Ex Parte Carlson et al

Patent Trial and Appeal Board

Dec 28, 2015

12822684 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/822,684 06/24/2010 Michael Pierre Carlson
52021 7590 12/30/2015
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
TW920090004US1_8150-0081 6265
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
12/30/2015 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PIERRE, TONY S.T. HSU, and CHARLES H. LU
Appeal2014-001357
Application 12/822,684
Technology Center 2600
Before BRUCE R. WINSOR, HUNG H. BUI, and
AMBER L. HAGY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-20, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is IBM Corp. (App.
Br. 1.)
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Application 12/822,684
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "user selection of control
components of an application program [and] [m]ore particularly, ... [to]
user selection of control components of an application program using an
intermediate module between an operating system and an application
program." (Spec. i-f 2.) Claim 1, which is illustrative, reads as follows:
1. A method for a user to select a control component
from a plurality of control components of an application
program within a handheld device, the method comprising:
detecting a plurality of available control components
within a handheld device;
assigning a shortcut key to each detected control
component;
displaying, on a display device of the handheld device,
the assigned shortcut key corresponding to each detected
control component; and
transmitting an instruction, responsive to one of the
shortcut keys being initiated, to the application program to
select the corresponding control component.
Claims 15-20 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. (Final Act. 2-3.)
Claims 1-6, 8-13, and 15-192 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Eftekhari (US 7,184,024 B2; Feb 27, 2007) and
Fisher (US 5,694,562; Dec. 2, 1997). (Final Act. 4--10.)
2 Claims 5 and 18 are not listed in the summary ground of rejection (see
Final Act. 4) but are included in the detailed discussion of the ground of
rejection (see Final Act. 10). We treat this discrepancy as a typographical
error of no import, as it does not appear to have confused Appellants. (See
App. Br. 27.)
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Application 12/822,684
Claims 7, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eftekhari, Fisher, and Matthews, III et al. (US 6,266,059
Bl; July 24, 2001) (hereinafter "Matthews"). (Final Act. 10-12.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Aug. 12, 2013; "Reply Br." filed Oct. 28, 2013) and the
Specification ("Spec." filed Aut. 31, 2012 for the positions of Appellants
and the Final Office Action ("Final Act." mailed May 9, 2013) and Answer
("Ans." mailed Aug. 27, 2013) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
The salient issues presented by Appellants arguments are as follows:
Does the Examiner err in rejecting claim 15 under § 101 as
encompassing a non-statutory transitory signal?
Under § 103, does the Examiner err in finding the combination of
Eftekhari and Fisher teaches or suggests "detecting a plurality of available
control components [of an application program] within a handheld device
... [, and] displaying, on a display device of the handheld device, [an]
assigned shortcut key corresponding to each detected control component," as
recited in claim 1?
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Application 12/822,684
ANALYSIS
We have reviewed Appellants' arguments and contentions (App. Br.
5-35; Reply Br. 2-9) in light of the Appellants' Specification and the
Examiner's findings (Final Act. 2---6) and explanations (Ans. 14--24)
regarding the § 101 rejection of claim 15 and the § 103 rejection of claim 1.
We agree with the Examiner's findings and explanations (Final Act 2---6;
Ans. 14--24) and we adopt them as our own. The following discussion,
findings, and conclusions are for emphasis.
Re} ection under 3 5 US. C. § 101
The precedential decision in Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential) (cited at Ans. 16), is binding on the Board. In
Mewherter, the Board determined "the ordinary and customary meaning of
'computer readable storage medium' to a person of ordinary skill in the art
was broad enough to encompass both non-transitory and transitory media."
Mewherter, 107 USPQ2d at 1860. Appellants contend that because the
Mewherter panel designated their affirmance of the Examiner's rejection
under § 101 as a new ground of rejection, the Mewherter appellants "did not
have a fair opportunity to respond." (Reply Br. 2.) However, the rules of
practice before the Board did give the Mewherter appellants the opportunity
to respond in a request for rehearing, including presenting additional
arguments regarding the ordinary and customary meaning of claim terms. 3
See 37 C.F.R. §§ 41.50(b)(2), 41.52(a)(3) (2011).
3 We note that the real party in interest in the Mewherter appeal (see
Mewherter, 107 USPQ2d at 1858, n. 1) and the real party in interest in the
present appeal are the same.
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Application 12/822,684
In Mewherter the panel concluded that because the specification
lacked a definition of "computer readable storage medium" that precluded
transitory media, the ordinary and customary meaning, which does not
preclude transitory media, was the applicable broadest reasonable
interpretation of "computer readable storage medium." See Mewherter, 107
USPQ2d at 1862. Accordingly, in following Mewherter, we look to
Appellants' Specification to ascertain whether, as argued by Appellants, the
Specification defines "computer readable storage medium" in such a way as
to preclude a transitory medium. (See App. Br. 26-27 (citing Spec. i-fi-120-
21 ); Reply Br. 3.) We conclude it does not.
Although the Specification describes "computer readable medium( s )"
(Spec. i120), including "a computer readable signal medium" (id.) and "a
computer readable storage medium" (id.), the descriptions are, for the most
part, couched in permissive or exemplary language ("can be," "for example,
but not limited to," "a non-exhaustive list" (Spec. i-fi-120, 21)) rather than
