Ex Parte Chaudhri et al

Patent Trial and Appeal Board

Mar 15, 2018

11849911 (P.T.A.B. Mar. 15, 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.
11/849,911 09/04/2007 Imran A. Chaudhri 90911-P5701US1-871031 6530
65656 7590 03/19/2018
KILPATRICK TOWNSEND & STOCKTON LLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
DANIEL JR, WILLIE J
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IMRAN A. CHAUDHRI, VINCENZO DEMARCO,
SCOTT HERZ, SCOTT FORSTALL, and GREGORY N. CHRISTIE
Appeal 2016-003274
Application 11/849,911
Technology Center 2400
Before HUNG H. BUI, ADAM J. PYONIN, and MICHAEL M. BARRY,
Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Non-Final Office
Action rejecting claims 34—54, which are all the pending claims.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Apple, Inc. as the real party in interest. App. Br. 3.
2 Claims 1—33 have been cancelled. App. Br. 19 (Claims App’x).
Appeal 2016-003274
Application 11/849,911
Introduction
Appellants’ claimed invention relates to “media out interfaces” for
electronic devices. Spec. Title, 11. Appellants describe embodiments in
which a mobile device includes a user interface for controlling the display of
media content (e.g., video) on another device (i.e., host device). See Spec.
Tflf3—8, 95—99, Fig. 6. If the user wants other content incoming to the
mobile device not to interrupt the display of the media content on the other
device, e.g., in the case of incoming phone calls, emails, or text messages,
the user can configure the mobile device to not broadcast or otherwise
interrupt the other device with that information. Id. 1 82, Fig. 5.
Claim 34 is illustrative:
34. A computer-implemented method, comprising:
detecting, by a host device, a mobile device coupled to
the host device, wherein the mobile device is capable of storing
media content;
receiving, at the host device, media content from the
mobile device;
displaying the received media content at the host device;
receiving data at the host device, wherein the data
corresponds to a command received at a media out interface
displayed by the mobile device, wherein the media out interface
is only displayed on the mobile device, and wherein the
command is associated with the content being received at the
host device;
controlling the content displayed at the host device using
the data received from the mobile device; and
determining, based on a configuration of the mobile
device, to not interrupt the media content displayed at the host
device when incoming mobile device communication content is
received at the mobile device;
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Application 11/849,911
wherein, in response to the determination to not interrupt
the content displayed at the host device, the incoming mobile
device communication content is not displayed by the host
device.
App. Br. 19 (Claims App’x) (disputed limitations emphasized).
Rejection and References
Claims 34—54 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mahini (US 7,330,737 B2; Feb. 12, 2008), Milley et al.
(US 7,292,588 B2; Nov. 6, 2007), Igoe (US 8,704,866 B2; Apr. 22, 2014),
Chihara et al. (US 6,714,233 B2; Mar. 30, 2004), and Kamarainen (US
2006/0160570 Al; July 20, 2006). Non-Final Act. 3-11.
ANALYSIS
Claim 34 requires a mobile device to send media content (e.g., video)
for display on a “host device.” The disputed limitations recited in claim 34
include: (a) “determining ... to not interrupt the media content displayed at
the host device when incoming mobile device communication content [e.g.,
such as information for an incoming phone call or text message] is received
at the mobile device;” and (b) responsive to the determination, “the
incoming mobile device communication content is not displayed by the host
device.”
In rejecting claim 34, the Examiner finds Mahini discloses these
limitations. Non-Final Act. 3—5 (citing Mahini 5:7—14 for the disputed
limitations). Appellants argue, inter alia,3 the Examiner errs in finding
Mahini teaches or suggests the disputed limitations. App. Br. 12—13.
3 Because we identify a dispositive issue for reversing the Examiner’s
rejections, we do not address all of Appellants’ arguments.
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Application 11/849,911
Specifically, Appellants contend Mahini’s disclosure of a “multi-media
cradle 100” that provides an enlarged display, a standard keyboard, and a
mouse for use with a mobile phone does not teach or suggest “that media
content, which is displayed on the multi-media cradle 100, is not interrupted
when incoming mobile device communication content is received at the
mobile phone 10.” Id. at 13.
We agree with Appellants. Mahini discloses that the cradle’s larger
display, standard keyboard, and mouse enhance utility for applications such
as web browsing as compared with the smaller display, keys, and navigation
techniques of a mobile phone. See Mahini 2:27—57, 5:7—14. Mahini is
simply silent regarding the disputed limitations’ recited functionality. The
Examiner does not explain how or why Mahini teaches or suggests the
disputed limitations.
The Examiner also finds “Mahini and Milley do[] not specifically
disclose” the disputed limitations4 (Non-Final Act. 5—6), but that the home
entertainment system of Igoe discloses them. Id. at 6—7 (citing Igoe 3:35—
43, 3:63—4:1, 14:4—11, 40-43, 17:13—16, 24—27, Figs. 1, 2). The Examiner
maps Igoe’s display device that receives video from a personal computer to
claim 34’s host device that receives media content from a mobile device, and
then finds Igoe teaches the disputed limitations by its disclosure of
(a) presenting visual and/or audible alerts of an incoming voice-over-IP
VoIP call to the personal computer and (b) the option to pause or preempt
displayed video on the display device in order to show video from the VoIP
call (see Igoe 17:7—27). Non-Final Act. 6—7.
4 The Examiner offers no explanation for the apparent contradiction with the
previous finding that Mahini discloses the disputed limitation.
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Application 11/849,911
Appellants argue Igoe’s disclosure of a user deciding whether to pause
or preempt video based on an alert does not teach or suggest the disputed
limitations. App. Br. 13—15. We again agree with Appellants. Igoe’s visual
alert appears on the display device showing the video and is contrary to the
disputed limitations’ requirement of “determining ... to not interrupt the
media content displayed at the host device,” and that “the incoming mobile
device communication content is not displayed by the host device.”
Although Igoe’s audible alert is neither displayed nor interrupts displayed
media content, an audible alert from which a user selects whether to
interrupt ongoing video, however, bears no relationship to either (a) the
recited “configuration of the mobile device,” which the disputed limitations
require to provide the basis for determining whether to interrupt displayed
content, or (b) the recited requirements for using the determination not to
display “incoming mobile device communication content.”
In response, the Examiner simply repeats verbatim the findings from
the rejection, which we find unpersuasive. See Ans. 21—23. The Examiner
also responds that “Milley discloses the argument(s) [sic] as related to the
claimed feature(s).” Id. at 22 (citing Milley 7:23—30, 40-44, 11:9-15,
12:33-36, Figs. 1A, 1C).
In the Reply, Appellants argue Milley is silent regarding the
functionality of the disputed limitations. Reply Br. 4—5. We agree. Milley
pertains to “permitting the use of remote display devices for displaying full
Internet content using a handheld computing device.” Milley 1:15—16. In
Milley, a secondary device, which may or may not have a network
connection, can receive Internet content via the network connection of a
primary device, such as a handheld computer. See Milley 7:23—44, 11:5—24,
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12:27—36. The embodiments discussed in Milley are silent regarding
handling of “incoming mobile device content” at the primary device while
the secondary device displays media content received from the first device.
The Examiner also takes the position that Appellants “attack[] the
references individually where the rejections are based on combinations of
references.” Ans. 21 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)). This is unpersuasive.
Appellants properly dispute the Examiner’s factual findings regarding
Mahini, Milley, and Igoe. The Examiner has not explained how any
combination of the disclosures teaches or suggests the disputed limitations
or how Igoe’s teachings could be incorporated into Mahini and Milley to
arrive at Appellants’ claimed invention. For example, in the findings for
Igoe, the Examiner finds the motivation to combine would have been to
control “interactions and coordination with connected devices of a home
entertainment system (HES), as taught by Igoe.” Non-Final Act. 7 (citing
Igoe 3:35—43). This is essentially circular logic that says it would have been
obvious to use Igoe’s teachings with Mahini for the purpose of Igoe, and
does not articulate a sufficient reason for why an ordinarily skilled artisan
would have adapted the teachings of Igoe to Mahini’s mobile phone cradle.
See In re Chaganti, 554 F. App’x 917, 922 (Fed. Cir. 2014) (“It is not
enough to say that there would have been a reason to combine two
references because to do so would ‘have been obvious to one of ordinary
skill.’ Such circular reasoning is not sufficient—more is needed to sustain
an obviousness rejection.”)
Accordingly, we do not sustain the Examiner’s § 103(a) rejection of
claim 34. For the same reasons we also do not sustain the rejections of
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independent claims 40 and 46, which include similar disputed limitations.
See App. Br. 20-21, 23 (Claims App’x). We also, therefore, do not sustain
the rejections of dependent claims 35—39, 41—45, and 47—54.
DECISION
For the above reasons, we reverse the 35 U.S.C. § 103(a) rejections of
claims 34—54.
REVERSED
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