LENOVO (SINGAPORE) PTE. LTD.Download PDFPatent Trials and Appeals BoardApr 29, 20212019006185 (P.T.A.B. Apr. 29, 2021) Copy Citation 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. 14/294,729 06/03/2014 YASUSHI TSUKAMOTO JP920130023-US-NP 1023 57295 7590 04/29/2021 Russell Ng PLLC 8729 Shoal Creek Blvd. Suite 100 Austin, TX 78757 EXAMINER YI, RINNA ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 04/29/2021 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): Stephanie@russellnglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YASUSHI TSUKAMOTO Appeal 2019-006185 Application 14/294,729 Technology Center 2100 ____________ Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject Claims 1–6 and 13–19, which are all of the claims pending in the present application. Appeal Br. 3, 5; see also id. at 9–12, Claims App. Appellant previously canceled Claims 7–12. Id. at 10, Claims App. We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134. We AFFIRM.2 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Lenovo Corporation. Appeal Br. 3. 2 Rather than reiterate the arguments of Appellant and the Examiner’s findings, we refer to the Appeal Brief (“Appeal Br.”) and Claims Appendix (“Claims App.”), filed March 29, 2019; the Examiner’s Answer (“Ans.”), mailed June 27, 2019; the Reply Brief (“Reply Br.”), filed August 19, 2019; the Advisory Action (“Advisory”), mailed January 14, 2019; the Final Office Action (“Final Act.”), mailed November 2, 2018; and the Appeal 2019-006185 Application 14/294,729 2 STATEMENT OF THE CASE Claimed Subject Matter Appellant’s described and claimed invention “relates to portable devices in general, and particularly to a method for improving one-handed operability of a portable information terminal having a touch screen.” Spec. 1:16–18. Figures 1 and 4A-C are illustrative and reproduced below. Figure 1 depicts a state of a smartphone during a one-handed operation performed with a right thumb. Id. at 5:8–9, 6:4–5. As shown in Figure 1, touch screen 101 includes comfortable operation area 205, which represents an arc-like range of a thumb capable of operating the touch panel comfortably after holding the smartphone without changing the holding position. Id. at 6:5–11. Specification (“Spec.”), filed September 13, 2017, for their respective details. Appeal 2019-006185 Application 14/294,729 3 Figures 4A–C depict a screen shifting operation performed on the smartphone based on an exemplary one-handed operation. Id. at 5:16, 7:27– 29, 8:28–30. Figure 4A depicts smartphone 100 including home screen 181 composed of multiple icons 155a. Id. at 9:1–3. As shown in Figure 4B, a user may want to select target object 253 with a one-handed operation. Id. at 10:18–19. The user may therefore assume a virtual shifting straight line 257 between reference position 255 and target object 253 and perform a pressing operation to pressed position 259 on line 257 within comfortable operation area 205. Id. at 10:19–23. When the pressing operation is performed, the entire screen is shifted toward pressed position 259 along line 257 while maintaining screen size, the shape of its content, and the arrangement of application screen 155b. Id. at 11:8–11. As shown in Figure 4C, the shifting operation results in the display of blank screen 261 on the left and upper edges of touch screen 101, while application screen 155b runs off the lower right edges. Id. at 11:11–14. Claims Claims 1 and 13 are independent. Claim 1 is illustrative and reproduced below with some formatting added: 1. A method comprising: prompting a user to register a comfortable operation area and a difficult operation area on a touch display of a portable device for said user, wherein said comfortable operation area is located within the reach of a thumb of a hand of said user holding said portable device, and said difficult operation area is located between said comfortable operation area and said hand of said user holding said portable device; in response to a request for a screen shifting operation by said user, shifting a display of contents on said touch display in a direction of a palm of said hand of said user in order to move Appeal 2019-006185 Application 14/294,729 4 a set of graphical objects previously located on an inoperable area to said comfortable operation area of said touch display while maintaining the original sizes of said set of graphical objects, wherein said inoperable area is located beyond the reach of said thumb of said hand of said user holding said portable device, such that a subset of said set of said graphical objects is shown on said screen to allow said user to have an easy access to said subset of graphical objects with said thumb of said hand; and after receiving a user input from said thumb of said hand from said user at said touch display, re-shifting said display of contents in a direction away from said palm of said hand in order to restore content display positions on said touch display before said shifting. Appeal Br. 9, Claims App. References Name Publication Number Date Kishi US 2009/0070670 A1 March 12, 2009 Ma US 2013/0241842 A1 September 19, 2013 Nam US 2013/0307801 A1 November 21, 2013 Han US 2014/0137036 A1 May 15, 2014 Rejections3 Claims Rejected 35 U.S.C. § References/Basis 1–5, 13, 15, 16, 18, 19 103 Han, Nam. Final Act. 3–6. 6, 14 103 Han, Nam, Kishi. Id. at 6–7. 17 103 Han, Nam, Ma.4 Id. at 7–8. 3 The Application was examined under the first inventor to file provisions of the AIA. Final Act. 2. 4 The Final Office Action states that claim 17 stands rejected as unpatentable over the combination of Han and Ma. See Final 7. Claim 7, however, depends ultimately from Claim 13, which stands rejected as unpatentable Appeal 2019-006185 Application 14/294,729 5 ANALYSIS We have reviewed the rejections of Claims 1–6 and 13–19 in light of Appellant’s arguments that the Examiner erred. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments as they are presented in the Appeal Brief and the Reply Brief. CLAIMS 1–6 and 13–19: OBVIOUSNESS BASED ON AT LEAST HAN AND NAM Appellant argues the Examiner’s § 103 rejection of Claims 1–6 and 13–19 with reference to independent Claims 1 and 13. Appeal Br. 5–7; Reply Br. 2–4. We therefore decide the appeal of the § 103 rejections on the basis of independent Claims 1 and 13 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appellant contends the Examiner erred because neither Han nor Nam teaches or suggests the following limitation of Claim 1 (which is recited similarly in Claim 13): shifting a display of contents on said touch display in a direction of a palm of said hand of said user in order to move a over the combination of Han and Nam. See id. at 5. Accordingly, because the Final Office Action relies on findings from Han, Nam, and Ma to meet the elements of Claim 17 (including all of the elements of parent Claims 13 and 15), along with rationale to combine Han with Nam and Han with Ma, we consider Claim 17 to stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Han, Nam, and Ma. We treat this irregularity in the record as a typographical error. Appeal 2019-006185 Application 14/294,729 6 set of graphical objects previously located on an inoperable area to said comfortable operation area of said touch display while maintaining the original sizes of said set of graphical objects. Appeal Br. 2, 6–7; Reply Br. 2. Appellant also contends the Examiner erred because Han’s teachings conflict with Nam’s teachings. Appeal Br. 5–6; Reply Br. 3. For the reasons discussed below, we are not persuaded of Examiner error. In rejecting Claims 1 and 13, the Examiner finds Han teaches the entirety of the “shifting” limitation except for “maintaining the original sizes of said set of graphical objects.” Ans. 5; Final Act. 3–4; accord Final Act. 5 (“Claim 13 is similar in scope as Claim 1 and is rejected under similar analysis.”). In particular, the Examiner finds Han discloses a mobile device 200 including telephone dialing screen 205 that can be shifted in the direction of the hand, finger, or thumb of the user holding the mobile device, such that the shifted telephone dialing screen 220 is displayed in a reduced size (including its pad buttons) on mobile device 200. Ans. 5 (citing Han Figs. 2A–2C, 3A–E, ¶¶ 37, 39–41, 50–55). Figure 3D of Han is illustrative and is reproduced below. Appeal 2019-006185 Application 14/294,729 7 Figure 3D of Han depicts how a user may minimize operation window 220 by entering user input 225 (for example, a hand swipe from the middle of the display area toward the lower right-hand corner of the display area). Han ¶ 54. The Examiner finds Han does not explicitly teach performing its shifting method “while maintaining the original sizes of said set of graphical objects.” Final Act. 4; Ans. 5. The Examiner finds, however, that Nam teaches this limitation. Final Act. 4 (citing Nam ¶ 103, Figs. 2, 8A); Ans. 5– 6 (additionally citing Nam ¶¶ 51, 61–62, Figs. 4B, 5B, 6). In particular, the Examiner finds: Nam, fig. 