Ex Parte Leonard et al

Patent Trial and Appeal Board

Sep 13, 2018

13224258 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/224,258
142810 7590
Newport IP, LLC
1400 112th Ave SE
Suite 100
Bellevue, WA 98004
FILING DATE FIRST NAMED INVENTOR
09/01/2011 Chantal M. Leonard
09/17/2018
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.
MS2-0076US 9054
EXAMINER
PARKER, JEANETTE J
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
09/17/2018 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):
eofficeaction@appcoll.com
scott@newportip.com
docketing@newportip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANTAL M. LEONARD, HOLGER KUEHNLE,
JOHN C. WHYTOCK, REBECCA DEUTSCH, and
PA TRICE L. MINER
Appeal2018-000196
Application 13/224,258
Technology Center 2100
Before BRUCE R. WINSOR, AMBER L. HAGY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Microsoft Technology
Licensing, LLC. (Br. 3.)
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Application 13/224,258
STATEMENT OF THE CASE
Introduction
According to Appellants, the application "describes techniques and
apparatuses for arranging tiles" in a graphical user interface. (Abs.) Further
according to Appellants, "[ t ]hese techniques and apparatuses enable users to
quickly and easily arrange tiles within an interface, such as an application-
launching interface. In some cases, users may arrange tiles in an interface
with as little as one continuous gesture." (Id.)
Exemplary Claim
Claims 1, 10, and 20 are independent. Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A computer-implemented method comprising:
receiving selection of a selected tile of multiple tiles
displayed in a first view in a user interface, the selection
moving the selected tile from a current location among the
multiple tiles to a region of the user interface;
responsive to selection, zooming out from the first view
to a second view, the second view including multiple other tiles
not displayed in the first view;
receiving selection moving the selected tile to a new
location in the second view;
zooming into the new location, the zooming in presenting
a third view, the third view including the new location and one
or more of the multiple other tiles; and
placing the selected tile at the new location.
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Application 13/224,258
CONTENTIONS
The present application has an effective filing date of September 1,
2011. The Examiner rejects all pending claims ( claims 1-20) based, at least
in part, on Caliendo, Jr. et al., US 2012/0311485 Al, published on December
6, 2012, and filed on May 31, 2011 ("Caliendo"). (See Final Act. 10-33 .)
On January 16, 2015, Appellants filed a declaration under 37 C.F.R.
§ 1.131 of named inventor Holger Kuehnle ( the "Kuehnle Declaration")
attempting to antedate Caliendo's filing date and overcome the Examiner's
rejections. (See Final Act. 3.) Appellants assert the Kuehnle Declaration and
its accompanying Exhibits A and B demonstrate that "Caliendo is ineligible
as a reference because proof of reduction to practice of the claimed invention
has been established prior to the effective date of Caliendo." (Br. 13.) The
Kuehnle Declaration states that Exhibit A, which contains a series of undated
still images, shows images "from a demonstration of a prototype of the
invention." (Kuehnle Deel. p. 2.) The Kuehnle Declaration further states
that "Exhibit Bis an email sent by Holger Kuehnle on November 3, 2010
including an internal hyperlink to the invention prototype of which still
images are shown in Exhibit A." (Id.) The Kuehnle Declaration does not
contain any substantive discussion of any claim limitations, but states: "The
still images show operation of a functional prototype that demonstrates
subject matter recited in independent claims 1, 10, and 20 of the subject
application." (Id.)
The Examiner finds the Kuehnle Declaration is ineffective to
demonstrate conception or actual reduction to practice of the claimed
invention and, thus, does not overcome the Examiner's rejections. (See Final
Act. 4--5.) In particular, the Examiner finds the still images shown in Exhibit
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Application 13/224,258
A to the Kuehnle Declaration "do not show the limitation 'responsive to
selection, zooming out from the first view to a second view; receiving
selection moving the selected tile to a new location in the second view;
zooming into the new location, the zooming in presenting a third view, the
third view including the new location' as claimed." (Id. at 5.) The Examiner
further finds:
(Id.)
Page 2 of Exhibit A may arguably show "zooming out",
however, there is no indication in Exhibit A that "zooming out"
was done in "responsive to selection" and exhibit A does not
show "zooming into a new location" as claimed. Furthermore,
there is no indication that the screen shots were from a single
operation.
ISSUE
The sole issue presented by Appellants' arguments on appeal is
whether the Examiner erred in finding that Appellants' proffered Rule 131
declaration and supporting documents are insufficient to overcome the
Examiner's finding that Caliendo is prior art to Appellants' application.
ANALYSIS
Whether Caliendo is prior art to the claims before us under 35 U.S.C.
§ 102( e) depends on whether the effective filing date of the Caliendo
application (May 31, 2011) pre-dates the invention of the claims of the
present application. See 35 U.S.C. § 102(e)(2)2: "A person shall be entitled
2 Section 3 (b) of the Leahy-Smith America Invents Act altered the § 102
conditions for patentability; novelty. Pub. L. No. 112-29, 125 Stat. 284,
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Application 13/224,258
to a patent unless ... ( e) the invention was described in ... (2) a patent
granted on an application for patent by another filed in the United States
before the invention by the applicant for patent" ( emphasis added).
To remove Caliendo as a prior art reference, Appellants must produce
evidence showing either ( 1) a conception and reduction to practice before the
filing date of Caliendo; or (2) a conception before the filing date of the
Caliendo patent combined with reasonably continuous diligence up to
reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler
Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013); see also Peifect Surgical
Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004, 1008 (Fed. Cir.
2016). Under either approach, Appellants must produce evidence showing
that the inventor's conception occurred prior to May 31, 2011 (the effective
date of the Caliendo reference). See Taurus, 726 F.3d at 1323.
We conclude that Appellants have not come forward with sufficient
evidence of alleged prior invention to remove Caliendo as a prior art
reference. In particular, as the Examiner finds, and we agree, Appellants'
evidence does not show that Mr. Kuehnle conceived and reduced to practice
every element of the invention recited in the claims by the critical date of
May 31, 2011. (Final Act. 4--5; Ans. 4--8.) Mr. Kuehnle does not provide a
claim chart or an element-by-element discussion of any claim of the present
application as compared to his evidence of alleged corroboration, but instead
provides only a conclusory statement that the still images attached to his
declaration as Exhibit A "show operation of a functional prototype that
demonstrates subject matter recited in independent claims 1, 10, and 20 of
285-287 (2011). Because the present application has a filing date before
March 16, 2013 (effective date), we refer to the pre-AIA § 102(e) herein.
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Application 13/224,258
the subject application." (Kuehnle Deel. p. 2.) In making such a conclusory
statement, the Kuehnle Declaration does not adequately explain what facts
or data Appellants are relying upon from the images to show a completion of
every element of their invention, as claimed. Appellants' arguments in the
brief that the static images of Exhibit A "clearly show" the claimed zooming
operations are simply that-arguments. (See Br. 14.)
As the Examiner finds, and we agree, the still images of Exhibit A,
which each show a finger pointing to a computer screen displaying tiles of
different sizes (see Kuehnle Deel. Exh. A), do not establish, inter alia,
"zooming" being performed "responsive to selection," as claimed. (Final
Act. 5; Ans. 4--5, 7.) Rather, at most, the Kuehnle Declaration and
accompanying exhibits provide evidence that a prototype existed that was
"capable of producing screen shots of icons." (Ans. at 7.) The Kuehnle
Declaration itself provides no testimony about the content of the images
other than a conclusory statement that the images "show operation of a
functional prototype that demonstrates subject matter recited" in the
independent claims.
Absent a clear explanation pointing out exactly what facts are
established in the images of Exhibit A, and how those facts are tied to the
claim limitations, the Kuehnle Declaration is of little assistance in enabling
us to judge whether there was an actual reduction to practice or even a
conception of the basic invention, as claimed. Rule 131 requires "not a
statement that facts exist" but an "oath to facts showing a completion of the
invention" and "[ t ]he showing of facts shall be such, in character and
weight, as to establish reduction to practice, etc." In re Harry, 333 F.2d 920,
922 (CCPA 1964)(intemal quotations omitted); see also In re Borokowski,
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505 F .2d 713, 718 ( CCP A 197 4) ("The affidavits for the most part consist of
vague and general statements in the broadest terms as to what the exhibits
show along with the assertion that the exhibits describe a reduction to
practice. This amounts essentially to mere pleading, unsupported by proof
or showing of facts.").
The Examiner also finds the Kuehnle Declaration lacks evidence of
diligence. (Final Act. 6-7.) Because Appellants assert actual reduction to
practice, however, that issue is not before us.
The record before us supports the Examiner's finding that Appellants
have not provided sufficient evidence to satisfy the requirements of 37
C.F .R. § 1.131 (b) with respect to independent claims 1, 10, and 20.
Because, on this record, Appellants cannot antedate the Caliendo reference,
and do not make any additional arguments, we, therefore, sustain the
Examiner's rejections of independent claims 1, 10, and 20, as well as the
Examiner's rejections of the dependent claims, which are not argued
separately.
DECISION
The Examiner's rejections of claims 1-20 are affirmed.
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).
AFFIRMED
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