Apple Inc.

Patent Trials and Appeals Board

Oct 29, 2020

14871816 - (D) (P.T.A.B. Oct. 29, 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.
14/871,816 09/30/2015 Beth DAKIN P23959US1/77770000387101 3405
150004 7590 10/29/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
BARRETT, RYAN S
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BETH DAKIN, JONATHAN LEE, and SIMON M. FRASER
____________

Appeal 2019-005320
Application 14/871,816
Technology Center 2100
____________

Before ERIC B. CHEN, CARL L. SILVERMAN, and
MICHAEL J. ENGLE Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non Final Rejection of claims 1–33, which constitute all pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). A telephonic Hearing was held
September 10, 2020.
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to coordinating movements of various objects in
an electronic document. Abstract; Spec. ¶¶ 2, 4–6, 8, 158, 252–254; Figs.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Apple
Inc. as the real party in interest. Appeal Br. 3.
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5A–5E, 7A, 7B. Claim 1, reproduced below, is exemplary of the subject
matter on appeal (emphases added):
1. A non-transitory computer readable storage medium
storing one or more programs, the one or more programs
comprising instructions, which when executed by an electronic
device with a display, cause the device to:
display, on the display, an electronic document
comprising a first object and a content boundary;
while displaying the electronic document, detect an input
corresponding to a request to translate the electronic document
in a first direction;
in response to detecting the input corresponding to a
request to translate the electronic document, translate a
respective portion of the electronic document in the first
direction in accordance with the detected input \without
translating the first object, so that the first object is outside of
the content boundary of the electronic document;
after translating the respective portion of the electronic
document without translating the first object, detect an end of
the input; and
in response to detecting the end of the input, translate the
respective portion of the electronic document in a second
direction different from the first direction without translating
the first object, so that the first object is within the content
boundary of the electronic document.

Appeal Br. 19 (Claims App.).

THE REJECTIONS
Claims 1–3, 5, 7, 9–14, 16, 18, 20–25, 27, 29, and 31–33 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Ording and Blinnikka.
Non Final Act. 6–27.
Claims 4, 15, and 26 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ording, Blinnikka, and Corcoran. Non Final Act. 27–34.
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Claims 6, 17, and 28 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ording, Blinnikka, and Coyier. Non Final Act. 34–40.
Claims 8, 19, and 30 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ording, Blinnikka, and Lehrian. Non Final Act. 40–42.

REFERENCES
Prior art relied upon by the Examiner:
Name Reference Date
Ording US 2008/0168404 A1 July 10, 2008
Blinnikka et al. US 2009/0049385 A1 Feb. 19, 2009
Lehrian US 2010/0083082 A1 Apr. 1, 2010

Corcoran, “Sticky-Kit,” https ://web.archive.org/web/20131
205224928/http:/lleafo.neVsticky-kit/, 5 December 2013.

Coyier, “Scroll-Then-Fix Content,” https ://css-tricks.com/scroll-fix-
contenV, 17 September 2014.

ANALYSIS

The § 103 rejection of Claims 12–9, 11–20, 22–31, and 33 over
Ording and Blinnikka

Appellant argues, inter alia, the Examiner errs in finding the
combination of Ording and Blinnikka teaches the claim 1 limitation
“translate a respective portion of the electronic document in the first
direction in accordance with the detected input without translating the first

2 Appellant states claim 1 is representative of Group A claims (independent
claims 1, 12, and 23, and dependent claims 2–11, 13–22, 24–31, and 33).
Appeal Br. 10.
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object, so that the first object is outside of the content boundary of the
electronic document” (also referred to as “disputed limitation”). Appeal Br.
10–13. Appellant argues the Examiner errs by failing to support the
combination of Ording and Blinnikka with clearly articulated rationale and
reasoning. Id. at 14–15. In particular, Appellant argues the Examiner’s
rationale that the combination would “help the user quickly find an
important object regardless of translation of the electronic document” merely
relies on the conclusory statement that it would be obvious to combine
Ording and Blinnikka because “it would somehow improve” the Ording
system. Id. at 15.
In the Non Final Action, the Examiner finds Ording teaches some
claim 1 limitations but does not teach the disputed limitation and related
limitations directed to detecting the end of the detected input and translating
the electronic document in a second direction (also referred to as “related
limitations”). Non Final Act. 3–4 (citing Ording Figs. 8B, 8C, 8D; ¶ 230).
The Examiner finds Blinnikka teaches the disputed limitation and the related
limitations, as Blinnikka teaches a medium comprising instructions to:
[(disputed limitation)] translate a respective portion of an
electronic document comprising a first object in a first direction
("The resulting floating visual media element stays in the
viewable area regardless of scrolling of the web page,"
paragraph 0021 lines 13-15) without translating the first object
("The persistent element 500 is the visual media element 312
pulled from the normal page flow of the web page 302 and
repositioned to continually 'float' at a pre-determined position
within the viewable area of the browser window 300 over any
existing content," paragraph 0043 lines 9-13); and
[(related limitation)] translate the respective portion of
the electronic document in a second direction different from the
first direction ("The resulting floating visual media element
stays in the viewable area regardless of scrolling of the web
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page," paragraph 0021 lines 13-15) without translating the first
object ("The persistent element 500 is the visual media element
312 pulled from the normal page flow of the web page 302 and
repositioned to continually 'float' at a pre-determined position
within the viewable area of the browser window 300 over any
existing content," paragraph 0043 lines 9-13).

