Ex Parte Paretti et al

Patent Trial and Appeal Board

Jun 22, 2018

13334415 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/334,415 12/22/2011
10949 7590 06/26/2018
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Christopher Paretti
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.
042933/413273 5167
EXAMINER
F ARAGALLA, MICHAEL A
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER PARETTI and WILLIAM LINDMEIER
Appeal2017-009879
Application 13/334,415 1
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3-9, 11-17, and 19-24. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm and enter a new ground of rejection.
INVENTION
The invention is directed to providing transitions between screens that
are presented on displays based on characteristics of input provided by users.
Spec. i-f 1. Claim 1 is illustrative of the invention and is reproduced below:
1 According to Appellants, the real party in interest is Nokia Technologies
Oy. App. Br. 1.
2 Claims 2, 10, and 18 have been cancelled. App. Br. 14, 16, 18.
Appeal2017-009879
Application 13/334,415
1. An apparatus comprising at least one processor and
at least one memory including computer program code, the at
least one memory and the computer program code configured to,
with the processor, cause the apparatus to at least:
provide for display of an origin screen, wherein the origin
screen consists of an arrangement of a plurality of first content
items over an area of a device display;
receive an input from a user in one of a first predefined
area or a second predefined area of the origin screen, each of the
first and second predefined areas being independent of the first
content displayed via the origin screen, wherein the input
comprises a movement component;
determine a destination screen for display from a plurality
of screens based on which of the first or second predefined areas
the input is received in and a direction of the movement
component of the input, wherein the destination screen consists
of an arrangement of a plurality of second content items over the
area of the device display and the second content items are
different from the first content items; and
provide for a visual transition from the origin screen to the
destination screen, []wherein, as a result of the visual transition,
the plurality of first content items of the origin screen are no
longer displayed on the device display and are replaced by the
plurality of second content items such that the destination screen
replaces the origin screen as a result of the visual transition and
is presented for viewing in the area of the device display in place
of the origin screen that was previously presented in the area.
REJECTIONS AT ISSUE
Claims 1, 3---6, 9, 11-14, 17, and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hotelling et al. (US
2006/0026521 Al; published Feb. 2, 2006) (hereinafter, "Hotelling") and
Chaudhri (US 2009/0172532 Al; published July 2, 2009). Ans. 3-11.
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Application 13/334,415
Claims 7, 15, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hotelling, Chaudhri, and Oh et al. (US
2010/0162182 Al; published June 24, 2010) (hereinafter, "Oh"). Ans.
12-13.
Claims 8, 16, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hotelling, Chaudhri, and Lee et al.
(US 2011/0028186 Al; published Feb. 3, 2011). Ans. 13-17 (hereinafter,
"Lee").
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
The Examiner finds Hotelling teaches turning pages on a screen using
a finger swipe, which maps to "determine a destination screen ... for
display from a plurality of screens based on the first predefined area ... the
input is received in and a direction of the movement component of the input"
as similarly recited in claims 1, 9, and 17. Ans. 4 (citing Hotelling i-fi-f 117-
18, Figs. 21 A-21 D ). In addition, the Examiner finds Chaudhri teaches a
particular area of the touch screen where horizontal swipe/ slide 214 for
touch sensing may be over the image or below an image, which maps to
"second predefined area" as recited in claims 1, 9, and 17. Ans. 5---6 (citing
Chaudhri i-fi-f 154--55, Fig. 19A). And the Examiner finds Hotelling teaches
detecting objects sliding in a predetermined region, which maps to "each of
the first predefined area being independent of the first content displayed via
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Application 13/334,415
the origin screen" as similarly recited in claims 1, 9, and 17. Ans. 3 (citing
Hotelling i-f 117, Fig. 20). The Examiner concludes it would have been
obvious to a person having ordinary skill in the art at the time of the
invention to modify Hotelling' s method of detecting an input gesture such as
a swipe occurring in a specific region with Chaudhri' s specific areas to
improve user experience in navigating and advancing through media such as
images. Ans. 6-7.
Appellants argue the combination of Hotelling and Chaudhri fails to
teach "determine a destination screen for display from a plurality of screens
based on which of the first or second predefined areas the input is received
in and a direction of the movement component of the input" as recited in
claim 1 (and similarly recited in claims 9 and 17). App. Br. 8-9. Further,
Appellants argue Chaudhri fails to cure the acknowledged deficiencies of
Hotelling because the cited portions of Chaudhri teach alternatively one
swipe location above or one swipe location below the image does not teach
two locations. Id. at 9-10 (citing Chaudhri i-fi-1154--55, Fig. 19A). In
addition, Appellants argue the Examiner relies on impermissible hindsight to
combine Hotelling and Chaudhri to reject the independent claims. App. Br.
10-13. Additionally, Appellants argue by relying on paragraph 70 of
Hotelling, the Examiner disregards "each of the first and second predefined
areas is independent of the first content displayed via the origin screen" as
recited in claims 1, 9, and 17. Reply Br. 3 (citing Ans. 20). We disagree
with Appellants.
We agree with the Examiner's findings. In particular, the cited
portions of Hotelling relied upon by the Examiner teach a predetermined
region (i.e., first predefined area independent) on a screen receiving a finger
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Application 13/334,415
swipe turns pages on the screen, which teaches "the first predefined area is
independent of the first content displayed via the origin screen" as similarly
recited in claims 1, 9, and 17. Ans. 3 (citing Hotelling i-f 117, Figs. 20 and
21A-21B). The cited portions of Hotelling relied upon by the Examiner
teach tablet 512 recognizing the swipe and direction to tum to the
corresponding page (i.e., determine a destination screen for display from a
plurality of screens based on a direction of movement) in a predetermined
region (i.e., first predefined area), which teaches "determin[ing] a
destination screen ... for display from a plurality of screens based on the
first predefined area ... the input is received in and a direction of the
movement component of the input ... " as similarly recited in claims 1, 9,
and 17. Ans. 4 (citing Hotelling i-fi-1117-18, Figs. 21A-21D).
Moreover, the cited portions of Chaudhri relied upon by the Examiner
teach a particular area of the touch screen where horizontal swipe/slide 214
for touch sensing may be over the image or below an image, which maps to
"second predefined area" as recited in claims 1, 9, and 17. Ans. 5---6 (citing
Chaudhri i-fi-1154--55, Fig. 19A). We also agree with the Examiner's finding
that it would have been obvious to a person having ordinary skill in the art at
the time of the invention to modify Hotelling' s method of detecting an input
gesture such as a swipe occurring in a specific region with Chaudhri' s
specific areas to improve user experience in navigating and advancing
through media such as images. Ans. 6-7. Thus, we find that the Examiner
articulated reasoning with rational underpinnings to support a motivation to
combine the teachings of Hotelling and Chaudhri (see In re Kahn, 441 F .3d
977, 988 (Fed. Cir. 2006)).
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Application 13/334,415
Because Appellants argue independent claims 1, 9, and 17 together
and do not proffer separate arguments for the dependent claims (App. Br. 10,
13), we sustain the Examiner's rejections of: (1) independent claims 1, 9,
and 17; and (2) dependent claims 3-8, 11-16, and 19-24 under 35 U.S.C.
§ 103(a).
NEWGROUNDSOFREJECTION
Within our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1, 3-9, 11-17, and 19-24 under 35 U.S.C.
§ 112(a) for lacking a written description of the invention.
The word "independent" was not included as part of the originally
filed claims. Appellants amended claims 1, 9, and 17 to include
"independent" in an amendment filed on November 4, 2013. Furthermore,
on pages 10-11 of the remarks filed on November 4, 2013, Appellants state
paragraphs 61 and 62 provide support for "independent," in the manner
claimed by Applicants.
Moreover, Appellants allege support for "independent" is found in
paragraphs 61, 62, and 88 of the Specification. App. Br. 2, 5, 6 (citing Spec.
i-fi-161, 62, 88). Paragraphs 61, 62, and 88 of the Specification discuss
predefined areas and makes no explicit or implicit mention of
"independent." The closest the Specification comes to discussing
"independent" is in Figure 3, which was not relied upon by Appellants for
support. See App. Br. Appellants' Figure 3 and its corresponding paragraph
57 of the Specification fail to show Appellants' possession of "independent."
Stated another way, Figure 3 and paragraph 57 of the Appellants'
Specification does not disclose necessarily that dashed arrow 105 of swipe
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region is independent from the image being displayed; it demonstrates
obviousness. That is, the user's swipe could be is in the same region (i.e.,
not independent) or different region (i.e., independent) as the image being
displayed.
However, Appellants' Specification supporting obviousness of a
claimed feature added after its original filing via amendment is insufficient
to show possession. That is, it is well settled that a description that merely
renders the invention obvious does not satisfy the written description
requirement. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1352 (Fed. Cir. 2010) (en bane). As such, Appellants did not have
possession of the limitation "independent" recited in claims 1, 9, and 17 at
the time of filing the application.
Accordingly, we enter a new ground of rejection for: (1) independent
claims 1, 9, and 17; and (2) dependent claims 3-8, 11-16, and 19-24 under
35 U.S.C. § 112(a) for lacking a written description of the invention
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-9, 11-17,
and 19-24 under 35 U.S.C. § 103(a).
We enter a new ground of rejection for claims 1, 3-9, 11-17, and 19-
24 under 35 U.S.C. § 112(a).
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
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review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record ....
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; 37 C.F.R. § 41.50(b)
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