APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/304,776 11/26/2002 Jouni Ylitalo

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/304,776 11/26/2002 Jouni Ylitalo U1 (US) /27/2012 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT ART UNIT 4133 EXAMINER CHO, UN C PAPER NUMBER MAIL DATE DELIVERY MODE 06/27/2012 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)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte JOUNI YLITALO Appeal Technology Center 2600 Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. 134(a) from the Examiner s rejection of claims 1-12, 15, and Claims 13, 14, 16, and 17 have been indicated as containing allowable subject matter. App. Br. 3; Ans. 9. We have jurisdiction under 35 U.S.C. 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellant s invention performs software functions in a mobile station when keys are pressed down while the keypad is locked. See generally Abstract. Claim 1 is illustrative:

3 1. A method comprising: detecting that one or more keys are kept pressed down when a keypad is locked, the one or more keys being associated with a predetermined application view containing information that is to be retrieved during keypad lock, performing software functions for retrieving the information of the predetermined application view when said one or more keys are kept pressed down while the keypad is locked, and showing the retrieved information of the application view on one or more mobile station displays when said one or more keys are kept pressed down while the keypad is locked. THE REJECTIONS 1. The Examiner rejected claims 1-4, 9-12, 15, 18-21, and under 35 U.S.C. 103(a) as unpatentable over Carley (US 6,574,484 B1; June 3, 2003 (filed Dec. 2, 1999)), Robertson (US 2002/ A1; Oct. 31, 2002), and Kim (US 6,591,117 B1; July 8, 2003 (filed Dec. 29, 1998)). Ans The Examiner rejected claims 5 and 22 under 35 U.S.C. 103(a) as unpatentable over Carley, Robertson, Kim, and Masuda (US 2002/ A1; Jan. 10, 2002). Ans The Examiner rejected claims 6-8 and under 35 U.S.C. 103(a) as unpatentable over Carley, Robertson, Kim, and Martensson (US 5,241,583; Aug. 31, 1993). Ans Throughout this opinion, we refer to (1) the Appeal Brief filed June 8, 2009; (2) the Examiner s Answer mailed September 16, 2009; and (3) the Reply Brief filed November 16,

4 THE OBVIOUSNESS REJECTION OVER CARLEY, ROBERTSON, AND KIM The Examiner finds that Carley discloses every recited feature of representative claim 1 except for (1) executing an application when one or more keys are kept pressed down, and (2) showing retrieved information of the application view on one or more mobile station displays, but cites Robertson and Kim for respectively teaching these features in concluding that the claim would have been obvious. Ans. 3-5, Appellant argues that the cited prior art does not teach or suggest performing software functions for retrieving information of the predetermined application view while the keypad is locked as claimed. App. Br. 9-11; Reply Br. 3. Appellant adds that combining the references as the Examiner proposes not only undermines Carley s teachings, but also constitutes a new ground of rejection since the Examiner s reason to combine the references articulated in the Answer is said to be different from that indicated in the Final Rejection. App. Br ; Reply Br. 4-5, 7-9. Appellant also argues limitations of claim 9 noted below. ISSUES 1. Under 103, has the Examiner erred by finding that Carley, Robertson, and Kim collectively would have taught or suggested: (a) performing software functions for retrieving information of a predetermined application view when one or more keys associated with the view are kept pressed down while a keypad is locked as recited in claim 1? (b) determining in user profiles one or more keys to correspond with particular software functions for retrieving the application view as recited in claim 9? 3

5 2. Is the Examiner s reason to combine the teachings of Carley, Robertson, and Kim supported by articulated reasoning with some rational underpinning to justify the Examiner s obviousness conclusion? ANALYSIS Claims 1-4, 11, 12, 15, 18-21, and Based on the record before us, we find no error in the Examiner s obviousness rejection of representative claim 1. The Examiner finds that Carley detects that one or more keys are pressed down when a keypad is locked, and if the values entered via these keys match known emergency numbers stored in the phone s memory (e.g., 911), then the phone sends the emergency call even if the phone is locked. Ans. 4, 10 (citing Carley, col. 1, l. 63 col. 2, l. 21; col. 4, l. 49 col. 5, l. 12). Notably, the Examiner finds that Carley s placing an emergency call when the phone is locked executes an application (Ans. 4, 10) a reasonable finding given the functionality of the phone s controller 300 which (1) recognizes the entered values; (2) compares them to stored values in memory 310; and, if there is a match, (3) directs the phone to call the emergency number. See Carley, Abstract; col. 4, ll ; Fig. 5. This automatic controller-based functionality reasonably comports with the plain meaning of application, namely [a] program designed to assist in the performance of a specific task Carley also at least suggests an application view as claimed since, as Appellant acknowledges (Reply Br. 4), Carley displays a dialed number on the phone itself. See Carley, Figs. 1, 3 (showing 911 on display 110). Since this entered emergency number 911 is associated with the 2 MICROSOFT COMPUTER DICTIONARY 31 (5th ed. 2002). 4

