Google Inc.

Patent Trials and Appeals BoardAug 12, 2020

14528743 - (D) (P.T.A.B. Aug. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/528,743 10/30/2014 Isaac Sterling VanDuyn 098981-4092 2989 10575 7590 08/12/2020 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER CHUANG, JUNG-MU T ART UNIT PAPER NUMBER 2179 NOTIFICATION DATE DELIVERY MODE 08/12/2020 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ISAAC STERLING VanDUYN1 ________________ Appeal 2019-005364 Application 14/528,743 Technology Center 2100 ________________ Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and MICHAEL J. STRAUSS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant initially appealed under 35 U.S.C. § 134(a) from the five grounds of the Examiner’s final rejection of claims 1, 2, and 4–22. Appeal Br. 7. The Examiner subsequently withdrew three of the five rejections. Examiner’s Answer mailed May 5, 2019 (“Ans.”), 3–4. Appellant maintains the appeal of the remaining two rejections of claims 1, 2, and 4–22. Reply Brief filed July 2, 2019 (“Reply Br.”), 4–5. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were held on August 6, 2020. The transcript will be added to the record in due course. We affirm. 1 Appellant identifies Google LLC as the real party in interest. Appeal Brief filed February 11, 2019 (“Appeal Br.”), 2. Appeal 2019-005364 Application 14/528,743 2 CLAIMED SUBJECT MATTER Appellant describes the present invention as follows: A computer-implemented method for providing dynamically scrolling content within a vertically scrolling online publication is implemented by a content serving computing device in communication with a memory. The method includes retrieving a dynamically scrolling content item, receiving a set of display information related to a user computing device, and serving the dynamically scrolling content item within a slot of a vertically scrolling online publication presented at the user computing device, wherein the dynamically scrolling content item is served based partially on the set of display information, wherein the dynamically scrolling content item is configured to scroll horizontally in response to a first haptic input received by a user of the user computing device. Abstract. Independent claim 1 illustrates the appealed claims: 1. A computer-implemented method for providing dynamically scrolling content within a vertically scrolling online publication implemented by a content serving computing device in communication with a memory, the method comprising: retrieving a first dynamically scrolling content item; receiving a set of display information related to a user computing device; serving the dynamically scrolling content item and a vertically scrolling online publication to the user computing device, wherein the vertically scrolling online publication comprises a content element and a slot having a fixed location, wherein the dynamically scrolling content item is served based partially on the set of display information; and based at least on detecting a first haptic input in a first, vertical direction: start scrolling, in response to the first haptic input in the first, vertical direction, the content element of the vertically scrolling online publication in a first scroll Appeal 2019-005364 Application 14/528,743 3 direction consisting of the first, vertical direction at a first rate proportional to the first haptic input; and simultaneously scrolling, in response to the first haptic input in the first, vertical direction, the dynamically scrolling content item in a second, horizontal direction at a second rate proportional to the first haptic input and into the slot of the vertically scrolling online publication for presentation at the user computing device. REFERENCES The Examiner relies upon the following prior art: Name Reference Date Hinckley US 2003/0043174 A1 Mar. 06, 2003 Wong US 2006/0242603 A1 Oct. 26, 2006 Ashkenazi US 2008/0220747 A1 Sept. 11, 2008 Epstein US 2009/0049406 A1 Feb. 19, 2009 Lin-Hendel US 2010/0281421 A1 Nov. 04, 2010 STATEMENT OF THE REJECTIONS Claims 1, 2, 4, 6–11, 13–18, and 20–22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ashkenazi, Lin-Hendel, Wong, and Hinckley. Final Act. 17–25. Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ashkenazi, Lin-Hendel, Wong, Hinckley, and Epstein. Final Act. 25–27. STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in Appeal 2019-005364 Application 14/528,743 4 light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). DETERMINATIONS AND CONTENTIONS The Examiner finds, “Ashkenazi[,] as modified by Lin-Hendel and Wong[,] teaches scrolling content and banner ads vertically and horizontally in synchronization (simultaneously scrolling in both directions in response to a haptic input) as a first vertical scrolling rate and a second horizontal scrolling rate,” as claimed. Ans. 7. The Examiner finds the combination of Ashkenazi, Lin-Hendel, and Wong does not expressly teach that the first and second scrolling rates are proportional to the first haptic input. Id. at 7–8. The Examiner finds that Hinckley teaches scrolling at a rate that is proportional to the haptic input. Id. at 8 (citing Hinckley ¶¶ 69–79, 89–91); Final Act. 24. The Examiner determines that one of ordinary skill would have been motivated to combine Hinckley’s teachings with the Ashkenazi, Lin-Handel, and Wong in order to control the scrolling rate based on the user haptic input, as taught by Hinckley. Final Act. 24. In its principal Brief, Appellant first summarizes the Examiner’s rejection: “[t]he Office Action concedes that the combination of Ashkenazi, Lin-Hendel, and Wong does not teach or suggest ‘that the first vertical scrolling rate and the second horizontal scrolling rate proportional to the first haptic input.’” Appeal Br. 16 (citing Final Action 23). Appellant further notes, “[t]he Office Action asserts that above subject matter of independent claim 1 is discussed in Hinckley’s [paragraphs] 69–79 and 89–91 and claims 7 and 8.” Id. (citing Final Action 24). Appeal 2019-005364 Application 14/528,743 5 Appellant asserts, The claims [d]o not merely recite that “the first vertical scrolling rate and the second horizontal scrolling rate are proportional to the first haptic input,” as asserted by the Office Action. Rather[,] independent claim 1 recites to “start scrolling . . . in a first scroll direction consisting of the first, vertical direction at a first rate proportional to the first haptic input; and simultaneously scrolling, in response to the first haptic input in the first, vertical direction, the dynamically scrolling content item in a second, horizontal direction at a second rate proportional to the first haptic input.” Appeal Br. 16. Appellant argues that Hinckley fails to cure the deficiencies of the combination that are noted in the rejection. Id. According to Appellant, Hinckley discusses a scrolling system for the “scrolling of a document. The cited portion of Hinckley states that “a variable rate of scrolling [can be] based on various factors[,] such as finger speed, finger pressure/contact area, length of hold, number of taps, and/or frequency of taps.” However, Hinckley merely suggests scrolling the document in the same direction as a haptic input. Irrespective of whether scroll rates can be variable, Hinckley clearly fails to teach or suggest scrolling the content item in a second, horizontal direction, which is different than the direction of the first haptic input, at a second rate proportional to the first haptic input in the first direction[,] as recited by independent claim 1. Id. at 16–17 (citing Hinckley ¶¶ 2, 70). In its Reply Brief, Appellant newly argues for the first time, [t]he combination of Ashkenazi, Lin-Hendel, Wong, or Hinckley fails to teach or suggest “scrolling. . . the content element of the vertically scrolling online publication in a first scroll direction consisting of the first, vertical direction. . . and simultaneously scrolling. . . the dynamically scrolling content item in a second, horizontal direction.” Reply Br. 5; see also id. at 5–9 (for supporting arguments). Appeal 2019-005364 Application 14/528,743 6 Appellant also newly argues, [t]he combination of Ashkenazi, Lin-Hendel, Wong, and Hinckley also fails to teach or suggest “scrolling . . . the content element of the vertically scrolling online publication in a first scroll direction consisting of the first, vertical direction . . . and simultaneously scrolling . . . the dynamically scrolling content item in a second, horizontal direction” because combining Wong with Ashkenazi, Lin-Hendel, and/or Hinckley would impermissibly frustrate Wong’s purpose, and therefore there is no suggestion or motivation to modify the cited art in the manner suggested by the Examiner. Reply Br. 9–10; see also id. at 10 (for supporting arguments). Appellant also newly argues, “even assuming arguendo that any of the cited the combination references, individually, teach the foregoing features of claim 1, the Examiner exercised impermissible hindsight in combining these references by concluding, without argument, that the alleged teachings of the prior art cited are prima facie sufficient.” Reply Br. 11; see also id. at 10–12 (arguing that the Examiner’s stated motivation for combining Hinckley with the other three references is improperly circular, and more generally arguing why the motivation to combine is based on impermissible hindsight). ANALYSIS We note, as a threshold matter, “it is inappropriate for appellants to discuss in their reply brief matters not raised in . . . the principal brief[ ]. Reply briefs are to be used to reply to matter[s] raised in the brief of the appellee.” Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986). “Considering an argument advanced for the first time in a reply brief . . . is not only unfair to an appellee but also entails the risk of an Appeal 2019-005364 Application 14/528,743 7 improvident or ill-advised opinion on the legal issues tendered.” McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted). There are cogent reasons for not permitting an appellant to raise issues or arguments in a reply brief. Among them are the unfairness to the appellee who does not have an opportunity to respond and the added burden on the court that a contrary practice would entail. As the Tenth Circuit put it, permitting an appellant to raise new arguments in a reply brief “would be unfair to the court itself, which without the benefit of a response from appellee to an appellant’s late-blooming argument, would run the risk ‘of an improvident or ill-advised opinion, given [the court’s] dependence . . . on the adversarial process for sharpening the issues for decision.’” Headrick [v. Rockwell Int’l Corp.], 24 F.3d [1272,] 1278 [(10th Cir. 1994)], (quoting Herbert v. Nat’l Academy of Sciences, 974 F.2d 192, 196 (D.C. Cir. 1992)). Carbino v. West, 168 F.3d 32, 34–35 (Fed. Cir. 1999). We, therefore, do not address Appellant’s first argument of the Reply Brief—that the combination of Ashkenazi, Lin-Hendel, Wong, or Hinckley fails to teach or suggest “scrolling. . . the content element of the vertically scrolling online publication in a first scroll direction consisting of the first, vertical direction. . . and simultaneously scrolling. . . the dynamically scrolling content item in a second, horizontal direction.” Reply Br. 9. Appellant does not argue in its Appeal Brief that the Examiner erred in finding that the combination of Ashkenazi, Lin-Hendel, and Wong teaches this feature. See generally Appeal Br. We, likewise, do not address Appellant’s second argument of its Reply Brief—that it would be improper to combine the four references so as to teach this limitation of simultaneously scrolling vertically and horizontally because doing so allegedly would frustrate the purpose of Appeal 2019-005364 Application 14/528,743 8 Wong. Reply Br. 9–10. Again, Appellant did not argue in its Appeal Brief that the Examiner errs in finding the combination of Ashkenazi, Lin-Hendel, and Wong teaches this feature, much less, did Appellant argue that Wong teaches away from adding the teachings of Hinckley. See generally Appeal Br. We, likewise, do not address Appellant’s third argument of the Reply Brief—that the Examiner’s stated rationale to combine Hinckley with the other three references was insufficient due to the stated rationale being impermissibly circular. Reply Br. 10–12. Appellant only timely argues in its Appeal Brief that while Hinckley teaches scrolling can be proportional to the rate of the haptic input, Hinckley’s scroll direction is the same as the direction of the haptic input. Appeal Br. 16. And according to Appellant, “Hinckley clearly fails to teach or suggest scrolling the content item in a second, horizontal direction, which is different than the direction of the first haptic input, at a second rate proportional to the first haptic input in the first direction as recited by independent claim 1.” Id. at 16–17. As for this timely presented argument, the argument does not address the Examiner’s findings. In particular and contrary to Appellant’s argument regarding Hinckley, the Examiner finds that the combination of Ashkenazi, Lin-Hendel, and Wong teaches, in response to a haptic input, vertically scrolling the first, content element of the online publication and simultaneously scrolling horizontally the second content element at the second rate in the slot. Final Act. 23; Ans. 5. The Examiner relies upon Hinckley only for teaching that scrolling rates can be proportional to the haptic input. Final Act. 23–24; Ans. 8. Appeal 2019-005364 Application 14/528,743 9 To the extent that Appellant’s arguments do address the Examiner’s findings, we agree with the Examiner that Appellant’s arguments constitute an attack on the references individually, whereas the rejection is based on the combination of references. Ans. 5 (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)). For the foregoing reasons, Appellant’s timely arguments do not persuade us of error in the Examiner’s obviousness rejection of independent claim 1. Accordingly, we sustain the obviousness rejection of that claim and of claims 2, 4, 6–11, 13–18, and 20–22, which Appellant does not argue separately. Appeal Br. 17. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). We, likewise, sustain the Examiner’s obviousness rejection of claims 5, 12, and 19 over the combination of Ashkenazi, Lin-Hendel, Wong, Hinckley and Epstein. Appellant has not particularly pointed out errors in the Examiner’s reasoning regarding the additional teachings of Epstein, but merely reiterates the same arguments that are set forth in relation to independent claim 1 regarding the alleged deficiencies of the four base references. Appeal Br. 17. Appeal 2019-005364 Application 14/528,743 10 DECISION SUMMARY In summary: TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 2, 4, 6–11, 13–18, 20–22 103 Ashkenazi, Lin- Hendel, Wong, Hinckley 1, 2, 4, 6– 11, 13–18, 20–22 5, 12, 19 103 Ashkenazi, Lin- Hendel, Wong, Hinckley, Epstein 5, 12, 19 Overall Outcome 1, 2, 4–22