Ex Parte Klein et al

Patent Trial and Appeal Board

Apr 28, 2017

13751940 (P.T.A.B. Apr. 28, 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.
13/751,940 01/28/2013 Douglas Klein BN01.755US 1076
107909 7590 05/02/2017
B&N / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
CHUNG, ANDREW
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
docketing @ finchmaloney .com
nmaloney @ finchmaloney .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Nook Digital, LLC1
Appeal 2017-000948
Application 13/751,940
Technology Center 2100
Before ERIC S. FRAHM, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The named inventors are Douglas Klein, Krishanu Chattopadhyay, and Saj
Shetty.
Appeal 2017-000948
Application 13/751,940
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to:
facilitating the use of an electronic device having a user
interface that is sensitive to a user's gestures. An "eyes-ffee"
mode is provided in which the user can control the device
without looking at the device display. Once the eyes-free mode
is engaged, the user can control the device by performing
gestures that are detected by the device, wherein a gesture is
interpreted by the device without regard to a specific location
where the gesture is made.
Abstract.
Exemplary Claims
Claims 7, 12, and 18, reproduced below, are representative of the
subject matter on appeal (emphases and formatting added to contested
limitations):
7. The device of claim 1, wherein:
the user interface further includes an options overlay in
which a plurality of command options are displayed on a
display;
the user interface further includes a control overlay
corresponding to a selected one of the plurality of command
options displayed in the options overlay,
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Jan. 25, 2016); Reply Brief ("Reply Br.," filed Oct. 11, 2016); Reply to
Office Action ("Reply to Office Action," filed Aug. 12, 2015); Examiner's
Answer ("Ans.," mailed Aug. 11, 2016); Final Office Action ("Final Act.,"
mailed Aug. 26, 2015); and the original Specification ("Spec.," filed
Jan. 28, 2013).
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Application 13/751,940
detection of a forward transition gesture causes the user
interface to transition (a) from the manual mode to the options
overlay when the manual mode is active, and (b) from the
options overlay to the control overlay when the options overlay
is active; and
the forward transition gesture is responded to without
regard to a particular location on the touch sensitive surface
where said gesture is detected.
12. A mobile electronic device comprising:
a touch sensitive display for displaying digital content
and detecting gestures made by a user;
a speaker;
a text-to-speech module; and
a user interface including (a) a reading mode in which the
text-to-speech module converts the displayed digital content
into an audio signal that is aurally presented using the speaker,
and (b) a manual mode in which the playing of the audio signal
generated by the text-to-speech module is paused, wherein:
detection of a transition command gesture
causes the user interface to toggle back-and-forth
between the reading and manual modes,
the user interface is configured to respond to
a content selection gesture that is detected by the
touch sensitive display while the user interface is
in the manual mode by selecting a segment of the
displayed digital content, and
the transition command gesture and the
content selection gesture are responded to without
regard to a particular location on the touch
sensitive display where such gestures are detected.
18. A non-transitory computer readable medium
encoded with instructions that, when executed by at least one
processor, cause a content selection process to be carried out,
the process comprising:
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Application 13/751,940
displaying digital content on a display;
detecting a content selection gesture made on a touch
sensitive surface;
responding to the content selection gesture by selecting a
segment of displayed digital content,
wherein the content selection gesture is responded to
without regard to a particular location on the touch sensitive
surface where said gesture is detected.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Sparks et al. ("Sparks")
Tan et al. ("Tan")
Fleizach
Shetty et al. ("Shetty
'951 ")3
US 2012/0110517 Al
US 2012/0306772 Al
US 8,452,600 B2
US 13/751,951
May 3, 2012
Dec. 6, 2012
May 28, 2013
Jan. 28, 2013
(filing date)
Rejections on Appeal
Rl. Claims 1, 4, 5, and 10-12 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 1, 2, 5, 9-10, 12, and 17 of the Shetty '951
copending application. Final Act. 3.
