12262357 (P.T.A.B. Jun. 26, 2017)

Ex Parte Reeves et al

Patent Trial and Appeal BoardJun 26, 2017

12262357 (P.T.A.B. Jun. 26, 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. 12/262,357 10/31/2008 Raymond Emilio Reeves 5700/SPRI. 140977 6067 32423 7590 06/28/2017 SPRINT COMMUNICATIONS COMPANY L.P. 6391 SPRINT PARKWAY KSOPHTO101-Z2100 OVERLAND PARK, KS 66251-2100 EXAMINER HICKS, CHARLES V ART UNIT PAPER NUMBER 2622 NOTIFICATION DATE DELIVERY MODE 06/28/2017 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): 6450patdocs @ sprint.com steven.j.funk@sprint.com S printPTO @ shb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND EMILIO REEVES and RYAN ALAN WICK Appeal 2016-006624 Application 12/262,357 Technology Center 2600 Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our March 23, 2017 decision (“Decision”) affirming the Examiner’s rejections of claims 1—19. We deny Appellants’ request. Appeal 2016-006624 Application 12/262,357 Appellants contend we “misapprehended [our] analysis in concluding that Prior and Westerman could be combined and Appellants’ arguments [to the contrary] were unpersuasive.” Request for Rehearing 3. According to Appellants, “[t]he electronic device in Westerman has a keyboard, which conflicts with Prior and teaches away from Appellants’ claimed invention.” Id. Appellants argue that, “[b]y considering only the software of the electronic device in Westerman, the Board [did] not consider the entire teachings of Westerman as a whole.” Id. (emphasis modified). Moreover, Appellants contend Westerman and Prior are not analogous art because they “do not disclose devices that are analogous, especially where one says no keyboard and the other incorporates a keyboard.” Id. We find Appellants’ arguments unpersuasive. Appellants’ arguments assume that considering the cited art as a whole requires determining that Westerman’s and Prior’s devices are physically combinable. It does not. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, one of ordinary skill in the art is not assumed to blindly “adopt every single aspect of [a prior art reference’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Here, as we explained in the Decision, the Examiner determined it would have been obvious to combine one aspect of Westerman—the recited “non-transitory computer-readable storage medium”—with Prior’s device: 2 Appeal 2016-006624 Application 12/262,357 The Examiner found Westerman is analogous art to Prior and teaches or suggests the recited “non-transitory computer- readable storage medium.” The Examiner concluded it would have been obvious to one of ordinary skill in the art to combine this aspect of Westerman’s teachings with Prior’s apparatus to arrive at the claimed invention. The Examiner did not conclude it would have been obvious to combine Westerman’s keyboard with Prior’s apparatus, and contrary to Appellants’ arguments, we see no reason one of [ordinary] skill in the art would have been forced to do so. Decision 3^4 (first emphasis added and citations omitted). Therefore, even assuming Westerman’s keyboard “conflicts” with Prior’s teachings and the claims as argued by Appellants, Westerman’s keyboard plays no part in the Examiner’s rejection. Because Appellants have not provided any persuasive evidence the art criticizes, discredits or otherwise discourages the Examiner’s combination of Westerman’s non-transitory computer-readable storage medium and Prior’s apparatus, viewing the art as a whole, we see no error in the Examiner’s rejection. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that a prior art reference did not teach away from the claimed invention because the reference “[did] not criticize, discredit, or otherwise discourage the solution claimed”). As for Appellants’ argument that Westerman’s and Prior’s inventions are not analogous art, Appellants previously stated that “Appellants do not deny Prior and Westerman are analogous art[].” Appeal Brief 6. Appellants cannot now argue to the contrary. Cf. 37 C.F.R. § 41.52 (“Arguments not raised, and Evidence not previously relied upon, ... are not permitted in the request for rehearing . . . .”). Regardless, we see no error in the Examiner’s finding that Prior and Westerman are analogous art. 3 Appeal 2016-006624 Application 12/262,357 Appellants also argue we “misapprehended [our] analysis in concluding that” Prior’s display 54 is “an entire front surface of the device” as recited in claim 1. Request for Rehearing 4. In Appellants’ view, display 54 “is not a ‘whole’ front plane” but instead “a portion of [a] plane and only a portion of [a] whole front plane.” Id. To conclude otherwise, Appellants contend we improperly imported certain limitations from the written description into the claims and ignored parts of the written description and figures “that clearly show the entire surface or entire front surface.” Id. at 5 (citing Specification || 11—13; Figs. 4A—6C). We find these arguments unpersuasive. As an initial matter, as we explained in the Decision, [e]ven if Appellants were correct that ‘an entire front surface of the device’ requires that Prior’s touch-sensitive display make up the entire front face of device 50, the Examiner found that touch- sensitive surfaces that comprise the entire front surface of a device were well known in the art. See, e.g., Final Act. 18 (citing Kerr et al. (US2006/0197750 Al; Sept. 7, 2006)). It would have been obvious to combine such a surface with the teachings of Prior and Westerman to provide a larger touch-sensitive surface and thereby facilitate interacting with the device through touch. Decision 6 n.3. Appellants’ rehearing request does not address this portion of the Decision. In any event, the intrinsic evidence indicates the recited “an entire front surface of the device” is one of a number of “front surfaces” on the device. Claim 1 recites a “method of configuring a front surface of a device . . ., the method comprising” a number of steps. Appeal Brief 13 (emphasis added). The Federal Circuit has made clear the “indefinite article ‘a’ . . . in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Baldwin Graphic Sys., Inc. 4 Appeal 2016-006624 Application 12/262,357 v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJCorp. v. Kinetic Concepts, Inc., 223 F.3d 1351 (Fed. Cir. 2000)). Therefore, the broadest reasonable interpretation of claim 1 encompasses a device that has a plurality of front surfaces, where the recited “an entire front surface of the device” refers to one of the plurality of front surfaces. This interpretation is consistent with the written description and the figures. The written description describes a device that includes a “surface 305 on the device” and “a display screen 375.” See Specification 142; Figs. 3B, 3C. As shown in Figures 3B and 3C and described in paragraph 42, surface 305 does not make up the whole front of the device; rather, surface 305 and display screen 375 collectively comprise the front of the device. See id. Although Appellants contend this ignores Figures 4A—6C and paragraphs 11—13 of the written description, as we explained in the Decision [t]o the extent Appellants assert Figures 1A—3A and 4A—6C show separate embodiments in which the front part of the device includes only a surface, Appellants have not persuaded us this is the case. The written description generally describes the surfaces shown in these figures as a “surface located on the device” or “a surface of a device[,]” [see, e.g., Spec. H 26, 31] but these figures show only the surface, not the rest of the device.. . . Only Figures 3B and 3C appear to show the device described in the written description. Decision 5 n.2. Figures 3B and 3C make clear that the disclosed “surface” is only part of the front surface of the device. See Spec. Figs. 3B, 3C. In contrast, paragraphs 11—13 simply disclose that Figures 4A—6C “illustrate a surface of a device.” See Specification || 11—13 (emphasis added). Paragraphs 11—13 do not establish that these figures illustrate the entire front surface of a device. Moreover, the written description ties each of the surfaces described in Figures 4A—6C to Figures 3B and 3C, which as noted 5 Appeal 2016-006624 Application 12/262,357 above, are the only figures to depict the disclosed device. See, e.g., id. 147 (“The surface 405 of the device, discussed as surface 105 in FIG. 1, surface 205 in FIG. 2, and surface 305 in FIG. 3A, FIG. 3B, and FIG. 3C, includes a touch screen surface on the device to receive the gesture 425.” (emphasis added)), Tflf 55, 62 (describing surfaces 505, 605 in a similar manner). This also indicates the depicted surfaces form part of the front surface of a device. DECISION We deny Appellants’ request for rehearing. 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). REHEARING DENIED 6