AIRWATCH LLC

Patent Trials and Appeals Board

Nov 5, 2020

14691598 - (D) (P.T.A.B. Nov. 5, 2020)

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.
14/691,598 04/21/2015 Ramani Panchapakesan W112.02 (500102-1550) 5673
152577 7590 11/05/2020
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
PARKER, JEANETTE J
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
11/05/2020 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMANI PANCHAPAKESAN, SIVAJI KOYA, and
ANSHUMAN BISWAL
Appeal 2019-004274
Application 14/691,598
Technology Center 2100
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
SCOTT RAEVSKY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
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Application 14/691,598
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DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.3
CLAIMED SUBJECT MATTER
The claims are directed to a floating media player. Spec., Title.
Claim 1, reproduced below with a disputed limitation emphasized in italics,
is illustrative of the claimed subject matter:
1. A non-transitory computer-readable medium embodying
instructions executable in a mobile device, wherein when
executed the instructions cause the mobile device to at least:
identify a media item;
obtain data corresponding to the media item;
perform a playback of the media item using at least one
output device of the mobile device;
render a first user interface corresponding to the playback
of the media item upon a display of the mobile device, the first
user interface being rendered in a first region of the display such
that a second user interface corresponding to another application
is visible in a second region of the display, the first user interface
being of a system alert type, wherein the mobile device permits
the first user interface to be on top of the second user interface

1 We refer to the Specification, filed April 21, 2015 (“Spec.”); Final Office
Action, mailed May 31, 2018 (“Final Act.”); Appeal Brief, filed December
13, 2018 (“Appeal Br.”); Examiner’s Answer, mailed March 15, 2019
(“Ans.”); and Reply Brief, filed May 13, 2019 (“Reply Br.”).
2 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 AirWatch LLC.
Appeal Br. 2.
3 Although we do not sustain all claim rejections, we sustain at least one
ground of rejection for each pending claim. 37 C.F.R. § 41.50(a)(1).
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based at least in part on the first user interface being of the
system alert type;
facilitate a movement of the first user interface on the
display in response to a first user gesture; and
facilitate a resizing of the first user interface on the display
in response to a second user gesture.
REFERENCES4
The prior art relied upon by the Examiner is:
Name Reference Date
Freihold US 2013/0326583 A1 Dec. 5, 2013
Darby US 2015/0046812 A1 Feb. 12, 2015
Lee US 2016/0004388 A1 Jan. 7, 2016
Sheran Gunasekera, Android Apps Security 217 (Apress) (2012)
(“Gunasekera”)
Wallace Jackson, Android Apps for Absolute Beginners, Third Edition
400–03 (Apress) (2014) (“Jackson”)

REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention. Final Act. 3–4.
Claims 1–8, 10–15, 17, 19, and 20 stand rejected under 35 U.S.C. 103
as being unpatentable over Darby and Gunasekera. Final Act. 7–16.
Claim 9 stands rejected under 35 U.S.C. 103 as being unpatentable
over Darby, Gunasekera, and Jackson. Final Act. 16–17.
Claim 16 stands rejected under 35 U.S.C. 103 as being unpatentable
over Darby and Freihold. Final Act. 17–18.

4 All citations herein to patent publications are by reference to the first
named inventor only.
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Claim 18 stands rejected under 35 U.S.C. 103 as being unpatentable
over Darby and Lee. Final Act. 18.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Final Act. 7–21) and (2) the Examiner’s Answer
in response to Appellant’s Appeal Brief (Ans. 6–13) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
35 U.S.C. § 112(b) 5

5 Although claims 1–20 are all indicated as rejected under 35 U.S.C.
§ 112(b), the Examiner only provides narrative explaining the bases for
rejecting for indefiniteness independent claims 1 and 7 and, separately,
dependent claim 9. Final Act. 3. Because independent claim 17 includes
language similar to that found by the Examiner to render independent claims
1 and 7 indefinite, for purposes of our decision, we treat claim 17 as rejected
under 35 U.S.C. § 112(b) for the same reasons as claims 1 and 7.
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Interface being of a system alert type
The Examiner finds “the limitation ‘interface being of a system alert
type’ . . . is not a commonly used term and is not defined in the
specification[, and, as] such, it is unclear what the applicants intended to
cover by the term.” Final Act. 3. Appellant contends the disclosure of an
embodiment of an Android operating system window type
TYPE_SYSTEM_ALERT that allows an application to open a window on
top of all other applications taken together with claim 1’s language reciting a
corresponding capability6 renders the disputed “interface being of a system
alert type” limitation definite. Appeal Br. 5.
The Examiner responds, finding
A person of ordinary skill in the art would understand, usage of
a permission constant in Android API merely allows the app
permission to invoke a particular functionality, it does not make
an app into a “type” of user interface that is of “system alert”. As
such, it is unclear what the appellant meant to cover by the term
“first user interface being of the system alert type”.
Ans. 5. Appellant replies
One of ordinary skill in the art would appreciate that
“TYPE_SYSTEM_ALERT” is not merely a “permission”
constant in the Android API as alleged but instead defines a type
of window in the API. The instant specification further indicates
that “the media player user interface 500 may be of a system alert
type in order to be shown on top of other user interfaces.”
([0040]), which indicates that user interfaces of that type are
“shown on top of other user interfaces.” Thus, the concept of a

