Apple Inc.

Patent Trials and Appeals Board

Dec 28, 2020

2020002873 (P.T.A.B. Dec. 28, 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.
15/128,952 09/23/2016 Lawrence Y. YANG P23258US1/77770000372101 5590
150004 7590 12/28/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
FLORES, ROBERTO W
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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 LAWRENCE Y. YANG, PATRICK L. COFFMAN,
CRAIG M. FEDERIGHI, and KEVIN LYNCH
Appeal 2020-002873
Application 15/128,952
Technology Center 2600
BeforeMAHSHID D. SAADAT, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 97–99, 101, 103–109, and 112–145,
which are all claims pending in the application. Appellant has canceled
claims 1–96, 100, 102, 110, and 111. See Appeal Br. 31 et seq. (Claims
App.) We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2019). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 4.
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STATEMENT OF THE CASE2
The claims are directed to transition from use of one device to
another. See Spec. (Title). In particular, Appellant’s disclosed embodiments
and claimed invention “relate[] generally to computer user interfaces, and
more specifically to techniques for permitting a user to transition from use of
one device to another, seamlessly.” Spec. ¶ 6.
Exemplary Claims
Claims 97, 98, 115, and 116, reproduced below, are representative of
the subject matter on Appeal (emphases added to contested limitations):
97. A non-transitory computer-readable storage
medium storing one or more programs, the one or more
programs comprising instructions, which when executed by one
or more processors of an electronic device with a touch-
sensitive display, cause the electronic device to:
detect a first contact on the touch-sensitive display, the
first contact having a first maximum intensity, wherein the
touch-sensitive display comprises one or more sensors to detect
the intensity of contacts with the touch-sensitive display;
in response to a determination that the first maximum
intensity is below a threshold intensity, launch a first
application;
while displaying, on the touch-sensitive display, a user
interface of the first application, wherein the user interface of
the first application includes respective content, detect a second
contact on the touch-sensitive display over at least a portion of
the respective content, the second contact having a second
maximum intensity; and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 22, 2019); Reply Brief (“Reply Br.,” filed Mar. 5, 2020); Examiner’s
Answer (“Ans.,” mailed Jan. 8, 2020); Non-Final Office Action (“Non-Final
Act.,” mailed Apr. 1, 2019); and the original Specification (“Spec.,” filed
Sept. 23, 2016.
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in response to detecting the second contact on the touch-
sensitive display:
in accordance with a determination that the second
maximum intensity is above the threshold intensity:
initiate a first process for sending an
instruction, via wireless communication, to an
external device, wherein the instruction causes the
external device to display an affordance for
launching a second application on the external
device corresponding to the first application and
display the respective content in the second
application; and
in accordance with a determination that the second
maximum intensity is below the threshold intensity:
initiate a second process other than for
sending the instruction to the external device.
98. The non-transitory computer-readable storage
medium of claim 97, wherein initiating the first process for
sending the instruction to the external device includes:
displaying a user interface that includes a first
affordance for instructing the external device to display an
affordance for launching the second application;
while displaying the user interface that includes the first
affordance for instructing the external device to display an
affordance for launching the second application;
detecting a user selection of the first affordance for
instructing the external device to display an affordance
for launching the second application; and
sending the instruction in response to detecting the user
selection of the first affordance for instructing the external
device to display an affordance for launching the second
application.
115. The non-transitory computer-readable storage
medium of claim 98, wherein the one or more programs further
comprise instructions, which when executed by the one or more
processors, cause the electronic device to:
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after sending the instruction to the external device,
display an indication that the instruction has been sent to the
external device.
116. The non-transitory computer-readable storage
medium of claim 98, wherein:
launching the first application includes displaying, on the
electronic device, a first portion of content associated with the
first application, wherein the second contact is detected while
displaying the first portion of the content associated with the
first application; and
the instruction to the external device further causes the
external device to display, when the external device launches
the second application, a second portion of the content
associated with the first application, wherein the second
portion is larger than the first portion.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Anson US 2006/0132456 A1 June 22, 2006
Lee et al. (“Lee”) US 2012/0040719 A1 Feb, 16, 2012
Yan US 2014/0359637 A1 Dec. 4, 2014
Langholz US 2015/0271120 A1 Sept. 24, 2015
REJECTIONS
R1. Claims 97–99, 101, 103–109, 112–114, 118–128, and 132–142
stand rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Yan and Anson. Non-Final Act. 5.
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R2. Claims 115, 129, and 143 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Yan, Anson, and Langholz.
Non-Final Act. 13.
R3. Claims 116, 117, 130, 131, 144, and 145 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combination of Yan, Anson,
and Lee. Non-Final Act. 15.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 17–29) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection R1 of claims 97, 99, 101, 103–109, 112, 113, 119–
127, and 133–141 on the basis of representative claim 97; and we decide the
appeal of obviousness Rejection R1 of claims 98, 114, 118, 128, 132, and
142 on the basis of representative claim 98. We decide the appeal of
obviousness Rejection R2 of claims 115, 129, and 143 on the basis of
representative claim 115. We decide the appeal of obviousness Rejection
R3 of claims 116, 117, 130, 131, 144, and 145 on the basis of representative
claim 116.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 97,
98, 115, and 116 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claims 97, 98, 115, and 116 for emphasis as follows.
1. § 103 Rejection R1: Claims 97, 99, 101, 103–109, 112, 113, 119–127,
133–141
Issue 1
Appellant argues (Appeal Br. 17–20; Reply Br. 4–7) the Examiner’s
rejection of claim 97 under 35 U.S.C. § 103 as being obvious over the
combination of Yan and Anson is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] non-transitory computer-readable storage medium storing
one or more programs, the one or more programs comprising instructions,
which when executed by one or more processors of an electronic device with
a touch-sensitive display, cause the electronic device to,” inter alia, “in
response to a determination that the first maximum intensity is below a
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threshold intensity, launch a first application;” and, “while displaying, on the
touch-sensitive display, a user interface of the first application, wherein the
user interface of the first application includes respective content, detect a
second contact on the touch-sensitive display over at least a portion of the
respective content,” as recited in claim 97 (emphasis added)?
Principles of Law
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Finally, claim terms are to be given their broadest reasonable
interpretation, as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Analysis
Appellant contends the Examiner failed to present a prima facie case
for obviousness because Yan is allegedly deficient with respect to teaching
or suggesting the contested limitation, i.e., “detect[ing] a second contact on
the touch sensitive display over at least a portion of the respective content.”
Appeal Br. 17–18. Specifically, Appellant alleges:
Yan does not disclose a technique where a user can initiate a
process for continuing a task while content of that task is
being displayed. Instead, the selection of these tasks occurs in
a standalone user interface (UI) that is entirely separate from a
user interface of a specific task. For example, FIG. 3 of Yan
above clearly shows that UI 302 does not include content of a
specific task, let alone content that is to be continued on a
second device. In contrast, amended claim 97 requires,
“detect[ing] a[] contact on the touch sensitive display over at
least a portion of the respective content.”
Appeal Br. 19. Appellant further argues that Figure 3 of Yan makes it
“evident that no content of a particular task is displayed when the user
selects tasks for continuation. Moreover, a task that is ‘in-process’ does not
mean a task that is currently displayed. At best, ‘in-process’ suggests that
the task is running (e.g., in the background), but not that the task is
displayed.” Appeal Br. 20.
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In making the rejection, the Examiner refers, in the Answer (4–5), to
an annotation of Yan Figure 3, reproduced below:

