Ex Parte Migos et al

Patent Trials and Appeals Board

Mar 20, 2019

13077862 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/077,862 03/31/2011 Charles J. Migos
150004 7590 03/22/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
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.
Pl0414US3/77770000263103 6312
EXAMINER
NGUYEN,LEV
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
patents.us@dentons.com
dentons_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. MIGOS and
JAY CHRISTOPHER CAPELA 1
Appeal2017-007018
Application 13/077,862
Technology Center 2100
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Apple Inc. See App.
Br. 3.
Appeal2017-007018
Application 13/077,862
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4, 7-10, 12-22, and 26-40. Claims 3, 5, 6, 11, and 23-25 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part. 2
THE INVENTION
The claims are directed to a graphical user interface for navigating
through an electronic document. Spec., Title. Claim 1, reproduced below
with a disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. An electronic device, comprising:
a display;
a touch-sensitive surface;
one or more processors;
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 one or more programs including
instructions for:
storing a document having a plurality of features having
respective locations within the document, the plurality
of features including features of a first feature type in a
first sequence and user annotations in a second
sequence, wherein:
the user annotations are distinct from the features of the
first feature type; and
the user annotations include text highlighted by a user;
2 We refer to the Specification, filed March 31, 2011 as amended August 27,
2012 ("Spec."); Final Office Action, mailed October 22, 2015 ("Final
Act."); Advisory Action, mailed April 7, 2016 (Advisory Act.); Appeal
Brief, filed November 18, 2016 ("App. Br."); Examiner's Answer, mailed
January 26, 2017 ("Ans."); and Reply Brief, filed, March 27, 2017 ("Reply
Br.").
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Application 13/077,862
displaying at least a portion of the document on the
display;
detecting a first gesture on the touch-sensitive surface; and
in response to detecting the first gesture:
in accordance with a determination that the first gesture
is a single contact gesture, navigating to a portion of
the document that includes or is located proximate
to a sequentially adjacent feature of the first feature
type in the document; and
in accordance with a determination that the first
gesture is a multi-contact gesture with a first
predefined number of contacts, navigating to a
portion of the document that is selected so as to
include a sequentially adjacent user annotation in
the document.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Lin
Nishihara
Sandquist
Cheng
Li
Griffin
Srinivasan
Hinckley
Habib
Rosing
US 2007/0174761 Al
US 2009/0103780 Al
US 2009/0187825 Al
US 2009/0315841 Al
US 2010/0045616 Al
US 2011/0041056 Al
US 2011/0074824 Al
US 2011/0209099 Al
US 2011/0296344 Al
US 2012/0023462 Al
REJECTIONS
The Examiner made the following rejections:
July 26, 2007
Apr. 23, 2009
July 23, 2009
Dec. 24, 2009
Feb.25,2010
Feb. 17, 2011
Mar. 31, 2011
Aug. 25, 2011
Dec. 1, 2011
Jan. 26, 2012
Claims 1, 2, 4, 7, 9, 10, 20-22, 28, 33, and 38 stand rejected under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Rosing, Sandquist,
Lin, and Habib. Final Act. 2-6.
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Application 13/077,862
Claims 12, 13, 16, and 17 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Rosing, Sandquist, Lin, Habib, and Li.
Final Act. 6-7.
Claims 8, 15, and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Rosing, Sandquist, Lin, Habib, and Hinckley.
Final Act. 7.
Claims 14 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Rosing, Sandquist, Lin, Habib, and Cheng. Final
Act. 8.
Claims 26, 27, 31, 32, 36, and 37 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Rosing, Sandquist, Lin,
Habib, and Srinivasan. Final Act. 8-9.
Claims 29, 34, and 39 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Rosing, Sandquist, Lin, Habib, and
Nishihara. Final Act. 10.
Claims 30, 35, and 40 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Rosing, Sandquist, Lin, Habib, and
Griffin. Final Act. 10-11.
ANALYSIS
Appellants' contentions are persuasive of Examiner with regard to
dependent claims 28, 33, and 38 but are otherwise unpersuasive of Examiner
error with regard to the independent claims. In connection with the
rejections of claims 1, 2, 4, 7-10, 12-22, 26, 27, 31, 32, 36, and 37 we adopt
as our own ( 1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2-11; Ans. 2-11) and
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Application 13/077,862
concur with the conclusions reached by the Examiner. We highlight the
following for emphasis.
Independent Claims 1, 9, and 10
The Examiner finds the combination of Rosing, Sandquist, and Lin
teaches or suggests all limitations of the independent claims, including the
disputed limitation, except for "[ n ]avigating to a portion that is selected so as
to include a sequentially adjacent portion with a multi-contact gesture
[which] is not explicitly disclosed [by the combination]." Final Act. 4. To
cure the noted deficiency, the Examiner applies Habib's "split navigation
control element" for teaching navigating to a selected sequentially adjacent
portion of a document. Id.
Appellants contend Habib is deficient for failure to disclose
(i) navigation in response to a multi-contact gesture and (ii) the device
selects (rather than the user selecting) a sequentially adjacent portion. App.
Br. 17-18. These arguments are unpersuasive of reversible Examiner error.
The Examiner finds Rosing' s two-finger swipe teaches navigating to a
portion of a document proximate to a sequentially adjacent feature ( e.g.,
annotation) using a multi-contact gesture. Final Act. 3. Appellants'
argument attacking Habib fails to address the Examiner's specific findings
in Rosing. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("The test for
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art."); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). In particular, the argued deficiencies of
Habib relate to limitations for which the Examiner relies on Rosing
including the argued navigation in response to a multi-contact gesture and,
therefore, are unpersuasive of Examiner error.
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Application 13/077,862
We are also unpersuaded by Appellants' argument that the claims
require selection of the portion of the document by the device, not selection
by the user as argued is disclosed by Habib. App. Br. 17-18. The
independent claims recite "navigating to a portion of the document that is
selected" but neither specify who or what makes the selection (i.e., performs
the act of selecting) nor exclude external input ( e.g., user interaction) in
making a selection. Thus, Appellants' argument is not commensurate with
the scope of the appealed claims. See In re Self, 671 F.2d 1344, 1348
( CCP A 1982) (limitations not appearing in the claims cannot be relied upon
for patentability). Furthermore, Appellants fail to address the Examiner's
finding that Rosing' s device advances to a next or preceding section or
chapter of a document in response to a swipe direction thereby teaching
navigation by a device to a portion of a document. See Final Act. 3 ( citing
Rosing ,r,r 10, 15, 20). Thus, Appellants' argument is further unpersuasive
as an improper attack on the references individually where the rejection is
based on the combination of references.
For the reasons discussed above, we agree with the Examiner in
finding the combination of Rosing, Sandquist, Lin, and Habib teaches or
suggests the argued limitations and we sustain the rejection of independent
claims 1, 9, and 10 together with the rejection of dependent claims 2, 4, 7,
and 20-28 which are not separately argued. We further sustain the rejections
of dependent claims 8, 12-19, 26, 27, 31, 32, 36, and 37 for the same
reasons, these dependent claims not argued separately from their respective
base claims. See App. Br. 21-27.
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Application 13/077,862
Dependent Claims 28, 33, and 38
In addition to the first and second sequences of claim 1, dependent
claim 2 8 further recites a third feature type in a third sequence and
navigating to a portion of the document that includes or is proximate to a
sequentially adjacent feature of the third feature type in response to a multi-
contact gesture with a second predefined number of contacts. The Examiner
finds the combination of Rosing and Habib teaches or suggests the
limitations of claim 28. Final Act. 6.
Appellants contend the Examiner fails to explain "[ w ]hat in the prior
art teaches or suggests a document having features of three different types in
three different sequences?" App. Br. 20. Appellants argue the same feature
of the prior art cannot be used to teach two distinct claim limitations, i.e., (i)
both first and third feature types and/or (ii) both first and second predefined
number of contacts. Id. at 21. That is, the prior "[ fails to] teach or suggest
two different multi-contact gestures that cause navigation to two different
types of features in the document." Id.
The Examiner responds, finding Rosing teaches a first gesture can be
a single finger swipe for turning pages or a two-finger swipe for
transitioning to a next or preceding chapter. Ans. 12-13. Noting the argued
"third feature type" is not described in the Specification, the Examiner
interprets the third feature type to be an annotation. Id. at 13.
Appellants reply, emphasizing "Rosing does not teach a third feature
type or third gesture ( which must be a multi-contact gesture) that causes any
navigation, let alone navigation to 'a portion of the document that includes
or is located proximate to a sequentially adjacent feature of the third feature
type in the document."' Reply Br. 7. Addressing Sandquist, Appellants
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Application 13/077,862
argue the disclosed single tap also fails to teach or suggest a multi-contact
gesture. Id. at 8. Appellants further argue "the third feature type of claim 28
cannot be an annotation [ as per the Examiner's interpretation], because
claim 28 requires three distinct feature types, each in a distinct sequence.
Appellants' specification is very clear that 'the terms first, second, etc.' are
'used to distinguish one element from another."' Id. ( citing Spec. ,r 66).
Appellants' arguments are persuasive of Examiner error. The
Examiner has not adequately explained how the references have been
applied in finding their combination teaches or suggests the disputed
limitations of claim 28. For example, if the Examiner's relies on Rosing's
two-finger swipe for teaching a multi-contact gesture with a first predefined
number of contacts (Final Act. 3), the Examiner has not adequately
explained what prior art disclosure or feature teaches a multi-contact gesture
with a second predefined number of contacts. Likewise, it is not clear how
the annotation of the prior art can teach both the first and third feature types.
Because the Examiner's mapping of the contested claim language to the
corresponding feature( s) found in the cited references is unclear, we find
some degree of speculation would be required to affirm the Examiner's
rejection of claims 28, 33, and 38, and the rejection of dependent claims 29,
30, 34, 35, 39, and 40. We decline to engage in speculation. 3
3 See the mapping rule: 37 C.F.R. § 1.I04(c)(2) ("When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified.") (emphasis added).
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Accordingly, we are constrained on this record to reverse the
Examiner's rejection of dependent claims 28, 33, and 38, and the rejection of
dependent claims 29, 30, 34, 35, 39, and 40. These claims stand with their
respective base claim.
DECISION
We reverse the Examiner's decision to reject claims 28-30, 33-35,
and 38--40 under 35 U.S.C. § 103(a).
We affirm the Examiner's decision to reject claims 1, 2, 4, 7-10, 12-
22, 26, 27, 31, 32, 36, and 37 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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