Ex Parte Chaudhri

Patent Trial and Appeal Board

May 5, 2017

13489245 (P.T.A.B. May. 5, 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.
13/489,245 06/05/2012 Imran A. Chaudhri 106842051200 2876
(P11531US1)
69753 7590 05/09/2017
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
EXAMINER
AYAD, MARIA S
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
05/09/2017 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):
EOfficeL A @ mofo. com
PatentDocket @ mofo. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IMRAN A. CHAUDHRI
Appeal 2015-0079471
Application 13/489,2452
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER,
and MICHAEL J. ENGLE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5, 8, 9, and 11—20. Claims 6, 7, and 10 are
canceled. We have jurisdiction over the pending rejected claims under
35 U.S.C. § 6(b).
We affirm-in-part.
1 An oral hearing was held April 27, 2017.
2 Appellant identifies Apple Inc. as the real party in interest. (App. Br. 3.)
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Application 13/489,245
THE INVENTION
Appellant’s disclosed and claimed inventions are directed to browsing
through media tiles representing a playlist using quick view gestures.
(Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A portable multifunction device, comprising:
a display;
a touch-sensitive surface;
one or more processors;
a memory; and
one or more programs, wherein the one or more
programs are stored in the memory and configured to be
executed by the one or more processors, the programs including
instructions for:
playing back a media file initially selected from a
media playlist, each media file in the media playlist
having an associated media tile and is arranged to be
played back in a predetermined order;
displaying the media tile associated with the
initially selected media file;
receiving touch input including one or more quick
view gestures on the touch-sensitive surface;
commencing a quick view gesture mode in
response to the received touch input;
displaying, in the quick view gesture mode, the
media tile corresponding to a next media file or a
previous media file in the playlist in response to the one
or more quick view gestures;
continuing playback, in the quick view gesture
mode, of the initially selected media file;
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ending the quick view gesture mode if no object is
detected on the touch-sensitive surface for a
predetermined period of time; and
automatically playing back the media file
corresponding to the displayed media tile in response to
ending the quick view gesture input mode.
REJECTIONS
The Examiner rejected claims 1—4, 8, 9, 11, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee et al. (US 2008/0250319 Al, pub.
Oct. 9, 2008), Apple, iPhone User’s Guide (2007) (“iPhone User’s
Guide”), and Wolff et al. (US 6,833,848 Bl, issued Dec. 21, 2004). (Final
Act. 3-7, 8-12.)
The Examiner rejected claims 5 and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Lee, iPhone User’s Guide, Wolff, and Ball (US
2010/0259482 Al, pub. Oct. 14, 2010). (Final Act. 7-8, 12-13.)
The Examiner rejected claims 14 and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Lee, iPhone User’s Guide, Wolff, and Jehan (US
8,280,539 B2, issued Oct. 2, 2012). (Final Act. 13—14.)
The Examiner rejected claims 16—19 under 35 U.S.C. § 103(a) as
being unpatentable over Wolff and iPhone User’s Guide. (Final Act. 14—
18.)
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Wolff, iPhone User’s Guide, and Ball. (Final Act. 19.)
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ISSUES ON APPEAL
Appellant’s arguments present the following issues:3
Issue One: Whether the Examiner erred in finding the combination of
Lee, iPhone User’s Guide, and Wolff teaches or suggests all of the
limitations of independent claims 1 and 8. (App. Br. 9—22.)
Issue Two: Whether the Examiner erred in finding the combination of
iPhone User’s Guide and Wolff teaches or suggests all of the limitations of
independent claim 16. (App. Br. 22—24.)
Issue Three: Whether the Examiner erred in finding the combination
of Lee, iPhone User’s Guide, Wolff, and Ball teaches or suggests the
additional limitations of dependent claims 5 and 12. (App. Br. 24—25.)
Issue Four: Whether the Examiner erred in finding the combination
of Lee, iPhone User’s Guide, Wolff, and Jehan teaches or suggests the
additional limitations of dependent claims 14 and 15. (App. Br. 25—27.)
Issue Five: Whether the Examiner erred in finding the combination of
iPhone User’s Guide and Wolff teaches or suggests all of the limitations of
independent claim 19. (App. Br. 27—32.)
Issue Six: Whether the Examiner erred in finding the combination of
iPhone User’s Guide, Wolff, and Ball teaches or suggests the additional
limitations of dependent claim 20. (App. Br. 32—34.)
3 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed Jan. 27, 2015); the
Supplemental Appeal Brief (filed Mar. 30, 2015); the Reply Brief (filed
Aug. 31, 2015); the Final Office Action (mailed Mar. 28, 2014); and the
Examiner’s Answer (mailed July 6, 2015) for the respective details.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner errs. As to the rejection of claims 5 and 12, we
agree with Appellant. Otherwise, we disagree with Appellant’s arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 3—19)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 3—11).
