Apple Inc.

Patent Trials and Appeals Board

Feb 25, 2022

2021005413 (P.T.A.B. Feb. 25, 2022)

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. 15/272,419 09/21/2016 Imran A. Chaudhri P28722US5/63266-7449- US 1025 61725 7590 02/25/2022 Morgan, Lewis & Bockius LLP (PA)(Apple) 1400 Page Mill Road Palo Alto, CA 94304-1124 EXAMINER STITT, ERIK V ART UNIT PAPER NUMBER 2145 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IMRAN A. CHAUDHRI, FREDDY A. ANZURES, CHANAKA G. KARUNAMUNI, NICHOLAS V. KING, HOAN PHAM, WAN SI WAN, GIANCARLO YERKES, DARIN B. ADLER, JUSTIN N. WOOD, ROBERTO GARCIA, SOIN SHEDLOSKY, JAMES A. DE GUERRE, and BETHANY BONGIORNO Appeal 2021-005413 Application 15/272,419 Technology Center 2100 Before JASON V. MORGAN, MICHAEL J. STRAUSS, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-13 and 15-30. We have jurisdiction under 35 U.S.C. § 6(b). 1 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. Appeal 2021-005413 Application 15/272,419 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to “[d]evices, methods, and graphical user interfaces for messaging.” Spec., Title. Claim 1, reproduced below, is illustrative of 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 an electronic device with a display and a touch-sensitive surface cause the electronic device to: display a messaging user interface on the display, the messaging user interface including: a conversation transcript of a messaging session, comprising messages previously transmitted between a user of the electronic device and at least one other user, a message-input area, a search affordance, and a keyboard; while displaying the messaging user interface that includes the conversation transcript, the message-input area, the search affordance, and the keyboard, detect an input that activates the search affordance; in response to detecting the input that activates the search affordance, replace the keyboard with a search user interface that is concurrently displayed with the message-input area and conversation transcript, the search user interface including a search field, concurrently displayed with the message-input area, and a plurality of suggested content items, wherein the plurality of suggested content items are displayed in response to Appeal 2021-005413 Application 15/272,419 3 detecting the input that activates the search affordance and prior to detecting entry of any input in the search field; while displaying the search user interface, detect an input that selects a first content item in the plurality of suggested content items; and, after detecting the input that selects the first content item in the plurality of suggested content items: cease to display the search user interface, display the first content item in the conversation transcript within the messaging user interface, and transmit the first content item to one or more electronic devices that correspond to the at least one other user included in the messaging session, wherein the one or more electronic devices display the first content item in a conversation transcript that corresponds to the messaging session. Appeal Br. 31-32 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Missig US 2015/0067519 A1 Mar. 5, 2015 Langholz US 2015/0312182 A1 Oct. 29, 2015 Martin US 2016/0092402 A1 Mar. 31, 2016 Ahuja US 2016/0286028 A1 Sept. 29, 2016 Kim US 2017/0308298 A1 Oct. 26, 2017 Appeal 2021-005413 Application 15/272,419 4 REJECTIONS Claims 1, 2, 4-7, 12, 13, 15, 17-20, 25, 26, and 28 are rejected under 35 U.S.C. § 103 as obvious over Ahuja and Kim. Final Act. 7-16.2 Claims 3, 16, and 27 are rejected under 35 U.S.C. § 103 as obvious over Ahuja, Kim, and Martin. Final Act. 16-22. Claims 8-11 and 21-24 are rejected under 35 U.S.C. § 103 as obvious over Ahuja, Kim, and Langholz. Final Act. 22-26.3 Claims 29 and 30 are rejected under 35 U.S.C. § 103 as obvious over Ahuja, Kim, and Missig. Final Act. 26-29. OPINION The Obviousness Rejection of Claims 1, 2, 4-7, 12, 13, 15, 17-20, 25, 26, and 28 over Ahuja and Kim The Examiner finds Ahuja and Kim teach all limitations of claim 1. Final Act. 8-12; see also Ans. 3-7. The Examiner finds Ahuja teaches most limitations of claim 1. Final Act. 8-11; see also Ahuja Figs. 4A-4B. The Examiner finds “Ahuja does not explicitly teach replace the keyboard with a search user interface that is concurrently displayed with the message-input area and conversation transcript, the search user interface including a search field, concurrently displayed with the message-input area.” Final Act. 11; see also Ahuja Fig. 4B. The Examiner finds “Kim Fig 1D shows emoji search interface with field item l18E.” Final Act. 11. The Examiner finds: 2 Claim 12 is not listed in the statement of the rejection on page 7 of the Final Office Action. However, claim 12 is discussed in the rejection on page 14 of the Final Office Action. 3 Claim 12 is mistakenly listed in the statement of the rejection on page 22 of the Final Office Action but is not discussed in the narrative portion of the rejection. Appeal 2021-005413 Application 15/272,419 5 It would have been obvious to one of ordinary skill in the art before the filing date of the invention to combine the instant messaging user interface of Ahuja with the instant messaging user interface of Kim so that users can more quickly find [an] emoji that they would like to include in an instant message. Final Act. 11. Appellant presents the following principal arguments: [C]laim 1 recites replacing the keyboard with a search user interface that concurrently displays three elements: (1) a search field, (2) the message-input area, and (3) a plurality of suggested content items displayed prior to detecting entry of any input in the search field. The Office Action does not identify concurrent display of these three elements in the cited references. Appeal Br. 14. “Neither the Office Action nor the Advisory Action clarify how [the] cited portion of Ahuja is compatible with the teachings of Kim.” Appeal Br. 16; see also Reply Br. 4-6. “[T]he Office Action does not identify any search field in Ahuja. Without a teaching of a search field, there can be no teaching of ‘prior to detecting any input in the search field’ as required by claim 1.” Appeal Br. 16. “Kim does not discuss displaying any emojis prior to executing the search, and thus fails to teach displaying suggested content items ‘prior to detecting any input in the search field’ as required by claim 1.” Appeal Br. 17; see also Reply Br. 6. “Kim appears to specifically require a text character keyboard to function (see, e.g., Kim paragraph 0040). Thus, absent hindsight reasoning or inventive activity, the two references cannot be logically combined to arrive at the claimed invention.” Appeal Br. 18; see also Appeal Br. 19 (“As it would be counterintuitive to add a search bar (e.g., from Kim) to a user Appeal 2021-005413 Application 15/272,419 6 interface that does not include a keyboard and does not involve or permit searching (e.g., the displayed emojis in Ahuja), and one skilled in the art would not be motivated to make such a combination because there is no discernable benefit to doing so, it is again submitted that the Office Action’s approach is reflective of hindsight reasoning.”), Reply Br. 6-8. 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). Appellant’s arguments persuade us that the Examiner erred in finding the cited references teach the key disputed limitation: in response to detecting the input that activates the search affordance, replace the keyboard with a search user interface that is concurrently displayed with the message-input area and conversation transcript, the search user interface including a search field, concurrently displayed with the message-input area, and a plurality of suggested content items, wherein the plurality of suggested content items are displayed in response to detecting the input that activates the search affordance and prior to detecting entry of any input in the search field; (emphases added) as recited in claim 1. In Figure 4B of Ahuja, the keyboard is still present (not replaced), and there is no search field. Final Act. 11; see also Ahuja Fig. 4B. Because there is not a search field in Figure 4B of Ahuja, we determine Ahuja does not suggest displaying suggested content items prior to detecting entry of any input in the search field. In Figure 1D of Kim, the keyboard is no longer present and suggested content items are displayed, however, the content items are only displayed after-and not prior to-detecting entry of input in the search field. Thus, Appeal 2021-005413 Application 15/272,419 7 we determine Kim also does not suggest displaying suggested content items prior to detecting entry of any input in the search field. We recognize that the Examiner finds there is a reason to modify Ahuja (Figure 4B) to include the search field of Kim (Figure 1D). See Final Act. 11 (“so that users can more quickly find emoji that they would like to include in an instant message”). Nonetheless, we determine there is still no teaching of displaying suggested content items prior to detecting entry of any input in the search field because according to Ahuja, the content items are not searchable, and the introduction of searchable content items based on Kim suggests the addition of Kim’s search field and the displaying of suggested content items after entry of input in the search field. Thus, we determine the Examiner’s reasoning lacks a rational underpinning because there is no suggestion to modify Ahuja to include searchable content items and a search field based on Kim, yet contrary to Kim, display suggested content items prior to detecting entry of any input in the search field. We, therefore, do not sustain the Examiner’s rejection of claim 1. We also do not sustain the Examiner’s rejection of claims 2 and 4-7, which depend from claim 1. Independent claim 12 recites the same key disputed limitation as claim 1. We, therefore, do not sustain the Examiner’s rejection of claim 12. We also do not sustain the Examiner’s rejection of claims 15, 17-20, and 25, which depend from claim 12. Independent claim 13 recites the same key disputed limitation as claim 1. We, therefore, do not sustain the Examiner’s rejection of claim 13. Appeal 2021-005413 Application 15/272,419 8 We also do not sustain the Examiner’s rejection of claims 26 and 28, which depend from claim 13. The Obviousness Rejection of Claims 3, 16, and 27 over Ahuja, Kim, and Martin Claims 3, 16, and 27 variously depend from claims 1, 12, and 13. We, therefore, do not sustain the Examiner’s rejection of claims 3, 16, and 27. The Obviousness Rejection of Claims 8-11 and 21-24 over Ahuja, Kim, and Langholz. Claims 8-11 and 21-24 depend from claims 1 and 12, respectively. We, therefore, do not sustain the Examiner’s rejection of claims 8-11 and 21-24. The Obviousness Rejection of Claims 29 and 30 over Ahuja, Kim, and Missig Claims 29 and 30 depend from claim 13. We, therefore, do not sustain the Examiner’s rejection of claims 29 and 30. CONCLUSION The Examiner’s decision to reject claims 1-13 and 15-30 is reversed. Appeal 2021-005413 Application 15/272,419 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 2, 4-7, 12, 13, 15, 17-20, 25, 26, 28 103 Ahuja, Kim 1, 2, 4-7, 12, 13, 15, 17-20, 25, 26, 28 3, 16, 27 103 Ahuja, Kim, Martin 3, 16, 27 8-11, 21-24 103 Ahuja, Kim, Langholz 8-11, 21-24 29, 30 103 Ahuja, Kim, Missig 29, 30 Overall Outcome 1-13, 15-30 REVERSED