Ex Parte Ozias et al

Patent Trial and Appeal Board

Jul 25, 2016

12405700 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/405,700 03/17/2009 Orin M. Ozias
33438 7590 07/27/2016
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
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.
DC-15352 4053
EXAMINER
FRANK, EMILY J
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
tmunoz@tcchlaw.com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ORIN M. OZIAS, HANS EILERS, and ERIN K. W ALLINE
Appeal2015-001682
Application 12/405,700
Technology Center 2600
Before ALLEN R. MacDONALD, JON M. JURGOV AN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3, 5-7, 9, 11-13, 15, 17, and 18. Claims 2, 4, 8, 10,
14, and 16 have been canceled. (Br. 6-8). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-001682
Application 12/405,700
STATEMENT OF THE CASE
Appellants' invention is directed to changing to the content of a
display screen in response to detecting an input gesture. (Spec. i-f 5). Claim
1, reproduced below with the disputed limitations in italics, is representative
of the claimed subject matter:
1. A method for generating a screen presentation content
change on an information handling system comprising:
generating a screen presentation;
monitoring for a predefined input gesture, the monitoring
comprising monitoring a touch sensitive input device, the
predefined input gesture comprising at least one of a full palm
gesture and a multifinger gesture;
generating a screen presentation content change in
response to detection of the predefined input gesture, the screen
presentation content change comprising an innocuous screen
presentation, the innocuous screen presentation corresponding
to a desldop screen presentation.
REJECTIONS
Claims 1, 3, 5-7, 9, 11-13, 15, 17, and 18 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention.
Claims 1, 3, 5-7, 9, 11-13, 15, 17, and 18 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Zotov et
al. (US 2007/0262964 Al; published Nov. 15, 2007) and Hu et al. (US
2010/0097322 Al; published Apr. 22, 2010).
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Appeal2015-001682
Application 12/405,700
ANALYSIS
112 Rejections
Issue 1: Did the Examiner err in finding the recitation of an
"innocuous" screen presentation renders the claims indefinite?
The Examiner finds the term "innocuous," as used in independent
claims 1, 7, and 13, is a relative term that renders the claims indefinite.
(Final Act. 2; Ans. 5).
Appellants provide a dictionary definition of "innocuous" meaning
"not likely to give offence or to arouse strong feelings or hostility." (Br. 3).
Accordingly, Appellants contend "an innocuous screen presentation is a
screen presentation which is not likely to give offence or to arouse strong
feelings or hostility." (Br. 3). Appellants also argue the claim language
defines an "innocuous screen presentation" as "corresponding to a desktop
screen presentation." (Br. 3).
We agree with Appellants that the claim language adequately defines
what is meant by the term "innocuous." A claim is indefinite if that claim,
"read in light of the [S]pecification ... and the prosecution history, fail[ s] to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014). We determine that one of ordinary skill in the art would have
understood, based on the Specification and the claim language, that the
claimed innocuous screen presentation corresponds to a desktop screen
presentation. (See Spec. i-f 20, Fig. 6). Accordingly, we do not sustain the
indefiniteness rejection.
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Appeal2015-001682
Application 12/405,700
103 Rejections
Issue 2: Did the Examiner err in finding the combination of Zotov
and Hu teaches or suggests "generating a screen presentation content change
in response to detection of the predefined input gesture, the screen
presentation content change comprising an innocuous screen presentation,
the innocuous screen presentation corresponding to a desktop screen
presentation" ("the disputed limitation") as recited in claim 1 and
commensurately recited in independent claims 7 and 13?
The Examiner relies on Zotov to teach or suggest "generating a screen
presentation content change in response to detection of the predefined input
gesture, the screen presentation content change comprising an innocuous
screen presentation" (Final Act. 3--4, citing Zotov Fig. 3, step 308) and Hu to
teach or suggest the "innocuous screen presentation corresponding to a
desktop screen presentation." (Final Act. 4, citing Hu i-f 4).
Appellants argue "[ s ]tep 308 [of Zotov] describes performing a toggle
accessibility aid operation," and "nowhere in this portion of Zotov (nor
anywhere else in Zotov) is there any disclosure or suggestion of [the
disputed limitation.]" (Br. 4). Appellants further argue "[t]his deficiency of
Zotov is not cured by Hu." (Id.)
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings. (See Final Act. 3--4; Ans. 6-7). Zotov describes using
preconfigured user inputs/gestures to correspond to a toggle accessibility aid
operation. (Zotov i-f 38). The toggle accessibility aid operation results in
toggling the visibility of a widget, such as a touch pointer, soft keyboard
widget, screen reader, or magnifier, on the interactive display device.
(Zotov i-f 27). We agree with the Examiner that such disclosure teaches or
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Appeal2015-001682
Application 12/405,700
suggests "generating a screen presentation content change in response to
detection of the predefined input gesture" as claimed. Moreover,
Appellants' arguments simply attack Zotov in isolation, but do not
substantively address the combined teachings and suggestions of Zotov and
Hu as relied upon by the Examiner. Nonobviousness "cannot be established
by attacking references individually" when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citation omitted).
Accordingly, we are not persuaded the Examiner erred. We,
therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claims 1, 7, and 13. For the same reasons, we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 3, 5, 6, 9, 11,
12, 15, 17, and 18, which were not argued separately.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 112, second
paragraph rejection of claims 1, 3, 5-7, 9, 11-13, 15, 1 7, and 18 is reversed.
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejection of
claims 1, 3, 5-7, 9, 11-13, 15, 17, and 18 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
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