Ex Parte Ording et al

Patent Trial and Appeal Board

Feb 16, 2018

12565757 (P.T.A.B. Feb. 16, 2018)

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.
12/565,757 09/24/2009 Bas Ording P7567US8/77770000172108 1133
150004 7590 02/21/2018
DENTONS US LLP - Apple
P.O. Box 061080
Wacker Drive Station, Willis Tower
Chicago, IL 60606
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
patents.us@dentons.com
dentons_PAIR @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAS ORDING, KENNETH L. KOCIENDA,
BRADFORD ALLEN MOORE, MARCEL VAN OS,
RICHARD WILLIAMSON, STEPHEN O. LEMAY, and
SCOTT FORSTALL
Appeal 2016-007394
Application 12/565,757
Technology Center 2100
Before IRVIN E. BRANCH, JOHN F. HORVATH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants request rehearing of our Decision on Appeal entered
March 22, 2017 (“Decision”), in which we affirmed the Examiner’s
rejection of claims 1 and 10—30, all the claims pending in the application.
We have reviewed the Request for Rehearing (“Request” or “Req.
Reh’g”) in view of our Decision. For the reasons discussed below, we grant
Appeal 2016-007394
Application 12/565,757
Appellants’ request, reverse the Examiner’s rejection, and enter a new
ground of rejection.
CONTENTIONS AND ANALYSIS
In the Request, Appellants contend, inter alia, we overlooked that
“the rejection does not rely on Ording for most claim elements.” Req. Reh’g
2. Upon rehearing, we find this argument persuasive. Specifically, the
rejection is unclear with respect to the factual basis upon which several
elements are rejected.
The Examiner rejected claims 1 and 10-30 as unpatentable under
35 U.S.C. § 103(a) over Keely ’270 (US 2002/0097270 Al, published July
25, 2002)1 and Ording (WO 2008/030879, published Mar. 13, 2008). Final
Act. 4—8. The factual record does not state explicitly that, for example,
“detecting continuous movement of the finger contact on the touch screen
display, without breaking finger contact on the touch screen display, from
the selected first box of content to a location outside the selected first box of
content” stands rejected over the combination of Keely ’270 and Ording,
rather than Keely ’270 alone. See id. So although we agree with the
Examiner’s conclusion that claims 1 and 10—30 are unpatentable, the factual
basis supporting the Examiner’s conclusion requires clarification. See In re
Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). We therefore reverse the
Examiner’s rejection on this basis and enter a new ground of rejection.
1 The Examiner and Appellants previously referred to this reference as
“Keely.” Because our new ground of rejection adds a second “Keely”
reference, we now refer to the published application as Keely ’270.
2
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Application 12/565,757
NEW GROUND OF REJECTION
We reject claims 1 and 10—30 as obvious under 35 U.S.C. § 103(a)
over the combination of Keely ’270, Keely ’5512 (US 6,891,551 B2, issued
May 10, 2005), and Ording. Our rejection adopts the Examiner’s rejection
of claims 1 and 10-30, except as supplemented herein, maintaining all
references to “Keely” in the Examiner’s rejection to Keely ’270, as intended
by the Examiner. We include Keely ’551 because the figures in the issued
patent are in final form and better illustrate the subject matter. In particular,
Figures 6A and 6B of Keely ’551 correct the placement of the selection box
601. Because the teachings of Keely ’551 and Keely ’270 are otherwise
substantially identical, the Examiner’s references to “Keely” throughout the
record are applicable to both.
Claim 1 reads as follows:
1. A method, comprising:
at a multifunction device with a touch screen display:
displaying at least a portion of a structured electronic
document on the touch screen display, wherein the structured
electronic document comprises a plurality of boxes of content;
detecting a finger gesture on a first box of content in the
plurality of boxes of content;
in response to detecting the finger gesture on the first box
of content in the plurality of boxes of content:
selecting the first box of content for copying; and
visually distinguishing the selected first box of
content from content on the touch screen display that is not
selected for copying;
detecting a finger contact on the selected first box of
content;
detecting continuous movement of the finger contact on the
touch screen display, without breaking finger contact on the
2 Keely ’551 is the issued patent from the same application as the published
application Keely ’270.
