Huawei Device Co.,Ltd.

Patent Trials and Appeals Board

Mar 10, 2022

2021001555 (P.T.A.B. Mar. 10, 2022)

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. 16/356,820 03/18/2019 Chan WANG 4437-39000 3859 97698 7590 03/10/2022 Huawei Technologies Co., Ltd. c/o Conley Rose, P.C. 4965 Preston Park Blvd, Suite 195E Plano, TX 75093 EXAMINER TAYLOR, BARRY W ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 03/10/2022 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): aipatent@huawei.com dallaspatents@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHAN WANG and HUANGWEI WU ____________ Appeal 2021-001555 Application 16/356,820 Technology Center 2600 ____________ Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and BETH Z. SHAW, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-10 and 16-20. Claims 11-15 have been allowed. Final Act. 24.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Huawei Device Co., Ltd., which is a wholly owned subsidiary of Huawei Investment & Holding Co., Ltd. Appeal Br. 3. 2 Throughout this opinion, we refer to (1) the Final Rejection mailed May 11, 2020 (“Final Act.”); (2) the Appeal Brief filed October 9, 2020 (“Appeal Br.”); (3) the Examiner’s Answer mailed October 26, 2020 (“Ans.”); and (4) the Reply Brief filed December 28, 2020 (“Reply Br.”). Appeal 2021-001555 Application 16/356,820 2 STATEMENT OF THE CASE Appellant’s invention processes communication requests in connection with mobile phones, where when a first mobile phone activates Do Not Disturb mode, the phone determines to send prompt information automatically to a second mobile phone to reply to a received communication request. See generally Spec. ¶¶ 41, 78-79; Fig. 3. Claim 1 is illustrative: 1. A system for processing communication requests, the system comprising: a first mobile phone configured to: receive a first short message service (SMS) message from a second mobile phone and reply to the first SMS message; receive a second SMS message from a third mobile phone and not reply to the second SMS message; and activate a Do Not Disturb mode: the second mobile phone configured to send a first communication request to the first mobile phone; and the third mobile phone configured to send a second communication request to the first mobile phone, wherein when the Do Not Disturb mode is activated, the first mobile phone is further configured to: receive the first communication request and the second communication request; Appeal 2021-001555 Application 16/356,820 3 determine to automatically send prompt information to the second mobile phone, to whom the first SMS message has been replied, to reply to the first communication request; and determine not to automatically send the prompt information to the third mobile phone. THE REJECTIONS The Examiner rejected claims 1-5, 9, 10, 16, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Ziemianska (US 2014/0171132 Al; published June 19, 2014), Kemmler (US 2014/0342775 A1; published Nov. 20, 2014), and Hannum (US 2006/0020993 A1; published Jan. 26, 2006). Final Act. 3-20. The Examiner rejected claims 6-8, 17, and 18 under 35 U.S.C. § 103 as unpatentable over Ziemianska, Kemmler, Hannum, and Hewitt (US 2006/0123347 A1; published June 8, 2006). THE REJECTION OVER ZIEMIANSKA, KEMMLER, AND HANNUM The Examiner finds that Ziemianska discloses many recited elements of independent claim 1, including a first mobile phone configured to, among other things, (1) receive a first SMS message from a second mobile phone and reply to that message; (2) receive a second SMS message from a third mobile phone, but not reply to that message; and (3) when the first mobile phone is in a Do Not Disturb mode, (a) receive communication requests sent by the second and third mobile phones, and (b) determine not to send prompt information automatically to the third mobile phone. Final Act. 3-5. Although the Examiner acknowledges that Ziemianska’s first mobile phone does not determine to send prompt information automatically to the Appeal 2021-001555 Application 16/356,820 4 second mobile phone to reply to the first communication request, the Examiner cites Kemmler as teaching this feature. Final Act. 5-7. The Examiner also acknowledges that the Ziemianska/Kemmler determination, while involving a second mobile phone, nevertheless does not specify that the second mobile phone is that to whom the first SMS message was replied. Final Act. 7-8. The Examiner, however, cites Hannum for teaching this feature in concluding that the claim would have been obvious. Id. Appellant argues that not only does Ziemianska fail to receive and reply to an SMS message, neither Kemmler nor Hannum discloses a first mobile phone that, when in a Do Not Disturb mode, automatically sends a message to a second mobile phone to whom the first SMS message was replied as claimed. Appeal Br. 6-12; Reply Br. 2-7. Although Appellant acknowledges Kemmler’s Do Not Disturb mode, Appellant argues that Kemmler does not automatically send prompt information in that mode as claimed, but instead creates customized messages for callers in a “notify” group-messages that are sent regardless of whether an SMS message was replied to or not. Appeal Br. 8-10; Reply Br. 3-4. Appellant adds that Hannum is likewise deficient in this regard because not only does Hannum not activate a Do Not Disturb mode, Hannum’s text messages are sent responsive to received calls or voice messages-not text messages, much less an SMS message as claimed. Appeal Br. 10-11; Reply Br. 5-7. According to Appellant, if Hannum answers a priority call or message from a particular caller, a precedence is set to answer such calls or messages in the future-functionality that does not send a message automatically to a second mobile phone to whom a first SMS message was replied if a Do Not Disturb mode is activated as claimed. Appeal Br. 11. Appeal 2021-001555 Application 16/356,820 5 ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Ziemianska, Kemmler, and Hannum collectively would have taught or suggested a first mobile phone configured to (1) receive a first SMS message from a second mobile phone and reply to that message; (2) receive a first communication request sent by the second mobile phone; and (3) in a Do Not Disturb mode, determine to send prompt information automatically to the second mobile phone to whom the first SMS message was replied to reply to the first communication request (“the prompt information sending determination limitation”)? ANALYSIS We begin by noting that claim 1 recites a conditional limitation, namely that first mobile phone is configured to perform the last three recited functions when in a Do Not Disturb mode. Our emphasis on the term “when” underscores a conditional limitation that, in a recited method, need not be satisfied to meet the claim. See Ex parte Schulhauser, Appeal No. 2013-007847, at 6-10 (PTAB Apr. 28, 2016) (precedential); see also Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (noting the Federal Circuit has held that “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed”); Applera Corp. - Applied Biosystems Grp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a method claim’s interpretation as including a step that need not Appeal 2021-001555 Application 16/356,820 6 be practiced if the condition for practicing the step is not met); MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed. Rev. 10.2019, June 2020) (citing Schulhauser).3 Although conditional limitations need not be met to satisfy a method claim, that is not the case here, where the claim recites an apparatus whose structure performs a function that occurs only if a condition is satisfied. See Schulhauser at 14-15. That is, for apparatus claims, the claim still requires structure for performing the function should the condition occur. Therefore, to satisfy claim 1, the prior art must teach or suggest a mobile phone capable of performing the last three recited functions, including the disputed prompt information sending determination, when the Do Not Disturb mode is activated. On this record, we see no error in the Examiner’s reliance on Ziemianska, Kemmler, and Hannum for collectively at least suggesting the limitations of claim 1, including the disputed prompt information sending determination limitation. First, although Ziemianska does not state explicitly that the disclosed smartphone replies to a received SMS message as Appellant indicates (Reply Br. 2), Ziemianska nevertheless notes that the phone suppresses most forms of communication, including phone calls and text messages, in the “do not disturb” mode and, in certain implementations, 3 Although the limitations at issue in Schulhauser were rendered conditional by reciting the term “if,” we discern no meaningful distinction between the recitation of “if” and “when” in this context. One dictionary definition of “when” is “in the event that: IF.” When, MERRIAM-WEBSTER.COM, https://www.merriam-webster.com/dictionary/when (2022). Accord Appeal Br. 11 (arguing that “Hannum does not automatically send a message to a second mobile phone to whom a first SMS message has been replied if a Do Not Disturb mode is activated”) (emphasis added). Appeal 2021-001555 Application 16/356,820 7 the user may reply immediately to incoming calls with a text message. Ziemianska ¶¶ 8, 10. Our emphasis underscores that although Ziemianska’s paragraph ten indicates that the user responds to incoming calls with a text message, Ziemianska’s paragraph eight nonetheless refers to other forms of communication, including calls and text messages, in connection with the phone’s suppression functionality in the “do not disturb” mode. Given this suppression functionality that is responsive to incoming text messages, enabling the user to reply immediately with a text message to incoming text messages as well as incoming calls in Ziemianska’s paragraph ten would have not have been a leap of inventiveness. See Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). That (1) Kemmler’s “do not disturb” functionality likewise performs actions responsive to received calls or messages in paragraphs 12, 21, and 22, and (2) responding to a text message with a text message would be natural as Kemmler indicates in paragraph 22, only underscores that replying to received text messages in Ziemianska would have been obvious to ordinarily skilled artisans, namely those with at least an electrical engineering degree and several years of related industry experience, as evidenced by the technical subject matter of the cited prior art references themselves. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). To be sure, Ziemianska does not say that the text messages in paragraph eight are SMS messages. Nevertheless, receiving and replying to SMS messages would have been at least an obvious variation. According to Appeal 2021-001555 Application 16/356,820 8 a noted technical dictionary, the term “SMS” stands for “Short Message Service” and is defined as “[a] telecommunication service offered on GSM [Global System for Mobile Communications] digital mobile phones, often referred to by the popular name of texting, which enables alphanumeric messages of up to 160 characters (similar to those sent by a pager) to be displayed on a handset.” Dick Pountain, THE PENGUIN CONCISE DICTIONARY OF COMPUTING 406 (2003) (emphasis added; capitalized words changed to lower case). Nor has Appellant shown that using SMS messages in this context would have been uniquely challenging or difficult to ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Because SMS is often referred to as “texting,” and is an established form of text messaging between mobile phones as noted above, receiving and replying to SMS messages in connection with Ziemianska’s text- message-based functionality in paragraphs eight to ten would have been at least an obvious variation to ordinarily skilled artisans. In short, such an 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). Nor do we find error in the Examiner’s reliance on Kemmler and Hannum for collectively at least suggesting the recited prompt information sending determination limitation, particularly when considered in light of Ziemianska’s above-noted “do not disturb” functionality. See Final Act. 5- 8; Ans. 4-5. As Kemmler’s paragraph 21 explains, upon receiving calls or messages from contacts in a “notify” group when the recipient’s phone in a “do not disturb” mode, a message is sent to those contacts prompting them Appeal 2021-001555 Application 16/356,820 9 to respond with urgent calls or messages despite the recipient’s phone being in the “do not disturb” mode. Kemmler ¶ 21. For example, upon receiving a call or text message, the recipient can send to the calling or texting party a text message, such as “My phone is in ‘do not disturb’ mode. If this is an emergency, please reply to this text with the word ‘emergency’ and I will be immediately alerted.” See Kemmler ¶¶ 22-23. This functionality at least suggests the recipient mobile phone’s determination to send prompt information to a second mobile phone to reply to a communication request from that second mobile phone. Even assuming, without deciding, that Kemmler’s recipient mobile phone sends messages to other phones regardless of whether the recipient phone replied to an SMS message as Appellant contends (see Appeal Br. 8-10; Reply Br. 3-4), the Examiner’s rejection is not based on Kemmler alone, but rather the cited references’ collective teachings, including those in Ziemianska noted previously. Therefore, Appellant’s arguments regarding Kemmler’s alleged individual shortcomings in this regard do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Nor do we find error in the Examiner’s additional reliance on Hannum for at least suggesting, in the Do Not Disturb mode, sending the prompt information to the second mobile phone to whom the first SMS message was replied as claimed, particularly when considered in light of Ziemianska and Kemmler. See Final Act. 7-8; Ans. 5. As shown in Hannum’s Figure 6C, a particular caller or message identification can be added to a priority list in step 656, and a voice or text message, such as “I can’t answer right now,” can be played responsive to receiving a priority call in step 664. See Appeal 2021-001555 Application 16/356,820 10 Hannum ¶ 80. Given Hannum’s functionality that designates only particular “priority” callers to receive particular messages when the recipient is unavailable, designating such “priority” callers to include those whose SMS messages were previously replied to as the Examiner suggests would have been at least an obvious variation to, among other things, select only callers that are familiar to the recipient, such as those callers with whom the recipient has previously communicated via SMS text messaging. We reach this conclusion despite Hannum disclosing distinct “do not disturb” functionality in paragraph 87 and step 696 of Figure 6C. Although this functionality differs from the priority-based functionality in step 656 of Hannum’s Figure 6C and paragraph 80, the fact that Hannum’s “do not disturb” function drops all future calls in paragraph 87 does not preclude Hannum’s more selective priority-based functionality from also being considered a “do not disturb” function, albeit in a more limited sense, particularly given the message “I can’t answer right now” that is played responsive to receiving a priority call in step 664. See Hannum ¶ 80. That Hannum’s generating and conveying this automatic text message indicating the recipient’s inability to answer incoming calls is strikingly similar to the messaging functionality in the “do not disturb” mode of Ziemianska’s paragraph ten and Kemmler’s paragraphs 21 and 22 only underscores Hannum’s priority-based functionality effectively employs “do not disturb” functionality as well. Nevertheless, the Examiner does not rely solely on Hannum for teaching the recited Do Not Disturb mode, but rather also on Ziemianska and Kemmler. Therefore, Appellant’s arguments regarding Hannum’s individual shortcomings in this regard (Appeal Br. 10-11; Reply Br. 5-7) do not show Appeal 2021-001555 Application 16/356,820 11 nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See Merck, 800 F.2d at 1097. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2-5, 9, 10, 16, 19, and 20 not argued separately with particularity. THE OTHER OBVIOUSNESS REJECTION We also sustain the Examiner’s obviousness rejections of claims 6-8, 17, and 18. Final Act. 20-24. Because this rejection is not argued separately with particularity, we are not persuaded of error in this rejection for the reasons previously discussed. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 1-5, 9, 10, 16, 19, 20 103 Ziemianska, Kemmler, Hannum 1-5, 9, 10, 16, 19, 20 6-8, 17, 18 103 Ziemianska, Kemmler, Hannum, Hewitt 6-8, 17, 18 Overall Outcome 1-10, 16-20 Appeal 2021-001555 Application 16/356,820 12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED