Ex Parte Lemay et al

Patent Trial and Appeal Board

Mar 26, 2018

11969902 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111969,902 01/06/2008
69753 7590 03/28/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Steve Lemay
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.
106842053100 (P6047US1) 1938
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE LEMAY, TIM OMERNICK,
and RICHARD WILLIAMSON
Appeal2017-000723
Application 11/969 ,902
Technology Center 2100
Before MAHSHID D. SAADAT, CARLL. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-8, 15-20, 28-33, and 37--44, which are all the claims pending in
this application. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 An oral hearing was held for this appeal on March 21, 2018.
2 According to Appellants, the real party in interest is Apple, Inc. App.
Br. 1.
3 Claims 9-14, 21-27, and 34--36 have been canceled.
Appeal2017-000723
Application 11/969,902
STATEMENT OF THE CASE
Appellants' invention relates to creating an icon associated with
content on a mobile device. See Spec. i-f 4. Claim 1 is illustrative of the
invention and reads as follows:
1. A method comprising:
displaying content in a first user interface of an
application on a mobile device;
receiving an indication to create an icon associated with
the content;
in response to receiving the indication to create the icon:
rendering at least a portion of the content into the
icon;
ceasing display of the first user interface of the
application; and
displaying the icon on a second user interface of
the mobile device, wherein the icon is selectable to
display the application, and the second user interface is
not a user interface of the application.
Claims 1, 5-7, 15, 19, 20, 28, 32, 33, and 37--43 stand rejected under
35 U.S.C. § 102(e) as anticipated by Vartiainen (US 2008/0301555 Al; Dec.
4, 2008). See Final Act. 2-5.
Claims 2, 16, 29, and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vartiainen and Spriestersbach (EP 1327929 Al; Jan. 11,
2002). See Final Act. 5---6.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Vartiainen, Hintermeister (US 2006/0171515 Al; Aug. 3, 2006). See Final
Act. 6.
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Appeal2017-000723
Application 11/969,902
Claims 17, 18, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vartiainen, Spriestersbach, and Nielson (US 5,963,964;
Oct. 5, 1999). See Final Act. 7.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vartiainen and Nielson. See Final Act. 7-8.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are persuaded by Appellants'
contentions that the Examiner erred.
With respect to claim 1, we specifically agree with Appellants (App.
Br. 6-7; Reply Br. 2-3) that the Examiner erred in finding Vartiainen
discloses "displaying the icon on a second user interface of the mobile
device, wherein ... the second user interface is not a user interface of the
application." Appellants argue the cited portions of Vartiainen in
paragraphs 6, 17, and 21 merely disclose providing animated browser
thumbnails in the browser that replace the browser bookmarks, whereas the
claim requires displaying in a non-browser user interface. App. Br. 7-8.
Appellants further contend mapping the claimed "second user interface" to
Vartiainen's physical display is inconsistent with the Examiner's mapping of
the claimed "first user interface" to Vartiainen's content displayed by the
physical display. App. Br. 11-12.
In response, the Examiner has not pointed to any portion of Vartiainen
for specifically disclosing the disputed feature, and instead, merely stated:
The specification does not define "the second user interface"
and the claim just reads: "the second user interface which is not
a user interface of the application". Thus any user interface
which is "not a user interface of the application" can be a
second user interface. In addition, the appellant does not say
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Appeal2017-000723
Application 11/969,902
what exactly the "second interface" of the instant application.
It appears the second user interface is the home screen where
the created icon 554 [Apple News] has been displayed. The
specification of the instant application discloses a touch
sensitive display 502 in figure 5 which appears to be home
screen.
Ans. 3--4. We disagree with the Examiner's findings and conclusion. First,
as shown in Figure 2, Vartiainen discloses the animated thumbnails are
presented within the browser user interface on the display 32 of the
electronic device. See Vartiainen, Abstract, i-fi-f 19-21. Second, as asserted
by Appellants (App. Br. 13, Reply Br. 3), Vartiainen's display of the icon on
a second user interface does not occur after ceasing display of the first user
interface because the thumbnails all represent web page bookmarks that are
shown in the browser. Therefore, we agree with Appellants (Reply Br. 2)
that the Examiner's anticipation rejection is based on misinterpretation of
Vartiainen's display 32 as the recited "second user interface" where the
created icon associated with the content is displayed.
Accordingly, we do not sustain the 35 U.S.C. § 102(e) rejection of
claim 1, independent claims 15, and 28, and the claims 5-7, 19, 20, 32, 33,
and 37--43 dependent therefrom, as anticipated by Vartiainen. Similarly,
because the Examiner has not identified any teachings in Spriestersbach,
Hintermeister, or Nielson to make up for the deficiencies of Vartiainen, we
do not sustain the 35 U.S.C. § 103(a) rejection of claims 2--4, 8, 16-18, 29-
31, and 44 over the combination of Vartiainen with Spriestersbach,
Hintermeister, or Nielson.
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Appeal2017-000723
Application 11/969,902
DECISION
We reverse the decision of the Examiner to reject claims 1-8, 15-20,
28-33, and 37--44.
REVERSED
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