Lenovo ( Singapore) Pte. Ltd

Patent Trials and Appeals Board

Aug 20, 2021

2020003033 (P.T.A.B. Aug. 20, 2021)

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.
13/963,729 08/09/2013 Howard Locker RPS920130057USNP(710.243) 1136
58127 7590 08/20/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
WILSON, DOUGLAS M
ART UNIT PAPER NUMBER
2694
MAIL DATE DELIVERY MODE
08/20/2021 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 HOWARD LOCKER, MATTHEW LLOYD HAGENBUCH,
JOHN WELDON NICHOLSON, STEVEN RICHARD PERRIN, and
SCOTT EDWARDS KELSO

Appeal 2020-003033
Application 13/963,729
Technology Center 2600

Before JEAN R. HOMERE, JASON V. MORGAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s Final rejection of claims 1, 3–11, and 13–20, which constitute
all of the claims pending. Claims App. Claims 2 and 12 have been canceled.
Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed Aug. 9, 2013 (“Spec.”); the Final
Office Action, mailed Apr. 26, 2019 (“Final Act.”); the Appeal Brief, filed
Sept. 26, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed Jan. 14, 2020
(“Ans.”), and the Reply Brief, filed Mar. 16, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “[A]pplicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Lenovo (Singapore) PTE. LTD. as
the real party in interest. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a method and
system for rendering on smaller device (300B) (e.g., a smart phone) selected
graphical content (302) displayed on larger device (300A) (e.g., a tablet).
Spec. ¶¶ 3, 30. Figure 3, reproduced below, is useful for understanding the
claimed subject matter:

Figure 3 above illustrates larger device (300A) displaying object (301) from
which a user selects portion (302) to copy to smaller device (300B) by
physically positioning smaller device (300B) over object portion (302),
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which the user cuts or copies to transfer selected portion (302) to smaller
device (300B) for subsequent rendering. Id. ¶¶ 30, 31, 35.
Independent claim 1 is illustrative of the claimed subject matter:
1. A method, comprising:
displaying graphical content on a display screen of a first
device;
determining a position of a second device relative to the
display screen of the first device, wherein the determining
comprises using at least one of: touch-based technology
and an image capture device, and wherein the determining
comprises determining an orientation of the second device
relative to the display screen of the first device;
selecting a portion of the graphical content displayed on
the display screen of the first device;
the selecting a portion comprising identifying the portion
of the graphical content displayed on the display screen of the
first device that corresponds to and is within an outline,
identified based upon the determined position, of the second
device with respect to the display screen of the first device and
selecting the graphical content that corresponds to and is
within the outline; and
transferring, responsive to receiving a transfer
indication, the selected portion of the graphical content
displayed on the display screen to one or more devices, wherein
the transferring comprises storing the selected portion of the
graphical content on the one or more devices.

Appeal Br. 23 (Claims App.) (emphasis added).

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III. REFERENCES
The Examiner relies upon the following references as evidence.3
Name Reference Date
Robertson US 2008/0150921 A1 June 26, 2008
Park US 2012/0208466 A1 Aug. 16, 2012
Dowd US 2013/0127734 A1 May 23, 2013

IV. REJECTIONS
The Examiner rejects claims 1, 3–11, and 13–20 as follows:
Claims 1, 3–7, 9, 11, 13–17, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Robertson. Final Act. 3–8.
Claims 8 and 18 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Robertson and Dowd. Final Act. 8–9.
Claims 10 and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Robertson and Park. Final Act.
9–10.
V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 15–22 and the Reply Brief, pages 16–23.4 We are
unpersuaded by Appellant’s contentions. Except as otherwise indicated
herein below, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellant’s Appeal

3 All reference citations are to the first named inventor only.
4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv) (2019).
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Brief.5 Final Act. 3–10; Ans. 4–12. However, we highlight and address
specific arguments and findings for emphasis as follows.
Appellant argues that the Examiner erred in concluding that
Robertson renders claim 1 unpatentable. Appeal Br. 16. In particular,
Appellant argues that the Examiner failed to provide sufficient motivation,
supported by adequate evidentiary basis, as to how one of ordinary skill in
the art would combine the disparate teachings of Robertson to teach the
disputed limitations. Id. Further, Appellant argues that Robertson’s
disclosure of adaptively rendering on the display of the portable computing
device supplemental data for the portion of data set displayed on a larger
screen to provide a more detailed view of the data set portion rendered in an
identified area does not teach or suggest selecting a portion of dataset
displayed on a first device. Id. at 17–18 (citing Robertson ¶¶ 6–8).
According to Appellant, Robertson teaches at best identifying a portion of
the dataset and subsequently rendering the supplemental data thereto on a
small device, whereas the disputed claim limitation requires, in addition to
identifying the graphical content portion, selecting the same within the
outline. Id. at 18–19 (citing Robertson ¶¶ 42, 43). Additionally, Appellant
argues that Robertson does not teach or suggest storing on the small device
the selected portion of the graphical content. Id. at 20. Appellant argues that

5 See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the examiner’s findings).

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Robertson instead teaches storing the supplemental portion including a more
detailed view of the dataset portion, as opposed to storing the dataset portion
itself on the small device. Id. at 20–21 (citing Robertson ¶¶ 8, 28, 43).
Appellant’s arguments are not persuasive of reversible Examiner
error. As a preliminary matter, we are not persuaded by Appellant’s
argument that the Examiner’s proposed reason to combine the teachings of
Robertson is insufficient, thereby rendering the proposed combination
improper. The U.S. Supreme Court has held “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id. at 418. “[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited by KSR,
550 U.S. at 418). However, the Court also instructs that “the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418.
In addition, the Court instructs, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
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that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
This precedent controls, and the application of the cited legal principles to
the facts of this appeal provide us with the necessary guidance in affirming
this obviousness rejection. The Examiner relies upon a camera disclosed in a
first embodiment in Robertson to modify another embodiment in Robertson.
Ans. 4–5 (citing Robertson ¶¶ 6, 32). Accordingly, the Examiner concludes
that, at the time of the claimed subject matter, combining Robertson’s
teachings to achieve the claimed device would have been obvious to the
ordinarily skilled artisan because it would have yielded a system that
performs the following:
(1) to reduce the number of sensors required to determine the
position of the portable device with respect to the stationary
display, (2) eliminate the need for any position sensors on the
stationary display; and (3) leverage the camera contained in
most portable computing devices to eliminate the need for any
additional sensors to perform the required position sensing.
One of ordinary skill in the art would have a reasonable
expectation of success when replacing dual position sensors
111 A and 111 B with a single camera position sensor 111 B
because Robertson teaches making the same sensor change in
[0032].

Id. at 5–6.
We agree with the Examiner that the proposed combination of
Robertson’s teachings is supported by a preponderance of the evidence, and
the ensuing conclusion of obviousness is consistent with controlling
authorities.
Now, turning to Appellant’s argument that Robertson does not teach
using “selecting the graphical content that corresponds to and is within the
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outline,” we agree with the Examiner that Robertson’s disclosure of
identifying a data portion area in a larger display, and converting the
identified data portion teaches or suggests the disputed limitation. Ans. 7–8
(citing Robertson ¶ 42). More particularly, because the identification and
conversion of the data portion are precursors to transporting the data portion
to the smaller device, the ordinarily skilled artisan would readily appreciate
that said data portion must be selected beforehand.
Regarding the argument that Robertson does not teach storing the
selected data portion, we likewise agree with the Examiner that Robertson’s
disclosure of rendering the data portion on the display screen of the smaller
device teaches or suggests that the data portion was identified, selected,
converted, and stored at least temporarily (i.e., cached) before it can be
rendered on the smaller device. Id. at 9–11 (citing Robertson ¶¶ 25, 28, 42,
43).
Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Ans. 5.
Consequently, we are satisfied that, on this record, the Examiner has
established that Robertson teaches or suggests the disputed claim limitations.
Because we are not persuaded of Examiner error, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Robertson.
Regarding the rejections of claims 3–11 and 13–20, because Appellant
does not present separate patentability arguments or reiterates substantially
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the same arguments as those previously discussed for the patentability of
claim 1 above, claims 3–11 and 13–20 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
We affirm the Examiner’s rejections of claims 1, 3–11, and 13–20.

VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 9, 11, 13–
17, 20 103 Robertson
1, 3–7, 9, 11,
13–17, 20
8, 18 103 Robertson, Dowd 8, 18
10, 19 103 Robertson, Park 10, 19
Overall
Outcome
1, 3–11, 13–
20

VIII. TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED