Ex Parte Doudkine et al

Patent Trial and Appeal Board

Mar 21, 2016

12837975 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/837,975 07/16/2010
63206 7590 03/23/2016
BlackBerry Limited (Novak Drnce)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
Katerina Doudkine
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.
9507.021.NPUSOO 5302
EXAMINER
RECEK, JASON D
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
patdoctc@fr.com
ptoboca@fggbb.com
portfolioprosecution@blackberry.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA TERINA DOUD KINE and JOHN BENNETT PARRETT
Appeal2014-006603
Application 12/837,975 1
Technology Center 2400
Before CARL W. WHITEHEAD JR., KEVIN C. TROCK, and
AMBER L. HAGY, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4--9, 11-16, and 18-21, which constitute all
the claims pending in this application.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellants indicate the real party in interest is Blackberry Limited. Reply
Br. 2.
2 Claims 3, 10, and 17 are cancelled. App. Br. 5.
Appeal2014-006603
Application 12/837,975
Invention
The claims are directed to mobile electronic devices, specifically to a
method, system, and apparatus for controlling the display of a mobile
electronic device. Spec. i-f 1.
Exemplary Claim
Exemplary claim 1 is reproduced below with disputed limitations
emphasized:
1. A method of controlling a display of a mobile
electronic device, the method comprising:
maintaining, in a memory of the mobile electronic device,
one or more related messages, the related messages having
substantially similar subject lines;
maintaining, in the memory, at least one of a plurality of
labels in association with at least one of the related messages;
receiving a request, via an input device of the mobile
electronic device, to display label states associated with the
related messages;
responsive to the request, determining, for each of the
plurality of labels, a state based on a comparison between the
total number of the related messages with which the respective
label is associated and the total number of the related messages;
controlling the display to generate a representation of the
state for each of the labels;
receiving an indication of a potential change in at least one
of the label states; and,
responsive to receiving the indication, updating the
determined label states and controlling the display to generate an
updated representation.
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Application 12/837,975
Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Slater
Kang
Madnani
US 2006/0059238 Al
US 2008/0070551 Al
US 2008/0162651 Al
Rejections
Mar. 16, 2006
Mar. 20, 2008
July 3, 2008
Claims 1, 2, 4, 7-9, 11, 14--16, 18, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Madnani, Kang, and Slater.
Claims 5, 6, 12, 13, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Madnani, Kang, Slater, and
Rosenberger.
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellants' arguments that the Examiner has erred. We
disagree with Appellants' arguments and conclusions. We adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the Final
Office Action from which this appeal is taken; and (2) the findings and
reasons set forth in the Examiner's Answer. We concur with the conclusions
reached by the Examiner and further highlight specific findings and
argument for emphasis as follows.
Appellants contend the Examiner erred in rejecting independent claims
1, 8, and 15 because the combination of Madnani, Kang, and Slater fails to
teach or suggest, "receiving a request, via an input device of the mobile
electronic device, to display label states associated with the related
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messages" (emphasis added), as recited in claim 1, and similarly recited in
claims 8 and 15. App. Br. 10. Appellants also contend the Examiner erred
because the combined references fail to teach or suggest "responsive to the
request, determining, for each of the plurality of labels, a state based on a
comparison between the total number of the related messages with which the
respective label is associated and the total number of the related messages"
(emphasis added), as recited in the claims. App. Br. 12. Finally, Appellants
contend the Examiner erred because the Examiner failed to explain why a
person of ordinary skill in the art would have combined the cited references
in the manner proposed by the Examiner. App. Br. 14.
Request to Display Label States
Appellants first argue that Kang fails to contemplate labels or label
states, and therefore, cannot teach "receiving a request, via an input device
of the mobile electronic device, to display label states associated with the
related messages." Emphasis added. App. Br. 11, 12. Appellants also
argue that the combination of Madnani and Kang, at best, would only teach
an ability to request message history in connection with a certain user, or
perhaps, a group of messages related by their subject lines. App. Br. 12. A
request to display message history, Appellants argue, is not equivalent to a
request to display label states. Id.
