Apple Inc.

Patent Trials and Appeals Board

Nov 23, 2020

2019005071 (P.T.A.B. Nov. 23, 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.
14/643,476 03/10/2015 Julien Jalon 27753-50081C1 1097
132324 7590 11/23/2020
F&P, LLP
2712 Augustine Drive
Suite 240
Santa Clara, CA 95054
EXAMINER
BELOUSOV, ANDREY
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIEN JALON and JULIE ROBERT

Appeal 2019-005071
Application 14/643,476
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JOHN A. EVANS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2019-005071
Application 14/643,476

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 20, 23–37, and 39–47. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to methods for managing
data including displaying an icon that provides preview content of a file
without launching the application that created the file. Spec. ¶¶ 5–6.
Claim 20 is illustrative:
20. A method, comprising:
at an electronic device with a display device and an input
device:
displaying, via the display device, a display region
that includes a plurality of icons that represent
corresponding files in the same folder of a file system,
the plurality of icons concurrently including a first icon
that includes a first content portion of a preview of a first
file and a second icon that includes a first content portion
of a preview of a second file;
detecting, via the input device, a first user input at
a location corresponding to a respective icon of the
plurality of icons; and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Apple, Inc.
Appeal Br. 3.
2 In this Decision, we refer to the Final Office Action dated June 26, 2018
(“Final Act.”), the Appeal Brief filed January 21, 2019 (“Appeal Br.”), the
Examiner’s Answer dated May 2, 2019 (“Ans.”), and the Reply Brief filed
June 19, 2019 (“Reply Br.”).
Appeal 2019-005071
Application 14/643,476

3
in response to detecting the first user input:
in accordance with a determination that the
first user input is detected over the first icon,
displaying, within the first icon, a user interface
control corresponding to the first icon that, when
activated, causes display, within the first icon in
the display region, of a second content portion of
the preview of the first file; and
in accordance with a determination that the
first user input is detected over the second icon,
displaying, within the second icon, a user interface
control corresponding to the second icon that,
when activated, causes display, within the second
icon in the display region, of a second content
portion of the preview of the second file.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Bhukhanwala US 5,831,617 Nov. 3, 1998
Adatia et al.
(“Adatia”)
US 2003/0103079 A1 June 5, 2003
Nakamura US 6,691,114 B1 Feb. 10, 2004
Kurtz et al.
(“Kurtz”)
US 2004/0189695 A1 Sept. 30, 2004

Appeal 2019-005071
Application 14/643,476

4
REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 20, 23–37, and 39–46 under 35 U.S.C. § 103 as obvious over
Bhukhanwala in view of Adatia and Kurtz. Ans. 3.
B. Claim 47 under 35 U.S.C. § 103 as obvious over Bhukhanwala in
view of Adatia, Kurtz, and Nakamura. Id. at 6.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant presents distinct arguments for (i) claim 20,
(ii) claims 44 and 45, and (iii) claim 47. Appeal Br. 5, 10, 11. We limit our
discussion to those claims. All other claims stand or fall with representative
claim 20.
Claim 20. The Examiner rejects claim 20 as obvious over
Bhukhanwala in view of Adatia and Kurtz. Ans. 3. The Examiner finds that
Bhukhanwala teaches, for example, a plurality of icons that include content
portion of a file previews. Id. at 3–4 (citing Bhukhanwala). The Examiner
Appeal 2019-005071
Application 14/643,476

5
finds that Bhukhanwala does not explicitly disclose, for example, detecting a
first user input at a location corresponding to a respective icon of the
plurality of icons and, in response to that input, displaying within the icon a
user interface control. Id. at 4.
The Examiner finds, however, that Adatia teaches a preview pane
similar to Bhukhanwala and teaches displaying a user interface control
within an icon. Id. at 4–5 (citing Adatia). The Examiner determines that it
would have been obvious to combine the teachings of Adatia and
Bhukhanwala “so as to not clutter up the screen with additional controls that
can readily be displayed as needed.” Id. at 5.
The Examiner also finds that Kurtz teaches a similar method for a
preview control and finds that Kurtz teaches displaying controls within an
icon. Id. at 5 (citing Kurtz). The Examiner determines that it would have
been obvious to combine the teachings of Bhukhanwala and Kurtz “to
display the first and second content portions of previews within icons, so as
to not clutter up the screen real estate with additional controls that can
readily be overlaid in the icon.” Id.
Appellant argues that Bhukhanwala teaches using controls to allow a
user to move to past versions of a file, but not to preview different portions
of the file, as claim 20 recites. Appeal Br. 6–7. The Examiner, however,
finds that Bhukhanwala describes its “container ‘movie’ object” as teaching
“multiple versions (i.e. contents) corresponding to a same file.” Ans. 7
(“Browsing through the older or newer versions of a file becomes intuitive
like browsing movies.” (Quoting Bhukhanwala 3:58–60)). Appellant does
not persuasively dispute this finding.
Appeal 2019-005071
Application 14/643,476

6
Moreover, the Examiner also finds that Kurtz teaches navigation of
contents of the same file. Ans. 8 (citing Kurtz ¶ 51). Appellant does not
persuasively address the Examiner’s use of Kurtz as teaching this recitation.
One cannot show nonobviousness by attacking references individually when
the rejection is based on a combination of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Appellant also argues that Kurtz does not teach displaying “within the
first icon” and “within the second icon” as claim 20 recites. Appeal Br. 7–8;
Reply Br. 2. The Examiner, however, determines that preview control 604
corresponds to a dynamic icon having displays within it (Ans. 8–9), and
Appellant does not persuasively dispute this point. Also, the Examiner relies
on Kurtz as teaching that directional controls may be placed within a user
interface element. Ans. 9. Appellant’s argument does not persuasively
address the Examiner’s combination of the teachings of Bhukhanwala
(teaching multiple icons as user interface elements) and Kurtz (teachings
placement of directional controls within a user interface element).
Appellant next argues that Adatia does not teach a second icon.
Appeal Br. 9. This argument is unpersuasive because it addresses Adatia
individually rather than addressing the references’ combined teachings. In re
Keller, 642 F.2d at 425. The Examiner relies on Bhukhanwala, not Adatia,
as teaching multiple icons. Ans. 10.
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejection of claims 20, 20, 23–37, and 39–43 and 46.
Claims 44 and 45. Claim 44 recites “[t]he method of claim 20,
wherein displaying the user interface control corresponding to the first icon
comprises: executing a first plug-in associated with a first creator application
Appeal 2019-005071
Application 14/643,476

7
that created the first file.” Appeal Br. 17 (Claims App.). Claim 45 requires,
for example, a different plug-in for the second icon. Id.
The Examiner rejects claims 44 and 45 as obvious over Bhukhanwala,
Adatia, and Kurtz. Ans. 6. The Examiner finds that Kurtz teaches executing
plug-ins. Id. (citing Kurtz); see also Ans. 10–11.
Appellant argues that Kurtz does not disclose, for example,
“executing a first plug-in associated with a first creator application that
created the first file” or “executing a second plug-in associated with a
second creator application that created the second file.” Appeal Br. 10. The
Examiner, however, finds that paragraphs 52 and 53 suggest that “third
parties (creator applications) for numerous file types may provide their own
code (plug-in) for previewing their associated files.” Ans. 10–11.
The Examiner’s position is supported by a preponderance of the
evidence. Kurtz teaches, for example, custom previewers for numerous file
types and teaches that “[t]hird parties are allowed to describe and
demonstrate their file types by providing code that can look inside the file
type.” Id. at 11 (emphasis modified). Kurtz’s reference to “their file types”
suggests that the third parties support the third party programs that created
the particular file types. In other words, the passage supports that Kurtz
suggests use of plug-ins associated with creator applications. See also Spec.
¶ 128 (explaining that plug-ins are software components akin to the “custom
previewers for numerous file types and non-file item types” that Kurtz
references). Appellant does not persuasively explain why the Examiner’s
reasoning is incorrect.
Because Appellant’s argument does not identify Examiner error, we
sustain the Examiner’s rejection of claims 44 and 45.
Appeal 2019-005071
Application 14/643,476

8
Claim 47. Claim 47 recites “[t]he method of claim 46, wherein the
second file includes an image and the user interface control corresponding to
the second icon includes a zoom button.” Appeal Br. 17 (Claims App.). The
Examiner rejects claim 47 as obvious over Bhukhanwala, Adatia, Kurtz, and
Nakamura. Ans. 6. The Examiner finds that Nakamura discloses a method
for navigating and inspecting an image similar to the other references and
teaches a user interface control including a zoom button. Id. at 6–7. The
Examiner determines that it would have been obvious to combine this
teaching with Bhukhanwala, Adatia, and Kurtz “so as to show additional
detail in a subset of an image area.” Id.
Appellant argues that a person of skill in the art would not combine
the teachings of Nakamura with the teachings of the other references
because Nakamura displays a generated search map rather than an existing
file. Appeal Br. 10–11. The Examiner finds, however, that Nakamura, like
the other references, relates to previewing images and controlling image
navigation. Ans. 11–12. The Examiner’s position is supported by the
preponderance of the evidence. See, e.g., Bhukhanwala Fig. 1B, 2A;
Nakamura Fig. 7A). Implementation of Nakamura’s zoom function into
Bhukhanwala is no more than predictable use of a prior art element
according to its established function. KSR Int’l, Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). Appellant does not provide persuasive argument to the
contrary.
Because Appellant does not identify Examiner error, we sustain the
Examiner’s rejection of claim 47.

Appeal 2019-005071
Application 14/643,476

9
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20, 23–37,
39–46
103 Bhukhanwala, Adatia,
Kurtz
20, 23–37,
39–46

47 103 Bhukhanwala, Adatia,
Kurtz, Nakamura
47
Overall
Outcome
20, 23–37,
39–47

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED