Ex Parte Hall et al

Patent Trial and Appeal Board

Jun 25, 2018

13657835 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/657,835 10/22/2012
73576 7590
APPLE INC. - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
06/27/2018
FIRST NAMED INVENTOR
David M. Hall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
APLE.P0436 6552
EXAMINER
LEVEL, BARBARA M
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
docket@fyiplaw.com
hill@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. HALL, ALLISON M. STYER,
CHRISTOPHER E. RUDOLPH, CHARLES J. MIGOS,
MARTIN J. MURRETT, and MARKUS HAGELE
Appeal2018-000594
Application 13/657,835 1
Technology Center 2100
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
IRVINE. BRANCH, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-11, 13-20, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is Apple, Inc. App. Br. 2.
2 Throughout this Decision we have considered the Appeal Brief filed April
24, 2017 ("App. Br."), the Reply Brief filed October 26, 2017, the
Specification filed October 22, 2012 and amended June 12, 2015 ("Spec."),
the Examiner's Answer mailed August 28, 2017 ("Ans.") and the Final
Rejection mailed September 21, 2016 ("Final Act.").
Appeal2018-000594
Application 13/657 ,835
INVENTION
The invention is for a tool for adding content controls to a document.
Spec. p. 7, 11. 6-7.
Claims 1, 10, 14, and 15 are representative and reproduced below:
1. A non-transitory machine-readable medium storing a document
authoring application which when executed by at least one processing unit of
a first device provides a graphical user interface ("GUI") for the document
authoring application, the GUI comprising:
a document display area for displaying a document being authored
with the document authoring application on the first device; and
a document authoring tool for adding a content item to the document,
the content item comprising:
a selectable image user interface (UI) representation of the content
item, wherein the image UI representation is an image selected and sized
within the document by a user of the document authoring application; and
a content display area for displaying editable content overlapping
other content of the document upon selection in the document authoring
application of the selectable image UI representation of the content item,
wherein when the document is displayed by document viewing
applications on a plurality of additional devices to which the authored
document is distributed, the selectable image UI representation is displayed
without overlapping other content of the document and selection of the UI
representation causes the document viewing application to display the
content display area with the content as edited by the document authoring
application over a portion of the other content of the document, wherein the
content as edited by the document authoring application is non-editable
when displayed in the document viewing applications.
10. The non-transitory machine-readable medium of claim 1, wherein
the user selects and sizes the image UI representation by adjusting a set of
adjustable UI controls.
14. The non-transitory machine-readable medium of claim 1, wherein
the document viewing application, upon receiving a selection of the UI
representation, displays the content display area at a particular location over
a particular portion of the document based on a size and location of the
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selectable image UI representation and a defined size of the content display
area.
15. A non-transitory machine-readable medium storing a document
authoring application which when executed by at least one processing unit
provides a graphical user interface ("GUI") for the document authoring
application, the GUI comprising:
a display area for displaying a scrollable document being authored,
the document comprising a first set of content items; and
a document authoring tool for adding a scrollable content item to the
document, the scrollable content item having a defined size and location in
the document relative to other content items in the document, wherein the
scrollable content item comprises a second set of content items and is
separately scrollable when the second set of content items do not all fit
within the defined size of the scrollable content item,
wherein the document is for display in a document viewing
application, the document viewing application displaying (i) the scrollable
content item in the defined size and location in the document when the
document is displayed in a first viewing mode and (ii) a selectable
representation of the scrollable content item in a different location in a
second viewing mode,
wherein selection of the selectable representation in the second
viewing mode causes the document viewing application to display the
scrollable content item over a portion of the first set of content items of the
document.
REJECTION
The Examiner rejected claims 1 and 15 under 35 U.S.C. § 112 (pre-
AIA), first paragraph. Final Act. 6.