We concur with the applicable conclusions reached by the Examiner and
emphasize the following.
Issue One
In finding Lee, the iPhone User’s Guide, and Wolff teach or suggest
the limitations of independent claims 1 and 8, the Examiner relies on the
disclosure in Lee of determining playback behavior in a wireless device with
a media player application, including the ability to: (i) browse playlists;
(ii) select for playback individual media files on the playlist; (iii) display a
screen image representing the media file being played back; and (iv) during
playback of a media file, browse the playlist to select another file for
playback, while the first media file continues playing. (Final Act. 3—4, 9;
Lee, Figs. 6a, 6b, 9, 11, H 58, 59, 64, 78.)
The Examiner also relies on the disclosure in the iPhone User’s Guide
of a touch-sensitive portable device that can store, play, and browse
playlists, with a “Cover Flow” feature available during playback of a music
file on a playlist, which is invoked by rotating the iPhone sideways, to
display the album cover of the currently playing item, allowing the user to
browse through other albums in the music library via a flicking gesture to
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the left or right. (Final Act. 4—5, 8—9; Ans. 4—5; iPhone User’s Guide 59-
60, 62.)
The Examiner further relies on the disclosure in Wolff of authoring a
“story” or “playlist” of digital images with associated audio clips containing
narration or background music, in which successive images are displayed as
thumbnails in tracks during viewing, authoring, and editing of the list, with a
provision, during playback, for scrolling left or right along the track using,
inter alia, a touch screen. (Final Act. 5—6, 10-11; Wolff, Fig. 2, col. 3,1. 23,
col. 4,11. 24—35, col. 7,11. 34—63.) In addition, the Examiner relies on the
fact that, during such scrolling:
If the user navigates to a new thumbnail image while the system
is playing, for example scrolling left or right, changing to a
different track, playback of the currently playing audio clip is
stopped. If the user takes no further action for a brief length of
time (e.g., one second), the system plays the audio clip
associated with the newly selected thumbnail image and
continues with that story from that point on.
(Wolff, col. 7,11. 56-63.)
Appellant argues in part that the Examiner errs because the cited
combination does not teach or suggest the claim 1 requirement:
displaying, in the quick view gesture mode, the media tile
corresponding to a next media file or a previous media file in
the playlist in response to the one or more quick view gestures.
(App. Br. 9—11.) Appellant makes a similar argument with respect to claim
8. (App. Br. 18—19.) In support of these arguments, Appellant argues Lee
does not disclose browsing album covers, and although the iPhone User’s
Guide discloses browsing album covers, it nonetheless does not browse
album covers in a playlist. (App. Br. 10, 18.)
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These arguments are unpersuasive because the Examiner relies on the
combination of Lee and the iPhone User’s Guide as teaching or suggesting
this claim limitation — with Lee disclosing browsing media files in a
playlist, and displaying the screen image representing the media file being
played, and the iPhone User’s Guide disclosing the ability, while playing
back a playlist item, to invoke the capability of browsing album covers of
media files. (Pinal Act. 3—5, 8—9; Ans. 3—5.) In re Mouttet, 686 P.3d 1322,
1332 (Led. Cir. 2012) (citing In re Keller, 642 P.2d 413, 425 (CCPA 1981))
(“[T]he test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
We note the Specification broadly describes the “media tiles” of the
claims as a “graphic representation [that] may include, among other things, a
view of the album art associated with the particular audio file, the song
name, artist, and album.” (Spec. 119.) Thus, both the “screen image 902”
of Lee and the “album artwork” of the iPhone User’s Guide are specific
named examples of the claimed media tiles. (Lee, Pig. 9,1 64; iPhone
User’s Guide 62.) Moreover, although Appellant asserts the iPad User’s
Guide Cover Plow feature only explicitly discloses browsing a “music
library,” we agree with the Examiner that this disclosure, combined with the
playlist browsing disclosures in Lee, also teaches or suggests browsing a
playlist with the same use of gestures coordinated with display of associated
album covers.4 (Ans. 3—4.)
4 We do not agree with Appellant’s argument: “The entire music library is
not equivalent to a playlist (e.g. a curated list), nor would it be reasonable to
construe it as such as it would be contrary to the plain meaning of the term
as well as inconsistent with Appellant[’s] [S]pecification[].” (App. Br. 10-
11.) To the contrary, the Specification broadly states: “The playlist may be
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Appellant also argues the Examiner errs because the cited
combination does not teach or suggest the claim 1 requirements:
ending the quick view gesture mode if no object is
detected on the touch-sensitive surface for a predetermined
period of time; and
automatically playing back the media file corresponding
to the displayed media tile in response to ending the quick view
gesture input mode
(App. Br. 11—13.) Appellant makes a similar argument with respect to claim
8. (App. Br. 19—20.) For these limitations, the Examiner relies on the
above-described disclosure in Wolff of the ability of a user, while playing a
“story,” to navigate to a different thumbnail image, which causes the audio
clip associated with that image to automatically play if “the user takes no
further action for a brief length of time.” (Final Act. 5—6, 10—11; Wolff, col.
