Apple Inc.

Patent Trials and Appeals Board

Nov 12, 2020

2020006700 (P.T.A.B. Nov. 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.
15/789,079 10/20/2017 Robert H. BAXLEY 581791 (P5973USR1) 2120
77970 7590 11/12/2020
Polsinelli -- Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
BASEHOAR, ADAM L
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT H. BAXLEY and JEFFREY TYSON
____________

Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2
Technology Center 3900
____________

Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
ERIC B. CHEN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–20, 23, and 24. Claims 21 and 22 have been
indicated as containing allowable subject matter. Non-Final Act. 27. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Apple Inc.
Appeal Br. 3.
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

2

STATEMENT OF THE CASE
Appellant seeks to reissue U.S. Patent 9,165,302 (“’302 patent”)
directed to scaling up an image of an article displayed on a web page. To
this end, the article is displayed on the web page in a first scale and, based
on a cursor-selection of the displayed image, the image is enlarged to a
second scale on the same page. See Abstract. Claim 1 is illustrative
(underlining and bracketing added to indicate earlier claim amendments):
1. A method comprising:
displaying a first image in a main display area and a
second image in a thumbnail display area on a web page
hosted on a web server, wherein the first image is displayed in
a first scale and the second image is displayed in a second
scale that is smaller than the first scale;
receiving a selection of the second image;
based on the selection, displaying the second image in
the main display area by replacing the first image [moving the
second image to a first location associated with the first image
and moving the first image to a second location corresponding
to a previous location of the second image on the web page],
wherein the second image is [enlarged to] presented in the
first scale, and the first image is presented in the second scale
[the first scale as the second image is moved to the first
location, the enlarging being performed in a continuous and
animated manner, without refreshing the web page];
while the second image [is located at the first location]
is displayed in the main display area, detecting that an
indicator is positioned at a first point over the second image,
wherein movement of the indicator is controlled by a user;
in response to detecting that the indicator is positioned
at the first point, enlarging a portion of the second image
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

3
corresponding to the first point, wherein the portion of the
second image that is enlarged is presented in a third scale that
is larger than the first scale; and
after enlarging the portion of the second image,
relocating web page elements to accommodate the enlarged
portion of the second image, wherein relocating the web page
elements comprises animating the web page elements to
smoothly move from an original position and size to a new
position and new size.

THE REJECTIONS
The Examiner rejected claim 24 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Non-Final Act. 3–4.2
The Examiner rejected claims 1, 2, 4, 5, 13, 15, 16, 18, 20, 23, and 24
under 35 U.S.C. § 103 as unpatentable over Latin-Stoermer (US 7,856,380
Bl; issued Dec. 21, 2010), Barbanson (US 2003/0164861 Al; published Sept.
4, 2003), and Rogers (US 6,133,914; issued Oct. 17, 2000). Non-Final Act.
4–13.
The Examiner rejected claims 3 and 14 under 35 U.S.C. § 103 as
unpatentable over Latin-Stoermer, Barbanson, Rogers, and Muraveynyk (US
2009/0295830 Al; published Dec. 3, 2009). Non-Final Act. 14–15.

2 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
September 25, 2019 (“Non-Final Act.”); (2) the Appeal Brief filed February
20, 2020 (supplemented March 19, 2020) (“Appeal Br.”); (3) the Examiner’s
Answer mailed July 24, 2020 (“Ans.”); and (4) the Reply Brief filed
September 24, 2020 (“Reply Br.”).
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

4
The Examiner rejected claims 6 and 17 under 35 U.S.C. § 103 as
unpatentable over Latin-Stoermer, Barbanson, Rogers, and Frank (US
5,651,107; issued July 22, 1997). Non-Final Act. 15–16.
The Examiner rejected claims 7, 8, 10, 11, and 19 under 35 U.S.C.
§ 103 as unpatentable over Latin-Stoermer, Barbanson, Rogers, and Farrell
(US 2008/0250332 Al; published Oct. 9, 2008). Non-Final Act. 16–24.
The Examiner rejected claim 9 under 35 U.S.C. § 103 as unpatentable
over Latin-Stoermer, Barbanson, Rogers, Farrell, and Muraveynyk. Non-
Final Act. 24–25.
The Examiner rejected claim 12 under 35 U.S.C. § 103 as
unpatentable over Latin-Stoermer, Barbanson, Rogers, Farrell, and Frank.
Non-Final Act. 25–26.

THE WRITTEN DESCRIPTION REJECTION
Regarding claim 24, the Examiner finds that the ’302 patent does
show possession of relocating the web page elements to accommodate the
thumbnail display area as claimed, but rather supports relocating web page
elements to accommodate an enlarged main image. Non-Final Act. 3–4;
Ans. 36–37.
Appellant argues that Figures 2B, 3A, and 3B all show the claimed
interface with an enlarged view of the main display area relative to what is
shown in Figure 2A, and these figures show that the webpage was
rearranged to accommodate the interface, which includes the thumbnail
display area. Appeal Br. 22–24.

Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

5
ISSUE
Under § 112, first paragraph, has the Examiner erred in rejecting
claim 24 by finding that the recited limitation, “relocating the web page
elements to accommodate the enlarged portion of the second image[] further
includes relocating the web page elements to accommodate the thumbnail
display area” fails to comply with the written description requirement? This
issue turns on whether Appellant’s original disclosure conveys with
reasonable clarity to ordinarily skilled artisans that Appellant possessed this
feature as of the filing date.

ANALYSIS
On this record, we agree with Appellant that Appellant’s original
disclosure reasonably conveys possession of relocating the web page
elements to accommodate the thumbnail display area as claimed. As shown
in Appellant’s Figure 2B reproduced below, the web page includes scaled up
image 220 and associated thumbnail images 222 as noted in paragraph 28 of
Appellant’s original Specification. See Appl’n 12/240,761, Spec. filed Sept.
29, 2008 (“Original Spec.”).3

3 Although the Examiner refers to the ’302 patent in connection with the
written description rejection (Non-Final Act. 4; Ans. 36–37), we nonetheless
refer to the ’302 patent’s corresponding Application No. 12/240,761 because
it best reflects the disclosure as originally filed.
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

6

Original Figure 2B showing scaled up and thumbnail images

As shown below, Figure 3A of the original disclosure shows a third
larger scale image 302 depicting an enlarged portion of the scaled up image
designated by a cursor along with associated thumbnail images 310 in a
contiguous rectangular display area. See Original Spec. ¶ 30.
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

7

Original Figure 3A showing enlarged portion of scaled up image and
associated thumbnail images

As shown below, the original disclosure’s Figure 3B shows a similar
arrangement with a higher-resolution enlarged portion of the scaled up
image (replacement image 304) and associated thumbnail images 310 in a
contiguous rectangular display area. See Original Spec. ¶ 33.
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

8

Original Figure 3B showing higher-resolution enlarged portion of scaled
up image and associated thumbnail images

As shown above, after the designated portion of the scaled up image
in Figure 2B is enlarged as shown in Figures 3A and 3B, the thumbnail
images are displayed in a designated rectangular area 310 contiguous with
the enlarged portion depiction—a contiguous rectangular area that is not
present in Figure 2A.
The import of this functionality is that that web page elements are
relocated to not only accommodate the second image’s enlarged portion, but
also the associated rectangular thumbnail display area that is contiguous
with that enlarged portion. Although the original Specification does not
describe this thumbnail display area accommodation explicitly, it is well
settled that the written description requirement does not demand any
particular form of disclosure or require a verbatim recitation. See Ariad
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

9
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
banc).
To be sure, a description that merely renders the invention obvious
does not satisfy the written description requirement under § 112. Id. Accord
Ans. 37 (noting this point). But here, the original drawings reasonably
convey to ordinarily skilled artisans that the web page elements are relocated
to accommodate both the second image’s enlarged portion and its
contiguous rectangular thumbnail display area to show possession of that
feature.
Therefore, we are persuaded that the Examiner’s written description
rejection of claim 24 is erroneous.

THE OBVIOUSNESS REJECTION OVER LATIN-STOERMER,
BARBANSON, AND ROGERS

Regarding independent claim 1, the Examiner finds that Latin-
Stoermer displays (1) a first image in a first scale in a main display area, and
(2) a second image in a second smaller scale in a thumbnail display area on a
web page. Non-Final Act. 4–5. The Examiner also finds that, based on a
received selection of the second image, Latin-Stoermer displays the second
image in the main display area by replacing the first image, where the
second image is presented in the first scale and the first image is presented in
the second scale. Id. 5.
Although the Examiner acknowledges that Latin-Stoermer does not
(1) enlarge a portion of the second image responsive to detecting that an
indicator is positioned at a first point over that image, and (2) relocate web
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

10
page elements to accommodate the enlarged portion, the Examiner cites
Barbanson for teaching these features. Non-Final Act. 5–6.
The Examiner also acknowledges that the Latin-Stoermer and
Barbanson do not relocate web page elements by animating them to move
them smoothly from an original position and size to a new position and size,
the Examiner cites Rogers for teaching this feature. Non-Final Act. 7–8.
Based on these collective teachings, the Examiner concludes that the claim
would have been obvious. See id. 4–8.
Appellant argues that the prior art does not teach or suggest enlarging
a portion of the second image corresponding to the first point, where the
portion of the second image is presented in a third scale larger than the first
scale, where this enlargement occurs after receiving a selection of the second
image and, based on that selection, displaying the second image in the main
display area by replacing the first image, where the second image is
presented in the first scale and the first image is presented in the second
scale as claimed. Appeal Br. 6–11. According to Appellant, Barbanson
does not disclose enlarging the second image to the first scale before
enlarging it to the third scale as claimed. Id. 9–11.
Appellant also argues that the prior art does not teach or suggest the
recited indicator positioning detection while the second image is displayed
in the main display area, and, responsive to this detection, enlarging a
portion of the second image corresponding to the first point over that image
to a third scale larger than the first scale. Appeal Br. 11–13; Reply Br. 1–5.
According to Appellant, not only does Barbanson not present web page
objects in a main display area, Barbanson’s indicator position detection is
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

11
not performed in the context of an interface for displaying first and second
images in main and thumbnail display areas, respectively. Appeal Br. 11–
13.
Appellant further contends that the prior art does not teach or suggest
relocating web page elements to accommodate the second image’s enlarged
portion after that portion is enlarged. Appeal Br. 13–15. According to
Appellant, the prior art fails to relocate web page elements in the context of
an interface for displaying first and second images in main and thumbnail
display areas, respectively. Id.
Appellant further contends that the prior art is not properly
combinable because, among other things, the Examiner fails to explain why
it would have been obvious to combine Barbanson’s enlargement of a
selected image in a website that requires moving web page elements to
accommodate that enlargement into an interface that already provides for
enlargement without needing to rearrange those elements. Appeal Br. 15–
17. Appellant adds that not only does the Examiner fail to explain why it
would have been obvious to combine two different types of enlargement
operations on the same image, nor does Latin-Stoermer suggest further
enlarging an image as the Examiner alleges. Appeal Br. 18–21. Appellant
also contends that ordinary creativity is insufficient to overcome the
deficiencies in the Examiner’s articulated rationale to combine the
references. Appeal Br. 22.

Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

12

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Latin-Stoermer, Barbanson, and Rogers collectively would have
taught or suggested the recited limitations?
(2) Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
As noted above, the Examiner cites Latin-Stoermer for teaching the
first three limitations of claim 1, including (1) displaying a first image in a
first scale in a main display area, and a second image in a second smaller
scale in a thumbnail display area on a web page, and (2) displaying the
second image in the main display area by replacing the first image, where
the second image is presented in the first scale and the first image is
presented in the second scale. Non-Final Act. 4–5. These findings are
undisputed.
What is disputed, however, is the Examiner’s reliance on Barbanson
and Rogers to cure Latin-Stoermer’s acknowledged deficiencies in
connection with (1) the recited enlargement of the second image portion, and
(2) relocating web page elements to accommodate that enlarged portion.
On this record, we see no error in the Examiner’s proposed
combination. As shown in Latin-Stoermer’s Figure 5 reproduced below, a
customer user interface (UI) includes a selectable thumbnail 161 that, when
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

13
selected, exchanges that image in an alternative viewing area with the image
in primary viewing area 132. Latin-Stoermer col. 9, ll. 1–8.

Selectable thumbnails in UI in Latin-Stoermer’s Figure 5

Notably, Latin-Stoermer’s customer UI can contain options about (1)
the displayed image, and (2) what other processes can be performed on—or
with—the image. Latin-Stoermer col. 9, ll. 15–17. In some embodiments,
for example, these options can allow the image to be manipulated, for
example, to rotate the item’s views. Id. col. 9, ll. 17–20.
Our emphasis underscores Latin-Stoermer’s exemplary and non-
limiting language in connection with these other image processes, namely
that image rotation is just one example of these other processes. Accord
Ans. 11 (noting this point). Given Latin-Stoermer’s teaching that the
displayed image can be manipulated further, we see no reason why this
further manipulation could not include further enlarging or zooming at least
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

14
a portion of the displayed image, particularly when considered in light of
Barbanson as the Examiner indicates. See Ans. 14–15, 24–27.
Barbanson’s system enlarges selectable content to more easily view
that content. See Barbanson Abstract. To this end, when a cursor is placed
on an item, the item is selected and enlarged automatically. See Barbanson
¶¶ 11, 37–38; Fig. 3B.
Given this functionality, we see no reason why a displayed image in
the primary viewing area 132 of Latin-Stoermer’s interface of Figure 5 that
results from selecting a corresponding thumbnail image could not be further
enlarged by merely placing a cursor over the item as suggested by
Barbanson. This enhancement would effectively zoom the selected image
according to the cursor’s position—a magnification that would enable the
selected content to be viewed more easily. Accord Ans. 8 (noting this
point).
We reach this conclusion emphasizng, as does the Examiner, that
nothing in Latin-Stoermer precludes this additional image manipulation,
particularly given Latin-Stoermer’s open-ended and exemplary teaching that
additional processes can be formed on the displayed image in column 9,
lines 15 to 20. In short, the Examiner’s proposed enhancement, namely
further enlarging the displayed image in the primary viewing area in Latin-
Stoermer’s Figure 5 in light of Barbanson, uses prior art elements
predictably according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
That Latin-Stoermer does not state explicitly that one of these
additional processes performed on the displayed image further enlarges the
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

15
image as Appellant contends (Appeal Br. 20–21) does not preclude further
image enlargement or zooming consistent with the Examiner’s proposed
combination. Appellant’s arguments to the contrary, including Appellant’s
various alternative interpretations of Latin-Stoermer’s passage in this regard
(Appeal Br. 20–21), are unavailing. Moreover, the Examiner’s proposed
enhancement is also consistent with the recited sequence in the first five
steps of claim 1, namely that enlarging the second image’s portion to a third
scale occurs after selecting the second image (i.e., a thumbnail) for display
in the first scale in the primary viewing area in Latin-Stoermer’s Figure 5.
We also see no error in the Examiner’s finding that Barbanson teaches
relocating web page elements to accommodate a web page image’s enlarged
portion, where this relocation moves those elements from an original
position to a new position. Non-Final Act. 6; Ans. 18. As Barbanson’s
paragraph 41 explains, when an item or selected content is enlarged, other
items may be repositioned to accommodate the enlarged item such that no
item is obscured by the enlarged item.
Given this teaching, we see no error in the Examiner’s conclusion that
relocating web page elements to accommodate the second image’s enlarged
portion under the Latin-Stoermer/Barbanson combination by moving those
elements to a new position would have been obvious to ensure that the
elements are not obscured by the enlarged item as the Examiner indicates.
See Non-Final Act. 6–7.
Although Barbanson does not specify that this web page element
relocation animates those elements to smoothly move them from an original
position and size to a new position and size, we nonetheless see no error in
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

16
the Examiner’s reliance on Rogers for teaching that such an animation-based
relocation is known in the art, and that providing such an animation in
connection with the web page element relocation under the Latin-
Stoermer/Barbanson combination would have been obvious. See Non-Final
Act. 6–7; Ans. 18–20.
As shown in Rogers’s Figure 5, the transition of object 40 from its
original to final size and position is animated to, among other things, inform
the user about where the object is going, thus ensuring the user does not get
lost. See Rogers col. 8, l. 52 – col. 9, l. 1. Accord Non-Final Act. 7–8; Ans.
29. On this record, providing Rogers’s known animation technique in
connection with the Latin-Stoermer/Barbanson web page element relocation
as the Examiner proposes uses prior art elements predictably according to
their established functions—an obvious improvement. See KSR, 550 U.S. at
417.
Appellant’s arguments regarding Barbanson’s alleged shortcomings in
connection with the recited second image enlargement, including the
contention that this enlargement is ostensibly not done in the context of an
interface for displaying a first image in a main display area and a second
image in a thumbnail display area on a web page (Appeal Br. 9–13), are
unavailing. In short, Appellant’s individual attacks on Barbanson do not
show nonobviousness where, as here, the rejection is based on the cited
references’ collective teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Accord Ans. 6, 13 (noting this individual attack).
We reach the same conclusion regarding Appellant’s arguments pertaining
to Barbanson’s and Rogers’s alleged shortcomings in connection with the
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

17
recited relocation (Appeal Br. 14–15) for, here again, Appellant’s individual
attacks on Barbanson and Rogers do not show nonobviousness where, as
here, the rejection is based on the cited references’ collective teachings. See
Merck, 800 F.2d at 1097.
We also see no error in the Examiner’s articulated reason to combine
the references despite Appellant’s arguments to the contrary (Appeal Br. 15–
22). See Non-Final Act. 6–8; Ans. 22–31. As noted previously, the
Examiner’s proposed combination uses prior art elements predictably
according to their established functions—an obvious improvement. See
KSR, 550 U.S. at 417. Moreover, nothing on this record indicates that the
cited references criticize, discredit, or otherwise discourage investigation
into the invention claimed as required for teaching away. See Norgren Inc.
v. Int’l Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). Accord Ans. 17–18, 34–35.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 4, 5, 13, 15, 16, 18, 20, 23, and 24 not argued
separately with particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 3, 6–
12, 14, 17, and 19. Non-Final Act. 14–26. Because these rejections are not
argued separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.

CONCLUSION
In summary:
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

18
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
24 112, first
paragraph
Written
Description
24
1, 2, 4, 5,
13, 15,
16, 18,
20, 23,
24
103 Latin-
Stoermer,
Barbanson,
Rogers
1, 2, 4, 5, 13,
15, 16, 18,
20, 23, 24

3, 14 103 Latin-
Stoermer,
Barbanson,
Rogers,
Muraveynyk
3, 14
6, 17 103 Latin-
Stoermer,
Barbanson,
Rogers,
Frank
6, 17
7, 8, 10,
11, 19
103 Latin-
Stoermer,
Barbanson,
Rogers,
Farrell
7, 8, 10, 11,
19

9 103 Latin-
Stoermer,
Barbanson,
Rogers,
Farrell,
Muraveynyk
9
12 103 Latin-
Stoermer,
Barbanson,
Rogers,
Farrell,
Frank
12
Appeal 2020-006700
Application 15/789,079
Patent 9,165,302 B2

19
Overall
Outcome
1–20, 23, 24

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).

AFFIRMED