Ex Parte Bocking

Patent Trial and Appeal Board

Feb 27, 2018

13619754 (P.T.A.B. Feb. 27, 2018)

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.
13/619,754 09/14/2012 Andrew D. BOCKING 29717-0318003 1054
94149 7590 03/01/2018
Fish & Richardson P.C. (Blackberry)
P.O.Box 1022
Minneapolis, MN 55440
EXAMINER
HEFFINGTON, JOHN M
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
patdoctc@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW D. BOOKING
Appeal 2017-009445
Application 13/619,754
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-009445
Application 13/619,754
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21-38. Claims 1-20 was cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 21 under appeal reads as follows (emphasis added);
21. A method of managing unopened electronic
messages comprising the steps of:
receiving at least one electronic message in an unopened
state;
displaying a first indicator upon determining that the at
least one electronic message remains in the unopened state and
information identifying the at least one electronic message has
been displayed in a message listing, wherein the first indicator
is displayed adjacent the information; and
displaying a second indicator above the message list
upon determining that the at least one electronic message
remains in the unopened state, the second indicator being
displayed as an annunciated version of the first indicator
App. Br. 5 (Claims Appendix).
Rejection on Appeal
The Examiner rejected claims 21-38 under 35 U.S.C. § 103(a) as
being unpatentable over Bailey et al. (US 5,835,084 A; issued Nov. 10,
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Appeal 2017-009445
Application 13/619,754
1998) (“Bailey”) and Brockenbrough et al. (US 2002/0076004 Al;
published June 20, 2002) (“Brockenbrough”).1
Issue on Appeal
Did the Examiner err in rejecting claim 21 as being obvious?
PRINCIPLES OF LAW
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is “whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art.” Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Further, the Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation to combine references in
order to show obviousness. See id. at 419. Instead, a rejection based on
obviousness only needs to be supported by “some articulated reasoning with
1 The patentability of claims 22-38 is not separately argued from that of
claim 21. See App. Br. 2^1. Thus, except for our ultimate decision, claims
22-3 8 are not discussed further herein.
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Appeal 2017-009445
Application 13/619,754
some rational underpinning” to combine known elements in the manner
required by the claim. Id. at 418.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
are unpersuaded by Appellant’s contention that the Examiner erred. Instead,
we concur with the conclusions reached by the Examiner.
Appellant contends the Examiner erred in rejecting claim 21 under
35U.S.C. § 103(a) because:
For the teaching of the first indicator, Appellee offers the flags
disclosed in Bailey. However, Applicant respectfully submits
that the flags disclosed in Bailey are not displayed but are
merely a term of art to refer to an integer that has two possible
states: 0, representing ‘false” or “off”, and 1, representing
“true” or “onAt most, Bailey teaches storing a value
indicating whether an entire message has been viewed. Thus,
the cited combination fails for at least the following two reasons:
(1) the flag disclosed in Bailey indicates whether an entire
message has been view not whether the message has been
opened; and (2) the cited flag is a value stored in memory not
displayed on a screen.
For the teaching of the second indicator, the Office Action
attempts to combine the list page 50 disclosed in Bailey with the
summary page 2010 disclosed in Brockenbrough. Applicant
respectfully submits that there is no suggestion and motivation
to combine the summary page 2010 with the list page 50
because the list page 50 identifies emails while the summary
page 2010 summarizes both emails and voice messages. In fact,
the Examiner appears to use the claimed invention as an
instruction manual or template to piece together the teachings
of the prior art so that the claimed invention is rendered
obvious.
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Appeal 2017-009445
Application 13/619,754
App. Br. 3 (Appellant’s citations and emphasis omitted; panel’s emphasis
added); see also App. Br. 4; see also Reply Br. 1-2.
We are not persuaded that the Examiner erred. Regarding Appellant’s
argument that Bailey’s flag fails to teach or suggest the claimed “first
indicator” because the flag is not displayed on a screen, this argument is not
persuasive because it fails to address the Examiner’s finding that Bailey
teaches displaying the unread messages in boldface text, and that Bailey’s
boldface text teaches or suggests the claimed “first indicator.” See Final
Act. 3 (citing Bailey 4:45^18). Regarding Appellant’s argument that there is
no suggestion or motivation to combine Bailey and Brockenbrough, this
argument is also not persuasive, as the Examiner articulated a rationale for
combining the cited references (i.e., “it would have been beneficial to a user
of [a portable device taught by] Bailey to provide a summary pane listing . . .
summary information about messages received ... so that the user can make
a quick decision as to whether or not to . . . read messages of interest”), and
Appellant’s argument fails to address this finding. Ans. 7.
In the Reply Brief, Appellant further contends the Examiner erred in
rejecting claim 21 under 35 U.S.C. § 103(a) because:
For the teaching of the first indicator, the Answer offers the
boldface indication disclosed in Bailey. However, Appellant
respectfully submits that Bailey merely teaches displaying the
unread messages in boldface, disclosing that “the unread
messages are shown in boldface text. ” Appellant respectfully
submits that Bailey teaches, at most, displaying the first
indicator on, not adjacent, the information identifying the
message.
Reply Br. 1 (Appellant’s citations and emphasis omitted; panel’s emphasis
added).
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Appeal 2017-009445
Application 13/619,754
We decline to consider an argument raised for the first time in the
Reply Brief. This argument was first set forth in the Reply Brief, and was
not first raised in Appellant’s Appeal Brief, despite the fact that, in the Final
Office Action, the Examiner explicitly found that Bailey’s boldface text
teaches or suggests the claimed “first indicator.” While the Examiner
reiterated this finding in the Examiner’s answer, and while Appellant’s
argument is responsive to the Examiner’s Answer, Appellant fails to show
why the argument could not have been included in Appellant’s Appeal Brief.
Thus, as the Examiner has not been provided a chance to respond, and in the
absence of a showing of good cause by Appellants, this argument is deemed
waived. See 37 C.F.R. § 41.41(b)(2) (“[a]ny argument raised in the reply
brief which was not raised in the appeal brief, or is not responsive to an
argument raised in the examiner’s answer, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown”). Accordingly, we will not
consider this new argument in the Reply Brief.2
Therefore, Appellant has not shown the Examiner erred in rejecting
claim 21.
2 Assuming arguendo that Appellant has not waived this argument, we are
not persuaded by this argument because: (1) Appellant’s claims and
Specification do not provide a definition for “adjacent” that distinguishes the
claim from the cited portion of Bailey; and (2) modifying a position of
Bailey’s displayed boldface text within the display would be well within the
skill of a person of ordinary skill in the art, as the modification would not
change the functionality of the displayed message window, and, thus, would
yield no more than predictable results.
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Application 13/619,754
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 21-38 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 21-38 are not patentable.
DECISION
We affirm the Examiner’s rejection of claims 21-38 as being
unpatentable under 35 U.S.C. § 103(a).
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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