“FIG. 3 [of Yan, annotated by the Examiner, above,] illustrates
example user interfaces for selection of one or more tasks on one device and
continuation of those tasks on another device.” Yan ¶ 11.
In the Non-Final Action, the Examiner finds Yan in paragraphs 20,
22, 24, and 40 and Figure 3 teaches or suggests the contested limitations.
Non-Final Act. 5–6.
In the Answer, the Examiner further elaborates by responding to
Appellant’s specific arguments by concluding the “claim does not exclude a
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standalone user interface” as argued by Appellant because the “[c]laim
recites ‘detecting a second contact on the touch-sensitive display over at
least a portion of the respective content.’” Ans. 4–5. The Examiner further
explains the rejection:
As annotated above, Yan [Figure 3] teaches a contact region
which is over or above current graphical (display) user interface
or user interface (UI) of first device. Second, Yan teaches in
[0040–0041] the user select one or more tasks 1) currently in-
process or 2) recently having been in-process, where example
of tasks are searching, browsing, online meetings and word
processing document as suggested by [0017–0018] and [0020].
Searching, browsing, online meetings and word processing
document are graphical user interfaces (or UI). 1) suggests that
the interface (e.g. browsing interface) is current. One [of]
ordinary skill in the art would understand that 2) “recently in-
process” suggests a task that is not a current display. However,
one [of] ordinary skill in the art would also understand that 1)
“currently in-process” suggests a task that is a current display,
where 1) “currently in-process” is used in the rejection and 2)
“recently in-process” is not used in the rejection. In other
words, an application or task (e.g. browser such as explorer or
chrome) that is closed is not considered currently in process (or
it may be considered recently in process), and an application or
task (e.g. browser such as explorer or chrome) that is open is
considered currently in process. Consequently, these arguments
have been considered by they are not persuasive.
Ans. 5.
Our Decision turns on claim construction, in particular on how a
person of ordinary skill in the art would interpret the recitation of “the user
interface of the first application includes respective content.” As discussed
above, the Examiner interprets the “respective content” to be content of the
“user interface,” and Appellant argues the “respective content” is content of
the “first application.” “Yan discloses displaying a UI with which a user can
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send multiple tasks to a separate device for continuation, but the UI does not
contain content of the continuable application when the claimed
determination is made. Notably, Yan does not disclose a technique where a
user can initiate a process for continuing a task while content of that task is
being displayed.” Reply Br, 6; compare Fig. 17C with 17E.
We conclude that both interpretations of “respective content” are
plausible, and the Examiner’s claim construction, although broad, is not
unreasonable in light of the plain language of the claim, and in light of the
ability for Appellant to clarify the claim language during prosecution to
specify that the “respective content” is intended to be “respective content of
the first application.”4
Accordingly, are not persuaded by Appellant’s argument and agree
with the Examiner’s finding that Yan teaches or suggests the contested
limitation of claim 97.
In a secondary argument, Appellant provides the following contention
regarding motivation:

