Ex Parte Brakensiek et al

Patent Trial and Appeal Board

Aug 8, 2016

13188055 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/188,055 07 /21/2011
10949 7590 08/10/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Jorg Brakensiek
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
042933/407525 7413
EXAMINER
BHATIA,AJAYM
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG BRAKENSIEK and RAJA BOSE 1
Appeal2015-003565
Application 13/188,055
Technology Center 2100
Before DEBRA K. STEPHENS, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Technology
The application is related to "the implementation of a remote user
interface" and "providing data entry content to a remote environment."
Spec. i-f 1. Claim 1 is illustrative and reproduced below with the key
limitation emphasized:
1 According to Appellants, the real party in interest is Nokia Corp. Br. 2.
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Appeal2015-003565
Application 13/188,055
1. A method comprising:
receiving, at a first device, a data entry field selection
message notifying that a selection of a data entry field has
occurred at a remote device;
modifying a focus of a user interface of the first device to
the data entry field;
retrieving current data content of the data entry field; and
causing an indication to be provided to the remote device
informing the remote device of the current data content of the
data entry field to enable the remote device to display the current
data content of the data entry field in a data entry input interface.
Rejections
Claims 1 and 7 stand rejected under 35 U.S.C. § 102(a) as anticipated
by Danny Sullivan, How Google Instant's Autocomplete Suggestions Work
(Apr. 6, 2011), http://searchengineland.com/how-google-instant-
autocomplete-suggestions-work-62592 ("Sullivan"). Final Act. 2.
Claims 2-6, 8-12, and 15-26 stand rejected under 35 U.S.C. § 103(a)
as obvious over Sullivan and Nancy Blachman & Jerry Peek, How To Use
Google: Entering A Query - Google Guide (Aug. 11, 2008), http://
www.googleguide.com/entering_queries.html ("Blachman"). Final Act. 5.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over Sullivan and Askville, "how to access internet in my mobile through
my laptop?" (Aug. 2009) ("Askville"). Final Act. 9.
ISSUES
Did the Examiner err in finding Sullivan discloses "receiving, at a first
device, a data entry field selection message notifying that a selection of a
data entry field has occurred at a remote device," as recited in claim 1 and
commensurately recited in claim 7? Did the Examiner err in finding
Sullivan teaches or suggests commensurate limitations in claims 15 and 21?
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Application 13/188,055
ANALYSIS
The Prior Art: Sullivan
As its title implies, Sullivan explains "How Google Instant's
Autocomplete Suggestions Work." "It's a well known feature of Google.
Start typing in a search, and Google offers suggestions before you've even
finished typing." Sullivan 1. Sullivan shows examples of such suggestions
appearing in a dropdown box below the search entry box where the user is
typing. Id. Sullivan further explains how such suggestions can vary by
region or language (id.) and how certain suggestions get removed, such as
results with personally identifiable information or adult content. Id. at 4.
Anticipation: Claims 1 and 7
Independent claim 1 recites "receiving, at a first device, a data entry
field selection message notifying that a selection of a data entry field has
occurred at a remote device." Claim 7 recites a commensurate limitation.
The Examiner relies on Sullivan as anticipating claims 1 and 7, including for
this limitation. Final Act. 2--4. Specifically, the Examiner finds "Google's
servers necessarily must be informed when, inter alia, the search field is in
focus for user input." Id. at 2-3 (citing Sullivan 1 ). The Examiner further
finds the claims do not require the claimed first device be notified
"immediately upon a particular state change of a data entry field." Ans. 3.
Appellants concede that a user typing text into a search entry box
would result in the search server receiving that text, but contend "if a user
were to merely click in a search input field to select or bring the field into
focus, it is not inherent that the mere fact that the field has been selected is
indicated to the server." Br. 8, 12-14.
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Application 13/188,055
We agree with Appellants. "Anticipation by inherent disclosure is
appropriate only when the reference discloses prior art that must necessarily
include the unstated limitation." Therasense, Inc. v. Becton, Dickinson &
Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quotation omitted). Inherency
"may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient." Id. (quotation omitted).
Here, if a user clicks in the search entry box but does not type any
text, there is no evidence that the search server would receive any message.
And because the relevant portions of a search engine are implementation
dependent, the receipt of search terms does not necessarily require that a
search entry box has been selected, such as when search terms are instead
implemented via a URL (e.g., https://www.google.com/#q=testing). Even if
there were a very high likelihood that at least some search terms were
received after the search entry box had been selected, that is a question of
obviousness, not inherency or anticipation.
Accordingly, we are constrained to reverse the Examiner's rejection
of claims 1 and 7.
Obviousness: Claims 2-6 and 8-26
Similar to the "receiving" step in claim 1, independent claim 15
recites "causing a data entry field selection message to be transmitted, by the
second device to a first device, notifying the first device that the selection of
the data entry field has occurred," and claim 21 recites a commensurate
limitation. In concluding claims 15 and 21 are obvious, the Examiner relies
upon the same findings and evidence from Sullivan as for claim 1 discussed
above. Final Act. 2--4, 7-9. We agree with Appellants that the Examiner
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Application 13/188,055
erred for the same reasons discussed above, including the lack of inherency.
The Examiner relied solely on a finding of inherency, and has not articulated
any reasoning to support a conclusion that the limitation is obvious.
Accordingly, we are constrained to reverse the Examiner's rejection
of claims 15 and 21, and claims 2---6, 8-14, 16-20, and 22-26, which stand
with their respective independent claims.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-26. Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
REVERSED
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