13334369 (P.T.A.B. Jun. 15, 2016)

Ex Parte Herring et al

Patent Trial and Appeal BoardJun 15, 2016

13334369 (P.T.A.B. Jun. 15, 2016)

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. 13/334,369 12/22/2011 Dean F. Herring RPS920110100US1 9309 63638 7590 06/16/2016 STREETS & STEELE - IBM CORPORATION (ROC) 13100 WORTHAM CENTER DRIVE, SUITE 245 Suite 245 HOUSTON, TX 77065 EXAMINER NICHOLS, JENNIFER ELIZABETH-JO ART UNIT PAPER NUMBER 2142 MAIL DATE DELIVERY MODE 06/16/2016 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 DEAN F. HERRING, BRAD M. JOHNSON, ADRIAN X. RODRIGUEZ, and JEFFREY J. SMITH ____________ Appeal 2015-000062 Application 13/334,369 Technology Center 2100 ____________ Before CATHERINE SHIANG, NORMAN H. BEAMER, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1‒6, 8‒16, and 18‒20, which are all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is International Business Machines Corporation. Br. 2. 2 Claims 7 and 17 have been canceled. See Final Act. 2. Appeal 2015-000062 Application 13/334,369 2 STATEMENT OF THE CASE Introduction Appellants’ present application relates to detecting a selection gesture on a touch screen electronic device. Abstract. Claim 1 is illustrative of the subject matter on appeal and reads as follows: 1. A method, comprising: sensing a simultaneous touching of a touchscreen by first and second fingers and dynamically determining touch positions of the two fingers; displaying a selection graphic on the touchscreen and dynamically positioning the selection graphic as a function of the two touch positions in response to a movement of one or both touch positions; interpreting a movement of the two fingers toward one another to less than a threshold distance apart as a separate selection input; and automatically selecting a specific graphical object in response to the separate selection input received while the selection graphic is positioned on the specific graphical object. The Examiner’s Rejections Claims 1‒6, 8, 11‒16, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Benko (US 2007/0247435 A1; Oct. 25, 2007) and Hotelling (US 8,239,784 B2; Aug. 7, 2012). Final Act. 3‒19. Claims 9, 10, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Benko, Hotelling, and Kim (US 2010/0257447 A1; Oct. 7, 2010). Final Act. 19‒25. Appeal 2015-000062 Application 13/334,369 3 ANALYSIS Appellants argue the Examiner erred in rejecting claim 1 because the combination of Benko and Hotelling does not teach or suggest “interpreting a movement of the two fingers toward one another to less than a threshold distance apart as a separate selection input.” See Br. 12‒15. The Examiner finds Hotelling teaches detecting the initial position of two of a user’s fingers and detecting when the fingers move towards one another. Ans. 3 (citing Hotelling 15:44‒46). The Examiner reasons that the initial distance between the fingers is the “threshold distance” and the device detects when the distance between the fingers is subsequently less than this initial distance. Ans. 3 (citing Hotelling 15:44‒46). Appellants argue the claimed “threshold distance” must be a fixed distance, not a relative distance as interpreted by the Examiner. Br. 12. Appellants rely on an example in the Specification, which uses the term “threshold distance” to refer to a fixed distance. Br. 13 (citing Spec. ¶ 23, Fig. 4). Appellants have persuaded us that the Examiner erred in finding Hotelling teaches the disputed limitation. The Examiner construes the term “threshold distance” broadly, concluding that it encompasses the initial distance between a user’s fingers when they contact the touch screen. Ans. 3. We disagree with the Examiner’s claim construction. Claim 1 recites in relevant part “interpreting a movement of the two fingers toward one another to less than a threshold distance apart.” The Examiner’s interpretation is broad enough that the phrase “to less than a threshold distance apart” would be rendered superfluous because the phrase “toward one another” already encompasses two fingers moving from their initial position to a position that Appeal 2015-000062 Application 13/334,369 4 is closer than the initial position. Accordingly, we conclude the Examiner’s construction of “threshold distance” is overly broad. Because the broadest reasonable interpretation of “threshold distance” does not include the initial distance between a user’s fingers when they contact the screen, Hotelling does not teach the disputed limitation. We, therefore, do not sustain the rejection of claim 1.3 CONCLUSIONS On the record before us and in view of the analysis above, Appellants’ argument has persuaded us that the Examiner erred in rejecting claim 1. Therefore, we do not sustain the rejection of claim 1, independent claim 11, which recites similar limitations, and claims 2‒6, 8‒10, 12‒16, and 18‒20 dependent therefrom. DECISION We reverse the decision of the Examiner to reject claims 1‒6, 8‒16, and 18‒20. REVERSED 3 Because we are persuaded of error with regard to the identified issue, which is dispositive of the rejection of claim 1 over Benko and Hotelling, we do not reach the additional issues raised by Appellants’ arguments.