Ex Parte Adimatyam et al

Patent Trial and Appeal Board

Sep 15, 2017

14015246 (P.T.A.B. Sep. 15, 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.
14/015,246 08/30/2013 Venkata S. Adimatyam 20130478 7625
7590 09/19/201725537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
TRAN, TAN H
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VENKATA S. ADIMATYAM, SAMEER GAVADE,
and TARIQ ROSHAN
Appeal 2017-005702
Application 14/015,2461
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Verizon
Communications Inc. App. Br. 3.
Appeal 2017-005702
Application 14/015,246
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
user-based customization of a user interface. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A method comprising
providing, via a device and to a user, a program service
that includes a customized user interface service;
tracking, by the device, the user's behavior pertaining to a
use of the program service;
storing, by the device, usage data based on the user's
behavior, wherein the usage data includes navigational data that
indicates a navigational history of the user's use of original user
interfaces of the program service;
storing, by the device, business rules pertaining to the
customized user interface service, wherein the business rules
include a first rule for all users that prevents a removal of a
particular function and a service associated with the original
user interfaces, a second rule for all users that restricts, but
does not prevent, a particular type of customization of the
original user interfaces, and a third rule that pertains to the
tracking of the user's behavior;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Nov.
10, 2016); Reply Brief ("Reply Br.," filed Feb. 21, 2017); Examiner's
Answer ("Ans.," mailed Jan. 26, 2017); Final Office Action ("Final Act.,"
mailed Aug. 9, 2016); and the original Specification ("Spec.," filed Aug. 30,
2013).
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Appeal 2017-005702
Application 14/015,246
generating, by the device, a customized user interface
based on the business rules and the usage data, wherein the
customized user interface includes an alteration of one or more
graphical elements of one or more user interfaces of the original
user interfaces of the program service;
displaying, via the device, the customized user interface
to the user; and
including the customized user interface as a part of the
original user interfaces of the program service.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Small et al.
("Small")
US 5,898,434 Apr. 27, 1999
Escobar et al.
("Escobar")
US 2002/0053084 Al May 2, 2002
Mohr et al.
("Mohr")
US 2006/0048060 Al Mar. 2, 2006
Dhanjal et al.
("Dhanjal")
US 2007/0055936 Al Mar. 8, 2007
Gibbs et al.
("Gibbs")
US 2009/0133059 Al May 21,2009
Eyer et al.
("Eyer")
US 2009/0150814 Al June 11, 2009
Aritsuka et al.
("Aritsuka")
US 2011/0154216 Al June 23, 2011
Cunningham et al.
("Cunningham")
US 2011/0191699 Al Aug. 4,2011
Choi US 2012/0304229 Al Nov. 29, 2012
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Appeal 2017-005702
Application 14/015,246
Rejections on Appeal
Rl. Claims 1, 7, and 16 stand rejected under 35 U.S.C. § 112(a) as
lacking written description support. Ans. 2.
R2. Claims 1, 2, 4, 6, 7, 9, 11, 12, 16, 17, and 20 stand rejected
under 35 U.S.C. § 103 as being obvious over the combination of Escobar,
Choi, and Dhanjal. Ans. 3.
R3. Claims 3, 10, 14, and 18 stand rejected under 35 U.S.C. § 103
as being obvious over the combination of Escobar, Choi, Small, and Mohr.
Ans. 17.
R4. Claim 5 stands rejected under 35 U.S.C. § 103 as being obvious
over the combination of Escobar, Choi, Small and Eyer. Ans. 21—22.
R5. Claim 8 stands rejected under 35 U.S.C. § 103 as being obvious
over the combination of Escobar, Choi, Small and Gibbs. Ans. 23—24.
R6. Claims 13 and 19 stand rejected under 35 U.S.C. § 103 as being
obvious over the combination of Escobar, Choi, Small, Aritsuka. Ans. 25.
R7. Claim 15 stands rejected under 35 U.S.C. § 103 as being
obvious over the combination of Escobar, Choi, Dhanjal, Small, Mohr, and
Cunningham. Ans. 27.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to claims 1—20 for the specific reasons discussed below.
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Application 14/015,246
I. $ 112(a) Written Description Rejection R1 of Claims 1, 7, and 16
Issue 1
Appellants argue (App. Br. 9—12; Reply Br. 1—3) the Examiner's
rejection of independent claims 1, 7, and 16 under 35 U.S.C. § 112 (a), as
lacking written description support, is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the recitation of "for all users" in
claim 1 lacks written description support in the originally filed application?
Analysis
