Ex Parte Helle

Patent Trial and Appeal Board

Sep 25, 2017

13422525 (P.T.A.B. Sep. 25, 2017)

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.
13/422,525 03/16/2012 Seppo Ilmari Helle 042933/417128 8721
10949 7590 09/27/2017
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
LEE, JUSTIN S
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEPPO ILMARI HELLE
Appeal 2016-007955
Application 13/422,5251
Technology Center 2100
Before THU A. DANG, TERRENCE W. McMILLIN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 4, 6—16, and 18—23, which constitute all of the claims pending
in this application. Claims 3, 5, and 17 have been cancelled. App. Br. 16,
17, 19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Nokia Technologies Oy as the real party in interest.
App. Br. 2.
Appeal 2016-007955
Application 13/422,525
THE INVENTION
The disclosed and claimed invention is directed to an electronic
device, which,
in response to detecting a progressive dragging input gesture
provided by a user via a graphical user interface ... reveal[s] one
or more menu items, such that the one or more revealed menu
items are visible[,] highlight[s]at least one said visible menu item
in correspondence with the progressive dragging input gesture[,]
and select[s] the highlighted menu item in response to detecting
the completion of the progressive dragging input gesture.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus comprising:
a processor; and
a memory including computer program code,
the memory and the computer program code configured
to, with the processor, cause the apparatus to perform at least the
following:
in response to detecting a progressive dragging
input gesture provided by a user via a graphical user
interface, enable:
moving a displayed whole screen user
interface element or window user interface element
of the graphical user interface to reveal one or more
menu items, such that the one or more revealed
menu items are visible;
highlighting at least one said visible menu
item in correspondence with the progressive
dragging input gesture; and
selecting the highlighted menu item in
response to detecting the completion of the
progressive dragging input gesture.
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Application 13/422,525
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Nakano US 2004/0100479 A1 May 27, 2004
Hinckley US 2011/0205163 A1 Aug. 25, 2011
Lessing US 2012/0236037 A1 Sept. 20, 2012
REJECTIONS
Claims 1, 2, 4, 6—16, and 19-23 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Lessing in view of Nakano.
Final Act. 2—11.
Claim 18 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lessing in view of Nakano and Hinckley. Final Act. 11—
12.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred.2 In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding the pending claims,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2—12), and (2) the reasons and rebuttals set forth in the
2 Rather than reiterate the entirety of the arguments of Appellant and the
positions of the Examiner, we refer to the Appeal Brief (filed Dec. 7. 2015);
the Reply Brief (filed Aug. 12, 2016); the Final Office Action (mailed July
7, 2015); and the Examiner's Answer (mailed June 13, 2016) for the
respective details.
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Application 13/422,525
Examiner’s Answer in response to Appellant’s arguments (Ans. 3—6). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
Appellant argues “the combination of Lessing and Nakano is
improper due to the references teaching away from each other, and teaching
away from embodiments of the claims.” App. Br. 7; see also id. at 9-11;
Reply Br. 13. Specifically, Appellant argues Lessing teaches a preview
which “prohibits additional functions (e.g. highlighting and selection of
menu items) being performed during a preview.” App. Br. 9 (citing Lessing
141). According to Appellant,
This express teaching of Lessing means that any
combination with Nakano (or any other cited art) which involves
moving a whole screen user interface element to reveal one or
more menu items, and allows further interaction with those menu
items (other than after opening the associated application)
directly teaches against this “not operable” teaching of Lessing.
Id. at 9—10; see also Reply Br. 2 (arguing that “the skilled person would not
go against the explicit teaching of Lessing that second application
information (e.g. email messages) cannot be interacted with” (emphasis
omitted)).
We find Appellant has not demonstrated that “a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 L.3d 551, 553
(Led Cir. 1994). Lessing paragraph 41, which discusses a preferred
embodiment, “does not teach away. . . [as] it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
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Application 13/422,525
otherwise discourage’ investigation into the invention claimed.” DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Appellant does not identify any passage in Lessing that explicitly discredits
or discourages performing a function on an exposed element and the cited
statement does no more than articulate a preference for merely previewing
items. That stated preference is insufficient to teach away from the claimed
invention. See id.; Fulton, 391 F.3d at 1201.
Appellant further argues that the prior art lacks a teaching, suggestion
or motivation to combine the teachings of Lessing and Nakano. App. Br.
11—14; Reply Br. 4 (“However, the skilled individual would not consider
performing these functions using a single gesture, because the combined
teachings of the two documents would not have suggested this to him/her.”
(emphasis omitted)). According to Appellant, “there is [not] any motivation
arising from Lessing to consider methods of interaction with second
application information (e.g. inbox of email messages), and accordingly the
skilled person would not turn to Nakano as providing such a method of
interaction with menu items.” App. Br. 12; see also Reply Br. 4 (arguing
“just because Lessing does not explicitly prohibit other functions (beyond
‘previewing’ and ‘opening’) being performed using this gesture does not
mean that Lessing would suggest to the skilled (but uninventive) person that
the gesture could and should be used for other functions which are unrelated
to ‘previewing’ and ‘opening’ (as in feature (ii))”). Similarly, Appellant
contends Nakano paragraph 384 does not contain a “particular suggestion of
combining these steps with any further features in particular, such as
‘revealing’ menu items.” App. Br. 12—13. Moreover, Appellant contends
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Application 13/422,525
the combination of the teaching from the two references “is beyond the
capabilities of the skilled person, and that this would require inventive
input.” Reply Br. 3 (emphasis omitted).
The Examiner finds that a person of ordinary skill in the art would
have modified Lessing to include the relevant teachings of Nakano in order
to “allow[] one to simplify the process of scrolling, selecting, and executing
a menu item or application in a one single gesture, which enhances its
operability.” Final Act. 4 (citing Nakano 1384); see also Ans. 6 (“Such [a]
combination would have provided convenience to those of ordinary skill in
the art where users can perform multiple functions in a single progressive
gesture (e.g. shortcut).”).
In KSR, the Supreme Court rejected the rigid application of the
teaching, suggestion, or motivation (TSM) test in favor of a more expansive
and flexible approach to the determination of obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007). The Court stated, “the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418.
Instead, “if 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.” Id. at 417. Additionally, the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. Id. at 418. The skilled artisan is “[a]
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Application 13/422,525
person of ordinary creativity, not an automaton.” Id. at 421. Thus, to the
extent Appellant’s argument is premised on strictly applying the TSM test, it
is not persuasive of Examiner error.
Additionally, we agree with the Examiner the prior art contains
known solutions that have been used to improve one device and that a
person of ordinary skill in the art would have recognized that it could have
been used to improve other prior art devices in a predicable way. We agree
with the Examiner that Nakano expressly teaches using a single drag to
activate a menu entry and that such a feature would enhance its operability.
Nakano 13 84 (“In this way, a sequence of operation including scroll,
selection of a desired menu display entity, and activation of an application
may be executed with a single drag, thereby enhancing its operability.”).
Appellant has not argued that it would have been “uniquely challenging or
difficult for one of ordinary skill in the art” to make the modifications
suggested by the Examiner. See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Therefore, we are not persuaded by Appellant’s arguments that the Examiner
erred in combining the prior art references. Instead, we determine that
Examiner’s finding provides a “rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 2, 4, 6—16, and 19-23, which are not argued
separately.3
3 Appellant argues the claims as a group. We decide the appeal of these
claims on the basis for claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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With respect to dependent claim 18, Appellant merely contends that
because the Examiner erred in combining Lessing and Nakano, the
Examiner similarly erred in combining Lessing, Nakano, and Hinckley.
App. Br. 15. Because we determine that the rejection of claim 1 is not
erroneous for the reasons discussed above, we sustain the rejection of
claim 18.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1, 2, 4, 6—16, and 18—23.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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