Ex Parte Bergsbjörk

Patent Trial and Appeal Board

Jun 29, 2016

13216471 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/216,471 08/24/2011
54472 7590 06/29/2016
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
FIRST NAMED INVENTOR
Hanna Bergsbjork
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.
2002-1404IPSl1 0795US1 4185
EXAMINER
CHOI, DAVIDE
ART UNIT PAPER NUMBER
2174
MAILDATE DELIVERY MODE
06/29/2016 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 THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNA BERGSBJORK1
Appeal2014-007609
Application 13/216,471
Technology Center 2100
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims claim 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Sony Mobile
Communications AB. App. Br. 1.
Appeal2014-007609
Application 13/216,471
INVENTION
Appellant's invention relates to selecting objects on a touch-sensitive
display of a mobile communications device. Abstract. Claim 1 is
illustrative and reads as follows:
1. A mobile communications device comprising:
a memory configured to store application logic;
a touch-sensitive display screen configured to display a
collection of items to a user; and
a processor operatively connected to the memory and the touch-
sensitive display screen and configured to:
select a first item in the collection of items responsive to
detecting a single-tap of the first item on the touch-sensitive
display screen by the user; and
expand the selection by selecting a second item in the
collection of items and any intervening items responsive to
detecting a subsequent double-tap of the second item on the
touch-sensitive display screen by the user.
REJECTIONS
Claims 1, 3---6, 8, 10, 12-15, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Porat (US 2009/0282332
Al; published Nov. 12, 2009) and Shaffer et al. (US 2011/0181526 Al;
published July 28, 2011). Final Act. 3-10.
Claims 2, 9, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Porat, Shaffer, and Victor (US
2012/0030566 Al; published Feb. 2, 2012). Final Act. 10-12.
Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Porat, Shaffer, and Miller et al. (US
2009/0027355; published Jan. 29, 2009). Final Act. 12-13.
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Application 13/216,471
ANALYSIS
We have considered Appellant's arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken. We provide the following explanation for
emphasis.
In rejecting claim 1, the Examiner relies on Porat as teaching or
suggesting all recited limitations except "responsive to detecting a single-
tap" and "responsive to detecting a subsequent double-tap." Final Act. 3-5
(citing Porat Figs. 2, 3, 4C, i-fi-124, 29, 46, 47); Ans. 5. For those limitations,
the Examiner relies on Shaffer's disclosure of an event recognizer for a user
interface that recognizes an event sequence consisting of a single tap
followed by a double tap. Id. at 5 (citing Shaffer i-f l 05). The Examiner
concludes that it would have been obvious to an artisan of ordinary skill to
modify Porat to use Shaffer's tapping action to select intervening items
rather than Porat's dragging action. Final Act. 5; Ans. 5.
Appellant contends the cited portions of Porat do not teach or suggest
the limitation "selecting a second item in the collection of items and any
intervening items [in the list] responsive to detecting a subsequent double-
tap," as claim 1 requires. App. Br. 6. Appellant argues that, in Porat, the
intervening list items (List Items 2 and 3 in Figure 4D) are not selected in
response to a double-tap action on List Item 4, nor can they be. Id. at 7.
Appellant argues that "the intervening list items in Porat can only be selected
responsive to the user selecting List Item 1, and then, without lifting the
fingers away from the surface of the touchscreen, dragging the two fingers
down the list to List Item 4." Id. Appellant further argues that the
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Application 13/216,471
exclusivity exception list in Shaffer simply identifies certain user events that
commonly occur after other user events and "has nothing whatsoever to do
with the functions of the user actions." Id. at 8.2
We are not persuaded of Examiner error. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) ("The
test for obviousness is what the combined teachings of the references would
have suggested to those having ordinary skill in the art."). The Examiner
offers Porat as a reference to teach that a user can select a first item using a
tap gesture and can select a second item using a tap gesture. The Examiner
also uses Porat to disclose that a user can select intervening items by
dragging from one item to a second item. Ans. 5. The Examiner concludes
that it would have been obvious to an artisan of ordinary skill to replace the
dragging action in Porat with a tapping gesture, as disclosed in Shaffer,
which would have more easily allowed a user to select intervening items. Id.
at 7. Appellant presents no persuasive arguments directed to the combined
teachings and suggestions of Porat and Shaffer.
Appellant instead contends that Shaffer teaches away from a
combination with Porat because "the utilization of a double-tap action [in
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). We particularly note Appellant's Specification
(12) expressly discloses: "the present embodiments are to be considered in
all respects as illustrative and not restrictive, and all changes coming
within the meaning and equivalency range of the appended claims are
intended to be embraced therein." (emphasis added).
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Application 13/216,471
Shaffer] necessarily teaches away from the 'constant contact' required by
Porat." App. Br. 10.
We do not find Appellant's argument persuasive. A teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir.
2004). Appellant points to paragraph 47 of Porat, which teaches the user
may drag his or her fingers across the electronic device touchscreen to select
adjacent list items. App. Br. 9. We find that paragraph 47 of Porat does not
actually criticize, discredit, or otherwise discourage using a double-tap to
select adjacent list items. Moreover, although Appellant argues that Shaffer
teaches away from the combination, Appellant has not pointed to any
disclosure in Shaffer.
Regarding dependent claim 3, Appellant contends neither Porat nor
Shaffer discloses using another double-tap action to select a third list item
and any intervening list items, as claim 3 requires. App. Br. 12. Appellant
argues that Porat teaches re-touching a selected item to unselect it. Id.
Appellant further argues that Shaffer fails to remedy the deficiencies of
Porat. Id.
Appellant's arguments are not persuasive because, as discussed above,
they attack the references individually, even though the Examiner relies on
the combination of references as teaching or suggesting the limitations of
claim 3. Mouttet, 686 F.3d at 1332. Appellant presents no persuasive
arguments directed to the combined teachings and suggestions of Porat and
Shaffer.
With regard to dependent claim 7, Appellant contends Miller does not
teach or suggest automatically selecting an item in a list having no selected
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items and in response to a double-tap action. App. Br. 14. Appellant argues
that, instead, "Miller teaches generating and displaying a new list responsive
to a user's previous item selection from a different list." Id. at 15. Appellant
also argues that Miller cannot be combined with Porat and Shaffer because
"the result would be a list that is generated and initially displayed to the user
with the first item automatically selected before the user is ever able to
perform a user action, let alone the specifically claimed double-tap user
action." App. Br. 15-16.
We are not persuaded the Examiner erred. Appellant acknowledges
that Miller discloses automatically selecting the first item in a list. App. Br.
14. The Examiner finds, and we agree, that this disclosure in Miller,
combined with the cited teachings of Porat and Shaffer, teaches or suggests
the limitations of claim 7. Final Act. 12-13; Ans. 9-10.
Moreover, the Examiner provides persuasive articulated reasoning
with rational underpinning for an artisan of ordinary skill to have modified
the item selection taught in Porat with the teachings of Shaffer and Miller to
allow a more effective way to select and deselect items. Final Act. 13.
Furthermore, we find that it would have been well within the level of
skill of one skilled in the art to combine the known techniques in Porat,
Shaffer, and Miller to modify the item selection in Porat to use single and/or
double tapping, alone or in a sequence, as taught or suggested by Shaffer, to
select a first item in a list, as taught or suggested by Miller. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill"
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(citations omitted)). Appellant has not persuasively shown that combining
the respective familiar elements of the cited references in the manner
proffered by the Examiner would have been "uniquely challenging or
difficult for one of ordinary skill in the art" at the time of Appellant's
invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citingKSR, 550 U.S. at 418).
For at least these reasons, on this record, Appellant has not persuaded
us the Examiner erred. We find a preponderance of the evidence supports
the Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal. Accordingly, we sustain the 35 U.S.C.
§ 103(a) rejection of representative claim 1, as well as the 35 U.S.C.
§ 103(a) rejection of independent claim 10, which Appellant argues is
patentable for similar reasons. App. Br. 11. We also sustain the rejections
of dependent claims 2, 4--6, 8, 9, and 11-18, for which Appellants make no
further arguments. See 37 C.F.R. § 41.37(c)(l)(iv). We also sustain the
Examiner's rejection of dependent claims 3 and 7, and dependent claim 16,
which Appellant argues is patentable for the same reasons as claim 7. Id. at
16.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
without showing good cause (e.g., new untimely allegations of improper
reliance on hindsight reconstruction, Reply Br. 7-8), Appellant has waived
such arguments. See 37 C.F.R. § 41.41(b)(2).
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Application 13/216,471
DECISION
We affirm the Examiner's decision rejecting claims 1-18.
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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