Ex Parte Lyons

Patent Trial and Appeal Board

Apr 3, 2017

13591679 (P.T.A.B. Apr. 3, 2017)

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.
13/591,679 08/22/2012 Kenton M. Lyons 042933/419956 2995
10949 7590 04/05/2017
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
AHN, SEJOON
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
04/05/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENTON M. LYONS
Appeal 2016-005046
Application 13/591,679
Technology Center 2600
Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL1
1 Throughout the Appeal Brief, Appellant argues that the Examiner “asserts”
or “allege[s].” E.g., App. Br. 7, 11. However, examiners do not “assert” or
“allege.” Unlike an examiner, an applicant’s attorney asserts, contends, or
argues, all of which are actions consistent with the attorney’s role as an
advocate. An examiner, however, is not an advocate. Rather, an examiner
performs a quasi-judicial function and has no vested interest in the outcome
of an examination. E.g., Western Elec. Co. v. Piezo Tech., Inc., 860 F.2d
428, 431 (Fed. Cir. 1988). Thus, unlike an applicant’s attorney, an
examiner’s function is not to advocate via “assertions” and the like; rather an
examiner makes findings of fact and based on those facts comes to a
decision on legal issues such as obviousness. An appellant may disagree
with and rebut those findings or conclusions. However, that disagreement
does not convert an examiner’s findings or conclusions into assertions or
allegations.
Appeal 2016-005046
Application 13/591,679
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1—26. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary claims 1 and 7 under appeal read as follows (emphasis and
formatting added):
1. An apparatus comprising at least one processor and at least
one memory including computer program code, the at least one
memory and the computer program code configured to, with the
processor, cause the apparatus to at least:
provide for a determination of an orientation of a segment of a
multi-segment wearable accessory, wherein the multi-segment
wearable accessory comprises a plurality of links connected to one
another to define a closed shape and the segment is one of a plurality
of segments supported by the links; and
provide for an association of the segment with a peripheral
device based at least in part on a comparison of the orientation of the
segment with an orientation of the peripheral device, wherein the
association enables an event occurring at one of the segment or the
peripheral device to cause a corresponding event at the other of the
segment or the peripheral device.
7. The apparatus of Claim 1, wherein the at least one memory
and the computer program code are further configured to, with the
processor, cause the apparatus to provide for the association of the
segment with the peripheral device by configuring a display of the
segment to present content relating to the peripheral device.
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Appeal 2016-005046
Application 13/591,679
Rejections
1. The Examiner rejected claims2 1—3, 6—10, 12—16, and 19-26 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Pasquero
et al. (US 2013/0084805 Al; publ. Apr. 4, 2013), Winkler et al.
(US 2013/0222270 Al; publ. Aug. 29, 2013), and Radley-Smith
(US 2003/0030595 Al; publ. Feb. 13, 2003).3
2. The Examiner rejected claims 4, 5, 11, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Pasquero, Winkler,
Radley-Smith, and Jung et al. (US 2007/0003061 Al; publ. Jan. 4, 2007).4
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
On page 3 of the Office Action, the Examiner [finds5] that
Pasquero specifically teaches “the association enables an event
occurring at one of the segment or the peripheral device to cause
a corresponding event at the other of the segment or the
2 Although the Final Office Action heading for this rejection does not list
claim 9 (Final Act. 2), claim 9 is treated in the actual rejection on appeal {id.
at 7).
3 Separate patentability is argued for claim 1 (App. Br. 6—12; Reply Br. 1—4)
and claim 7 (App. Br. 13; Reply Br. 5). Separate patentability is not argued
for claims 2, 3, 6, 8—10, 12—16, and 19—26. Claims 2, 3, 6, 8—10, 12, 14—16,
19, and 21—26 are grouped with claim 1. Claims 13 and 20 are grouped with
claim 7. Except for our ultimate decision, these claims are not discussed
further herein.
4 Separate patentability is not argued for claims 4, 5, 11, 17, and 18. Thus,
the rejections of these claims turn on our decision as to claim 1. Except for
our ultimate decision, these claims are not discussed further herein.
5 We substitute “finds” for “asserts.”
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Application 13/591,679
peripheral device.” The Examiner cites paragraph [0037] and
Figs. 4A-4B of Pasquero as teaching this recitation; however,
these cited portions of Pasquero describe how the orientation of
the head-mounted accessory device 200 is used to infer where
the user (who is wearing the head-mounted accessory device
200) is looking.
App. Br. 7 (emphasis added).
Thus, in Pasquero, there is no association formed between
the mobile device 100 and the head-mounted accessory device
200 that synchronizes or controls their behaviors in any wav.
The user in Pasquero may be looking at the mobile device 100
one moment, in which case the mobile device may be caused to
deliver confidential or private content, but then the next moment
the user may look away, in which case the mobile device may go
blank. Pasquero, para. [0037]. In other words, the functionality
of the of the mobile device 100 is in no way linked to the
functionality of the head-mounted accessory device 200.
Rather, the mobile device 100 in Pasquero merely receives an
input from the head-mounted accessory device 200 at the time it
is received, and no association is formed.
App. Br. 8 (emphasis added).
Pasquero includes absolutely no disclosure that even hints at
creating association between the mobile device 100 and the
head-mounted accessory device 200.
Reply Br. 2 (emphasis added).
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
From the opposite perspective [to that of the Examiner],
Pasquero may be thought of as describing that the head-mounted
accessory device 200 and the mobile device 100 are always
communicating with each other and, in a sense, always
associated in that the head-mounted accessory device is
continuously informing the mobile device as to where (in what
direction) the user is looking.
App. Br. 8.
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If, as in the second scenario described above, the head-mounted
accessory device is always associated with the mobile device as
always providing input regarding the user’s gaze, then any such
association is not based at least in part on a comparison of the
orientation of the head-mounted accessory device with an
orientation of the mobile device—the “association” exists
regardless of the orientation as the head-mounted accessory
provides input to the mobile device when the user’s gaze is in the
direction of the mobile terminal and when the user’s gaze is away
from the mobile terminal. Such an “association” is not
triggered by the respective orientations.
App. Br. 8—9 (emphasis added).
3. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he determination of the relative orientations does not cause
one device to replicate or cause an event that corresponds to an
event that is occurring at the other device. This is because, simply
put, there are no events occurring at the head-mounted accessory
device 200 of Pasquero.. . . Nowhere does Pasquero describe the
head-mounted accessory device as causing an event to occur at
the mobile device that corresponds to an event occurring at the
head-mounted accessory device.
App. Br. 9.
4. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he Examiner acknowledges that Pasquero has nothing to do
with a multi-segment wearable accessory that “comprises a
plurality of links connected to one another to define a closed
shape and the segment is one of a plurality of segments supported
by the links,” as recited in each independent claim. To address
this deficiency of Pasquero, the Examiner relies on Winkler and
Radley-Smith, and in so doing, is improperly dissecting each
independent claim into separate elements and applying the cited
art to the respective elements in an effort to force the references
to read on the claims, which is impermissible.
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App. Br. 10-11.
The Examiner cannot purport to show obviousness of the
claimed invention when, in his rejection, he must remove certain
claim terms to apply each reference to the (modified) claim
elements. For example, none of the references teaches or
suggests providing for a determination of an orientation of a
segment of a multi-segment wearable accessory and/or providing
for an association of the segment of the multi-segment wearable
accessory with a peripheral device. The Examiner recognizes this
and must instead assert that Pasquero provides for a
determination of an orientation of a segment of a wearable
accessory (not a multi-segment wearable accessory, as claimed)
relative to a peripheral device. OA, page 3. By modifying the
claim language to refer to a wearable accessory, rather than the
claimed multi-segment wearable accessory, however,
Appellant’s use of the claim term “a segment of the multi­
segment wearable accessory” is stripped of all meaning, which
is improper. In other words, there are no “segments” in Pasquero,
as Pasquero does not teach a multi-segment wearable accessory.
App. Br. 11.
[T]he Examiner acknowledges that for an assertion of
obviousness, there must be “some teaching, suggestion, or
motivation to do so found either in the references themselves or
in the knowledge generally available to one of ordinary skill in
the art.” Examiner’s Answer, page 13.
Reply Br. 3 (emphasis added).
5. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Examiner admits . . . that Pasquero does not teach providing
for a determination of an orientation of a segment of a multi­
segment wearable accessory (OA, page 4, emphasis added). In
fact, as admitted by the Examiner, Pasquero does not teach a
multi-segment wearable accessory at all. It is difficult to
understand, then, why it would be “obvious” to take a reference
that has no teaching of a multi-segment wearable accessory and
modify it to include a determination of an orientation of a
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segment of a multi-segment wearable accessory to provide an
“improved” multi-display environment, as to do so is to address
a problem that doesn’t even exist, which is the opposite of
“obvious.”
App. Br. 12.
In addition, it is unclear . . . how the determination of
whether two displays on the same device are perpendicular to
each other (as allegedly taught by Winkler) would be applied to
the mobile device or head-mounted accessory device of
Pasquero, again, because Pasquero does not teach or contemplate
a multi-segment device. There is simply no basis to add more
screens to the mobile device of Pasquero in any of the cited
references, and any motivation to do so comes from Appellant’s
own disclosure, which constitutes improper hindsight
reconstruction.
Radley-Smith, which teaches a bracelet with hinged
segments having displays, does not cure the deficiencies of
Pasquero or Winkler described above. Accordingly, there is no
reason to modify Pasquero using Winkler or Radley-Smith.
App. Br. 12.
6. Appellant contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because:
Pasquero fails to teach or suggest that a display of the head-
mounted accessory device (which the Examiner is equating to the
segment of the “wearable accessory”) is presenting content
relating to the mobile device (which the Examiner is equating to
the peripheral device). Notably, the head-mounted accessory
device (which the Examiner is equating to the segment of the
“wearable accessory”) is not described as having a display at all
and, thus, is not capable of being configured to present content
on the display relating to anything, let alone content relating to
the peripheral device.
App. Br. 13 (emphasis omitted).
[T]he fact that Pasquero’s mobile device may have a display for
displaying private or confidential content has no bearing
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whatsoever on the recitations of Claims 7, 13, and 20, which
recite configuring a display of the segment to present content
relating to the peripheral device.
In other words, the Examiner cannot, for the sake of
convenience in formulating his rejection, now suddenly say that
Pasquero’s mobile device and its display read on the display of
the “segment” that is claimed, when for the rejection of other
claims the Examiner asserts that it is Pasquero’s head-mounted
accessory device that reads on the segment of the “wearable
accessory.”
Reply Br. 5 (emphasis omitted).
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious for the
reasons argued by Appellant?
Did the Examiner err in rejecting claim 7 as being obvious for the
reasons argued by Appellant?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s contentions.
As to Appellant’s above contentions 1 and 3, we disagree. First,
contrary to Appellant’s association argument, the terms “synchronize” and
“behavior” are not required by Appellant’s claim 1. Second, as to a
“control” association between Pasquero’s head-mounted accessory device
200 and mobile device 100, we agree with the Examiner that such is
disclosed. Further, we agree with the Examiner that an event at head-
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mounted accessory device causes a corresponding event at the mobile
device.
Appellant is correct Pasquero teaches that “[i]f the orientations match,
then the mobile device may infer whether or not the user wearing the head-
mounted accessory device 200 is looking at the display of the mobile device
100.” 137 (emphasis omitted). However, Appellant overlooks the
particular steps of how Pasquero accomplishes this inference. Pasquero’s
sequence of steps includes
a) “determining the orientation of the user wearing the head-
mounted accessory device based on the first orientation signal
transmitted from the head-mounted accessory device to the
mobile device” (146 (emphasis added));
b) “determining an orientation of the mobile device by obtaining
a second orientation signal from a second digital compass in the
mobile device” (149); and
c) “selectively displaying content on the mobile device only
when the orientation of the user matches within a predetermined
tolerance the orientation of the mobile device” (| 49 (emphasis
added)).
Pasquero further states
[T]he mobile may control device functions based on an
inference that the user is likely looking at the mobile device (or
conversely based on an inference that the user is not likely
looking at the mobile device)
137 (emphasis added); and
[T]the mobile device only reactivates the display screen when
the orientation of the user’s head (as determined by the
orientation signal received from the digital compass in the head-
mounted accessory device) again matches that of the mobile
device
149 (emphasis added); and
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The mobile device 100 can display any number of
orientation-based services on the display screen in response to
receipt of an orientation signal from the digital compass in the
head-mounted accessory device
1 55 (emphasis added). Additionally, Pasquero states
In a variant, the mobile device may determine a
probability that the user is looking at the display of the mobile
device. Based on this probability, the device may variably
control the display (or delivery) of content. Controlling the
delivery of content, which may for example include displaying
content or preventing content from being displayed or displaying
a portion of content, may be called selectively displaying
content.
138 (emphasis added). Contrary to Appellant’s arguments, Pasquero is
explicit that the “transmitting” of (“an event”) a matching orientation signal
controls (“causes”) display of content (“a corresponding event”). In
Pasquero, determining the orientations match must occur (“association
formed”) before the transmitting (“event”) can trigger displaying
(“corresponding event”).
As to Appellant’s above contention 2, we disagree. Appellant
speculates that Pasquero may be thought as describing another invention.
App. Br. 8. Even if we were to agree that the cited reference also renders
obvious an invention other than the invention of Appellant’s claim 1, this is
simply not a relevant argument as to whether the Examiner has provided a
proper final conclusion that the combination of references renders obvious
the claimed invention. The references are not precluded from rendering
obvious any number of distinct inventions.
As to Appellant’s above contention 4, we disagree. First, Appellant’s
argument attempts to reduce the artisan to being without any creativity and
incapable of applying the art unless it is identical to the claimed invention as
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a whole. We are mindful that the skilled artisan would “be able to fit the
teachings of multiple patents together like pieces of a puzzle” because the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007).
The essence of Appellant’s argument is that the references are not
analogous art. Prior art is analogous if either (A) “the art is from the same
field of endeavor, regardless of the problem addressed” or (B) regardless of
the field of endeavor, the reference is “reasonably pertinent to the particular
problem with which the inventor is involved.” Innovention Toys, LLC v.
MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (internal citation
and quotation omitted). “A reference is reasonably pertinent if it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” Id.
(internal citation and quotation omitted). “If a reference disclosure has the
same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” Id. (internal citation and quotation omitted). However, “[t]he
pertinence of the reference as a source of solution to the inventor’s problem
must be recognizable with the foresight of a person of ordinary skill, not
with the hindsight of the inventor’s successful achievement.” Sci. Plastic
Prod., Inc. v. BiotageAB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
In Innovention, the patentee argued the references “describ[ed]
computer-based, chess-like strategy games” and were “non-analogous art
because the [asserted] patent’s inventors were concerned with making a
non-virtual, three-dimensional, laser-based board game, a project that
involves mechanical engineering and optics, not computer programming.”
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Id. at 637 F.3d at 1316, 1321. The Federal Circuit found “an electronic,
laser-based strategy game, even if not in the same field of endeavor, would
nonetheless have been reasonably pertinent to the problem facing an
inventor of a new, physical, laser-based strategy game” because both “relate
to the same goal: designing a winnable yet entertaining strategy game.” Id.
at 1322.
Given the record before us, we are not persuaded by Appellant’s
arguments. Appellant too narrowly interprets the analogous art. Even if we
were to accept that the field of endeavor of the invention as a multi-segment
(each with a display (claim 7)) wearable accessory that comprises a plurality
of links, we conclude the applied prior art would, nonetheless, have been
reasonably pertinent to the problem facing an inventor of such a new display
device because the invention and the applied prior art all relate to the same
goal: controlling the display of information content.
Second as to contention 4, Appellant has mistaken (App. Br. 11 (first
full para.)) the Examiner’s description of Pasquero (Final Act. 3) using the
terms of the claim language with a modification of the claim. Contrary to
Appellant’s argument, we do not find before us any modification of the
claim by the Examiner. The Examiner is not precluded from aiding the
reader by describing the prior art in terms of the claim language.
Additionally, Appellant’s argument appears to imply that the term
“segment” cannot be used to describe any standalone display (such as
Pasquero’s). We disagree. Appellant cites to no definition of “segment”
that precludes it existing as a standalone single-segment.
Third as to contention 4, Appellant states that “the Examiner
acknowledges that for an assertion of obviousness, there must be ‘some
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teaching, suggestion, or motivation to do so.’” Reply Br. 3 (emphasis
added). Appellant is mistaken. Rather, the Examiner only states that
“obviousness may be established.” Ans. 13 (emphasis added). Further,
Appellant’s argument that there must be a teaching, suggestion, or
motivation to combine the references overlooks the Court’s decision in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellant does not take into
account the Court specifically repudiated that such a “teaching, suggestion,
or motivation” is required to show obviousness. KSR, 550 U.S. at 415 (“We
begin by rejecting the rigid approach of the Court of Appeals”). Rather, the
requirement is only that the Examiner show “the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.” KSR,
550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418
(“[T]he analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
As to Appellant’s above contention 5, we disagree. First, we agree
with Appellant that Pasquero’s mobile device is neither multi-segment nor
wearable. However, the Examiner does not rely on Pasquero to teach multi­
segment, and the Examiner does not rely on Pasquero solely to teach
wearable. Rather, the Examiner provides redundant teachings as to a
wearable accessory (displays). The Examiner points to Winkler (Final
Act. 4) and Radley-Smith (Final Act. 5) as teaching this limitation, and
Appellant acknowledges Winkler’s teaching (App. Br. 11).
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Second as to contention 5, Appellant argues the perpendicular device
teaching of Winkler. We find no relevance to this teaching as the Examiner
did not rely on the perpendicular teaching as a basis for the rejection.
Third as to contention 5, Appellant argues there are no reasons to
modify Pasquero using Winkler or Radley-Smith. We disagree. We
conclude it was ordinary creativity to multiply the number of displays (such
as the display in Pasquero) and use of Winkler or Radley-Smith was simple
substitution. See KSR, 550 U.S. at 416 (“when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result”).
As discussed above for contention 6, Appellant’s premise is that the
Examiner is equating a display of the head-mounted accessory device to the
segment of the wearable accessory. We disagree because the rejection of
claim 1 (underpinning the rejection of claim 7) equates the mobile device to
the segment (“the mobile device may deliver or display private or
confidential content”). Final Act. 3. Contrary to Appellant’s argument
(Reply Br. 5), the Examiner does not “now suddenly” change the rejection
of claim 7 to rely on the mobile device, when the rejection of claim 1 relied
on the head-mounted accessory device. Rather, the rejection of claim 1
relies on the mobile device.
CONCLUSION
(1) The Examiner has not erred in rejecting claims 1—26 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1—26 are not patentable.
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DECISION
The Examiner’s rejections of claims 1—26 are 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)(l)(iv).
AFFIRMED
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