8A illustrates that a digital portable terminal displays a home screen containing a plurality of icons on a display area 805 of the home screen. . . . With a user input (e.g., a touch input with a thumb . . . ), a user interface (UI) layout of the home screen can be changed (or transformed) from the display area 805 to a comfort zone 810 of the home screen by rearranging the user interfaces including the plurality of icons. Appeal 2019-006185 Application 14/294,729 8 The plurality of the icons are displayed in a rearranged screen and have the original size and interval. Ans. 6 (citations omitted). Figure 8A of Nam is illustrative and reproduced below. Figure 8A of Nam depicts a home screen with icons rearranged at new coordinates on a current default comfort zone 810 with the same size and interval as displayed on an existing display area 805. Nam ¶ 103. Nam defines comfort zone 810 as an area touchable by a thumb of a one-hand user, with a relatively small available area for icons as compared to existing display area 805. Id. The Examiner reasons: It would have been obvious to a person of ordinary skill in the art at the time of the filing to learn from Nam the shifting of graphical object while maintaining their size because . . . known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have Appeal 2019-006185 Application 14/294,729 9 been predictable to one of ordinary skill in the art. Here the design incentive might be keeping the graphical object the same size because smaller objects are sometimes harder to touch. Additionally it would have been a simple substitution of one known element scaled screen for another pure shifted objects to obtain predictable results of ease of use. Final Act. 4–5. The Examiner further reasons: The combination of Han’s teachings and Nam’s teachings provides a modified (or resized or reduced) screen for a single hand that maintains the original size and interval of the graphical objects (e.g., icons, buttons, etc.) to improve the accuracy of the user’s interaction with graphical objects displayed within the reduced screen of the mobile device and enhance the user experience. Ans. 5. Appellant contends neither Han nor Nam teaches or suggests the “shifting” as claimed. Reply Br. 2; see also Appeal Br. 5, 6–7. In particular, Appellant argues Han’s “generating and displaying” is different because “the smaller icons within [Han’s] operation window 200 have to be separately generated and [are] not the result of simply shifting the original icons” located on display 205. Reply Br. 2 (citing Han, Fig. 3B). Appellant further argues that “it is not possible for all the contents in display 205 to be shown in operation window 220, as depicted in Figure 3B,” and “[t]he directions of user inputs 215 and 225 are exactly opposite to the claimed shifting of display contents to position the desired graphical objects to position them in the claimed corresponding comfortable operation area.” Appeal Br. 7. Appellant also argues: The sizes and positions of all icons within [Nam’s] comfort zones 1-1, 2-1 and 3-1 are re-calculated/transformed in order to fit within a set of predetermined comfort zones, and not simply Appeal 2019-006185 Application 14/294,729 10 “shift[ed] . . . in a direction of a palm of said hand of said user,” as claimed, regardless of their size. Reply Br. 2. Appellant further contends that the Examiner’s proposed combination is defective because Han’s teachings conflict with Nam’s teachings. Appeal Br. 5–6; Reply Br. 3. According to Appellant, “Han teaches changing the sizes of graphical objects instead of maintaining the original sizes of graphical objects,” whereas “Nam teaches maintaining the original sizes of graphical objects.” Appeal Br. 5–6. Appellant therefore argues that a conflict exists between the teachings of Han and Nam that prevents the two references from being combined. Reply Br. 3. Appellant’s arguments are not persuasive for several reasons. First, to the extent Appellant’s arguments attack Han and Nam individually, these arguments are not responsive to the Examiner’s rejection, which relies not on Han or Nam alone, but on their combined teachings. Moreover, we are not persuaded the Examiner erred in relying on the combined teachings of Han and Nam for teaching “shifting” as claimed. As the Examiner finds, Han (for example, Fig. 3D) teaches “shifting” as claimed, except for “maintaining the original sizes of graphical objects.” Contrary to Appellant’s arguments, Figure 3D of Han shows