The Examiner rejected claims 1-7 and 13 under 35 U.S.C. § 103 as
being unpatentable over Keohane et al. (US 2008/0104505 Al, published
May 1, 2008) (hereinafter "Keohane"), Koivisto et al. (US 2007/0124700
Al, published May 31, 2007) (hereinafter "Koivisto"), Huffman et al.
(Patent No. 5,761,682 issued June 2, 1998) (hereinafter "Huffman"), and
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Application 13/657 ,835
McKinney et al. (US 2013/0191728 Al, filed Jan. 20, 2012) (hereinafter
"McKinney"). Final Act. 8.
The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103 as being
unpatentable over Keohane, Koivisto, Huffman, McKinney, and Hollander
et al. (US 2006/0053364 Al, published Mar. 9, 2006) (hereinafter
"Hollander"). Final Act. 22.
The Examiner rejected claims 10 and 11under35 U.S.C. § 103 as
being unpatentable over Keohane, Koivisto, Huffman, McKinney, and
Chinn et al. (US 6,970,749 Bl, issued Nov. 29, 2005) (hereinafter "Chinn").
Final Act. 25.
The Examiner rejected claim 14 under 35 U.S.C. § 103 as being
unpatentable over Keohane, Koivisto, Huffman, McKinney, and Driskell
(US 6,801,230 82, issued Oct. 5, 2004). Final Act. 27.
The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103 as
being unpatentable over Keohane, Hollander, and Huffman. Final Act. 29.
The Examiner rejected claim 18 under 35 U.S.C. § 103 as being
unpatentable over Keohane, Hollander, Huffman, and Allam et al. (US
2004/0139400 Al, published July 15, 2004) (hereinafter "Allam"). Final
Act. 34.
The Examiner rejected claim 19 under 35 U.S.C. § 103 as being
unpatentable over Keohane, Hollander, Huffman, and Lapidous (US
6,874,126 Bl, issued Mar. 29, 2005). Final Act. 36.
The Examiner rejected claims 17 and 20 under 35 U.S.C. § 103 as
being unpatentable over Keohane, Hollander, Huffman, and Pavley et al.
(US 5,664,208, issued Sept. 2, 1997) (hereinafter "Pavley"). Final Act. 37.
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Application 13/657 ,835
The Examiner rejected claim 22 under 35 U.S.C. § 103 as being
unpatentable over Keohane, Hollander, Huffman, and Migos et al. (US
2012/0192118 Al, published July 26, 2012) (hereinafter "Migos"). Final
Act. 39.
CONTENTIONS AND ANALYSIS
Written Description Rejection
The Examiner finds the Specification does not support adding a
"content item" to a document, as recited in claims 1 and 15. Final Act. 7.
The Examiner finds the Specification is limited to describing adding a
"content control" to the document that is significantly different from just any
content item being edited in the document. Id.
We disagree. There is no requirement that the claimed invention be
described in the identical wording that was used in the Specification;
however, there must be sufficient disclosure to show one of skill in the art
that the inventor "invented what is claimed." Union Oil Co. of Cal. v. Atl.
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (quoting In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989)). As Appellants argue, the term "content
item" as recited in independent claims 1 and 15 refers to an item in a
document capable of being edited, and requires that the item is part of
content of the document. App. Br. 8. The Specification teaches that a
"scrollable content control" and a "superimposable content control" are
items of content in a document capable of being edited. Spec. p. 10, ln. 13-
p. 11, ln. 11. We agree with Appellants that these components are "content
items." These controls are shown and described in figures in the
Specification. Spec., Figs. 1-5 and 7-17. Therefore, one of ordinary skill in
the art reading the Specification would have understood "content item" to be
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the "scrollable content control" or the "superimposable content control."
Accordingly, we do not sustain the rejection of claims 1 and 15 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Section 103
Essentially, Appellants' invention is directed to a graphical user
interface ("GUI") for a document authoring application. Appellants do not
argue that either the concept of a GUI, or the concept of a document
authoring application, by themselves are novel. Appellants make various
arguments against the Section 103 references individually. We do not find
any of Appellants' arguments against the Section 103 rejections persuasive.
