Ex Parte CHIPCHASE et al

Patent Trial and Appeal Board

Jun 11, 2018

12548306 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/548,306 08/26/2009
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
06/13/2018
FIRST NAMED INVENTOR
JAN CHIPCHASE
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.
P2939USOO 6854
EXAMINER
LE,PHAN
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN CHIPCHASE, PASCAL WEVER, NIKOLAI BESTLE,
PAWENA THIMAPORN, THOMAS ERNST ARBISI,
JOHN-RHYS NEWMAN, ANDREW JULIAN GARTRELL,
and SIMON DAVID JAMES
Appeal2017-008366
Application 12/548,306
Technology Center 2600
Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-11, 13-21, and 27-35, which constitute all the claims pending in
this application. See Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 The real party in interest identified by Appellants is Nokia Technologies
Oy. App. Br. 1.
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Application 12/548,306
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "delivering network
services through an audio interface unit with little or no involvement of the
user's eyes and hands." Spec. ,r 2. As presented by Appellants in the Appeal
Brief, claim 1, which is illustrative, reads as follows:
1. A method comprising:
receiving first data from a first server, the first data indicating a
first set of one or more contents for presentation to a user
via an audio interface unit that is configured to interact
with the user through only aural communications;
receiving second data from a second server, the second data
indicating a second set of zero or more contents for
presentation to the user via the audio interface unit,
wherein the second set of zero or more contents includes
one or more time-sensitive alerts configured for response
during a predetermined period;
generating, as part of a personal audio service subscribed to by
the user, an audio stream based on the first data and the
second data provided by the first and second servers,
respectively;
initiating instructions for presentation of the audio stream via
the audio interface unit to the user; and
prompting, via the audio interface unit, the user with
expressions of one or more allowed actions that are set
by the user for configuring the personal audio service to
be performed during the predetermined period.
App. Br. 8 (Claims App'x).
Claims 1-11, 13-21, and 27-35 stand rejected under 35 U.S.C.
§ I03(a)2 as being unpatentable over Mozer et al. (US 2009/0204410 Al;
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011 ("pre-AIA").
Final Act 2.
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Application 12/548,306
Aug. 13, 2009; "Mozer") and Altberg et al. (US 2007/0127650 Al; June 7,
2007, "Altberg" ). See Final Act. 3-16; Adv. Act. 2.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Jan. 17, 2017; "Reply Br." filed May 16, 2016) for the positions of
Appellants; the Office Actions ("Final Act." mailed July 15, 2016; "Adv.
Act." mailed Nov. 14, 2016), and Examiner's Answer ("Ans." mailed Mar.
30, 2017) for the reasoning, findings, and conclusions of the Examiner; and
the Specification ("Spec." filed Aug. 26, 2009). Only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2016).
ISSUES
The issues presented by Appellants' arguments are as follows:
Does the Examiner err in finding Mozer, when combined with
Altberg, teaches or suggests "the second set of zero or more contents
includes one or more time-sensitive alerts configured for response during a
predetermined period" (the "time-sensitive alerts limitation"), as recited in
claim 1?
Does the Examiner err in finding Mozer, when combined with
Altberg, teaches or suggests "triggering an alert context time window" ( the
"time window limitation"), as recited in claim 28?
ANALYSIS
As an initial matter, we give claims their broadest reasonable
interpretation consistent with the Specification. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Although claims are
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Application 12/548,306
interpreted in light of the specification, "limitations are not to be read into
the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). Accordingly, arguments must be commensurate in scope
with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
The Time-Sensitive Alerts Limitation
The Examiner finds Mozer teaches the time-sensitive alerts limitation
at paragraphs 7 5-7 6, explaining that "[a] predetermined period is the length
of a game, and as the server prompted to the user 'would you like to listen to
the game or receive periodic updates', thus the user would have to respon[ d]
in that predetermined period." Adv. Act. 2; see also Final Act. 3 ( citing
Mozer ,r 70).
Appellant contends the Examiner errs for the flowing reason:
At least paragraph [0060] of the originally filed
specification discloses that having context-sensitive response
to alerts reduces computational resource requirements and
minimizes user interruption while the user is carrying out
other activities including receiving content other than the
received alerts such as music data or the like. Thus, an alert
that merely tangentially relates to time such as a scheduled
sporting event as disclosed by the art does not read on the
claimed combinations of features as recited in claim[] 1.
App. Br. 5---6.
Appellants' argument does not demonstrate Examiner error. First of
all, claim 1 recites "time-sensitive alerts;" there is no recitation of a
"context-sensitive response to alerts." Furthermore, paragraph 60 of
Appellants Specification discloses that it is a "limited context-sensitive
vocabulary [that] greatly simplifies the processing, thus reducing
computational resource demands," rather than the use of "time-sensitive
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Application 12/548,306
alerts." Finally, as pointed out by the Examiner, Appellants argue
limitations not found in claim 1. See Ans. 5 ( citing Van Geuns, 988 F.2d
1181 ). Other than presenting the conclusory argument that Mozer' s alert
"merely tangentially relates to time" (App. Br. 5---6), Appellants do not
persuasively explain why it is not a "time-sensitive alert[] configured for
response during a predetermined period."
The Time Window Limitation
Appellants argue the time window limitation of claim 28 together with
the time-sensitive alerts limitation of claim 1. We find Appellants
arguments to be unpersuasive regarding claim 28 for substantially the same
reasons as for claim 1. To be sure, claim 28 does use the term "context" in
describing the time window. However, Appellants still do not persuasively
explain why the response time for Mozer' s alert is not an "alert context time
window" triggered by receipt of Mozer's alert.
Waived Arguments
For the first time in the Reply Brief, Appellants contend the Examiner
errs in finding the combination of Mozer and Altberg teaches or suggests
"generating ... an audio stream based on the first data and the second data"
( the "generating limitation"), as recited in claim 1. Reply Br. 2. Such an
argument is untimely and waived. See 37 C.F.R. § 41.41(b)(2); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not."). Appellants' belated argument provides the Examiner no
opportunity to respond to those arguments made only in the Reply Brief.
See id. at 1475.
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Appellants attempt to justify the late presentation of this argument as
being in response to the Examiner's statement "[i]n the Answer, at page 3,
second paragraph, [in which] the Examiner alleges that Mozer and Altberg
are properly combinable to address" the generating limitation. Reply Br. 2.
However, the passage of the Answer cited by the Appellants merely re-states
in summary form the ground of rejection set forth in more detail in the Final
Office Action and Advisory Action. Compare Ans. 3, with Final Act. 3--4,
and Adv. Act. 1-2. Accordingly, Appellants' arguments are not responsive
to an argument raised by the Examiner in the Answer and we see no reason
why the argument presented by Appellants regarding the generating
limitation could not have been made in the Appeal Brief. Arguments not
raised in an appeal brief and raised for the first time in a reply brief and "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." 37 C.F.R.
§ 4I.41(b)(2).
For the first time in the Reply Brief, Appellants separately argue the
patentability of dependent claims 13 and 14. Reply Br. 3--4. Such argument
is also untimely and waived. See 37 C.F.R. § 4I.41(b)(2).
Summary
Appellants have not demonstrated error in the rejection of claims 1
and 28, Accordingly, we sustain the rejection of (1) independent claims 1
and 28: (2) independent claims 17 and 32, which are argued together with
claims 1 and 28 respectively; and (3) claims 2-11, 13-16, 18-21, 27, 29-31,
and 33-35, which variously depend, directly or indirectly, from claims 1, 17,
28, or 32, and are not timely argued separately with particularity.
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DECISION
The decision of the Examiner to reject claims 1-11, 13-21, and 27-35
is affirmed.
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). See 37 C.F.R.
§§ 41.50(±), 4I.52(b).
AFFIRMED
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