Ex Parte Wu et al

Patent Trials and Appeals Board

May 22, 2013

11518589 - (D) (P.T.A.B. May. 22, 2013)

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.
11/518,589 09/07/2006 John Jun Wu 00003-0640 3533
98359 7590 05/23/2013
AlbertDhand LLP
11622 El Camino Real, Suite 100
San Diego, CA 92130
EXAMINER
CHOUDHURY, AZIZUL Q
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
05/23/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN JUN WU, THANH KHAI ONG and
KEVIN HONG HO
____________________

Appeal 2011-001701
Application 11/518,589
Technology Center 2400
____________________

Before ELENI MANTIS MERCADER, JEFFREY S. SMITH, and HUNG
H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 1-18. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.2

1 Real Party in Interest is Novatel Wireless, Inc.
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a system and method for providing
custom branding of a host application, and more specifically, for enabling
customization of a visual appearance of a host application by way of
graphical user interface (GUI) elements. See Appellants’ Spec. ¶¶[0005],
[0009] and Abstract.
Representative Claim
Claims 1, 10, 16, and 18 are the independent claims on appeal. Claim
1 is representative of Appellants’ invention, and is reproduced below with
disputed limitations emphasized:

1. A method of skinning a host application
comprising:
communicatively coupling an accessory device to a host
device, wherein the host device executes the host application
for managing the accessory device;
determining a type of the accessory device;
retrieving at least one resource object from the accessory
device; and
rendering a graphical user interface of the host
application based upon the at least one retrieved resource
object and a graphical template on the host device.

Evidence Considered
Mathews US 2004/0216054 A1 Oct. 28, 2004
Ooi US 2005/0272416 A1 Dec. 8, 2005
Grooters US 7,111,242 B1 Sep. 19, 2006

2 Our decision refers to Appellants’ Appeal Brief filed April 19, 2010
(“App. Br.”); Examiner’s Answer mailed July 21, 2010 (“Ans.”); and the
original Specification filed September 7, 2006 (“Spec.”).
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Examiner’s Rejections
(1) Claims 1-18 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 4.
(2) Claims 1-6, 10-14 and 16-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Grooters and Ooi. Ans. 5-12.
(3) Claims 7-9 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Grooters, Ooi and Mathews. Ans. 12-13.

Issues on Appeal
The dispositive issues on appeal are:
(1) Whether the Examiner erred in rejecting claims 1-18 under 35
U.S.C. § 101 as being directed to non-statutory subject matter (App. Br. 5-
7); and
(2) Whether the Examiner erred in rejecting claims 1-6, 10-14 and
16-18 under 35 U.S.C. § 103(a) as being unpatentable over Grooters and Ooi
for failing to disclose or suggest “rendering a graphical user interface of the
host application based upon the at least one retrieved resource object and a
graphical template on the host device,” as recited in independent claims 1,
10, and 16, and similarly recited in independent claim 18 (App. Br. 7-9).

ANALYSIS
We have reviewed the Examiner’s comprehensive rejections in light
of Appellants’ arguments presented in Appeal Brief that the Examiner has
erred. Only those arguments actually made by Appellants in the Appeal
Brief have been considered. See 37 C.F.R. §41.37(c)(1)(vii).
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§101 Rejection of Claims 1-18
Appellants contend that the Examiner erred in rejecting claims 1-18
under 35 U.S.C. § 101 because: (1) these claims recite a communicative
coupling between an accessory device and a host device which are clearly
hardware elements, and (2) contrary to the Examiner’s interpretation,
¶[0026] of Appellants’ Specification which defines the word “device” as
including implementations using one or more lines of software code does not
mean an implementation that is software code and one skilled in the art
would understand that a device using software code would still include
hardware components, as shown, for example, in FIG. 4. App. Br. 5-7.
In response, the Examiner takes the position that, based on ¶[0026] of
Appellants’ Specification, a device can be broadly construed as only
software code and not any hardware, and as such, claims 1-18 can be
considered non-statutory under 35 U.S.C. § 101.
We agree with Appellants. 35 U.S.C. §101 states:
[W]hoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.

In Bilski, the Supreme Court set aside the Federal Circuit’s holding
in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), that the “machine-or-
transformation” (MoT) test is “the sole test governing § 101 analyses,” and
thus the “test for determining patent eligibility of a process under § 101.”
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130 S.Ct. at 3224 (quoting In re Bilski, 545 F.3d at 955, 956).3 The Supreme
Court held that the “machine-or-transformation” (MoT) test is not the sole
test, but is still “a useful and important clue, an investigative tool, for
determining whether some claimed inventions are [patent-eligible] processes
under § 101,” 130 S.Ct. at 3227.
Since the Supreme Court’s decision in Bilski, the Federal Circuit has
repeatedly addressed the issue of whether software claims are patent-eligible
under 35 U.S.C. § 101 in several cases, including CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a
method for verifying the validity of a credit card transaction over the
Internet to be nonstatutory as an abstract idea capable of being performed in
the human mind or by a human using a pen and paper) and Dealertrack, Inc.
v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) (“Simply adding a
‘computer aided’ limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible.” (citation omitted)).
In the instant application, however, independent claims 16 and 18 are
“machine” claims with specific hardware components, such as an accessory
device comprising an interface and a memory unit including computer code
(claim 16); and a system comprising a host device for executing a host

3 The Federal Circuit’s decision in In re Bilski had, in turn, rejected its prior
test for determining whether a claimed invention was a patentable “process”
under § 101 (as articulated in State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368, 1373 (1998), and AT & T Corp. v.
Excel Communications, Inc., 172 F.3d 1352, 1357 (1999)), viz., whether it
produces a “useful, concrete, and tangible result,” and upon which
Appellants rely in the instant appeal. See In re Bilski, 545 F.3d 943, 959–
960, and n.19 (Fed. Cir. 2008) (en banc).
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application (claim 18). As such, we find claims 16 and 18 are deemed
patent eligible under 35 U.S.C. §101.
With respect to process claim 1, we agree with Appellants that claim 1
recites hardware elements, i.e., an accessary device and a host device shown
in FIG. 4, and is patent eligible as per Bilski’s safe harbor “machine-or-
transformation” (MoT) test along with its corresponding Beauregard claim
10.4 App. Br. 6. Although ¶[0026] of Appellants’ Specification describes
an embodiment of “device” as encompassing an implementation in software
code, claim 1 requires the host device to execute the application, and the
accessory device to render a graphical user interface, both of which require
devices that include hardware elements to execute and render. See App. Br.
6.
In view of these reasons, we cannot sustain the Examiner’s rejection
of claims 1-18 under 35 U.S.C. §101.

4 Beauregard claims are patent eligible if the underlying process is eligible
under 35 U.S.C. §101. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011). However, we note that Beauregard claim
10 could be broadly construed to cover forms of non-transitory tangible
media and transitory propagating signals per se. Therefore, in the event of
further prosecution, we leave it to the Examiner to evaluate Beauregard
claim 10 for compliance with 35 U.S.C. § 101 in view of In re Nuijten, 500
F.3d 1346, 1355 (Fed. Cir. 2007), and U.S. Patent and Trademark Office,
Interim Examination Instructions for Evaluating Subject Matter Eligibility
Under 35 U.S.C. § 101, at 2 (Aug. 2009), available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf (emphases omitted); see also David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted).
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§103 Rejection of Claims 1-6, 10-14, and 16-18
Appellants contend that the Examiner erred in rejecting claims 1-6,
10-14, and 16-18 under 35 U.S.C. § 103(a) because the combination of
Grooters and Ooi fails to disclose the feature “rendering a graphical user
interface of the host application based upon the at least one retrieved
resource object and a graphical template on the host device,” as recited in
independent claims 1, 10, and 16, and similarly recited in independent claim
18. App. Br. 8. In particular, Appellants argue that:
(1) Grooters merely discloses that a “layout manager
assembled the user interface components into a user interface,”
and does not teach or suggest the use of a graphical template in
generating any user interface (App. Br. 8);

(2) the graphical template of the present invention “is
populated with the properties of the icon file 500, text file 502,
etc., resulting in a skinned application for presentation to an end
user.” Specification, paragraph [0023]. Thus, in accordance
with the present disclosure and as understood by one skilled in
the art, the graphical template does not include any content, but
rather is populated with content, such as text file 502 (App. Br.
8); and

(3) By contrast, the modular user interface objects of
Grooters are themselves content ... and do not constitute the
graphical template of Appellants’ invention (App. Br. 9).

However, we are not persuaded by Appellants’ arguments and
incorrect characterization of Grooters. Claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Appellants’ disclosure
provides no definition for the term “graphical template.” ¶[0023] of
Appellants’ Specification simply describes a “graphical template” in the
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context of a generic layout that can be populated with properties of various
GUI elements such as icon file 500, text file 502, or other media file 504,
shown in FIG. 5, for a visual display at a host device. See Appellants’ Spec.
¶[0006].
In view of such a disclosure, we agree with the Examiner’s broad but
reasonable interpretation that Appellants’ claimed “graphical template”
encompasses a complete user interface 232 that is assembled by a layout
manager 230 based on user interface (UI) components, i.e., modular user
interface objects from UI resource database 222, as shown in FIG. 4 of
Grooters. Ans. 14. In other words, the complete user interface 232 of
Grooters can serve as Appellants’ claimed “graphical template” when
populated with content such as user interface (UI) components. See
Grooters, col. 5, ll. 20-27 and 50-67; and col. 6, ll. 1-2.
For the reasons set forth above, we do not find error in the Examiner’s
position, and, therefore, sustain the Examiner’s obviousness rejection of
claims 1-6, 10-14, and 16-18.

§103 Rejection of Claims 7-9 and 15
With respect to claims 7-9 and 15, Appellants present no arguments
for patentability of these claims separately from claims 1 and 10. App. Br.
9-10. As such, claims 7-9 and 15 fall together with independent claims 1
and 10. See 37 C.F.R. § 41.37(c)(1)(vii) (stating that “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”). Therefore, we also sustain
the Examiner’s rejection of claims 7-9 and 15 under 35 U.S.C. § 103(a).
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CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 1-18 under 35 U.S.C. § 101. However, we also conclude
that the Examiner has not erred in rejecting claims 1-18 under 35 U.S.C.
§ 103(a).

DECISION
We reverse the Examiner’s final rejection of claims 1-18 under 35
U.S.C. § 101, but affirm the Examiner’s final rejections of claims 1-18 under
35 U.S.C. § 103(a). Because we have affirmed at least one ground of
rejection with respect to each claim on appeal, the Examiner’s decision is
affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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