Ex Parte Knowles et al

Patent Trial and Appeal Board

Mar 7, 2013

10930725 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL KNOWLES, JULIAN PAAS,
FRANK TYNESKI and JASON T. GRIFFIN
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Appeal 2010-001080
Application 10/930,725
Technology Center 2600
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Before KRISTEN L. DROESCH, JUSTIN BUSCH and LYNNE E.
PETTIGREW, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2010-001080
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STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 4-15 and 18-21.1 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The Appellants’ disclosed invention is related to a system and method
for presenting and browsing information on a handheld electronic device.
Spec. 1; Abs.
Independent claim 1 is illustrative and is reproduced below (disputed
limitations in italics):
1. A method of managing data on a handheld electronic
device, the handheld electronic device including a wireless
communication system, a processor apparatus, an input
apparatus, and an output apparatus, the wireless communication
system being adapted to enable wireless communication
between the handheld electronic device and a server, the
processor apparatus including a processor and a memory, the
input apparatus having a plurality of input members and being
adapted to provide input to the processor apparatus, the output
apparatus being adapted to receive output signals from the
processor apparatus and to provide output representative of the
output signals, the handheld electronic device being identifiable
to the server by a unique identifier, the method comprising:
periodically performing an updating operation on a first
set of data available to the server;
responsive to each updating operation of at least a portion
of said updating operations on the first set of data, employing
the unique identifier to push toward the handheld electronic
device a signal representative at least in part of at least a portion
of the first set of data in substantially its condition after the
performance of the updating operation;

1 Claims 2, 3, 16 and 17 have been cancelled.
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receiving at least some of the signals on the handheld
electronic device;
responsive to each signal of at least a portion of the
signals of said at least some of the signals, storing on the
handheld electronic device data reflective of at least a portion of
the signal to provide on the handheld electronic device a second
set of data that is at least partially in a substantially updated
condition and that is derived at least in part from at least a
portion of the signal, the second set of data being based at least
in part upon at least a portion of a profile associated with the
handheld electronic device;
executing on the processor apparatus a foreground
routine that is adapted to interact with at least one of the input
apparatus and the output apparatus;
executing on the processor apparatus a background
routine that is adapted to perform said receiving and said
storing, the background routine operating generally free of
interaction with the input apparatus and generally free of
interaction with the output apparatus;
detecting an actuation of a predetermined input member;
and
responsive to said detecting an actuation of a
predetermined input member, outputting at least a portion of
the second set of data in substantially its condition at the time
of actuation of the predetermined input member.

Rejection
Claims 1, 4-15 and 18-21 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lazaridis (U.S. 2003/0026231 A1).
ISSUE
Did the Examiner err in finding that Lazaridis describes “responsive
to said detecting an actuation of a predetermined input member, outputting
at least a portion of the second set of data in substantially its condition at the
time of actuation of the predetermined input member” as recited in claim 1
and similarly recited in independent claims 14 and 20?
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ANALYSIS
We have reviewed the Examiner’s rejection in light of the Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”). We agree with the Appellants’ conclusions and highlight
and address specific findings and arguments for emphasis as follows.
The Examiner cites to paragraph 61 of Lazaridis as describing the
disputed limitations of independent claims 1, 14 and 20. Ans. 5, 7-8, 10. The
Examiner further explains:
[p]aragraph 61 teaches a menu that is presented to the user at
any given time for accessing the updated information that is
pushed by the wireless communication system. Figure 9 of
Lazaridis shows the menu with several tabs (News, Office,
Today). Each tab provides links (Leafs win Cup) to the updated
information. The user uses the menu to select the tabs and links
to the updated information that he or she wishes to see.
It is the examiner’s position that the user selection taught
in paragraph 61 reads on “an actuation of a predetermined
input member”. Examiner cites paragraph 44 as support for this
interpretation. Paragraph 44 teaches that the user uses a
keyboard to make selections on the handheld electronic device.
Lazaridis does not teach any other way to make selections on
the handheld electronic device. Therefor (sic), it is the
examiner’s belief that the user selection taught in paragraph 61
does in fact read on “an actuation of a predetermined input
member”.

Ans. 13 (emphasis in original), see also Ans. 14, 15.
We agree with the Appellants’ argument that Lazaridis does not
disclose the performance of an operation responsive to an actuation of a
predetermined input member, nor is such responsive relationship inherent in
the cited reference. Br. 6, 8. We further agree that the Lazaridis reference
does not establish that a predetermined input member and the responsive
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operation are necessarily present in the Lazaridis reference. Br. 7, 9. We
similarly agree that Lazaridis does not disclose, either expressly or
inherently, outputting a number of shortcuts adapted to provide a shortcut
function to a corresponding portion of the second data responsive to an
actuation of a predetermined input member, as recited in claim 14. Br. 8.
While it is possible, and probable, that Lazaridis’ mobile device is utilized in
the manner proposed by the Examiner (Ans. 13-15), possibilities and
probabilities are not sufficient to establish inherency. See In re Robertson,
169 F. 3d 743, 745 (Fed. Cir. 1999).
In the Event of Further Prosecution
We have decided the appeal before us. In the event of further
prosecution, we leave it to the Examiner to determine whether it would have
been obvious to one with ordinary skill in the art at the time the invention
was made to modify the teachings of Lazaridis such that when a user
actuates a predetermined input member (i.e., keyboard key, toolbar, menu
tab, graphical link, etc.), Lazaridis’ mobile device would detect the actuation
of the predetermined input member, and in response thereto would output at
least a portion of the second set of data in substantially its condition at the
time of actuation of the predetermined input member (i.e., display the
pushed information for the subscribed news channel).
DECISION
We REVERSE the rejection of claims 1, 4-15 and 18-21 under
35 U.S.C. § 102(b).

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REVERSED

ELD