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Application 12/565,757
touch screen display, from the selected first box of content to a
location outside the selected first box of content;
detecting lift off of the finger contact at the location outside
the selected first box of content; and
selecting one or more additional boxes of content in the
plurality of boxes of content for copying in accordance with the
location of the finger contact outside the first box of content.
We adopt the Examiner’s rejection of claim 1 (Final Act. 4—8)
supplemented by these additional findings:
Ording discloses a multifunction device with a touch screen display
that displays a structured electronic document having a plurality of boxes of
content. Ording Abstract (“displaying at least a portion of a structured
electronic document on the touch screen display, wherein the structured
electronic document comprises a plurality of boxes of content”). Ording
further discloses selecting one of the boxes of content via a touch, and
manipulating the box of content (e.g., by enlarging or centering it) via a
gesture. Ording || 7—8.
Keely ’551 also discloses a multifunction device with a touch screen
display that displays a document having boxes of content. Keely ’551, col.
4,1. 61-col. 5,1. 21. col. 9,1. 62-col. 10,1. 28, Figs. 7A, 7B, 8A, 8B, and
8C. Keely ’551 ’s display of a plurality of “graphical image objects”
correspond to the claimed display of “a plurality of boxes of content.”3 See
3 Although not relied on in our rejection, we note that both Keely ’551 and
Keely ’270 also disclose triple clicking to select an entire paragraph, then
resizing the selection area. See, e.g., Keely ’270 1 57. To the extent the
process described in paragraph 57 does not specify the selection of
additional paragraphs in paragraph increments, the Examiner might consider
this disclosure in combination with well-known features of, for example,
Microsoft Word®.
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Spec. 1369 (indicating a grouping of “content” in a document object model
tree can include an “image.”).
Keely ’551 discloses (see col. 9,1. 62—col. 10,1. 28, Figs. 7A, 7B, 8A,
8B, and 8C):
detecting a finger gesture on a first box of content in the
plurality of boxes of content; [“[t]he user may select an image by
tapping it”]
in response to detecting the finger gesture on the first box
of content in the plurality of boxes of content:
selecting the first box of content for copying [“an
image selection area 701 may appear, surrounding the
selected image object”]; and
visually distinguishing the selected first box of
content from content on the touch screen display that is not
selected for copying; [Fig. 8A, distinguishing selection of
left side image from right side image; see also col. 5,11. 22—
40 (“The body 301 of the selection area may be of any
shape . . . The body 301 may have an appearance that is
distinguishable from non-selected portions and/or items in
the electronic document to distinguish selected portions
from non-selected portions.”)]
detecting a finger contact on the selected first box of
content; [“As a user resizes the selection area 701, the computer
may determine what objects are surrounded or encountered by
the selection area 701 . . .”; see also col. 5, 11. 46-48 (“[f]or
selecting text, the dragging of a selection handle 302 may
increase or decrease portions of the current selection body 301”)]
detecting continuous movement of the finger contact on the
touch screen display, without breaking finger contact on the
touch screen display, from the selected first box of content to a
location outside the selected first box of content; [“The image
selection area may include selection handles 702 that operate in
a similar fashion as the text selection discussed above”; “As a
user resizes the selection area 701, the computer may determine
what objects are surrounded or encountered by the selection area
701. . .”; Fig. 8B; see also col. 5,11. 46-48 (“[f]or selecting text,
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Application 12/565,757
the dragging of a selection handle 302 may increase or decrease
portions of the current selection body 301”)]
detecting lift off of the finger contact at the location outside
the selected first box of content [“the user may cease resizing as
shown in FIG. 8b, and the computer device may automatically
resize the area 801 to encompass the object that was encountered
by the user’s resized area, as shown in FIG. 8c”; Fig. 8C]; and
selecting one or more additional boxes of content in the
plurality of boxes of content for copying in accordance with the
location of the finger contact outside the first box of content [“As
a user resizes the selection area 701, the computer may determine
what objects are surrounded or encountered by the selection area
701, and may add these objects to the selection area”; “the user
may cease resizing as shown in FIG. 8b, and the computer device
may automatically resize the area 801 to encompass the object
that was encountered by the user’s resized area, as shown in FIG.
8c”; Figs. 8B and 8C].
A person having ordinary skill in the art would have found it obvious
to incorporate Keely’s (Keely ’551 or Keely ’270) process for selecting
boxes of content in electronic documents displayed on a touch screen device
into Ording’s multifunction touch screen device, which operates on
structured electronic documents having boxes of content. Keely and Ording
both disclose using gestures to select images on a touch screen device.
Keely teaches using a continuous gesture to select an image (box of content)
in an electronic document, and to expand the selection to include additional
images (additional boxes of content) in the electronic document, but doesn’t
expressly disclose that the electronic document is a structured electronic
document. Ording teaches using a gesture to select and manipulate (e.g.,
center or resize) an image in a structured electronic document. It would
have been obvious to a person of ordinary skill in the art at the time of the
invention to modify Ording based on teachings of Keely to provide a user
with greater flexibility and control when manipulating images in a structured
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Application 12/565,757
electronic document. For example, doing so would have allowed the user to
select a plurality of adjacent images in the document (as taught by Keely),
and to center or resize the images (as taught by Ording) as a group rather
than individually. This would have achieved Ording’s stated goal of
providing a more transparent and intuitive user interface, e.g., by providing
an interface that allowed a user to “quickly and efficiently make and/or
adjust desired selections of portions of electronic documents,” as taught by
Keely. Ording | 5; Keely ’51, col. 2,11. 30—33.
Moreover, a person having ordinary skill in the art would have known
that the selection handles described in Keely are there solely as a visual aid
to assist the user in delineating the selected box of content. Keely discloses
additional ways of delineating the selected box of content such as by
highlighting it with a predefined color. Keely, col. 5,11. 22-40. A person of
ordinary skill in the art would have known that the selected box of content
could have been expanded simply by dragging across the selected box of
content rather than by dragging selection handles delineating the selected
box of content, and would have found it advantageous to do so because it
avoids the expense of having to create and display the selection handles. For
example, Ording teaches using a dragging/swiping gesture to move an
unlock image from a locked position to an unlocked position to unlock a
multifunction device. Ording || 83—84. It would have been obvious to a
person of ordinary skill in the art to use a dragging/swiping gesture directly
on a selected box of content (as taught by Ording) in order to select
additional boxes of content (as taught by Keely) to provide a more
transparent and intuitive user interface that would allow a user to “quickly
and efficiently make and/or adjust desired selections of portions of
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Application 12/565,757
electronic documents,” as taught by Keely. Ording | 5; Keely ’51, col. 2,11.
30-33.
Furthermore, because all elements of claim 1 have been shown to
preexist Appellants’ invention, they would have been familiar to a person
having ordinary skill in the art. Accordingly, because we see no reason
combining these familiar elements would have resulted in an unpredictable
result, claim 1 is obvious for this additional reason. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” (quoting KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007))).
Accordingly, claim 1 is unpatentable over the combination of Keely
’551, Keely ’270, and Ording.
For claims 10-30, we adopt the Examiner’s findings and conclusion
(Final Act. 6—8) as supplemented herein.
In view of the foregoing, claims 1 and 10-30 are obvious under
35 U.S.C. § 103(a) over the combination of Keely ’270, Keely ’551, and
Ording.
DECISION
The request for rehearing is granted.
Claims 1 and 10-30 are unpatentable.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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Application 12/565,757
Section 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
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).
GRANTED
37 C.F.R, $ 41.50(b)
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