Ex Parte Blumenberg

Patent Trial and Appeal Board

Mar 8, 2016

13221837 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/221,837 08/30/2011
61725 7590 03/10/2016
MORGAN, LEWIS & BOCKIUS LLP I AI
2 PALO ALTO SQUARE
3000 EL CAMINO REAL, SUITE 700
PALO ALTO, CA 94306
FIRST NAMED INVENTOR
Christopher Blumenberg
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.
P5040USC2/63266-5578US 4277
EXAMINER
DAO, TUANC.
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BLUMENBERG
Appeal2014-005969
Application 13/221,837
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 25--40, which are all of the pending claims. 1 Claims 1-
24 are canceled. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 An Oral Hearing was held February 16, 2016.
Appeal2014-005969
Application 13/221,837
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is directed to "an environment with user
interface software interacting with a software application to provide gesture
operations for a display of a device." Abstract. Claim 25, reproduced
below, is illustrative of the claimed subject matter:
25. A method performed by an electronic device having a
display of multiple views and user interface software interacting
with a software application, the method comprising:
transferring a delegate call to notify a delegate associated
with the software application of a gesture event.
References and Rejections2
Claims 25, 27-28, 30-32, 34 and 36-40 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Trantow (US 2003/0222917 Al;
Dec. 4, 2003). Final Act. 3.
Claims 26, 29, 33 and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Trantow and Kariathungal (US 2008/0120576 Al;
May 22, 2008). Final Act. 8.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We adopt the Examiner's findings
and conclusions (see Final Act. 3-10; Ans. 12-21) as our own, and we add
the following primarily for emphasis.
2 Claims 25, 26, 28, 29, and 31-35 are objected to by the Examiner. See
Final Act. 2. Such objections, however, are not before this panel and thus
are not addressed herein. See, e.g., MPEP § 706.01; see also MPEP § 1201.
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A. Independent claim 25
Appellant argues the rejection of independent claim 25 is in error,
because "[t]he Examiner has not shown that the alleged delegate (the
operating system GUI APis 82) represents or is associated with a particular
software object. Thus, the Examiner has failed to demonstrate that the
operating system GUI APis 82 qualifies as a 'delegate'". App. Br. 13.
During examination, claims are given their broadest reasonable
interpretation consistent with the Specification. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Moreover, identity of
terminology is not required for determining whether a reference discloses a
claim element. Cf In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Here,
Appellant's Specification does not include narrowing definitions of the
disputed terms; thus, we agree that "under the Applicant's definition, the
Examiner's definition, and the explicit recitation of the claim, it is necessary
that a delegate be associated with a software application." Reply Br. 3; see
also Ans. 5. In accordance with such claim construction, the Examiner
reasonably finds, and we agree, that the claimed delegate encompasses the
operating system GUI APis of Trantow, because Trantow discloses that the
APis support the operating system, and thus are "associated with" the
"software application" as claimed. See Ans. 8 (citing Trantow Fig. 8, i-f 42).
Appellant argues Trantow's operating system does not correspond to
the recited software application, however, because Trantow distinguishes
between an operating system and various "applications." App. Br. 15.
Appellant's argument is unpersuasive, because we agree with the Examiner
that "the claims and the instant specification does not exclude the operating
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Application 13/221,837
system as a software application."3 Ans. 7. That is, Trantow's disclosure of
other applications (such as word processing applications) does not show
error in the Examiner's finding that the recited "software application,"
within the meaning of claim 25, encompasses Trantow's operating system.4
See Final Act. 3.
Appellant contends that "Trantow describes that the operating system
GUI APis 82 perform the function calls to the operating system 84. Thus, in
Trantow, the operating system GUI APis 82 is not the entity to be notified of
a gesture event by 'transferring a delegate call,' as recited in claim 25."
App. Br. 15-16. Appellant's Specification describes the "method 1800 for
notifying the delegate includes ... a delegate call is transferred to notify the
delegate." Spec. i-f 110. Trantow's APis performs the function call
generated by the middleware. See Trantow i-fi-141--43. Thus, we agree with
the Examiner that Trantow' s APis is notified of this function call within the
broadest reasonable meaning of the claim. See Ans. 4--5.
Accordingly, we are not persuaded by Appellant's contentions that the
Examiner erred in finding Trantow discloses the limitations of independent
claim 25, or independent claims 28, 31, 32, and 34 which are not separately
argued. See App. Br. 16.
3 Appellant's Specification states "[ v ]arious devices ... have software
applications. The API interfaces between the software applications and user
interface software to provide a user of the device with certain features and
operations." Spec. i-f 6; compare Trantow, Fig. 8.
4 Separately, we note that, rather than distinguishing between applications
and the operating system, Trantow discloses the operating system is depicted
as an example of "the various applications and objects being operated upon,"
as shown in Figure 8. See Trantow i-fi-142--43.
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B. Dependent claim 36
Appellant argues "the Examiner's rejection of claim 36 is inconsistent
with the Examiner's rejection of claim 25 .... [I]n rejecting claim 36, the
Examiner appears to assert that the same operating system GUI APis 82 in
Trantow correspond to the 'application programming interface' of claim
36." App. Br. 17.
We are not persuaded the Examiner erred. Appellant does not provide
sufficient evidence or argument to persuade us "that a person of ordinary
skill in the art would understand that a call being transferred 'through' one
element would not be intended 'to notify' that same element." Reply Br. 8.
Rather, we agree with the Examiner that "claim 3 6 does not require the
delegate and the application programming interface are distinct/different."
Ans. 11. As discussed above, we find Trantow's GUI APis teaches a
delegate that is notified within the meaning of claim 25; for at least this
reason, Appellant's contentions are unpersuasive of Examiner error in also
finding Trantow's GUI APis teaches the "application programming
interface" recited in claim 36.
Further, the Examiner cites Trantow' s disclosure of "the various
graphical user interface (GUI) application programming interfaces (APis) of
the various applications" in the rejection of claim 36 (Final Act. 7).
Appellant does not persuade us the Examiner erred in finding these various
APis teach or suggest the delegate and the application programming
interface as claimed. See Final Act. 7 (citing Trantow i-fi-1 42--43); see also
Ans. 12 ("Trantow fully discloses the gesture function calls/function calls
are transferring through application programming interface APis of various
applications or GUI APis 82.").
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Accordingly, we sustain the Examiner's rejection of dependent claim
36, as well as dependent claims 37--40 which Appellant does not argue
separately. See App. Br. 17.
C. Dependent claim 26
Appellant argues the Examiner erred in finding the combination of
Trantow and Kariathungal teaches or suggests the limitations of claim 26,
because Kariathungal does not teach a delegate, and "the Examiner does not
address what portion of Kariathungal teaches or suggests a delegate that
changes other views in response to the gesture event associated with the
scaling transform on the view." App. Br. 21.
Appellant's arguments are unpersuasive of Examiner error because
they attack the references individually, and thus fail to address the
Examiner's findings. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
("The test for obviousness is not . . . that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art"). Here, the Examiner finds it would have
been obvious to modify Trantow's delegate system with Kariathungal's
teaching of scaling transforms. See Final Act. 9. We agree, as Kariathungal
teaches gesture functions associated with complex multi-step commands
such as "multiple zoom" or "magic glass" (Kariathungal i-fi-1 46--4 7), in which
"a position of a gesture can affect a relative position of an image with regard
to a certain gesture interaction" (Kariathungal i1 67) and "a plurality of
characteristics (e.g., size and position) may be combined to modify a
gesture-to-function mapping" (Kariathungal i1 69). See Ans. 16-17.
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Kariathungal teaches that such gesture-to-function mapping may be used for
various levels of magnification at different portions of the display. See
Kariathungal Fig. 4; i-fi-1 65---69.
We agree with the Examiner that the combination of Trantow and
Kariathungal teaches or suggests the disputed limitations to one of ordinary
skill in the art, because the skilled artisan is "a person of 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'! Co. v. Teleflex, Inc., 550 U.S. 398, 420, 421 (2007); see also Ans.
16-17. Accordingly, we sustain the Examiner's rejection of dependent
claim 26, as well as dependent claims 29, 33, and 35 which Appellant does
not argue separately. See App. Br. 21.
CONCLUSIONS
We sustain the Examiner's rejection of independent claims 25, 28, 31,
32, and 34, and dependent claims 26, 29, 33, and 35--40. Appellant advances
no further argument on the remaining dependent claims. Accordingly, we
sustain the Examiner's rejection of these claims for the same reasons
discussed above.
DECISION
The Examiner's rejection of claims 25--40 is affirmed.
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).
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