for merging new
communications into a pending notification. Abstract; Spec. ¶¶ 2, 7; Figs. 2,
4–6.
Claim 2 is illustrative of the invention and reads as follows (emphasis
added):
2. A system comprising at least one processor and memory
including instructions that, when executed by the at least one
processor, cause the system to:
receive a first communication comprising a first message in one
of a plurality of first fields, the one of the plurality of first fields stored
in a first portion of a storage area and the first message for display on
a first device;
determine a first indicator from a portion of the first message;
determine a notification associated with the first
communication;
display the notification and the first message;
receive a second communication comprising a second message
in one of a plurality of second fields;
determine that a second indicator from a portion of the second
message matches the first indicator;
overwrite the first message with the second message in the first
portion of the storage area;
determine a new first indicator from a portion of the second
message, the new first indicator for use with at least one subsequent
communication comprising a subsequent message for display on the
first device; and
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modify the display of the notification and the first message with
the second message.
Appeal Br. 15 (Claims Appendix).
REFERENCES AND REJECTION2
The prior art relied upon by the Examiner is:
Name Reference Date
Van De Sluis et al. US 2006/0253451 A1 Nov. 9, 2006
Leahy et al. US 8,688,528 B2 Apr. 1, 2014
Goss et al. US 2014/0229655 A1 Aug. 14, 2014
Tapley et al. US 2015/0106221 A1 Apr. 16, 2015

Claims 2–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tapley, Leahy, Goss, and Van De Sluis. Final Act. 2–8.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. As discussed below, we are not persuaded by Appellant’s
contentions of Examiner error.
In the Final Action, the Examiner determines the combination of the
teachings of Tapley, Leahy, Goss, and Van De Sluis teaches the limitations
of claim 2 and provides reasoning why one of ordinary skill in the art would
have been motivated to combine the teachings. Final Act. 3–5 (citing

2 Appellant identifies Appeal 2017-001095, decided Sept. 29, 2017, as a
related Appeal. Appeal Br. 3. That Decision affirmed a § 103 rejection
including the same references as the case (2019-004393) before us.
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Tapley, Figs. 6A–10, ¶¶ 8, 30, 61, 65; Leahy Figs. 18, 19; Goss ¶ 37; Van
De Sluis ¶¶ 1, 4, 7).
Appellant argues the Examiner errs in determining that the
combination of the cited references teaches the following claim 2 limitations
(also referred to as “disputed limitations”) as correctly interpreted: (i)
determine a first indicator from a portion of the first message; (ii) receive a
second communication comprising a second message in one of a plurality of
second fields; (iii) determine that a second indicator from a portion of the
second message matches the first indicator; and (iv) determine a new first
indicator from a portion of the second message. Appeal Br. 8–10.
Appellant argues the Examiner acknowledges Tapley is deficient for
these limitations and errs in relying on Leahy “item #’s” to cure the
deficiency. Id. at 8–9 (citing Final Act. 3–4; Leahy Figs. 18, 19, item #).
According to Appellant, the Examiner misrepresents Leahy and ignores the
express requirements in the claim. Id. at 9. In particular, Appellant argues
claim 2 separately recites “a first communication,” “a first message,” and “a
first indicator from a portion of the first message” and similarly separately
recites similar aspects for “a second communication” having “a second
message” and “a second indicator from a portion of the second message.”
Id. Appellant argues these are different terms that are presumed to have
different meanings unless shown otherwise. Id. Appellant argues the
Specification supports that these are separate terms, for example, Appellant
quotes from the Specification
Non-exclusive examples of such communications include text
messages and/or messages provided by an application server, such as
the server corresponding to the eBay® bidding application previously
discussed.
Specification, p6:lns1-4 (para. 0019) and:
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A detailed view of new communication 244 illustrates that the
new communication 244 also contains a message 248.
Id., p6:lns 6-8 (para. 0020).
In addition the Specification explains that the message may
include an indicator:
Generally, when a new message is received that is to be treated
as if it has an indicator (as discussed with regard to FIGS. 2-4), a
notification is generated that is exclusively assigned to a specific
portion 602 of the memory 218 of the device on which the notification
is to be displayed.
Id., pl2:lns5-8 (para. 0029); see also, Figs. 5 and 6.

Id. at 9.

Appellant argues a proper finding requires separate
“communications,” “messages,” and “indicators from a portion of the
messages” but this is not done by the Examiner. Id. Appellant also argues
the Examiner did not consider all the words in the claim, with their different
meanings. Id. According to Appellant, the Examiner omits language that is
required for context to the indicator: “a first indicator from a portion of the
first message” and “a second indicator from a portion of the second
message.” Id. at 10.
Appellant additionally argues the Examiner’s interpretation of Leahy
is incorrect because Leahy uses a persistent HTTP connection for messages
and communications. Id. at 10. According to Appellant, this means there is
there is no Leahy disclosure for “determining a first indicator from a portion
of the first message,” “determining that a second indicator from a portion of
the second message,” and “determining a new first indicator from a portion
of the second message.” Id. at 10–11. Appellant argues the HTTP context
means there are no determining features. Id.
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Appellant further argues the Examiner’s combination of Tapley and
Leahy is improper because it would change the principle of operation of the
prior art and render the prior art unsatisfactory for its intended purpose. Id.
at 11–12.
In the Answer, the Examiner reiterates and determines that Tapley and
Leahy teach the claimed communications, message, and indicator. Ans. 5–8.
The Examiner finds Tapley describes an online auction where users are
bidding for items; the bids include information such as title, time,
description of item, etc., and the user is notified through notification that a
user is being outbidded. Id. at 5 (citing Tapley Figs. 5D, 6B-6D, ¶ 61). The
Examiner finds Leahy describes alerting a user during an auction of bids
with different types of information (name of item, current bid, time left, start
date, start time, history, high bidder). Id. (citing Leahy, Abstract, Figs. 16,
18, 19 elements 416–430, 3:7–25, 15:19– 44). The Examiner then finds
“[t]herefore Tapley and Leahy, both teach[ ] the user's bid (interpreted as
communication) having different information such as title, time, description
of item, name of item, current bid, time left, start date, start time, history,
high bidder, etc., (interpreted as message with indicators). Id.
The Examiner refers to the Specification:
The indicator 246 may be any character(s) embedded in the new
communication 244, including but not limited to a numeric,
alphabetic, or alphanumeric characters.” Id. (quoting Spec. 6:8–10).

For example, the network-connected device 204 or external
communication device 202 may be configured to evaluate new eBay®
communications 244 to determine whether the communication
contains a specific type of identifier (e.g., the eBay® auction ID,
which is the identifier eBay uses for auctions). If the specific type of
identifier is present in the new communication 244, the identifier may
be treated as an indicator. Id. (quoting Spec. 9:5–9).
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The Examiner concludes, based on the above, the indicators are “any
characters ... including numeric, alphabetic, or alphanumeric characters’,
which can be eBay auction ID, which is clearly taught by Leahy.” Id. at 6
(citing Leahy Figs.18, 19 elements 416–430). The Examiner finds Leahy,
describes a network based marketplace for bidding for an item in an auction
where alerts are sent to the user when old bids are replaced with new bids.
Id. (citing Leahy, Figs. 6, 18, 19, 18: 58–19:6). The Examiner also finds
Leahy Figs.18-19, elements 420, 422, 428, 430 are replaced with updated
information while elements 416, 418, 424, 426 stay the same. The Examiner
further finds the client wishes to receive alerts and enables an alert field for
item listed, item watch, item bid, item out-bid, item end alert, etc. and the
alerts are pushed to the client. Id. (citing Leahy, Fig.16, 7:24–37, 9:10–31).
The Examiner then maps Leahey to the disputed limitations and
concludes Leahy teaches these limitations
(i)determine first indicator from a portion of the first message
(receiving bid with item# see Fig.18);

(ii)receive a second communication comprising a second
message in one of a plurality of second fields (receiving another
bid with item#, see Fig.19);

(iii)determine that a second indicator from a portion of the
second message matches the first indicator (Leahy, Fig.18, 19,
clearly shows item #, and other information such as current bid,
time left, start date, start time, history, high bidder, when a new
bid is placed, that bid overwrites the old bids, therefore at the
very least, there is matching of information such as item#, which
is used to know which item is being bid on, or even the current
bid, in order to overwrite the old price, without the item# or the
other information, the system would not know what product the
bidder is bidding on.); and
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(iv)determine a new first indicator from a portion of the second
message (Fig.18, 19, shows current bid, time left, start date, start
time, history, high bidder, which are "new indicator" which will
be used/displayed in all subsequent bids).
Id. at 6–7.
Regarding Leahy’s use of persistent HTTP connection and HTTP
GET protocols, the Examiner finds that Leahy is not limited to HTTP, but
also includes the use of push to communicate alerts to the user. Id. at 9
(citing Leahy, 7:35–39, 9:21). Additionally, the Examiner concludes that
because Leahy teaches a system of an auctioning of items and user placing
bid, the Leahy system teaches the “determining” features because the system
has to look at what the user is bidding on (i.e., the item or item#) in order to
send alerts to the user when a user is outbidded, without knowing
(determining) the items being bidded, the system wouldn't be able to send
out alerts when a user is outbidded. Id.
Regarding combination of the teaching of Tapley and Leahy, the
Examiner concludes by using Leahy's known process of users bidding on
items in an auction with bids having indicators with fields and the known
process of matching indicator for determination of what items are being
bidded on for combining with Tapley's bid notification provides the
predicable result of using indicators such as item# for updating notification
for auctions. Id. at 11. The Examiner concludes one of ordinary skill in the
art would have been motivated to combine the teachings in order to save
resources and provide a faster display of notification/alert. Id. The
Examiner concludes
by using Leahy's teaching bidding, the system saves the device's
resources, such as memory and processing speed, as the device doesn't
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need to process multiple messages and/or store multiple message
thereby saving processing speed and memory space, and the
notification/alert can be displayed in a faster manner because the
processing speed is reduced. This is general knowledge in the computer
arts and common sense. In further both Tapley, para. 0030 and Leahy,
col. 1, lines 5-10, also provides motivation to combine the teachings of
alerting a user of network based marketplace events.

