Ex Parte Kirschner et al

Patent Trial and Appeal BoardJan 11, 2019

13230561 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/230,561 09/12/2011 39254 7590 01/15/2019 Barta, Jones & Foley, P.C. (Patent Group - Microsoft Corporation) 2805 Dallas Parkway Suite 222 Plano, TX 75093 FIRST NAMED INVENTOR Douglas R. Kirschner 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. 333812-US-NP 7652 EXAMINER HIGGS, STELLA EUN ART UNIT PAPER NUMBER 2179 NOTIFICATION DATE DELIVERY MODE 01/15/2019 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): usdocket@microsoft.com uspto@dockettrak.com docket@bjfip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOUGLAS R. KIRSCHNER, BRETT DAVID HUMPHREY, PAUL J. REID, and MATTHEW B. KARR1 Appeal2018-005969 Application 13/230,561 Technology Center 2100 Before ST. JOHN COURTENAY III, LINZY T. McCARTNEY, and BETH Z. SHAW, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-12, 14--16, and 19-21. Claims 13, 17, and 18 are cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 According to Appellants, the real party in interest is Microsoft Technology Licensing, LLC. See Appeal Br. 2 Appeal2018-005969 Application 13/230,561 Invention The claimed invention on appeal relates to a "touch screen computing device with an easy to use user interface." Abstract. Representative Claim 1. A method of displaying content on a mobile computing device that includes a touch screen that is both an input and an output device, the method comprising: displaying a control area and a viewing area on the touch screen, where the control area and the viewing area are separate from each other; displaying the content in the viewing area of the touch screen; receiving, via the touch screen, a touch input; altering in a first manner, in response to the received touch input originating in the control area that includes subsequent dragging motion on the touch screen into the viewing area, an appearance of the content displayed in the viewing area as opposed to altering in a second manner the appearance of the content displayed in the viewing area or performing an interaction with the content displayed in the viewing area, where the altering in the first manner the appearance of the content corresponds to the subsequent dragging motion on the touch screen into the viewing area; altering in the second manner, in response to the received touch input originating in the control area that does not include subsequent dragging motion on the touch screen, the appearance of the content displayed in the viewing area as opposed to altering in the first manner the appearance of the content displayed in the viewing area or performing the interaction with the content displayed in the viewing area, where the altering in 2 Appeal2018-005969 Application 13/230,561 the second manner the appearance of the content is not dependent on any subsequent dragging motion on the touch screen; and performing, in response to the received touch input that originates in the viewing area, the interaction with the content displayed in the viewing area as opposed to altering in the first manner the appearance of the content displayed in the viewing area or altering in the second manner the appearance of the content displayed in the viewing area. (Emphasis added regarding the contested limitations). Rejections A. Claims 1--4, 10, 11, 14--16, and 19--21 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being obvious over the combined teachings and suggestions of Rieman et al. (US 2010/0107116 Al, Apr. 29, 2010) (hereinafter "Rieman") in view of Gosswieler et al. (US 2013/0016129 Al, Jan. 17, 2013); (hereinafter "Gossweiler"). 2 B. Claims 5 and 6 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being obvious over the combined teachings and suggestions of Rieman and Gosswieler in view of Davidson et al. (US 2009/0259967 Al, Oct. 15, 2009) (hereinafter "Davidson"). C. Claims 7-9 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being obvious over the combined teachings and suggestions of Rieman and Gosswieler in view of Tse et al. (US 2010/0079493 Al, Apr. 1, 2010) (hereinafter "Tse"). 2 We consider the Examiner's erroneous reliance on 35 U.S.C. Â§ I02(b) in the heading of Rejection A as a typographical error. Final Action 6. 3 Appeal2018-005969 Application 13/230,561 D. Claim 12 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being obvious over the combined teachings and suggestions of Rieman and Gosswieler in view of Forest (US 6,903,723 Bl, June 7, 2005). E. Claim 16 is rejected underpre-AIA 35 U.S.C. Â§ I03(a) as being obvious over the combined teachings and suggestions of Rieman and Gosswieler in view of Singhal (US 2010/0253620 Al, Oct. 7, 2010). ANALYSIS We have considered all of Appellants' arguments and any evidence presented. Rejection A of Representative Claim 1underÂ§103(a) Appellants contest the following limitation of independent claim 1: "displaying a control area and a viewing area on the touch screen, where the control area and the viewing area are separate from each other" and "received touch input originating in the control area that includes subsequent dragging motion on the touch screen into the viewing area." App. Br. 6 ( emphasis added). We note the above contested limitation is recited in similar form having commensurate scope in remaining independent claims 14 and 19. Appellants focus on paragraphs 44, 45, 51-53, Figures 5a-b, 6 of Rieman, and contend: 6.3.7. In other words, as discussed above, the touch originates in the application area (viewing area) and then the false edge ( control area) is displayed. Once the false edge ( control area) is displayed, the un-moved originating touch may be located in the application area (viewing area) or it may be located in the displayed false edge (control area) depending on where it originated. If it is in the false edge ( control area), then any 4 Appeal2018-005969 Application 13/230,561 subsequent sliding motion is considered "sliding input received (step 640) inside the false edge" (para [0052]) as illustrated in FI Gs. 5c-d. On the other hand, if the originating touch is in the application area (viewing area), then any subsequent sliding motion is considered "sliding input received ... inside the application area" (para [0052]). But in either case, the touch still originates in the application area (viewing area) which results in the false edge (control area) being displayed. 6.3.8. Accordingly, for at least the reasons detailed above, the Examiner's allegation that Rieman's touch originates in his false edge (control area) is in error at least because the false edge (control area) is not even displayed until after the touch originates in the application area (viewing area). Thus, this erroneous allegation as to what Rieman actually teaches is insufficient to factually support a prima facie conclusion of obviousness. [J Therefore, Appellant respectfully requests that the Board overturn all rejections based on this erroneous allegation. App. Br. 8 ( emphasis added, underline in original). In response, the Examiner further explains the basis for the rejection: As a first matter, the claim recites "displaying a control area and a viewing area on the touch screen, where the control area and the viewing area are separate from each other" and further recites "receiving, via the touch screen, a touch input" and "altering ... in response to the received touch input originating in the control area". Therefore, while the claims recite displaying two distinct regions, the control area and the viewing area, the claims do not recite that such displaying precludes a touch input. Rather, the touch input which "originates in the control area" is a modifier for the altering step but not the displaying of the separate areas. The claims, as presently drafted, merely require that the control area and the viewing area are displayed separately from each other, but such act of displaying is not precluded by a touch input. Furthermore, Appellants specification is silent as to how the two distinct areas are displayed, but describes in at least Fig. 5 Appeal2018-005969 Application 13/230,561 3 and [0077] that the control area is displayed after the display of the viewing area. Accordingly, the appearance of the control area after the display of the viewing area and in response to a touch input, as taught in RIEMAN, is not precluded by the present claim language or the Appellant's originally filed specification. RIEMAN further teaches panning/scrolling the displayed content (i.e., altering the content) in the viewing area in response to a drag input received in the false edge (i.e., touch input originating in the control area) in at least [0050] and [0052J[J which teaches receiving a drag input in the false edge which continues inside the application area. Accordingly, while RIEMAN teaches a touch input for displaying a false area, RIEMAN nonetheless additionally teaches a drag input originating in the false area for altering the content and thus reads upon the claimed limitation. Ans. 12-14. In reviewing the record, we note the Examiner includes a footnote in the Answer (13) that points to what we find is the most pertinent portion of Rieman, particularly paragraph 52: "Applicable citation [0052]: "Step 626 corresponds to that a user touches outside the application area and continues the gesture inside the application area." (emphasis added). However, no evidence cited by the Examiner specifically indicates that the user touch outside the application area originates in the control area before it is continued (i.e., dragged) into the viewing area, (which the Examiner reads on Riemann's application area 511), as required by each of Appellants' independent claims. 3 3 We note the Examiner reads the claimed "control area" on the "false edge" 515 framed area in Rieman, as depicted in Rieman's Figures 5c and 5d, indicated by cross-hatching lines. 6 Appeal2018-005969 Application 13/230,561 Nor do we find the secondary Gosswieler reference overcomes the aforementioned deficiency with Rieman. After reviewing the portions of Gosswieler cited by the Examiner (Final Act. 8), we find a preponderance of the evidence supports Appellants' arguments in the Reply Brief, which are responsive to the Examiner's further explanations in the Answer: Assuming, arguendo, that Gossweiler describes a touch input originating in a first zone ( e.g., control area), Appellant respectfully submits that Claim 1 does not merely describe a user input traveling from a control area to an area outside of the control area ( or a threshold distance) as allegedly described in Gossweiler. Rather, Claim 1 specifically provides that the received touch input originates a specific area, a control area, and upon a subsequent dragging motion on the touch screen into another specific area, a viewing area, altering an appearance of the content displayed in the viewing area. That is, simply describing that a dragging motion extends a threshold distance or that a dragging motion starts in a "first zone" (alleged control area) and extends outside of the first zone is not the same as a received touch input originating in a control area and via a subsequent dragging motion on the touch screen, the touch input enters a viewing area, as provided in Claim 1. A control area and a viewing area as recited in Claim 1 are specific areas of a display. Gossweiler does not describe or suggest a touch input starting in a control area and upon a dragging motion, extending to a viewing area. Reply Br. 2 ( emphasis added). For at least the aforementioned reasons, we are persuaded the Examiner erred. Accordingly, we are constrained on this record to reverse Rejection A of independent claims 1, 14, and 19, and Rejection A of the associated dependent claims. 7 Appeal2018-005969 Application 13/230,561 RemainingÂ§ 103 Rejections B-E of all Remaining Dependent Claims In light of our reversal of rejection A of independent claims 1, 14, and 19, supra, we also reverse rejections B-E of all remaining dependent claims which variously and ultimately depend therefrom. On this record, the Examiner has not shown how the additionally cited secondary references overcome the aforementioned deficiencies of the base combination of Rieman and Gosswieler, as discussed above regarding claim 1. DECISION We reverse the Examiner's rejections of claims 1-12, 14--16, and 19-21 underpre-AIA 35 U.S.C. Â§ 103(a). REVERSED 8