Ex Parte van Os

Patent Trial and Appeal Board

Mar 26, 2018

12170295 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/170,295 07/09/2008
69753 7590 03/28/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Marcel MW A van Os
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.
106842052800 (P6279US1) 1821
EXAMINER
TANK,ANDREWL
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL MW A VAN OS
Appeal2016-008163
Application 12/170,295
Technology Center 2100
Before MAHSHID D. SAADAT, CARLL. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 5, 9--20, 26, 29, and 45-53, which are all the claims pending in
this application. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 An oral hearing was held for this appeal on March 21, 2018.
2 According to Appellant, the real party in interest is Apple, Inc. App. Br. 1.
3 Claims 2--4, 6-8, 21-25, 27, 28, and 30--44 have been canceled.
Appeal2016-008163
Application 12/170,295
STATEMENT OF THE CASE
Appellant's invention relates to creating an icon associated with
content on a mobile device. See Spec. i-f 4. Claim 9 is illustrative of the
invention and reads as follows:
9. A method comprising:
receiving a plurality of unviewed content items from a
plurality of individuals;
identifying, from the plurality of unviewed content items,
unviewed content items associated with an individual of the
plurality of individuals;
after the identification, determining:
a first number of unviewed content items in the
identified unviewed content items that are received from
a first application, and
a second number of unviewed content items in the
identified unviewed content items that are received from
a second application; and
displaying an icon representing the individual on a user
interface of a device, wherein the displayed icon includes an
enumerated status badge, the enumerated status badge including
a sum of the first and second numbers of unviewed content
items associated with the individual from the first and second
applications.
Claims 9, 10, 13-15, 19, 20, 26, 29, 45, and 48-52 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Blagsvedt (US 7,433,920 B2;
Oct. 7, 2008) and Kansal (US 8,233,885 B2; July 31, 2012). See Final Act.
3-9.
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Appeal2016-008163
Application 12/170,295
Claims 1, 5, 11, 12, 46, 47, and 53 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Blagsvedt, Kansal, and Tang (US
6,791,583 B2; Sept. 14, 2004). See Final Act. 10-15.
Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Blagsvedt, Kansal, and Smith (US 6,084,951; July 4, 2000). See Final
Act. 15-16.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We concur with Appellant's
contention that the Examiner erred in finding the combination of Blagsvedt
and Kansal teaches or suggests "wherein the displayed icon includes an
enumerated status badge, the enumerated status badge including a sum of the
first and second numbers of unviewed content items associated with the
individual from the first and second applications," as recited in claim 9,
because:
As is apparent from Fig. 4 and the corresponding text in
Blagsvedt, the contacts are displayed, not with a sum of the
unread e-mail messages and the unread real-time
communications associated with respective contacts, but rather
with separate indications of the unread e-mail messages and the
unread real-time communications associated with the respective
contacts. This is not "a sum of the first and second numbers of
unviewed content items associated with the individual from the
first and second applications," as recited in claim 9.
App. Br. 9-10 (emphasis original). As Appellant also contends:
Kansal discloses displaying a messaging user interface that
includes a message list having message items of various types
(e.g., e-mail messages, telephone calls, SMS messages)
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Appeal2016-008163
Application 12/170,295
received from multiple users (see id. at col. 9, line 64-col. 10,
line 45). The messaging user interface also includes a message
count 208 (in Fig. 2, below) indicating the number of messages
in the message list along with the total number of unread items
received from all of the users in the message list (see id. at col.
9, lines 13-15).
App. Br. 10 (emphasis original).
Appellant further contends (App. Br. 12), absent impermissible
hindsight, the actual teaching of Kansal related to "displaying a total number
of unread items received from all individuals with which a user
communicates" and not "a general teaching of displaying a sum of unread
items" would not have resulted in the claimed invention. Appellant asserts:
Indeed, the Examiner's modification of Blagsvedt to
replace the separate per-contact indications of the unread e-mail
messages and the unread real-time communications with a sum
of those unread e-mail messages and the unread real-time
communications would reduce the value of the information
presented in the user interface-specifically, by eliminating the
ability of the user to see the breakdown of the number of unread
e-mail messages and the unread real-time communications-
while providing no corresponding increase in value of this
information, because a person of ordinary skill in the art would
already be able to determine the sum of the unread e-mail
messages and the unread real-time communications in
Blagsvedt's original form.
App. Br. 13. Appellant argues that "to present unread information in a more
summarized manner" is not sufficient to justify the proposed combination
because such reasoning stems from Appellant's disclosure. App. Br. 17
(citing Final Act. 5).
We agree with Appellant that the modifications suggested by
Blagsvedt and Kansal would not be reasonably understood by one of
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Appeal2016-008163
Application 12/170,295
ordinary skill in the art to have resulted in replacing Blagsvedt's indication
for separate types of messages for a user with a total number of messages for
that user. At best, the Examiner's assertion that it would have been obvious
to modify Blagsvedt to display the sum of the first and second numbers of
unviewed content items associated with the individual on the contact icon is
based on hindsight, and not based on the knowledge of the skilled artisan or
any teaching of Blagsvedt or Kansal. In other words, the Examiner's
proposed rationale does not articulate why the skilled artisan would modify
Blagsvedt with the sum of all the messages from all the users of Kansal, or
how it would have resulted in the claimed invention. Such rationale does
not rise to the level of an articulated line of reasoning with a rational
underpinning to support the legal conclusion of obviousness. See KSR Int 'l.
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
CONCLUSION
On the record before us, we conclude that, Appellant has shown the
Examiner erred in rejecting claim 9, as well as other independent claims 26
and 29 that recite similar features. Therefore, in view of the above
discussion and the failure of the Examiner to point to any teachings in the
other applied prior art references to overcome the deficiencies of Blagsvedt
and Kansal, we do not sustain the 35 U.S.C. § 103(a) rejection of
independent claims 9, 26, and 29, nor of the remaining claims dependent
thereon.
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Appeal2016-008163
Application 12/170,295
DECISION
We reverse the decision of the Examiner to reject claims 1, 5, 9--20,
26, 29, and 45-53.
REVERSED
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