Daniel Freeman et al.

Patent Trials and Appeals Board

Jul 31, 2019

14605793 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/605,793 01/26/2015 Daniel FREEMAN P4545USC1/77870000061201 4367
150004 7590 07/31/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
SIDDIQUI, KASHIF
ART UNIT PAPER NUMBER
2415
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
dentons_PAIR@firsttofile.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL FREEMAN and DEREK B. BARRENTINE
(Applicant: Apple Inc.)

____________

Appeal 2018-000225
Application 14/605,7931
Technology Center 2400
____________

Before MAHSHID D. SAADAT, LINZY T. McCARTNEY,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21–40. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Apple Inc. as the real party in interest. (App. Br. 3.)
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Application 14/605,793

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THE INVENTION
Appellants’ disclosed and claimed invention is directed to a multi-
function portable electronic device with voice activation. (Abstract.)
Claim 21, reproduced below, is illustrative of the claimed subject matter:
21. A method for operating an electronic device using voice
activated input, the method comprising:
at the electronic device:
receiving a voice command while the
electronic device is operating in a low power mode;
determining, while the electronic device is
operating in the low power mode, whether the voice
command is one of a set of voice commands
supported by the electronic device, and in response
to determining that the voice command is one of the
set of voice commands supported by the electronic
device:
changing an operational state of the
electronic device from the low power mode
to a normal power mode; and
executing a function associated with
the voice command once the electronic
device is in the normal power mode.

REJECTIONS
The Examiner rejected claims 21–40 on the ground of nonstatutory
double patenting as being unpatentable over claim 1 of co-pending
Application 11/696,057. (Final Act. 5–9.) Appellants do not address this
rejection, and accordingly it is summarily affirmed.
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Application 14/605,793

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The Examiner rejected claims 21, 22, 24, 25, 28–34, and 36–39 under
35 U.S.C. § 102(b) as anticipated by Schrager (US 2006/0252457 A1, pub.
Nov. 9, 2006.) (Final Act. 9–21.)2
The Examiner rejected claims 23, 26, 35, and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over Schrager and Wei (US 2008/0114604
A1, pub. May 15, 2008). (Final Act. 21–24.)

ISSUE ON APPEAL
Appellants’ arguments present the following issue3:
Whether the Examiner erred in finding claims 21, 22, 24, 25, 28–34,
and 36–39 anticipated by Schrager. (App. Br. 5–24.)

ANALYSIS
Appellants argue, in particular, that the Examiner errs in finding
Schrager discloses the limitation of independent claims 21, 31, and 37,
requiring “determining, while the electronic device is operating in the low
power mode, whether the voice command is one of a set of voice commands
supported by the electronic device. . . .” (App. Br. 3–8.)
The Examiner relies on Figure 2 of Schrager, set forth below, as
disclosing this limitation.

2 Claim 27 was rejected as anticipated in the Final Action, but the Examiner
subsequently withdrew that rejection. (Ans. 10.)
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed May 31, 2017); the Reply
Brief (filed Oct. 6, 2017); the Final Office Action (mailed Aug. 9, 2016);
and the Examiner’s Answer (mailed Aug. 7, 2017) for the respective details.
Appeal 2018-000225
Application 14/605,793

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Figure 2 is a flow chart illustrating communication between a headset
unit and a base unit of a “voice-controlled multimedia and communications
device [(VCMCD)],” showing steps starting with powering on the device
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Application 14/605,793

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and ending with actuating a particular operational mode. (Final Act. 11;
Ans. 3; Schrager ¶¶ 23, 29, 52–57.) The Examiner further relies on the
description of Figure 2, which includes the statement:
In step 210, the VCMCD can enter a power save mode
awaiting user speech. If user speech is received, the method
can continue to step 215. If not, however, the method can
continue to loop until user speech is received.
(Final Act. 11; Ans. 3; Schrager ¶ 54.) The Examiner infers from this
statement that, once the power save mode is entered as described, that mode
is maintained until Step 240 of Figure 2, when the operational mode is
determined. (Final Act. 11; Ans. 4.) If the Examiner is correct, then
Schrager would disclose the claim limitation at issue. (Ans. 4.)
Appellants argue that there is no explicit or inherent disclosure of
maintaining power save mode throughout Steps 215–235 of Figure 2, and
that, to the contrary, the operations described in those steps would not be
expected to take place in power save mode. (App. Br. 12–17.) Appellants
also point out that, during the prosecution of the issued parent of the present
application, essentially the same limitation was found not disclosed in
Schrager. (App. Br. 9–11.)
On review of the record, we agree with Appellants and find that the
Examiner has not made a prima facie case of anticipation. The issue of
whether or not the power save mode is maintained throughout steps 215–235
is a matter of speculation. Accordingly, we do not sustain the Examiner’s
anticipation rejections.
In finding claims 23, 26, 35, and 40 obvious over Schrager and Wei,
the Examiner only relies on Wei for the additional requirements of the
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dependent claims. (Final Act. 21–24.) Accordingly, for the same reasons as
discussed above, we do not sustain the Examiner’s obviousness rejections.

DECISION
We affirm the Examiner’s double patenting rejections of claims 21–
40.
We reverse the Examiner’s anticipation rejections of claims 21–22,
24, 25, 28–34, and 36–39, and the obviousness rejections of claims 23, 26,
35, and 40.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision 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)(1)(iv).

AFFIRMED