Ex Parte Blumenberg

Patent Trial and Appeal Board

Oct 27, 2016

13251150 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/251,150 09/30/2011
61725 7590 10/31/2016
Morgan, Lewis & Bockius LLP I AI
1400 Page Mill Road
Palo Alto, CA 94304-1124
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.
P5040USC5/63266-5581US 8877
EXAMINER
DAO, TUANC.
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BLUMENBERG
Appeal2014-008900 1
Application 13/251, 1502
Technology Center 2100
Before MAHSHID D. SAADAT, CHARLES J. BOUDREAU, and
ADAM J. PYONIN, Administrative Patent Judges.
BOUDREAU, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-8, 10-12, 14--20, and 22-29, all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 An oral hearing was held in this appeal on August 8, 2016. A transcript
from the oral hearing was entered into the file on September 16, 2016.
2 Appellant identifies Apple Inc. as the real party in interest. App. Br. 4.
Appeal2014-008900
Application 13/251,150
STATEMENT OF THE CASE3
Appellant's disclosure is directed to "application programming
interfaces that provide gesture operations." Spec. i-f 2.
Claims 1 and 22, reproduced below, are illustrative of the subject
matter on appeal (italics added):
1. A machine readable non-transitory medium storing
executable program instructions, which, when executed, cause
an electronic device with a display to perform a method
compnsmg:
receiving a user input that comprises a plurality of input
points touching the display, wherein the user input generates a
gesture event;
transferring a gesture start event function call between user
interface software and a software application based on the user
input, wherein the gesture start event function call includes a
first list of two or more input points touching the display at a
first time; and
transferring a gesture changed event function call between
the user interface software and the software application based
on the user input, wherein the gesture changed event function
call includes a second list of two or more input points touching
the display at a second time.
22. A device comprising:
an input panel which is configured to receive user inputs;
a display device integrated with the input panel;
one or more processors coupled to the input panel; and
3 We note the Appeal Brief does not identify any related appeals and
interferences. See App. Br. 5; see also 37 CPR 41.37(c)(l).
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Appeal2014-008900
Application 13/251,150
a memory storing one or more programs configured to be
executed by the one or more processors, the one or more
programs including:
instructions for receiving a user input that comprises a
plurality of input points touching the input panel;
instructions for generating an event object in response
to the user input;
instructions for transferring a gesture changed event
function call between user interface software and a
software application in response to a change in the user
input; and
instructions for transferring a gesture end function
call between the user interface software and the software
application when at least one input point, of the plurality
of input points, associated with the user input is removed
from the input panel.
REJECTIONS ON APPEAL
Claims 22-24 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Hillis (US 2006/0031786 Al, published Feb. 9, 2006). See
Final Act. 3-5.
Claims 1--4, 6, 8, 10-12, 15-18, and 25 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Hillis and Zotov (US 2007 /0262964 A 1,
published Nov. 15, 2007 (filed May 12, 2006)). See Final Act. 6-22, 28.
Claims 5 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hillis, Hotelling (US 2006/0161871 Al, published
July 20, 2006), and Zotov. See Final Act. 22-24.
Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hillis, Westerman (US 2002/0015024 Al, published
Feb. 7, 2002), and Zotov. See Final Act. 24--25.
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Appeal2014-008900
Application 13/251,150
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hillis, Hotelling, Westerman, and Zotov. See Final
Act. 26-27.
Claims 26, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hillis, Kela (US 2005/0210419 Al, published
Sept. 22, 2005), and Zotov. See Final Act. 28-32.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hillis and Kela. See Final Act. 33-34.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We concur with Appellant's
conclusion that the Examiner erred.
With respect to the Examiner's rejection of claims 22-24 as
anticipated by Hillis, we agree with Appellant that "Hillis does not disclose a
function call as required in claim 22" (App. Br. 15), let alone "instructions
for transferring a gesture changed event function call between user interface
software and a software application" and "instructions for transferring a
gesture end function call between the user interface software and the
software application" (id. at 20-23). As explained by Appellant (App.
Br. 15-16), the Examiner's rejection appears to be based on these limitations
being inherent in Hillis. To establish inherency, the evidence "must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill." Cont'! Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991).
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Appeal2014-008900
Application 13/251,150
Although the "executable operations" of Hillis pointed to by the
Examiner (Final Act. 3-5 (citing Hillis i-fi-124--27, 43); Ans. 4--5 (citing Hillis
i-fi-124--27, 43)) might involve transferring function calls for gesture change
and gesture end events, "[i]nherency ... may not be established by
probabilities or possibilities." Cont 'l Can, 948 F .2d at 1269 (quoting In re
Oelrich, 666 F.2d 578, 581(CCPA1981)). Here, the Examiner has not
established that instructions for transfer of function calls are necessarily
present in the operations described by Hillis, notwithstanding the
Examiner's explanation that Appellant's specification supports a broad
interpretation of "transferring" a function call. See Ans. 6-11 (citing
Spec. i159; Hillis i-fi-124--26, 50). Accordingly, we do not sustain the
Examiner's rejection of claim 22 and its dependent claims 23 and 24 as
anticipated by Hillis. For the same reason, we also do not sustain the
Examiner's rejections of claim 25 for obviousness over Hillis and Zotov and
claim 27 for obviousness over Hillis and Kela, in both of which rejections
the Examiner relies solely on the same disclosures of Hillis as in the
rejection of claims 22-24 addressed above. See Final Act. 28, 33-34; Ans.
41--46.
For similar reasons, we also do not sustain the Examiner's rejections
of claims 1-8, 10-12, 14--20, 26, 28, and 29. In the rejection of claims 1--4,
6, 8, 10-12, and 15-18 over Zotov and Hillis, the Examiner relies upon
Zotov as disclosing "transferring a gesture start event function call based on
... user input" and "transferring a gesture changed event function call based
on the user input" (Final Act. 6-8, 12-14, 17-19 (citing Zotov i-fi-120, 21,
27-29, 33--44, Figs. 3-5) (emphasis omitted); Ans. 21-24, 26-28, 31-35)
and on Hillis as disclosing that those function calls are transferred "between
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Appeal2014-008900
Application 13/251,150
user interface software and a software application" (Final Act. 9-10, 15-16,
19-20 (citing Hillis i-fi-124--26, 43) (emphasis omitted); Ans. 29-30, 35-36),
as recited in each of independent claims 1, 10, and 15. The Examiner relies
on the same disclosures of Zotov and Hillis as disclosing those limitations in
the rejections of claims 5, 7, 14, 19, 20, 26, 28, and 29, citing Hotelling,
Westerman, and Kela only for other limitations of those dependent claims.
Final Act. 22-32; Ans. 37--41. We agree with Appellant that neither Zotov
nor Hillis expressly discloses function calls, however, let alone transferring
gesture start event and gesture changed event function calls between user
interface software and a software application; we also agree that the
Examiner has not established that those limitations are inherently disclosed
by either reference. App. Br. 24. Accordingly, we reverse the Examiner's
rejections of those claims.
DECISION
The Examiner's rejections of claims 1-8, 10-12, 14--20, and 22-29
are REVERSED.
REVERSED
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