Ex Parte Gieseke

Patent Trial and Appeal Board

Nov 26, 2014

11893720 (P.T.A.B. Nov. 26, 2014)

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.
11/893,720 08/16/2007 Arnold Gieseke 14325/12 6180
7590 11/28/2014
Kevin J. Canning
NELSON MULLINS RILEY & SCARBOROUGH LLP
One Post Office Square
Boston, MA 02109-2127
EXAMINER
CAI, WAYNE HUU
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
11/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARNOLD GIESEKE
____________

Appeal 2012-007749
Application 11/893,720
Technology Center 2600
____________

Before JAMES T. MOORE, DENISE M. POTHIER, and
IRVIN E. BRANCH, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 11–14, 16–20, and 23–26. Claims 1–10, 15, 21, and 22
have been canceled. App. Br. 3.
1
We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Invention
Appellant’s invention relates to a mobile communications terminal
with an interface having operating functions represented on a display device

1
Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed
December 9, 2011; (2) the Examiner’s Answer (Ans.) mailed February 15,
2012; and (3) the Reply Brief (Reply Br.) filed April 16, 2012.
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using icons, which are selectable for activation in an object-oriented fashion.
See Spec. 3:25–27, 4:7–9, Abstract. Claim 11 is reproduced below with
emphasis:
11. A mobile telecommunications terminal, comprising:
an operator interface including a display device;
wherein the display device is configured to simultaneously
represent a plurality of incoming calls on the display device as icons,
to retrieve each incoming call in response to a selection of a
corresponding icon, and to select for activation operating functions of
the telecommunications terminal in an object-oriented manner;
wherein the display is configured to represent the operating
functions in a context-oriented manner, and
wherein the display device is configured to simultaneously
represent each incoming call on the display device as a separate icon
with a one-to-one correspondence between the icons and the incoming
calls.

The Examiner relies on the following as evidence of unpatentability:
Jarrad US 6,047,197 Apr. 4, 2000
Hymel US 6,313,736 B1 Nov. 6, 2001
Singh US 6,359,615 B1 Mar. 19, 2002
Meins US 6,587,700 B1 July 1, 2003
Silvester US 7,023,968 B1 Apr. 4, 2006

The Rejections
Claims 11–14, 16, and 17
2
stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hymel and Silvester. Ans. 5–8.
Claims 18, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hymel, Silvester, and Jarrad. Ans. 8–10.
Claim 19 was rejected under 35 U.S.C. § 103(a) as unpatentable over
Hymel, Silvester, and Singh. Ans. 10–11.

2
The Examiner mistakenly discusses cancel claims 15 and 22. Ans. 5.
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3
Claim 20 was rejected under 35 U.S.C. § 103(a) as unpatentable over
Hymel, Silvester, and Meins. Ans. 11–12.
Claims 25 and 26 were rejected under 35 U.S.C. § 103(a) as
unpatentable over Hymel, Silvester, Jarrad, Singh, and Meins. Ans. 12–14.

OBVIOUSNESS REJECTION OVER HYMEL AND SILVESTER
Regarding independent claim 11, the Examiner finds that Hymel
teaches all its limitations, except that the display device is configured to
represent simultaneously each incoming call as a separate icon with a
one-to-one correspondence between the icons and the incoming calls.
Ans. 5–6. The Examiner turns to Silvester to teach this missing feature.
Ans. 6.
Appellant urges that the “context-oriented manner” in claim 11 means
“only those operating functions are represented whose operation in the
specific operating state of mobile telecommunications terminal 1 is
possible.” App. Br. 7 (citing Spec. 4:11–12) (emphasis omitted); Reply
Br. 3. Appellant states Hymel fails to teach this feature. See App. Br. 8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 11 by finding
that Hymel and Silvester collectively would have taught or suggested the
display is configured to represent the operating functions in a
context-oriented manner?

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ANALYSIS
We begin by construing the key disputed limitation of claim 1, “a
context-oriented manner.” During examination of a patent application, a
claim is given its broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(internal citations and quotations omitted). Based on the disclosure as a
whole as it would have been interpreted by an ordinarily skilled artisan, we
find that the phrase, “context-oriented manner” is different from and broader
in scope than “context-sensitive” and that the Examiner has made a
construction that is broad, but not unreasonable.
The Specification states, “[i]n the example embodiment described,
display device 10 is configured so as to be context sensitive, i.e., only those
operating functions are represented whose operation in the specific operating
state of mobile telecommunications terminal 1 is possible.” Spec. 4:10–12.
However, the disclosure discusses “a context-oriented fashion” in a separate
passage, explaining:
Operating functions may be represented on the display device
in a context-oriented fashion. In this manner, it is possible to
save space on the display device by representing only the
operating functions that may be necessary for the specific
instantaneous operating state on the display device. Therefore,
clarity for the user is further improved because no operating
functions that are unnecessary for the instantaneous operating
state are offered for selection and activation.

Spec. 2:18–23. The disclosure also states “the use of a context-oriented, or
context-sensitive, display device 10 is not obligatory for the functioning of
the present invention.” Spec. 4:14–16. Stating context-oriented and
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context-sensitive in the alternative and describing these terms separately and
differently in the disclosure provides evidence to reinforce that the phrase,
“context-oriented” is distinct from “context-sensitive.”
Accordingly, we disagree with Appellant that the recitation “the
display is configured to represent the operating functions in a context-
oriented manner” in claim 11 imports the discussion in Specification
addressing the phrase, “context sensitive.” App. Br. 7; Reply Br. 3.
Rather, the phrase, “context-oriented manner” in claim 11, at most
requires the display device represents only the operating functions that may
be necessary for the specific instantaneous operating state on the display
device. See Spec. 2:18–21. Hymel’s Figure 8 shows and teaches a display
device that represents operating functions that may be necessary for an
operating state (e.g., functions 802, 804, 806 may be necessary in a given
operating state, such when these functions are enabled). See Ans. 19
(discussing these icons in Hymel’s Figure 8 and stating these functions can
be activating); see also Hymel 7:35–56 (cited at Ans. 5).
Furthermore, we find that the Examiner’s position that “each of
th[ese] operating function[s] is represented in a context-oriented manner
because it contributes to its full meaning” (Ans. 19) is a broad, but not
unreasonable construction of the phrase, “context-oriented manner” in light
of the disclosure. That is, referring to the above quoted passage in the
Specification, the disclosure does not define the phrase, “context-oriented
manner” but describes a possible result of representing operating functions
“in context-oriented fashion.”
Also, we find that an ordinarily skilled artisan, when considering the
passages cited by the Examiner in the disclosure (Ans. 17–19 (citing Spec.
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3:25–5:16)), would have found the phrase “configured to represent the
operating functions in a context-oriented manner” in claim 11 includes
representing operating functions using an appropriate icon that represents a
particular operating function and thus, contributes to the operating function’s
full meaning. See Spec. 4:20–5:10.
Lastly, Appellant argues that Hymel fails to teach or suggest the
display is configured to represent the operating functions in a
context-oriented manner, because Hymel has user controls (e.g., 320, 710)
for activating the maildrop icons and there is no variation of these user
controls in response to the type of message being received. App. Br. 7. We
are not persuaded.
First, there is no limitation in claim 11 requiring variation in user
controls in response to the message being received. Second, as explained
above, the broadest, reasonable construction of the phrase, “a context-
oriented manner” does not require such a variation. Third, Silvester further
teaches and suggests variation in the icons and user controls, depending on
the message type (e.g., email or voice message). See Silvester 3:63–4:5;
Fig. 4.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 11 and claims 12–14, 16, and 17 not
separately argued with particularity.

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OBVIOUSNESS REJECTION OVER HYMEL, SILVESTER,
JARRAD, SINGH, AND MEINS

Without specifically discussing any limitations in claims 25 and 26,
Appellant argues that “there is no evidence that the reference relied upon,
whether taken alone or otherwise, would provide the features of the claims
discussed above.” App. Br. 11. Appellant further asserts that the Examiner
has not provided proper evidence of motivation for modifying or combining
the references to provide the claimed invention, only conclusory hindsight.
App. Br. 10.

ISSUE
Is the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claims 25 and 26. Concerning whether the Examiner provided
evidence that the references teach or suggest the limitations of claims 25 and
26, Appellant fails to discuss any specific features of these claims. Given
that we cannot determine which features Appellant is disputing, we are not
persuaded by this argument. We further refer to the Examiner’s findings
related to Hymel, Silvester, Jarrad, Singh, and Meins addressing the features
of claims 25 and 26. Ans. 12–14.
Regarding whether the Examiner has provided adequate evidence to
support a conclusion of obviousness for claims 25 and 26, we first note that
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the Examiner need not provide “a motivation” for combining references, but
rather must articulate a reason with some rational underpinning to justify the
Examiner’s obviousness conclusion. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Based on the record, we find that the Examiner has
provided adequate reasoning and need not present precise teachings directed
to specific claimed subject matter, but can take into account “the inferences
and creative steps that a person of ordinary skill in the art would employ.”
See id.
For claims 25 and 26, the Examiner describes Singh’s teaching of a
display device with a touch screen as a well-known alternative input
mechanism in the mobile terminal art and thus is configured to operate in a
touch-sensitive manner. See Ans. 13–15 (citing Singh 3:6–7, 29–38.)
Modifying Hymel, Silvester, and Jarrad so that the resulting system is
configured to operate in a well-known touch-screen manner taught by Singh
simply substitutes one known element for another in the field and yields no
more than a predictable result. See KSR, 550 U.S. at 416. Moreover, the
Examiner cites to Meins to teach that selecting operating functions using
various, known options, including a touch screen, a stylus, or audio input
(e.g., voice input). See Ans. 13, 15 (citing Meins 4:15–31.) As such,
modifying the Hymel, Silvester, Jarrad, and Singh system so that an
operating function is selectable for activation in accordance with a voice
input as taught by Meins also simply substitutes one known element for
another in the field and yields no more than a predictable result. See KSR,
550 U.S. at 416.
Moreover, we find that taking account of inferences and creative steps
that an ordinarily skilled artisan at the time the invention was made would
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have employed, the artisan would have recognized that enabling operating
functions using an audio or voice input as taught by Meins would provide
hands-free functionality. Thus, the Examiner’s findings and conclusions
regarding claims 25 and 26 are not conclusory and have a reason with some
rationale underpinning to justify an obviousness conclusion.
Accordingly, we sustain the rejection of claims 25 and 26.

THE REMAINING OBVIOUSNESS REJECTIONS
For each of the remaining rejections, Appellant refers to the previous
arguments of claim 11. App. Br. 8–9. The issues before us, then, are the
same as those in connection with claim 11, and we refer Appellant to our
previous discussion. Accordingly, we sustain the rejections of claims 18–20,
23, and 24.

CONCLUSION
The Examiner did not err in rejecting claims 11–14, 16–20, and 23–26
under § 103.

DECISION
The Examiner’s decision rejecting claims 11–14, 16–20, and 23–26 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)(1)(iv).

AFFIRMED

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