Ex Parte 6,897,853 et al

Patent Trial and Appeal Board

Nov 28, 2014

95002329 (P.T.A.B. Nov. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,329 09/14/2012 6,897,853 098981-2003 2825
27195 7590 11/28/2014
TUROCY &WATSON, LLP
127 Public Square
57th Floor, Key Tower
CLEVELAND, OH 44114
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC
Third Party Requester, Respondent, and Cross-Appellant

v.

MICROSOFT CORPORATION
Patent Owner and Appellant
____________

Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2
Technology Center 3900
____________

Before BRADLEY W. BAUMESITER, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

2
Patent Owner Microsoft (“Patent Owner”) appeals under 35 U.S.C.
§§ 134(b) and 315(a) the Examiner’s decision to reject claims 7–12.1 Third
Party Requestor Motorola Mobility LLC (“Requestor”) responds to the
Patent Owner’s appeal2 and appeals the Examiner’s decision not to adopt
certain proposed rejections.3 The Patent Owner responds to the Requestor’s
appeal.4 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We heard oral arguments on October 29, 2014, a transcript of which
will be made part of the record.
We AFFIRM the Examiner’s rejection of claims 7-12.
We do not address the Requester’s appeal of proposed rejections of
claims 7–12 not adopted by the Examiner.

STATEMENT OF THE CASE
United States Patent 6,897,853 (hereinafter the “’853 Patent”), issued
to Leroy B. Keely et al. on May 24, 2005, is the subject of the current inter
partes reexamination.
The ’853 Patent is the subject of the civil action, Motorola Mobility,
Inc. v. Microsoft Corp., Case No. 2:11-cv-01408, in the United States

1 See Patent Owner’s Appeal Brief, filed January 13, 2014 (“PO App. Br.”),
at 2; Examiner’s Answer, mailed March 27, 2014, incorporating by
reference the Examiner’s Right of Appeal Notice, mailed October 9, 2013
(“RAN”). The Patent Owner also filed a reply brief. See Patent Owner’s
Rebuttal Brief, filed April 28, 2014 (“PO Reply Br.”).
2 See Requestor’s Respondent Brief, filed February 13, 2014 (“TPR Resp.
Br.”).
3 See Requestor’s Appeal Brief, filed February 10, 2014 (“TPR App. Br.).
4 See Patent Owner’s Respondent Brief, filed March 10, 2014 (“PO Resp.
Br.).
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

3
District Court for the Western District of Washington, which is currently
stayed. See PO App. Br. 2.

THE INVENTION
The ’853 Patent generally relates to a system, method, and medium
for receiving user input, determining based on the user input what the user
wants to do, and performing a function related to the desired input. ’853
Patent, col. 1, ll. 35-40.
Claim 7, which is illustrative of the appealed subject matter, has not
been amended during reexamination and reads as follows:
7. A method for classifying a user’s input to a computer
comprising the steps of: receiving a user’s input; and first
determining whether the input is a stroke based on a first move
threshold; if the input is not a stroke, then second determining
whether the input is a tap based on a time threshold; if the input
is neither a stroke nor a tap, then third determining whether the
input is a hold or a hold and drag.
App. Br., Claims App’x.

PRIOR ART REJECTIONS
The Examiner relies on the following references:
Buxton EP 0660218 A1 June 28, 1995
Ulrich US 5,566,248 Oct. 15, 1996
Fukuda US 5,748,926 May 5, 1998
Harada US 6,657,615 B2 Dec. 2, 2003
(filed Mar. 30, 2000)
Patent Owner relies on the Declaration of Robert L. Stevenson, dated
December 21, 2012 (“Stevenson Decl.”). See PO App. Br., Evid. App’x.
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

4
Requestor relies on the Declaration of Jean Renard Ward, dated
January 25, 2013 (“Ward Decl.”). See TPR Resp. Br., Evid. App’x.

Patent Owner’s Contentions – Owner’s Appeal
Patent Owner contends that the Examiner erred in entering the
following grounds of rejection against claims 7–12:
1. The rejection of claims 7–12 under 35 U.S.C. §102(b) as being
anticipated by Buxton.
2. The rejection of claims 7–10 and 12 under 35 U.S.C. §102(b) as
being anticipated by Ulrich.
3. The rejection of claims 11 under 35 U.S.C. § 103(a) as
unpatentable over Ulrich and Harada.

Requester’s Contentions –Requester’s Appeal
Requester contends that the Examiner erred in failing to enter the
following grounds of rejection against claims 7-12:
1. The rejection of claims 7–10 and 12 under 35 U.S.C. §102(b) as
being anticipated by Fukuda.
2. The rejection of claims 7–10 and 12 under 35 U.S.C. §103(a) as
unpatentable over Fukuda.
3. The rejection of claim 11 under 35 U.S.C. §103(a) as unpatentable
over Fukuda and Applicant’s Admitted Prior Art (“AAPA”) in the
Background of the ’853 Patent.
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

5
PATENT OWNER’S APPEAL
ISSUES
1. Did the Examiner err in construing the instant claims?
2. Did the Examiner err by rejecting claims 7–12 under 35 U.S.C.
§102(b) as being anticipated by Buxton?
3. Did the Examiner err by rejecting claims 7–10 and 12 under
35 U.S.C. §102(b) as being anticipated by Ulrich?
4. Did the Examiner err by rejecting claim 11under 35 U.S.C. §103(a)
as unpatentable over Ulrich and Harada?

ANALYSIS
CLAIM CONSTRUCTION
Second Move Threshold
The parties here dispute whether the claimed third determining of
claim 7 is based on a second move threshold. See e.g., PO Reply Br. 3–6;
TPR Resp. Br. 3–5. Specifically, Patent Owner contends that determining
whether the input is a hold or a hold and drag is based on a second move
threshold. PO Reply Br. 3–6. According to the Patent Owner, the
Specification warrants this interpretation. PO Reply Br. 3–6. Requestor, on
the other hand, maintains that Patent Owner’s construction imports the
second move threshold limitation into the claim improperly and attempts to
amend the claims with argument alone. TPR Resp. Br. 3–4.
We are not persuaded by Patent Owner that the third determining of
claim 7 is based on a second move threshold. First, we note that claim 7
merely recites determining whether the input is a hold or a hold and drag,
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

6
notably lacking any reference to a second move threshold. See PO App. Br.,
Claim App’x; see also TPR Resp. Br. 4–5. As such, the broad claim
language does not support Patent Owner’s narrow interpretation.
Similarly, we find Patent Owner’s arguments with respect to the
Specification unavailing. Patent Owner, in particular, argues
where[, as here,] there is only one embodiment in the
specification (see Fig. 3) with respect to the particular subject
matter of claim 7 at issue, and where the claim language tracks
that only embodiment step-by-step, it is unreasonable to apply a
broad construction that does not track that embodiment. The
standard is the broadest reasonable construction in light of the
specification.
PO Resp. Br. 4.
As Requestor points out though, the Federal Circuit “has expressly
rejected the contention that if a patent describes only a single embodiment,
the claims of the patent must be construed as being limited to that
embodiment.” TPR Resp. Br. 3 (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)); see also Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not
enough for a patentee to simply disclose a single embodiment or use a word
in the same manner in all embodiments, the patentee must clearly express an
intent to redefine the term.” (citations omitted) (internal quotation marks
omitted)). Patent Owner fails to identify persuasively a clear intent to
redefine the third determining step and, thus, we find Patent Owner’s
argument unconvincing.
Patent Owner further maintains that Requestor’s construction “that
‘any manner’ could be used to determine the difference between a ‘hold’ and
a ‘hold and drag’ [] simply is not supported by the claims or specification,
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

