Ex Parte VAN OS et al

Patent Trials and Appeals BoardMar 7, 2019

14710125 - (D) (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/710,125 05/12/2015 Marcel VAN OS 150004 7590 03/11/2019 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. P3939USC2/77770000060202 4876 EXAMINER TILLERY, RASHAWNN ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 03/11/2019 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, FREDDY ALLEN ANZURES, SCOTT FORSTALL, GREG CHRISTIE, and IMRAN CHAUDHRI Appeal2018-004540 Application 14/710,125 Technology Center 2100 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and ALEX S. YAP, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 2-26, which are all the claims pending in this application. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 An oral hearing was held for this appeal on February 27, 2019. 2 According to Appellants, the real party in interest is Apple, Inc. App. Br. 3. 3 Claim 1 has been canceled previously. Appeal2018-004540 Application 14/710,125 STATEMENT OF THE CASE Introduction Appellants' disclosure is directed to enabling a user to configure the user interface on portable devices displaying a plurality of icons. See Spec. ,r,r 7-10. Claim 2, which is illustrative of the invention, reads as follows: 2. A method of operating a portable electronic device with a touch-sensitive display, the method comprising: displaying a plurality of application icons on the touch- sensitive display in a normal mode of operation, the plurality of application icons including a first application icon, a second application icon, and a third application icon; while in the normal mode of operation and displaying the plurality of application icons, detecting a first finger gesture on a first application icon in the plurality of application icons, the first finger gesture being a tap gesture, the first application icon being at a first location on the touch-sensitive display; in response to detecting the first finger gesture on the first application icon, initiating the application that corresponds to the first application icon; while in the normal mode of operation and displaying the plurality of application icons, detecting a second finger gesture on the first application icon at the first location on the touch- sensitive display, the second finger gesture including a finger contact held on the first application icon for more than predetermined period; in response to detecting the finger contact held on the first application icon for more than the predetermined period, entering a user interface reconfiguration mode, distinct from the normal mode of operation, wherein entering the user interface reconfiguration mode includes varying the position of the second application icon and the position of the third application icon; while in the user interface reconfiguration mode, detecting movement of a finger contact from the first location 2 Appeal2018-004540 Application 14/710,125 on the touch-sensitive display to a second location on the touch- sensitive display; and moving the first application icon to the second location on the touch-sensitive display in accordance with the movement of the finger contact. The Examiner's Rejections Claims 2--4, 6-10, 12-17, and 19-26 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hawkins (US 6,781,575 Bl; iss. Aug. 24, 2004), Keely (US 2006/0033751 Al; pub. Feb. 16, 2006), and Reyes (US 2007 /0124677 Al; pub. May 31 2007). See Final Act. 2-8. Claims 5, 11, and 18 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hawkins, Keely, Reyes, and Sato (US 2006/0007182 Al; pub. Jan. 12, 2006). See Final Act. 8-9. ANALYSIS In rejecting claim 2, the Examiner finds Hawkins discloses some recited elements of the claim, but not "the second finger gesture including a finger contact held on the first application icon for more than predetermined period" and "in response to detecting the finger contact held on the first application icon for more than the predetermined period, entering a user interface reconfiguration mode, distinct from the normal mode of operation," for which the Examiner relies on Figure 3 of Keely. Final Act. 4--5. The Examiner further finds Hawkins modified by Keely does not disclose, but Paragraphs 29 and 41 of Reyes does disclosing, "the plurality of application icons including a first application icon, a second application icon, and a third application icon" and "wherein entering the user interface reconfiguration 3 Appeal2018-004540 Application 14/710,125 mode includes varying the position of the second application icon and the position of the third application icon." Final Act. 5---6. Appellants contend the Examiner's rejection is in error because Reyes does not disclose the limitations the reference was applied for. App. Br. 14-- 17. Appellants explain the cited paragraphs of Reyes only describe "moving icons that are positioned in a circular orb" such that "[t]he various icons are positioned in a circle and can be activated by selecting a particular icon." App. Br. 15. Citing Figures 2A and 1 lB of Reyes, Appellants argue the Examiner fails to fully consider the recitation of "'in response to detecting the finger contact held on the first application icon for more than the predetermined period ... entering the user interface reconfiguration mode [which] includes varying the position of the second application icon and the position of the third application icon."' App. Br. 16. According to Appellants, Reyes discloses "manually rotating the orb in response to the position of a cursor" instead of "rotating the orb in response to a finger contact for more than a predetermined period or rotating the orb as part of entering a reconfiguration mode." Id. 4 In response, the Examiner explains that "Reyes was relied on for teaching varying the position of the second application icon and the position of the second application icon and the position of the third application icon (see paragraphs [0041] and [0043])." Ans. 3. With respect to moving the second and third icons only after the first icon is removed from the orb, the Examiner responds: Examiner was merely acknowledging that de los Reyes taught a reconfiguration mode. Keely disclosed entering a reconfig- 4 We do not address Appellants' other contentions because this contention is dispositive of the issue on appeal. 4 Appeal2018-004540 Application 14/710,125 uration mode in response to detecting a touch input for more than a predetermined time period. As noted in the previous office action, Keely did not expressly disclose "wherein entering the user interface reconfiguration mode includes varying the position of the second application icon and the position of the second application icon and the position of the third application icon." However, de los Reyes was relied upon for teaching varying the position of the second application icon and the position of the second application icon and the position of the third application icon. (Emphasis added). Ans. 4--5. Appellants contend the Examiner's restated position in the Answer is still unresponsive to the argued point regarding "in response to detecting the finger contact held on the first application icon for more than the predetermined period, entering a user interface reconfiguration mode, distinct from the normal mode of operation, wherein entering the user interface reconfiguration mode includes varying the position of the second application icon and the position of the third application icon." Reply Br. 5. Appellants specifically argue "varying the positions of the icons disclosed by de los Reyes does not occur until after reconfiguration is already in progress, and not when the reconfiguration mode is entered" because "the icons disclosed by de los Reyes are arranged in an orb, and when one of the icons is dragged out of the orb, the remaining icons evenly space themselves around the orb." Id. Additionally, Appellants address the Examiner's statement that the rejection is based on the combination of Hawkins with Keely and Reyes by arguing that "the combination would, at best, change the position of other icons only after both a touch contact is held on an icon and the touch contact drags the icon out of its original position." Id. 5 Appeal2018-004540 Application 14/710,125 Based on a review of Reyes, we are persuaded by Appellants' contention that the Examiner has not explained how the varying position of the second and third icons takes place in response to "detecting the finger contact held on the first application icon for more than the predetermined period" which is actually "a second finger gesture on the first application icon at the first location on the touch-sensitive display." In fact, Reyes moves the first icon before the position of the second and third icons is varied, whereas Appellants' claim 2 requires the first icon to remain in its first location while the position of the second and third icons are varied in response to detecting the finger contact on the first icon is for more than a predetermined period. In summary, Appellants' arguments have persuaded us of error in the Examiner's position with respect to the rejection of independent claim 2 and independent claims 8, 14, and 15, which recite similar limitations. The Examiner has not identified any teachings in the other applied prior art that would make up for the above-mentioned deficiency. We therefore do not sustain the rejection of claims 2, 8, 14, and 15, as well as claims 3-7, 9-13, and 16-26 dependent therefrom. DECISION We reverse the decision of the Examiner to reject claims 2-26. REVERSED 6