Id. at 11–12.
The Examiner finds Tapley and Leahy's system are drawn to
providing/placing bids in an auction for items, therefore in the same field of
endeavor and the combination would not change the principle operation of
the prior art. Id. at 12
In the Reply Brief, Appellant reiterates arguments and argues the
claim requires a feature to determine a first indicator from a portion of the
first message. Reply Br. 7. Appellant argues the Examiner errs in finding
the item number is a portion of a message in a field. Id. at 7–8. Appellant
argues Leahy does not teach an additional claim 2 limitation of “overwrite
the message with the second message in the first portion of the storage area.”
Id. at 8. Appellant argues Tapley addresses a requirement of reduced
processing power and lack of capabilities and none of the Leahy persistent
HTTP connections point to this. Id. at 11–12.
As discussed below, we are not persuaded by Appellant’s arguments
because the arguments are not based on a reasonable and broad
interpretation of the disputed limitations and are based on an unreasonably
narrow characterization of the teaching of the cited references.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citations omitted). However, the broadest reasonable
interpretation differs from the broadest possible interpretation. In re Smith
Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
We now refer to the disputed limitations. The Examiner’s
interpretation of the terms “communication,” “message” “indicator,” and
“determine” are reasonable and consistent with the Specification.
Appellant’s arguments suggest these terms are expressly defined or
consistently used contrary to the Examiner’s interpretation. Appellant’s
arguments are not supported by the cited portions of the Specification or the
plain meaning of these terms. Moreover, the Specification provides no
description of how to “determine” an indicator. Spec. 6:5–32; 12:3–9.
Applying a broad and reasonable interpretation, we agree with the
Examiner’s finding that the combination of Tapley and Leahy teaches the
disputed terms.
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Regarding “from a portion of the message,” Leahy’s use of the item#
constitutes an “indicator” which is in a portion of the message and which is
determined by the Leahy system and used to merge and update subsequent
messages. Leahy, Figs. 18, 19; Ans. 6–7.
The Examiner’s reasoning regarding “determine” is reasonable and
supported by evidence because it is based on the teaching of the references.
Ans. 6–7. Appellant argues an unreasonably narrow teaching of the cited
references to attempt to limit the teaching to the express disclosures, and
asserts an overly demanding standard of obviousness. However, we note:
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness. . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Regarding “fields,” Leahy teaches bid elements (fields) are replaced
when updated and bid elements (fields) that remain the same. Leahy, Figs.
16, 18, 19, elements 416–430.
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Regarding “determine” and HTTP of Leahy, the term “determine” is
not defined and is applicable to an HTTP system which determines a
matching of information. Leahy, Figs. 18, 19; Ans. 6–7. Additionally, the
teaching of Leahy is not limited to HTTP systems. Leahy, 7:35–39, 9:21;
Ans. 9.
Regarding “overwrite the message” argued in the Reply Brief, this is
not identified as a disputed limitation in the Appeal Brief and this limitation
is not relied upon in the Answer. Therefore, it is an untimely argument that
is considered waived. See 37 C.F.R. § 41.41(b)(2).
Regarding combination of the teachings of the cited references, as
discussed supra, Appellant’s arguments are based on unreasonably narrow
claim construction and unreasonably narrow interpretation of the teachings
of the references.
On the record before us, we are not persuaded by Appellant’s
arguments because the Examiner provides sufficient evidence to support the
findings and conclusions. Accordingly, the Examiner provides prima facie
support for the rejection. “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Therefore, on the record before us, we conclude the Examiner does
not err in rejecting claim 2, as well as independent claims 7 and 17 that
recite similar limitations, and dependent claims 3–6, 8–16, 18–20 as these
claims are not argued separately.

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CONCLUSION
For the reasons stated above, we sustain the obviousness rejection of
claim 2 and independent claims 7 and 17 which recite the disputed
limitations, and dependent claims 3–6, 8–16, and 18–20.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference Affirmed Reversed
2–21 103(a) Tapley, Leahy, Goss,
Van De Sluis
2–21
Overall
Outcome
2–21

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).
See 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED