Ex Parte Reponen et al

Patent Trial and Appeal Board

Oct 27, 2016

13071270 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/071,270 03/24/2011
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
10/31/2016
FIRST NAMED INVENTOR
Erika Piia Paulina Reponen
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.
P5013US01 3675
EXAMINER
GORTAYO, DANGELINO N
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIKA PIIA PAULINA REPONEN and
JAAKKO OLLI TAA VETTI KERANEN
Appeal2015-008206
Application 13/071,270
Technology Center 2100
Before JOHN A. EV ANS, SCOTT B. HOWARD, and SCOTT E. BAIN,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Nokia Corporation as the real party in interest. App.
Br. 1.
Appeal2015-008206
Application 13/071,270
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for providing an active search user interface element "for
presenting a global view of desired information at specific locations that
correspond to the desired information with respect to a start position."
Abstract.
Claim 1, reproduced below with the disputed claim limitation
emphasized, is illustrative of the claimed subject matter:
1. A method comprising facilitating a processing of and/or
processing ( 1) data and/ or (2) information, the ( 1) data and/ or (2)
information based, at least in part, on the following:
one or more search parameters at an element of a user
interface, the element presented at a position within the user
interface;
a processing of the one or more search parameters to
determine one or more search results;
at least one determination of one or more other positions
within the user interface based,
at least in part, on the one or more search results; and
a presentation of the element at at least one of the one or
more other positions,
wherein the user interface includes a transparency effect,
and
wherein when the user interface is pointed towards a
surface of the Earth, the presentation with the transparency
effect of the element at the at least one of the one or more other
positions is a view through the Earth to an opposite surface of
the Earth.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Nasiri US 7,907,838 B2
2
Mar. 15, 2011
Appeal2015-008206
Application 13/071,270
Le Beau
Petrou
US 2011/0098917 Al Apr. 28, 2011
US 2011/0131235 Al June 2, 2011
REJECTIONS
Claims 1--4, 8-14, and 18-20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over LeBeau in view ofNasiri. Final Act. 3-
9.
Claims 5-7 and 15-17 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over LeBeau in view ofNasiri and Petrou.
Final Act. 9-11.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding claims 1-20.
1A:\.ppellants argue the Examiner erred in finding }J asari teaches
"wherein when the user interface is pointed towards a surface of the Earth,
the presentation with the transparency effect of the element at the at least
one of the one or more other positions is a view through the Earth to an
opposite surface of the Earth," as recited in claims 1 and 11. App. Br. 5-9;
Reply Br. 2-6. More specifically, Appellants argue Nasiri merely "describes
that the displayed view for the map can be moved in accordance with motion
of the device." App. Br. 6-7. Appellants further argue that there is nothing
improper with using functional language in a claim and that functional
language must be considered, just like any other claim limitation. Reply Br.
5.
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Application 13/071,270
The Examiner concludes the disputed wherein limitation of claims 1
and 11 "is directed towards an intended result, the intended result being a
view through the Earth to an opposite surface of the Earth when the user
interface is pointed towards a surface of the Earth." Ans. 3 (emphasis
added). The Examiner further concludes "there are no limits recited in the
claim on how the user interface would display a view to an opposite surface
of the Earth, or how it would function to display a view to an opposite
surface of the Earth." Ans. 4--5.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language 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).
With regard to claim 1, the disputed wherein limitation is a
conditional limitation. That is, claim 1 only recites an intended use -
displaying a specific transparency effect - when the user interface is
pointed towards the surface of the earth. See App. Br. 11 (Claims App'x).
On the other hand, the claim does not require any specific transparency
effect when the user interface is not pointed towards the surface of the earth.
Id. We conclude that the broadest reasonable construction of claim 1 covers
two alternative methods, one method when the user interface is pointed
towards the surface of the earth and another when it is not. See Ex parte
Schulhauser, Appeal 2013-007847, slip op. 6-10 (PTAB April 28, 2016)
(precedential) (discussing construction of conditional limitations in method
claims). In light of the claim's conditional language, the prior art need only
teach one of the two alternatives, not both. See id. Appellants do not argue
that the prior art does not teach or suggest all of the steps of the method
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when the user interface is not pointed towards the surface of the earth.
Therefore, we are not persuaded by Appellants' arguments that the Examiner
erred. Id. (holding the claimed subject matter to be obvious when only one
of two conditional methods is taught by the prior art).
Accordingly, we sustain the Examiner's rejection of independent
claim 1, along with dependent claims 2--4 and 8-10, which are not
separately argued. We also sustain the Examiner's rejection of claims 5-7,
which are not argued separately and which Appellants agree stands and falls
with the patentability of claim 1. See App. Br. 4.2
With regard to claim 11 - which is directed to an apparatus, not a
method-we agree with and adopt the Examiner's conclusion that the
disputed wherein clause is directed to an intended use of the claimed
invention and does not limit the structure recited in the claim. See Ans. 3-5.
"An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see also In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function). Although "[ s ]uch statements often ... appear in the
claim's preamble ... ," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
2 Even if the claim did not have conditional language, we would still sustain
the Examiner's rejection of claims 1-10 for the same reasons discussed
below regarding claim 11.
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Application 13/071,270
This reasoning is applicable to the disputed wherein limitation recited
above, which, as a statement of intended use, does not further limit the
structure of the claimed apparatus. Our reviewing court further guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int'!, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
We have considered, but are not persuaded by, Appellants' citation to
the Manual of Patent Examining Procedure on the propriety of functional
claims. See Reply Br. 5. The Examiner has not rejected the claims for
claiming an intended use; instead, consistent with the Federal Circuit
decisions discussed above, the Examiner has merely concluded that, under
the broadest reasonable construction of the claim, the intended use of the
apparatus does not limit the scope of the claim.
Moreover, to the extent the Manual of Patent Examining Procedure is
relevant, the Examiner's rejection is consistent with the Manual of Patent
Examining Procedure's guidance regarding wherein limitation3:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or by
claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) "adapted to" or "adapted for" clauses;
(B) "wherein" clauses; and
(C) "whereby" clauses.
3 MPEP § 2111.04 is titled "'Adapted to,' 'Adapted for,' 'Wherein,' and
'Whereby' Clauses."
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The determination of whether each of these clauses is a limitation
in a claim depends on the specific facts of the case. See,
e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431
(Fed. Cir. 2002) (finding that a "wherein" clause limited a
process claim where the clause gave "meaning and purpose to
the manipulative steps"). In In re Giannelli, 739 F.3d 1375,
1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014), the court found
that an "adapted to" clause limited a machine claim where "the
written description makes clear that 'adapted to,' as used in the
[patent] application, has a narrower meaning, viz., that the
claimed machine is designed or constructed to be used as a
rowing machine whereby a pulling force is exerted on the
handles." In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74
USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a
"'whereby' clause states a condition that is material to
patentability, it cannot be ignored in order to change the
substance of the invention." Id. However, the court noted that a
"'whereby clause in a method claim is not given weight when it
simply expresses the intended result of a process step positively
recited."' Id. (quoting Minton v. Nat 'l Ass 'n of Securities
Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620
(Fed. Cir. 2003)).
MPEP § 2111.04. Appellants do not address this relevant section.
In this case, we conclude that the wherein clause is not necessary to
give meaning and purpose to the structural limitations of the claims and
merely describes an intended use. For example, there is no evidence on the
record before us that shows the direction that the user interface is pointed
has any relationship or bearing on the structure of the apparatus.
Accordingly, we sustain the Examiner's rejection of claim 11, along
with the rejections of dependent claims 12-14 and 18-20, which are not
separately argued. We also sustain the Examiner's rejection of claims 15-
17, which are not argued separately. See App. Br. 4.
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DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-2 0.
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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