6 “ . . . the first user interface being of a system alert type, wherein the
mobile device permits the first user interface to be on top of the second user
interface based at least in part on the first user interface being of the system
alert type . . .”
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user interface being a system alert type is clearly defined and not
indefinite.
Reply Br. 4–5.
We apply the indefiniteness test approved by In re Packard, 751 F.3d
1307 (Fed. Cir. 2014) (per curiam): “A claim is indefinite when it contains
words or phrases whose meaning is unclear,” and “claims are required to be
cast in clear-as opposed to ambiguous, vague, indefinite-terms.” See
Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015-
006416 (PTAB Aug. 25, 2017) (precedential) at *8–11 (explaining because
of different approaches to indefiniteness before the PTAB and the courts, the
PTAB continues to follow Packard after the Supreme Court’s Nautilus, Inc.
v. Biosig Instruments, Inc., 572 U.S. 898 (2014) decision). In assessing
whether a claim is indefinite, we determine whether those skilled in the art
would understand what is claimed when the claim is read in light of the
Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).
The Specification discloses:
The playback module 115 may implement a custom frame layout
class, e.g., under an Android operating system platform. The
Frame Layout may be configured to act as a floating window to
which any views within layouts may be attached. Various touch
listeners may be registered to this custom Frame Layout in order
to recognize multi-touch gestures upon the display 106. For any
other application to allow another window on top of the main
window, a setting may be employed (e.g., in Android
Manifest.xml) that allows an application to open windows using
the type TYPE_SYSTEM_ALERT on top of all other
applications. Thus, the media player user interface 500 may be
of a system alert type in order to be shown on top of other user
interfaces.
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Spec. ¶ 40 (emphasis added). Similarly, the subject limitation’s “wherein”
clause defines similar functionality provided by the recited system alert type
“wherein the mobile device permits the first user interface to be on top of the
second user interface based at least in part on the first user interface being of
the system alert type.” Furthermore, the Gunasekera reference, applied by
the Examiner in rejecting claims under 35 U.S.C. 103 (discussed infra.)
describes the SYSTEM_ALERT_WINDOW permission constant as one that
“Allows an application to open windows using the type TYPE_SYSTEM_
ALERT – shown on top of all other applications.” Final Act. 10;
Gunasekera 217. Thus, in light of the Specification, a reasonable
interpretation of a user interface being of a system alert type is a user
interface that a device permits to be opened (i.e., displayed) on top of
another user interface. Accordingly, we disagree with the Examiner in
finding that the meaning of the disputed recitation is unclear to one skilled in
the art and, therefore, we do not sustain on that basis the Examiner’s
rejection of claims 1 and 7 as indefinite under 35 U.S.C. § 112(b) or the
rejection of claims 2–8 and 10–20. See Packard, 751 F.3d at 1310.

Use of Trademarks/Trade Names Android & Frame Layout Class
Claim 9 recites “The client device of claim 8, wherein the operating
system is an Android operating system, and the service implements a Frame
Layout class.” The Examiner finds claim 9’s recitation of the
trademark/trade names “Android” and “Frame Layout Class” renders the
claim indefinite under 35 U.S.C. § 112(b). Final Act. 3. According to the
Examiner, “[w]here a trademark or trade name is used in a claim as a
limitation to identify or describe a particular material or product, the claim
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does not comply with the requirements of 35 U.S.C. § 112, second
paragraph.” Id. (citing Ex parte Simpson, 218 USPQ 1020, 1021, 1022 (Bd.
App. 1982)). The Examiner explains “In the present case, the
trademark/trade name ‘Android’ is used to identify/describe a type of an
operating system and ‘Frame Layout Class’ is identify/describe a type of
API, accordingly, the identification/description is indefinite.” Id. at 3–4.
Addressing the term “Frame Layout Class,” Appellant argues it is
neither a trade name nor trademark. Appeal Br. 6. Appellant further
responds, arguing “A person of ordinary skill in the art would understand
what is meant by ‘Android’ because it is a well-known and widely used term
identifying a particular operating system.” Id. (citing Ex parte O’Farrell,
Appeal 2011-011075, 2014 WL 2112325 at *4 (PTAB May 19, 2014)
(holding “Java” not indefinite because “’Java’ is a well-known and widely-
used term identifying a particular programming language.”)).
The Examiner responds by finding the use of the name Android is in
identifying a particular material or product and is, therefore, improper. Ans.
5. (citing Simpson, MPEP 2173.05(u)).
Appellant’s arguments are persuasive of reversible Examiner error.
As an initial matter, we note that although the cited PTAB decisions are not
precedential, they are persuasive. The test for definiteness under 35 U.S.C.
§ 112, second paragraph, (now 35 USC 112(b)) is whether “those skilled in
the art would understand what is claimed when the claim is read in light of
the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). Further, our reviewing court has held that the
claim as a whole must be considered to determine whether the claim
apprises one of ordinary skill in the art of its scope, and therefore serves the
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notice function required by 35 USC 112, second paragraph, by providing
clear warning to others as to what constitutes the infringement of the patent.
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir 2000). If
the language of the claim is such that a person of ordinary skill in the art
could not interpret the metes and bounds of the claims so as to understand
how to avoid infringement, a rejection of the claim under 35 USC 112,
second paragraph is deemed appropriate. Morton Int’l, Inc. v. Cardiinal
Chemical Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993).
We agree with Appellant the Android operating system is a well-
known operating system, the name Android® having been registered as a
trademark by Google LLC (U.S. TM Reg. No. 4692657). Although the
name Android® is employed and registered for use with a wide range of
goods and services,7 the Android Operating System is a particular operating
system used by programmable devices such as smartphones and tablets. The
publications cited by the Examiner, including Gunasekera’s Android Apps
Security and Jackson’s Android Apps for Absolute Beginners are further
evidence that the term Android Operating System refers to a particular

7 U.S. TM Reg. No. 4692657 lists the following goods and services: Mobile
phones; operating system software; software for use in developing,
executing, and running other software on mobile devices, computers,
computer networks, and global communication networks; computer software
development tools; computer software for use in transmitting and receiving
data over computer networks and global communication networks; computer
software for managing communications and data exchange among and
between mobile devices and desktop computers; computer middleware,
namely, software that mediates between the operating system of a mobile
device and the application software of a mobile device; computer application
software for mobile phones, namely, software development tools for the
creation of mobile software applications.
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operating system and is not merely an indicator of the source or origin of the
software itself. Thus, use of the term Android Operating System does not
render claim 9 indefinite.
Furthermore, we find insufficient evidence the term “Frame Layout
class” is either a trademark or is used as an indicator of the source or origin
of a product. Although it may well be a particular type of API made
available by the Android Operating System, we again agree with Appellant
that the use of the term does not render claim 9 indefinite.
For the reasons discussed supra, the Examiner has failed to
demonstrate the disputed language of claim 9 renders it indefinite.
Accordingly, we do not sustain the corresponding rejection of claim 9 under
35 U.S.C. § 112(b).
35 U.S.C. § 103
The Examiner finds Darby teaches or suggests most of the limitations
of claim 1 including wherein the mobile device permits the first user
interface to be on top of the second user interface as recited by the disputed
limitation. Final Act. 8–10. The Examiner relies on Gunasekera’s
description of an Android application programing interface’s (API)
SYSTEM_ALERT_WINDOW permission constant, allowing an application
to use the type TYPE_SYSTEM_ALERT to open windows that are shown
on top of all other applications as teaching the mobile device permits the
first user interface to be on top of the second user interface based at least in
part on the first user interface being of the system alert type. Id. at 10. The
Examiner finds “it would have been obvious to a person of ordinary skill in
the art . . . to combine Gunasekera with Darby for the benefit of allowing
users to use standard classes provided by Android API.” Id.
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Appellant contends Darby fails to disclose a first user interface being
of a system alert type. Appeal Br. 7. According to Appellant, “Darby does
not discuss ‘alerts’ at all” and “does not suggest or imply that a system alert
type is used for the second user interface.” Id. at 7, 8. Although not
disputing that Gunasekera teaches the argued deficiencies of Darby,
Appellant contends the Examiner “has provided no ‘articulated reasoning
with some rational underpinning’ as required under KSR Int’l v. Teleflex,
Inc., 550 U.S. 398, 411 (2007) to modify Darby to use the particular
constant listed in Gunasekera.” Id. at 8. Appellant further argues that,
although Gunasekera discloses an alert-type window shown on top of all
other applications, Darby’s dynamic media player “may merely be shown on
top of particular applications, such as a web browser or a different
application, but not necessarily all other applications.” Id. at 8–9.
The Examiner responds to Appellant’s argument that Darby fails to
discuss alerts, finding that such argument is not commensurate in scope with
claim 1 which “does not recite ‘alerts’ nor does the claim recite that [the
recited] ‘system alert type’ has a correlation to ‘alerts.’” Ans. 7. The
Examiner further finds Darby’s description of media player 110, which can
appear to float on top of other content provided by the same or different
applications, teaches the first user interface is on top of the second user
interface as recited by claim 1. Id. at 8. The Examiner again applies
Gunasekera’s disclosure of a TYPE_SYSTEM_ALERT for teaching the first
user interface on top of the second user interface based at least in part on the
first user interface being of the system alert type. Id. at 11.
The Examiner further disputes the reasoning for combining the
teachings of the references is inadequate. Id. at 11. The Examiner explains
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the analysis does not require evidence of an explicit teaching of motivation
to combine, only a rationale. Id. (citing KSR, 550 U.S. at 415–21; MPEP
§ 2143(I)(A)–(F)). In further support of the combination, the Examiner
finds
Prior art Gunasekera is a book titled “Android Apps Security”
which explains [the] Android API including a listing of terms
used in Android API such as permission constant
“TYPE_SYSTEM_ALERT”. The assignee of prior art Darby is
Google who owns the Android operating system. As such it
would be reasonable to believe Darby would know all the
attributes of Android API and applying Gunasekera to Darby
would meet rationales that support a conclusion of obviousness
as outlined in [MPEP § 2143(I)](A)–(F).
Id. at 12.
Appellant’s arguments are unpersuasive of reversible error. As found
by the Examiner, Appellant’s argument that Darby does not discuss alerts is
not commensurate in scope with claim 1 which only recites a system alert
type that the Examiner finds, and we agree, is taught by Gunasekera. Ans. 7.
We are also unpersuaded by Appellant’s argument that Darby’s dynamic
media player is not shown on top of all other applications both because there
is no such requirement recited by claim 1 and because, even if otherwise,
Gunasekera’s TYPE_SYSTEM_ALERT teaches the feature. See
Gunasekera 217 (Permission type SYSTEM_ALERT_WINDOW “Allows
an application to open windows using the type TYPE_SYSTEM_ALERT
shown on top of all other applications.” (emphasis added))
Finally, we are unpersuaded the Examiner’s rationale for combining
the references is insufficient. We note:
Any judgment on obviousness is . . . necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into
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account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must
[include] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”), cited with approval in KSR,
550 U.S. at 418; Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d
1319, 1337 (Fed. Cir. 2004) (“It has long been the law that the motivation to
combine need not be found in prior art references, but equally can be found
‘in the knowledge generally available to one of ordinary skill in the art.’”
(Quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992))). The Court
further instructs that
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