7,11.56-63.)
Appellant argues the Examiner errs because Wolff uses hardware
buttons to scroll through the thumbnails, and “the difference between
hardware buttons and a touch input system is non-trivial.” (App. Br. 12.)
However, as the Examiner finds, “Wolff further teaches touch-sensitive
screen as a form of input.” (Ans. 5; Wolff, col. 4,11. 26—34, col. 9,11. 6—20.)
Appellant also argues there is a “concrete difference” between Wolff and the
completely or partially user generated and can include any suitable type of
media files.” (Spec. 118.) Accordingly, it is reasonable to broadly construe
“playlist” as including a list of all of a user’s media file content. However,
even were Appellant’s narrower construction of “playlist” to be applied, we
would not be persuaded the Examiner errs in finding the combination of Lee
with the iPhone Users Guide teaches or suggests the claim limitation at
issue.
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claimed invention because Wolff does not allow the user to “pause” by
keeping the finger touching the screen for an indefinite period of time, and
only triggering playback of a new item when the finger is lifted. (App. Br.
12.) This argument is unpersuasive, given Wolff broadly teaches or suggests
finger gestures as part of the disclosure of the touch screen alternative. In
any event, Appellant’s argument is not commensurate with the scope of the
claims — the applicable claim language, “automatically playing back the
media file ... in response to ending the quick view gesture input mode,”
allows a user to pause in the manner Appellant describes, but we agree with
the Examiner that it does not require that capability. (Ans. 5.)
Appellant further argues the Examiner errs because the cited
combination does not teach or suggest the claim 1 requirement, “continuing
playback, in the quick view gesture mode, of the initially selected media
file,” and in particular, the relied-upon disclosures of Wolff specifically
“change the principle of operation of Lee and iPhone User[’s] Guide”
because, in Wolff, playback of the current track stops when the user scrolls
to another thumbnail. (App. Br. 13—15.) Appellant similarly argues with
respect to claim 8. (App. Br. 20-22.) This argument is unpersuasive
because the Examiner relies on the disclosure in Lee for this aspect of the
claims — Lee discloses, as one option, the current “media file should still
continue playing” while the user browses the media directory. (Final Act. 4;
Ans. 6—7; Lee, Fig. 11,178.) “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d at 425. “Combining the teachings of
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references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Particularly given Lee
specifically discloses there is a choice between stopping the current
playback or continuing playback, when browsing other files, the Examiner
does not err in relying on the additional pertinent teachings of Wolff. (Ans.
7; Lee 178.)
Finally, Appellant argues the Examiner used improper hindsight in
relying on the cited combination. (App. Br. 15—17.) Appellant quotes an
official of the assignee of Lee as disparaging the use of a touch screen as
evidence that one of ordinary skill would not be motivated to combine Lee
with the iPhone User’s Guide. The Examiner properly disregarded this
argument, given both Lee and the iPhone User’s Guide were publically
available, and Lee does not advocate one way or the other in regard to use of
touchscreens. (Ans. 4—5.) In any event, we are not persuaded the
Examiner’s combination is inadequately supported. (Final Act. 5—6.)
Appellant does not point to any evidence of record that the resulting
combination would be “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).
The Examiner’s findings are reasonable because the skilled artisan would
“be able to fit the teachings of multiple patents together like pieces of a
puzzle” because the skilled artisan is “a person of ordinary creativity, not an
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automaton.” KSR, 550 U.S. at 420—21. We are persuaded the claimed
subject matter exemplifies the principle that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416.
Issue Two
With respect to independent claim 16, Appellant argues the Examiner
errs in finding Wolff and the iPhone User’s Guide teach or suggest:
exit the quick view gesture mode if no object is
detected on the touch-sensitive surface for a
predetermined period of time; and
automatically play the second media file after
exiting the quick view gesture mode.
(App. Br. 23—24.) For the same reasons as discussed above for the
commensurate limitations of claims 1 and 8, we are not persuaded by these
arguments.
Issue Three
Claims 5 and 12 depend from claims 1 and 8, respectively, and further
require the quick view gesture to be “a walking gesture made by at least two
fingers.” (Suppl. App. Br. 4.) The Examiner relies on the disclosure in Ball
of gestures including a “two-finger or three-finger swipe, tap, etc.” (Final
Act. 7; Ball 138.) The Examiner broadly defines “walking gesture” as “a
gesture in which at least two fingers are involved.” (Ans. 8.) We agree with
Appellant, the Examiner’s interpretation is in error because it “does not
provide any weight to or meaning for the word ‘walking.’” (Reply Br. 5.)
Therefore, the Examiner does not provide prima facie support for the
rejection of claims 5 and 12. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
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1992). Accordingly, on the record before us, we are constrained to find the
Examiner errs in rejecting those claims.
Issue Four
Claims 14 and 15 depend from claim 8, and further require fading out
the currently playing media file while fading in the second file (claim 14),
and gradually matching the tempo of the first file to the second file while
playing both files and reducing the volume of the first file (claim 15.)
(Suppl. App. Br. 5.) The Examiner’s rejections rely on the disclosure in
Jehan of segueing between audio tracks:
Segueing may include cross fading (reducing the volume of the
first track while simultaneously increasing the volume of the
second track) the two tracks. Segueing may also include a
transition from the original tempo of the first track to the tempo
of the second track.
(Final Act. 13—14; Jehan, col. 4,11. 15—20.) Appellant argues the disclosure
in Wolff of stopping playback upon commencement of navigation to another
thumbnail is incompatible with the claimed fading and temp matching taught
by Jehan. (App. Br. 27.) However, as discussed above, this argument is
unpersuasive given the teachings of Lee regarding continuation of playback
during navigation.
Issue Five
In finding the iPhone User’s Guide and Wolff teach or suggest the
limitations of independent claim 19, the Examiner relies on the above-
discussed disclosures of those references, and in addition relies on the
disclosures in Wolff of the ability of the user to edit the positions of
thumbnail images in a story. (Final Act. 18; Ans. 9-10; Wolff, col. 8,11. 22—
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27, col. 9,11. 5—36.) Appellant in particular argues Wolff does not teach or
suggest the requirements:
selecting, during a playback mode, the second
media tile in response to detecting at least a second
gesture on the touch-sensitive surface of the device; and
requeuing the second media tile and reordering the
media playlist, during a playback mode, in response to
detecting at least a third gesture on the touch-sensitive
surface of the device.
(App. Br. 28.) However, as Appellant recognizes, Wolff explicitly
discloses, “the user may drag thumbnail images to different points within a
story.” (App. Br. 32; Wolff, col. 9,11. 15—16.) In light of that teaching, we
are not persuaded the Examiner errs. Although the explicitly disclosed
example of reordering images disclosed in Wolff is in the context of stop
mode, the Examiner correctly finds Wolff at least suggests such operations
in play mode, given the explicit disclosure of similar operations in that latter
mode. (Ans. 9; Wolff, col. 8,11. 22—28.)
Issue Six
Claim 20 depends from claim 19 and additionally specifies “pinching”
and “reverse-pinching” gestures. (Suppl. App. Br. 7.) The Examiner’s
rejections rely on the disclosure in Ball, “[s]uch multi-touch gestures may
also include pinch gestures of two fingers (or a finger and thumb, etc.)
moved towards each other in a ‘pinching’ motion or away from each other in
a reverse-pinching motion.” (Final Act. 19; Ball 138.) Appellant argues the
Examiner errs because the gestures disclosed in Ball are disclosed “in
isolation,” not effectuating the functions attributed to them in the claim.
(App. Br. 33.) This argument is unpersuasive because the Examiner relies
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on the combination of Wolff, the iPhone User’s Guide, and Ball for the
rejection. In re Keller, 642 F.2d at 425.
CONCLUSIONS
For the reasons stated above, we sustain the obviousness rejections of
independent claims 1 and 8 over Lee, the iPhone User’s Guide, and Wolff,
of claims 14 and 15 over Lee, the iPhone User’s Guide, Wolff, and Jehan, of
claims 16 and 19 over the iPhone User’s Guide and Wolff, and of claim 20
over the iPhone User’s Guide, Wolff, and Ball.
We also sustain the obviousness rejections of claims 2—4, 9, 11, and
13 over Lee, the iPhone User’s Guide, and Wolff, and of claims 17 and 18
over Wolff and the iPhone User’s Guide, which rejections are not argued
separately with particularity. (App. Br. 17, 22, 24.)
Also for the reasons stated above, we do not sustain the obviousness
rejections of claims 5 and 12 over Lee, the iPhone User’s Guide, Wolff, and
Ball.
DECISION
We affirm the Examiner’s obviousness rejections of claims 1—4, 8, 9,
11, and 13-20.
We reverse the Examiner’s obviousness rejection of claims 5 and 12.
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-IN-PART
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