Ex Parte Toney et al

Patent Trial and Appeal Board

Nov 30, 2017

13104241 (P.T.A.B. Nov. 30, 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.
13/104,241 05/10/2011 Aaron Toney 042933/404300 1835
10949 7590
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
DUCKWORTH, JIANMEI F
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 AARON TONEY, VIDYUT SAMANTA, and
SEAN WHITE
Appeal 2017-006574
Application 13/104,2411
Technology Center 2100
Before MARC S. HOFF, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—5, 7, 8, 10-14, 16, and 18—22, which
are all claims pending in the application. Appellants have canceled claims 6,
9, 15, and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Nokia Technologies
Oy. App. Br. 2.
Appeal 2017-006574
Application 13/104,241
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate
generally to providing display regions for sharing information between
multiple users. In particular, embodiments of the present invention relate to
an apparatus and method for providing collaborative public display regions
and/or designated private display regions for distributively managing content
between multiple users." Spec. 11.
Exemplary Claims
Claims 1 and 10, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
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:
receive information regarding a detected device;
[LI] provide for projection of a first collaborative public
display region by a user device, wherein the projection of the
first collaborative public display region is shared with the
detected device, and wherein the projection of the first
collaborative public display region at least partially overlaps
with a projection of a second collaborative public display
region projected by the detected device;
[L2] provide for projection of a designated private
display region by the user device, wherein content displayed in
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 27, 2016); Reply Brief ("Reply Br.," filed Feb. 22, 2017); Examiner's
Answer ("Ans.," mailed Dec. 22, 2016); Final Office Action ("Final Act.,"
mailed May 6, 2016); and the original Specification ("Spec.," filed
May 10, 2011).
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Application 13/104,241
the designated private display region projected by the user
device is intended for viewing and manipulation by the user of
the apparatus only,
receive input via a user's interaction with at least one of
the projection of the first collaborative public display region or
the projection of the designated private display region projected
by the user device regarding management of content displayed
in at least one of the first collaborative public display region or
the designated private display region projected by the user
device, respectively; and
transmit instructions to the detected device regarding
projection of the content in the second collaborative public
display region projected by the detected device in response to
input received via user interaction with the projection of the
first collaborative public display region that moves at least a
portion of the content to the second collaborative public display
region, such that the content is displayed over at least the
projection of the first collaborative public display region
projected by the user device and the projection of the second
collaborative public display region projected by the detected
device as a shared collaborative pubic display.
10. The apparatus of Claim 1, wherein the memory
and computer program code are further configured to, with the
processor, cause the apparatus to:
[L3] receive input via a user's interaction with the
designated private display region regarding management of
content displayed in the designated private display region; and
[L4] provide for the display of the content in the first
collaborative public display region based on the input received
via the designated private display region.
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Application 13/104,241
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bhogal US 2004/0012538 A1 Jan. 22, 2004
Fai US 2011/0197147 A1 Aug. 11,2011
Kosuke Miyahara et al., "Intuitive Manipulation Techniques
for Projected Displays of Mobile Devices," ACM 1-59593-
00207/05/0004, Apr. 2005, (hereinafter "Miyahara").
Rejections on Appeal
Rl. Claims 1—5, 7, 8, 10-14, 16, and 18—20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Fai and
Bhogal. Final Act. 2; Ans. 2.
R2. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Fai, Bhogal, and Miyahara.
Final Act. 9; Ans. 10.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 8—11), we decide the
appeal of obviousness Rejection Rl of claims 1—5, 7, 8, 11—14, 16,
and 18—20 on the basis of representative claim 1; and we decide the appeal
of obviousness Rejection Rl of claim 10, infra.
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Application 13/104,241
Remaining claims 21 and 22 in Rejection R2, not argued separately or
with specificity, stand or fall with the respective independent claim from
which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1—5, 7,
8, 10-14, 16, and 18—22 and, unless otherwise noted, we incorporate by
reference herein and 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 highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. $ 103 Rejection R1 of Claims 1—5, 7, 8, 11—14, 16, and 18—20
Issue 1
Appellants argue (App. Br. 8—11; Reply Br. 2—7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 13/104,241
combination of Fai and Bhogal is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a]n 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" carry out the steps in limitations LI and L2, as recited
in claim 1 ?
Analysis
Appellants generally maintain the combination of Fai and Bhogal fail
to teach or suggest contested limitations LI and L2. App. Br. 8. Appellants
summarize by alleging, "[i]n short, the concept of providing both a
collaborative public display area and a shared private display area as a way
to allow user interaction with the content is a concept that is not disclosed or
suggested in Fai or Bhogal, taken alone or in combination." App. Br. 10.
Appellants adopt a general pattern of argument throughout the Appeal
along the lines of reciting claim language, and then asserting the cited prior
art does not teach or suggest the limitations. App. Br. 8—11. Such
statements are not considered to be arguments. 37 C.F.R. § 41.37(c)(l)(iv)