Instead, we find the Examiner has provided a comprehensive response to
Appellants' arguments supported by a preponderance of evidence. Ans. 2-
13. As such, we adopt the Examiner's findings and explanations provided
therein. Id. We address Appellants' arguments in more detail below.
Claim 1
Appellants argue the Examiner erred in rejecting claim 1 as being
unpatentable as obvious over Keohane, Koivisto, Huffman, and McKinney.
App. Br. 9-11. In particular, Appellants argue Koivisto fails to teach "'a
selectable image user interface (UI) representation of the content item,
wherein the image UI representation is an image selected and sized within
the document by a user of the document authoring application."' App. Br.
10-11. Appellants argue that while Koivisto teaches the icon generation
module 200 generating an icon, it does not teach, and in fact teaches away
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from, "an image selected and sized within the document by a user," as
recited by independent claim 1. Id. at 11-12. Moreover, Appellants argue,
Koivisto 's icon generation module is not within the document because it
generates the icon, rather than enabling a user to select the icon. Id. at 12.
At the outset, we disagree that Koivisto teaches away from "an image
selected and sized within the document by a user." "[T]he prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternative because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed .... " In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants identify no portion of
Koivisto that criticizes, discredits, or otherwise discourages "an image
selected and sized within the document by a user."
Moreover, the Examiner does not rely on Koivisto, alone, as teaching
the elements of claim 1. Rather, the Examiner finds Keohane teaches a
selectable icon, which is a selectable image UI item. Ans. 8. Keohane
teaches that the user can edit document 220 in a variety of ways, including
selecting icons within one or more application toolbars. Id. (citing Keohane
i-f 21 ). Koivisto teaches that in one embodiment, a user may modify some
aspects affecting the selection function, where the icon (which the Examiner
maps to the selectable image UI representation of the content item)
generation may be adapted according to user preferences. Id. (citing
Koivisto i-f 22). In one embodiment, the icon generation module 200 is
implemented as part of a presentation editor application, and is thus within
the document authoring application. Moreover, an icon in Koivisto may be
associated with a content item in various ways. In one embodiment, the icon
is "part of the content item itself," and is therefore within the document.
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Koivisto i-f 26. The icon generation may be "initiated by user input" or
automatically. Id. The icon generation may be applied in (i.e., within the
document) or by an application capable of opening a content item from
which an icon is to be generated, either based on user initiation or
automatically. Koivisto i-f 33. Koivisto teaches one feature is scaling of the
content item portion to correspond to a predetermined icon size, where a
user can set the icon size. Koivisto i-f 36 (emphasis added). Although
Appellants argue in the Reply Brief that Koivisto does not teach that the user
may himself size the icon within a document, Appellants mischaracterize the
disclosures of Koivisto. Reply Br. 7. Rather, Koivisto teaches that a user
editing a presentation content item can initiate an icon generation for the
presentation content item, where the image UI representation is the entire
presentation content item image selected within the presentation document
by the user of the presentation document authoring application, and that in
one embodiment, the "user can set the icon [image] size." Koivisto i-f 36.
Thus, directly contrary to Appellants' argument, the user can set the icon
image size within a document.
Therefore, the combination of references cited by the Examiner
teaches a selectable image UI representation of the content item where the
content item image is selected and sized within the document by the user of
the document authoring application.
Appellants also argue that McKinney does not teach "locking" content
of a content display area that is displayed over a portion of other content of
a document. App. Br. 13. In particular, Appellants argue McKinney is
silent regarding a content display area over a portion of other content of a
document. Id. However, the Examiner finds, and we agree, "McKinney
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teaches that its electronic book document can be edited to insert and modify
rich content, including interactive objects, such as pop-up window display
areas." Ans. 11; see McKinney i-fi-129, 30, 59. McKinney also teaches
locking an electronic book for editing by readers, but not locking the book to
authors, where the electronic book includes the interactive popup window
display area. Id. Thus, McKinney teaches locking the book document,
including content of the pop-up window display area that is displayed over a
portion of other content of a document. Id.
