Apple Inc.

Patent Trials and Appeals BoardDec 29, 2021

2021005072 (P.T.A.B. Dec. 29, 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. 15/995,040 05/31/2018 Anton M. Davydov P36863US1/77770000505101 6659 150004 7590 12/29/2021 DENTONS US LLP - Apple 4655 Executive Dr Suite 700 San Diego, CA 92121 EXAMINER REPSHER III, JOHN T ART UNIT PAPER NUMBER 2143 NOTIFICATION DATE DELIVERY MODE 12/29/2021 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 ANTON M. DAVYDOV, DANIEL J. WIERSEMA, and JANE E. KOO Appeal 2021-005072 Application 15/995,040 Technology Center 2100 Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Apple Inc. as the real party in interest. Appeal Br. 3. Appeal 2021-005072 Application 15/995,040 2 TECHNOLOGY The application relates to “graphical user interfaces for media capture applications” that “allow users to record media clips (e.g., video clips, audio clips).” Spec. ¶¶ 2–3. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: 1. A method of capturing media comprising: at an electronic device with a touch-sensitive display: detecting, by the electronic device, a tap and hold gesture input that includes a touch detected on the touch- sensitive display that is directed to a media capture affordance displayed at a first location on a graphical user interface presented on the touch-sensitive display; responsive to the tap and hold gesture input, initiating, by the electronic device, a media capture session using the electronic device in an unlocked media capture session state; responsive to the electronic device detecting a first lift gesture that includes liftoff of the touch from the first location on the graphical user interface during the media capture session, terminating, by the electronic device, the media capture session; and responsive to the electronic device detecting a slide gesture input that includes movement of the touch across the touch-sensitive display: displaying movement of the media capture affordance from the first location to a second location on the graphical user interface during the media capture session; changing the media capture affordance to a media capture lock affordance; Appeal 2021-005072 Application 15/995,040 3 maintaining the media capture session while the touch is maintained on the touch-sensitive display; and displaying, concurrently with the media capture lock affordance, a stop affordance at the first location that, when activated by a tap gesture input at the first location, terminates the media capture session. REFERENCES The Examiner relies on the following references as prior art: Name Number Date Kinoshita US 2014/0078371 A1 Mar. 20, 2014 Mumick US 2014/0108928 A1 Apr. 17, 2014 Rav-Acha US 2016/0241777 A1 Aug. 18, 2016 REJECTIONS The Examiner makes the following rejections under 35 U.S.C. § 103: Claims References Final Act. 1–3, 6–10, 13–17, 19, 20 Mumick, Kinoshita 2–11 4, 5, 11, 12, 18 Mumick, Kinoshita, Rav-Acha 11–14 ISSUES 1. Did the Examiner err in finding Mumick teaches or suggests “responsive to the electronic device detecting a slide gesture input that includes movement of the touch across the touch-sensitive display,” as recited in claim 1? 2. Did the Examiner err in finding Kinoshita teaches or suggests “displaying, concurrently with the media capture lock affordance, a stop affordance at the first location,” as recited in claim 1? Appeal 2021-005072 Application 15/995,040 4 ANALYSIS Mumick Mumick discloses a device with different recording modes, including a “push to talk (PTT) communication mode” and a “release to record (RTR) communication mode.” Mumick ¶ 43. “In the push to talk communication mode, . . . the recording initiates as soon as the user activates an interface element [e.g., presses a button] and terminates only when the user releases the interface element.” Id. ¶ 29. “In the release to record communication mode, after activation of the interface element, which initiates the recording of the media data, the user can either keep the interface element activated while recording or can release the interface element to continue recording.” Id. ¶ 29. Once the finger is released in the RTR mode, recording can be stopped by, for example, pressing a stop button. Id. ¶ 46. “The RTR communication mode is convenient for recording lengthy audio data.” Mumick ¶ 43. However, a user who started recording in the PTT mode might “realize[] that he/she is getting tired of holding a button midway through recording” and want to switch to the RTR mode, so Mumick discloses a user interface to do that. Id. ¶¶ 46, 44. This process is illustrated in Figures 4A–D of Mumick, reproduced below. Appeal 2021-005072 Application 15/995,040 5 In Mumick, “FIGS. 4A-4D . . . illustrate switching from the PTT communication mode to the RTR communication mode for recording the audio data.” Mumick ¶ 43; see also Appeal Br. 9 (summarizing Figures 4B– D of Mumick). The application includes three “interface regions 301” at the bottom of the touch screen, labeled 301a, 301b, and 301c. Mumick ¶ 41. In Figure 4A, the user can begin recording by pressing and holding the middle interface region 301b (captioned “PTT”). Id. ¶ 45. Figure 4B illustrates the Appeal 2021-005072 Application 15/995,040 6 changes to the user interface while recording, such as captioning the button “hold to record (HTR)/release to stop (RTS).” Id. “Although the user initiated the recording . . . in the push to talk (PTT) communication mode by pressing and holding the interface region 301b,” if “the user realizes that the recording will be lengthy, and wishes to continue recording without continually pressing the interface region 301b,” the user can switch to the release to record (RTR) mode. Id. To do this, “the user slides his/her finger . . . from the interface region 301b to the interface region 301c” (captioned “RTR”). Id. ¶ 46. The resulting screen in the RTR mode is shown in Figure 4C, including highlighting the “RTR” button located at 301c. Id. “When the user releases his/her finger from the interface region 301c,” the application “continues recording the audio data in the RTR communication mode.” Id. After the release, Figure 4D illustrates one example of how the screen could be updated, including making interface regions 301b and 301c a “tap to end (TTE)” button. Id. Using the TTE button in Figure 4D, “[t]he user can terminate the recording of the audio data by tapping on the interface region 301b or 301c.” Id. However, “[i]n another example, the user may also switch from the RTR communication mode to the PTT communication mode by pressing another interface region, for example, 301b associated with the PTT communication mode.” Id. ¶ 47. Kinoshita Kinoshita discloses two similar modes in a user interface “for capturing an image” using a touch screen. Kinoshita ¶¶ 2, 7. Figures 5B and 5C of Kinoshita are reproduced below. Appeal 2021-005072 Application 15/995,040 7 Figures 5B and 5C of Kinoshita illustrate a control interface including a “button 313” that starts in the middle of Figure 5B but can be slid to “a lock area 316” as shown in Figure 5C. Kinoshita ¶ 80; see also Appeal Br. 12–14 (summarizing Kinoshita’s Figure 5B and 5C). In Figure 5B, pressing the button 313 will execute an imaging command (e.g., to record) “only during the period that the photographer maintains his/her operation of the SW2 button 313.” Kinoshita ¶ 79. This is similar to Mumick’s “Press To Talk” mode, just using a camera to record images instead of a microphone to record sound. If the photographer wants to change modes, “[t]he photographer can slide the SW2 button 313 to a lock area 316,” in which case “the SW2 button 313 changes to a pressed state (a locked state)” in which “even if the Appeal 2021-005072 Application 15/995,040 8 photographer releases his/her finger from the SW2 button 313, . . . the imaging command is maintained” (e.g., a camera continues to record). Kinoshita ¶ 80. Once in the locked state and the user’s finger is no longer touching the touch screen, recording can be stopped by pressing and releasing button 313. Id. ¶¶ 80, 91. Alternately, the button 313 can be slid back to its original position to exit the lock state. Id. ¶ 91. Slide Gesture Claim 1 recites performing certain steps “responsive to the electronic device detecting a slide gesture input that includes movement of the touch across the touch-sensitive display.” Appellant argues Mumick fails to teach or suggest this limitation because Mumick discloses performing actions “in response to a slide and release gesture” which requires “a user must release a contact.” Appeal Br. 11. We are not persuaded by Appellant’s argument because it is not commensurate with the scope of the claim. A slide gesture can be ended by releasing the finger from the touch screen, and nothing in the claim requires the steps be performed in response to the beginning of a slide gesture rather than completion of a slide gesture. Concurrently Displaying Both Affordances Claim 1 recites “displaying, concurrently with the media capture lock affordance, a stop affordance at the first location that, when activated by a tap gesture input at the first location, terminates the media capture session.” The Examiner states, “Mumick is not relied upon to teach ‘displaying, concurrently with the media capture lock affordance.’ As indicated in the Appeal 2021-005072 Application 15/995,040 9 rejection, the limitation of displaying concurrently is considered to be taught by Kinoshita.” Ans. 18. Appellant argues that Kinoshita fails to teach or suggest this limitation. Appeal Br. 12–15. According to Appellant, in Figure 5C of Kinoshita, the only item depicted where button 313 used to be is “guide line 315,” which “indicat[es] the slide direction” but “does not stop the imaging operation.” Appeal Br. 14 (quoting Kinoshita ¶ 80). And in Figure 5C, the SW2 button 313 that does stop the imaging operation is no longer in its original position. Reply Br. 8. “Therefore, Kinoshita fails to disclose any type of user input directed to the first position (e.g., the position of the SW2 button [313] shown in FIG. 5B) that causes the SW2 button to be released.” Id. We agree with Appellant. The Examiner relies on Kinoshita alone for this limitation, and Kinoshita alone fails to disclose concurrently displaying a stop affordance at the first location and the media capture lock affordance at the second location. New Grounds of Rejection Under 37 C.F.R. § 41.50(b) Although we agree with Appellant that Kinoshita alone fails to teach the concurrent display of the two affordances at the claimed locations, the combination of Kinoshita and Mumick does teach or suggest this limitation. We therefore make the following new grounds of rejection using our authority under 37 C.F.R. § 41.50(b) based on the same references applied to the same claims. Except where otherwise addressed here, we rely on the Examiner’s previous findings and conclusions for the claims and limitations not disputed by Appellant in the briefs. Claim 1 is representative of the independent claims. Appeal 2021-005072 Application 15/995,040 10 In a passage not previously cited or discussed by the Examiner, Mumick discloses an alternative example that retains a way to switch back to the PTT mode: “In another example, the user may also switch from the RTR communication mode to the PTT communication mode by pressing another interface region, for example, 301b associated with the PTT communication mode.” Mumick ¶ 47. This teaches or suggests the concurrent display of both a stop affordance (e.g., the TTE interface at 301c) and a media capture lock affordance (e.g., the PTT interface at 301b). In Mumick’s example with the PTT interface at 301b (i.e., the first location), the TTE interface would be at 301c (i.e., the second location), which happens to be opposite from the order of claim 1 (i.e., the record/lock button at the second location and the stop button at the first location). However, Mumick emphasizes twice in the same sentence that this arrangement is merely an “example.” Mumick ¶ 47. Given that Mumick already discloses “a slide gesture” “from the interface region 301b to the interface region 301c” “to switch from the push to talk (PTT) communication mode to the release to record (RTR) communication mode” (Mumick ¶ 46) and returning to the PTT mode from the RTR mode (Mumick ¶ 47), it would have been obvious to a person of ordinary skill in the art to combine Mumick with Kinoshita’s sliding button to switch back and forth between modes. For example, given Mumick’s disclosure of sliding right to turn on the RTR mode, it would have been obvious and intuitive to slide the same button in the opposite direction (i.e., to the left) to turn off the RTR mode, which is what Kinoshita teaches. In particular, Kinoshita discloses sliding SW2 button 313 to the right (i.e., to lock area Appeal 2021-005072 Application 15/995,040 11 316) to engage the lock and sliding the same button “to its original position” on the left to release the lock. Kinoshita ¶¶ 80, 91. Given this combination with a sliding button that has been moved to the right and therefore occupies the position on the right (301c in Mumick’s Figure 4C, which is analogous to 316 in Kinoshita’s Figure 5C), it would have been obvious that Mumick’s TTE interface—shown occupying both 301b and 301c in Figure 4D—would be fitted to only occupy position 301b (i.e., the first location). This modification would not have been “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). To the contrary, Mumick already suggests that the TTE button could be shrunk from two spaces (301b and 301c as in Figure 4D) down to one space so that the other space can be occupied by an interface to return to the PTT mode. Mumick ¶ 47. The combination merely applies a more intuitive interface for returning to the PTT mode, which as noted above better compliments the interface for turning on the RTR mode. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (quotation omitted)). Thus, we agree with the Examiner that Kinoshita’s “single, easy-to-use slider element” “would provide a convenient and intuitive user interface” that “would better allow the user to understand . . . the gesture as it is performed, thereby increasing the ease of use of the system” and avoid Mumick’s complex “changing acronyms that the user must read, decipher, monitor for changes, and remember.” Ans. 27–28. Appeal 2021-005072 Application 15/995,040 12 Therefore, the combination of Mumick and Kinoshita renders claim 1 obvious in a new ground of rejection. OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1–3, 6–10, 13–17, 19, 20 103 Mumick, Kinoshita 1–3, 6–10, 13–17, 19, 20 1–3, 6–10, 13–17, 19, 20 4, 5, 11, 12, 18 103 Mumick, Kinoshita, Rav-Acha 4, 5, 11, 12, 18 4, 5, 11, 12, 18 Overall Outcome 1–20 1–20 TIME TO RESPOND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the Appeal 2021-005072 Application 15/995,040 13 decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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. § 1.36(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)