Ex Parte Mattila et alDownload PDFPatent Trials and Appeals BoardAug 12, 201311706779 - (D) (P.T.A.B. Aug. 12, 2013) Copy Citation 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). Appeal 2011-003453 Application 11/706,779 2 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. Appeal 2011-003453 Application 11/706,779 3 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). Appeal 2011-003453 Application 11/706,779 4 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 Application 11/706,779 5 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 Appeal 2011-003453 Application 11/706,779 6 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 Copy with citationCopy as parenthetical citation