7
and is an improper construction of claim 7.” PO Resp. Br. 5 (citations
omitted). This argument lacks merit. As discussed above, the plain
language includes no limitation on the “manner” in which the third
determining occurs, but merely recites determining whether the input is a
hold or a hold and drag. Moreover, as Requestor identifies, the Specification
at least suggests that the second move threshold embodiment is exemplary
and the broad language of the claimed invention is not limited to this
embodiment. See TPR Resp. Br. 6–7 (citing ’853 Patent col.3, ll. 15–20 and
col. 8, ll. 26–29).
Finally, Patent Owner argues, without persuasive support or
explanation, that the Requestor’s interpretation, which was applied by the
Examiner, excludes the preferred embodiment. To the contrary, the
Examiner’s findings did not limit the third determining step to exclude
determining based on a second move threshold. See RAN 8–9; see also TPR
Resp. Br. 7–8. Namely, the Examiner findings recognize that while using a
second move threshold may be one way to determine whether an input is a
hold or a hold and drag, it is not the only way covered by the claims. As
such, we find Patent Owner’s argument that the preferred embodiment is
excluded from the Examiner’s interpretation unpersuasive.
Therefore, we agree with the Examiner and Requestor that the third
determining step does not require the determining to be based on a second
move threshold.

Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

8
THE ANTICIPATION REJECTION OVER BUXTON
Claims 7-12
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claim 7 as anticipated by Buxton.
Patent Owner first argues that Buxton fails to teach the claimed first
determining step. PO App. Br. 7–8. While Patent Owner admits that
“Buxton discloses a system where events are checked as the pen inputs take
place. . .,” Buxton fails to disclose the claimed limitation because “move
thresholds are not checked until a PenUp event occurs.” PO App. Br. 7.
As such, according to the Patent Owner, “some gestures are classified before
any move thresholds are tested.” PO App. Br. 7. Patent Owner further
elaborates on this point by providing an example where a gesture may be
classified as a press-and-wait before ever checking a move threshold to
determine a stroke. PO App. Br. 7–8 (discussing that the move threshold
does not occur in menu mode, but only occurs in Mark mode); see also
Stevenson Decl., ¶ 31.
This argument lacks adequate merit. Contrary to Patent Owner’s
assertions, Buxton expressly discloses that a PenDrag event is generated
when the pen is kept pressed down and the location of the pen then moves
“an appreciable amount, e.g. one pixel.” Buxton col. 20, ll. 23–49; see also
TPR Resp. Br. 9–10.
We also disagree that Buxton’s press-and-wait gesture determination
fails to be based on a move threshold. Namely, a lack of movement must
first be established in order to classify the input as a press-and-wait. As the
Examiner explains “[b]y detecting the presence and absence of these events,
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

9
Buxton classifies inputs as strokes, taps, holds, and hold-and-drags as recited
in the claims.” RAN 9 (emphasis added); see also RAN 9 (noting that
“Buxton discloses recognizing a new event as a PenDrag over the other
types of events based on a movement threshold (e.g., if the stylus has not
reached a movement threshold, then the event is not a PenDrag and is one of
the other events instead, and the gesture is not a stroke)”). As such, we find
Patent Owner’s argument here unavailing.
Next, Patent Owner contends that Buxton fails to disclose the third
determining of whether the input is a hold or a hold and drag based on a
second move threshold. This argument, however, relies on Patent Owner’s
construction that this step requires determining based on a second move
threshold. See PO App. Br. 8–21. As discussed above, we disagree and do
not adopt the Patent Owner’s proposed construction. Therefore, we also find
this argument with respect to Buxton unpersuasive.
Patent Owner additionally argues that Buxton fails to disclose the
order in which inputs are classified.
Buxton discloses a system where events are checked as the pen
inputs take place but it does not disclose a system that checks
thresholds and classifies gestures as the thresholds are checked
as the ’853 Patent does. Instead the move thresholds are not
checked until a PenUp event occurs. Because of this, gestures
are not necessarily classified as thresholds are tested.