The Examiner uses paragraphs 24 and 30 of the Specification to
determine that the broadest reasonable interpretation of the term "label state"
is any label (e.g., "inbox") that has information about the number of
messages. Ans. 7, 8. The Examiner concludes that the "display label states"
claim limitation would read upon a software or e-mail client application that
displayed a folder, such as an email inbox folder, with a number of
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messages." Ans. 8.
The Examiner then finds, and we agree, Madnani teaches categorizing
messages by using labels, including an inbox folder, where such labels are
used for sorting or categorizing messages. Ans. 8 (citing Madnani, Fig. 5;
i-f 172). The Examiner also finds, and we agree, Madnani discloses
displaying those labels with a number of messages associated with the
particular label. Ans. 9 (citing Madnani, Fig. 5; i-f 177). The Examiner
therefore finds, and we agree, Madnani teaches displaying the recited "label
states" as properly interpreted in light of the Specification. Ans. 9.
The Examiner further finds the combination of Madnani and Kang
teaches the claimed "request" to display the "label states" because Kang
teaches a request for message status. Ans. 9 (citing Kang, Fig. 1; i-fi-1 17, 18).
We, therefore, agree with the Examiner's finding that the combination of
Madnani and Kang teaches "receiving a request, via an input device of the
mobile electronic device, to display label states associated with the related
messages" (emphasis added), as recited in independent claim 1, and
similarly in claims 8 and 15.
Determining Label States
Appellants next argue that the combination of Madnani, Kang and
Slater cannot teach "responsive to the request, determining, for each of the
plurality of labels, a state based on a comparison between the total number
of the related messages with which the respective label is associated and the
total number of the related messages" (emphasis added), because Madnani's
indication of the number of unread messages associated with a label is not
determined by the total number of messages associated with a given label.
App. Br. 12. Appellants also argue that Slater makes no mention of labels or
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label states and that Slater's determining some form of percentage of
messages is not sufficient to satisfy the disputed limitation. App. Br. 13.
Appellants argue, therefore, that even if Madnani were modified according
to Slater, the result would simply be the ability to calculate a percentage of
messages sent by a given sender that has no connection to labels. Id. We
disagree.
As we discussed above, Madnani not Slater was relied upon by the
Examiner for teaching "label states." Ans. 9. The Examiner finds, and we
also agree, the disputed claim language does not exclude percentages. Ans.
9. As the Examiner explains, when one number is compared with another
number, the result may be a ratio, a percentage, a difference, or some other
form of expressing the comparison of two numbers. Ans. 9, 10. The
Examiner therefore finds, and we agree, Slater's teaching of comparing a
number of messages categorized by sender with a total number of messages
teaches "a comparison between the total number of messages [for the label]
and the total number of messages." Ans. 10. See also, Final Act. 4, 5 (citing
Slater i-f 390).
We, therefore, agree with the Examiner's finding that the combination
of Madnani, Kang and Slater teaches "responsive to the request,
determining, for each of the plurality of labels, a state based on a
comparison between the total number of the related messages with which the
respective label is associated and the total number of the related messages"
(emphasis added), as recited in claim 1 and similarly in claims 8 and 15.
Rational to combine
Appellants argue the "Examiner fails cogently to explain why a person
having ordinary skill in the art would not just modify, but rather add an
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additional feature of 'status request taught by Kang' to ivfadnani's system."
App. Br. 14. Appellants also argue "the Examiner does not provide an
explanation of how a person of ordinary skill in the art would attempt to
combine the teachings of Madnani and Kang into the Examiner's proffered
combination." Id. Appellants then argue as to the proffered combination of
Madnani, Kang, and Slater, that "the Examiner fails cogently to explain why
a person having ordinary skill in the art would not just modify, but rather
add another additional feature of comparing total numbers of related
messages to proffered combined system of Madnani and Kang." Id. Finally,
Appellants argue, "the Examiner does not provide an explanation of how a
person of ordinary skill in the art would attempt to combine the teachings of
Madnani and Kang with the teachings Slater to yield the Examiner's
proffered combination." Id.
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Examiner
must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). However, the obviousness "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. Id. at 418.
Moreover, combining the respective familiar elements of the cited
references in the manner proffered by the Examiner would be proper unless
it was "uniquely challenging or difficult for one of ordinary skill in the art."
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). It is common sense that familiar items
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may have obvious uses beyond their primary purposes, and a person of
ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle. KSR, 550 US at 421.
Here, the Examiner finds:
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Madnani with the status
request taught by Kang for the purpose of managing messages.
Kang suggests that by displaying status info for related messages,
management is easier (paragraphs 7-9). Although Kang teaches
grouping messages based on user, this does not detract from
grouping messages based on subject as known in the art and
explicitly taught by Madnani.
Final Act. 4.
The Examiner also finds:
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the combination of Madnani
and Kang with the percent feature taught by Slater for the
purpose of message management. Slater teaches that by allowing
these comparisons to be performed real-time action can be taken
(paragraph 53).
Final Act. 5.
We find the Examiner articulated appropriate reasoning with rational
underpinnings to support the legal conclusion of obviousness. Appellants
have not provided persuasive argument or evidence that the combination or
modifications proffered by the Examiner would have been uniquely
challenging or difficult for one of ordinary skill in the art. Accordingly, we
find the Examiner's combination of familiar prior art elements according to
their established functions would have conveyed a reasonable expectation of
success to a person of ordinary skill at the time of the invention and that
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there was no error.
Substantially similar subject lines
For the first time in the Reply Brief, Appellants raise the argument that
"related messages" as recited in the claims means "having substantially
similar subject lines." Reply Br. 5 (emphasis added). In other words,
Appellants argue, relevant messages are connected by two attributes: their
substantially similar subject lines, and (for some of the messages) having the
same label. Id. (emphasis added). Appellants now argue,
the equivalents in Slater of the two numbers referred to in claim
1 would be:
1) a total number of messages having similar subject lines
and being sent by that particular sender; and
2) a total number of messages having similar subject lines,
regardless of whether or not they were sent by that sender.
Reply Br. 6 (emphasis added). Appellants also apply this new line of
argument concerning substantially similar subject lines to the Examiner's
reliance on Madnani's teaching of a message count for a given label. See,
e.g., Reply Br. 6.
Arguments and evidence not presented timely in the opening brief will
not be considered when filed in a reply brief, absent a showing of good
cause explaining why the argument could not have been presented in the
opening brief. Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BP AI 2010)
(informative). Appellants could have presented their argument concerning
the "substantially similar subject lines" (emphasis added) limitation in their
opening Brief. They did not. Moreover, Appellants' argument concerning
the "substantially similar subject lines" (emphasis added) limitation does not
appear to have been in response to any new arguments presented by the
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Examiner in the Answer. By waiting to raise this argument until the Reply
Brief, Appellants have denied the Examiner an opportunity of providing a
response to the argument, and have precluded us from being able to consider
the Examiner's response to this new argument.
Accordingly, because Appellants' argument concerning the
"substantially similar subject lines" (emphasis added) limitation was not
initially presented in their opening brief and was not in response to a new
argument presented by the Examiner, it has been waived. See, Optivus
Tech., Inc. v. Ion Beam Appl'ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)
(argument raised for the first time in the reply brief that could have been
raised in the opening brief is waived).
Remaining Claims 2, 4-7, 9, 11-14, 16, and 18-21.
Appellants have not presented separate, substantive arguments with
respect to remaining claims 2, 4--7, 9, 11-14, 16, and 18-21. Accordingly,
we sustain the Examiner's rejection of these claims. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
DECISION
We AFFIRM the Examiner's rejections of claims 1, 2, 4--9, 11-16,
and 18-21.
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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