Ex Parte Kirschner et al

Patent Trials and Appeals Board

Jan 11, 2019

13230561 - (D) (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. § 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. § 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
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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. § 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. § 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. § 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. § I02(b) in
the heading of Rejection A as a typographical error. Final Action 6.
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Application 13/230,561
D. Claim 12 is rejected under pre-AIA 35 U.S.C. § 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. § 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 1under§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
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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.
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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.
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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.
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Application 13/230,561
Remaining§ 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. § 103(a).
REVERSED
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