Ex Parte BLASS et al

Patent Trial and Appeal Board

Apr 14, 2017

11747543 (P.T.A.B. Apr. 14, 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.
11/747,543 05/11/2007 OSCAR J. BLASS BOC920070014US1
8152-0282
4694
73109 7590 04/18/2017
rWnnt Fnrsvfiie& Kim T T C EXAMINER
20283 State Road 7
Ste. 300
CHOI, DAVID E
Boca Raton, EL 33498 ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
04/18/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSCAR J. BLASS, MEN T. LIEN, RODRIGO JOSE
PASTRANA, and ROBERTO VILA
Appeal 2016-006527
Application 11/747,5431
Technology Center 2100
Before MAHSHID D. SAADAT, ERIC S. FRAHM,
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 1—20. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines, Incorporated as the
real party in interest. (Br. 3.)
Appeal 2016-006527
Application 11/747,543
THE INVENTION
Appellants’ disclosed and claimed invention is directed to handling
contact information in a communication device. (Abstract.)
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for handling contact information in a
communication device comprising:
presenting content within a visual interface of an
application executing on the communication device in a virtual
machine environment;
automatically executing a contact detection algorithm in
the virtual machine environment to detect contact items included
in the content in response to presenting the content and without
manual direction;
presenting a visual indication in the virtual machine
environment next to each detected contact item in the visual
interface;
visually modifying at least one detected contact item;
receiving a user selection in the virtual machine
environment of a detected contact item in the visual interface
indicating a selected contact item;
presenting a popup list next to the selected contact item
over the visual interface; and
responsive to a user input, performing a contact action
presented in the popup menu relating to the selected contact item,
wherein the contact action is at least one action selected from a
group of actions consisting of an action for initiating a
communication with a device identified by the related contact
item, an action for adding the contact item to an address book of
the communication device, and includes placing the contact item
in a memory space of the communication device, wherein said
memory space is directly accessible by at least one other
application executing on the mobile computing device in a
different environment of the communication device which
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Application 11/747,543
performs the contact action and retrieves the contact item from
the memory space, wherein the different environment is
protected from and unavailable to applications executing in the
virtual machine environment and wherein the mobile device
lacks a defined interface between virtual machine environment
and the different environment.[2]
REJECTIONS
The Examiner rejected claims 1—6, 9-11, and 14—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Kashi (US 2006/0010379 Al, pub. Jan.
12, 2006) and Kohavi et al. (US 2009/0063869 Al, pub. Mar. 5, 2009).
(Final Act. 3—11.)
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Kashi, Kohavi, and Mak (US 2004/0085369 Al, pub.
May 6, 2004). (Final Act. 11—12.)
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Kashi, Kohavi, and Pandit (US 5,859,636, issued Jan. 12,
1999). (Final Act. 12-13.)
The Examiner rejected claims 12, 13, 18, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Kashi, Kohavi, and Gandhi et al. (US
2008/0146268 Al, pub. June 19, 2008). (Final Act. 14—20.)
2 We note claims 2—20 set forth in the Appeal Brief Appendix are incorrectly
numbered as claims “1—19.” (See Br. 29—34.) We refer in this Opinion to
the correct numbers of the claims.
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Application 11/747,543
ISSUES ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
issues:3
First Issue: Whether the Examiner erred in finding the combination of
Kashi and Kohavi teaches or suggests the independent claim 1 limitation:
placing the contact item in a memory space of the
communication device, wherein said memory space is directly
accessible by at least one other application executing on the
mobile computing device in a different environment of the
communication device which performs the contact action and
retrieves the contact item from the memory space, wherein the
different environment is protected from and unavailable to
applications executing in the virtual machine environment and
wherein the mobile device lacks a defined interface between
virtual machine environment and the different environment.
(Br. 11—18, 21—23.) A commensurate issue is presented with respect to
independent claim 15. (Br. 26.)
Second Issue'. Whether the Examiner erred in finding the combination
of Kashi and Kohavi teaches or suggests the additional limitations of claims
5, 10, and 11. (Br. 24-25.)
Third Issue. Whether the Examiner erred in finding the combination
of Kashi, Kohavi, and Gandhi teaches or suggests the limitations of claims
12 and 19. (Br. 25-28.)
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Oct. 10, 2013); the Final
Office Action (mailed Mar. 28, 2013); and the Examiner’s Answer (mailed
Aug. 1, 2014) for the respective details.
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Application 11/747,543
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. We disagree with Appellants’ arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Final Office Action from which this appeal is taken
(Final Act. 3—20) and (2) the corresponding findings and reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief (Ans. 4—12). We concur with the applicable conclusions reached by
the Examiner, and emphasize the following.
First Issue
In finding Kashi and Kohavi teach or suggest the claim limitation at
issue, the Examiner relies on the disclosure in Kashi of handling contact
information in, for example, a mobile communication device in which a
displayed telephone number or email address is automatically detected and
highlighted, with the ability of a user to select one of the highlighted contact
items to display a popup list which allows the user to initiate communication
or add the contact item to an address book. (Final Act. 4—5; Kashi Figs. 2A,
4A; || 38, 41, 65, 117—18.) In particular, the Examiner finds Kashi teaches
storing contact information in memory space directly accessible by another
application executing in a different environment such as an address book or
via the clipboard. (Final Act. 5; Kashi 141.) The Examiner also relies on
the disclosure in Kohavi of a secured, separate, isolated processing
environment, such as a virtual machine, with the ability of a user to securely
copy data from one isolated processing environment to another according to
a predefined security policy. (Final Act. 6—7; Kohavi || 70, 273—79.)
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Appellants argue Kashi “is completely silent about more than one
environment.” (Br. 21.) However, we agree with the Examiner, Kashi’s
disclosure of “saving the telephone number to a specific place (e.g., an
address book), saving it to the computer clipboard, etc.,” teaches or suggests
“at least one other application executing ... in a different environment of the
communication device.” (Ans. 7—8.)
Appellants also argue Kohavi does not “teach or at least suggest
anything about placing the contact info in a memory space.” (Br. 22.) This
argument is unpersuasive because the Examiner relies on the combination of
Kashi and Kohavi, in which Kashi discloses saving contact information in
memory, where it is accessible to a different environment, and in which
Kohavi discloses data transfers between isolated environments involving
virtual computers. (Ans. 8—9.) Despite Appellants’ protestations to the
contrary (e.g., Br. 23), Appellants unpersuasively attack the references
individually, whereas the Examiner’s rejections are based upon the teachings
of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee’s
invention to a person having ordinary skill in the art. In re Keller, 642 F.2d
413,425 (CCPA 1981).
Appellants further assert Kohavi teaches away from the subject matter
of the claims because “Kohavi discusses providing a controllable channel
between a secure environment and a user environment for passage of data
out of the secure environment,” which Appellants argue contradicts the
claims requirement that the “mobile device lacks a defined interface between
virtual machine environment and the different environment.” (Br. 22.) We
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agree with the Examiner, “a controllable channel is not the same thing as a
defined interface,” and in any event the claimed requirement of lacking a
defined interface is not described in any informative detail in the
Specification, thus, supporting the Examiner’s findings of a teaching or
suggestion of the limitation at issue, under a broad but reasonable
interpretation of that limitation. (Ans. 8—9.)
In addition, Appellants argue the Examiner’s reliance on the
combination of Kashi and Kohavi is in error because neither reference deals
with the problem of “transporting contacting information across virtual
machine boundaries . . . [which] has unique facets when applied to dual
mode devices, such as Specific Absorption Rate (SAR) requirements . . . .”
(Br. 11.) However, the limitation at issue is not directed to SAR
requirements, and therefore Appellants’ argument is not commensurate with
the scope of the claim. In addition, as discussed above, Kohavi does teach
or suggest transporting information across virtual machine boundaries, and
in combination with the treatment of contact information disclosed in Kashi,
teaches or suggests transporting contact information as claimed. We agree
with the Examiner, “[isolating sensitive information via a virtual machine
environment was something well known at the time of the invention (as
demonstrated by Kohavi) and using such a method would have not only
improved the overall effectiveness of Kashi but it would have been obvious
to do so.” (Ans. 4.)
Appellants assert the Examiner used improper hindsight in relying on
the combination, did not demonstrate any motivation by one of ordinary skill
to combine the references, and the references are non-analogous art. (Br.
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11—18.) None of these arguments are persuasive.4 Regarding the contention
that the Examiner relies on nonanalogous art:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (emphases added). We agree with the
Examiner that both references are analogous art — Kashi is closely related
given its disclosures regarding identification and storage of contact
information, and Kohavi is pertinent to the problem of secure transfer of
information across separate computing environments. (Ans. 4.)
We are also not persuaded the Examiner’s findings of motivation to
combine are in error, or that the Examiner resorted to improper hindsight.
(Ans. 4—5.) Appellants do not point to any evidence of record that the
resulting combination would be “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007)). The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
4 Appellants make similar arguments regarding the Examiner’s reliance on
the combination of Kashi, Kohavi, and Pandit, and the combination of
Kashi, Kohavi, and Gandhi. (Br. 18—20.) These arguments are likewise
unpersuasive. (Ans. 5—7.)
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an automaton.” KSR, 550 U.S. at 420—21. We are persuaded the claimed
subject matter exemplifies the principle that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416.
Second Issue
Dependent claim 5 requires:
changing focus to a next one of the plurality of contact
items, including visually modifying the next one of the plurality
of contact items, wherein the contact action is performed against
a contact item having focus at a time that the user input is
received.
(Br. 30.) In finding Kashi and Kohavi teach or suggest this claim limitation,
the Examiner relies on the disclosure in Kashi of placing a cursor over an
underlined telephone number, which causes an “I” icon box to appear above
the underlined telephone number indicating that particular functionality is
available for the underlined telephone number. (Final Act. 9, Ans. 10; Kashi
1138, 65, 117, 118.)
Dependent claim 10 requires, “the web browser is suspended while
the contact action is performed,” and dependent claim 11 requires, “the
performing step executes without terminating execution of the first
application.” (Br. 31.) In finding Kashi and Kohavi teach or suggest these
limitations, the Examiner relies on the disclosure in Kashi of the ability of
the user to place a telephone call as a result of a menu selection associated
with a highlighted telephone number displayed in a browser. (Final Act. 10;
Kashi | 65.) The Examiner finds, given this disclosure:
[T]he activity occurring on the first application (such as a
browser) is only paused and not terminated when the activity
shifts over to a second application (such as a IP telephony
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program). Such multitasking environments are well known in
the art and would have been obvious to anyone of ordinary skill.
(Ans. 11.)
Appellants’ arguments in regard to the Examiner’s findings with
respect to these claim limitations are conclusory and unpersuasive. (Br. 24—
25.) Accordingly, we sustain the Examiner’s rejection of claims 5, 10, and
11.
Third Issue
Dependent claim 12 modifies claim 1 to require a dual-mode mobile
computing device using one modem to obtain content and another modem to
initiate a contact action. (Br. 31.) Independent claim 19 incudes similar
requirements. (Br. 33.) In finding Kashi, Kohavi, and Gandhi teach or
suggest these claim limitations, the Examiner relies on the disclosure in
Gandhi of a dual-mode computing device with a modem for receiving and
transmitting data content, and a modem for voice transmissions. (Final Act.
14—15, 18—19.) Appellants argue the Examiner errs because “Gandhi may
not use different modems to get data and make voice communication at the
same time.” (Br. 12.) However, we agree with the Examiner, “the claims do
not refer to the separate modems being used synchronously or at the same
time and it appears that the Appellant [sic] is again improperly reading these
limitations into the claims.” (Ans. 12.)
Regarding independent claim 19, Appellants repeat the arguments
made with respect to claims 1 and 12. (Br. 26—28.) These arguments are
unpersuasive for the reasons discussed above.
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CONCLUSION
For the reasons stated above, we sustain the obviousness rejections of
claims 1, 5, 10, 11, and 15 over Kashi and Kohavi, and of claims 12 and 19
over Kashi, Kohavi, and Gandhi.
We also sustain the obviousness rejections of claim 2—4, 6, 9, 14, 16,
and 17 over Kashi and Kohavi, of claim 7 over Kashi, Kohavi, and Mak, of
claim 8 over Kashi, Kohavi, and Pandit, and of claims 13, 18, and 20 over
Kashi, Kohavi, and Gandhi, which rejections are not argued separately with
particularity.
DECISION
We affirm the Examiner’s rejections of claims 1—20.
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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