Ex Parte Johnson et alDownload PDFPatent Trial and Appeal BoardDec 27, 201612853715 (P.T.A.B. Dec. 27, 2016) 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. 12/853,715 08/10/2010 Jay Wesley Johnson RPS920100035-US-NP 6385 109808 7590 12/29/2016 LENOVO/P ANGRLE Pangrle Patent, Brand & Design Law, P.C. 3500 W Olive Ave 3rd Floor Burbank, CA 91505 EXAMINER VALDEZ, PATRICK F ART UNIT PAPER NUMBER 2614 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): brian@ppbdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAY WESLEY JOHNSON, AXEL RAMIREZ FLORES, HARISS CHRISTOPHER NEIL GANEY, HOWARD LOCKER, and AARON MICHAEL STEWART Appeal 2016-000290 Application 12/853,7151 Technology Center 2600 Before DEBRA K. STEPHENS, SHARON FENICK, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 9—11, 13, 14, 16—18, 20—27, 29, and 30, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application relates to a display device, such as a mobile phone, where the display zooms in or out based on sensors detecting whether the 1 According to Appellants, the real party in interest is Lenovo Singapore Pte. Ltd. App. Br. 2. Appeal 2016-000290 Application 12/853,715 device is moved closer to or further from the user. Spec. Tflf 16—17, 19, Abstract. Representative Claims Claims 1 and 18 are representative and reproduced below with the limitations at issue emphasized. 1. An apparatus comprising: a planar display defining an outward pointing normal vector and an inward pointing normal vector; sensor circuitry that comprises an accelerometer wherein the sensor circuitry is configured to sense an initial relative position of the planar display, configured to sense a change in relative position of the planar display with respect to the initial relative position, and configured to determine an angle of the planar display with respect to gravity; and control circuitry operatively coupled to the sensor circuitry to control presentation of still images to the planar display, to control presentation of video images to the planar display, and to control presentation of map images to the planar display for a map perspective view determined by the angle of the planar display with respect to gravity, wherein the control circuitry comprises zoom circuitry configured to zoom an image presented on the planar display responsive to a change in relative position of the planar display sensed by the sensor circuitry wherein the change in relative position comprises a vector component along one of the normal vectors and wherein the control circuitry is configured to disable the zoom circuitry based at least in part on relative position of the display as sensed by the sensor circuitry. 18. A method comprising: rendering to a planar display a main image in a main image field and thumbnail images in a thumbnail images field; sensing movement of the planar display to select one of the thumbnail images', rendering the selected one of the thumbnails images as a main image in the main image field and the selected one of the thumbnail images in the thumbnail images field; 2 Appeal 2016-000290 Application 12/853,715 sensing an initial relative position of a planar display; sensing a first change in relative position of the planar display with respect to the initial relative position of the planar display wherein the first change comprises a vector component along an outward pointing normal vector defined by the planar display and an angle with respect to gravity; responsive to the first change, based at least in part on the vector component, zooming the main image in the main image field on the planar display, sensing a second change in relative position of the planar display with respect to the initial relative position of the planar display wherein the second change comprises a vector component along an inward pointing normal vector defined by the planar display and an angle with respect to gravity; and responsive to the second change, based at least in part on the vector component, zooming the main image in the main image field on the planar display. Rejections Claims 1, 13, 14, 16, 17, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky et al. (US 2010/0136957 Al; June 3, 2010), Williamson et al. (US 2010/0123737 Al; May 20, 2010), Cho et al. (US 2008/0089613 Al; Apr. 17, 2008), Deng et al. (US 2011/0037778 Al; Feb. 17, 2011), and VanderSpek et al. (US 2010/0156907 Al; June 24, 2010). Final Act. 8 Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky, Williamson, Cho, Deng, VanderSpek, and Zalewski (US 2008/0100825 Al; May 1, 2008). Final Act. 15. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky; Williamson; Cho; Deng; VanderSpek; and Eslambolchilar et al., Control Centric Approach in Designing Scrolling and Zooming Interfaces, 66 Inf 1 J. Human-Computer Studies 838—56 (2008). Final Act. 16. 3 Appeal 2016-000290 Application 12/853,715 Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Deng; MacDougall et al. (US 2010/0066763 Al; Mar. 18, 2010); Kim et al. (US 2010/0041431 Al; Feb. 18, 2010); and STMicroelectronics, AN3182 Application note, Tilt measurement using a low-g 3-axis accelerometer (Apr. 2010). Final Act. 18. Claims 21—24 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky, Williamson, Cho, Deng, VanderSpek, and Momeyeretal. (US 2011/0167391 Al; July 7, 2011). Final Act. 21. Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky, Williamson, Cho, Deng, VanderSpek, and Suzuki (US 2010/0222119 Al; Sept. 2, 2010). Final Act. 23-24. Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky, Williamson, Cho, Deng, VanderSpek, and Waters et al. (WO 2010/076772 A2; July 8, 2010). Final Act. 24. Claim 30 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Horodezky, Williamson, Cho, Deng, VanderSpek, AN3182 Application Note, MacDougall, and Kim. Final Act. 26. ISSUES 1. Did the Examiner err in finding the combination of art, including VanderSpek, teaches or suggests “the control circuitry is configured to disable the zoom circuitry based at least in part on relative position of the display as sensed by the sensor circuitry,” as recited in claim 1? 2. Did the Examiner err in finding a motivation to combine the cited references for claim 1? 4 Appeal 2016-000290 Application 12/853,715 3. Did the Examiner err in finding the combination of Deng, MacDougall, Kim, and AN3182 teaches or suggests “rendering to a planar display a main image in a main image field and thumbnail images in a thumbnail images field”; “sensing movement of the planar display to select one of the thumbnail images”; and “zooming the main image in the main image field on the planar display,” as recited in claim 18? ANALYSIS Claim 1 Claim 1 recites “the control circuitry is configured to disable the zoom circuitry based at least in part on relative position of the display as sensed by the sensor circuitry.” A) Disabling Zoom Circuitry Appellants first argue “Horodezky does not disclose, teach or suggest circuitry to disable zoom circuitry ‘based at least in part on relative position of the display as sensed by the sensor circuitry’.” App. Br. 11. However, the Examiner relies on the combination of Horodezky with VanderSpek for this limitation, not Horodezky alone. Final Act. 12—13, 10; Ans. 5—6. Appellants are attacking the references individually. See, e.g., In re Keller, 642 F.2d 413, 426 (CCPA 1981). More specifically, the Examiner is combining Horodezky’s zoom circuitry with VanderSpek’s teaching of “control circuitry . . . configured to disable zoom circuitry based at least in part on relative position of the display as sensed by the sensor circuitry.” Final Act. 12—13, 10. By contending that Horodezky does not teach the recited circuity, Appellants are arguing that individually, Horodezky does not anticipate the feature of representative claim 1. However, the Examiner rejects claim 1 over the combined teachings of Horodezky and VanderSpek 5 Appeal 2016-000290 Application 12/853,715 and what the combined teachings would have suggested to one of ordinary skill in the art. “But one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” Keller, 642 F.2d at 426; see also id. at 425—26, 423 (affirming Board’s holding: “The fact that the Walsh reference makes no mention of pacing a heart... is immaterial. The Walsh reference is only relied on for the teaching of digital timing . . .; the other features are disclosed in Keller and Berkovits.”). In other words, while Appellants contend that Horodezky lacks a teaching of “control circuitry . . . configured to disable zoom circuitry,” the Examiner’s finding was that such “control circuitry” is taught by the combination of Horodezky and VanderSpek. Appellants have not persuasively addressed the Examiner’s findings for the specific disputed limitations. Specifically, Appellants have not persuaded us the combination of Horodezky and VanderSpek fails to teach the disputed “control circuity,” as recited in claim 1. Accordingly, Appellants’ arguments are not persuasive. B) VanderSpek on Disabling Based on Sensors Appellants also argue VanderSpek fails to teach “the control circuitry is configured to disable the zoom circuitry based at least in part on relative position of the display as sensed by the sensor circuitry’'' because “VanderSpek describes turning off the tracking sensors” rather than disabling zooming based on information “as sensed by” the sensors. App. Br. 13. We are not persuaded that Appellants’ interpretation of the prior art is correct. VanderSpek teaches that “[t]he tracking sensors 114... may be employed ... to track manipulation of the client device 102. For instance, 6 Appeal 2016-000290 Application 12/853,715 the tracking sensors 114 may be used to track a surface of the display device 104 relative to a viewer.” VanderSpek ]f 21. The Examiner correctly finds that VanderSpek teaches “when little movement of a . . . client device 102 is detected, display surface tracking may be adjusted to conserve battery life and/or processing power. This may involve causing] tracking sensors 114 to shutdown or enter a sleep mode.” Id. 141; Ans. 5—6 & nn. 6—7. Thus, tracking sensors 114 are used to detect movement of the client device 102 (including display device 104), and when little movement is detected, the tracking sensors can shut down or enter sleep mode to conserve power. Once shut down, as set forth by the Examiner, “zoom circuitry controlled by a disabled sensor would itself be disabled.” Ans. 6. We agree with the Examiner’s finding that zooming is disabled based on the sensors detecting little movement. Appellants look to Figure 8 of the Specification to limit the claim to disabling zooming once the device is pushed past “a particular distance.” Reply Br. 4. However, such a limitation is not in the claim as presently written. “[Although the specification often describes very specific embodiments of the invention, we [the Federal Circuit] have repeatedly warned against confining the claims to those embodiments.” Phillips v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc). Therefore, we are not persuaded of error in the Examiner’s finding that VanderSpek, in combination with Horodezky, teaches or suggests “the control circuitry is configured to disable the zoom circuitry based at least in part on relative position of the display as sensed by the sensor circuitry,” as recited in claim 1. 7 Appeal 2016-000290 Application 12/853,715 C) Improper Combination Appellants further contend “Horodezky, Williamson, Cho and Deng fail to suggest or teach a desire or need for disabling” zooming, and that “per MPEP § 2143 it would be inappropriate to change the function of VanderSpek to meet the function of claim 1.” App. Br. 12, 14. In particular, Appellants contend the Examiner’s analysis of VanderSpek is focused on conserving power whereas “Appellant knows of no evidence in the instant application that would make reduction of power consumption relevant to the claimed subject matter.” Reply Br. 3 (emphasis added). However, whether Appellants’ application discusses power consumption is irrelevant. “The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” Id. at 419. Instead, “the prior art need not address the exact problem that the patentee sought to resolve” because “any need or problem known in the relevant field of endeavor at the time of invention can provide a reason to combine.” Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 11A F.3d 968, 977 (Fed. Cir. 2014). Here, the Examiner has set forth with specificity—and Appellants have not sufficiently rebutted—that “[bjoth Horodezky and Williamson expressly disclose a desire to reduce power consumption”; “VanderSpek clearly discloses a number of alternatives to ‘shutting down’ the tracking sensors as a way to conserve power and extend battery life”; and “the desire to conserve power and/or extend battery life for handheld mobile devices is 8 Appeal 2016-000290 Application 12/853,715 pervasive and well documented throughout the art,” and the Examiner has articulated reasoning with some rational underpinning — “[a]s such, one of ordinary skill in the art would have been motivated to find ways to disable a function, such as a zoom function, whenever possible” to conserve power, including by combining Horodezky’s device with VanderSpek’s disabling of the sensors in order to conserve power. Ans. 4—5. Given these express findings, we find no error in the Examiner identifying a motivation to combine from “interrelated teachings of multiple [prior art] patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 418. Further, Appellants’ argument that VanderSpek’s function would be changed is not persuasive. App. Br. 14. Based on the findings set forth above, we agree with the Examiner that [mjodifying the HWCD [Horodezky/Williamson/Cho/Deng] apparatus with VanderSpek, therefore, would not change the principle operation of the overall combined HWCDV apparatus (zoom circuitry controlled by a sensor), nor the principle operation of the HWCD apparatus (zoom circuitry controlled by a sensor), nor the principle operation of VanderSpek (zoom circuitry controlled by a sensor that may be disabled). Ans. 7. Thus, we are not persuaded the Examiner improperly combined the teachings and suggestions of the cited prior art. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 9-11, 13, 14, 16, 17, 21—27, and 29,2 which Appellants argue are 2 Appellants proposed an amendment to dependent claim 29 “to correct an inadvertent reversal in the terms ‘horizontally’ and ‘vertically.’” App. Br. 9. 9 Appeal 2016-000290 Application 12/853,715 patentable for similar reasons. See App. Br. 14—15, 23; 37 C.F.R. § 41.37(c)(l)(iv). Claim 18 Claim 18 recites “rendering to a planar display a main image in a main image field and thumbnail images in a thumbnail images field”; “sensing movement of the planar display to select one of the thumbnail images”; and “zooming the main image in the main image field on the planar display.” A) Attacking References Individually Rather than the Combination Appellants contend “the evidence in Deng, an3182, MacDougall and Kim does not teach or suggest ‘rendering to a planar display a main image in a main image field and thumbnail images in a thumbnail images field’ where the main image field is associated with zooming and where the thumbnail images field is associated with image selection.” App. Br. 18; see generally 17—21. However, Appellants have not sufficiently persuaded us the combination is missing any limitation. We agree with the Examiner’s findings that “Deng expressly teaches a main image capable of zooming while MacDougall discloses an apparatus with a display comprising a main image part and a thumbnail image part, wherein the thumbnail part also comprises selectable thumbnails” and “Kim also discloses the use of a The Examiner denied entry of this amendment because “the response cannot be reviewed and a thorough search conducted in the limited amount of time authorized for this pilot program.” Ans. 3^4 (quotation omitted). This denial was not petitioned or appealed. Ans. 4; Reply Br. 2. In the event of further prosecution, the Examiner and Appellants may wish to consider whether there is sufficient written description for claim 29 in the absence of this amendment. 10 Appeal 2016-000290 Application 12/853,715 ‘gyro/side key’ in combination with ‘shaking’ to select a thumbnail image” Ans. 9—10, 12—13 (citing Deng || 44, 47; MacDougall 1101, Figs. 9A—B; Kim Fig. 14). Appellants’ arguments attacking individual references without considering the combination actually proposed by the Examiner (e.g., which specific references are relied upon for each teaching) are not persuasive. E.g., App. Br. 18 (arguing “Deng does not teach rendering thumbnails” despite the Examiner not relying on Deng for that teaching), 20 (arguing Kim does not teach the claimed zooming despite the Examiner not relying on Kim for that teaching). More specifically, the Examiner is relying on MacDougall for teaching rendering thumbnail images and Kim for teaching sensing movement of the planar display to select an image. Final Act. 20— 21. By contending that Deng does not teach rendering thumbnails, Appellants are arguing that individually, Deng does not anticipate the feature of representative claim 18. Similarly, the Examiner is relying on Deng as teaching “zooming the main image.” Final Act. 19—20. By contending that Kim does not teach the recited zooming, Appellants are arguing that individually, Kim does not anticipate the feature of representative claim 18. However, the Examiner rejects claim 18 over the combined teachings of Deng, MacDougall, and Kim and what the combined teachings would have suggested to one of ordinary skill in the art. In other words, while Appellants contend that Deng lacks a teaching of “rendering thumbnails,” we find that such “rendering” is taught by MacDougall. Similarly, while Appellants contend that Kim lacks a teaching of the recited “zooming,” we find that such “zooming” is taught by Deng. Thus, the Examiner’s proposed 11 Appeal 2016-000290 Application 12/853,715 combination contains all elements of the claim, even though each reference individually may lack one or more elements. See Keller, 642 F.2d at 426. Accordingly, Appellants’ arguments are not persuasive. Moreover, Appellants have not persuasively addressed the Examiner’s findings for the specific disputed limitations. For example, Appellants have not persuaded us MacDougall fails to teach the disputed “rendering thumbnail images” limitation and Deng fails to teach the recited “zooming the main image,” as recited in claim 18. B) Kim Disclosing Additional Non-Claimed Elements Appellants argue that Kim not only senses movement, but also senses movement combined with a key press, and therefore would lead away from the claimed invention. App. Br. 19—20. We agree with the Examiner that Kim’s use of a key press in addition to shaking or tilting is irrelevant because the claim as currently written does not require sensing based solely on shaking or tilting. Ans. 12; see also Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“the open-ended term ‘comprising’ .... means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim”). C) Motivation to Combine Appellants further argue: Evidence is lacking as to modifying the “screen for displaying an image” of Deng, which is “an adjustable image”, with the orientable “filmstrip” of MacDougall to arrive at a method that includes “rendering the selected one of the thumbnails images as a main image in the main image field and the selected one of the thumbnail images in the thumbnail images field” and that 12 Appeal 2016-000290 Application 12/853,715 includes “zooming the main image in the main image field on the planar display”. App. Br. 18—19. However, this assertion is not sufficiently explained. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). That MacDougall may also teach other techniques or benefits (e.g., “preserving the aspect ratio of a selected photograph”) does not address or negate the Examiner’s findings regarding motivation to combine Deng and MacDougall “[i]n the same field of endeavor” “for flexibility” so that “a user may view a plurality of images at the same time — one main image and a set of thumbnail images” (Final Act. 20) and to “allow[] a user to ‘see’ a magnified view of a thumbnail image.” Ans. 11; see also KSR, 550 U.S. at 418 (“As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). As such, Appellants’ arguments, which merely assert what evidence is lacking as to the combination, are without elaboration and, moreover, do not sufficiently address the Examiner’s findings and conclusions. D) Unclear or Speculative Teachings We do not agree with Appellants’ unsupported assertions that the teachings of the combination are “unclear” or “speculative.” App. Br. 21— 22; Reply Br. 8—9. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425. As discussed above, the Examiner has identified 13 Appeal 2016-000290 Application 12/853,715 with specificity the teachings of each reference relied upon and the reasons for combining. Whether the references also render obvious other modifications is not relevant to the Examiner’s proposed combination. Accordingly, we sustain the Examiner’s rejection of claim 18, and claim 20, which Appellants argue is patentable for similar reasons. See App. Br. 22; 37 C.F.R. § 41.37(c)(l)(iv). Claim 30 Appellants contend “the rejection of dependent claim 30 is in error for at least the same reasons as claim 1” and “for reasons explained with respect to independent claim 18.” App. Br. 24. As discussed above, we are not persuaded of error in the rejections of claims 1 and 18. Accordingly, we sustain the Examiner’s rejection of claim 30. DECISION For the reasons above, we affirm the Examiner’s decision rejecting claims 1,9-11, 13, 14, 16-18, 20-27, 29, and 30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 14 Copy with citationCopy as parenthetical citation