Ex Parte Merrell et alDownload PDFPatent Trial and Appeal BoardJul 29, 201612565101 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/565, 101 0912312009 124176 7590 08/02/2016 Shumaker & Sieffert, P,A,/Motorola 1625 Radio Drive Suite 100 Woodbury, MN 55125 FIRST NAMED INVENTOR Thomas Merrell 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. 1142-252US01 9814 EXAMINER BASOM, BLAINE T ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS MERRELL, EMILY SCHAEFFER, MURTHY PULLELA, and HOI YOUNG Appeal2015-000738 Application 12/565,101 Technology Center 2100 Before MAHSHID D. SAADAT, KAMRAN JIVANI, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Motorola Mobility LLC. App. Br. 2. Appeal2015-000738 Application 12/565,101 INVENTION Appellants' invention relates to methods and apparatus for altering presentation data on a user interface of an electronic device based upon displacement and duration of contact. See Abstract. Claim 1 is illustrative and reads as follows: 1. A method for altering presentation of data on a user interface of an electronic device, comprising: altering presentation of the data in accordance with a velocity selected from predetermined velocity data, the velocity being selected based upon a displacement traversed by an object along the user interface; and ceasing the altering in accordance with a deceleration factor selected from predetermined deceleration data, the deceleration factor being selected based upon a contact duration during which the object is in contact with the user interface and a data alteration velocity occurring at a time the object ceases contact with the user interface, the predetermined deceleration data comprising a plurality of overshoot curves. REJECTIONS Claims 1-8, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett et al. (US 2006/0048073 Al; published Mar. 2, 2006) ("Jarrett"), Hinckley et al. (US 6,975,306 B2; issued Dec. 13, 2005) ("Hinckley"), and Tsuk et al. (US 7,312,785 B2; issued Dec. 25, 2007) ("Tsuk"). Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett, Hinckley, Tsuk, and Nakaya (US 2009/0119613 Al; published May 7, 2009). 2 Appeal2015-000738 Application 12/565,101 Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett, Hinckley, Tsuk, and Cranfill et al. (US 2007 /0220443 Al; published Sept. 20, 2007). Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jarrett, Hinckley, Tsuk, and Lim et al. (US 2008/0042984 Al; published Feb. 21, 2008). Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett, Hinckley, Tsuk, Lim, and Levi Montalcini (US 2002/0089545 Al; published July 11, 2002). Claims 16 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett, Hinckley, and Lim. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett, Hinckley, Lim, and Tsuk. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarrett, Hinckley, Lim, Tsuk, and Levi Montalcini. ANALYSIS We have considered Appellants' arguments, but do not find them persuasive of error. We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We provide the following explanation for emphasis. In rejecting representative claim 1, the Examiner found that Jarrett teaches or suggests all of the limitations recited in claim 1, except "altering presentation of the data in accordance with a velocity selected from predetermined velocity data, the velocity being selected based upon a 3 Appeal2015-000738 Application 12/565,101 displacement traversed by an object along the user interface," for which the Examiner relied on Hinckley, and "the predetermined deceleration data comprising a plurality of overshoot curves," for which the Examiner relied on Tsuk. Final Act. 2--4. Appellants contend the cited portions of Tsuk do not disclose the limitation "the predetermined deceleration data comprising a plurality of overshoot curves," recited in claim 1, because Tsuk is directed to acceleration, not deceleration. App. Br. 12-17. In particular, Appellants argue that: ( 1) none of the cited references discloses that acceleration can be substituted for deceleration without interrupting the operation occurring in each reference (id. at 14--15); (2) the acceleration taught by Tsuk is not like the deceleration taught by Jarrett and Hinckley (id. at 15); and (3) Tsuk's deceleration could not be incorporated into the combination of Jarrett and Hinckley without disrupting the desired operation occurring in the base combination (id. at 15-17). Appellants' first two arguments are not persuasive of Examiner error because they are misplaced and do not address the teachings of the references relied upon by the Examiner to address the disputed claim limitation. First, the Examiner did not find that "acceleration can be substituted for deceleration," which is the basis for Appellants' first argument. See App. Br. 14--15. Rather, the Examiner concluded that it would have been obvious to an artisan of ordinary skill to modify the scroll deceleration taught by Jarrett and Hinckley so that it is selected based on a plurality of curves, as taught by Tsuk. Final Act. 4; Ans. 19. Moreover, we agree with the Examiner that the Examiner's conclusion of obviousness is based on the 4 Appeal2015-000738 Application 12/565,101 teachings of the references, not on the Examiner's own personal knowledge. See Ans. 20. Second, the Examiner did not find that "the acceleration taught by Tsuk is like the deceleration taught by Jarrett and Hinckley," as Appellants contend in their second argument. App. Br. 15. Rather, the Examiner found that the scroll deceleration taught by Jarrett and Hinckley, like the acceleration taught by Tsuk, is based upon an input duration and a data alteration velocity. Final Act. 4. With regard to Appellants' further argument that Jarrett teaches that the deceleration rate is based only upon scrolling velocity (App. Br. 15), we agree with the Examiner that Jarrett discloses that "the deceleration factor (i.e. predetermined period of time) can particularly be selected based upon a contact duration during which an object (e.g. a stylus) is in contact with the user interface and a data alteration velocity occurring at a time the object ceases contact with the user interface (Ans. 17-18 (citing Jarrett i-fi-156, 59)). Appellants present no persuasive explanation or evidence to rebut the Exmainer' s findings. See Reply Br. 5- 9. Appellants' third argument is also unpersuasive. Appellants contend it is not clear how Tsuk's doubling of any deceleration rate in response to user rotational input could be incorporated into the combination of Jarrett and Hinckley without disrupting the desired operation occurring in the base combination. App. Br. 15. As the Examiner points out, the Examiner did not suggest incorporating Tsuk's disclosure of doubling a deceleration rate in response to user rotational input. Ans. 22. Rather, as the rejection makes clear, the Examiner concludes it would have been obvious to more generally modify the scroll deceleration taught by Jarrett and Hinckley so that it is 5 Appeal2015-000738 Application 12/565,101 selected based on a plurality of curves, as taught by Tsuk. Id. The test for obviousness is not whether all of the features of a secondary reference may be incorporated into 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. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants further argue for the first time in the Reply Brief that the "deceleration factor" recited in claim 1 is limited to a number of data elements to overshoot and, thus, the Examiner's finding that "the length of time over which deceleration occurs can be considered a 'deceleration factor"' is in error. Reply Br. 8. Appellants, however, have waived this argument because they presented it for the first time in the Reply Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010 (informative opinion) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). We note, however, that Appellants' Specification clearly states that "the deceleration factor may be an amount of time during which the data presentation alteration should cease." Spec. 13. For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Jarrett, Hinckley, and Tsuk teaches or suggests the disputed limitations of claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of independent claims 13 and 16, which Appellants argue are patentable for similar reasons. App. Br. 18. We also sustain the Examiner's rejection of dependent claims 2-12, 14, 15, and 17-20, for which Appellants refer to and 6 Appeal2015-000738 Application 12/565,101 rely on the arguments made for the independent claims from which those claims depend. Id. at 18-19. DECISION The decision of the Examiner rejecting claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation