Steve Hotelling et al.

Patent Trials and Appeals Board

Nov 24, 2020

2020002118 (P.T.A.B. Nov. 24, 2020)

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.
12/118,659 05/09/2008 Steve Hotelling 106842009113
(P3271USD3)
1470
161038 7590 11/24/2020
Apple c/o Kubota & Basol LLP
445 S. Figueroa Street
Suite 2140
Los Angeles, CA 90071
EXAMINER
SCHNIREL, ANDREW B
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
docket@kuba-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVE HOTELLING, JOSHUA A. STRICKON,
BRIAN Q. HUPPI, IMRAN CHAUDHRI, GREG CHRISTIE,
BAS ORDING, DUNCAN ROBERT KERR, and JONATHAN P. IVE
____________________

Appeal 2020-002118
Application 12/118,659
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–18. Oral arguments were heard on November 9, 2020.
A transcript of the hearing will be placed in the record in due course. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b). See Ex
parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Apple Inc. as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
gestures for touch sensitive devices. Spec. Title. In a disclosed
embodiment, a graphical user interface (GUI) operational method for
scrolling or panning is provided wherein the scrolling operation (for
example) follows the direction of the gesture and continues even after the
gesture is no longer detected. Spec. 35–36, see also Figs. 22, 23A–D. In a
variation of this embodiment, the scrolling will continue and then slow in
accordance with an associated inertia GUI operational method until,
eventually, the scrolling operation stops. Spec. 36.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer implemented method of initiating inertia, the
method comprising:
at an electronic device with a touch-sensitive surface and a
display:
displaying, on the display, an image on a graphical user
interface (GUI);
detecting, on the touch-sensitive surface, a touch at a
location corresponding to the image or features embedded in
the image on the graphical user interface on the display;
after detecting the touch at the location corresponding to
the image or features embedded in the image on the graphical
user interface, detecting movement of the touch on the touch-
sensitive surface; and,
in response to detecting movement of the touch while the
touch continues to be detected on the touch-sensitive surface,
moving the image or features embedded in the image on the
graphical user interface in accordance with a movement of the
touch on the touch-sensitive surface, wherein the position of the
Appeal 2020-002118
Application 12/118,659
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image or features embedded in the image on the graphical user
interface is determined based on a detected position of the touch
on the touch-sensitive surface;
after moving the image or features embedded in the
image on the graphical user interface in accordance with the
movement of the touch on the touch-sensitive surface based on
a detected position of the touch on the touch-sensitive surface,
detecting lift off of the touch from the touch sensitive
surface; and
after detecting the lift off of the touch:
continuing motion of the image or features
embedded in the image based on a speed and direction of
movement of the touch prior to detecting lift off of the
touch; and
slowing the motion of the image or features
embedded in the image to a stop in accordance with
virtual friction while the touch remains lifted off.

The Examiner’s Rejections
1. Claims 1–3, 6–9, 12–15, and 18 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Van Den Hoven et al. (US
7,152,210 B1; Dec. 19, 2006) (“Van Den Hoven”) and Zetts (US 5,272,470;
Dec. 21, 1993). Non-Final Act. 5–17.
2. Claims 4, 5, 10, 11, 16, and 17 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Van Den Hoven, Zetts, and
Tsuk et al. (US 2003/0076301 A1; Apr. 24, 2003) (“Tsuk”). Non-Final
Act. 17–21.

Appeal 2020-002118
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ANALYSIS2
Appellant asserts that Van Den Hoven, as relied on by the Examiner,
fails to teach either (i) moving an underlying image in accordance with a
movement of a detected touch; or (ii) after detecting lift off of the touch,
continuing movement of the image and slowing the movement to a stop in
accordance with virtual friction while the touch remains lifted off. Appeal
Br. 7–19; Reply Br. 3–9. Particularly with respect to the movement that
slows to a stop in accordance with virtual friction while the touch remains
lifted off, Appellant argues Van Den Hoven teaches a continuous scrolling
operation that is stopped not while a touch remains lifted off, but instead
requires a user to maintain contact with the touch-sensitive screen. Appeal
Br. 18–19; Reply Br. 5–6. Moreover, to the extent the Examiner relies on
Zetts’s teaching of an end of touch characterized as a liftoff (see Non-Final
Act. 7), Appellant asserts that such a combination would alter Van Den
Hoven’s principle of operation and would require an entirely different type
of virtual friction not taught or suggested by either Zetts or Van Den Hoven.
Appeal Br. 22–23; Reply Br. 11–12.
Van Den Hoven generally relates to “[a] device for browsing an
image [that] shows a continuously scrolling sequence of representations of
images and commands in a browsing area.” Van Den Hoven, Abstract. Van
Den Hoven teaches that the speed of the scrolling may be adjusted in
accordance with a speed of an input stroke within the browsing area. Van
Den Hoven, col. 2, ll. 50–52. In addition, Van Den Hoven teaches “[t]he

2 Throughout this Decision, we have considered the Appeal Brief, filed
August 13, 2019 (“Appeal Br.”); the Reply Brief, filed January 21, 2020
(“Reply Br.”); the Examiner’s Answer, mailed November 18, 2019 (“Ans.”);
and the Non-Final Office Action, mailed November 19, 2018 (“Non-Final
Act.”), from which this Appeal is taken.
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Application 12/118,659
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browsing means may simulate inertia and friction, for example, by gradually
decreasing the scrolling speed, instead of instantaneously stopping the
scrolling, in response to the user touching the browsing area.” Van Den
Hoven, col. 2, ll. 59–63; see also Van Den Hoven, col. 4, l. 60–col. 5, l. 14.
Based on our review of Van Den Hoven, we agree with Appellant that
Van Den Hoven teaches the scrolling of the sequence of images stops when
the user both touches the browsing area and continues to maintain contact
with the browsing area. This is contrary to the claim language, which recites
the motion (e.g., scrolling) of the image slows to a stop in accordance with
virtual friction “while the touch remains lifted off.” See claim 1. Further,
Van Den Hoven, as modified using the liftoff of Zetts as an end of gesture,
would require a further modification to the virtual friction being applied—
i.e., the scrolling of the sequence of images slowing to a stop while the touch
remains lifted off—which is not taught or suggested by either Van Den
Hoven or Zetts.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do no sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we do not sustain the Examiner’s rejection of
independent claims 7 and 13, which recite commensurate limitations. In
addition, we do not sustain the Examiner’s rejection of claims 2, 3, 6, 8, 9,
12, 14, 15, and 18, which depend directly or indirectly therefrom. Further,
we note the Examiner does not rely on Tsuk to remedy the deficiencies of
the proposed combination of Van Den Hoven and Zetts. See Non-Final
Act. 17–21. Accordingly, we also do not sustain the Examiner’s rejection of
dependent claims 4, 5, 10, 11, 16, and 17.

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CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–18 under pre-
AIA 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–9,
12–15, 18
103(a) Van Den Hoven,
Zetts
1–3, 6–9,
12–15, 18
4, 5, 10, 11,
16, 17
103(a) Van Den Hoven,
Zetts, Tsuk
4, 5, 10,
11, 16, 17
Overall
Outcome
1–18

REVERSED