FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Mar 2, 2022

2021000899 (P.T.A.B. Mar. 2, 2022)

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. 15/619,047 06/09/2017 Jeffrey Yizhou HU 83815313 5434 28395 7590 03/02/2022 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER OKASHA, RAMI RAFAT ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY YIZHOU HU and MICHAEL CRIMANDO Appeal 2021-000899 Application 15/619,047 Technology Center 2100 Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JAMES R. HUGHES, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 5, 6, and 8-18. Claims 4 and 7 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant identifies the real party in interest as Ford Global Technologies, LLC. Appeal Br. 1. Appeal 2021-000899 Application 15/619,047 2 CLAIMED SUBJECT MATTER The claims are directed to a method and apparatus for a user- designated application prioritization and restricting an accessible number of applications while an application-limiting state exists in a vehicle. Title; Spec. ¶ 4. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method comprising: restricting an accessible number of applications while an application-limiting state exists in a vehicle, the restricting including re-ordering displayed application icons, responsive to engagement of the restricting, such that applications having a user-designated ordered priority associated therewith are still accessible on a vehicle display being limited by the restricting, wherein the application-limiting state includes tiers of limitation, and the user-designated priority is usable to determine which applications are still accessible in increasingly restrictive tiers of restriction, by selecting applications for display based on the ordered priority, such that higher priority applications persist as the display is limited. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Gee US 2012/0143391 A1 June 7, 2012 Wolter US 8,229,495 B1 July 24, 2012 Tissot US 2012/0262403 A1 Oct. 18, 2012 Shepherd et al. US 2014/0283141 A1 Sept. 18, 2014 Kim et al. US 2015/0156307 Al June 4, 2015 Yasuda et al. US 2018/0217717 A1 Aug. 2, 2018 Appeal 2021-000899 Application 15/619,047 3 REJECTIONS2 Claims 13-18 stand rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1-3, 5, 6, and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tissot in view of Yasuda and further in view of Kim. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable of Tissot, Yasuda, and Kim further in view Shepherd. Claims 10-12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tissot, Yasuda, and Kim further in view of Gee. Claims 13-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tissot, Yasuda, and Kim further in view of Wolter. OPINION 35 U.S.C. § 112(b) The Examiner finds that the term “expressly” in claim 13 is a relative term which renders the claim indefinite where 1) the term “expressly” is not defined by the claim, 2) the Specification does not provide a standard for ascertaining the requisite degree, and 3) one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Final Act. 14; Ans. 28-29. The Examiner finds that it is unclear what the difference would be between a user “designating the application as being of a higher or lower priority” and a user “expressly designating the application as being of a higher or lower priority.” Final Act. 14; Ans. 28-29. The Examiner finds 2 The Examiner has withdrawn the obviousness-type double patenting rejection of claims 1-3, 5, 6, and 9-12. Appeal 2021-000899 Application 15/619,047 4 that it is also unclear whether the user is “expressly designating” or if the processor is “expressly designating.” Final Act. 14; Ans. 28-29. The Examiner further finds that there is no express support for the term “expressly” in the Specification, and Appellant’s mapping to paragraph 38 is directed to resolving conflicts in a priority ranking and merely makes mention of “user designations,” and the Specification at paragraph 37 further describes that the processor “receives 205 a designation of priority based on user preference.” Ans. 29. The Examiner finds that there is no explanation of what action or preference would result in an “express” or “explicit” designation, and use of the terms “express” or “explicit” or their equivalents are not found anywhere in the disclosure. Ans. 29. Appellant argues that there is a first priority designation that falls within an ordered priority designation, and the ordered priority designation is for a plurality of applications. Appeal Br. 6. Appellant argues that the first priority designation expressly designates the application to which it applies as being of a higher or lower priority than a second application. Appeal Br. 6. Appellant argues the claim requires an explicit ordering, and the Examiner continues to use prior art where there may be alleged situational ordering, or an alleged arguable perception that one application is of higher or lower priority than another, but the prior art contains no express designation of such. Appeal Br. 6. Appellant argues that the difference between “designating the application as higher or lower priority” as opposed to “expressly designating” is that in the former instance, which was the prior recitation, the Examiner chose to interpret “designating” under its broadest reasonable interpretation as not actually requiring a designation, but more from the perspective of a results-oriented view, wherein the result that one application Appeal 2021-000899 Application 15/619,047 5 remained when another did not, in a given situation, was used to conclude that there must have been some sort of prioritization. Appeal Br. 6-7. Appellant further contends that the user actually defines the order of priority in a ranked order, hence express designation of priority which is not unclear or indefinite. Appeal Br. 7. Appellant also argues that because of the Examiner’s prior art contentions, which, as noted, include situational ordering that can change from situation to situation, or a computerized guess as to whether an application is higher or lower priority than another, the claims were amended to indicate that the claims require that the user expressly designate whether one application is of higher or lower priority than another. Reply Br. 2. Appellant further contends that, claim 13 relates to a user-input priority designation specifically for a given application and that priority designation (that was input by the user) should expressly indicate whether the priority of the one application is higher or lower than the priority associated with another application. Reply Br. 2. We note that Appellant’s Specification discloses receiving a selection and receiving a designated priority in steps 203 and 205 prior to assigning a selected priority in step 213 and further identifies conflicts for user resolution, and receives 211 a user-designated change. See Spec. ¶¶ 37-39; Figure 2. We disagree with the Examiner and find that the language of independent claim 13 recites a step of: receive a user-input first priority designation for a first application accessible through a vehicle display the first priority designation falling within an ordered priority designation for a plurality of applications and a user expressly designating the first application as being of a higher or lower priority than a second Appeal 2021-000899 Application 15/619,047 6 application based on the ordered priority designation associated with both the first and second applications where the “user-input first priority designation” is further limited by “expressly designating the application as being of a higher or lower priority.” Here, there is an ordered priority, for example three levels of priority, but within each level, the user can expressly designate an application as having higher or lower priority than that of a second application based on the ordered priority designation associated with both the first and second applications. See Appeal Br. 3 (Summary of Claimed Subject Matter) citing Spec. ¶ 38. As a result, we find the claim language to be sufficiently definite in light of the Specification and do not sustain the Examiner’s rejection under 35 U.S.C. § 112(b). The Examiner further finds that the language “associated with both the first and second applications” can be interpreted to mean there are multiple first applications and multiple second applications, which would create a lack of antecedent basis. Final Act. 14. Appellant argues that a proper antecedent basis for the phrase “associated with both the first and second applications” has been provided because each of a first application and a second application have been properly introduced previously in the claim. Appeal Br. 7. We agree with Appellant and find no lack of antecedent basis. Appeal 2021-000899 Application 15/619,047 7 35 U.S.C. § 103 Claims 1-3, 5, 6, and 8-12 “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). [A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appellant argues that the Examiner errs in the rejection of independent claim 1 because claim 1 recites “applications having a user- designated ordered priority associated therewith” and “wherein the application-limiting state includes tiers of limitation, and the user-designated priority is usable to determine which applications are still accessible in increasingly restrictive tiers of restriction, by selecting applications for display based on the ordered priority, such that higher priority applications persist as the display is limited.” Appeal Br. 7. Appellant argues that the Examiner relies upon paragraphs 83-91 of Yasuda as allegedly teaching “a user-designated ordered priority,” but those paragraphs, instead, describe a “guess” (a prediction) by the Yasuda’s computer based on historically observed behavior. Appeal Br. 8. Appellant explains that this is transparent from column 408 of Figure 4, which shows the system merely guessing based on context and does not act based on any “user-designated priority” as claimed. Appeal Br. 8. Appellant contends Appeal 2021-000899 Application 15/619,047 8 that although Yasuda may eventually present a set of icons that reflect a user preference in a given situation, the recited “user-designated ordered priority” allows the user to preconfigure the ordering in advance. Appeal Br. 8. Appellant also argues that the Kim and Tissot references do not cure this deficiency nor are alleged to cure this deficiency. Appeal Br. 8. Appellant further argues that the Examiner glosses over the claimed “user-designated ordered priority” in the rejection, and the Examiner has not actually demonstrated anything that constitutes a “user-designated ordered priority.” Appeal Br. 7. The Examiner generally finds that the Tissot reference teaches having fewer icons in a user interface but does not teach or suggest the step of restricting. Final Act. 16. The Examiner further finds that the Yasuda reference in paragraphs 78 and 97 teaches re-ordering the display application icons would provide the user of the vehicle easier access while driving. The Examiner finds that “Yasuda was not relied upon to teach ‘a user designated ordered priority’, but rather was relied upon to teach re-ordering of application icons on a display in response to a vehicle condition based on an ordered priority of the application icons” (Ans. 30) and “Yasuda also at least suggests the ordered priority being user designated” (Ans. 30). The Examiner further finds that the Kim reference was specifically relied upon user-designated ordered priority, and the Kim reference was also relied upon for specifically teaching a user-designated ordered priority. Ans. 31. The Examiner also finds that the Kim reference was relied upon to teach the limitation “wherein the application-limiting state includes tiers of limitation, and the user-designated priority is usable to determine which applications are still accessible in increasingly restrictive tiers of restriction, by selecting applications for display based on the ordered priority, such that Appeal 2021-000899 Application 15/619,047 9 higher priority applications persist as the display is limited.” Ans. 31. The Examiner finds the Kim reference teaches a power management mode with increasingly restrictive tiers of display states. Ans. 31. The Examiner found that Kim teaches a power management mode with increasingly restrictive tiers of display states, and the power management mode determines using execution manager 410 determines the average daily record as a user pattern in paragraph 88. The Examiner further found that Kim teaches the execution manager 410 using power management mode terminates applications according to “user preferences (or user rating)” in paragraph 93. Ans. 8. The Examiner merely lists paragraphs 93, 197, 199, and 204-208 and Figures 18A-D of the Kim reference (see Final Act. 3 and 18-19). Ans. 31. The Examiner subsequently repeats Appellant’s mapping of the claim limitations to “Paragraphs 37, 40, 42, and Figure 3 305 of the instant application (Appeal Brief, Page 3)” and paraphrases those paragraphs. The Examiner concludes that the teachings of Kim are consistent with the disclosure referenced by Appellant. Ans. 31. We disagree with the Examiner and find that the Kim reference does not clearly teach or suggest the claimed “re-ordering displayed application icons, responsive to engagement of the restricting, such that applications having a user- designated ordered priority associated therewith are still accessible on a vehicle display being limited by the restricting.” Additionally, we disagree with the Examiner and find that the Kim reference does not teach or suggest “a user-designated ordered priority,” but the Kim reference determines a priority based upon past user usage which is not “user-designated,” as claimed. Although we agree with the Examiner that the Kim reference does change the icons presented on the user interface Appeal 2021-000899 Application 15/619,047 10 based upon past user usage as shown in Figures 18A-18D, we find that this is not an affirmative designation by the user, but an implied or suggested designation. We further find that the language of independent claim 1 is consistent with the first alternative embodiment of paragraph 40 of Appellant’s Specification which has “user-designated denotations” rather than the observed usage alternative. See generally Ans. 31. See also Merriam-Webster.com Dictionary (defining “denotation” as “a direct specific meaning as distinct from an implied or associated idea”), https://www.merriam-webster.com/dictionary/denotation (accessed February 15, 2022); Merriam-Webster’s Seventh New Collegiate Dictionary 221 (1961) (defining “denotation” as “a direct specific meaning as distinct from connotations”). We agree with Appellant that the discussion of “preferences” in the Kim reference is “an assumption of preference, which is clearly different from a designated ordered priority.” Reply Br. 3. Appellant further argues that the Examiner has not provided an example of a user designating a priority for an application, but the Examiner has provided multiple examples in the prior art references where the computer designates the priority. Reply Br. 4. We agree with Appellant that the Examiner has not provided a clear and specific teaching or suggestion of the user designating a priority for an application. Consequently, Appellant has shown error in the Examiner’s underlying factual findings and ultimate conclusion of obviousness beyond a preponderance of the evidence for illustrative independent claim 1 and its corresponding dependent claims 2, 3, 5, 6, and 8-12 which contain the same Appeal 2021-000899 Application 15/619,047 11 limitations as independent claim 1, and the Examiner has not identified how the additional Shepherd and Gee references remedy the noted deficiency. Claims 13-18 In the rejection of independent claim 13, the Examiner additionally relies upon the Wolter reference and sets forth similar findings with respect to the Tissot, Yasuda, and Kim references. Final Act. 26-32. Appellant argues that independent claim 13 recites “receive a user- input first priority designation for a first application accessible through a vehicle display, the first priority designation falling within an ordered priority designation for a plurality of applications and expressly designating the application as being of a higher or lower priority than a second application based on the ordered priority designation associated with both the first and second applications” and the Wolter reference is introduced as teaching this limitation. Appeal Br. 9-10. Appellant further argues that while the Wolter reference may (at least for the sake of argument) teach an ordered priority, the teachings of the Wolter reference are not usable with the teachings of at least the Yasuda reference as the proposed modification changes the principle operation of Yasuda. Appeal Br. 9-10. Appellant contends that the Yasuda reference is designed to (eventually) present applications in a preference ordered by situational observation of past user behavior which eventually should reflect user preferences that may vary under a given situation and second it does not rely on a fixed prioritization because the chosen applications may vary under different circumstances. Appeal Br. 10. Appeal 2021-000899 Application 15/619,047 12 Appellant further contends that the Wolter reference is about fixed application ordering and concerned with always presenting certain elements. Appeal Br. 10. Appellant also contends one cannot apply both an ordered listing that is expressly designed to preserve element ordering and a situational predictive determination that will both vary over time and vary over situations. Appeal Br. 10. Appellant argues that at least one of the noted purposes of the above two inventions will be defeated, either Yasuda’s notion of providing situationally appropriate icons will be defeated by an express ordering, or Wolter’s notion of always preserving an ordering of icons based on priority will be defeated based on Yasuda’s situational reordering that can additionally change over time as observed behavior changes. Appeal Br. 10. Here, the Examiner acknowledges the additionally recited step in the “system” of independent claim 13 to “receive a user-input first priority designation for a first application accessible through a vehicle display, the first priority designation falling within an ordered priority designation for a plurality of applications and expressly designating the application as being of a higher or lower priority than a second application based on the ordered priority designation associated with both the first and second applications.” Final Act. 31-32; Ans. 33-34. The Examiner further finds that Appellant is arguing a bodily incorporation of the teachings of Wolter into Yasuda. Ans. 33-35. The Examiner finds that Appellant’s argument regarding Yasuda and Wolter does not indicate a change in principle of operation of Yasuda, but rather indicates an alternative to determining the priority ordering where, rather than using a probabilistic determination of the priority based on past usage, Appeal 2021-000899 Application 15/619,047 13 it would have been obvious to one of ordinary skill in the art to determine the priority ordering based on direct input from a user that assigns priority levels to the applications. Ans. 34. The Examiner acknowledges the difference and finds that the “implementation amounts more to a substitution of the method by which the applications are prioritized rather than a teaching away from Yasuda,” and the Examiner identifies paragraph 40 of Appellant’s Specification which sets forth “user-designated denotations or could be based on, for example, observed usage.” Ans. 34-35. We agree with Appellant that the Examiner does not specifically respond to Appellant’s argument regarding changing the principle of operation. Reply Br. 4-5. We note that the language of independent claim 13 recites “receive a user-input first priority designation for a first application accessible through a vehicle display, the first priority designation falling within an ordered priority designation for a plurality of applications and expressly designating the application as being of a higher or lower priority than a second application based on the ordered priority designation associated with both the first and second applications,” which is more than merely “priority ordering based on direct input from a user that assigns priority levels to the applications,” as the Examiner proposes. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of Appeal 2021-000899 Application 15/619,047 14 the evidence is the standard that must be met by the PTO in making rejections.”). “A rejection based on section 103 clearly must rest on a factual basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Here, we find that the Examiner is speculating as to the generalized teachings of the prior art references and piece-wise analyzing the claimed invention in an attempt to reconstruct the claimed invention from the prior art teachings. Moreover, the Examiner has not provided a specific teaching or suggestion in the applied prior art of the claim limitation “receive a user- input first priority designation for a first application accessible through a vehicle display, the first priority designation falling within an ordered priority designation for a plurality of applications and expressly designating the application as being of a higher or lower priority than a second application based on the ordered priority designation associated with both the first and second applications.” As a result, we find that Appellant has shown that the Examiner’s rejection is based on insufficient factual findings, is merely speculative, and has insufficient rational underpinning to support the legal conclusion of obviousness of independent claim 13 and its dependent claims 14-18.3 3 We note Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (an administrative agency’s “judicious use of a single dispositive issue approach . . . can . . . save . . . unnecessary cost and effort”). Appeal 2021-000899 Application 15/619,047 15 CONCLUSION We reverse that the Examiner’s indefiniteness rejection of claims 13 - 18, and we reverse the Examiner’s obviousness rejection of claims 1-3, 5, 6, and 8-18. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 13-18 112(b) Indefiniteness 13-18 1-3, 5, 6, 9 103 Tissot, Yasuda, Kim 1-3, 5, 6, 9 8 103 Tissot, Yasuda, Kim, Sheppard 8 10-12 103 Tissot, Yasuda, Kim, Gee 10-12 13-18 103 Tissot, Yasuda, Kim, Wolter 13-18 Overall Outcome 1-3, 5, 6, 8- 18 REVERSED