7844915 et al.

Patent Trials and Appeals Board

Aug 29, 2019

90012332 - (R) (P.T.A.B. Aug. 29, 2019)

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.
90/012,332 05/30/2012 7844915 P4895USREX1/7777000010490 5963
150004 7590 08/29/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/29/2019 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 APPLE, INC.
Patent Owner and Appellant
____________

Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915 B21
Technology Center 3900
____________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD JR., and
JASON J. CHUNG, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

In the Decision on Remand dated March 27, 2018, we affirmed the
Examiner’s rejections. In particular, the Decision on Remand sustains the
rejections of claims 1, 5–8, 12–15, and 19–21 as anticipated by Hillis; claims
2, 9, and 16 as unpatentable over Hillis and Lira; claims 3, 4, 10, 11, 17, and
18 as unpatentable over Hillis and Makus; claims 1, 5–8, 12–15, and 19–21
as unpatentable over Nomura and Rubine; claims 2, 9, and 16 as

1 Issued to inventors Andrew Platzer and Scott Herz on November 30, 2010,
based on Application 11/620,717, filed January 7, 2007.
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unpatentable over Nomura, Rubine, and Lira; and claims 3, 4, 10, 11, 17,
and 18 as unpatentable over Nomura, Rubine, and Makus.2
Apple, Inc. (hereinafter “Appellant”), the real party in interest of
Patent 7,844,915 B2 (referred to by Appellant as “the ’915 patent”) requests
rehearing of this Decision under 37 C.F.R. § 41.52. Request for Rehearing
(“Request”) dated May 29, 2018. In this Request, Appellant contends the
Board overlooked certain elements of the Lira reference and limitations of
Appellant’s claims 2, 9, and 16. Request 2–13.
Claim 2 recites:
2. The method as in claim 1, further comprising:
rubberbanding a scrolling region displayed within the
window by a predetermined maximum displacement when the
scrolling region exceeds a window edge based on the scroll.
’915 patent, column 23, lines 42–46.
With respect to claim 2, Appellant contends:
1. The Board misapprehended both the disclosure of Lira and
Appellant’s disclosure because “‘a scrolled region’ exceeding a window
edge requires navigating beyond content” whereas Lira “is only concerned
with navigating within content.” Request 2.
2. The Board misapprehended the disclosure of Lira because “the
board relied on an interpretation of Lira’s Figs. 14A and 14B and the
corresponding descriptions and incorrectly concluded that Lira’s snap-to-
edge functionality is triggered when a threshold is exceeded” whereas “as

2 The Federal Circuit affirmed the Board’s determination that claims 1, 3–8,
10–15, and 17–21 are unpatentable, In re Apple, Inc., 685 F. App’x 907, 913
(Fed. Cir. 2017), so those claims and their patentability were not implicated
in the remand proceedings here.
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Lira makes explicitly clear, a snap-to-edge function is performed only when
the snap threshold is not exceeded.” Request 2–3.
3. The Board misapprehended the disclosure of Lira with respect
to the “rubberbanding” limitation of claims 2, 9, and 16 because “the board
relied on an interpretation of Lira’s Figure 14A that is completely
contradictory to Lira’s actual disclosure.” Request 3.
4. The Board “neglected to state with any particularity how the
combination would work and neglected to address all the evidence-of-
record” when the Board upheld “the Examiner’s rationale for combining
Lira with the remaining references.” Request 3.

ANALYSIS
Claim Interpretation
In defining the claim term “rubberbanding,” Appellant explains
“when the user scrolls beyond the edge of the content by a predetermined
distance, the content – like a rubberband – snaps back until the edge of the
content is realigned with the display area.” Request 3. Appellant further
cites to the ‘915 patent which discloses:
Rubberbanding a scrolled region according to the method
300 occurs by a predetermined maximum displacement value
when the scrolled region exceeds a display edge of a display of a
device based on the scroll. If a user scrolls content of the display
making a region past the edge of the content visible in the
display, then the displacement value limits the maximum amount
for the region outside the content. At the end of the scroll, the
content slides back making the region outside of the content no
longer visible on the display.
‘915 patent, column 7, lines 59–67 (emphases added).
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Consistent with the Examiner’s claim interpretation that “[t]he claims
recite ‘a window edge’ rather than a ‘content’ edge” (see Ans. 30), we note
that claim 2 does not require the claimed “scrolling region” include the
entire content, but is merely limited to a region “displayed within the
window.” See claim 2, ‘915 patent, column 23, lines 42–46. That is, any
portion of the entire content, i.e., a column that is displayed within the
window, constitutes a “scrolling region displayed within the window”
although other portions of the entire content outside the window may be
available for display upon scrolling. Additionally, the “scrolling region
exceeds a window edge” is not limited to the scrolling to the blank area
outside the entire content.
Teachings of Lira
We determined that Lira teaches aligning the logical column 1220
with the display window 1205 as the user stops scrolling, which causes the
logical column 1220 to snap into alignment with the display window. This
snapping back is described, with relation to Figure 14B, as follows:
Referring to Fig. 14B, in another implementation, the
vertical alignment control is enabled when the user lifts the pen
1200 from the display 1205. This causes the logical column 1220
to snap into alignment with the display window 1205 as the user
stops scrolling. The user can adjust the snap sensitivity by, for
example, setting the alignment control to snap to the nearest
logical column based on a user-defined snap threshold. If the
user’s scrolling does not exceed the threshold, which indicates
an intention to continue to view the text column 1220, the display
1205 centers the logical column 1210 as the pen 1200 is lifted
from the screen. If the user’s scrolling exceeds the threshold,
which indicates an intention to move beyond the boundary of the
logical column 1220, the display is snapped to the adjacent or
repositioned column.
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Lira page 15, lines18–28 (emphasis added).
As discussed on pages 5–6 of the Decision on Remand, we
determined that Figure 14A of Lira describes the mechanism by which the
user centers the desired column in the display window 1205 as a vertical
alignment control represented by vertical lines 1400 and defines the
horizontal motion threshold as the spacing between the bars 1400. Lira page
14, line 29–page 15, line 17; Fig. 14A. That is, “if this threshold is not
exceeded when the stylus 1200 is moved horizontally in one direction
outside vertical bars 1400 as the user scrolls column 1220, the column
slides/snaps back in the opposite direction of the horizontal movement to
move the column back and align it in the center of the display 1205.”
Decision on Remand 5–6. With respect to vertical alignment and as shown
in Figure 14B, Lira specifically discloses “If the user’s scrolling does not
exceed the threshold, which indicates an intention to continue to view the
text column 1220, the display 1205 centers the logical column 1210 as the
pen 1200 is lifted from the screen.” Lira page 15, lines 23–28. As
previously stated, sliding the content backward and snapping the column
back to re-center the logical column that is being scrolled within the window
meets the recited rubberbanding limitation. See Decision on Remand 6.

DISCUSSION
First Argument
We are not persuaded by Appellant’s assertion that “one of ordinary
skill in the art would understand that the claimed ‘scrolled region’ is
analogous to the total content being scrolled” and “Lira does not address
issues that arise when a user navigates beyond the total content being
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scrolled.” See Request 6 (referring to Lira’s Fig. 14B as displaying “content
from the center column and the right column in the main view when
scrolling content.”).
We do not find Appellant’s arguments commensurate with the scope
of claim 2 because claim 2 does not limit the broadly recited “a scrolling
region” to “the total content being scrolled.” See Request 6 (citing U.S.
Patent 7,844,915, column 7, lines 61–67). The Patent does not support
Appellant’s argument that the claimed scrolling region is limited or
analogous to the total content being scrolled because the Patent only
discloses, “If a user scrolls content of the display” wherein the composition
of the content is undefined. See U.S. Patent 7,844,915, column 7, lines 61–
67. Nor does the Patent expressly require, e.g., “the end of the scroll” or
when “the scroll has been completed,” to when the total content has been
scrolled. See In re Apple, Inc., 685 F. App’x at 912. The Patent and claim 2
only require that content of the display is scrolled and therefore fails to
support the narrow interpretation set forth by Appellant.
Our interpretation is consistent with the Patent’s varying discussions
relating to the region displayed within the window that is being scrolled by a
user. For example, the Patent broadly defines “scrolling” to include either
“horizontal or vertical” directional movement. See U.S. Patent 7,844,915,
column 1, lines 39–47. Similarly, in the specific context of discussing the
“rubberbanding” feature, the Patent contemplates that “at least one edge of
the display” can be “e.g., top and bottom edges, left and right edges,” which
supports reading the claimed “scrolled region” to include more than simply
the “total content being scrolled.” See id. at column 2, lines 11–21; id. at
column 7, lines 56–58 (“In some [rubberbanding] embodiments, the
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displacement values are set for top and bottom edges, left and right edges, or
all edges.”). The Patent also refers to Figure 4 and describes the window
410 that includes a number of display objects. See id. at column 8, lines 4–
17. The Patent further describes content being displayed in more than one
window and movement of display objects “in one or more other directions.”
See id. at column 8, lines 18–25. Although the Patent also includes another
embodiment depicted in Figures 6A–6D that appears to contemplate
scrolling to the end of displayed content before scrolling in the opposite
direction (see id. at column 9, lines 1–46 and 57–61; Request 6), we must
read the claim language in light of the entire specification. As such, our
interpretation of the claims and scope of the recited scrolling region
displayed within the window neither excludes nor is limited to the disclosed
embodiments. Accordingly, the “rubberbanding” recited in claim 2 includes
sliding content backwards in response to (1) scrolling in in any direction;
and (2) at a point before the entire content is displayed/scrolled.
Based on our review of Lira, we find that any column, having a
column width equal to the display window width, that is displayed and
snapped/moved into alignment within the display window constitutes “a
scrolling region displayed within the window,” as recited in claim 2. See
Ans. 30 (citing Lira page 11, lines 10–17)).3 The broadest reasonable

3 Although the Examiner relies only on the situation in which the width of
the displayed column is equal to the width of the display window, Lira’s
teaching on page 11 indicates that the width of the logical column is required
not to exceed the display window. That is, if the column is narrower than the
display window width, the column may be widened (or sized) to have a new
width that does not exceed the display window width. See Lira page 11,
lines 10–17. In other words, snapping the logical column into alignment
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meaning of the claimed “scrolling region” does not preclude scrolling a
portion of the total content, such as a column displayed within the window,
which is less than the total content comprising multiple columns. See
Decision on Remand 6 (citing Ans. 30). In Lira, moving the pen causes the
scrolled region (i.e., a part of the displayed column 1220) to move beyond a
window edge of the device based on the amount of scroll (i.e., pen
movement while column 1220 is centered in window 1205). See Lira page
15, lines 18–31. That is, the user scrolls a column and causes “a region past
the edge of the content” (i.e., the blank area beyond the width of a displayed
column) to become visible in the display window (i.e., the blank space or a
part of the next column is shown by a certain amount). Lira discloses the
maximum amount for the region outside the content (i.e., the threshold as set
by the user) limits the maximum amount outside the content (i.e., the
displayed column) the scroll must take place for the displayed column to
slide/snap back to be centered in the display window 1205 and to avoid
displaying the next column in the window. Lira page 15, lines 21–22. At
the edge of the scroll, Lira slides back (i.e., snaps back) the content (i.e., the
column) to make the region outside of content (i.e., the next column or the
blank space beyond the width of the column between adjacent columns) no
longer visible (i.e., centering or repositioning the column within the display).
Lira page 15, lines 22–25.

with the display window when the edge of the column moves beyond the
window edge is applicable to the displayed column having a width that is
either less than or equal to the display window width.
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Second Argument
Appellant asserts claim 2 requires three elements: (1) “[a] window
edge;” (2) “[e]xceeding the window edge;” and (3) “[s]liding content in the
opposite direction of the scroll – sliding content backward – once the scroll
has been completed (e.g., rubberbanding).” Request 8. According to
Appellant, Lira’s Figure 14B does not show these elements because Lira’s
“snap-to-column function is based on a snap threshold” and not a
“‘rubberbanding’ effect when ‘the scrolled region exceeds a window edge.’”
Request 8–9 (citing Lira page 15, lines 22–25).
Based on our above analysis of Lira’s Figure 14B and its description
(Lira page 15, lines 18–31), we are not persuaded by Appellant that Lira
fails to disclose a “window edge” or our Decision improperly “analogized
Lira’s thresholds with the claimed window edge.” See Request 9. Our
Decision characterized Lira’s scroll threshold as the claimed “a
predetermined maximum displacement.” In other words, Lira’s “user-
defined threshold” sets the maximum amount of horizontal scroll deviation
permitted by the user as he scrolls vertically before the system brings the
next column into the display if the scrolling continues. But up to that
maximum displacement point, Lira teaches sliding content in the opposite
direction of the scroll when the user’s horizontal scroll movement causes the
displayed column or the “scrolling region displayed within the window” to
move past the display edge or “a window edge.” Decision on Remand 5; see
Lira page 15, lines 18–31. Based on Lira’s teachings, consistent with the
Order by the Federal Circuit (In re Apple Inc., 685 F. App’x 907, 916 (Fed.
Cir. 2017)), the displayed column is scrolled backward or snapped back to
be centered in the display window. See also Request 10.
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Third Argument
Appellant argues our reliance on Figure 14A of Lira, in addition to
Figure 14B, indicates that Figure 14B does not disclose “rubberbanding
when the scrolled region exceeds a window edge.” Request 11. Appellant
asserts our interpretation of Lira’s Figure 14A that a view is snapped to an
edge of a column when the threshold is exceeded (see Decision 5) is
incorrect and inconsistent with Lira’s disclosure. Request 12. According to
Appellant, the correct interpretation of Figure 14A of Lira relates to ignoring
any horizontal motion by the pen 1200 if the threshold is not exceeded, and
not to snapping the column back in the opposite direction if this threshold is
not exceeded. Id.
This argument, however, fails to consider Lira’s express teaching of
how the horizontal motion of the pen on the display, as the displayed column
1220 is scrolled, causes the displayed column to move/slide/snap back into
alignment if “a horizontal motion threshold (i.e., the spacing between the
bars 1400)” is not exceeded. See Lira page 15, lines 10–12. This disclosure
necessarily implies that the “scrolling region displayed within the window”
stays within the display (i.e., the displayed text does not move left or right
but remains centered) as the user actually scrolls the text while moving the
pen horizontally between bars 1400 and the movement is “within the
window by a predetermined maximum displacement” (i.e., the threshold is
not exceeded). See Fig. 14A of Lira. Our decision referred to this specific
situation in Figure 14A, which is further described explicitly with respect to
Figure 14B as lifting the pen 1200 from the display “causes the logical
column 1220 to snap into alignment with the display 1205.” See Lira page
15, lines 19–21. That is, the vertical alignment control, similar to the
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“horizontal motion threshold (i.e., the spacing between the bars 1400),”
keeps the column within the display window when the scrolling
region/column displaces/moves beyond the window edge when the
horizontal scroll/move is complete but stays within “a predetermined
maximum displacement.” In other words, similar to Appellant’s disclosure,
the displayed column in Lira “slides backward at the end of a scroll” when
the displayed column 1220 passes the edge of the display window 1205
based on the movements of pen 1200. See ’915 patent column 7, lines 59–
67 and column 9, lines 10–46.
Fourth Argument
Appellant contends our affirmance of the claim rejection over the
combination of Lira with Hillis or Nomura and Rubine was not based on
sufficient rationale or any explanation as to how the references “would work
together.” Request 12–13. Appellant further argues the Board did not
address an affidavit by Dr. Nieh “for linking the iphone’s success to the ’915
patent.” Request 13.
We note that our Decision provided a comprehensive analysis of the
proposed rationale for combining Lira with Hillis or Nomura and Rubine
that was based on the reasoning presented by the Examiner, as reproduced
below:
[W]e agree with the Examiner’s rationale that Lira’s disclosure
of snapping back the logical column 1220 in order to align and
center it teaches or suggests to one of ordinary skill in the art the
concept of bringing back the content into the display area when
the user scrolls the content past the edge of the display. Ans. 31.
The Examiner correctly reasoned that “a person of ordinary skill
in the art would have been prompted to implement the teachings
of Hillis or Nomura such that the ‘scrolled’ or ‘panned’ area is
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automatically and visually snapped back into alignment with the
window based on whether the scrolling exceeds a threshold.” Id.
Decision 7. Our decision also addressed the Examiner’s explanation that the
proposed combination would not be discouraged or require modifications
beyond the skill level of a skilled artisan. Decision 7–8.
Additionally, the Examiner’s proposed combination is based on
improving the scroll action of Hillis when scrolling is to be stopped or
slowed down at a predetermined position based on the user input or gesture
(see Hillis column 8, lines 63–9:6) or improving the map movement of
Nomura which takes place in the direction of movement of the finger and for
the same distance as finger movement is displayed (see Nomura ¶ 67). As
explained by the Examiner (Final Act. 37, Ans. 31), modifying Hillis with
Lira’s automatically snapping the displayed text back into alignment with
the window would have improved the scroll action of Hillis based on its
disclosed scroll gesture which may move the intended text out of the display
window or have the undesirable appearance of abrupt stopping of the scroll.
Similarly, the Examiner properly explained that limiting the scroll operation
by the direction and distance of the displayed finger movement, as taught by
the combination of Nomura and Rubine, would have been improved by
incorporating Lira’s automatically snapping the displayed text back into
alignment within the display window. See Final Act. 53–54, Ans. 31.
We observe that, other than pointing out how the direction of motion
in Lira results in the display of new content from a direction opposite to
Hillis and Nomura and Lira’s display of “internal boundaries within the
content” (see App. Br. 31), Appellant does not point to any evidence of
record that the resulting combination would be “uniquely challenging or
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difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–19 (2007)). As explained by the Examiner (Ans. 31–32),
choosing the direction of movement and display of new content “would have
been within the level of ordinary skill.”4 The Examiner’s findings are
reasonable because the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” because the skilled artisan
is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
420–21. We are persuaded the claimed subject matter exemplifies the
principle that “[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, 550 U.S. at 416.
We also note that the other evidence, including the related litigations5
and/or declarations, addresses the features recited in claim 1, which were
found by the Court to be unpatentable. See In re Apple, Inc., 685 F. App’x
at 913. We addressed this evidence as follows:
As explained by the Examiner, the secondary consideration and
the presented evidence of commercial success did not show “a
nexus with the claimed invention.” Ans. 32 (citing MPEP
§§ 716.01(b)–(c)). The Examiner correctly found that Appellant
failed to show “that the commercial success of the iPhone is due
to the claimed features of the ’915 patent and not to unclaimed

4 Appellant’s argument regarding the “internal boundaries within the
content” is addressed in detail in our analysis with respect to the First
Argument above.
5 Apple Inc. v. Samsung Electronics Co., Ltd., Samsung Electronics America,
Inc., and Samsung Telecommunications America, LLC., Case No. 11-cv-
1846 (N.D. Cal.).
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features. See MPEP §716.03” or “more than the mere fact of
copying Apple’s iPhone is necessary to make that action (of
copying) significant. See MPEP § 716.06.” Ans. 32–33.
Decision 9. However, to the extent those arguments relate to the
“rubberbanding” feature of claim 2, our decision stated that the Examiner
properly identified a lack of nexus between the alleged commercial success
and the recited feature. Decision 9; see also Ans. 32–33.

CONCLUSION
Patent Owner’s Request is granted to the extent that we have
reconsidered the Decision in light of the Request, but denied to the extent
that we do not modify the outcome of the Decision.
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).
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

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FOR PATENT OWNER:

DENTONS US LLP - APPLE
4655 EXECUTIVE DRIVE
SUITE 700
SAN DIEGO, CA 92121

FOR THIRD PARTY REQUESTER:

JOSEPH J. RICHETTI
BRYAN CAVE LLP
1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104