Ex Parte Anzures et al

Patent Trial and Appeal Board

Oct 30, 2017

13172649 (P.T.A.B. Oct. 30, 2017)

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.
13/172,649 06/29/2011 Freddy Allen Anzures 106842088101 (P4316USC1) 7685
150004 7590 11/01/2017
DENTONS US LLP - Apple
P.O. Box 061080
Wacker Drive Station, Willis Tower
Chicago, IL 60606
EXAMINER
TRAN, TUYETLIEN T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDDY ALLEN ANZURES, GREG CHRISTIE,
SCOTT FORSTALL, GREGORY NO VICK, STEVEN P. JOBS,
IMRAN CHAUDHRI, STEPHEN O. LEMAY,
PATRICK LEE COFFMAN, and ELIZABETH CAROLINE FURCHES
Appeal 2015-0017661
Application 13/172,6492
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
MICHAEL M. BARRY, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—10 and 13—32, which are all the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 An oral hearing was held in this appeal on January 10, 2017.
2 According to Appellants, the real party in interest is Apple Inc. (App. Br.
5).
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to “portable electronic devices, and more
particularly, to portable devices that access voicemail” (Spec. 13).
Exemplary claim 1 under appeal reads as follows:
1. A portable electronic device, comprising:
a touch screen display;
one or more processors;
memory; and
one or more programs stored in the memory and
configured to be executed by the one or more processors, the
one or more programs including instructions for:
displaying a list of voicemail messages;
detecting selection by a user of a respective
voicemail message in the list,
responding to the user selection of the respective
voicemail message by initiating playback of the user-
selected voicemail message;
displaying a progress bar for the user-selected
voicemail message, wherein the progress bar indicates
the portion of the user-selected voicemail message that
has been played;
detecting movement of a finger of the user from a
first position on the progress bar to a second position on
the progress bar; and
responding to the detection of the finger movement
by
restarting playback of the user-selected
voicemail message at a position within the user-
selected voicemail message corresponding
substantially to the second position on the progress
bar, and
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changing the indicated portion of the user-
selected voicemail message that has been played to
correspond substantially to the second position on
the progress bar.
The Examiner’s Rejections
Claims 1—9, 13—22, and 24—31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brackbill (US 2008/0207176 Al; Aug. 28,
2008), Bear (US 2005/0071437 Al; Mar. 31, 2005), and Gillespie (US
2002/0191029 Al; Dec. 19, 2002) {see Final Act. 2-6).
Claims 10, 23, and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brackbill, Bear, Gillespie, and Rosenberg (US
2006/0253210 Al; Nov. 9, 2006) {see Final Act. 7).
Claims 1—9, 13—22, and 24—31 stand alternatively rejected under
35 U.S.C. § 103(a) as unpatentable over Brackbill, Bear, and Hotelling (US
2006/0026521 Al; Feb. 2, 2006) {see Final Act. 7-12).
Claims 10, 23, and 32 stand alternatively rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brackbill, Bear, Hotelling, and Rosenberg {see
Final Act. 12).
ANALYSIS
Claim 1—6, 13 19, and 24—28
Reference Teachings
The Examiner finds Brackbill discloses the recited elements of the
portable electronic device recited in claim 1 except for managing voice mail
messages using a touch screen user interface and restarting playback of the
user-selected voicemail message, for which the Examiner relies on Bear
(Final Act. 2-4). Additionally, the Examiner finds Gillespie discloses the
process of “detecting movement of a finger of a user” (Final Act. 4). The
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Examiner further finds it would have been obvious to combine the teachings
of Brackbill with Bear and Gillespie in order “to provide an enhanced user
interface such as for handling voice mail” (citing Bear 112) and “to provide
an enhanced user interface” (citing Gillespie 17) (Final Act. 4).
Appellants argue modifying Brackbill with Bear does not teach or
suggest “detecting movement of a finger of the user” and “restarting
playback of the user-selected voicemail message at a position within the
user-selected voicemail message corresponding substantially to the second
position on the progress bar” because in Bear “the only disclosed manner of
playback of a voicemail message is by using buttons in the user interface,
not by interacting with the ‘progress bar 804’” (App. Br. 17). Appellants
further argue “Gillespie does not describe any slider that controls the
playback position for content” and only shows sliders that are used for
controlling “system parameters” (App. Br. 20; Reply Br. 7—9). Appellants
contend there are similar deficiencies in the combination of Brackbill, Bear,
and Hotelling and specifically argue “Hotelling also does not teach or
suggest displaying a progress bar for a voicemail message” and therefore
does not teach or suggest the above disputed claim limitations related to
restarting playback of a user-selected message (App. Br. 24).
We are not persuaded by Appellants’ contentions that the Examiner
erred because the rejection is based on the combination of the references.
Appellants attempt to individually distinguish Bear and Gillespie or Bear
and Hotelling, rather than addressing the combined teachings of the
references (see App. Br. 15—26). Each reference must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
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obviousness is not. . . that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Here, the Examiner relies on Bear as disclosing a voicemail manager
that is implemented on a touch screen panel (Ans. 14 (citing Bear 135, “the
monitor 191 can be integrated with a touch-screen panel or the like; the
touch screen panel can be physically coupled to a housing in which the
computing device 110 is incorporated, such as in a tablet-type personal
computer”)). Contrary to Appellants’ argument that Bear’s progress bar is
not a playback control (Reply Br. 7), the Examiner finds progress bar 804 of
Bear teaches the playback control on a display that includes a progress bar,
pause, previous, next, and stop buttons (Ans. 14 (citing Bear Fig. 8; H 52,
53, and 61)). Regarding the claimed progress bar on a touch screen, the
Examiner finds Gillespie teaches a playback control on a touch screen
display for user interaction {id. at 14—15 (citing Gillespie H 57, 77—79 and
Figs. 4, 8B)). Alternatively, the Examiner finds Hotelling discloses a touch
screen display that receives a user input in the form of movement gesture for
scrolling or moving the media up and down through a window (Final Act. 9
(citing Hotelling Figs. 23A—B, 1122); Ans. 15—16 (additionally citing
Hotelling 11 82, 113)).
As further explained by the Examiner (Ans. 15), the slider control of
Gillespie adjusts the progress parameter of Bear and suggests to the skilled
artisan the recited features of “detecting movement of a finger of the user
from a first position on the progress bar to a second position on the progress
bar” and “restarting playback of the user-selected voicemail message at a
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position within the user-selected voicemail message corresponding
substantially to the second position on the progress bar.” Similarly, the
Examiner explains the slider control and touch gesture of Hotelling suggest
interaction with the progress bar to control the playback of the selected
message, as required by the disputed claim limitations (Ans. 16).
Combination of References
Appellants contend the Examiner erred in rejecting the claims as
obvious over the cited references because claim 1 was relied on “as a guide
to piece together discrete elements culled from these different references, in
a manner according to the Applicants’ claim, which is impermissible
hindsight” (App. Br. 27). Appellants further argue that relying on Bear to
teach “detecting movement of a finger of the user from a first position” and
relying on Gillespie to teach “on the [progress] bar” and then returning to
Bear to teach “progress bar” is improper because “[t]he Final Office action
has clearly dissected the limitation down the middle and evaluated the
discrete elements in isolation” (App. Br. 28 (emphasis omitted)).
We are not persuaded that the proposed combination of references is
based on hindsight. It has been held that where the claimed subject matter
involves more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for
the improvement, a holding of obviousness must be based on “an apparent
reason to combine the known elements in the fashion claimed.” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417—18 (2007). Additionally, in KSR, the
Supreme Court stated that “[a] factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” Id. at 421 (citing Graham v. John Deere Co., 383
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U.S. 1, 36 (1966)). Nevertheless, the Court also qualified the issue of
hindsight by stating that “[rjigid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.” KSR, 550 U.S. at 421.
Cognizant of this precedent, we are satisfied that the portions of
Brackbill and Bear in combination with Gillespie or Hotelling, as relied
upon in the record before us, disclose nothing other than prior art elements
that perform their ordinary functions to predictably result in a voicemail
message playback interface according to Appellants’ claim 1. In the present
case, the Examiner relied on Bear “for teaching a graphical user interface for
voicemail manager with all the functions of a playback user interface”
whereas Gillespie “teaches a slider control on a touch screen display that
allows the user to interact directly with the slider control using finger input
device (e.g., see Figs. 4, 8B and [0077]; finger motion)” (Ans. 14, 18). As
further explained by the Examiner (Ans. 19), using Bear’s voicemail
playback interface in Brackbill’s voicemail manager on a portable device,
wherein a user can interact with the playback interface based on the finger
gesture on progress bar or slider control of Gillespie, would have been
obvious to one of ordinary skill in the art. We agree with the Examiner that
this articulated rationale is sufficient to justify this combination.
Claims 7—10, 20—23, and 29—32
Claim 7
Appellants contend the combination of Brackbill with Bear and
Gillespie does not teach or suggest displaying any icons or a progress bar for
adjusting a playback of the voicemail message, as recited in the base claim 1
(App. Br. 30). Appellants further contend the proposed combination does
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not teach or suggest “detecting selection by the user of a backup icon;
responding to the user selection of the backup icon by backing up the
playback of the user-selected voicemail message by a predefined amount;
detecting selection by the user of a speed up icon” and “responding to the
user selection of the speed up icon by increasing the playback speed of the
user-selected voicemail message,” as recited in claim 7 (App. Br. 30-31).
Appellants present similar arguments to challenge the combination of
Brackbill with Bear and Hotelling (App. Br. 32—33). Appellants further
contend the proposed combination is not supported by a properly articulated
reasoning and is based on impermissible hindsight (App. Br. 34—36).
In response, the Examiner explains that Brackbill was relied on as
disclosing the functionalities associated with skipping forward or backward,
backing up, and speeding up the playback of the user-selected voicemail
message (Ans. 20-21 (citing Brackbill 1 30)), whereas Bear was relied on
for disclosing on-screen playback controls (Ans. 21 (citing Bear || 52, 53,
and 61; Fig 8)). We agree with and adopt as our own the findings and
reasoning of the Examiner. Contrary to Appellants’ assertion, the rejection
is based on the combination of the references and supported by articulated
rationale. Additionally, the Examiner did not simply rely on the findings
related to the limitations recited in the claim, but mapped the recited
limitations of claim 7 to the teachings of the applied prior art (Ans. 20—24).
See also In re Keller, 642 F.2d at 425.
Claim 10
Appellants contend the patentability of claim 10 based on the same
arguments presented regarding the combination of Brackbill with Bear and
Gillespie or Brackbill with Bear and Hotelling and further argue Rosenberg
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does not cure the deficiencies of the proposed combination (App. Br. 31, 33—
34). Based on the same reasoning and analysis discussed above, we also
remain unpersuaded that the Examiner erred in rejecting claim 10.
CONCLUSION
Based on our analysis above, we are unpersuaded of Examiner error in
rejecting claims 1, 7 and 10. Accordingly, we sustain the 35 U.S.C. § 103(a)
rejection of these claims, as well as the remaining claims that are not
separately argued (see App. Br. 13—36).
DECISION
We affirm the decision of the Examiner to reject claims 1—10 and 13—
32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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