Ex Parte Davis et al

Patent Trial and Appeal Board

Feb 25, 2019

10452233 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/452,233 05/30/2003 Mark Davis
12811 7590 02/27/2019
Paradice and Li LLP/Qualcomm
1999 S. Bascom Ave.
Suite 300
Campbell, CA 95008
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
QCP142813 8462
EXAMINER
EURICE, MICHAEL
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
ocpat_uspto@qualcomm.com
uspto@paradiceli.com
william@paradiceli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DA VIS and CARLO BERNOULLI
Appeal2018-005688
Application 10/452,233
Technology Center 2600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION 1 ON APPEAL2
1 The prior Board decision (March 27, 2017) in Appeal 2016-003354 for the
present application is related to the present appeal. On the Panel for this
decision, Judge MacDonald has replaced Judge Pyonin who is not currently
available.
2 Appellants indicate the real party in interest is Qualcomm Incorporated.
App. Br. 3.
Appeal2018-005688
Application 10/452,233
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 72-82, 84--95, and 97-107. Appellants have cancelled claims 1-71,
83, and 96. App. Br. 19, 22, 24. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
Illustrative Claims
Illustrative claims 72 and 93 under appeal read as follows ( emphasis,
formatting, and bracketed material added):
72. A method for configuring a user-interface of a mobile
computing device, the method comprising:
[A.] displaying a plurality of active icons in an active portion of
a touch-sensitive display of the mobile computing device,
wherein each of the active icons, when selected by a user,
causes the mobile computing device to launch a
corresponding executable application;
[B.] detecting a tap and hold gesture, on the touch-sensitive
display, on a selected one of the plurality of active icons;
[C.] in response to detecting the tap and hold gesture on the
selected one of the plurality of active icons, enabling the
selected active icon to be moved;
[D.] in response to enabling the selected active icon to be
moved, detecting a drag gesture, on the touch-sensitive
display, of the selected active icon from a first location to
a second location that is different from the first location;
[E.] in response to detecting the drag gesture of the selected
active icon from the first location to the second location,
moving the selected active icon from the first location to
the second location such that the selected active icon is
removed from the first location during the detected drag
gesture; and
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[F.] displaying a persistent task bar on a lower edge located
below the active portion of the touch-sensitive display of
the mobile computing device, the persistent task bar
including a number of persistent icons, wherein when one
of the persistent icons is selected by the user, the mobile
computing device launches a corresponding executable
application,
[G.] wherein the persistent task bar is displayed on the lower
edge located below the active portion of the touch-
sensitive display of the mobile computing device while:
[i.] displaying the plurality of active icons; detecting the
tap and hold gesture;
[ii.] enabling the selected icon to be moved;
[iii.] detecting the drag gesture; and
[iv.] moving the selected icon from the first location to
the second location.
93. The method of claim 72, wherein moving the selected active
icon from the first location to the second location comprises
moving the active icon from a first location in the active portion to
a location in the persistent task bar.
References3
Tuniman et al. us 5,644,737 July 1, 1997
Berman et al. us 5,760,773 June 2, 1998
Rosenberg et al. US 2001/0002126 Al May 31, 2001
Hinckley et al. US 2002/0021278 Al Feb.21,2002
Steele et al. US 2002/0091700 Al July 11, 2002
3 All citations herein to this reference are by reference to the first named
inventor only.
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Application 10/452,233
Rejections4
A.
The Examiner rejected claims 72, 74--77, 79--81, 84--92, 94, 101-105
and 107 under 35 U.S.C. § 103 as being unpatentable over the combination
of Steele, Rosenberg, Berman, and Hinckley. Final Act. 2-28.
Appellants argue separate patentability for claim 72. Appellants do
not argued separate patentability for claims 74--77, 79--81, 84--92, 94, 101-
105 and 107. We select claim 72 as the representative claim for this
rejection. Except for our ultimate decision, we do not address claims 7 4--77,
79--81, 84--92, 94, 101-105 and 107 further herein.
B.
The Examiner rejects claims 93 and 106 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Steele, Rosenberg, Berman,
Hinckley and Tuniman. Final Act. 34--38.
Appellants argue separate patentability for claim 93. Appellants do
not present separate arguments for claim 106. We select claim 93 as the
representative claim for this rejection. Except for our ultimate decision, we
do not address the § 103 rejections of claim 106 further herein.
C.
The Examiner rejects claims 73 and 78 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Steele, Rosenberg, Berman,
Hinckley, and an additional reference. Final Act. 28-32.
4 All citations herein to the "Final Action" are to a Final Action mailed on
September 7, 2017.
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The Examiner rejects claims 82 and 95 under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Steele, Rosenberg, Berman,
Hinckley, and an additional reference. Final Act. 32-34.
Appellants do not present arguments for claims 73, 78, 82, and 95.
Thus, the rejections of these claims tum on our decision as to claim 72.
Except for our ultimate decision, we do not address the § 103 rejections of
claims 73, 78, 82, and 95 further herein.
Issue on Appeal
Did the Examiner err in rejecting claims 72 and 93 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions.
1.
Appellants contend that the Examiner erred in rejecting claim 72
under 35 U.S.C. § I03(a) because:
The references fail to disclose a "selected active icon is removed
from the first location during the detected drag gesture" on a
touch-sensitive display of a mobile computing device.
App. Br. 8 (Appellants' emphasis omitted, Panel emphasis added).
As to Appellants' assertion that the Examiner erred, we disagree. The
Examiner did not state that the Steele reference "disclosed" a "selected
active icon is removed from the first location during the detected drag
gesture." Rather, the Examiner reasoned that Steele's action of item moving
by drag gesture suggests "removing." Final Act. 4. We agree. A "drag-
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and-drop" item move as in Steele (i-f 111) has limited options for visual
implementation when the item is moved. Either a temporary placeholder
image of the item remains to indicate the starting location or it does not
remain. Essentially, Appellants contend that (a) in Steele an item image
remains in the starting location during the "drag-and-drop" and is only
removed when the drop occurs, and (b) it would not be obvious to an artisan
to immediately move the item image from the starting location as the drag
starts. We disagree.
2.
Also, Appellants contend that the Examiner erred in rejecting
claim 72 under 35 U.S.C. § 103(a) because:
Steele is clear that its invention pertains to a database
architecture designed to be built on a more powerful personal
computer (Windows PC) with the results to be
displayed/accessed on a handheld computer (PalmOS PDA),
which is a different and weaker type of device. See Steele at
paragraphs [0066]. Thus, Steele would lead one skilled in the art
in only this direction - and away from the claimed concept on a
touch-sensitive display of a mobile computing device, as in claim
72.
Further, combining the features of Steele's various
applications (in particular combining onto one device the cited
features of termMaker and imaker for the PC and termReader or
an application created for a handheld computer) would render
Steele's invention unsatisfactory for its intended purpose and its
principle operation.
App. Br. 11. Appellants further contend:
Steele fails to disclose "displaying a persistent task bar on a
lower edge below the active portion of the touch-sensitive
display of the mobile computing device."
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App. Br. 15 (Appellants' emphasis omitted). Appellants reason:
[T]he persistent task bar [as claimed] is displayed on the same
touch-sensitive display of the mobile computing device as the
active portion. Steele's tool bar (FIG. 13) and taskbar 4105 are
provided on two different devices. Accordingly, Steele fails to
disclose "displaying a persistent task bar on a lower edge located
below the active portion of the touch-sensitive display of the
mobile computing device," as recited in claim 72.
App. Br. 16.
Steele does not describe dragging an "active icon 4103." Instead,
Steele describes dragging an image to display a different region
of the image.
Reply Br. 5.
As to Appellants' above assertion, we disagree. First, we disagree
with Appellants' premise that the invention of Steele is as stated supra.
Rather, claim 1 of Steele is quite clear that the invention of Steele is a
database architecture with a root node, linking nodes, and leaf nodes.
Second, Appellants overlook that to artisans the interface teachings of Steele
may be suggestive to improve similar devices in the same way.
Essentially, Appellants argue that a person of ordinary skill would
only use Steele's drag-and-drop moving of an item image and Steele's tool
bar/taskbar in combination with Steele's database structure. We are not
persuaded by Appellants' argument. We do not agree with Appellants that
an artisan would so needlessly restricted. In KSR, the Court explained that
"[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton." 550 U.S. 398, 421 (2007). Again, we agree with the Examiner
that Steele "suggests removing the active icon from the first location when it
is moved to the second location." Final Act. 4. We further agree with the
Examiner that it would have been obvious to apply Steele's item image
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drag-and-drop to an icon image drag-and-drop; and we agree with the
Examiner that it would have been obvious to use a persistent task bar as
claimed. Final Act. 4. "[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR, 550 U.S. at
417.
3.
Further, Appellants contend that the Examiner erred in rejecting
claim 72 under 35 U.S.C. § 103(a) because:
Rosenberg is directed to a device other than a mobile computing
device.
App. Br. 11.
As to Appellants' above assertion, we disagree. Rosenberg at
paragraph 228 specifically includes "portable computers" which an artisan
would understand to be mobile computing devices.
4.
Furthermore, Appellants contend that the Examiner erred in rejecting
claim 72 under 35 U.S.C. § 103(a) because:
Berman also does not teach or suggest that "the selected
active icon is removed from the first location during the detected
drag gesture" on a touch-sensitive display of a mobile computing
device.
App. Br. 13.
As to Appellants' above assertion, we disagree. Appellants do not
address the actual reasoning of the Examiner's rejection where the Examiner
relied on Steele as suggesting removing. Final Act. 4. Instead, Appellants
attack the Berman reference singly forfailing to disclose "the selected active
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icon is removed from the first location during the detected drag gesture"
teaching that the Examiner relied upon the Steele/Berman combination and
other references to show. It is well-established that one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413,425
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). References must be read, not in isolation, but for what they fairly
teach in combination with the prior art as a whole. Merck, 800 F .2d at 1097.
5.
Also further, Appellants contend that the Examiner erred in rejecting
claim 72 under 35 U.S.C. § 103(a) because:
[T]he Examiner previously conceded on page 34 of the Non-
Final Office Action dated June 2, 2017, that Steele, Rosenberg,
and Berman do not "disclose: removing {in the sense of deleting
or eliminating}." As a result, the Examiner included Hinckley
in rejecting claim 72, alleging that Hinckley discloses
"removing." ... Hinckley does not disclose that a selected icon
is "removed from [a] first location," and therefore, Hinckley does
not disclose or suggest that "the selected active icon is removed
from the first location during the detected drag gesture" on a
touch-sensitive display of a mobile computing device.
Accordingly, the references fail to disclose that "the
selected active icon is removed from the first location during the
detected drag gesture" on a touch-sensitive display of a mobile
computing device, as recited in claim 72.
App. Br. 14.
As to Appellants' above assertion, we disagree. First, Appellants
misquote the Examiner. We find this unhelpful. The correct quote is
"Steele, Rosenberg, and Berman do not appear to explicitly disclose:
removing {in the sense of deleting or eliminating}." Non-Final Act. 34
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( emphasis added). The meanings of the statements "do not disclose" and
"do not appear to explicitly disclose" are very different. As we discuss
supra, we agree with Examiner's determination that Steele suggests deleting.
While we conclude the Steele reference is sufficient, we agree with
Appellants that Examiner's fails in attempting to bolster the rejection with
Hinckley, as Hinckley is deficient in that it lacks the argued selecting. App.
Br. 15. However, it is not reversible error for the Examiner to attempt (and
fail) to further bolster an already sufficient determination.
6.
Also furthermore, Appellants contend that the Examiner erred in
rejecting claim 93 under 35 U.S.C. § 103(a) because:
Tuniman suffers from the same deficiencies as Rosenberg in not
describing a mobile computing device with a touch-sensitive
display.
App. Br. 16.
As to Appellants' above assertion, we disagree. Again, Appellants do
not address the actual reasoning of the Examiner's rejection where the
Examiner relied on Steele as showing/suggesting a touch sensitive (tap and
hold) display of a mobile computing device. Final Act. 3. Instead,
Appellants attack the Tuniman reference singly for lacking a teaching that
the Examiner relied upon a combination of the Steele, Berman and other
references to show. Again, one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 72-82, 84--95,
and 97-107 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 72-82, 84--95, and 97-107 are not patentable.
DECISION
The Examiner's rejections of claims 72-82, 84--95, and 97-107 are
affirmed.
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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