KSR, 550 U.S. at 421 (2007).
In the present case, Darby teaches a mobile device permits a first user
interface to be on top of a second user interface and Gunasekera teaches a
specific mechanism for causing one interface to be on top of another that is
provided by the Android API, i.e., the TYPE_SYSTEM_ALERT
functionality. The Examiner finds the reason for combining the teachings of
references is “for the benefit of allowing users to use standard classes
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provided by Android API,” i.e., utilizing a known mechanism to implement
a desired functionality. Final Act. 10. We find, based on this reasoning, the
Examiner has articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness and are unpersuaded by
Appellant’s argument that the Examiner’s combination of references is
inadequate or improper.
For the reasons discussed supra, Appellant’s arguments are
unpersuasive of error in the Examiner’s rejection of claim 1 under 35 U.S.C.
103. See Appeal Br. 6–9. Appellant’s arguments in connection with
independent claim 7 (id. at 10–12) and independent claim 17 (id. at 12–15)
are substantively repetitive of those discussed in connection with claim 1
and are unpersuasive for the same reasons. Dependent claims 2–6, 8–16,
and 18–20 are not argued separately with particularity. Accordingly, we
sustain the Examiner’s rejections of claims 1–20 under 35 U.S.C. 103.
CONCLUSION
We reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention. Final Act.
3–4.
We affirm the Examiner’s obviousness rejection of claims 1–8, 10–
15, 17, 19, and 20 under 35 U.S.C. 103 over Darby and Gunasekera.
We affirm the Examiner’s obviousness rejection of claim 9 under 35
U.S.C. 103 over Darby, Gunasekera, and Jackson. Final Act. 16–17.
We affirm the Examiner’s obviousness rejection of claims 16 under
35 U.S.C. 103 over Darby and Freihold. Final Act. 17–18.
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We affirm the Examiner’s obviousness rejection of claims 18 under
35 U.S.C. 103 over Darby and Lee. Final Act. 18.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–20 is
AFFIRMED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 102(b) Indefiniteness 1–20
9 102(b) Indefiniteness 9
1–8, 10–15,
17, 19, 20
103 Darby, Gunasekera 1–8, 10–15,
17, 19, 20

9 103 Darby,
Gunasekera,
Jackson
9
16 103 Darby, Freihold 16
18 103 Darby, Lee 18
Overall
Outcome
1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED