Cranfill, Elizabeth Caroline Furches. et al.

Patent Trials and Appeals Board

Mar 3, 2020

13849634 - (D) (P.T.A.B. Mar. 3, 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.
13/849,634 03/25/2013 Elizabeth Caroline Furches Cranfill 18814-0181005 4276
26183 7590 03/03/2020
FISH & RICHARDSON P.C. (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
SMITH, BENJAMIN J
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELIZABETH CAROLINE FURCHES CRANFILL,
DAVID HELLER, JEFFREY ROBBIN, ALAN C. CANNISTRARO,
WILLIAM MARTIN BACHMAN, TIMOTHY B. MARTIN,
MATT EVANS, and JOE R. HOWARD

Appeal 2019-000283
Application 13/849,634
Technology Center 2100

Before CARL W. WHITEHEAD JR, DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 11–13, 16, 17, and 20–31, which
are all of the pending claims. Appeal Br. 17; Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Apple Inc.” Appeal Br. 1.
Appeal 2019-000283
Application 13/849,634

2
STATEMENT OF THE CASE
APPELLANT’S INVENTION
Appellant’s claimed subject matter “relates to displaying and
facilitating the manipulation of electronic text, for example, the text of an
electronic book (‘eBook’) being read on an electronic device.” Spec. 1,
ll. 13–14. Claim 1, reproduced below with added emphasis, is illustrative of
the claimed subject matter.
1. A method of presenting information, the method
comprising:
presenting, within an electronic book reader application on an
electronic device, a representation of an electronic book that
includes an electronic representation of a paper page;
enabling an interaction with the electronic representation of the
paper page through a touch-sensitive control mechanism
associated with the electronic device to navigate through the
electronic book, wherein the electronic representation of the
paper page includes a page indicator that provides information
indicating the electronic representation of the paper page
currently presented;
detecting a first input provided through the touch-sensitive
control mechanism selecting the page indicator;
in response to the first input, displaying a progress bar
replacing the page indicator;
detecting a second input selecting a portion of the progress bar;
and
in response to the second input, presenting an electronic
representation of a second paper page that corresponds to the
selected portion of the progress bar.
Appeal Br., Claims Appendix.
Appeal 2019-000283
Application 13/849,634

3
REJECTIONS
Claims 1, 11, and 12 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 3–4.
Claims 1, 11, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Petschnigg (US 2010/0175018 A1; July 8, 2010),
Lattyak (US 8,793,575 B1; July 29, 2014), and Park (US 2010/0058228 A1;
Mar. 4, 2010). Final Act. 4–8.
Claims 16, 23, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Petschnigg, Lattyak, Park, and Tse
(US 2013/0021281 A1; Jan. 24, 2013). Final Act. 8–9.
Claims 17, 24, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Petschnigg, Lattyak, Park, Ryan (US 8,725,565 B1;
May 13, 2014), and Card (US 2003/0052900 A1; Mar. 20, 2003).
Final Act. 9–11.
Claims 21 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petschnigg, Lattyak, Park, and Trespass
(US 2005/0004949 A1; Jan. 6, 2005). Final Act. 12–13.
Claims 2, 3, 13, 22, 25, 26, 30, and 31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Petschnigg, Lattyak, Park,
and Kao (US 2009/0066701 A1; Mar. 12, 2009). Final Act. 13–16.
OPINION
35 U.S.C. § 112, ¶ 1, REJECTION OF CLAIMS 1, 11, AND 12
Claims 1, 11, and 12 are argued as a group for this rejection.
Appeal Br. 7 (heading). We select claim 1 as representative.
37 C.F.R. § 41.37(c)(1)(iv). We are unpersuaded of error in this rejection of
Appeal 2019-000283
Application 13/849,634

