Apple Inc.Download PDFPatent Trials and Appeals BoardNov 12, 20202020006700 (P.T.A.B. Nov. 12, 2020) 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. 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 Copy with citationCopy as parenthetical citation