4 “[I]f a claim is amenable to two or more plausible claims constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112 second paragraph.” Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Ex parte
McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2 (PTAB
Aug. 25, 2017) (precedential). In light of Appellant’s arguments concerning
this limitation, we leave it to the Examiner to decide whether a rejection
under 35 U.S.C. § 112(b) for indefiniteness is appropriate. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) 1213.02.
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[O]ne of ordinary skill would not be motivated to modify UI
304 of Yan to display content of a particular task. That is, Yan
discloses a technique for continuing tasks that can correspond
to multiple applications. Thus, one of ordinary skill would not
modify UI 302 to include content of a particular application,
when tasks corresponding to multiple applications may be
selected for continuation.
Appeal Br. 20.
We disagree with Appellant’s allegation because the Examiner
provides articulated reasoning with some rational underpinning to combine
the references in the manner suggested in the Non-Final Action (7), i.e., “it
would have been obvious to one of the ordinary skill in the art . . . to provide
threshold intensity as taught by Anson into Yan’s GUI with the benefit [of]
different functionalities or operations [that c]ould be assigned to a single
touch based on threshold intensity as suggested by Anson in [0096].” See
Kahn, 441 F.3d at 988.
We are not persuaded by Appellant’s pro forma assertion that the
Examiner’s motivation to combine the references was deficient, and further
determine the Examiner’s motivational finding meets the requirements under
Kahn and KSR, discussed above.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 97, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 97, and grouped
claims 99, 101, 103–109, 112, 113, 119–127, and 133–141, which fall
therewith. See Claim Grouping, supra.
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2. § 103 Rejection R1: Claims 98, 114, 118, 128, 132, 142
Issue 2
Appellant argues (Appeal Br. 21–24; Reply Br. 7–11) the Examiner’s
rejection of claim 98 under 35 U.S.C. § 103 as being obvious over the
combination of Yan and Anson is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[t]he non-transitory computer-readable storage medium of
claim 97, wherein initiating the first process for sending the instruction to
the external device includes [ ] displaying a user interface that includes a
first affordance for instructing the external device to display an affordance
for launching the second application,” as recited in claim 98?
Analysis
The Examiner relies upon Yan Figure 3 (“SEND” action in step 302),
annotated above, as teaching or suggesting initiating the first process for
sending the instruction to the external device, and displaying a user interface
that includes a first affordance for instructing the external device to display
an affordance for launching the second application. Non-Final Act. 7.
In addressing the Examiner’s rejection, Appellant highlights their
disclosure, and states “[a]s a non-limiting example of claim 98, FIG. 17C . . .
illustrates that initiating the process for sending the instruction to the
external device includes displaying a new UI (Menu 1711), which includes
affordance 1712.” Appeal Br. 21. However, with respect to the Examiner’s
specific findings regarding the teachings of Yan Figure 3, Appellant
contends “Yan does not disclose or suggest the display of any user interface
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on the first device in response to user selection of the “SEND” button in
UI 302. Instead, once a user selects the “SEND” button, the second device
(as opposed to the first device) prompts the user to accept the selected tasks.
Appeal Br. 22–23.
In response to Appellant’s contention, the Examiner further explains
the rejection by concluding:
[The c]laim does not require display[ing] any user
interface in response to user selection of the “SEND” button.
[The c]laim requires “displaying a user interface that includes a
first affordance for instructing the external device to display an
affordance for launching the second application.” Yang teaches
displaying a user interface that includes a first affordance
(Figure 3, “SEND” in 302) for instructing the external device to
display an affordance for launching the second application
(Figure 3 and [0042], once sent, the destination devices receive
the notification as shown in UI 304). Consequently, these
arguments have been considered [but] they are not persuasive.
Ans. 6.
Thus, we are not persuaded by Appellant’s argument for two reasons.
First, the arguments are not commensurate with the scope of the claim which
does not require display of a user interface on the first device in response to
user selection. Second, we decline to import Appellant’s disclosure into the
claims, e.g., Figure 17C of Appellant’s drawings, as highlighted by
Appellant. See Appeal Br. 21.
Regardless of the general contentions and imputed intended meanings
articulated by Appellant in the Brief, “[i]t is the claims that measure the
invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) (“[T]he name of the game is the claim”)
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(citations omitted). “Though understanding the claim language may be
aided by the explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the claim.”
SuperGuide Corp. v. DirecTV Enterprise, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). “We have cautioned against reading limitations into a claim from the
preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification.” In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 98, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 98, and grouped
claims 114, 118, 128, 132, and 142, which fall therewith. See Claim
Grouping, supra.
3. § 103 Rejection R2: Claims 115, 129, 143
Issue 3
Appellant argues (Appeal Br. 24–26; Reply Br. 12–14) the
Examiner’s rejection of claim 115 under 35 U.S.C. § 103 as being obvious
over the combination of Yan, Anson, and Langholz is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[t]he non-transitory computer-readable storage medium of
claim 98,” wherein the executed instructions cause the electronic device to,
“after sending the instruction to the external device, display an indication
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that the instruction has been sent to the external device,” as recited in
claim 115?
Analysis
The Examiner relies upon Langholz as teaching or suggesting the
contested limitation, citing Figure 3C, elements 306 and 322. Non-Final
Act. 14. Figure 3C of Langholz is reproduced below:

“FIGS. 3A–3F illustrate various views of a user interface of a
messaging application including status notifications in accordance with one
or more embodiments.” Langholz ¶ 17.
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Under the Examiner’s claim construction (Non-Final Act. 14; Ans. 6
(citing Langholz ¶ 71)), the Examiner concluded the recited “instruction”
reads on new message 306j in Figure 3C, and that the claimed “indication
that the instruction has been sent to the external device” reads on delivery
notification 322.
Langholz ¶ 71 discloses, in pertinent part:
The computing devices of the participants can each return
delivery receipts to the communication server 106 upon
receiving the new message 306j. Upon successful delivery, the
communication server 106 can return a delivery confirmation to
the computing device 202. In response to the receipt of the
delivery confirmation, the GUI updater 222 can add a delivery
notification 322 to the communication thread 322 to notify the
user that the new message 306j was successfully delivered, as
illustrated by FIG. 3C.
Appellant contends the Examiner erred because “[t]he cited portion
suggests that element 306j of relevant FIG. 3C . . . refers to the display of a
message written by a user rather than an instruction sent from the device.
Indeed, Langholz explains that ‘FIG. 3C illustrates the display of a new
message 306j entered by the user of the computing device 202.’” Appeal
Br. 25.
In response to Appellant’s contention, the Examiner finds:
As recited in the claim, after sending the instruction to the
external device (Figure 3c and [0071], 306j is sent to the
network application 225 (external device). As shown in figure
2, there is network communication 108 and thus instructions are
sent from/to device 202 to/from server 106), display an
indication that the instruction has been sent to the external
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device ([0071], the communication server 106 can return a
delivery confirmation to the computing device 202.
Ans. 6.
Under the broadest reasonable interpretation standard,5 we agree with
the Examiner’s findings and conclusions that Langholz’s disclosure of
delivery notification 322 relating to the delivery of new message 306j
(broadly interpreted as an instruction sent from the device) teaches or at least
suggests the contested limitation.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 115, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 115, and
grouped claims 129 and 143, which fall therewith. See Claim Grouping,
supra.
4. § 103 Rejection R3: Claims 116, 117, 130, 131, 144, 145
Issue 4
Appellant argues (Appeal Br. 26–29; Reply Br. 14–17) the
Examiner’s rejection of claim 116 under 35 U.S.C. § 103 as being obvious
over the combination of Yan, Anson, and Lee is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[t]he non-transitory computer-readable storage medium of

5 See Morris, 127 F.3d at 1054.
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claim 98,” wherein “the instruction to the external device further causes the
external device to display, when the external device launches the second
application, a second portion of the content associated with the first
application, wherein the second portion is larger than the first portion,” as
recited in claim 116?
Analysis
The Examiner cites Lee in Figure 12-4 and paragraph 3 as teaching or
suggesting the contested limitation, i.e., display of “a second portion of the
content associated with the first application, wherein the second portion is
larger than the first portion.” Non-Final Act. 15.
Lee Figure 12-4 is reproduced below:

“FIG. 12 is a diagram of a front side of a mobile terminal and a
display unit of a display device according to an embodiment of the present
invention.” Lee ¶ 39.
The Examiner finds element 500 in Figure 12-4 teaches “a second
portion of the content associated with the first application” (Non-Final
Act. 15), and “it would have been obvious to one of the ordinary skill in the
art before the effective filing date of the claimed invention to provide a
second portion is larger than the first portion as taught by Lee with the
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advantage that the second screen image 500 is not zoomed in but enlarged as
suggested by Lee in [0175].” Non-Final Act. 16.
Lee discloses, in relevant part:
[R]eferring to FIG. 12 (12-4), the first controller 180 of the
mobile terminal 100 can control the first screen image 300 to be
zoomed in (S112). And, the first controller 180 of the mobile
terminal 100 can provide a control signal to the display device
200 to indicate that the first screen image 300 has been zoomed
in.
Lee ¶ 171. “[I]f the second screen image 500 shown in FIG. 12 (12-1) is
changed into the second screen image 500 shown in FIG. 12 (12-4 ), the
second screen image 500 is not ‘zoomed in’ but ‘enlarged’.” Lee ¶ 175.
In response to the Examiner’s findings concerning the cited prior art
of Lee, Appellant replicates and offers an explanation of an embodiment of
their invention with reference to their own drawing Figures 17B and 17C
(Appeal Br. 27), and goes on to assert “[t]he rejection fails to establish that
the combination of Yan, Anson, and Lee discloses or suggests the above
limitation of claim 116. In particular, contrary to the Examiner's assertion,
Lee does not disclose these features of claim 116.” Id. Appellant further
argues “Lee teaches that content on a second display unit can be made larger
than content on a first display unit, but only in response to a user command
such as a pinch gesture. In contrast, claim 116 requires that ‘the second
portion is larger than the first portion,’ ‘when the external device launches
the second application.’” Appeal Br. 28.
The Examiner responds:
The purpose of Lee in the rejection is to show the idea of
having a larger interface or larger portion for a second device
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21
than a first display as shown by Lee in figure 12-4. Lee was not
used for the purpose of pinch gesture as appear to be argued by
the Appellant. In addition, claim does not appear to exclude
pinch gesture. As shown in figure 12, the larger portion 500 is
launch by the second device 251 when the external device 251
launches the second application 500.
Ans. 7 (emphasis added).
We are not persuaded by Appellant’s arguments, which we find are
not commensurate with the rejection as articulated by the Examiner.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 116, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 116, and
grouped claims 117, 130, 131, 144, and 145, which fall therewith. See
Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 3–17) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.

Appeal 2020-002873
Application 15/128,952

22
CONCLUSIONS
The Examiner did not err with respect to obviousness Rejections R1
through R3 of claims 97–99, 101, 103–109, and 112–145 under 35 U.S.C.
§ 103 over the cited prior art combinations of record, and we sustain the
rejections.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
97–99, 101,
103–109,
112–114,
118–128,
132–142
103 Obviousness Yan, Anson
97–99, 101,
103–109,
112–114,
118–128,
132–142

115, 129,
143 103
Obviousness
Yan, Anson,
Langholz
115, 129,
143
116, 117,
130, 131,
144, 145
103 Obviousness Yan, Anson, Lee
116, 117,
130, 131,
144, 145

Overall
Outcome
97–99, 101,
103–109,
112–145

FINALITY AND 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)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED