Ex Parte RainistoDownload PDFPatent Trial and Appeal BoardDec 21, 201612822561 (P.T.A.B. Dec. 21, 2016) 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. 12/822,561 06/24/2010 Roope Rainisto 042933/388116 6058 10949 7590 12/23/2016 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER DYER, ANDREW R ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROOPE RAINISTO Appeal 2015-005433 Application 12/822,561 Technology Center 2100 Before JOSEPH L. DIXON, JOYCE CRAIG, and ALEX S. YAP, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—3, 5, 6, 8—10, 12, 14—16, and 18—22, which constitute of all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Nokia Corporation. App. Br. 2. 2 Claims 4, 7, 11, 13, and 17 have been canceled. App. Br. 17—20. Appeal 2015-005433 Application 12/822,561 INVENTION Appellant’s invention relates to an apparatus, method and a computer program product configured to create to-do items based on selection of a function to be performed by an application. Spec. 1. Claim 1 is illustrative and reads as follows with disputed limitations shown in italics: 1. An apparatus comprising at least one processor and at least one memory including computer program code, the at least one memory and the computer program code configured to, with the processor, direct the apparatus to: in response to receiving an indication of a first type of user interaction with an interactive component of a first application, the first type of user interaction being associated with the first application, wherein the interactive component is associated with a function to be performed by the first application using an operational characteristic, cause a to-do item to be created and stored in association with the first application, based on the function; receive an indication of a user selection of the to-do item from a second application, wherein the second application is configured to manage to-do items from a plurality of applications, and, in response, cause the function to be performed by the first application using the operational characteristic; and in an instance in which a second type of user interaction with the interactive component of the first application is provided, the second type of user interaction being associated with the second application, cause the function to be performed by the first application. REJECTIONS Claims 1, 2, 8, 9, 14—16, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Diamant et al. (US 5,530,861; issued June 25, 1996) (“Diamant”) and Jim Boyce, Microsoft® 2 Appeal 2015-005433 Application 12/822,561 Office Outlook® 2007 Plain & Simple, Microsoft Press, 90-122 (January 15, 2007) (“Boyce”). Claims 3, 5, 10, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Diamant, Boyce, and Bradley et al. (US 2010/0332280 Al; published Dec. 30, 2010) (“Bradley”). Claims 6 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Diamant, Boyce, and Gough et al. (US 5,680,617; issued Oct. 21, 1997) (“Gough”). Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Diamant, Boyce, and Yuki et al. (US 2009/02227279 Al; published Sept. 10, 2009) (“Yuki”). ANALYSIS We have considered Appellant’s arguments, but do not find them persuasive of error. We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer and in the Final Action from which this appeal was taken, to the extent consistent with our analysis below. We provide the following explanation for emphasis. Appellant contends the cited portions of Boyce do not teach or suggest the recited limitations shown in italics in claim 1 above. App. Br. 8. In particular, Appellant argues that claim 1 requires the recited “first and second type inputs to be made to the same interactive component....” Id. at 10. Appellant argues that “the user input made in Boyce to add a task to the ‘follow-up’ task list is actually performed with a different interactive component (a menu) than the interactive component (icon or other 3 Appeal 2015-005433 Application 12/822,561 selectable item) with which the first type of user interaction is provided in order to cause the operation to be performed.” Id. at 9. Appellant’s arguments do not persuade us the Examiner erred. Appellant’s arguments do not address the rejection actually made by the Examiner. The Examiner found that an email message on pages 94 and 121 of Boyce teaches the “interactive component” limitation recited in claim 1. Final Act. 5; Ans. 5—6. The Examiner does not find that both an icon and a menu in Boyce teach the recited “interactive component,” as Appellant contends. See App. Br. 9. Moreover, Appellant has not persuaded us that the Examiner’s interpretation of the claim term “interactive component” is overly broad or inconsistent with the Specification. Here, based on the plain and ordinary meanings of the terms “interactive” and “component,” the Examiner interpreted the recited “interactive component” to mean “a portion of a system with which a user can exchange input and output.” Ans. 5. In response, Appellant argues that “it would not be reasonable for one to interpret that the interactive component 102B would include a submenu that is not mentioned or illustrated anywhere in the pending application.” Reply Br. 2 (citing Spec. Fig. 3). We give a disputed claim term its broadest reasonable interpretation, consistent with the Specification. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). We find no express definition of “interactive component” in the Specification, and Appellant points to none. Instead, Appellant relies on exemplary embodiments described in the Specification. See Reply Br. 2 (citing Spec. Fig. 3). Though understanding the claim language may be aided by explanations contained in the written description, a particular 4 Appeal 2015-005433 Application 12/822,561 embodiment may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Adoption of Appellant’s proposed interpretation of “interactive component” would require importing an embodiment from the written description into claim 1, which we will not do. Thus, we are not persuaded the Examiner’s interpretation of the claim term “interactive component” is overly broad or unreasonable. Additionally, we note that paragraph 32 of Appellant’s Specification describes that functions may be selected using various methods: Secondary functions may also be accessed by other methods in some embodiments, such as single tapping/clicking, double tapping/clicking, right clicking with a mouse or virtual mouse, swipe action, pinch action, etcetera. Thereby, various methods for selecting functions may be employed in various embodiments. Spec 132. Thus, we agree with the Examiner that claim 1 does not require that user interactions with interactive components be limited to single-step actions. See Am,. 5. Appellant further contends that the Examiner erred because the combination of Diamant and Boyce is improper. App. Br. 11. Appellant argues that the Examiner misinterpreted the claims and that the Examiner’s rationale for combining the teachings of Diamant and Boyce lacks a reasonable basis. Id. at 12. We are not persuaded by either argument. Appellant’s argument that the claims were misinterpreted is not persuasive for the reasons discussed above with regard to the disputed limitations. The Examiner found that the cited prior art teaches that the first and second input types are made to the message in Boyce, which the Examiner mapped to the recited “interactive 5 Appeal 2015-005433 Application 12/822,561 component.” Final Act. 5—6; Ans. 7 (citing Boyce pp. 94, 121). Moreover, we find that the Examiner has provided a valid articulated line of reasoning with a rational underpinning to support the conclusion of obviousness with respect to the proposed combination of Diamant and Boyce. See Final Act. 6; Ans. 9. Appellant provided no rebuttal in a Reply Brief to challenge the Examiner’s position that, even if Boyce lacked an explicit motivation, an artisan of ordinary skill would still have been motivated to combine Boyce with Diamant because such a modification is merely applying a known technique to a known device. Ans. 9 (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398 (2007)). For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Diamant and Boyce teaches or suggests the limitations recited in claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of independent claims 8 and 15, which Appellant argues are patentable for similar reasons. See App. Br. 8, 11. We also sustain the Examiner’s rejection of dependent claims 2, 3, 5, 6, 9, 10, 12, 14, 16, and 18—22, for which Appellant makes no additional arguments. Id. at 8, 11, 14—15. 6 Appeal 2015-005433 Application 12/822,561 DECISION We affirm the Examiner’s decision rejecting claims 1—3, 5, 6, 8—10, 12, 14—16, and 18—22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation