Ex Parte Ylitalo

Patent Trial and Appeal Board

Jun 16, 2017

13718208 (P.T.A.B. Jun. 16, 2017)

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.”).
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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.
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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
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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).
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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:
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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
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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
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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.
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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.
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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.
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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.
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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.
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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.
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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
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