6 application that enables bypassing the phone s locked status (see, e.g., Carley, Abstract), the phone s keys are therefore associated with this application view as claimed. Moreover, Carley at least suggests performing at least some software functions to retrieve associated information during this locked condition, particularly in view of the phone s controller functions noted above. Appellant s contentions to the contrary (App. Br. 10; Reply Br. 3) are unavailing, for they rely on non-limiting, exemplary implementations that are not claimed as the Examiner indicates. Ans Accordingly, Appellant s arguments are not commensurate with the scope of the claim, which does not preclude Carley s application view and its associated retrieved information. Nor are we persuaded of error in the Examiner s reliance on Robertson, for it was cited merely to show that it is known to make emergency calls when one or more keys are kept pressed down for a certain time period. Ans. 4, 10 (citing Robertson, 0031). We see no reason why skilled artisans would not apply such a technique to Carley s system as the Examiner proposes, for it would provide a user-friendly alternative to entering emergency numbers (e.g., 911 ) as the Examiner suggests. See Ans. 4. Although this stated rationale differs somewhat from that articulated in the Final Rejection as Appellant indicates (Reply Br. 7), the Examiner s rationale regarding the feature of placing emergency calls by pressing buttons down for a predetermined time nonetheless does not change the overall thrust of the rejection, which was based on the obviousness of 3 Accord Spec (noting that a local application may be for instance a calendar, a text message, a list of tasks, a timer, a date or another piece of local information in the mobile station ) (emphasis added). 5

7 providing this feature in Carley a system that likewise uses keys to make emergency calls. Compare Ans. 4 with Fin. Rej. 3. In short, the Examiner s proposed combination predictably uses prior art elements according to their established functions an obvious improvement. See KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In any event, Appellant s contention that the Examiner improperly entered new grounds of rejection (Reply Br. 7-8) is a petitionable not appealable matter and is therefore not before us. 4 We are also not persuaded of error in the Examiner s reliance on Kim (Ans. 4-5, 10-11) merely to show that it is known to inform the user by displaying a function that was selected via pressing particular keys. See Kim, col. 2, ll. 67; Figs. 1-2 (describing displaying a message indicating whether the user designates a phone s OK key as a store or recall key depending on whether the OK key was pressed after a numeric key). We see no reason why such a display of retrieved status information could not be displayed in connection with the application view of the Carley/Robertson system as the Examiner proposes, particularly in view of Carley s display that at least suggests indicating entered emergency call numbers when locked as noted previously. Although the Examiner s rationale to combine Kim with the other references differs somewhat from that articulated in the Final Rejection as Appellant contends (Reply Br. 7 (comparing Ans. 5 with Fin. Rej. 4)), the Examiner s rationale based on the obviousness of providing an indication on a display as suggested by Kim in the Carley/Robertson 4 See MPEP ( [T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. ); see also MPEP 1201 ( The Board will not ordinarily hear a question that should be decided by the Director on petition.... ). 6

8 system nevertheless does not change the overall thrust of the rejection. In any event, the Examiner s proposed combination predictably uses prior art elements according to their established functions an obvious improvement. See KSR, 550 U.S. at 417. We therefore find the Examiner s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner s obviousness conclusion. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2-4, 11, 12, 15, 18-21, and 26-30, not separately argued with particularity. Claims 9 and 10 We will not, however, sustain the Examiner s rejection of claim 9, which recites determining in user profiles one or more keys to correspond with particular software functions for retrieving the application view. As Appellant indicates (App. Br. 4; Reply Br. 11), the recited user profiles are associated with particular users and enable storing and controlling various settings for group functions. See, e.g., Spec (noting that changing the user profile enables the user to simultaneously affect several apparatus settings, such as ring type, tone, etc.); see also Spec (describing different user profiles and their associated software functions). Although the Specification does not explicitly define the term user profile, this description nonetheless informs our construction of the term and reasonably comports with its plain meaning, namely [a] computerbased record maintained about an authorized user of a multiuser computer 7

9 system. 5 Accordingly, the Examiner s mapping a particular storage location in Carley s memory to the recited user profile (Ans. 5, 12) does not reasonably comport with this construction when interpreted in light of the Specification. We are therefore persuaded that the Examiner erred in rejecting claim 9 and dependent claim 10 for similar reasons. THE REJECTION OVER CARLEY, ROBERTSON, KIM, AND MASUDA We will, however, sustain the Examiner s obviousness rejection of claims 5 and 22. Ans Despite nominally arguing these claims separately, Appellant reiterates similar arguments made in connection with claim 1 and alleges that Masuda fails to cure those purported deficiencies. App. Br We are not persuaded by these arguments, however, for the reasons previously discussed. THE REJECTION OVER CARLEY, ROBERTSON, KIM, AND MARTENSSON Regarding representative claim 6, the Examiner finds that the cited prior art discloses every recited feature except for interrupting performing software functions for retrieving the application view when a call arrives at the mobile station, but cites Martensson as teaching this feature in concluding that the claim would have been obvious. Ans. 8-9, Appellant argues that not only does Martensson fail to interrupt performing the recited software functions as recited in claim 6, these software functions are not performed during data transmission as recited in claim 8. App. Br Appellant adds that the Examiner s reason to 5 MICROSOFT COMPUTER DICTIONARY 544 (5th ed. 2002). 8

10 combine the references is improper and, in any event, constitutes a new ground of rejection. App. Br ; Reply Br. 8. ISSUES 1. Under 103, has the Examiner erred by finding that Carley, Robertson, Kim, and Martensson collectively would have taught or suggested: (a) interrupting performing software functions for retrieving an application view when a call arrives at the mobile station apparatus 6 as recited in claim 6? (b) performing the software functions during data transmission as recited in claim 8? 2. Is the Examiner s reason to combine the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner s obviousness conclusion? ANALYSIS Claims 6, 7, 23, and 24 On this record, we find no error in the Examiner s obviousness rejection of representative claim 6, which recites, in pertinent part, interrupting performing software functions for retrieving an application view when a call arrives at a mobile station. As the Examiner indicates, Martensson automatically disables a locked keyboard in a mobile phone responsive to a received incoming call to permit the user to answer the call. 6 We note in passing that no antecedent basis exists for the mobile station apparatus in claim 6. 9

11 Ans (citing Martensson, col. 5, ll ). Despite Appellant s arguments to the contrary (App. Br ), we see no reason why such a teaching could not be applied to the Carley/Robertson/Kim system as the Examiner proposes, for providing such an automatic interruption of the previously-described software functions would, among other things, enable the user to answer incoming calls. Although the Examiner s rationale to combine Martensson with the other references differs somewhat from that articulated in the Final Rejection as Appellant contends (Reply Br. 8 (comparing Ans. 8 with Fin. Rej. 7)), the Examiner s rationale based on the obviousness of interrupting software functions as suggested by Kim in the Carley/Robertson/Kim system nevertheless does not change the overall thrust of the rejection. In any event, the Examiner s proposed combination predictably uses prior art elements according to their established functions an obvious improvement. See KSR, 550 U.S. at 417. Accordingly, we find the Examiner s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner s obviousness conclusion. We are therefore not persuaded that the Examiner erred in rejecting representative claim 6, and claims 7, 23, and 24, not separately argued with particularity. Claims 8 and 25 We also sustain the Examiner s rejection of representative claim 8 reciting performing software functions for retrieving the application view during data transmission. We see no error in the Examiner s reliance on 10

12 Martensson s column 5, lines (Ans. 9, 14) for at least suggesting this feature since this passage teaches that a keyboard lock may be manually reset during incoming and outgoing calls, which the Examiner equates to the recited data transmissions. Although this reset is a manual operation as Appellant indicates (App. Br. 15), skilled artisans would nonetheless recognize that the underlying reset functionality would involve some software functions. Nor do we see any reason why this teaching of performing software functions during data transmissions could not be applied to those functions for retrieving an application view in the Carley/Robertson/Kim system as the Examiner proposes. We are therefore not persuaded that the Examiner erred in rejecting representative claim 8, and claim 25, not separately argued with particularity. CONCLUSION Under 103, the Examiner did not err in rejecting claims 1-8, 11, 12, 15, and 18-30, but erred in rejecting claims 9 and 10. ORDER The Examiner s decision rejecting claims 1-12, 15, and is affirmed-in-part. 11

13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a)(1)(iv). AFFIRMED-IN-PART rwk 12