LENOVO (SINGAPORE) PTE. LTD.

Patent Trials and Appeals Board

Apr 29, 2021

2019006185 (P.T.A.B. Apr. 29, 2021)

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
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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.

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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
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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
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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.
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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.
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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.
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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
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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
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“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
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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
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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”).
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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