PO App. Br. 23 (citing Stevenson Decl., ¶36-37.) We disagree. As
discussed above, the Examiner explains that Buxton checks the presence and
absence of events to classify inputs as strokes, taps, holds, and hold-and-
drags. See RAN 9–10 (outlining how Buxton first determines whether a
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

10
input is a stroke, then determines whether the input is a tap, and finally
determines whether the input is a hold or a hold and drag).
We find Patent Owner’s remaining arguments likewise unavailing.
For example, Patent Owner asserts that Buxton fails to “describe[] a
PenDrag after a PenStill event as a ‘hold and drag,’ or how this purported
‘hold and drag’ is associated with a ‘hold and drag’ action.” PO Reply Br.
15. As the Examiner finds, though, Buxton expressly teaches a PenStill
followed by a PenDrag in order to pull up a menu (with a PenStill) and then
make a selection from that pulled menu (with a subsequent PenDrag). RAN
10. We are not persuaded that these actions are distinct from the claimed
hold and drag. There is no ipsissimis verbis test, though, for determining
whether a reference discloses a claim element, i.e., identity of terminology is
not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Moreover, neither the claims nor Specification support Patent
Owner’s contention that a hold and drag determination must be associated
with a hold and drag action. See e.g., PO App. Br. 15. Claim 7 merely
recites determining whether the input is a hold or a hold and drag. The
Specification notably identifies that a “hold and drag” may be associated
with other functions, such as selecting text and drawings. See ’853 Patent
col. 8, ll. 5–14 (noting that “[t]here are a number of alternatives associated
with dragging” such as, for example, selecting text and/or drawings).
Therefore, we are not persuaded that Buxton fails to disclose the claimed
third determining limitation.
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

11
Accordingly, we see no error in the Examiner’s rejection of claim 7,
as well as claims 9 and 11, as anticipated by Buxton. We, therefore, affirm
the rejection.

Claims 10 and 12
Claims 10 and 12 each recite a second move threshold. We also are
unpersuaded that the Examiner erred in rejecting claims 10 and 12. Instead,
we agree with the Examiner and Requestor that Buxton discloses
determining whether the input is a hold (claim 10) or a hold and drag (claim
12) based on a second move threshold.
In particular, the Examiner finds that Buxton
determines whether the stroke is a hold (i.e., the input activates
a PenStill event if the pen is held down for longer than a time
threshold, wherein a menu appears) or a hold and drag (i.e.,
during a PenStill event, the user can further activate PenDrag to
select one of the displayed menu options).
RAN 10 (citing Buxton Figures 15-17; col. 12, ll. 29-49; col. 20, ll. 26-57;
col. 21, ll. 1-16; and col. 31, ll. 7–26); see also RAN 10 (noting that “when a
hold and drag is detected by the activation of PenDrag during a
PenStill event, one in the art would recognize that this PenDrag event is
based on another (‘second’) move threshold.”) In other words, Buxton
determines whether a move threshold is met after a PenStill event to
generate a PenDrag to select a menu option.
Patent Owner argues that Buxton’s input events are each separate or
standalone events such that there is no determination between a hold and a
hold and drag.
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

12
In other words, the ’853 Patent uses a second move threshold
(at step 309) to determine whether an input is a “hold” or a
“hold and drag.” The input cannot be both, and a “hold” (i.e.,
an alleged PenStill) event cannot later be changed to a “hold
and drag” (i.e., an alleged PenDrag) by a drag subsequent to a
previous hold determination, as the Examiner appears to
suggests Buxton does.

PO App. Br. 17; see also PO Resp. Br. 15–16.
This argument, however, fails to consider the Buxton’s determination
of a PenDrag subsequent to a PenStill. Although at this point Buxton has
already classified a PenStill (or hold) event, Buxton still determines (through
use of a move threshold) whether a PenDrag event occurred or a PenStill
maintained. As such, in view of the broad language of the claim, we are not
convinced that Buxton fails to teach the claimed third determining
limitation.
Accordingly, we see no error in the Examiner’s rejection of claims 10
and 12 as anticipated by Buxton. We, therefore, affirm the rejection.

THE ANTICIPATION REJECTION OVER ULRICH
Claims 7-9
With respect to Ulrich, Patent owner also argues that Ulrich fails to
disclose the claimed third determining step based on a second move
threshold. See PO App. Br. 24–29. This argument relies on the Patent
Owner’s proposed claim construction of the third determining step, which
we rejected for the reasons discussed above. As such, we also find
unpersuasive Patent Owner’s arguments that Ulrich fails to disclose this
disputed limitation.
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

13
Accordingly, we find that the Examiner did not err in rejecting claim
7 as well as claims 8 and 9 as anticipated by Ulrich. We, therefore, affirm
the rejection.

Claims 10 and 12
We also are unpersuaded that the Examiner erred in rejecting claims
10 and 12. As discussed above, claims 10 and 12 each recite a second move
threshold.
Patent Owner here contends that Ulrich fails to determine whether
there is a hold or a hold and drag based on a second move threshold. PO
App. Br. 29. Instead, according to the Patent Owner, Ulrich determines
whether the user intends to drag the object and enables the capability to drag
the object after the expiration of a certain amount of time. See PO App. Br.
27–28 (citing, e.g., Ulrich col. 7, l. 67–col. 8, l. 15 and Figs. 4c and 11).
The Examiner, though, responds that Ulrich discloses selecting an
object by placing the stylus over an object for a predetermined period of
time (i.e. “hold”). And when the stylus is still held down on the selected
object, the stylus can drag the object until release. RAN 13–14 (citing Fig.
11). As such,
One in the art would recognize that distinguishing between
keeping the stylus stationary on the object, and moving the
stylus to drag the object, constitutes distinguishing between
hold and hold-and-drag based on another (“second”) movement
threshold.

RAN 14; TPR Resp. Br. 17–18 (citing, e.g.,Ward Decl. ¶49). We agree with
the Examiner. While Ulrich may enable the ability to drag an object upon
Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

14
selecting the object, Ulrich determines that the user received input is a hold
or a hold and drag upon actually moving and dragging the object.
Accordingly, we see no error in the Examiner’s rejection of claims 10
and 12 as anticipated by Ulrich and accordingly affirm the rejection.

THE OBVIOUSNESS REJECTION OVER ULRICH AND HARADA
Claim 11
With respect to claim 11, Patent Owner relies on the arguments
presented for claims 7, 10 and 12, based on the second move threshold
requirement. See PO App. Br. 29. As discussed above, we find these
arguments unpersuasive. Accordingly, we find that the Examiner did not err
in rejecting claim 11 as obvious over Ulrich and Harada and affirm the
rejection.

REQUESTER’S APPEAL
Requester appeals the Examiner’s decision not to adopt certain
proposed rejections of claims 7–12. See TPR App. Br. 4–6. Requestor,
however, agrees we need not reach their appeal in view of an affirmance of
the Examiner’s already adopted rejections. See Oral Hearing Transcript,
dated October 29, 2014, p. 28, ll. 2–9. See also In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009) (declining to reach rejections when the claims were
already rejected on other grounds). Because we affirmed the Examiner’s
rejections of claims 7–12 above, we do not address the Requester’s appeal of
proposed rejections of claims 7–12 not adopted by the Examiner.

Appeal 2014-007367
Reexamination Control 95/002,329
Patent 6,897,853 B2

15
DECISION
The Examiner’s decision to reject claims 7–12 is affirmed.
We do not address the Requester’s appeal of proposed rejections of
claims 7–12 not adopted by the Examiner.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
This is a final decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2. For judicial review of decisions arising
out of proceedings referenced in 37 C.F.R. § 90.1, the notice and service
requirements are governed by the pertinent regulations in effect on July 1,
2012.

AFFIRMED

PATENT OWNER:
TUROCY & WATSON, LLP
127 Public Square
57th Floor, Key Tower
Cleveland, OH 44114

THIRD-PARTY REQUESTER:

FOLEY & LARDNER LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109