Ex Parte van Os et al

Patent Trial and Appeal BoardJan 29, 2019

13493963 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/493,963 06/11/2012 158737 7590 01/31/2019 DENTONS US LLP - Apple San Francisco 1 Market Plaza Spear Tower, 24th Floor San Francisco, CA 94105 FIRST NAMED INVENTOR Marcel van Os 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. P6231USD1/7777000014730l 7812 EXAMINER AUGUSTINE, NICHOLAS ART UNIT PAPER NUMBER 2141 NOTIFICATION DATE DELIVERY MODE 01/31/2019 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 MARCEL VAN OS, STEPHEN 0. LEMAY, PAUL D. MARCOS, ALEXANDRE A YBES, and SCOTT FORSTALL Appeal2017-004406 Application 13/493,963 Technology Center 2100 Before JEREMY J. CURCURI, JUSTIN BUSCH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-15. Final Act. 1. We heard the appeal on January 9, 2019. We have jurisdiction under 35 U.S.C. Â§ 6(b ). Claims 1-15 are rejected under pre-AIA 35 U.S.C. Â§ 102(e) as anticipated by Lessing (US 2009/0005123 Al; Jan. 1, 2009). Final Act. 2-8. We reverse. Appeal2017-004406 Application 13/493,963 STATEMENT OF THE CASE Appellants' invention relates to "conducting searches on portable multifunction devices." Spec. ,r 3. Claim 1 is illustrative and reproduced below: 1. A portable multifunction device, comprising: one or more processors; a touch screen display; and memory storing a plurality of applications, including email, calendar, and contacts applications; the memory storing respective search input interfaces for the email, calendar, and contacts applications, each search input interface for entering a search query for the respective application, each of the email, calendar, and contacts applications having an application interface region for simultaneous display with the corresponding search input interface. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential). ANALYSIS CLAIMS 1 AND 2 Contentions The Examiner finds Lessing describes all limitations of claim 1. Final Act. 2-3 ( citing Lessing Figs. 1, 2; ,r,r 50, 51, 54, 56); see also Advisory Action ( emphasis added) ("the claims only require that the search box be 2 Appeal2017-004406 Application 13/493,963 respective towards one application at a time per user querying to the system"), Ans. 3--4 ("[A]s shown in figure 4A, a search input text box 430 is displayed awaiting user input query to the interface."). Appellants present, among arguments, the following principal arguments: Lessing does not disclose "respective search input interfaces for the email, calendar, and contacts applications," as recited in claim 1. See App. Br. 9--13; see also Reply Br. 5-9. "Lessing discloses only a single search field for receiving a search input directed to a selected application (from a plurality of available applications) and the search field is not displayed with an application interface region for the selected application." App. Br. 9--10. "The single search field (e.g., search field 430) in Lessing is separate and distinct from each application." App. Br. 10. "The plain meaning of the claim language, however, requires that there be multiple distinct search input interfaces." App. Br. 13. Our Review The appeal of claim 1 hinges on one question: does claim 1 encompass a single search input text box used for one application at a time as disclosed in Lessing, as concluded by the Examiner? We determine the claim language itself includes all that is necessary to answer this question by reciting "respective search input interfaces for the email, calendar, and contacts applications," in claim 1. We conclude the broadest reasonable interpretation of claim 1, according to the claim language itself, requires multiple search input interfaces, one for each application, namely, the email, calendar, and contacts applications. Given our construction, we determine the Examiner erred in finding Lessing 3 Appeal2017-004406 Application 13/493,963 describes "respective search input interfaces for the email, calendar, and contacts applications," as recited in claim 1 because Lessing does not describe multiple search input interfaces. As shown in Lessing, Fig. 4A, a single search input interface (search field 430) is utilized to search the various applications. Contrary to the Examiner's position, we determine that the use of search field 430 in one application at a time does not describe the claimed subject matter because search field 430 is still a single interface while claim 1 requires multiple interfaces. See Lessing Figs. 4A, 4B, 5A, 6A ( depicting a single search input interface at search field 430); see also Lessing ,r 51 ("[T]he database may be searched prior to executing the application program."), ,r 56 ("[T]he messages database associated with the messaging application represented by the envelope icon 410 may be searched prior to and/or without executing the messages application."). Put another way, in Lessing there is a single search interface and the user may choose which application or applications are searched, which is different than the multiple search input interfaces required by our construction for claim 1. We, therefore, do not sustain the Examiner's rejection of claim 1. We also do not sustain the Examiner's rejection of claim 2, which depends from claim 1. CLAIMS 3-15 Contentions The Examiner finds Lessing describes all limitations of claim 3. Final Act. 3--4 (citing Lessing Figs. 1-3, 4A--4C; ,r,r 50, 51, 54--56); see also Ans. 7 (citing Lessing Fig. 5B, ,r,r 54--56) ("a user can find the record 'blacknuss' 4 Appeal2017-004406 Application 13/493,963 and be taken to artist information where songs and albums from the artist can be discovered, thus accessing the record 'blackness' uncovers additional data not found with the search input"). Appellants present, among arguments, the following principal arguments: Lessing does not disclose "replacing display of the list of search results with display of a list of record descriptors for application records that have the particular field value in the particular field if more than one application record has the particular field value in the particular field" as recited in claim 3. See App. Br. 21-26; see also Figs. 7E, 7F and Reply Br. 17-22. "Instead, in response to the selection of a search result, Lessing states that the search result is highlighted and the corresponding application may be launched with the selected search result if a soft key is selected." App. Br. 22 ( citing Lessing ,r 56). Paragraph [0058] of Lessing, instead of the Examiner cited paragraphs, relates to the interface in FIG. 5B. This paragraph, as shown in the reproduced portion below, only explains that a user selection of an entry in the search results and the "Play" soft key S60 can activate the music application to start playback of the selected entry. Nowhere does this excerpt disclose or suggest replacing the current search results with a list of record descriptors associated with a selected search result. App. Br. 25. Our Review Lessing discloses, in Fig. 5B, a list of search results and discloses "responsive to selection of the action soft key 560, the music application may be launched, and the selected one(s) of the search results 550 may be played back by the music application." Lessing ,r 58. Similarly, in describing 5 Appeal2017-004406 Application 13/493,963 Fig. 4C, Lessing discloses "responsive to selection of the action soft key 460, the messaging application may be executed, and the selected one(s) of the search results 450 may be viewed using the messaging application." Lessing ,r 56. Similarly, in describing Fig. 6B, Lessing discloses "responsive to selection of the action soft key 660, the camera application may be launched, and one or more of the search results 650 may be viewed using the camera application." Lessing ,r 60. Thus, Lessing describes playing or viewing search results in the corresponding application. Accordingly, in Lessing, we do not see "replacing display of the list of search results with display of a list of record descriptors for application records that have the particular field value in the particular field," as recited in claim 3 because Lessing's playing or viewing does not reasonably describe displaying a list of record descriptors. Not only do we not see displaying a list of record descriptors as claimed, we also do not see, in Lessing, "at least one of the search results corresponds to a plurality of application records that match the search query," as recited in claim 3. For this particular claim limitation, the Examiner finds Lessing's Figs. 4B-4C describe "at least one of the search results corresponds to a plurality of application records that match the search query," as recited in claim 3. Final Act. 4 (citing Lessing Figs. 4B-C); see also Ans. 6-7 (citing Lessing Figs. 4B-4C; ,r 56). Lessing's Fig. 4C depicts search results including multiple hits but we do not see how one of these hits (i.e., "one of the search results") "corresponds to a plurality of application records," as required by the claim language. 6 Appeal2017-004406 Application 13/493,963 We, therefore, do not sustain the Examiner's rejection of claim 3. We also do not sustain the Examiner's rejections of claims 4--12, which depend from claim 3 . Independent claims 13, 14, and 15 each recite the same limitations discussed above with respect to claim 3. We, therefore, also do not sustain the Examiner's rejections of claims 13, 14, and 15. ORDER The Examiner's decision rejecting claims 1-15 is reversed. REVERSED 7