Ex Parte Doppler et al

Patent Trial and Appeal Board

Sep 26, 2017

12467059 (P.T.A.B. Sep. 26, 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.
12/467,059 05/15/2009 Klaus Franz Doppler 042933/369261 7181
10949 7590 09/28/2017
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
EXAMINER
TANK, ANDREW L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS FRANZ DOPPLER,
ANTTI SEPPO PETTERI PAANANEN, ADRIANA VASILACHE, and
SHAKEEL TABASSAM
Appeal 2017-005143
Application 12/467,059
Technology Center 2100
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JASON J. CHUNG, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21^42. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
STATEMENT OF THE CASE
Appellants’ invention configures appearance-related features of
mobile device screens via screen configuration information. In one aspect,
indications of screen configuration information are received remote from the
terminal, and after providing associated feedback to the user, and receiving a
related selection indication, the screen configuration information is provided
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Application 12/467,059
to the mobile terminal. See generally Spec. ]Hf 2, 7—11. Claim 21 is
illustrative:
21. A method comprising:
receiving, remote from a mobile terminal, indications of screen
configuration information defining appearance related features
of a screen of a display of the mobile terminal;
enabling, via a processor, provision of feedback to a user of the
mobile terminal regarding the screen configuration information
defining the appearance related features;
receiving a selection indication related to the screen configuration
information; and
causing, in an instance in which the selection indication is
received, provision of the screen configuration information to the
mobile terminal.
THE REJECTION
The Examiner rejected claims 21—42 under 35 U.S.C. § 102(e) as
anticipated by van Os (US 8,655,691 B2; Feb. 18, 2014). Final Act. 3—6.1
CONTENTIONS
Regarding independent claim 21, the Examiner finds that van Os’
profiles (1) correspond to the recited “screen configuration information,”
and (2) are received remote from a mobile terminal as claimed, despite the
profiles’ reception by a mobile terminal. See Final Act. 3; Ans. 2—7.
According to the Examiner, mobile device 100’s Input/Output (I/O)
subsystem 3640 in van Os’ Figure 36 is a “mobile terminal,” and the
1 Throughout this opinion, we refer to (1) the Final Rejection mailed October
5, 2015 (“Final Act.”); (2) the Appeal Brief filed May 26, 2016 (“Br.”); and
(3) the Examiner’s Answer mailed September 23, 2016 (“Ans.”).
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Application 12/467,059
memory interface 3602, processor(s) 3604, and peripherals interface 3606
collectively constitute an apparatus remote to this “mobile terminal.” Ans.
4—5.
Appellants argue van Os does not disclose operations remote from a
mobile terminal, let alone receiving indications of screen configuration
information remote from a mobile terminal as claimed. Br. 7—14.
Appellants add that van Os also does not enable provision of feedback to a
mobile terminal user regarding the screen configuration information as
claimed. Br. 14—15.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 21 by finding
that van Os (1) receives the recited screen configuration information remote
from a mobile terminal, and (2) enables, via a processor, provision of
feedback to a mobile terminal user regarding the screen configuration
information?
ANALYSIS
As noted above, a key aspect of independent claim 21 is that
indications of screen configuration information are received remote from a
mobile terminal, and that after receiving a related selection indication, the
screen configuration information is provided to the mobile terminal. The
clear import of this language, then, is that at least the receiving and causing
steps are performed remote from the mobile terminal. Independent claim 29
is even more explicit in this respect because the claimed apparatus is recited
as remote from a mobile terminal in the preamble.
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Application 12/467,059
Independent claim 37, however, lacks this “remote from” language.
Nevertheless, the recited apparatus performs commensurate functions and,
like the other independent claims, provides screen configuration information
to a mobile terminal, thus effectively reciting a separate and distinct
apparatus that is remote from the mobile terminal at least in that respect.2
Accord Br. 8 n.l (noting that each independent claim—including claim 37—
recites performance remote from the mobile terminal).
Because recited functions are performed remote from the mobile
terminal, the Examiner’s finding that indications of screen configuration
information are received necessarily remote from a mobile terminal based
on van Os’ profile/certificate information is problematic on this record. See
Ans. 3—6. Although profiles and trust certificates are received by a mobile
device in column 14, lines 42 to 44 and 56 to 59, they are not received
necessarily remote from that device—a crucial requirement for anticipation.
See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Rather, the
Examiner’s cited passages from van Os suggest that the described operations
are performed on the terminal itself—not remote from that terminal. Accord
Br. 8—13 (noting this deficiency).
The Examiner’s finds that mobile device 100’s Input/Output (I/O)
subsystem 3640 in van Os’ Figure 36 is a “mobile terminal,” and the
memory interface 3602, processor(s) 3604, and peripherals interface 3606
collectively constitute an apparatus remote to this “mobile terminal.” Ans.
4—5. The Examiner’s attempt to distinguish “remote” components within a
2 Although claim 37 lacks antecedent basis for “the mobile terminal,” we
leave the question of whether this inconsistency renders the claim (and its
dependent claims) indefinite to the Examiner to consider after our decision.
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Application 12/467,059
mobile terminal strains reasonable limits on this record, particularly when
the claim is interpreted in light of the Specification. Paragraph 22 of the
Specification, for example, describes an alternative embodiment that uses a
remote computer or terminal to define configuration settings for the mobile
device. As Appellants explain, this ability to configure the mobile device
remotely is a key aspect of the claimed invention. See Br. 7.
Although we recognize that we must not import limitations from the
Specification into the claims, we must nevertheless give claims their
broadest reasonable construction consistent with the Specification. In re
Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); see also Phillips
v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc). Where, as
here, the Examiner’s construction is not only inconsistent with the
Specification, but also the claim language when read as a whole, the
Examiner’s rejection based on that construction is erroneous. The
Examiner’s anticipation rejection is, therefore, untenable on this record.
We note, however, that van Os’ system can install profiles from a web
page in column 15, lines 5 to 40 and Figures 26 to 28. But the Examiner
does not rely on this embodiment in rejecting claim 21. See Final Act. 3;
Ans. 3—8. Nor will we speculate whether this embodiment anticipates or
renders obvious the claimed invention here in the first instance on appeal.
Although this embodiment apparently involves a remote entity, presumably
a web site from which profiles are installed (see van Os, col. 15,11. 5—17),
we cannot say—nor has the Examiner shown—that this particular remote
profile installation functionality anticipates or renders obvious the claimed
invention. Rather, we leave that question for the Examiner to consider after
this opinion.
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Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 21; (2) independent claims 29 and 37 which recite
commensurate limitations; and (3) the dependent claims for similar reasons
Because this issue is dispositive regarding our reversing the Examiner’s
rejection of these claims, we need not address Appellants’ other associated
arguments.
CONCLUSION
The Examiner erred in rejecting claims 21—42 under § 102.
DECISION
We reverse the Examiner’s decision to reject claims 21 42.
REVERSED
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