Apple Inc.

Patent Trials and Appeals Board

May 7, 2021

2021001171 (P.T.A.B. May. 7, 2021)

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.
15/424,186 02/03/2017 Aled Hywel WILLIAMS P31490US1/77770000449101 2961
150004 7590 05/07/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
TANK, ANDREW L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
05/07/2021 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALED HYWEL WILLIAMS, JONATHAN P. IVE,
BRONWYN JONES, IEYUKI KAWASHIMA, KEVIN LYNCH,
NATALIA MARIC, ANDREAS E. SCHOBEL, and
MOLLY PRAY WIEBE
Appeal 2021-001171
Application 15/424,186
Technology Center 2100
Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–57. We have jurisdiction under
35 U.S.C. § 6(b).

1 An oral hearing was held for this appeal on April 20, 2021.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple
Inc. Appeal Br. 3.
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Application 15/424,186

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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to techniques for initiating a telephone call
and sending messages in time-sensitive situations involving a user’s health,
where a user can contact an emergency number faster and easier “about a
critical event.” Spec. ¶ 5. Claim 1, reproduced below, illustrates the
claimed subject matter:
1. An electronic device, comprising:
a touch-sensitive display;
one or more processors;
a 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:
detecting a first user input;
in response to detecting the first user input,
displaying on the touch-sensitive display a user interface
including concurrently displaying, on the touch-sensitive
display, a first affordance and a second affordance;
while displaying the user interface that includes
the first affordance concurrently displayed with the
second affordance, detecting a second user input
including detecting a contact on the touch-sensitive
display; and
in response to detecting the second user input
while displaying the user interface that includes the first
affordance concurrently displayed with the second
affordance:
in accordance with a determination that the
contact corresponds to selection of the first
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Application 15/424,186

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affordance that is concurrently displayed with the
second affordance, causing the electronic device to
turn off; and
in accordance with a determination that the
contact corresponds to selection of the second
affordance that is concurrently displayed with the
first affordance, causing initiation of a telephone
call to a determined number.
See Appeal Br. 23 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kuz US 2012/0015622 A1 Jan. 19, 2012
Nguyen US 2013/0045708 A1 Feb. 21, 2013
Scott US 8,521,122 B2 Aug. 27, 2013
Jobs US 2014/0327629 A1 Nov. 6, 2014
Lianhui CN 104168367 A Nov. 26, 2014

REJECTIONS
Claims 8, 28, and 46 stand rejected under 35 U.S.C. § 112(b) or pre-
AIA 35 U.S.C. § 112, second paragraph, as being indefinite and failing to
particularly point out and distinctly claim Appellant’s invention. Final Act.
4–5.
Claims 1, 2, 7–9, 17–20, 22, 27–29, 37, 38, 40, 45–47, 55, and 56
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jobs and
Lianhui. Final Act. 6–9.
Claims 3–6, 23–26, and 41–44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jobs, Lianhui, and Kuz. Final Act. 9–11.
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Claims 11–16, 31–36, and 49–54 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jobs, Lianhui, and Nguyen. Final Act. 12–14.
Claims 21, 39, and 57 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jobs, Lianhui, and Scott. Final Act. 14–15.3

OPINION
REJECTION UNDER 35 U.S.C. § 112(b)
The Examiner finds the term “a third predetermined location
corresponding to the second affordance,” as recited in claims 8, 28, and 46,
is not clear because the claims “contain no first or second predetermined
location corresponding to the second affordance.” Final Act. 5. Appellant
contends “[o]ne of ordinary skill in the art would understand that the ‘third’
in the ‘third location’ is a label for the location” and “[t]here is no
requirement that labels be in any specific order or that the numeric labels
start with any specific number.” Appeal Br. 21. Relying on the disclosure
in paragraph 39 of the Specification, Appellant asserts that reading the claim
in light of the Specification, “one skilled in the art, would understand that a
recitation of a ‘third location’ does not require the recitation of a first
location and/or a second location in the parent claim to be definite.” Id. In
response, the Examiner states “a broadest reasonable interpretation of the
term ‘third predetermined location’ necessarily requires another

3 The Examiner has objected to claims 10, 30, and 48 as being dependent
upon a rejected base claim, but has indicated these claims would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims. See Final Act. 16.
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predetermined location” because paragraph 39 of the Specification describes
the terms “only to distinguish one element from another.” Ans. 7–8.
Based on our review of paragraph 39 and the entire recited limitations
of claim 8, we are persuaded by Appellant’s arguments that the Examiner
erred in concluding that the claims are unclear. The test for definiteness
under 35 U.S.C. § 112 is whether “those skilled in the art would understand
what is claimed.” Orthokinetics, Inc., v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). The Office “determines the
scope of claims . . . not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)); see also Zletz, 893 F.2d at 321. In particular, breadth is not
indefiniteness, provided the skilled artisan is reasonably apprised of the
meaning of the claim. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings,
370 F.3d 1354, 1366 (Fed. Cir. 2004).
We specifically agree with Appellant that one of ordinary skill in the
art would understand the term “a third location,” as recited in claim 8, to
refer to a location distinct from “a fourth location,” also recited in claim 8,
and therefore, define the extent of the contact movement on the touch-
sensitive display.4 Based on the broadest reasonable interpretation of the
claim terms, in view of the Specification, we agree with Appellant that the

4 We observe that similar designation for different locations are recited in
claim 7 as “a first location” and “a second location,” which similarly identify
how far the contact movement may extend.
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metes and bound of the disputed claim feature in claims 8, 28, and 46 is
understood by the skilled artisan as not requiring “the recitation of a first
location and/or a second location in the parent claim to be definite.” See
Reply Br. 8. Therefore, we are persuaded the Examiner erred in rejecting
claims 8, 28, and 46 under 35 U.S.C. § 112(b).
REJECTIONS UNDER 35 U.S.C. § 103(a)
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. As discussed below, we are unpersuaded by Appellant’s
contentions of Examiner error.
With respect to claim 1, the Examiner finds Jobs discloses an
electronic device, a touch sensitive display, one or more processors, a
memory, and the program including instructions for performing the
following: (1) detecting a user input (pressing push button 206); (2)
concurrently displaying a first affordance and a second affordance (elements
displayed in Figure 3C); (3) detecting a second user input including
detecting a contact on the display (user touch on the screen); (4) in
accordance with a determination that the contact corresponds to selection of
the first affordance, or the second affordance, performing a function
(selecting a function displayed on the display, such as selecting “cancel” in
case of detecting the first affordance and calling 911 or emergency in case of
detecting a second affordance). Final Act. 6–7 (citing Jobs, Fig. 3C, ¶¶ 8,
102, 177, 178). The Examiner further relies on Lianhui as disclosing an
affordance, which is displayed with a plurality of affordances on a display,
and corresponds to a “powering down” function when selected. Final Act. 7
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(citing Lianhui, Abstr., Fig. 1). According to the Examiner, one of ordinary
skill in the art would have modified Jobs with Lianhui in order “to provide a
simpler way for powering down the mobile device, resulting [sic] better user
experience.” Id. (citing Lianhui, Abstr.).
Appellant contends the Examiner erred because “Jobs and Lianhui,
either alone or in combination, fail to teach or suggest (1) ‘concurrently
displaying, on the touch-sensitive display, a first affordance and a second
affordance,’ (2) ‘in response to detecting the second user input . . . causing
initiation of a telephone call to a determined number’.” Appeal Br. 14.
Appellant specifically argues the deficiencies of the applied references as
follows:
Jobs discloses various mobile device interfaces and,
specifically, a lock screen user interface that includes various
affordances including an “emergency call icon that permits an
emergency call (e.g., to 911) without entering the passcode.”
(See Jobs at [0178].) Notably, however, Jobs does not disclose
displaying the “emergency call icon” on the lock screen
concurrently with an affordance that when activated will cause
the electronic device to turn off. Thus, Jobs cannot be relied
upon to teach or suggest, “concurrently displaying, on the
touch-sensitive display, a first affordance and a second
affordance [wherein selection of the first affordance causes] the
electronic device to turn off [and selection of the second
affordance initiates] a telephone call to a determined number.”
Lianhui does not cure Jobs’ deficiencies. Lianhui
describes a system that includes an “off” affordance on a lock
screen. (See Lianhui at Abstract.) Notably, however, Lianhui
does not disclose displaying the “off” affordance on the lock
screen concurrently with an affordance that when activated
will cause the electronic device to initiate a telephone call to a
determined number.
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Appeal Br. 15. Additionally, Appellant challenges the stated reason to
combine the references by asserting that “[t]here would be no reason for a
person of ordinary skill in the art to modify Jobs, which already discloses a
power off affordance.” Appeal Br. 16 (citing Jobs ¶ 1100 and Figs. 55A–
55D). Appellant explains that “Jobs, however, already discloses a perfectly
good way to power off a device” and “the Examiner’s proposed combination
makes Jobs’ device worse.” Id.
The Examiner responds by explaining:
As previously disclosed in the Final Rejection (Final Rejection
08/09/2019, ¶ 7, ¶ 19), the plural affordance in the lock screen
of Jobs can perform actions (¶ 177–178, Fig. 3: cancel, calling
911). The sole deficiency of Jobs is that an action performed
when an affordance that is not the emergency call affordance is
selected, is an action of powering down the device. Lianhui, a
prior art analogous to the instant field of displaying actionable
affordances on a user interface of a mobile device, is relied on
to teach this deficiency. Lianhui teaches a device having a lock
screen having plural affordances that perform different actions.
Lianhui teaches that one of the actions is an action to perform a
powering down of the device.
Ans. 4 (emphasis added). With respect to the combination of Jobs with
Lianhui, the Examiner explains that the proposed modification improves
Jobs by using one of the affordances on a lock screen for powering down the
device because “Jobs discloses a power off method that requires a slide
operation (Fig. 55A–55D, ¶ 1100–1101),” whereas “Lianhui teaches that
changing the power down slide operation to be an on screen affordance on a
lock screen is an improvement to the user experience of the mobile phone.”
Appellant has not persuaded us of error. As explained by the
Examiner (Ans. 4), one of ordinary skill in the art would have understood
that Lianhui teaches the specific function of turning off a device when a
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contact on a touch-sensitive display corresponding to the selection of an
affordance is detected, which may be added to the mobile interface display
of Jobs. As discussed above, Appellant is arguing the references
individually whereas the rejection is based on the combination of the cited
references where all of the features of the secondary reference need not be
bodily incorporated into the primary reference (see In re Keller, 642 F.2d
413, 425 (CCPA 1981) and the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)). That is, the Examiner does not rely on Jobs or
Lianhui alone for teaching concurrently displaying the first and second
affordances and the specific functions of turning off the device and initiating
a call that correspond to selection of the first and second affordances,
respectively. We note that nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Keller, 642 F.2d at 425; see
also In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here,
the proposed combination is based on modifying the lock screen display of
Jobs, including at least two affordances, with the teachings of Lianhui with
respect to the functions associated with each affordance.
We also observe that Appellant’s reference to Jobs’ method of
powering off as “a perfectly good way to power off a device” is not
sufficient to establish that “the Examiner’s combination, would create the
undesirable risk of the user inadvertently turning off the device when the
device was in the user’s pocket, or while the user is attempting to unlock and
use the device.” See Appeal Br. 16–17. The skilled artisan is “a person of
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ordinary creativity, not an automaton,” and this is a case in which the skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
That is, the power off feature disclosed by Lianhui need not replace the other
features of Jobs and mainly provides a different functionality to one of the
affordances that are concurrently displayed. In other words and as also
explained by the Examiner, the disclosure of “changing the power down
slide operation to be an on screen affordance on a lock screen is an
improvement to the user experience of the mobile phone.” Ans. 5.

CONCLUSION
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1. We also sustain the 35 U.S.C. § 103 rejections of the
remaining claims because Appellant argues their patentability together with
claim 1 or based on the failure of the additionally cited prior art to cure the
above-discussed deficiencies of the Jobs-Lianhui combination (see 37 C.F.R.
§ 41.37(c)(1)(iv) (2018)). See Appeal Br. 8, 17–19.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 28, 46 112(b) Indefiniteness 8, 28, 46
1, 2, 7–9,
17–20, 22,
27–29, 37,
38, 40, 45–
47, 55, 56
103(a) Jobs, Lianhui 1, 2, 7–9,
17–20, 22,
27–29, 37,
38, 40, 45–
47, 55, 56

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3–6, 23–26,
41–44
103(a) Jobs, Lianhui, Kuz 3–6, 23–26,
41–44

11–16, 31–
36, 49–54
103(a) Jobs, Lianhui,
Nguyen
11–16, 31–
36, 49–54

21, 39, 57 103(a) Jobs, Lianhui,
Scott
21, 39, 57
Overall
Outcome
1–9, 11–29,
31–47, 49–
57

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED