Ex Parte Koch et al

Patent Trial and Appeal Board

Nov 28, 2018

13797979 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/797,979 03/12/2013 Jonathan Koch
150004 7590 11/30/2018
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
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.
Pll421US1/77770000292101 6847
EXAMINER
PARKER, JEANETTE J
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
patents.us@dentons.com
dentons_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN KOCH, MORGAN H. WINER,
ELIZABETH C.F. CRANFILL, and STEPHEN W. SWALES
Appeal2017-002223
Application 13/797,979 1
Technology Center 2100
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11 and 15-24. Claims 12-14 have been cancelled.
Oral Argument was heard before this panel on November 14, 2018. A copy
of the Hearing Transcript will be placed in the record in due course. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants' Brief ("App. Br.") identifies Apple Inc. as the real party in
interest. App. Br. 4.
Appeal2017-002223
Application 13/797,979
CLAIMED SUBJECT MATTER
The claims are directed to techniques for displaying virtual keyboards.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An electronic device, comprising:
a touch-sensitive display;
one or more sensors;
one or more processors; memory; and
one or more programs, wherein the one or more programs
are stored in the memory and configured to be executed by the
one or more processors, the one or more programs including
instructions for:
displaying an application interface on the display;
detecting an input that corresponds to a command to
display a virtual keyboard in the application interface;
detecting one or more sensor inputs from the one or
more sensors;
in response to detecting the input that corresponds
to the command to display the virtual keyboard:
in accordance with a determination that the
sensor inputs satisfy one or more first criteria,
displaying the virtual keyboard as a split keyboard
on the display; and
in accordance with a determination that the
sensor inputs satisfy one or more second criteria,
distinct from the first criteria, displaying the virtual
keyboard as an unsplit keyboard on the display;
in accordance with a determination that the
sensor inputs do not satisfy the one or more first
criteria and do not satisfy the one or more second
criteria:
displaying the virtual keyboard as a
split keyboard on the display in accordance
with a determination that the split keyboard
was the last keyboard displayed in the
application interface prior to detecting the
input that corresponds to the command to
display the virtual keyboard; and
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displaying the virtual keyboard as an
unsplit keyboard on the display in accordance
with a determination that the unsplit
keyboard was the last keyboard displayed in
the application interface prior to detecting the
input that corresponds to the command to
display the virtual keyboard.
App. Br. 47 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lian
Kim
Saputra
Park
Kyprianou
Cohen
Tumanov
Chomenky
US 2007 /0273662 Al
US 2009/0265627 Al
US 2010/0306363 Al
US 2011/0263298 Al
US 2012/0206363 Al
US 2012/0324381 Al
US 2013/0002565 Al
US 2013/0234949 Al
REJECTIONS
Nov. 29, 2007
Oct. 22, 2009
Dec. 2, 2010
Oct. 27, 2011
Aug. 16, 2012
Dec. 20, 2012
Jan.3,2013
Sept. 12, 2013
Claims 1, 2, 4, 7, 8, 11, and 21-23 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Cohen, Saputra, and Chomenky. Final
Act. 3-11.
Claims 5 and 9 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cohen, Saputra, Chomenky, and Kim. Final Act. 12-13.
Claims 3, 6, and 10 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cohen, Saputra, Chomenky, and Tumanov. Final Act. 11,
13-14.
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Application 13/797,979
Claims 15, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cohen, Saputra, Chomenky, and Kyprianou. Final
Act. 15-18.
Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Saputra, Chomenky, Kyprianou, and Park. Final
Act. 18-19.
Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Saputra, Chomenky, Kyprianou, Park, and Lien.
Final Act. 19-21.
ISSUE
Has the Examiner erred in determining Saputra is analogous art?
ANALYSIS
This appeal turns on the issue of whether Saputra, relied upon by the
Examiner in each of the rejections under 35 U.S.C. § 103(a), is analogous art
to Appellants' invention. We agree with Appellants that it is not.
"References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A reference is
analogous art if its satisfies one of two separate tests: (1) the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, the reference still
is reasonably pertinent to the particular problem with which the inventor is
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involved. Id. (citing In re Deminski, 796 F.2d 436,442 (Fed. Cir. 1986) and
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
In rejecting claim 1, the Examiner relies primarily on Cohen, finding
that it teaches all of the limitations except the "determination that the sensor
inputs do not satisfy the one or more first criteria and do not satisfy the one
or more second criteria" and the remaining limitations setting forth the
actions performed when neither the first or second criteria are satisfied.
Final Act. 6. To cure these deficiencies, the Examiner cites Saputra as
teaching the recited "determination" and Chomenky as teaching the actions
performed in response to the determination. Final Act. 6-8.
Appellants offer several arguments in favor of patentability, but we
need only address the argument that Saputra is non-analogous art to resolve
this appeal. Appellants assert the claimed invention is in the field of
"touch-sensitive displays that display a split or unsplit keyboard." App.
Br. 15-16 ( quoting Spec. ,r 6). Appellants argue Saputra is not in the same
field of endeavor because Saputra relates to "determining completion of a
Web server download session at a database server." App. Br. 16 (quoting
Saputra Abstract). Appellants further contend Saputra does not meet the
"reasonably pertinent" test for analogous art because it addresses a different
problem than the problem addressed by Appellants' invention. App. Br. 17.
Appellants assert that "Saputra has nothing to do with user interfaces or
displaying anything, let alone displaying virtual keyboards" and instead
addresses problems relating to partial downloads of web server resources.
App. Br. 17-18. We agree.
The Examiner finds both Saputra and the claimed invention to be in
the same field of endeavor because they "both are directed to techniques
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used to determine an outcome." Ans. 3. The Examiner explains that "[i]n
both instances, the technique used is generating an action based on meeting
specified conditions." Ans. 3. The Federal Circuit has made clear that the
"test for analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention's subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention." Bigio, 3 81 F .3d at 1325-26 ( citation omitted)
( emphasis added).
Here, a review of Appellants' Specification shows that it does not
describe the invention as relating to a "techniques used to determine an
outcome" as found by the Examiner. Rather, the Specification characterizes
the invention as "relat[ing] generally to electronic devices with
touch-sensitive surfaces, including but not limited to electronic devices with
touch-sensitive displays that display a split or unsplit virtual keyboard."
Spec. ,r 2. Saputra is not concerned with virtual keyboards, or even devices
with touch-sensitive surfaces more generally. Rather, Saputra is directed to
a technique that allows "for determining completion of a Web server
download session at a database server." Saputra Abstract. The purported
field of endeavor identified by the Examiner-"techniques used to determine
an outcome"-is untethered to the description set forth in Appellants'
Specification, and is, therefore, erroneous. As such, the Examiner based the
analogous art determination on an improper field of endeavor. Because
Appellants' field of endeavor is touch-sensitive devices, and because
Saputra does not relate to touch-sensitive devices, Saputra is not in the same
field of endeavor as Appellants' invention.
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The Examiner also finds that, even if Saputra is in a different field of
endeavor, it is nevertheless analogous art because "Saputra addresses [the]
same problem as the independent claims" by utilizing Boolean logic in a
similar way as the claims. Ans. 5 ( emphasis omitted). We disagree. The
problems faced by Appellants and described in the Specification all relate to
inefficiencies in displaying soft keyboards that are best suited to how a
device is being held or supported. See Spec. ,r,r 5---6. The fact that
Appellants' claims address these problems by implementing a form of
Boolean logic does not mean that the problem itself relates to Boolean logic.
The Federal Circuit has held that "[t]he pertinence of the reference as a
source of solution to the inventor's problem must be recognizable with the
foresight of a person of ordinary skill, not with the hindsight of the
inventor's successful achievement." Sci. Plastic Prods., Inc. v. Biotage AB,
766 F.3d 1355, 1359 (Fed. Cir. 2014). Here, it is only through the lens of
Appellants' claimed solution, a solution that utilizes Boolean logic, that a
person of ordinary skill in the art would have turned to Saputra's use of
Boolean logic to address problems in the virtual keyboard arts. Accordingly,
we agree with Appellants that Saputra is not reasonably pertinent to the
particular problem faced by the inventors, and it does not qualify as
analogous art for purposes of obviousness. We do not sustain the rejections
under 35 U.S.C. § 103(a).2
2 That we do not sustain the Examiner's decision to reject claim 1 should not
be viewed as indication that the claim is patentable. Rather, our decision is
based only on the Examiner's improper reliance on non-analogous art (i.e.,
Saputra) in the proposed combination. We note that the features for which
the Examiner relies on in Saputra appear to be present in Cohen.
Specifically, Cohen discloses determining whether various criteria are met
and, therefore, at least suggests determining when those criteria are not met
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DECISION
We reverse the Examiner's rejections of claims 1-11 and 15-24.
REVERSED
(i.e., when Cohen determines neither a first criteria is met nor a second
criteria is met, Cohen suggests determining neither criteria is met). See, e.g.,
Cohen ,r,r 48 ("continuous graphical keyboard is graphically positioned ...
opposite from the side where the user is holding mobile device 1 O"), 53
("mobile device 10 may further determine whether the user is holding
mobile device 10 with one hand"), 54 ("mobile device 10 may also
determine whether the user is holding mobile device 10 with both
hands" and, if so, "mobile device 10 may present a split graphical keyboard
layout"), Figs. 2B, 2C. Furthermore, in computer graphic display systems
that alter the display upon detecting certain criteria, it appears to follow that
Cohen suggests continuing to display the graphical keyboard layout
determined based on the most recently met criteria until different criteria
exist that trigger changing the graphical display. However, the Patent Trial
and Appeal Board is a review body, rather than a place of initial
examination. We leave it to the Examiner to ascertain the appropriateness of
any further rejections based on Cohen and/or other references. Our decision
not to enter a new ground of rejection, however, should not be considered as
an indication regarding the appropriateness of further rejection or allowance
of the non-rejected claims. See MPEP § 1213.03.
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