("A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
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Limitation LI —Projection of a First Collaborative Public Display Region
Appellants argue,
Bhogal's use of first display unit 110 and second display unit
120 already satisfies any need for having a private and public
display region, as Bhogal already provides the 'options' implied
by the Examiner for manipulating and selectively presenting
content in a manner that is markedly different from that
presented in Applicant's claims.
App. Br. 10.
However, we note Appellants do not address the Examiner's specific
finding that Fai teaches or suggests contested limitation LI. See Final
Act. 2-4.
As the predecessor to our reviewing court held, "one cannot show
non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F.2d
413, 426 (CCPA 1981). "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 those references would have suggested to those of ordinary skill
in the art." Id. at 425 (emphasis added).
Thus, we disagree with Appellants' generalized argument, and agree
with the Examiner's findings regarding the teachings and suggestions of Fai
with respect to contested limitation LI.
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Limitation L2 — Projection of a Designated Private Display Region
Appellants contend
one cannot dissect the system into its component parts (e.g.,
projecting a public display region on one hand and a public
display region on the other) in an effort to combine references
for reading on the claims, as this is directly in contradiction
with how claims must be examined. Section 2142 of the MPEP
is clear that each claim must be examined "as a whole" to
determine whether the prior art renders the claim obvious.
App. Br. 9; and see App. Br. 10.4
Further, as quoted above, Appellants contend Bhogal already
"satisfies any need for having a private and public display region," and
allege "[tjhere is no teaching or suggestion of curing the deficiencies of
either reference by incorporating elements of the other reference, as asserted
by the Examiner, and thus any rejection based on the combination of these
reference necessarily fails and is improper." App. Br. 10.
Aside from these remarks, and as pointed out by the Examiner,5
Appellants present no analysis or specific arguments responsive to the
Examiner's findings with respect to the teachings and suggestions of the
cited prior art combination.
4 By citing MPEP § 2142, Appellants seem to suggest, without explicitly
stating so, that the Examiner engaged in impermissible hindsight. However,
the Examiner responds to this veiled hindsight argument (Ans. 14), and we
agree with the Examiner's analysis and stated basis for motivation to
combine the references in the manner suggested. See Ans. 14—17.
5 "Appellant merely reiterates the recited claim features without providing
the analysis of the evidence presented in the final office action of
05/06/2016." Ans. 12.
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In the Reply Brief, for the first time, and not in response to a shift in
the Examiner's position, Appellants argue
Fai teaches away because it attempts to eliminate or reduce
overlap. Fai cannot be relied upon for teaching or suggesting
that 'the projection of the first collaborative public display
region at least partially overlaps with a projection of a second
collaborative public display region projected by the detected
device' as per independent Claim 1. Bhogal does not correct
these deficiencies of Fai, nor was Bhogal cited to do so.
Reply Br. 3.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
We find Appellants do not provide persuasive argument, evidence, or
argument to support their belated argument that Fai teaches away.6
6 Appellants admit, "[ejven though Fai suggests overlap may happen, Fai
teaches minimizing the overlap. Thus, Fai teaches away because it attempts
to eliminate or reduce overlap." Reply Br. 3. We find this argument is
unpersuasive to prove that a skilled artisan would be discouraged from
following the path set forth in Fai. See Ricoh, 550 F.3d at 1332.
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2—5, 7, 8, 10-14, 16, and 18 20, which fall
therewith. See Claim Grouping, supra.
2. $103 Rejection R1 of Claim 10
Issue 2
Appellants argue (App. Br. 11; Reply Br. 7—8) the Examiner's
rejection of claim 10 under 35 U.S.C. § 103(a) as being obvious over the
combination of Fai, Bhogal, and Miyahara is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[t]he apparatus of Claim 1, wherein the memory and computer
program code are further configured to, with the processor, cause the
apparatus to" carry out the steps in limitations L3 and L4, as recited in
claim 10?
Analysis
Appellants repeat their arguments concerning claim 1 discussed
above, and also continue their pattern of argument by alleging, "as stated
above, there is no teaching or suggestion of curing the deficiencies of either
Fai for failing to teach or suggest a designated private display area and while
Fai discloses creating a shared workspace where images can be shared[,] Fai
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clearly does not disclose, teach or suggest [limitations L3 and L4]," as
recited in dependent claim 10.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 10, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of dependent
claim 10. See Lovin, 652 F.3d at 1357.
3. Rejection R2 of Claims 21 and 22
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 21 and 22 under § 103 (see App.
Br. 10—11), we sustain the Examiner's rejection of these claims. Arguments
not made are waived.7
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1—8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.8
7 Appellants merely argue claims 21 and 22 are allowable by virtue of their
dependency on independent claims 1 and 11. See App. Br. 10-11.
8 We note Appellants belatedly present arguments alleging "Fai teaches
away because it attempts to eliminate or reduce overlap." Reply Br. 3.
Notwithstanding the untimely nature of this new argument, we choose to use
our discretion and address Appellants' "teach away" argument, supra.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
and R2 of claims 1—5, 7, 8, 10—14, 16, and 18—22 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—5, 7, 8, 10—14,
16, and 18-22.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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