R2. Claims 1, 3—10, 18, and 20 stand rejected under pre-AIA 35
U.S.C. § 102(e) as being anticipated by Fleizach. Final Act. 6.4
3 Although Shetty '951 applied in OTDP Rejection Rl is not prior art to the
present application, we list it here for completeness of the record, as it is
relied upon in setting forth provisional OTDP Rejection Rl.
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R3. Claims 2 and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Fleizach and Tan. Final Act. 10.
R4. Claims 11, 12, and 14—17 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Fleizach and Sparks. Final
Act. 12.
R5. Claim 13 stands rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Fleizach, Sparks, and Tan. Final Act. 16.
CLAIM GROUPING
We address provisional OTDP Rejection R1 of claims 1, 4, 5,
and 10-12, infra. Based on Appellant's arguments (App. Br. 3—13), we
decide the appeal of anticipation Rejection R2 of claims 1, 3—6, 8—10, 18,
and 20 on the basis of representative claim 18; we decide the appeal of
anticipation Rejection R2 of separately argued claim 7, infra. We decide the
appeal of obviousness Rejection R4 of claims 11, 12, and 14—17 on the basis
of representative claim 12.
Remaining claims 2, 13, and 19 in Rejections R3 and R5, not argued
separately, stand or fall with the respective independent claim from which
they depend.4 5
4 We note, as acknowledged by Appellant (App. Br. 3, n.19), the Examiner
incorrectly lists claim 10 twice and omits claim 20 in Rejection R2. Final
Act. 6.
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1—20,
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, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 7,
12, and 18 for emphasis as follows.
1. OTDP Rejection R1 of Claims E 4, 5, and 10-12
Issue 1
Did the Examiner err in provisionally rejecting claims 1, 4, 5,
and 10-12 over claims 1, 2, 5, 9-10, 12, and 17 of the copending Shetty '951
application?
Analysis
While Appellant does not address provisional OTDP Rejection R1 of
claims 1, 4, 5, and 10-12 in the Appeal Brief,* * 6 we do not reach the merits of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
6 However, during prosecution, Appellant states, "Applicant will reevaluate
these double patenting rejections if the cited claims in the [Shetty '951
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the Examiner's rejection because this issue is not ripe for decision by the
Board. Panels have the flexibility to reach or not reach provisional double­
patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential). Thus, we do not reach a decision on the merits of Rejection
Rl.
2. $ 102(e) Rejection R2 of Claims E 3—10, 18, and 20
Issue 2
Appellant argues (App. Br. 3—6; Reply Br. 2—3) the Examiner's
rejection of claim 18 under 35 U.S.C. § 102(e) as being anticipated by
Fleizach is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses "[a] non-
transitory computer readable medium encoded with instructions that, when
executed by at least one processor, cause a content selection process to be
carried out" that includes, inter alia, the step of "detecting a content
selection gesture made on a touch sensitive surface . . . [that is] is responded
to without regard to a particular location on the touch sensitive surface
where said gesture is detected," as recited in claim 18?
Analysis
Appellant contends "Fleizach discloses an electronic reading device
that provides a visually impaired user with more control over his or her
reading experience" (App. Br. 4), and "[t]his disclosure makes clear that the
Fleizach electronic reading device responds to a detected gesture differently
depending on the location of the detected gesture." App. Br. 5 (citing
application] actually issue" (Reply to Office Action 2) which, based upon
USPTO records, we note is still copending with the present application.
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Fleizach col. 5,11. 37-47 and Fig. 2). Further, "Fleizach expressly discloses
that, for example, to synthesize a particular line of a digital media item, the
user must touch that particular line." Id.
In the Appellant's claimed invention, the content selection
gesture can be responded to—that is, the segment of displayed
content can be selected—without knowing the particular
location where the gesture was detected. But according to the
Fleizach disclosure, the gesture location defines the content
selection. Thus Fleizach cannot be said to disclose a content
selection gesture that is responded to "without regard to" a
particular location on a touch sensitive surface where the
gesture is detected.
App. Br. 6.
"In the patentability context, claims are to be given their broadest
reasonable interpretations .... [Limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.").
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
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Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). Because the
applicant has the opportunity to amend claims during prosecution, giving a
claim its broadest reasonable interpretation will reduce the possibility that
the claim, once issued, will be interpreted more broadly than is justified. In
re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) ("During patent examination the pending claims
must be interpreted as broadly as their terms reasonably allow.").
In response to Appellant's arguments concerning their argued
interpretation of the contested phrase in claim 18, i.e., "without regard to a
particular location on the touch sensitive surface where said gesture is
detected," the Examiner finds the recited phrase can be broadly construed,
and "can be interpreted in multiple ways." Ans. 3.
Appellant's arguments quoted above attempt to distinguish over
Fleizach's disclosure of touching a desired line as cited by the Examiner and
the disputed limitation. See Final Act. 6 (finding "the gestures described in
col. 5 do not seem [to] necessitate input on a particular area of a screen");
Fleizach col. 5,11. 37—39 ("When input from a user manually touching the
desired line is received (208), a line of text in a page of the digital media
item can be read to the user."). "[T]he gestures described in col. 5 [of
Fleizach] do not seem [to] necessitate input on a particular area of a screen."
Final Act. 6.
Furthermore, the Examiner finds, and we agree,
The current claim language does not specify where the
selectable item may or may not be, or that a selectable item is
located on a particular portion of a screen, while the gesture is
made elsewhere. As such, given the current claim language,
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Fleizach teaches the aforementioned limitations, disclosing in
col. 5, lines 33—67 gestures made on the screen to select certain
items; the gestures mentioned and the items corresponding to
the gestures may be made wherever the items resides, e.g.
"without regard to a particular location." The current
application and Fleizach may very well harbor differences,
however, the current claim language does not necessarily define
or highlight those differences.
Ans. 3^4.
We agree with the Examiner because, in Fleizach, responding to a
touch of a line on any portion of the line displayed on a touch sensitive
surface discloses the recited "content selection gesture is responded to
without regard to a particular location on the touch sensitive surface where
said gesture is detected." Claim 18. We find, under a broad but reasonable
interpretation, touching a displayed line on a touch sensitive surface at any
position or location along the line as in Fleizach is made "without regard to a
particular location."7
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the disclosure of the cited
prior art to disclose the disputed limitation of claim 18, nor do we find error
in the Examiner's resulting finding of anticipation. Therefore, we sustain the
7 It appears Appellant's argument is that the claimed content selection
gesture may be a touch detection on any portion of the touch sensitive
surface, instead of "without regard to a particular location." For example,
Appellant argues claim 18 encompasses "the content selection gesture could
be detected anywhere on the touch sensitive surface, and the same segment
of displayed digital content would be selected." Reply Br. 2. Under the
broadest reasonable interpretation standard, we disagree with Appellant's
contentions, and find Fleizach's text line may be touched at any position
along the line, thus disclosing it is touched and recognized "without regard
to a particular location."
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Examiner's anticipation rejection of independent claim 18, and grouped
claims 1, 3—6, 8—10, and 20 which fall therewith. See Claim Grouping,
supra.
3. $ 102(e) Rejection R2 of Claim 7
Issue 3
Appellant argues (App. Br. 7—9; Reply Br. 4) the Examiner's rejection
of claim 7 under 35 U.S.C. § 102(e) as being anticipated by Fleizach is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the device
of claim 1, wherein "the user interface further includes an options overlay in
which a plurality of command options are displayed on a display . . . [and] a
control overlay corresponding to a selected one of the plurality of command
options displayed in the options overlay," as recited in claim 7?8
Analysis
Appellant contends:
The Examiner has taken the position that the claimed
"options overlay" corresponds to the overlay menu with
command options illustrated in Figure IB and described at
4:24—53 of Fleizach. Figure IB of Fleizach is reproduced on the
next page for the Board's convenience. Figure IB illustrates a
menu 110 having options to define a selected word, to invoke a
search of the document text, or to invoke a web search. With
8 Appellant also argues "Fleizach therefore certainly does not disclose
selection of a menu option using a gesture that 'is responded to without
regard to a particular location on the touch sensitive surface where said
gesture is detected,' as Claim 7 requires." App. Br. 8. We are not persuaded
by this argument, which we find represents the same dispositive issue as in
Issue 2, claim 18, supra.