4
claim 1.
The disputed claim limitation is emphasized in reproduced claim 1
(supra 2) and recites: “detecting a first input provided through the
touch-sensitive control mechanism selecting the page indicator; in response
to the first input, displaying a progress bar replacing the page indicator.”
The Examiner and Appellant dispute the meaning of “progress bar.” The
Examiner finds a “progress bar” conveys progress by extending a displayed
bar and, in turn, finds the Specification does not describe a progress bar
replacing a page indicator. Ans. 3–8. Appellant contends a “progress bar”
can convey progress by any means (i.e., is not restricted to the above
structure) and, in turn, contends the Specification describes a progress bar
replacing a page indicator. Appeal Br. 7–10; Reply Br. 1–3. For the
following reasons, we conclude the claimed progress bar is a diagrammatic
representation of progress and the Specification does not describe such an
element replacing a page indicator.
A general dictionary shows “progress” and “bar” are respectively
understood as meaning “a movement toward a goal” and “a relatively long,
evenly shaped piece.” Dictionary.com (https://www.dictionary.com/browse/
progress?s=t and https://www.dictionary.com/browse/bar?s=t) (last visited
Feb. 18, 2020); see also Phillips v. AWH Corp., 415 F.3d 1303, 1318
(Fed. Cir. 2005) (en banc) (use of dictionaries to interpret a claim term).
These meanings of “progress” and “bar,” when compounded, convey an
element that represents progress via a bar shape. The same general
dictionary defines a “progress bar” (“noun Digital Technology”) as “a
graphical element that illustrates the percentage of a computer task that is
complete: The progress bar stopped moving when the program was about
Appeal 2019-000283
Application 13/849,634

5
halfway downloaded.” Dictionary.com (available at https://
www.dictionary.com/browse/progress-bar?s=t) (last visited Feb. 18, 2020).
We accordingly construe the plain meaning of “progress bar” to be a
diagrammatic representation of progress.
For the foregoing reasons, we construe the claimed progress bar as a
diagrammatic representation of progress. Having reviewed the present
application for such an element, we find no written description of a progress
bar that replaces a page indicator.
Appellant contends the application describes a “scrubbing bar” that
could be understood as a progress bar and replaces a touched page indicator.
Appeal Br. 9–10; Reply Br. 1–3; see e.g., id. at 2 (“person of skill in the art
. . . would have understood that the two terms could refer to the same item”).
In support, Appellant further contends the application describes a progress
bar as merely “indicat[ing] which portions of the electronic publication have
been read” and, therefore, the scrubbing bar needs nothing more to be
construed as a progress bar. Reply Br. 1 (quoting Spec. 4, ll. 29–31).
We are unpersuaded because the scrubbing bar is not a diagrammatic
representation of progress,2 but rather a textual representation of the reader’s
current location in the document; e.g., it provides a pop-up window
(Spec. 42, ll. 20–22) or overlay (Fig. 8A) stating the currently read chapter.
See also Appeal Br. 9 (addressing the pop-up window); Reply Br. 2
(addressing the overlay). The foregoing Specification statement that a
“progress bar indicates which portions of the electronic publication have

2 The invention’s only diagrammatic representation of progress is a “relative
indicator” that changes the displayed heights of the open book’s left and
right stacks of pages to represent the location of the current page (e.g., equal
heights represent the book’s half way location). Spec. 55, ll. 17–24.
Appeal 2019-000283
Application 13/849,634

6
been read” (Spec. 4, ll. 29–31) does not express a clear intent to newly
define a “progress bar” by omitting its diagrammatic representation of
progress (which would render the scrubbing bar as a “progress bar”). See
Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”).
For the foregoing reasons, we sustain the rejection of claims 1, 11,
and 12 under 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 103(a) REJECTION OF CLAIMS 1, 11, 12, AND 20
OVER PETSCHNIGG, LATTYAK, AND PARK
Appellant argues claims 1, 11, 12, and 20 as a group for this rejection.
Appeal Br. 10. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). We are unpersuaded of error in this rejection of claim 1.
Appellant contends the Examiner’s proposed combination of Lattyak
and Park does not suggest the claimed replacing of a page indicator with a
progress bar. Appeal Br. 10–15; Reply Br. 4–5. Specifically, Appellant
contends that, because Lattyak’s cited progress gauge 202 concurrently
displays a page indicator and progress bar, the proposed combination’s
replacement of the page indicator with the progress bar would senselessly
duplicate the progress bar in a same display window. Id.
We are unpersuaded because Appellant does not persuasively rebut
the Examiner’s findings. The Examiner finds Lattyak’s page indicator and
progress bar are respective functions/elements of the progress gauge.
Final Act. 5–6; Ans. 9–10. The Examiner finds Park’s “multi-function”
Appeal 2019-000283
Application 13/849,634

7
element displays a first function/element until toggled, by a touch, to display
a second function/element. Final Act. 6; Ans. 9–10. The Examiner
concludes, in view of Park, it would have been obvious to likewise provide
Lattyak’s page indicator and progress bar as togglable faces of a
multi-function element. Ans. 9–10. The Examiner does not propose, as is
argued, additionally providing Lattyak’s progress bar as another separate
element of Lattyak’s progress gauge window.
For the foregoing reasons, we sustain the rejection of claims 1, 11, 12,
and 20 under 35 U.S.C. § 103(a).
35 U.S.C. § 103(a) REJECTION OF CLAIMS 17, 24, AND 28
OVER PETSCHNIGG, LATTYAK, PARK, RYAN, AND CARD
Appellant argues claims 17, 24, and 28 as a group for this rejection.
Appeal Br. 16–17. We select claim 17 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in
this rejection of claim 17.
Appellant contends Ryan does not teach or suggest the claimed
“automatically selecting a next electronic book present in a queue in the
electronic device” (claim 17). Specifically, Appellant acknowledges Ryan’s
cited prompt 452 invites an e-book reader to purchase a book, but contends
this feature requires the reader to “actively order” the book before it is
displayed and therefore does not “automatically” select a book.
Appeal Br. 16.
The Examiner responds:
The “automatic” term in the claim simply means that the user
does not have to take any more steps or provide any more input.
And this is exactly what Ryan discloses. Ryan . . . teaches the
process of acquiring the next issue of a periodical or the next
eBook in a series [Col. 12, Ln. 16-63, Figs. 4A, 48]. As cited by
Appeal 2019-000283
Application 13/849,634

8
Appellant, Ryan teaches that when the reader comes to the end
of periodical, eBook, or play, a “prompt 452 is provided to the
user”. When the user reaches the end of a publication and clicks
on the prompt “she clicks on the prompt to quickly acquire the
next play in the series.”
Ans. 11.
We agree with the Examiner. The claimed “automatically selecting a
next electronic book” requires only some automation in selecting a next
book. See e.g., Spec. 38, ll. 24–26 (“The arrangement of the available
eBooks also may be altered—either automatically and/or based on user
input.” (emphasis added)). Ryan’s prompt 452 automatically initiates the
purchase of a next book and thereby provides some automation.
Moreover, Appellant’s argument is not commensurate with the claim
scope. Appellant contends Ryan’s prompt 452 does not automatically
display the next book. Appeal Br. 16. Claim 17 does not, however, require
the book to be automatically displayed, but rather automatically selected.
By automatically initiating the purchase of a next book, Ryan’s prompt 452
automatically selects that next book.
For the foregoing reasons, we sustain the rejection of claims 17, 24,
and 28 under 35 U.S.C. § 103(a).
REMAINING 35 U.S.C. § 103(a) REJECTIONS
Because Appellant does not present separate arguments for the
rejections of claims 2, 3, 13, 16, 21–23, 25–27, and 29–31 under 35 U.S.C.
§ 103(a), we sustain these rejections.
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–3, 11–13, 16,
17, and 20–31.
Appeal 2019-000283
Application 13/849,634

9
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–6, 8–17,
19–21
§ 112 ¶ 1 (Written
Description)
1, 11, 12
1, 11, 12, 20 § 103(a) Petschnigg, Lattyak,
Park
1, 11, 12, 20
16, 23, 27 § 103(a) Petschnigg, Lattyak,
Park, Tse
16, 23, 27
17, 24, 28 § 103(a) Petschnigg, Lattyak,
Park, Ryan, Card
17, 24, 28
21, 29 § 103(a) Petschnigg, Lattyak,
Park, Trespass
21, 29
2, 3, 13, 22,
25, 26, 30, 31
§ 103(a) Petschnigg, Lattyak,
Park, Kao
2, 3, 13, 22,
25, 26, 30, 31

Overall
Outcome
1–3, 11–13,
16, 17, 20–31

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