Ex Parte Mattila et al

Patent Trial and Appeal Board

Aug 12, 2013

11706779 (P.T.A.B. Aug. 12, 2013)

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.
11/706,779 02/15/2007 Jouka Mattila 894A.0032.U1(US) 6921
10948 7590 08/13/2013
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
LEGGETT, ANDREA C.
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
08/13/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOUKA MATTILA and ERIKA REPONEN
____________

Appeal 2011-003453
Application 11/706,779
Technology Center 2100
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-35 (App. Br. 2;
Ans. 2). Examiner entered rejections under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The claims are directed to a method, computer program product, and
an electronic device. Claim 1 is representative and is reproduced in the
Claims Appendix of Appellants’ Brief.

1 The Real Party in Interest is RPI a “Nokia Corporation of Espoo, Finland”
(App. Br. 2).
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Claims 1-12, 14-18, 20-24, and 28-35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Madan.2
Claims 13, 19, and 25-27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Madan and Fischell.3
Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Madan teaches the display of (1) an icon that is
associated with an application or file and (2) a simulated shadow, associated
with an icon that comprises contextual information associated with the
application or file?
FACTUAL FINDINGS (FF)
FF 1. Appellants’ figure 3 is reproduced below:

FIG. 3 is an exemplary user interface 300 showing a number of
interface elements, some of which have corresponding shadows
providing context visualization. The “John simulated shadow

2 Madan et al., US 2005/0091578 A1, published April 28, 2005.
3 Fischell et al., US 6,609,023 B1, issued August 19, 2003.
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Application 11/706,779

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as part of the messaging icon indicates the context information
of “I have received a message from John.” Note also that the
“John” simulated shadow may also indicate the context
information of being a friend…. The “00:32” simulated
shadow as part of the calendar icon indicates the context
information of “I have a meeting to attend in 32 minutes”.
(Spec. 7: ¶ [0042].)
FF 2. Madan teaches “an electronic version of the paper sticky note for use
on a computer” (Madan 1: ¶ [0001]).
FF 3. Madan’s figures 3, 4, and 8 are reproduced below:

“FIG. 3 is an illustrative representation of an electronic sticky note as it may
be viewed by a user” (Madan 1: ¶ [0014]). “FIG. 4 is an illustrative
representation of an electronic sticky note including textual content as it may
be viewed by a user” (id. at ¶ [0015]). “FIG. 8 is an illustrative screen shot
of an Internet web browser screen showing an Internet web page including
an embedded electronic sticky note” (id. at 2: ¶ [0019]).
FF 3. Madan’s “canvas 301 may receive a variety of content, such as but
not limited to text, ink, images…, graphics, animation, audio, and video,”
wherein “textual content … [is] entered onto the canvas 301 using, e.g., the
keyboard” (id. at 5: ¶ [0053]; see also id. at 3: ¶ [0038]).
FF 4. Madan’s “electronic sticky notes may appear on the screen with a
shadow” (id. at 3: ¶ [0040]; Ans. 5).
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FF 5. Madan’s “electronic sticky note[s] may be attached to the outside of
an item, embedded inside an item, or a standalone note …. Examples of
such items include, but are not limited to, a file, a folder, a document, an
application, an icon, [or] a contact ….” (id. at 1: ¶ [0005]; Ans. 4-5).
ANALYSIS
Appellants’ independent claims require, inter alia, the display of (1)
an icon that is associated with an application or file and (2) a simulated
shadow, associated with an icon, that comprises contextual information
associated with the application or file.
Madan teaches an electronic sticky note that may comprise contextual
information on the “canvas” of the electronic sticky note (FF 3-4). While,
Madan teaches that electronic sticky notes may appear on the screen with a
shadow, Examiner failed to establish that Madan teaches the placement of
contextual information on the shadow (see App. Br. 8 (“The shadows shown
in … [Madan] are simply shadows, which contain no contextual information
whatsoever relative to an application or file”); see also id. at 9 (“There is no
disclosure in Madan that the shadow includes contextual information
associated with an application or a file to which an icon is associated”)).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Madan teaches the display of (1) an icon that is
associated with an application or file and (2) a simulated shadow, associated
with an icon, that comprises contextual information associated with the
application or file. The rejection of claims 1-12, 14-18, 20-24, and 28-35
under 35 U.S.C. § 102(b) as being anticipated by Madan is reversed.

Appeal 2011-003453
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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion that the combination of Madan and Fischell suggests the
display of (1) an icon that is associated with an application or file and (2) a
simulated shadow, associated with an icon, that comprises contextual
information associated with the application or file?
FACTUAL FINDINGS (FF)
FF 6. Examiner relies on Madan as discussed above (FF 2-6).
FF 7. Examiner relies on Fischell to suggest a mobile electronic device,
such as a mobile phone or wireless modem in which at least one antenna is
coupled to a transceiver (Ans. 14-15).
ANALYSIS
Based on the combination of Madan and Fischell, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious to modify Madan to “include[] a mobile electronic device that
comprises a mobile phone and an antenna coupled to a transceiver, or a
[wireless modem such as the] Sierra AirCard 300 as taught by Fischell”
(Ans. 15). We are not persuaded.
Examiner failed to establish that Fischell makes up for Madan’s
failure to suggest the placement of contextual information on the shadow of
Madan’s electronic sticky note.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion that Madan suggests the display of (1) an icon that is
associated with an application or file and (2) a simulated shadow, associated
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with an icon, that comprises contextual information associated with the
application or file. The rejection of claims 13, 19, and 25-27 under
35 U.S.C. § 103(a) as unpatentable over the combination of Madan and
Fischell is reversed.

REVERSED

cdc