Id. at 5 (parenthesis and “disputed limitation” and “related limitations”
added).
The Examiner finds the combination of Ording’s gap (area 3930)
between the document and the window, and Blinnikka’s object anchored
near the edge of the window (“such as the upper right corner, an upper left
corner 1110, or a lower right corner 1112”) would result in an anchored
object in the gap between the document and the edge of the window. Id. at
5–6 (citing Blinnikka ¶ 55; see also Ording, Fig. 8C, area 3930). The
Examiner concludes:
it would have been obvious to a person of ordinary skill
in the art before the effective filing date of the claimed
invention to modify the medium of Ording to comprise
instructions to: translate a respective portion of the electronic
document in the first direction without translating the first
object, so that the first object is outside of the content boundary
of the electronic document; and translate the respective portion
of the electronic document in a second direction different from
the first direction without translating the first object. One would
have been motivated to make such a combination to help the
user quickly find an important object regardless of translation
of the electronic document.

Id. at 6.
In the Answer, the Examiner explains the claim language describes a
touchscreen feedback effect commonly known as “rubber banding,” used to
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affirmatively indicate that further scrolling is not possible, along with a
floating object that is anchored to a location on the screen and not affected
by either scrolling or rubber banding. Ans. 5. The Examiner explains that
rubber banding produces a temporary gap between the normal (non-floating)
content and the edge of the window. Id. The Examiner explains if the
floating object is near the edge of the window and smaller than the gap, it
will briefly appear inside the gap rather than inside the normal content. Id.
The Examiner finds Ording discloses rubber banding, including the
gap (3930) visible in figure 8C. Id. The Examiner finds Ording does not
discuss floating objects, but if figure 8C of Ording had a floating object
positioned appropriately, the floating object would appear inside the gap
rather than inside the normal content. Id. The Examiner then finds
Blinnikka discloses a floating object (visual medium element 312). Id.
(citing Blinnikka, Fig. 6; see also Non Final Act. 5; Blinnikka, ¶¶ 21, 43).
The Examiner finds Blinnikka does not expressly discuss rubber banding,
but if figure 6 of Blinnikka had a gap positioned appropriately, the floating
object would appear inside the gap rather than inside the normal content. Id.
The Examiner finds “a combination of Ording and Blinnikka produces
exactly the claim language in question: a rubber banding gap with a floating
object inside.” Id.
Regarding the combination of Ording and Blinnikka, the Examiner
explains the rationale provided in the Non Final Action describes a specific
benefit of Blinnikka and does not recite “somehow improve” or any
variation thereof. Id. at 6 (citing Non Final Act. 6; Appeal Br. 14–15). In
particular, the Examiner asserts the specific benefit is suggested by
Blinnikka, e.g., the discussion of problems to be solved such as the user’s
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interest may temporarily wander to other objects on the page and/or the
floating object may scroll partially out of the window. Id. (citing Blinnikka
¶ 4).
In the Reply Brief, Appellant reiterates that the cited references fail to
teach or suggest “so that the first object is outside of the content boundary of
the electronic document,” as recited in claim 1. Reply Br. 3. Appellant
argues the references only show objects within a content boundary of an
electronic document, never outside and, therefore, there is no conceivable
way that a person of ordinary skill in the art would have combined the cited
references to result in an object outside of a content boundary of an
electronic document. Id. at 4. Appellant argues the Examiner’s findings are
conclusory because the only evidence of an object (e.g., the floating object)
appearing inside a gap (such as the area 3930 described in Ording) is found
in Appellant’s application. Id. at 4–5.
Appellant argues Ording, Figure 8C, shows that gap area 3930 does
not include an object of web page 3912. Id. at 8. Appellant argues
Blinnikka does not describe any behavior related to reaching a content
boundary or displaying objects outside of a content boundary. Id. at 9.
According to Appellant, Blinnikka merely describes keeping the media
player within the viewable area of the browser window regardless of
scrolling behavior. Id. at 9.
Appellant argues the Examiner’s new assertion in the Answer that it
would have been obvious to combine Ording and Blinnikka to solve the
problem that “the user’s interest may temporarily wander to other objects on
the page and/or the floating object may scroll partially out of the window” is
insufficient motivation to solve the problem in the manner claimed. Id. at
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11. Appellant argues the Examiner’s assertion is impermissible hindsight
and based on Appellant’s Specification. Id. (citing Spec. ¶ 17).
We are not persuaded by Appellant’s arguments and agree, instead,
with the findings and conclusions of the Examiner. Ording teaches a gap
between the scrolled document and the window. Ording Fig. 8C, element
3930 on bottom and right side. Ording, Figure 8C, is reproduced below
showing the gap 3930 created by the scrolling:

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Figure 8C of Ording showing gap 3930

Blinnikka teaches scrolling and a floating visual media element.
Blinnikka Figs. 5–7, element 312. Blinnikka, Figure 5, is reproduced below
showing floating visual media element 312:

Figure 5 of Blinnikka showing floating visual media element 312

Rubber banding as explained by the Examiner was known “to
affirmatively indicate that further scrolling is not possible” by “produc[ing]
a temporary gap between the normal . . . content and the edge of the
window” and then the normal content is “rubber banded” back, i.e., pulled
back to the edge of the window. Ans. 5. Rubber banding is also described
in the Specification as “an animation effect at the end of document
scrolling.” Spec. ¶ 4. Additionally, we note Appellant does not rebut the
Examiner’s explanation of rubber banding in the Reply Brief.
The scrolling of Blinnikka includes the visual media element (first
object) which is selected to float during the scrolling and be visible to the
user at all times despite the scrolling. Blinnikka Figs. 5–7, ¶¶ 21, 43, 55.
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During scrolling in the Examiner’s combination of Ording and Blinnikka, in
order for Blinnikka’s visual media element to remain visible when the
scrolling goes beyond the normal content page, the visual media element
would be outside the original content page (content boundary). Id.; see also
Non Final Act. 5–6; Ans. 10–13. Additionally, when Blinnikka’s visual
media element is positioned outside the content boundary due to scrolling, it
would be temporarily positioned in Ording’s gap between the normal
content page and the window.
Regarding the Examiner’s stated motivation to combine the teachings
of Ording and Blinnikka, we are not persuaded by Appellant’s arguments.
Appellant argues an unreasonably narrow teaching of the cited references to
attempt to limit the teaching to the express disclosures, and asserts an overly
demanding standard of obviousness. However, we note:
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness. . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner provides sufficient evidence that one of ordinary
skill in the art would have modified Ording’s scrolling with rubber banding
to include Blinnikka’s scrolling with a floating object. One of ordinary skill
in the art would have recognized the need to find the floating object quickly
despite the translation (scrolling) of the document outside the content
boundary of the document.
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420–21.
Based upon the teachings of the references and the fact that each
claimed element in the disputed limitation was well known in the art, we
agree with the Examiner because the combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. Id. at 415–16. We note Appellant presents no
persuasive arguments that the results are unpredictable. Moreover, as
discussed supra, the Examiner provides sufficient reason why one of
ordinary skill in the art would have combined the references in the manner
suggested. On this record, Appellant does not present sufficient or
persuasive evidence that the combination of the cited references was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 419–21).
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In view of the above, we sustain the rejection of representative claim
1, independent claims 12 and 23, and dependent claims 2, 3, 5, 7, 9, 11, 13,
14, 16, 18, 20, 22, 24, 25, 27, 29, 31, and 33 over Ording and Blinnikka. The
rejection of dependent claims 10, 21, and 32 (Group B claims) over Ording
and Blinnikka is discussed below.

The § 103 rejections of Claims3 10, 21, and 32 over Ording and
Blinnikka
Claim 10 recites “[t]he non-transitory computer-readable storage
medium of claim 1, wherein in response to detecting the end of the input, the
respective portion of the electronic document is translated in the second
direction at a speed faster than a speed of the translation of the respective
portion of the electronic document in the first direction in accordance with
the detected input (emphasis added).”
In the Non Final Action, the Examiner finds:
Ording does teach a medium wherein in response to
detecting the end of the input, the respective portion of the
electronic document is translated in the second direction at a
speed simulating an elastic attachment (figure 7 step 724)
which is not dependent on the speed of the translation of the
respective portion of the electronic document in the first
direction in accordance with the detected input. It would have
been obvious to a person of ordinary skill in the art that if the
detected input is slow and the simulated elastic is strong, the
speed of the translation of the respective portion of the
electronic document in the second direction may be faster than
speed of the translation of the respective portion of the
electronic document in the first direction.
Accordingly, it would have been obvious to a person of
ordinary skill in the art before the effective filing date of the

3 Appellant states claim 10 is representative of Group B claims (dependent
claims 10, 21, and 32). Appeal Br. 15.
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claimed invention to modify the medium of Ording such that in
response to detecting the end of the input, the respective portion
of the electronic document is translated in the second direction
at a speed faster than a speed of the translation of the respective
portion of the electronic document in the first direction in
accordance with the detected input. One would have been
motivated to make such a combination to reduce the time the
user must wait for the rubber banding process.

Non Final Act. 10–11.
Appellant argues the Examiner’s motivation for modifying Ording to
reduce the time the user must wait for the rubber banding process is
conclusory and insufficient to establish obviousness. Appeal Br. 15–17.
In the Answer, the Examiner reiterates and adds that a person of
ordinary skill in the art of computer programming is able to adjust the speed
of a simulated elastic effect, and is able to predict the results of such a
variation. Ans. 7 (citing KSR, 550 U.S. at 417).
In the Reply Brief, Appellant argues the Examiner’s rationale to
modifying Ording to “reduce the time the user must wait for the rubber
banding process” is conclusory, and is not found anywhere in Ording. Reply
Br. 13–15.
We are not persuaded by Appellant’s arguments and agree, instead,
with the findings and conclusions of the Examiner. Similar to Appellant’s
arguments discussed supra regarding the obviousness rejection of claim 1,
Appellant argues an unreasonably narrow view of the teachings of the
references and an overly demanding requirement for obviousness. Here, the
viewer is interested in completing the rubber banding process and returning
to the original position. It is reasonable to expect it to be desirable to return
at faster speed than the finger scrolling in the first direction. Additionally,
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the return of the rubber band in the second direction offers the options of
faster than, slower than, or the same speed. Any of these speeds can be
selected by one of ordinary skill in the art for the use of the system and the
Examiner provides sufficient articulated reasoning with rational
underpinnings to support the legal conclusion of obviousness. KSR, 550
U.S. at 418.
Therefore, we sustain the rejections of representative claim 10 and
claims 21 and 32.
The § 103 rejections of the remaining claims 4, 6, 8, 15, 17, 19, 26,
28, and 30 over Ording and Blinnikka and the additional cited references
In the § 103 rejections of remaining dependent claims 4, 6, 8, 15, 17,
19, 26, 28, and 30 over Ording, Blinnikka and the additional cited references
(Corcoran, Coyier, and Lehrian), the Examiner presents reasonable evidence
to support rejection and Appellant does not argue separately. Therefore, we
sustain the rejection of claims 4, 6, 8, 15, 17, 19, 26, 28, and 30.

CONCLUSION
We sustain the Examiner’s decision rejecting claims 1–3, 5, 7, 9–14,
16, 18, 20–25, 27, 29, and 31–33 over Ording and Blinnikka under
35 U.S.C. § 103(a).
We sustain the Examiner’s decision rejecting claims 4, 15, and 26
over Ording, Blinnikka, and Corcoran under 35 U.S.C. § 103(a).
We sustain the Examiner’s decision rejecting claims 6, 17, and 28
over Ording, Blinnikka, and Coyier under 35 U.S.C. § 103(a).
We sustain the Examiner’s decision rejecting claims 8, 19, and 30
over Ording, Blinnikka, and Lehrian under 35 U.S.C. § 103(a).
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DECISION

Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–3, 5, 7, 9–
14, 16, 18,
20–25, 27,
29, 31–33
103 Ording, Blinnikka 1–3, 5, 7, 9–
14, 16, 18,
20–25, 27,
29, 31–33

4, 15, 26 103 Ording, Blinnikka,
Corcoran
4, 15, 26
6, 17, 28 103 Ording, Blinnikka,
Coyier
6, 17, 28
8, 19, 30 103 Ording, Blinnikka,
Lehrian
8, 19, 30
Overall
Outcome
1–33

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)(iv).
See 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED