Ex Parte Hallford et al

Patent Trial and Appeal Board

Jul 21, 2016

13688629 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/688,629 11129/2012
90140 7590 07/25/2016
BlackBerry Limited (HFZ)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
Christopher HALLFORD
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.
46112-US-CIP 2002
EXAMINER
ZHENG, CHARLES H
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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
portfolioprosecution@blackberry.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER HALLFORD, DANIEL TOBIAS
RYDENHAG, and DONALD JAMES LINDSAY
Appeal2015-002207
Application 13/688,629
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal2015-002207
Application 13/688,629
Invention
Appellants' disclosed and claimed invention relates to an "electronic
device and method of displaying information in response to a gesture."
Title.
Representative Claim
1. A method comprising:
displaying, on a display of an electronic device, first
information;
detecting a gesture on the touch-sensitive display, which
gesture indicates a request to display inbox information;
in response to detecting the gesture, gradually displaying
the inbox information while reducing display of the first
information along with movement of the gesture;
[L 1] wherein, when the gesture is detected within a
predetermined time of the electronic device receiving a message,
the inbox information comprises a plurality of inbox entries
displayed in a list of items view; and
[L2] wherein, when no message is received by the
electronic device within the predetermined time of detecting the
gesture, the inbox information comprises last displayed
information relating to an inbox item, displayed in a view other
than the list of items view.
(Emphasis added and labeling added to contested limitations Ll-L2)
Rejection
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Apple iOS 5 (Josh Asch,
iOS 5: Notifications and Notification Center, pub. Oct. 12, 2011,
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http://gigaom.com/2011/10/12/ios-5-notifications-and-notification-center),
and Jobs et al. (US 2008/0174570 Al, pub. July 24, 2008).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of claims 1-7,
and 10-13, on the basis of representative independent claim 1. See 37
C.F.R. § 41.37(c)(l)(iv). Based on Appellants' arguments, we decide the
appeal of claims 14--16, on the basis of independent claim 14. We address
separately argued dependent claims 8 and 9, infra. We address the rejection
of the remaining claims 17-21, separately, infra.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis in our analysis below.
Rejection of Representative Claim 1
Regarding limitation L 1, Appellants contend:
Apple iOS5 discloses "the inbox information comprises a
plurality of inbox entries displayed in a list of items view," but
fails to disclose its companion conditional limitation, "when the
gesture is detected within a predetermined time of the electronic
device receiving a message. " (Br. 8). 1
1 Appellants have not filed a Reply Brief to further rebut the Examiner's
factual findings and legal conclusions.
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Regarding limitation L2, Appellants contend:
Apple iOS5 teaches no such conditional, and indeed does not
disclose any concept akin to a "predetermined time" or whether
"the gesture is detected within a predetermined time of the
electronic device receiving a message," as required by claim 1.
(Br. 10-11).
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of references would have taught or suggested the two
contested "wherein" clause conditional limitations, labeled as L 1 and L2,
[L 1] wherein, when the gesture is detected within a
predetermined time of the electronic device receiving a message,
the inbox information comprises a plurality of inbox entries
displayed in a list of items view; and
[L2] wherein, when no message is received by the electronic
device within the predetermined time of detecting the gesture, the
inbox information comprises last displayed information relating
to an inbox item, display'ed in a viei,v other than the list of items
view,
within the meaning of method claim 1, under a broad but reasonable
interpretation? 2
As an initial matter of claim construction, we note the conditional
"wherein, when" temporal predicate conditions recited in each of contested
limitations LI and L2:
2 During patent examination~ 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).
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wherein, when the gesture is detected within a predetermined
time of the electronic device receiving a message [then perform
recited L 1 step or act] ; and
wherein, when no message is received by the electronic device
within the predetermined time of detecting the gesture [then
perform recited L2 step or act] . . . (Emphasis added).
We note both potential outcomes of a single predicate condition are
not covered within the scope of claim 1, because the recited L 1 and L2
temporal limitations cover different respective time periods: Compare L 1:
"when the gesture is detected within a predetermined time of the electronic
device receiving a message ... , " with L2: "when no message is received by
the electronic device within the predetermined time of detecting the gesture .
" (Emphasis added).
Under a broad but reasonable interpretation5 we conclude the
contested conditional "wherein" clause limitations L l and L2 are not
11rJsiti1)£~(v recitt?d as a_ct11ally req11irir1g tl1e recited steps (}r acts to lJe
performed. 3 Appellants attempt to distinguish method claim 1 over the cited
3 See MPEP § 2111.04 regarding "wherein" clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by clahn language
that does not limit a clairn to a particular stn1cture. However, examples of
claim language, although not exhaustive, that may raise a question as to the
limiting eflect of the language in a claim are:
(A) "adapted to" or "adapted for" clauses;
(B) "wherein" clauses; and
(C) "whereby" clauses.
Manual of Patent Examining Procedure (MPEP) § 2111.04 (9th Ed., Rev.
07.2015, Nov. 2015).
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prior art, not by contesting specific positively recited steps or acts, but rather
by contesting temporal limitations which may or may not occur. (Br. 6-17).
Our reviewing court provides persuasive, non-precedential guidance:
"If the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed." Cybersettle, Inc. v. National Arbitration
Forum, Inc., 243 Fed. Appx. 603, 608 (Fed. Cir. 2007) (Unpublished case);
Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010)
(unpublished) (affirming a district court's interpretation of a method claim
as including a step that need not be practiced if the condition for practicing
the step is not met).
Other Board panels have addressed similar conditional steps or acts in
method claims, e.g., Ex parte Katz, 2011 WL 514314, at *4-5 (BPAI 2011)
(Appeal No. 2010-006083). In Katz, the BPAI panel considered the
following conditional limitation in computer-implemented method claim l:
onZv if" said promotion qualification indicates that both said first
product item and said second product item were received via said
at least one input device at said POS during said purchase
transaction, with said at least one processor, deducting frmn a
charge for said purchase transaction a value of promotion
associated \Vi th said second promotion and a value of promotion
associated with said first promotion.
id. at *4 (emphasis added).
Similar to method claim l in the instant appeal, the claim in Katz
recites a predicate condition that specifies a temporal lirnitation: "during
said purchase transaction .... " In Katz, if the predicate condition does not
occur during the time period specified by the temporal limitation ("during
said purchase transaction"), then the performance of the claimed step or act
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of '"deducting from a charge" is not required within the scope of the claim.
(Id. at *4).
The BP Al panel in Katz reached the following legal conclusion
regarding the proper interpretation of the contested conditional temporal
limitation, under the broadest reasonable constn1ction:
\Ve agree with the Examiner that the "if condition" as ernployed
in the method claim l is not a Hrnitation against which prior art
nmst be found because the step of deducting from a charge for
the purchase transaction a value is conditioned on only if said
promotion qualification indicates that both said first product item
and said second product item were received via said at least one
input device at said POS during said purchase transaction.
During examination, claims are given their broadest reasonable
interpretation. See Jn re Am. Acad. o.f Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). /ls under the broadest scenario, the
steps dependent on the "(/" conditional would not be invoked,
the E\aminer vvas not required to find these limitations in the
prior art in order to render the claims obvious.
Ud. at *4, emphasis added).
Based on such guidance, and on this record, we are not persuaded of
error regarding the Examiner's rejection of representative claim 1 (Final
Rej. 3-5), regardless of whether the conditional temporal ("wherein,
when") limitations are found in the prior art. (Clailn 1 ).
To the extent the recited contested conditional limitations may be
considered optional unless and/or until the predicate temporal conditions are
met, MPEP § 2111 provides fu1iher guidance applicable to "wherein"
clauses in method claims: "Claim scope is not limited by claim language that
suggests or makes optional but does not require steps to be performed." See
n.3, supra.
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Further regarding the temporal claim limitations "a predetermined
time" (L 1) and "the predetermined time" (L2), we agree with the
Examiner's conclusion that "the predetermined time" does not have an
antecedent basis (Ans. 17), because the claim term "a predetermined time"
covers a different time period than the subsequent claim term "the
predetermined time," as discussed above. (Claim 1).4
As an ancillary claim construction issue, we note the term "the inbox
information comprises ... " is not limited to only "a plurality of inbox entries
displayed in a list of items view," as recited in contested limitation L 1,
because the open-ended claim term "comprising" does not preclude other
information from being included in such "inbox information." (Claim 1).5
We additionally conclude the "inbox information" displayed in
claim 1 is non-functional descriptive material (NFDM), because such
information is merely intended for human viewing. 6
4 In the event of further prosecution, we leave it to the Examiner to consider
a rejection under 35 U.S.C. § 112, second paragraph, because of apparent
lack of proper antecedent basis. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
5 See Genentech, Inc. v. Chiron Corp, 112 F.3d 495, 501 (Fed. Cir. 1997)
("'Comprising' is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.").
6 The Manual of Patent Examining Procedure (MPEP) guides that
"[ e ]vidence against a functional relationship" may exist, for example,
"where the claim as a whole is directed towards conveying a message or
meaning to a human reader independent of the supporting product." MPEP
§ 2111.05 (I.)(B.) (9th Revision 07.2015, revised Nov. 2015).
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The PTAB has provided guidance in decisions regarding claims that
differ from the prior art based only on NFDl\!1 \vhich is data. See Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of
the 1nfonnat1on being manipulated does not lend patentability to an
otherwise unpatentable computer-irnp!emented product or process."); Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior aii. "),
aff"d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) ("Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious."), cif!'d, No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule 36).
This panel is bound by the holding in Nehls, 88 USPQ2d at 1889.
Therefore, on this record, and based on a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's underlying
factual findings and ultimate legal conclusion of obviousness (Final
Rej. 3-5; Ans.16-20). In accordance with our claim construction above, we
agree with the Examiner that the cited prior art teaches or suggests the
contested claim limitations. We adopt the Examiner's findings. (Ans. 3-5)
Accordingly, we sustain the Examiner's rejection of representative
claim 1, and the grouped claims, which fall with claim 1. See Grouping of
Claims, supra.
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Rejection ofDependent Claim 8
Claim 8 also recites a conditional temporal limitation: "The method
of claim 1, further comprising, when the gesture meets a threshold,
displaying the inbox information without displaying the first information."
(emphasis added).
Appellants contend Apple iOS5 does not teach or suggest this
negative limitation, arguing, "No mention is made of a threshold or of any
determination of whether the gesture meets a threshold." (Br. 18).
However, we are not persuaded by Appellants' arguments and agree
with the Examiner's finding that Apple's swipe down gesture, which reaches
all the way to the bottom of the display, thus covering the entire display,
teaches, or at least suggests, the contested limitation. (Final Act. 11, citing
Apple iOS 5 Fig. 4.).
Therefore, we sustain the Examiner's rejection of dependent claim 8.
Rejection of Dependent Claim 9
Claim 9 further recites a conditional temporal limitation: "The
method of claim 1, further comprising, when the gesture does not meet a
threshold before the gesture ends, displaying the first information and
discontinuing displaying the inbox information." (emphasis added).
Appellants urge:
No mention is made of a threshold or of any determination of
whether the gesture meets a threshold .... There is no suggestion
in the reference that the gesture may be only partly implemented
to "peek" at the center as alleged by the Examiner. The feature
claimed is simply not shown or described in the cited reference.
(Br. 19).
However, we are not persuaded by Appellants' arguments and agree
with the Examiner's findings, because, in addition to our discussion of
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claim 8 above, Apple's user swipe down gesture provides a peek of the
notification center. When the user aborts the gesture, the home screen is
displayed again, which we find teaches, or at least suggests, the contested
limitation of claim 9. (Final Act. 12, citing Apple iOS 5 Fig. 4).
Therefore, we sustain the Examiner's rejection of dependent claim 9.
Rejection of Independent Claim 14
Regarding the contested limitation of claim 14, "in response to
detecting the gesture, displaying a preview of the inbox information by
progressively shifting the inbox information onto the display, wherein the
shifting occurs in accordance with movement of the gesture," Appellants
contend Fig. 4 (Apple iOS 5) provides:
no suggestion that "shifting" of the inbox information (i.e.
Notification Center) onto the display occurs "in accordance with
movement of the gesture" as required by claim 14. FIG. 4 and
the text, in combination, suggest that the "swipe downward"
movement opens the Notification Center and displays it in full.
This function of simply displaying the tray in response to the
gesture, does not amount to controlling the progressive display
of information on the display using the movement of a gesture to
progressively shift information onto the display, as detailed in
claim 14. Among other differences, Apple iOS 5 does not
disclose that the amount of inbox information to be displayed
(i.e. shifted onto the display) depends on movement of the
gesture. Therefore, Apple iOS 5 does not provide support for the
Examiner's statement that "the home screen is gradually covered
up with the notification center screen" as the gesture travels from
top to bottom.
(Br. 20-21 ).
However, we are not persuaded by Appellants' arguments because
Appellants admit: "[t]he text preceding FIG. 4 instructs that, in order to
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display the Notification Center, a user can 'swipe downward' so that the
Notification Center may 'slide down."' (Br. 20).
We find Apple's sliding-down feature teaches or at least suggests the
contested claim limitation ''progressively shifting the inbox information onto
the display," as recited in claim 14. Therefore, we agree with the
Examiner's finding that Fig 4 (Apple iOS 5) depicts the notification center is
dragged down as the swipe down gesture is performed, and gradually covers
up the screen. (Final Act. 5---6).
Accordingly, on this record, and based on a preponderance of the
evidence, we sustain the Examiner's rejection of representative independent
claim 14, and grouped claims 15 and 16, which fall therewith. See Grouping
of Claims, supra.
Claims 17-21
Appellants urge that claims 17-21 are non-obvious for the same
reasons previously advanced regarding claims 1, 8, 9, and 14. (Br. 21-22).
Because we find Appellants' contentions are unpersuasive regarding
claims 1, 8, 9, and 14, we sustain the Examiner's rejection of claims 17-21
for the same reasons discussed above.
Conclusion
For the aforementioned reasons, on this record, we are not persuaded
the Examiner erred. We find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal.
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DECISION
We affirm the Examiner's decision rejecting claims 1-21 under 3 5
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). ). See 37
C.F.R. § 41.50(±).
AFFIRMED
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