Ex Parte Govindaraju

Patent Trial and Appeal Board

Jul 31, 2018

13714325 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/714,325 12/13/2012 Guru Prashanth Govindaraju
69753 7590 08/02/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
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.
106842052400
(Pl5832US1)
CONFIRMATION NO.
4134
EXAMINER
JACKSON, JENISE E
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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 GURU PRASHANTH GOVINDARAJU
Appeal2018-002031
Application 13/714,325 1
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18, 19, and 21-39. Claims
3, 6, 10, 13, 17, and 20 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Apple Inc. App. Br. 1.
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Application 13/714,325
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to "managing
access to applications and content on an electronic device." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method comprising:
at an electronic device with a display and one or more
input devices:
while the electronic device is in a first mode during
which access to content having a private designation is not
restricted, displaying, on the display, a plurality of visual
indications associated with content available on the electronic
device, a first visual indication of the plurality of visual
indications having the private designation, and a second visual
indication of the plurality of visual indications having a public
designation;
while the electronic device is in the first mode, receiving,
at the one or more input devices, user input enabling a privacy
mode on the electronic device during which access to the
content having the private designation is restricted; and
in response to receiving the user input enabling the
privacy mode on the electronic device:
transitioning the electronic device from the first mode to
the privacy mode; and
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
June 22, 2017); Reply Brief ("Reply Br.," filed Dec. 18, 2017); Examiner's
Answer ("Ans.," mailed Oct. 17, 2017); Final Office Action ("Final Act.,"
mailed Dec. 22, 2016); and the original Specification ("Spec.," filed
Dec. 13, 2012).
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visually altering the display of the first visual indication
while maintaining the display of the second visual indication.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chang et al. ("Chang") US 2013/0055378 Al Feb. 28, 2013
Horvitz et al. ("Horvitz") US 2013/0086674 Al April 4, 2013
Lemke US 2013/0145453 Al June 6, 2013
Rejections on Appeal
RI. Claims 1, 8, and 15 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite by reciting "while the electronic device
is in a first mode during which access to content having a private
designation is not restricted." Final Act. 4.
R2. Claims 1, 7, 8, 14, 15, 21, 23-28, 30-33, and 35-38 stand
rejected under 35 U.S.C. § I02(e) as being anticipated by Lemke. Final
Act. 5.
R3. Claims 2, 4, 9, 11, 16, 18, 22, 29, 34, and 39 stand rejected
under 35 U.S.C. § I03(a) as being obvious over the combination of Lemke
and Chang. Final Act. 9.
R4. Claims 5, 12, and 19 stand rejected under 35 U.S.C. § I03(a) as
being obvious over the combination of Lemke, Chang, and Horvitz. Final
Act. 12.
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CLAIM GROUPING
Based on Appellant's arguments (App. Br. 8-9), we decide the appeal
of indefiniteness Rejection RI of claims 1, 8 and 15 on the basis of
illustrative claim 1. We also decide the appeal of anticipation Rejection R2
of claims 1, 7, 8, 14, 15, 21, 23-26, 28, 30-33, and 35-38 on the basis of
representative claim 1. We decide the appeal of separately argued claim
claim 27, infra. Remaining claims 2, 4, 9, 11, 12, 16, 18, 19, 22, 29, 34,
and 39 in obviousness rejections R3 and R4, not argued separately, stand or
fall with the respective independent claim from which they depend. 3 We
decide the appeal of separately argued claim 5 in Rejection R4, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We agree with particular arguments advanced by Appellant with
respect to indefiniteness Rejection RI of claims 1, 8 and 15 for the specific
reasons discussed below.
However, we disagree with Appellant's arguments with respect to
Rejections R2-R4 of claims 1, 2, 4, 5, 7-9, 11, 12, 14--16, 18, 19 and 21-39,
and we incorporate herein and adopt as our own for these rejections: (1) the
findings and reasons set forth by the Examiner in the action from which this
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
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appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 112, ,r 2, Rejection RI: Claims 1, 8, and 15
Issue
Appellant argues (App. Br. 8-9; Reply Br. 2-5) the Examiner's
Rejection RI of claims 1, 8 and 15 under 35 U.S.C. § 112, second
paragraph, as being indefinite is in error. These contentions present us with
the following issue:
Did the Examiner err in concluding the recitation in claim 1 of "while
the electronic device is in a first mode during which access to content having
a private designation is not restricted" is indefinite under§ 112, second
paragraph?
Analysis
The Examiner concludes the claim 1 limitation, "while the electronic
device is in a first mode during which access to content having a private
designation is not restricted," is indefinite because it is purportedly unclear.
Final Act. 4. In particular, the Examiner concludes:
Id.
It's unclear how the first mode have content having a private
designation that is not restricted. There is only two modes, first
mode and privacy mode according to the claims. If the first
mode is a disabled privacy mode, than how can there be a
private designation?
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We disagree with the Examiner's conclusion. The Supreme Court
guides, "a patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention." Nautilus, Inc. v. Biosig Insts., Inc., 134 S. Ct. 2120, 2124
(2014). Further, we give pending claims "their broadest reasonable
interpretation consistent with the specification" and "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).
Appellant contends the disputed limitation is clear because it is
supported by the Specification "which discloses that enabling a privacy
mode can disable access to private applications that may otherwise be
accessible (see paragraph [001 OJ)." App. Br. 8. Appellant further argues,
"[B]ecause access to private applications can be disabled by enabling a
privacy mode, in such circumstances, access to private applications must
necessarily be enabled (e.g., access to private applications-that is,
applications designated as private-is not restricted) before entering the
privacy mode." Id.
We conclude the plain language of claim 1, in light of the
Specification, would have informed those skilled in the art at the time of the
invention about the scope of the invention with reasonable certainty. See
Nautilus, 134 S. Ct. at 2124. Moreover, The Examiner has not shown that
independent claims 1, 8, and 15 are indefinite under the lower threshold of
ambiguity set forth in the holding of Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BP AI 2008) (precedential) ("[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
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applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim ... indefinite").
Therefore, we reverse the Examiner's Rejection RI under§ 112,
second paragraph, of independent claims 1, 8, and 15.
2. § I02(e) Rejection R2: Claims 1, 7, 8, 14, 15, 21, 23~28, 30~33, 35~38
Issue
Appellant argues (App. Br. 7-8; Reply Br. 3-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § I02(e) as being anticipated by Lemke
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art anticipates a method
that includes, inter alia, the steps of:
while the electronic device is in a first mode during
which access to content having a private designation is not
restricted, displaying, on the display, a plurality of visual
indications associated with content available on the electronic
device, a first visual indication of the plurality of visual
indications having the private designation, and a second visual
indication of the plurality of visual indications having a public
designation;
while the electronic device is in the first mode, receiving,
at the one or more input devices, user input enabling a privacy
mode on the electronic device during which access to the
content having the private designation is restricted; and
in response to receiving the user input enabling the
privacy mode on the electronic device:
transitioning the electronic device from the first mode to
the privacy mode; and
visually altering the display of the first visual indication
while maintaining the display of the second visual indication,
as recited in claim 1? (Emphasis added).
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Analysis
Appellant contends, "Lemke wholly lacks a detail contained in
claim I-namely, receiving user input enabling a privacy mode while the
mobile device is in a first mode (e.g., a mode in which access to content
having a private designation is not restricted)." App. Br. 11. Appellant
additionally contends, "the user input for enabling the privacy mode is
received at the electronic device while the user has access to public and
private applications. Ignoring this claim element ignores a key motivation
behind the feature described by the claim." Id.
In response, the Examiner further explains the basis for the rejection:
The Examiner asserts that the first mode is full system access
which requires a full system access code also called a master
access code and/or a private access code which gives the user
access to content, applications and services having a private
designation that is not restricted. (Lemke: para. 0038, 0040,
0042).
Ans. 3.
We agree with the Examiner's findings because Lemke's unrestricted
mode, providing full system access, discloses "a first mode," and Lemke's
guest mode discloses a "privacy mode" as recited in claim 1. Lemke ,r,r 37,
3 8, 40, and 42.
Regarding Appellant's different-motivations argument (App. Br. 11 ),
our reviewing court guides this is irrelevant. " [ A ]rguments that the alleged
anticipatory prior art is 'nonanalogous art' or 'teaches away from the
invention or is not recognized as solving the problem solved by the claimed
invention, is not 'germaine' [germane] to a rejection under section 102."
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Twin Disc, Inc. v. US., IO Cl.Ct. 713, 728 (1986) (citing In re Self, 671 F.2d
1344, 1350-51 (CCPA 1982)). 4
Appellant further argues Lemke does not disclose claim 1 's
"transitioning" and "visually altering" limitations. App. Br. 17. Appellant
alleges Lemke's lockscreen does not allow "access to content having a
private designation." App. Br. 18.
We are not persuaded by Appellant's argument because Lemke's
teaching is not confined to a lock screen. We find Lemke's configuration
provides access to a guest user without the need to shut down or reboot the
mobile device, and the access control module configured to provide full
system access or limited system access to applications clearly discloses the
disputed "transitioning" limitation. Ans. 5-9, see Lemke ,r,r 15, 37.
Appellant also argues the "visually altering" limitation is not disclosed
in Lemke. App. Br. 18-20.
The Examiner finds:
Lemke discloses visually altering the display of the first visual
indication, which is app#2 and app#5 on fig. 4b, and
maintaining the display of the second visually indication which
are apps #1, #3, and #4 (Lemke: para. 0045,fig. 4b ). Thus,
when the user enters the privacy mode by providing the correct
guest access code, certain applications on the device are
visually altered (Lemke: para. 0045-0046,fig. 4b).
Ans. 7-8.
4 To the extent Appellant may have intended their "different motivation"
argument (App. Br. 11) as a "teaches away" argument, we further note that
" [ t ]eaching away is irrelevant to anticipation." Seachange International,
Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
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Based upon our review of the evidence, we agree with the Examiner
that Lemke's different applications disclose the "visually altering" limitation.
Lemke, Fig. 4(b ).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on Lemke to disclose the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting finding of anticipation. Therefore, we sustain the Examiner's
anticipation rejection of independent claim 1, and grouped claims 7, 8, 14,
15, 21, 23-28, 30-33, and 35-38, which fall therewith. See Claim Grouping,
supra.
3. § 102(e) Rejection R2 of Claim 27
Appellant argues "Lemke fails to disclose 'the user input enabling the
privacy mode on the electronic device comprises entry of first access
credentials, different from second access credentials for accessing the
electronic device,' as required by claim 27." App. Br. 25.
The Examiner maps Lemke's user inputting the guest access code to
''first access credentials" and Lemke's full access code is mapped to "second
access credentials," as recited in claim 27. Ans. 13-14.
We agree with the Examiner's findings, because Lemke discloses two
distinct access codes allowing different levels of access to the mobile device.
Appellant has not responded to the Examiner's further findings and
clarifications in the Answer in their Reply Brief. Arguments not made are
waived.
Therefore, we sustain the Examiner's anticipation rejection of
dependent claim 2 7.
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4. § 103(a) Rejection R4 of Claim 5
Regarding dependent claim 5 as obvious under§ 103, Appellant
argues none of the references teach or suggest "that the privacy mode be
disabled based on the first gesture performed in reverse." App. Br. 21.
While Appellant admits Horvitz discloses the detection of a reverse
facial gesture (App. Br. 21 ), Appellant argues Horvitz does not teach
"disabling." App. Br. 21-22.
We are not persuaded by Appellant's arguments because Appellant is
arguing the references separately when the rejection is for obviousness,
relying upon what the reference combination would have suggested to a
person of ordinary skill in the art. "[O]ne cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413,426 (CCPA 1981).
The Examiner cites Lemke, not Horvitz, for teaching or suggesting
disabling. Ans. 12-13. The Examiner further clarifies their findings in the
Answer, to which Appellant does not respond in the Reply Brief. Id.
Arguments not made are waived.
Therefore, on this record, we sustain the Examiner's obviousness
rejection of dependent claim 5.
5. Rejections R3/R4: Claims 2, 4, 9, 11, 12, 16, 18, 19, 22, 29, 34, 39
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 and R4 of claims 2, 4, 9, 11, 12, 16, 18, 19,
22, 29, 34, and 39 under§ 103(a), we sustain the Examiner's rejection of
these claims. Arguments not made are waived.
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REPLY BRIEF
To the extent the Appellant may advance new arguments in the Reply
Brief (Reply Br. 1-7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner erred with respect to indefiniteness Rejection RI
of claims 1, 8, and 15 under 35 U.S.C. § 112, second paragraph, and we do
not sustain the rejection.
(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1, 7, 8, 14, 15, 21, 23-28, 30-33, and 35-38 under 35 U.S.C.
§ 102( e) over the cited prior art of record, and we sustain the rejection.
(3) The Examiner did not err with respect to obviousness
Rejections R3 and R4 of claims 2, 4, 5, 9, 11, 12, 16, 18, 19, 22, 29, 34, and
39 under 35 U.S.C. § I03(a) over the cited prior art combinations of record,
and we sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 4I.50(a)(l).
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DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 7-9, 11,
12, 14--16, 18, 19, and 21-39.
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). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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