Appellants further argue that "locking" an electronic book as taught
by McKinney teaches away from the annotation display taught in Huffman
such that it would render Huffman unsatisfactory for its intended purpose.
App. Br. 14--15; Reply Br. 9--10. As with Appellants' previous "teaching
away" argument, we disagree that McKinney teaches away from annotation
display as alleged by Appellants. "[T]he prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternative because such disclosure does not criticize, discredit, or otherwise
discourage the solution claimed .... " In re Fulton, 391 F.3d at 1201.
Appellants again identify no portion of McKinney that criticizes, discredits,
or otherwise discourages annotation display.
In Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed.
Cir. 2016), our reviewing court stated "[a]lthough modification of the
movable blades may impede the quick change functionality disclosed by
Caterpillar, '[a] given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
combine"' (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (citation omitted)). As the Examiner explains, McKinney
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teaches an additional feature for locking content for reader users, while still
allowing editor users to edit, insert and view rich content pop-up window
display areas of the electronic book document. Ans. 12; McKinney i-fi-129,
30, 59. In other Thus, McKinney does not prevent or teach away from users
editing, inserting and viewing rich content pop-up window display areas and
annotations of the electronic book document of Huffman. Id.
Appellants do not otherwise specifically challenge the motivation to
combine the cited references. Accordingly, we sustain the rejection of claim
1 under 35 U.S.C. § 103, and of claims 2-7 and 13, which were argued
together with claim 1.
Dependent Claim 10
We are not persuaded by Appellants' arguments with respect to
dependent claim 10. Claim 10 depends from independent claim 1, and
recites, "'wherein the user selects and sizes the image UI representation by
adjusting a set of adjustable UI controls."' App. Br. 17. Appellants
acknowledge Chinn teaches control palettes that may be resized. Id. Yet,
Appellants argue Chinn does not teach resizing and image, or an image UI
representation, because Chinn at best teaches a group window 210 of control
palettes (e.g., 220, 230) that may be resized by selecting a border 330 and
dragging to a desired size. Id. at 17-18; Reply Br. 11-13. Yet, as the
Examiner finds, Keohane and Koivisto are relied upon for teaching the user
selectable and sized image user interface (UI) representation, while Chinn is
relied on for teaching the set of adjustable UI controls. Ans. 13. In other
words, Keohane and Koivisto teach the user selectable and sized image UI
representation, and Chinn teaches the claimed "set of adjustable UI
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controls." In the absence of sufficient evidence or line of technical
reasoning to the contrary, the Examiner's response is reasonable and we find
no reversible error.
Accordingly, we sustain the rejection of claim 10 under 35 U.S.C.
§ 103, and of claim 11, which was argued together with claim 10.
Dependent Claim 14
We are not persuaded by Appellants' arguments with respect to
dependent claim 14. Claim 14 depends from independent claim 1, and
recites, "wherein the document viewing application, upon receiving a
selection of the UI representation, displays the content display area at a
particular location over a particular portion of the document based on a size
and location of the selectable image UI representation and a defined size of
the content display area." Appellants argue Driskell does not teach
displaying the maximum display based on a size and location of a selectable
image UI representation. App. Br. 20. Yet, the Examiner as the Examiner
finds, Keohane and Koivisto are relied upon for teaching the "selectable
image UI representation," and "Driskell teaches that the size of the control
display is identified and the control display area is positioned such that it
partially overlays a work area of a display zone." Ans. 16-17. In the Reply
Brief, Appellants generally state, without further explanation, that Driskell
"is silent regarding" displaying a display area based on a size and location of
its controls. Reply Br. 15. However, mere argument and conclusory
statements cannot establish patentability. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (citing In re Lindner, 457 F.2d 506, 508 (CCPA 1972)).
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Accordingly, we sustain the rejection of claim 14 under 35 U.S.C.
§ 103.
Independent Claim 15
We are not persuaded by Appellants' arguments with respect to
independent claim 15. In particular, Appellants argue Keohane and
Hollander do not teach a scrollable content item in a defined location in a
document relative to other content items in the document, as required by
claim 15. App. Br. 21-24. Additionally, Appellants argue Hollander does
not teach a document viewing application displaying a scrollable content
item in a defined location in a document when the document is displayed.
App. Br. 26.
Figure 2A of Keohane is reproduced below .
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Figure 2A of Keohane illustrates a document created using an
application program. Keohane i-f 11. The Examiner finds that "Figure 2A of
Keohane teaches the Picture Toolbar 230 content control item added to the
document 222, the Picture Toolbar 230 content control item having a size
and location in the document relative to the other text and image content
items in the document 222." Ans. 22. Moreover, the Examiner additionally
finds "Figure 4A of Hollander teaches the scrollable content item having a
defined size and location relative to other content items in the document and
displaying the scrollable content item at the defined size and location
relative to the other content items in the document." Id.
Appellants argue that Keohane's picture toolbar 230 is described as
"floating," and therefore does not teach the limitation. Reply Br. 17.
Appellants then make a conclusory statement that Keohane does not teach "a
scrollable content item in a defined location in a document relative to other
content items in the document." Id. We fail to see why this mention of
"floating" in Keohane renders Keohane's picture toolbar 230 insufficient to
teach "a scrollable content item in a defined location in a document relative
to other content items in the document." Rather, Appellants provide
insufficient evidence that the Specification or claims limit "a scrollable
content item in a defined location in a document relative to other content
items in the document" in a way that, under a broad but reasonable
interpretation, is not encompassed by Keohane's picture toolbar 230, as
illustrated by the image depicted in Figure 2A. The picture toolbar 230
shown in Figure 2A teaches "a scrollable content item in a defined location
in a document relative to other content items in the document," as required
by claim 15.
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Appellants also argue that Hollander's portion 254 does not appear to
be a "content item" of a document. Reply Br. 18. We are not persuaded by
this argument. As Appellants argue, the term "content item," as recited in
independent 15, refers to an item in a document capable of being edited, and
the item is part of content of the document. App. Br. 8. Appellants provide
insufficient evidence as to why the claimed "content item" is limited in a
way that is not encompassed by Hollander's teachings. Appellants also
provide insufficient evidence as to why the claimed "document" is limited in
a way that is not encompassed by Hollander's teachings. For example,
Appellants argue that in Hollander, the annotations are in a different portion,
and "the text of the book in the first portion 252 may be scrolled up and
down without affecting the location of the annotations 262, 264 in the
second portion 254." Reply Br. 19. Yet, this argument is unpersuasive
because Appellants do not further explain why the claimed invention's
"document" is distinguishable from this alleged feature of Hollander.
Accordingly, we sustain the rejection of claim 15 under 35 U.S.C.
§ 103, and of claim 16, which was argued together with claim 15. We also
sustain the rejection of claims 17-20 and 22, for which Appellants present
no new or additional arguments. See App. Br. 27-28.
CONCLUSIONS
We reverse the rejection of claims 1 and 15 under 35 U.S.C. § 112,
first paragraph.
We affirm the rejection of claims 1-11, 13-20, and 22 under
35 U.S.C. § 103.
"[A]ny arguments or authorities not included in the appeal brief will
be refused consideration by the Board for purposes of the present appeal."
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37 C.F.R. § 41.37(c)(l)(iv). Accordingly, our affinnance is based only on
the arguments made in the briefs. Any arguments or authorities omitted
therefrom are neither before us nor at issue but are considered waived. Cf
In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004) ("[I]t is important that the
applicant challenging a decision not be permitted to raise arguments on
appeal that were not presented to the Board.")
DECISION
The Examiner's decision rejecting claims 1-11, 13-20, and 22 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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