Ex Parte Ediger et al

Patent Trial and Appeal Board

Mar 29, 2018

13274274 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/274,274 10/14/2011
69753 7590 04/02/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Jason David Ediger
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.
106842053300
(Pl2642US1)
CONFIRMATION NO.
2564
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON DAVID EDIGER, ERIC B. BAILEY,
WILLIAM MARTIN BACHMAN,
ALAN C. CANNISTRARO, MICHAEL JOHN NINO,
MATTHEW KENJIRO FUKUDA, and ELBERT D. CHEN1
Appeal2017-005326
Application 13/274,274
Technology Center 3700
Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7, 10-18, and 21-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-005326
Application 13/274,274
CLAIMED SUBJECT MATTER
The claims are directed to an electronic learning application. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
displaying a graphical user interface (GUI) that includes a
tab area, a content display area and a side bar area, the tab area
including a plurality of user-selectable tabs for providing access
to different types of course content for a given course;
while displaying content associated with a first tab in the
content display area and the side bar area, receiving a first input
selecting a second tab; and
responsive to the first input, displaying content associated
with the second tab in the content display area and the side bar
area, wherein:
displaying the content associated with the second tab
includes displaying information items in the side bar area that
correspond to existing course content associated with the content
display area, and at least one side bar information item in the
information items displayed in the side bar area includes a visual
indication of a quantity of existing course content associated with
the side bar information item, wherein the method is performed
by one or more hardware processors.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Alcorn et al.
Smithmier et al.
Levisay et al.
Fourman
US 2009/0317786 Al
US 2011/0212430 Al
US 2012/0077175 Al
US 2012/0315616 Al
2
Dec. 24, 2009
Sept. 01, 2011
Mar. 29, 2012
Dec. 13, 2012
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Application 13/274,274
REJECTIONS
Claims 10, 11, 21, 22, and 29--32 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.
Claims 1, 12, and 23-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smithmier and Fourman.
Claims 2-7 and 13-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smithmier, Fourman, Alcorn, and Levisay.
Claims 10, 21, and 29--32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Alcorn and Fourman
Claims 11 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alcorn, Smithmier, and Fourman.
OPINION
The non-appealed rejections of claims 1, 12 and 23-28 over
Smithmier and F ourman and claims 2-7 and 13-18 over Smithmier
Fourman, Alcorn, and Levisay, are summarily sustained. 37 C.F.R. § 41.31
("An appeal, when taken, is presumed to be taken from the rejection of all
claims under rejection"); In re Berger, 279 F.3d 975 (Fed. Cir. 2002)
(Affirming the Board's affirmance of an uncontested rejection, holding that
the appellant had waived the right to contest the rejection by not presenting
arguments on appeal to the Board); Hyatt v. Dudas, 551F.3d1307, 1314
(Fed. Cir. 2008) ("the applicant can waive appeal of a ground of rejection").
Regarding the § 101 rejection of independent claims 10 and 21, as
evidence of non-eligibility, the Examiner contends the claimed method
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involves displaying representation of courses and course notifications and
can be practiced with pen and paper. Final Act. 2. In response to Appellants'
argument regarding this element (App. Br. 17-18), the Examiner states that
the claims "at best represent[] improvement only to the concept of providing
information to a user, not the functioning of the computer or user interface."
Ans. 7. However, the notifications, according to the claim, require some
degree of interactivity, more than just displaying or presenting them. The
number of notifications must be known to the user interface as with each
notification's association with a particular course. Further, notifications for
each course must be able to be displayed in response to user input or
interaction.
Although not expressly recited in the claim, the notification element,
to perform the recited acts, must have some capability to interact with
communications systems, data storage systems, input devices and at least
two aspects of the user interface that determines the manner in which they
are displayed. This involves the ability to receive, store, communicate, and
act on information, which is more than just the act of displaying or
presenting information to an observer or user, as may be practiced with pen
and paper. This understanding of the term "notification" based on the
context of the claim is consistent with the ordinary and customary meaning
of the term: "a message ... to notify other objects that a particular task has
been completed." 1 Thus, we cannot agree with the Examiner's reasoning that
the methods of claims 10 and 21, or their dependents, as understood by one
1 notification message. (2010). In S. M. H. Collin (Ed.), Dictionary of
computing (6th ed.). London, UK: Bloomsbury. Retrieved/ram
https:// search. credoreference. com/ content/ entry/ acbcomp/notification_messa
ge/O?institutionid=743 on Mar. 20, 2018.
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Application 13/274,274
skilled in the art, are methods that can be practiced with pen and paper and
do not involve the functionality of the computing system or user interface.
Accordingly, the Examiner has not demonstrated the subject matter of
claims 10, 11, 21, and 22 to be ineligible under 35 U.S.C. § 101.
Appellants argue the prior-art rejections based on claim 10 (App. Br.
19-26), which will be representative (under 37 C.F.R. § 41.37(c)(l)(iv)) of
all claims for which review is sought, except for separately argued claim 30
(App. Br 27-30). Although we agree with Appellants that the subject matter
of claims 10 and 30 is patent-eligible, we agree with the Examiner that the
subject matter of claims 10 and 30 is unpatentable over Alcorn and
Fourman, and adopt the Examiner's findings and analysis (Final Act. 7-9) in
that regard as our own. 2 We also agree with, and adopt, the Examiner's
analysis of the issues raised by Appellants in their briefs (Ans. 10-12);
namely, that Appellants are attacking the references individually, by
pointing out that each cited reference lacks the subject matter the other
reference is cited for, and not addressing the Examiner's proposed
combination of the prior-art teachings. 3 For Example, Appellants argue:
Neither Alcorn nor Fourman teaches concurrently displaying
representations of a plurality of courses that include both (1) "a
representation of a first course in the user interface [that] includes
a graphical indication of a number of course notifications
associated with the first course" and (2) "a representation of a
second course in the user interface [that] includes a graphical
2 See, e.g., In re Paulsen, 30 F. 3d 1475, 1478 n. 6 (Fed. Cir. 1994), accord
In re Cree, No. 2015-1365 n. 2 (Fed. Cir. Mar. 21, 2016).
3 "Non-obviousness cannot be shown by attacking references individually
when the rejection is predicated upon the teachings of a combination of
references." See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986)( citation omitted).
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indication of a number of course notifications associated with the
second course," as recited in claim 10.
App. Br. 21. This is because it is the combined teachings of Alcorn and
Fourman that would yield such an arrangement. Alcorn teaches the display
of various courses (Final Act. 7 (citing Alcorn Fig. 5)) and various
indications of announcements (i.e., "notifications") associated with each
course (Final Act. 7 (citing Alcorn Fig. 8)). Fourman teaches the technique
of including the "number" (claim 1) ofunviewed (claim 30) comments or
notifications associated with two different items (Final Act. 8 (citing
Fourman Fig. 5)). It is inapposite that the different types of comments for
which notifications are summed and displayed in Fourman are for the same
course (App. Br. 23-26; Reply. Br. 5-6). This is because Alcorn already
teaches multiple notifications associated with multiple individual courses.
Final Act. 7 (citing Alcorn Fig. 8). So, applying Fourman's technique to
Alcorn' s interface would result in summation and display associated with
each course in Alcorn's course list (e.g., Alcorn Figs. 5, 6), to thereby arrive
at the claimed subject matter. This is the essence of the Examiner's position
with regard to claim 10, and Appellants' arguments related to the
shortcomings of each reference individually leave the Examiner's position in
this regard essentially uncontroverted.
With specific regard to claim 30, the Examiner finds it unclear why
Appellants seek to distinguish between the tabs of F ourman and the
comments themselves (App. Br. 28-29). Ans. 12. As best we understand
Appellants' argument, claim 30 requires the unviewed indication to be
associated with each notification itself as opposed to merely the summation
of the notifications. Because it is the comments themselves that the
Examiner regards as the subject matter about which Fourman presents
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notifications (Final Act. 8), Appellants are essentially contending that
F ounnan lacks unviewed indications associated with each of F ounnan' s
comments, as would be required, in Appellants' view, to meet the limitations
of claim 30. The Examiner does not appear to have fully appreciated and
addressed this aspect of claim 30.
According to claim 30, it is the first and second user interface views
of claims 10 and 30, which are associated with each course, that present the
unviewed indications associated with unviewed notifications, and not the
user interface view displaying the number of notifications of parent claim
10. Of course, an artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 ( CCP A 1962 ). The assertion that F ourman indicates in the tabular
headings the number of new comments without providing indications of
which particular comments are new in each tab seems somewhat unlikely
and unrealistic. Nonetheless, the Examiner does not provide facts or analysis
on the specific point for our review. Although the record is incomplete in
this regard, we find that the technique of attributing unviewed indications to
content associated with notifications was well-known in the art as
demonstrated in Figure 28 of Alcorn (Highlighting new e-mail messages). It
would have been obvious to associate this same type of indication with
unviewed course announcements (Figure 8 of Alcorn) in order to facilitate
recognition by the user ofunviewed content. Accordingly, we affirm the
Examiner's rejection of claim 30 as unpatentable over Alcorn and Fourman.
However, as we have supplemented the record with additional facts, we
designate our affirmance of claim 30 as including new grounds of rejection
so as to afford Appellants the procedural options associated therewith.
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DECISION
The Examiner's rejection under 35 U.S.C. § 101 is reversed.
The Examiner's rejections under 35 U.S.C. § 103(a) are affirmed.
We designate our affirmance of the rejection of claim 30 as including
new grounds of rejection under 37 C.F.R. § 41.50(b).
RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED4 ; 37 C.F.R. § 41.50(b)
4 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed." 37 C.F.R.
§ 41.50(a)(l).
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