Ex Parte YlitaloDownload PDFPatent Trial and Appeal BoardJun 16, 201713718208 (P.T.A.B. Jun. 16, 2017) 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. 13/718,208 12/18/2012 Jouni Ylitalo 800.0882.U2(US) 6280 10948 7590 06/20/2017 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT 06484 EXAMINER FANG, PAKEE ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 06/20/2017 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): USPTO@hspatent.com Nokia. IPR @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOUNI YLITALO Appeal 2016-005250 Application 13/718,208 Technology Center 2600 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and JENNIFER L. McKEOWN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 28-47. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention performs software functions in a mobile station when keys are pressed down while the keypad is locked. See generally Abstract. Claim 28 is illustrative: 28. A method comprising: detecting in an apparatus that a keypad is locked; Appeal 2016-005250 Application 13718,208 detecting in the apparatus that at least one predetermined key of the predetermined least keys is continuously pressed down, the at least one predetermined key being associated with a predetermined application view containing predefined information that is to be retrieved during the keypad being locked, where the predetermined application view is not associated with an emergency call; and displaying the predetermined application view containing the retrieved predefined information while the predetermined key is continuously pressed down keypad is locked. THE REJECTIONS The Examiner rejected claims 28-47 under pre-AIA 35U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2—3.1 The Examiner rejected claims 28, 31—33, 36—38, 41—43, 46, and 47 under 35 U.S.C. § 103(a) as unpatentable over Carley (US 6,574,484 Bl; June 3, 2003) and Carter (US 2002/0115425 Al; Aug. 22, 2002). Final Act. 4-7. The Examiner rejected claims 29, 30, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over Carley, Carter, and Carter (US 6,400,358 Bl; June 4, 2002) (“Carter ’358”). Final Act. 8-9. The Examiner rejected claims 34, 35, 44, and 45 under 35 U.S.C. § 103(a) as unpatentable over Carley, Carter, and Chang (US 7,286,648 Bl; Oct. 23, 2007). Final Act. 9-10. 1 Throughout this opinion, we refer to (1) the Final Rejection mailed March 5, 2015 (“Final Act.”); (2) the Appeal Brief filed November 2, 2015 (“App. Br.”); (3) the Examiner’s Answer mailed February 11, 2016 (“Ans.”); and (4) the Reply Brief filed April 12, 2016 (“Reply Br.”). 2 Appeal 2016-005250 Application 13718,208 RELATED APPEAL This appeal is related to an appeal in the parent application 10/304,776 where another panel of this Board2 affirmed-in-part the Examiner’s decision to reject the then-pending claims as obvious over various prior art references. See Ex parte Ylitalo, No. 2010-002786 (PTAB June 27, 2012) (“’776 Board Decision”). Notably, the primary reference at issue in that appeal, Carley, is also at issue here in this appeal. THE WRITTEN DESCRIPTION REJECTION The Examiner finds that Appellant’s original disclosure fails to support the negative limitation reciting that the predetermined application view is not associated with an emergency call and, therefore, the claims fail to satisfy the written description requirement. Final Act. 2—3; Ans. 3^4. Appellant argues that the claim satisfies the written description requirement because, among other things, ordinarily skilled artisans would understand that displaying a calendar or short message service (SMS) message as noted in the Specification’s paragraph 16 would not be associated with an emergency call. App. Br. 6—10; Reply Br. 1^4. ISSUE Has the Examiner erred in rejecting claim 28 under § 112, first paragraph, by finding that the original disclosure fails to convey with reasonable clarity to skilled artisans that Appellant possessed that the predetermined application view is not associated with an emergency call as 2 Judge McKeown replaces then-Judge Ruggiero in the current panel. 3 Appeal 2016-005250 Application 13718,208 of the effective filing date? This issue turns on whether the original disclosure describes a reason to exclude emergency calls from association with predetermined application views. ANALYSIS We begin by noting, as does the Examiner, that the limitation at issue in the written description rejection, namely that the predetermined application view is not associated with an emergency call, is a negative limitation. Ans. 3. In general, negative limitations are permissible forms of expression to define the scope of a claimed invention. See generally Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 923 (Fed. Cir. 1991). But the mere absence of a positive recitation in the original disclosure is not basis to exclude the limitation. Manual of Patent Examining Procedure (MPEP) § 2173.05 (9th ed. Rev. 07.2015, Nov. 2015). Rather, “[njegative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)) (emphasis added). There is no such reason articulated in the original disclosure, at least with respect to the particular recited exclusion of emergency calls from association with predetermined application views. To the extent that Appellant contends that such a reason to exclude emergency calls can somehow be derived from the disclosed calendar or SMS messages in the Specification’s paragraph 16 (see App. Br. 6—10; Reply Br. 1—4), we 4 Appeal 2016-005250 Application 13718,208 disagree. The Specification is simply silent regarding any such exclusion, let alone a reason for that exclusion. In fact, the Examiner finds to the contrary: namely, that skilled artisans would associate the disclosed calendar and SMS functions for emergency events or calls. Ans. 3. Apart from mere attorney argument,3 Appellant provides no persuasive evidence on this record to rebut this finding, let alone demonstrate that the original disclosure provides the requisite reason to exclude emergency calls as claimed. Such lawyer argument and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). This is not a case where the original disclosure properly describes alternative features of the invention to provide the requisite reason for exclusion. Seelnphi, 805 F.3d at 1355—57. Rather, this is a case where Appellant’s excluding emergency calls from association with application views by reciting a negative limitation effectively introduces a new concept that is not reasonably supported by the original disclosure. See, e.g., Omega Eng’g, Inc. v. RaytekCorp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (finding no express disclaimer or independent lexicography in the written description to justify adding negative limitation); Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983), off dmem., 738 F.2d 453 (Fed. Cir. 1984) (“[T]he express 3 See, e.g., Reply Br. 2 (“Applicant’s attorney knows of no known emergency call which looks to a calendar function or SMS function in order to make an emergency telephone call.”) (emphasis added). 5 Appeal 2016-005250 Application 13718,208 exclusion of certain elements implies the permissible inclusion of all other elements not so expressly excluded. This clearly illustrates that such negative limitations do, in fact, introduce new concepts.”). Therefore, we are not persuaded that the Examiner erred in rejecting claim 28 as failing to comply with the written description requirement, and claims 29-47 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER CARLEY AND CARTER The Examiner finds that Carley discloses every recited limitation of claim 28 except for teaching explicitly that the predetermined key is pressed down continuously. Final Act. 4—5. The Examiner, however, cites Carter as teaching this feature (in addition to other recited features) in concluding that the claim would have been obvious. Final Act. 5—6. Appellant argues that not only is Carley limited to emergency calls, but Carley will not function as claimed under the Examiner’s proposed combination with Carter because Carley requires pressing each key in succession—not continuously. App. Br. 12—17. Appellant adds that the cited prior art does not disclose the recited key detection and application view not associated with an emergency call, let alone display the application view while a predetermined key is pressed down continuously as claimed. App. Br. 17—19. Appellant argues other recited limitations summarized below. ISSUES I. Under § 103, has the Examiner erred by finding that Carley and Carter collectively would have taught or suggested: 6 Appeal 2016-005250 Application 13718,208 (1) the key-press detection and displaying steps recited in claim 28? (2) predefined task information retrieved from the local application as recited in claim 33? (3) in the locked mode, continuously pressing each of the predetermined keys is associated with a particular application and enables a unique view on the display as recited in claim 36? II. Is the Examiner’s proposed combination of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? ANALYSIS Claims 28, 31, 32, 38, 42, and 47 We begin by noting that independent claim 28 is similar in various respects to independent claim 1 that was at issue in the appeal in the parent application. In that case, claim 1 recited, in pertinent part, detecting that one or more keys are kept pressed down when a keypad is locked, the one or more keys being associated with a predetermined application view containing information that is to be retrieved during keypad lock. ’776 Board Decision, at 2. Notably, the base reference at issue in this appeal, Carley, was also at issue in the ’776 appeal. In that appeal, the Board found, among other things, that “Carley also at least suggests an ‘application view ’ as claimed since . . . Carley displays a dialed number on the phone itself. See Carley, Figs. 1, 3 (showing ‘911’ on display 110).” (emphasis added). ’776 Board Decision, at 4. The Board added that “[sjince this entered emergency number ‘911’ is associated with the application that enables bypassing the 7 Appeal 2016-005250 Application 13718,208 phone’s locked status . . . , the phone’s keys are therefore associated with this ‘application view’ as claimed.” Id. 4—5 (emphasis added). To be sure, Carley’s application view in Figure 1 is associated with an emergency call, namely the call made by entering “911” on display 110. Nevertheless, Carley at least suggests that other application views, such as those pertaining to entered access codes, are not associated with emergency calls. See Carley, col. 4,1. 65 — col. 5,1. 1 (noting that if information input from keypad 105 is not an emergency call, but matches a user access code, the mobile phone can be used normally). Accord Ans. 4 (noting after Carley’s system detects that keys associated with an access code or *911 have been pressed down, Carley’s phone application view contains predefined information, for example, the access code or *911). To the extent that Appellant contends that Carley’s locked phone is incapable of displaying data entered via the keypad other than “911,” such as access codes, there is no persuasive evidence on this record to substantiate such a theory. On this record, displaying data entered via the keypad pertaining to non-emergency calls via access codes or otherwise would have been at least an obvious variation given Carley’s teachings. Therefore, Carley at least suggests that, in scenarios where a user enters access codes and other non-emergency data via the keypad, the predetermined application view is not associated with an emergency call. As noted above, claim 28 also requires (1) detecting that at least one predetermined key is continuously pressed down, and (2) displaying the predetermined application view while the key is pressed down continuously and the keypad is locked. Appellant’s Specification does not define the term “continuously,” nor specify exactly what is meant by continuously pressing a 8 Appeal 2016-005250 Application 13718,208 key apart from indicating that predetermined keys are pressed and held down. See Spec, 16, 20. Notably absent from this description is any reference to the keys being pressed down continuously, let alone a minimum amount of time that a key must be pressed to be pressed continuously. This omission of “continuously” in connection with key presses in the Specification is telling, for the Specification uses the term “continuously” explicitly in another context. Compare Spec. 123 (noting that a mobile station continuously communicates with the network in the online state). Nevertheless, under its plain meaning, the term “continuous” is defined, quite broadly, as “uninterrupted.” Funk & Wagnalls Standard Dictionary 154 (2d ed. 1993). Given this interpretation, we see no error in the Examiner’s rejection of claim 28. Leaving aside the fact that a user in Carley presses each key continuously to enter either emergency numbers or access codes via the keypad in column 4, line 49 to column 5, line 12, we nevertheless see no error in the Examiner’s reliance on Carter, whose Abstract and Figure 2 teaches making secure calls by pressing and holding a key for longer than a predetermined time period. Ans. 5. Given this teaching, we see no error in the Examiner’s conclusion that enhancing Carley with such a press-and-hold feature to detect key presses exceeding a certain duration would have been obvious. See Final Act. 5—6; Ans. 5—6. Such an enhancement would not prevent Carley from functioning as Appellant asserts (App. Br. 15), but would, among other things, detect keys that are pressed longer that a certain time period while the keypad is locked, and display associated information, including data associated with those keys. 9 Appeal 2016-005250 Application 13718,208 In short, the Examiner’s proposed enhancement uses prior art elements predictably according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Appellant’s arguments Carley’s and Carter’s individual shortcomings (App. Br. 12—19; Reply Br. 5—8) do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner’s proposed combination of the cited references, then, is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. Therefore, we are not persuaded that the Examiner erred in rejecting claim 28, and claims 31, 32, 38, 42, and 47 not argued separately with particularity.4 Claims 33 and 43 We also sustain the Examiner’s rejection of claim 33 reciting that the predefined information retrieved from the local application comprises a calendar, text message, task, list of tasks, or timer. Despite Appellant’s arguments to the contrary (App. Br. 19—20; Reply Br. 9-10), we see no error in the Examiner’s reliance on Carley’s phone-unlocking functionality for at least suggesting at least one of the recited alternatives, namely the recited 4 Although Appellant nominally argues the Examiner’s rejection of claim 47 separately (App. Br. 32—39), Appellant reiterates arguments similar to those for claim 28. Accordingly, we group these claims together. 10 Appeal 2016-005250 Application 13718,208 task-based information. See Final Act. 7; Ans. 6—7 (citing Carley, col. 4, 1. 52-col. 5,1. 10). As noted previously, when a user enters access codes via Carley’s keypad, the predetermined application view is not associated with an emergency call. See Carley, col. 4,1. 65 — col. 5,1. 1. Therefore, displaying data entered via the keypad pertaining to non-emergency calls via access codes would have been at least an obvious variation given Carley’s teachings. Accord Ans. 4 (noting after Carley’s system detects that keys associated with an access code or *911 have been pressed down, Carley’s phone application view contains predefined information, for example, the access code or *911). Notably, information associated with this entered access code is not only retrieved from a local application to facilitate display, but this information also represents an associated task—namely, to unlock the phone to enable the phone to be used normally as the Examiner indicates. See Ans. 7. Appellant’s arguments are unavailing and not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting claim 33, and claim 43 not argued separately with particularity.5 Claims 36 and 46 We also sustain the Examiner’s rejection of claim 36 reciting, in pertinent part, in the locked mode, the act of continuously pressing each of 5 Although Appellant nominally argues the Examiner’s rejection of claim 43 separately (App. Br. 29-30), Appellant reiterates arguments similar to those for claim 33. Accordingly, we group these claims together. 11 Appeal 2016-005250 Application 13718,208 the predetermined keys is (1) associated with a particular application, and (2) enables a unique view on the display. Despite Appellant’s arguments to the contrary (App. Br. 20—22), we see no error in the Examiner’s reliance on the functionality associated with Carter’s receiving and displaying data calls in paragraph 91 for at least suggesting the recited limitations. Ans. 7. As Carter explains, data calls are answered when the user presses a “SEND” key—even when the keypad is locked. Carter 191. Given this teaching in light of the Examiner’s finding that data calls involve displaying text and graphics (see Ans. 7), we see no reason why an additional application, namely receiving and displaying data calls associated with pressing a “SEND” key as in Carter, could not be provided at least as an adjunct to the key-based calling and unlocking functionality in Carley’s system under the Examiner’s proposed combination. This combination would, among other things, enable a “unique view” on the display for both displayed data calls and data entered via the keypad. Although these functions pertain to receiving and making calls, respectively, nothing in the claim precludes providing these disparate functions in the locked mode of the Carley/Carter system—a predictable use of prior art elements according to their established functions. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). To the extent that Appellant contends otherwise (see App. Br. 22), such arguments are not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting claim 36, and claim 46 not argued separately with particularity.6 6 Although Appellant nominally argues the Examiner’s rejection of claim 46 separately (App. Br. 30-32), Appellant reiterates arguments similar to those for claim 36. Accordingly, we group these claims together. 12 Appeal 2016-005250 Application 13718,208 THE REJECTION OVER CARLEY, CARTER, AND CARTER ’358 We also sustain the Examiner’s rejection of claim 29 reciting (1) releasing the at least one predetermined key, and (2) displaying a normal lock screen on at least one display. Despite Appellant’s arguments to the contrary (App. Br. 40-41), we see no error in the Examiner’s reliance on Carter ’358 (Final Act. 8; Ans. 7—8) for at least suggesting the recited limitations. As shown in Carter ’358’s Figure 7, after the user presses and holds the “MODE” button 16 for about two seconds, the word “LOCKED” appears on display 13 for about five seconds. Carter ’358, col. 8,11. 18—24. This functionality at least suggests that after the user holds the MODE button down for about two seconds to lock the device, the user can then release the key, and the device will then display the term “LOCKED” for about five seconds. See id. Nothing in the claim precludes this “normal lock screen” that is displayed, albeit temporarily. To the extent that Appellant contends otherwise (see App. Br. 41), such arguments are not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting claim 29, and claims 30, 39, and 40 not argued separately with particularity.7 7 Although Appellant nominally argues the Examiner’s rejection of claim 39 separately (App. Br. 41—43), Appellant reiterates arguments similar to those for claim 29. Accordingly, we group these claims together. 13 Appeal 2016-005250 Application 13718,208 THE REJECTION OVER CARLEY, CARTER, AND CHANG We will not, however, sustain the Examiner’s rejection of claim 34 reciting that the predefined information is retrieved from a remote location outside of the apparatus—a limitation for which Chang is cited. Final Act. 9; Ans. 8—9. First, the Examiner’s articulated reason to combine the references in the rejection is problematic, for it not only lacks any reference to Chang, but rather refers to a reference that was not cited in the rejection, namely “Carter”’ (the Examiner’s label for Carter ’358). To justify the proposed combination for claim 34, the Examiner then reiterates the reason to combine Carter ’358 with Carley and Carter that was articulated in connection with claim 29. Compare Final Act. 9 with Final Act. 8 (articulating the same reason to combine references in connection with the rejections of claims 29 and 34 despite citing different references). Because the Examiner did not establish a prima facie case of obviousness for claim 34 by omitting the reason to combine Chang with the other cited references, the Examiner’s rejection is problematic for that reason alone. Nor did the Examiner squarely address—let alone persuasively rebut—Appellant’s contentions regarding Chang’s emergency contacts, whose associated features differ from the recited predefined information that is not associated with an emergency call. App. Br. 43^44; see also Ans. 8— 9. Therefore, we are persuaded that the Examiner erred in rejecting (1) claim 34; (2) claim 44 that recites commensurate limitations; and (3) dependent claims 35 and 45, for similar reasons. 14 Appeal 2016-005250 Application 13718,208 CONCLUSION The Examiner did not err in rejecting (1) claims 28—47 under § 112, first paragraph, and (2) claims 28—33, 36-43, 46, and 47 under § 103. The Examiner, however, erred in rejecting claims 34, 35, 44, and 45 under § 103. DECISION We affirm the Examiner’s decision rejecting claims 28-47. Because the rejection of each appealed claim is affirmed on at least one of the grounds specified in the Office Action from which the appeal was taken, the Examiner’s decision to reject the claims is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 15 Copy with citationCopy as parenthetical citation