Appellants contend their "specification satisfies the written
description requirement in relation to 'for all users,' at least based on
paragraphs 17, 37, and 41." App. Br. 10.
Our reviewing court guides the written description "must clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (citation and quotations omitted). The test
is whether the disclosure "conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Id.
"[AJctual 'possession' or reduction to practice outside of the specification is
not enough. Rather ... it is the specification itself that must demonstrate
possession." Id. at 1352; see also PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (explaining that pre-AIA § 112,
II, "requires that the written description actually or inherently disclose the
claim element.")
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Application 14/015,246
However, we conclude the claim term "all users" is outside the scope
of apparatus claim 7 and storage medium claim 16, because it broadly but
reasonably includes persons who are users. However, a human being cannot
constitute a means. Default Proof Credit Card System, Inc. v. Home Depot
U.S.A., Inc., 412 F.3d 1291, 1300 (Fed. Cir. 2005) (citing In re Prater, 415
F.2d 1393, 1398 (CCPA 1969)). As to method claim 1, and similar to our
reviewing court's holding in Default Proof who or what is performing the
recited steps or acts is not specified within the scope of the claim.
We find Paragraph 41 of the Specification, as pointed to by
Appellants (App. Br. 10), shows possession of the first and second rules
recited in claims 1, 7, and 16. Therefore, we find the originally filed written
description reasonably conveys to one of ordinary skill in the art the inventor
had possession of the claimed subject matter of independent claims 1, 7, and
16 as of the filing date. Accordingly, we reverse the Examiner's written
description rejection of claims 1, 7, and 16 under 35 U.S.C. § 112 (a).
2. $ 103(a) Rejection R2 of Claims 1, 2, 4, 6, 7, 9, If 12, 16, 17, and 20
Issue 2
Appellants argue (App. Br. 13—16; Reply Br. 3 4) the Examiner's
rejection of independent claims 1, 7, and 16 under 35 U.S.C. § 103(a) as
being obvious over the combination of Escobar, Choi, and Dhanjal is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, "storing ... a second rule for
all users that restricts, but does not prevent, a particular type of
customization of the original user interfaces," as recited in claim 1?
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Application 14/015,246
Appellants state "[T]he Examiner finds that Dhanjal teaches the
'second rule' and cites to Figure 3 and paragraph 50 of Dhanjal, as evidence
in support of such a finding." App. Br. 13. However, Appellants contend
"Dhanjal unambiguously and consistently discloses that the third party add­
in developer is entirely prevented from making any modifications to some
areas or components of the user interface. Dhanjal, paragraph 50; claim 6."
App. Br. 13-14.
Appellants specifically contend:
[Wjhile the cited portion of Dhanjal may disclose that entirely
preventing any modification to the file button 310 allows
certain functionalities of the file button 310 to be maintained
across a variety of applications, this rationale does not apply to
"a second rule . . . that restricts, but does not prevent, a
particular type of customization of the original user interfaces."
That is, restricting, but not preventing a particular type of
customization may not yield the same result.
App. Br. 14.
We are persuaded by Appellants' argument that the limitation
"restricts, but does not prevent" is not the same as only "restricting."
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the dispositive limitation of claim 1, such
that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we cannot sustain the Examiner's obviousness
rejection of independent claim 1, or independent claims 7 and 16, which
recite the disputed limitation in commensurate form.3 For the same reasons,
3 In the event of further prosecution, we leave it to the Examiner to
determine whether Dhanjal Tflf 7 and 8 teach or at least suggest the disputed
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Application 14/015,246
we also reverse the rejections under § 103 of claims 2—6, 8—15 and 17—20
that variously and ultimately depend from independent claims 1, 7, and 16.
CONCLUSIONS
(1) The Examiner erred with respect to Rejection R1 of claims 1,7,
and 16 under 35 U.S.C. § 112(a), and we do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
through R7 of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1—20.
REVERSED
limitation. Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed.,
Rev. 07.2015, Nov. 2015).
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