shifting the screen to the user’s comfort area—down and to the right. Han, Fig. 3D, ¶ 54. In addition, Figure 8A of Nam teaches a shifting method that shifts the screen and its icons to a comfort zone while maintaining the original sizes of graphical objects, resulting in the top left of the screen being blank, and the top right of the screen (and some icons) running off the right side of the screen. Nam, Fig. 8A, ¶ 103. Similarly, Appellant’s Figure 4C shows a post-shift screen display with a left portion of the screen now blank and a right portion (and Appeal 2019-006185 Application 14/294,729 11 its icons) running off the screen. See Fig. 4C, Spec. 11:11–14. We also agree with the Examiner that there are market and design incentives for one of ordinary skill in the art to maintain the original sizes of graphical objects during a screen shifting operation, as taught by Nam. See Final Act. 4–5; Ans. 5. For example, maintaining the original sizes of graphical objects would improve not only the accuracy of a user’s input, but also the tactility of the user interface. Second, we are not convinced that Han or Nam cannot teach “shifting” as claimed just because the reference discloses additional steps as part of its shifting process. Claim 1 is not so limiting. Rather, Claim 1 uses the open-ended term “comprising” and, thus, permits the performance of additional steps to achieve a shift, such as the generating, recalculating, or transforming steps described in the prior art. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”). In other words, Claim 1 broadly, but reasonably, encompasses the performance of additional steps for “shifting a display of contents” beyond simply moving the display down and to the right as shown in Appellant’s Figure 4C. See Fig. 4C. Moreover, similar to Han and Nam, Appellant’s Specification describes additional steps as part of its screen shifting operation, including cooperation between touch panel operation and pressing operation, calculating the formula of a shifting straight line, and calculating a shifting vector. See, e.g., Fig. 6 (items 407, 409, 411, 413), Spec. 17:5–18:25. Third, Appellant presents no persuasive evidence that the teachings of Han and Nam conflict with each other. For example, Appellant presents no Appeal 2019-006185 Application 14/294,729 12 persuasive evidence that Han criticizes, discredits, or otherwise discourages maintaining the original sizes of its graphical objected. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that to constitute a teaching away, a disclosure must “criticize, discredit, or otherwise discourage the solution claimed in the [] application.”). Nor does Appellant present any persuasive evidence that Han’s device is incompatible with Nam’s, or that the proposed combination would be inoperable. Instead, Appellant has merely shown that Han and Nam present alternative approaches to screen shifting, which by itself is not enough to establish a teaching away or otherwise rebut the Examiner’s prima facie case of obviousness. See, e.g., In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992). We also agree with the Examiner that Han and Nam do not conflict because one of ordinary skill in the art would understand how to maintain the original size of content in an interface that has been reduced by a shifting operation. See Advisory 2. For example, as cited by the Examiner (see id.), Terrero5 describes that “the reduced size of the user interfaces 110 and 112 illustrated in FIG. 3 may display all of the objects that were displayed in the originally sized user interfaces 110 and 112 illustrated in FIG. 1,” and that “a touch area 140 of one or more of the objects 114 may be maintained (e.g., kept the same size as in the originally sized user interface and not reduced in proportion to the reduced size of the objects 114).” Terrero ¶¶ 40–41; see also id., Figs. 1–3. We therefore sustain the Examiner’s rejections of Claims 1–6 and 13– 19 under 35 U.S.C. § 103. 5 U.S. Patent Application Publication No. 2014/0234581 A1 (filed February 17, 2014, “Terrero”). Appeal 2019-006185 Application 14/294,729 13 CONCLUSION We affirm the Examiner’s rejections of Claims 1–6 and 13–19 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–5, 13, 15, 16, 18, 19 103 Han, Nam 1–5, 13, 15, 16, 18, 19 6, 14 103 Han, Nam Kishi 6, 14 17 103 Han, Nam, Ma 17 Overall Outcome 1–6, 13–19 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). 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation