Gravino, Douglas David.

Patent Trials and Appeals Board

Nov 12, 2020

12828858 - (D) (P.T.A.B. Nov. 12, 2020)

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.
12/828,858 07/01/2010 Douglas David Gravino 60136.0213US01 7558
94140 7590 11/12/2020
Merchant & Gould - Cox
PO Box 2903
Minneapolis, MN 55402
EXAMINER
PATEL, SANJIV D
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
USPTO94140@merchantgould.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS DAVID GRAVINO
____________

Appeal 2019-004034
Application 12/828,858
Technology Center 2600
____________

Before LARRY J. HUME, STEVEN M. AMUNDSON, and
STEPHEN E. BELISLE, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a rejection
of claims 1–5, 7, 8, 10–18, and 20–24, i.e., all pending claims. Because the
claims have been twice rejected, we have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI
1994) (precedential).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as Cox Communications, Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the claimed invention concerns
systems and methods “for providing a simplified user interface” on a mobile
device “when motion is detected.” Spec. ¶ 4.2 The Specification explains
that “[o]ne potential contributing factor to the danger of utilizing a mobile
device while in motion, for example, while driving, is that user interfaces of
mobile devices oftentimes contain a lot of information on a small display.”
Id. ¶ 2. The Specification also explains that “[v]iewing small print or icons
on a display while driving can be difficult, and may require a driver to divert
his/her eyes” away from the road “for a longer period of time than may be
deemed safe.” Id. ¶¶ 2, 30. Hence, the invention endeavors to (1) detect that
“a mobile computing device is in motion by utilization of a location or
motion determining system, such as a GPS navigation and/or accelerometer
system,” and (2) simplify “a display of device functionalities” by
“modifying one or more displayed elements of the device user interface”
when motion is detected. Id. at 20 (Abstract).
According to the Specification, “a time threshold may be provided,
wherein [a] motion mode may be activated upon a detection of motion or
deactivated upon a detection of loss of motion for a specified minimum
amount of time.” Spec. ¶ 26. The Specification explains that “[s]uch an
error tolerance mechanism may provide a safeguard against a false motion

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed July 1, 2010; “Non-Final Act.” for the Non-Final Office
Action, mailed July 9, 2018; “Appeal Br.” for the Appeal Brief, filed
January 7, 2019; “Ans.” for the Examiner’s Answer, mailed March 5, 2019;
and “Reply Br.” for the Reply Brief, filed April 23, 2019.
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reading or measurement (e.g., false positive when motion is not sustained
or false negative when motion diminishes).” Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows (with formatting added for clarity):
1. A method for providing a user interface of a mobile
phone while the mobile phone is in motion as a result of
operation of a vehicle, the method comprising:
enabling a motion mode of the mobile phone;
while the mobile phone is in motion for a period of time
as a result of the operation of the vehicle, determining if the
motion mode of the mobile phone is enabled, and if the motion
mode of the mobile phone is enabled:
providing a user interface for controlling
a selectable functionality of the mobile phone;
detecting a motion state of the mobile phone;
determining if the motion state of the mobile
phone meets a prescribed threshold for a period of time;
and
if the motion state of the mobile phone meets the
prescribed threshold for the period of time,
activating the enabled motion mode of the
mobile phone and,
upon activating the enabled motion mode of
the mobile phone, altering the user interface when
displayed on the mobile phone by simplifying one
or more characteristics of the user interface for
controlling the selectable functionality of the
mobile phone;
after simplifying the one or more characteristics
of the user interface for controlling the selectable
functionality, receiving user input by interfacing with
the simplified one or more characteristics displayed on
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the mobile phone for controlling the selectable
functionality;
continuing use of the mobile phone by using the
selectable functionality associated with the one or more
of the simplified characteristics of the user interface so
long as the mobile phone meets the prescribed threshold;
and
upon determining the mobile phone no longer
meets the prescribed threshold, displaying the one or
more characteristics of the user interface for controlling
the selectable functionality of the mobile phone as
unaltered; and
if the motion mode of the mobile phone is not enabled,
providing the user interface as unaltered for controlling the
selectable functionality of the mobile phone regardless of
whether the prescribed threshold is met.
Claims App. 3–4.3
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103(a),4 the
Examiner relies on the following prior art:

3 We cite to the Claims Appendix (“Claims App.”) filed January 22, 2019.
4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
Because the filing date for Application 12/828,858 predates the AIA’s
amendment to § 103, this decision refers to the pre-AIA version of § 103.
Name Reference Date
Bednasz US 2005/0239479 A1 Oct. 27, 2005
Keohane et al. (“Keohane”) US 2007/0026850 A1 Feb. 1, 2007
Ayoub et al. (“Ayoub”) US 2007/0124046 A1 May 31, 2007
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The Rejections on Appeal
Claims 1–4, 10–15, 18, and 20–24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bednasz and Ayoub. Non-Final Act. 3–12.
Claims 5, 7, 8, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bednasz, Ayoub, and Keohane. Non-Final Act. 12–15.
ANALYSIS
We have reviewed the § 103(a) rejections in light of Appellant’s
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we agree with Appellant’s arguments that the
Examiner erred in finding that the cited portions of the references teach or
suggest the claimed subject matter. We add the following to address and
emphasize specific findings and arguments.
The § 103(a) Rejection of Claims 1–4, 10–15, 18, and 20–24
INDEPENDENT CLAIMS 1, 12, AND 20
As noted above, the § 103(a) rejection of independent claims 1, 12,
and 20 rests on the combination of Bednasz and Ayoub. See Non-Final
Act. 3–7, 10. Appellant argues that the Examiner erred in rejecting claims 1,
12, and 20 because the references fail to teach or suggest the following
limitation in claims 1 and 20 and a similar limitation in claim 12:
“determining if the motion state of the mobile phone meets a prescribed
threshold for a period of time.” See Appeal Br. 10–12; Reply Br. 4–7.
In particular, Appellant contends that the claims concern “simplifying
the display of a mobile phone while its user is driving a vehicle” and that a
“time threshold” provides a “safeguard against a false motion reading.”
Appeal Br. 11 (citing Spec. ¶¶ 2, 5, 13, 26); see Reply Br. 5–6 (citing Spec.
¶¶ 26, 30). Appellant also contends that “Bednasz is completely silent
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regarding any period of time as a trigger event for implementing its hands-
free mode.” Appeal Br. 10; see Reply Br. 7. According to Appellant, the
claims determine that “the mobile phone is in a moving vehicle as a function
of speed and time and its user interface is simplified,” whereas Bednasz
determines that “the wireless device is in a moving vehicle proximate to a
hands-free zone as a function of location, distance, direction, or velocity;
and the device alerts the user and enables a hands-free mode – regardless
of any time interval.” Appeal Br. 11 (citing Bednasz ¶¶ 4, 23–24).
Further, Appellant asserts that “Ayoub is limited to a vehicle display
that can include phone controls but is completely silent regarding
determining if a mobile phone is in motion for a period of time or if the
motion state of the mobile phone meets a prescribed threshold for a period
of time.” Appeal Br. 12; see Reply Br. 6–7. Appellant contends that
Ayoub’s content-processing restrictions are “conditioned on such vehicle-
related conditions as mileage, fuel consumption, tire wear, VIN,
transmission status, engine temperature, etc.” Appeal Br. 12. Appellant
also contends that Ayoub’s content-processing restrictions are “completely
unrelated to the features associated with a motion state of a mobile phone
meeting a prescribed threshold for a period of time” according to the claims.
Id.
The Examiner finds that Bednasz “computes a velocity of the mobile
terminal” and that “there are at least two measurements of position with a
fixed or known time period between the measurements” in Bednasz. Ans. 5
(citing Bednasz Fig. 1). The Examiner explains that “[t]his fixed or known
time period elapsing between the at least two measurements of position is
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analogous to the claimed ‘. . . for a period of time,’ and, therefore, is
necessarily present” in Bednasz. Id.
Further, the Examiner finds that Ayoub “detects a speed from the
vehicle’s odometer.” Ans. 5–6 (emphasis omitted) (quoting Ayoub ¶ 73).
The Examiner reasons that “to determine the speed, the distance traveled as
measured by the odometer must be divided by some elapsed period of time.”
Id. at 6. The Examiner explains that “[t]his elapsed period of time is
analogous to the claimed ‘for a period of time.’” Id.
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Bednasz
and Ayoub teach or suggest “determining if the motion state of the mobile
phone meets a prescribed threshold for a period of time” as claimed. The
claimed “period of time” corresponds to a time threshold for evaluating the
“prescribed threshold.” See Appeal Br. 10–12; Reply Br. 4–7; Spec. ¶¶ 2,
26, 30. As the Specification explains, a time threshold provides a “safeguard
against a false motion reading or measurement (e.g., false positive when
motion is not sustained or false negative when motion diminishes).” Spec.
¶ 26.
In particular, we disagree with the Examiner that the period of time
between position measurements used to determine velocity in Bednasz
analogizes to the claimed “period of time,” i.e., a time threshold. We also
disagree with the Examiner that the period of time between odometer
measurements used to determine speed in Ayoub analogizes to the claimed
“period of time,” i.e., a time threshold. Using a time interval to determine
velocity or speed differs from using a time interval as a time threshold to
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safeguard against a false motion reading or measurement. Hence, we do
not sustain the § 103(a) rejection of claims 1, 12, and 20.5
DEPENDENT CLAIMS 2–4, 10, 11, 13–15, 18, AND 21–24
Claims 2–4, 10, and 11 depend from claim 1; claims 13–15 and 18
depend from claim 12; and claims 21–24 depend from claim 20. For the
reasons discussed for claims 1, 12, and 20, we do not sustain the § 103(a)
rejection of claims 2–4, 10, 11, 13–15, 18, and 21–24.
The § 103(a) Rejection of Claims 5, 7, 8, 16, and 17
Claims 5, 7, and 8 depend from claim 1; and claims 16 and 17 depend
from claim 12. On this record, the Examiner has not shown how the
additionally cited Keohane reference overcomes the deficiency in Bednasz
and Ayoub discussed above for claims 1 and 12. Hence, for the reasons
discussed for claims 1 and 12, we do not sustain the § 103(a) rejection of
claims 5, 7, 8, 16, and 17.
Because the preceding determinations resolve the § 103(a) rejections
for all pending claims, we need not address Appellant’s other arguments
regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d

5 In the event of continued prosecution, we leave it to the Examiner to
consider the propriety of a rejection under 35 U.S.C. § 112 ¶ 2 for claims 1
and 20. Each claim requires “enabling a motion mode of the mobile phone.”
Inconsistent with that requirement, however, each claim requires taking
action “if the motion mode of the mobile phone is not enabled,” i.e.,
“providing the user interface as unaltered for controlling the selectable
functionality of the mobile phone” regardless “whether the prescribed
threshold is met.” Although the Board may reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure § 1213.02.
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1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may
render a decision based on “a single dispositive issue”).
CONCLUSION
We reverse the Examiner’s decision to reject claims 1–5, 7, 8, 10–18,
and 20–24.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 10–15,
18, 20–24 103(a) Bednasz, Ayoub
1–4, 10–15,
18, 20–24
5, 7, 8,
16, 17 103(a)
Bednasz, Ayoub,
Keohane
5, 7, 8,
16, 17
Overall
Outcome
1–5, 7, 8,
10–18,
20–24
REVERSED