setting forth a definition. The Specification states "[i]n the context of this
document, a computer readable storage medium can be any tangible medium
that can contain, or store a program for use by or in connection with an
instruction execution system, apparatus, or device." (Spec. i-f 20 (emphases
added).) However, a signal, which is comprised of energy, is tangible, i.e.,
"substantially real," MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 1204
(def. 1.b.) (10th ed. 1999). Furthermore, "a signal with embedded data
[stores the data] ... for data can be copied and held by a transitory recording
medium, albeit temporarily, for future recovery of the embedded data."
Mewherter, 107 USPQ2d at 1862.
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Application 12/822,684
The Specification goes on to state "[a] computer readable signal
medium can be any computer readable medium that is not a computer
readable storage medium and that can communicate, propagate, or transport
a program for use by or in connection with an instruction execution system,
apparatus, or device." (Spec. i-f 21.) Although this passage excludes a
computer readable storage medium from the definition of a computer
readable signal medium, it does not preclude a computer readable storage
medium from encompassing a transitory signal (see Spec. i-f 20).
For the foregoing reasons, we conclude the broadest reasonable
interpretation of a "computer program product comprising: a computer
readable storage medium ... ," as recited in claim 15, encompasses a non-
statutory transitory signal. Therefore, we sustain the rejection of claim 15
under § 101. Appellants have stated that, with regard to the rejections under
§ 101, claims 16-20 stand or fall with claim 15. (App. Br. 9.) Accordingly,
we also sustain the rejection under § 101 of claims 16-20.
Rejection under 35 USC§ 103
Appellants contend the Examiner erred because Eftekhari teaches
displaying hyperlinks from an HTML 4 file, whereas claim 1 recites detecting
the control components of an of an application program. (App. Br. 28
(citing Eftekhari col. 2, 11. 1-14); see also Reply Br. 3-5).) Appellants
further contend "an HTML file is not an application program." (Id.) We see
no error. We agree with the Examiner's conclusion that the broadest
reasonable interpretation of an "application program" is "a sequence of
instructions that can be executed by a computer to assist in the performance
of a specific task." (Ans. 17 (citing MICROSOFT COMPUTER DICTIONARY 39
4 Hyper Text Markup Language. (Eftekhari col. 2, 11. 2-3.)
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- - - - '_+h - - - - - ' ' -- - - - - _, ' -- - - -
and 533 (5'H ed. 2002)) (internal quotation marks omitted).) We further
agree with the Examiner's finding that Eftekhari' s HTML running in
Eftekhari' s browser is encompassed within the broadest reasonable
interpretation of an "application program," as recited in claim 1. (Ans. 18
(citing Eftekhari col. 5, 1. 50-col. 6, 1. 49); see also Ans. 19 (citing Eftekhari
col.8, 11. 45--48).)
Appellants contend the Examiner erred because "[t]he assigned
shortcut keys of Fisher are not on a display device of a handheld device" as
recited in claim 1. (App. Br. 31; see also Reply Br. 5-6.) We see no error.
As the Examiner points out, "one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references," In re Keller, 642 F.2d 413, 426 (CCPA 1981).
(Ans. 20.) The Examiner relies on Eftekhari, not Fisher, to teach shortcut
keys displayed on a handheld device having a display device. (Final Act. 4--
5 (citing Eftekhari col. 5, 11. 50-64, col. 6, 11. 36--49, col. 7, 11. 53---60, col. 8,
11. 45--49).) The Examiner relies on Fisher to teach that it is well known to
display shortcut keys on a display device. (Final Act. 5 (citing Fisher col. 2,
1. 55---col. 3, 1. 3).) We agree with the Examiner that
[a]t the time of the invention, it would have been obvious to one
of ordinary skill in the art, having the teachings of Eftekhari
and Fisher before him or her to modify the shortcut system of
Eftekhari to replace the backlit physical keys with an onscreen
representation of the shortcut key of Fisher.
(Final Act. 5.)
Appellants contend the "[t]he Examiner's analysis makes no attempt
to explain why (i.e., a rational underpinning) one skilled in the art would
modify Eftekhari in view of Fisher." (App. Br. 33; see also Reply Br. 6-9.)
We see no error. The Examiner finds and concludes that relocating the
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Application 12/822,684
functions of the shortcut keys from Eftekhari' s keypad to Eftekhari' s
display, as taught by Fisher, would be a matter of simple substitution (Final
Act. 5---6; Ans. 22-23) and provides a detailed explanation of the differences
between claim 1 and Eftekhari and why the combination of Fisher with
Eftekhari is a predictable substitution of one known element for another.
(Ans. 23 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).)
The Examiner further articulates an express motivation for the combination
drawn from the teachings of the references. (Id. (citing Fisher col. 2, 11. 28-
37).) We conclude the Examiner has provided "some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness," KSR, 550 U.S. at 418 (quoting In re Kahn, 441F.3d977, 988
(Fed. Cir. 2006)).
Appellants further contend "[t]o substitute the teachings of Fisher
with that of Eftekhari would require the addition of an integrated keyboard, a
mouse or touchscreen, a touch pad, and a display region big enough to
display all of the key icons 2 found in Figure 2 of Fisher." (App. Br. 8.)
Appellants' argument does not demonstrate error in the rejection because
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. ... [T]he test [for obviousness] is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art.
Keller, 642 F.2d at 425.
We sustain the rejection of claim 1under§103. Appellants have
stated that, with regard to the rejections under§ 103, claims 2-20 stand or
fall with claim 1. (App. Br. 27, 34.) Accordingly, we also sustain the
rejections under § 103 of claims 2-20.
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Application 12/822,684
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
ELD
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