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respect to the claimed "control overlay corresponding to a
selected one of the plurality of command options displayed in
the options overlay", the Examiner simply asserts that "upon
selection of a command related to a particular word,
functionalities are presented, for example, a definition of the
word".
App. Br. 7 (citations omitted). Appellant further argues "the Examiner has
mischaracterized the Fleizach disclosure in this regard. In fact, Fleizach is
completely silent with respect to how the various options illustrated in menu
110 are selected." App. Br. 8.
In response, the Examiner finds, and we agree, Fleizach "discloses the
ability to transition from one mode to another using gestures, including the
display of an overlay of options in column 4, lines 24-53." Ans. 4. The
Examiner further finds the cited portion of Fleizach also "discloses that the
options present different possible functionalities for a user to choose." Id.
We agree with the Examiner because Appellant merely restates the
Examiner's findings, and contends the Examiner has mischaracterized
Fleizach's disclosure without providing any analysis or rebuttal, particularly
rebuttal substantively different from arguments presented with respect to the
contested limitation of claim 18, supra. See n.8.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the disclosure of the cited
prior art to disclose the disputed limitation of claim 7, nor do we find error
in the Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of dependent claim 7.
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4. $ 103(a) Rejection R4 of Claims 11, 12, and 14—17
Issue 4
Appellant argues (App. Br. 9-13; Reply Br. 4) the Examiner's
rejection of claim 12 under 35 U.S.C. § 103(a) as being obvious over the
combination of Fleizach and Sparks is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art teaches or suggests
a mobile electronic device that includes "a user interface including ... a
manual mode in which the playing of the audio signal generated by the text-
to-speech module is paused, wherein," inter alia, "the transition command
gesture and the content selection gesture are responded to without regard to
a particular location on the touch sensitive display where such gestures are
detected," as recited in claim 12? (Emphasis added).
Analysis
Appellant contends, similarly to Issue 2, claim 18, supra,
Claim 12 further specifies that “the user interface is configured
to respond to a content selection gesture that is detected by the
touch sensitive display ... by selecting a segment of the
displayed digital content”. Significantly, this response is made
“without regard to” a particular location on the touch sensitive
display where such gesture is detected.
App. Br. 10 (emphasis omitted).
Based upon Appellant's repeated argument, and for the same reasons
discussed above with respect to the anticipation rejection of claim 18
{Issue 2), we are not persuaded the Examiner erred in rejecting claim 12
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under 35 U.S.C. § 103(a) as being obvious over the combination of Fleizach
and Sparks.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on disclosure of the cited prior
art combination to teach or suggest the disputed limitation of claim 12, nor
do we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 12, and grouped claims 11 and 14—17 which fall therewith. See Claim
Grouping, supra.
5. Rejections R3 and R5 of Claims 2, 13, and 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 and R5 of claims 2, 13, and 19 under § 103
(see App. Br. 9 and 13), we sustain the Examiner's rejection of these claims.
Arguments not made are waived.9
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2—4) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
9 Appellants merely argue "[t]he Examiner has not pointed to any disclosure
in Tan that remedies the shortcomings of [Fleizach and/or Sparks]." App.
Br. 9 and 13.
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CONCLUSIONS
(1) We do not reach the merits of provisional obviousness-type
double patenting Rejection R1 of claims 1, 4, 5, and 10-12, as we find the
issues are not ripe for determination at this time given the current copending
status of the reference Shetty '951 application.
(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1, 3—10, 18, and 20 under 35 U.S.C. § 102(e) over the cited
prior art of record, and we sustain the rejection.
(3) The Examiner did not err with respect to obviousness
Rejections R3 through R5 of claims 2, 11—17, and 19 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner's decision rejecting claims 1—20.
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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