Apple Inc.

Patent Trials and Appeals Board

Nov 1, 2021

2021003524 (P.T.A.B. Nov. 1, 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.
14/641,298 03/06/2015 Lawrence Y. YANG P22832US2/77770000359102 1739
150004 7590 11/01/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
HOPE, DARRIN
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE Y. YANG, PATRICK L. COFFMAN,
and CRAIG M. FEDERIGHI
Appeal 2021-003524
Application 14/641,298
Technology Center 2100
Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–16 and 23–63.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 An oral hearing was held for this appeal on September 23, 2021.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 4.
3 Claims 17–22 have been canceled previously.
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Application 14/641,298

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CLAIMED SUBJECT MATTER
The claims are directed to “electronic devices that permit a user to
efficiently transition from the use of one device to another while maintaining
an overall sense of continuity.” Spec. ¶ 70. In situations where the user
accesses one application on a first device, upon transition of the user to a
second device, the second application is automatically launched “so that the
user may continue without loss of progress.” Id. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. A non-transitory computer readable storage
medium storing one or more programs, the one or more
programs comprising instructions, which when executed by one
or more processors of an electronic device with a display, cause
the electronic device to:
detect an external device, wherein the external device is
executing a first application, the first application in a state;
in response to detecting the external device executing the
first application, display, on the display, an affordance
corresponding to the first application and a visual indication of
the external device that is executing the first application,
including:
in accordance with a determination that the
external device is a first device, the visual indication of
the external device has a first appearance and is displayed
at a first location on the display; and
in accordance with a detern1ination that the
external device is a second device that is different from
the first device, the visual indication of the external
device has a second appearance that is different from the
first appearance and is displayed at the first location on
the display;
detect an input at a location of the displayed affordance;
and
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in response to the input, launch a second application, the
second application corresponding to the first application,
wherein the state of the second application corresponds to the
state of the first application.
Appeal Br. 35 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Momchilov US 2011/0138295 A1 June 9, 2011
Shaffer US 2011/0179386 A1 July 21, 2011
Parks US 2012/0290657 A1 Nov. 15, 2012
Mun US 2013/0120254 A1 May 16, 2013
Das US 2014/0171064 A1 June 19, 2014
Crandall US 2014/0282103 A1 Sept. 18, 2014
REJECTIONS
Claims 1, 7, 10, 11, 15, 16, 23–25, 31, 34, 35, 39–41, 47, 50, 51, and
55–57 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Das and
Crandall. Final Act. 2–20.
Claims 2, 8, 26, 32, 42, and 48 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Das, Crandall, and Shaffer. Final Act. 20–25.
Claims 3–6, 27–30, and 43–46 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Das, Crandall, and Mun. Final Act. 25–32.
Claims 9, 12–14, 33, 36–38, 49, and 52–54 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Das, Crandall, and Parks. Final
Act. 32–40.
Claims 58–63 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Das, Crandall, and Momchilov. Final Act. 40–44.
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Application 14/641,298

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OPINION
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we concur with
Appellant’s arguments concerning unpatentability under § 103. We add the
following to address and emphasize specific findings and arguments.
In rejecting claim 1, the Examiner relies on Das as disclosing the
recited steps to detect an external device, detect an input, and launch a
second application. Final Act. 2–4 (citing Das Figs. 9, 15, 1B, ¶¶ 67, 72, 73,
75, 86, 88, 89). The Examiner further relies on Crandall as disclosing
“display, . . . a visual indication of the external device that is executing the
first application” wherein the visual indication “has a first appearance and is
displayed at a first location on the display” or “has a second appearance that
is different from the first appearance and is displayed at the first location on
the display” based on a determination that the external device is a first
device or a second device, respectively. Final Act. 5–6 (citing Crandall
Figs. 2A, 28, ¶¶ 105, 107, 112, 195, 201, 203–205). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to use Crandall’s data sharing device in the Das context handoff device to
improve the device with reasonable expectation that this would result in a
context handoff device that could enable users to quickly and easily share
digital data (Crandall, See paragraph [0003]).” Final Act. 6.
Appellant contends that the Examiner erred by modifying Das with
Crandall’s disclosure of a file sharing system where “a user may send a data
set from a first device to a second device by, for example, sliding a finger
from first graphical representation 230 to first visual representation 2521 in
FIG. 28 of Crandall.” Appeal Br. 16. According to Appellant, “Crandall
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discloses displaying visual representations of the potential devices that may
receive the data set, irrespective of whether those devices are running any
particular application” instead of disclosing or suggesting that “the second
device is executing any applications at all, let alone displaying, on the first
device, a visual indication of a second device that is executing a first
application.” Id. at 16–17. Appellant asserts that
Thus, as discussed above, Crandall discloses transmitting
a data set from a first device to a second device by selecting a
first graphical representation of the data set and then selecting a
visual representation of a recipient device. However, Crandall
is silent as to “display[ing] . . . a visual indication of the
external device that is executing the first application,” as
required by claim 1. (Emphasis added.)
Id. at 17 (alteration in original).4
The Examiner responds by explaining that Crandall’s disclosure of
first touchscreen 220 in Figure 2A teaches the recited “a visual indication of
the external device that is executing the first application.” Ans. 8 (citing
Crandall ¶¶ 105, 107; Fig. 2A). The Examiner also explains that Crandall
teaches device 261 in Figure 2A and virtual environment map 2520 in
Figure 28 as the recited first and second appearances of the visual indication
corresponding to the first device and the second device displayed at the first
location. Ans. 8 (citing Crandall ¶¶ 195, 201, 203–205; Figs. 2A, 28).
Crandall discloses a data sharing system including “routing a data set
to a specific device in response to a data selection and a target selection.”
Crandall Abstract. As stated by Appellant, Appeal Br. 16, element 230 in
Figure 2A of Crandall is a graphical representation of a first data set on a

4 We do not address Appellant’s other arguments because this issue is
dispositive of the appeal.
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first screen which may be routed to a second display. Crandall ¶¶ 105–107.
Similarly, elements 2521 and 2522 in Figures 27 and 28 are visual
representations of external displays 260 and 2311, which are parts of virtual
environment map 2520. Crandall ¶ 201. However, as argued by Appellant,
Reply Br. 6, these representations are used for selecting a device where the
selected data set is to be routed. See Crandall ¶ 200. In other words, the
representation of the external devices is merely a destination for the data set
“irrespective of whether those devices are running any particular
application.” See Reply Br. 6.
The Examiner’s assertion that “Crandall does disclose and suggest
‘display[ing] . . . a visual indication of the external device that is executing
the first application’” (Ans. 11 (alteration in original, emphasis omitted)) is
not supported by evidence. The Examiner cites to the portions of Crandall
in paragraphs 107 and 295 where the visual representations are described as
thumbnail images or icons representing data. As such, the Examiner has not
identified any teachings in Crandall, or other applied references, to support
the assertion that “in response to detecting the external device executing the
first application, display, on the display, an affordance corresponding to the
first application and a visual indication of the external device that is
executing the first application,” nor do we find any teachings to that effect in
the cited portions of the references. See Ans. 10–12. That is, even if Das is
modified with Crandall to use a visual representation of a device, the
Examiner has not explained how the modification would provide a visual
indication of the device that is running the application and a first or a second
appearance for the visual indication of the external device according to a
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determination that the external device is a first or a second device, as
required by claim 1. See Ans. 12–13.
CONCLUSION
For the above reasons, we agree with Appellant that the Examiner’s
proposed combination does not teach or suggest the recited features of claim
1. The Examiner has not identified any teachings in the other applied prior
art references to cure the above-identified deficiency. Therefore,
Appellant’s arguments have persuaded us of error in the Examiner’s position
with respect to the rejections of independent claim 1, other independent
claims which recite similar limitations (see claims 23 and 24), as well as the
remaining claims dependent therefrom. See Appeal Br. 35–46 (Claims
App.).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 10, 11,
15, 16, 23–
25, 31, 34,
35, 39–41,
47, 50, 51,
55–57
103 Das, Crandall 1, 7, 10, 11,
15, 16, 23–
25, 31, 34,
35, 39–41,
47, 50, 51,
55–57
2, 8, 26, 32,
42, 48
103 Das, Crandall,
Shaffer
2, 8, 26, 32,
42, 48
3–6, 27–30,
43–46
103 Das, Crandall,
Mun
3–6, 27–30,
43–46
9, 12–14,
33, 36–38,
49, 52–54
103 Das, Crandall,
Parks
9, 12–14,
33, 36–38,
49, 52–54
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Application 14/641,298

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58–63 103 Das, Crandall,
Momchilov
58–63
Overall
Outcome
1–16, 23–63

REVERSED