Ex Parte Patterson et al

Patent Trial and Appeal Board

Mar 20, 2017

14043015 (P.T.A.B. Mar. 20, 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.
14/043,015 10/01/2013 James Patterson 24207-24515/US 9938
62296 7590
Google/Fenwick
SILICON VALLEY CENTER
801 CALIFORNIA ST.
MOUNTAIN VIEW, CA 94041
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
ptoc @ fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GOOGLE INC.1
Appeal 2017-000461
Application 14/043,015
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 James Patterson, Nathan Moody, and Scott Dougall are named inventors.
Appeal 2017-000461
Application 14/043,015
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. A device, comprising:
a display; and
an input recognition subsystem, operably connected to the
display, configured to:
identify a point on the display based on a position
of an object relative to the display as the object becomes
proximate to the display;
initiate a menu-creation animation in response to
the object becoming proximate to the display; and
provide a contextual menu in response to the object
remaining at substantially the position until the menu-
creation animation completes, the contextual menu
including a plurality of options, creation of the contextual
menu being cancelled in response to the object ceasing to
remain at substantially the position before the menu-
creation animation completes.
REJECTIONS
The Examiner made the following rejections:
Claims 1—3, 5—9, 11—15, and 17—19 stand rejected under the
judicially-created doctrine of non-statutory obviousness-type double
patenting over claims 1—3, 5—9, 11—15, and 17—19 of US 8,543,941 B2.
(Final Act. 2-4).
Claims 1, 3—13, and 15—18 stand rejected under 35U.S.C. § 112,
second paragraph, as being indefinite (id. at 4).
Claims 1—3, 7—9, and 13—15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hoellwarth (US 2011/0167350 Al; published
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Application 14/043,015
July 7, 2011) and Gourdol (US 6,493,006 Bl; issued Dec. 10, 2002). (Final
Act. 5—8).
Claims 5, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoellwarth, Gourdol, and Iwema (US 7,058,902 B2;
issued June 6, 2006). (Final Act. 8—9).
Claims 4, 6, 10, 12, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hoellwarth, Gourdol, Iwema, and
Sakamoto (US 2012/0096383 Al; published Apr. 19, 2012). (Final Act. 9—
12).
ISSUES
Issue la: Did the Examiner err in finding claims 1, 3—13, and 15—18
indefinite based on those claims’ recitations of “proximate?”
Issue lb: Did the Examiner err in finding claims 1, 3—13, and 15—18
indefinite based on those claims’ recitations of “substantially?”
Issue lc: Did the Examiner err in finding claims 4, 10, and 16
indefinite based on those claims’ recitations of “gradually?”
Issue 2: Did the Examiner err in finding Hoellwarth teaches
initiate a menu-creation animation in response to the
object becoming proximate to the display; and
provide a contextual menu in response to the object
remaining at substantially the position until the menu-creation
animation completes, the contextual menu including a plurality
of options, creation of the contextual menu being cancelled in
response to the object ceasing to remain at substantially the
position before the menu-creation animation completes,
as recited in claim 1 ?
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Application 14/043,015
ANALYSIS
Indefiniteness of Claims 1, 3—13, and 15—18
Issue la
Independent claims 1,7, and 13 recite “the object becoming
proximate to the display.” The Examiner finds that the recitation of
“proximate” is indefinite because the degree of proximity required by the
claim is unclear, i.e., the object “could be 1 foot away or actually touching
the display.” (Ans. 12; see also Final Act. 4). The Examiner further finds
the “Specification does not define a distance” at which the object would be
“proximate” to the display. (Ans. 12).
Appellant argues that the “[Specification describes various
embodiments where user gestures are used for [touchscreen] input” and
“[o]ne of skill in the art would understand the scope of the term ‘proximate’”
in the context of touchscreens (App. Br. 8—9 (citing Spec. ^fl[ 39, 42, 63—65,
75, 77); Reply Br. 3-^).
Appellant fails to persuade us that the Examiner’s indefmiteness
rejection is not well-grounded, i.e., the degree of proximity required by the
claim is not vague. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)
(“[W]hen the USPTO has . . . issued a well-grounded rejection [identifying]
ways in which language in a claim is ambiguous, vague, incoherent, opaque,
or otherwise unclear in describing and defining the claimed invention, and
thereafter the applicant fails to provide a satisfactory response, the USPTO
can properly reject the claim” as indefinite.). “[H]ow much clarity is
required necessarily invokes some standard of reasonable precision in the
use of language in the context of the circumstances.” Id. at 1313. Here, we
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Application 14/043,015
find the Examiner made a well-grounded rejection, identifying “proximate”
as being ambiguous as to the distance from the display. (Ans. 12).
We further find Appellant did not provide a satisfactory response to
show that “proximate,” as recited, is as reasonably precise as permitted
under the circumstances. In particular, we note Appellant’s Specification
does not use the term “proximate.” While Appellant argues that “some
[touchscreens] require physical contact and some [touchscreens] detect
objects within a certain proximity” (App. Br. 8), Appellant does not provide
any evidence to support this assertion and the Specification does not
describe a touchscreen detecting objects “within a certain proximity.”
Indeed, the examples Appellant cites in the Specification are directed to
physical contact on the touchscreen and not objects within a certain
proximity (Spec. H 39 (“finger or stylus gestures on a touch screen”), 42
(“gestures on a touch screen”), 63—65 (describing certain predefined
gestures); see also id. H 75 (“a user presses and holds on a portion of the
screen”), 77 (“the user may select by tapping on the” screen)).2
Appellant has not adequately explained how the cited portions of the
Specification show “proximate” as recited is as reasonably precise as
permitted under the circumstances. We find that “nothing in the record
suggests what degree of’ proximity “is sufficient” for the object to
“becom[e] proximate to the display,” as recited by the claims. See
Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1254, 1255
(Fed. Cir. 2008) (“We note that the patent drafter is in the best position to
2 In the event of further prosecution, we suggest the Examiner review
whether detection of “the object becoming proximate to the display” is
adequately enabled by the Specification as required by 35 U.S.C. § 112, first
paragraph.
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Application 14/043,015
resolve the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate circumstances
so that the patent can be amended during prosecution rather than attempting
to resolve the ambiguity in litigation.”). Thus, we agree with the Examiner
that the term “proximate” as recited in the claims at issue is not sufficiently
definite. As the Board has previously held, “[t]he USPTO, as the sole
agency vested with the authority to grant exclusionary rights to inventors for
patentable inventions, has a duty to guard the public against patents of
ambiguous and vague scope,” and acts reasonably when it requires an
applicant to “amend the claims during prosecution to more clearly and
precisely define the metes and bounds of the claimed invention and to more
clearly and precisely put the public on notice of the scope of the patent.” Ex
Parte Miyazaki, Appeal No. 2007-3300, 2008 WL 5105055, at *6 (BPAI
Nov. 19, 2008) (precedential). Therefore, we sustain the Examiner’s 35
U.S.C. § 112, second paragraph indefmiteness rejection of independent
claims 1, 7, and 13 and respective dependent claims 3—6, 8—12, and 15—18.3
Issue lb
Independent claims 1, 7, and 13 recite “the object remaining at
substantially the position.” The Examiner finds that the recitation of
“substantially” is indefinite because it is unclear how far the object can
move from the position, i.e., a “large distance or a small distance,” but still
remain substantially at that position (Ans. 12; see Final Act. 4). Appellant
3 In the event of further prosecution, we suggest the Examiner review
dependent claims 2 and 14 for being indefinite based on the ambiguity in
their respective independent claims as discussed above.
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argues “one of skill in the art would understand the scope of the term”
“substantially” in the context of touchscreens describes “a degree of
tolerance ... to account for the imperfections of human input.” (App. Br.
10).
We are persuaded by Appellant’s arguments. The Specification
describes “a user presses and holds on a portion of the screen” (Spec. 175),
and we agree that “the user’s hand may shake to some extent even though
the user intends to keep pressing in one place” (App. Br. 10). That is, an
object remains substantially in the same position within the small movement
imperfections associated with human touch. Therefore, we do not sustain
the indefiniteness rejection under 35 U.S.C. § 112, second paragraph, on the
basis of the term “substantially.”
Issue lc
Dependent claims 4, 10, and 16 recite “a circle being gradually drawn
around [a] point on the display.” The Examiner finds that the recitation of
“gradually” is indefinite. (Final Act. 4). Appellant argues the Specification
“provides a specific example where the circle takes approximately 500
milliseconds to complete,” i.e., is gradually drawn. (App. Br. 11 (citing
Spec. 175)).
We are persuaded by Appellant’s argument. The Specification
describes a circle drawn “gradually,” i.e., over short duration of measurable
time, 500 milliseconds. Accordingly, the term “gradually” is sufficiently
clear. Therefore, we do not sustain the indefmiteness rejection under 35
U.S.C. § 112, second paragraph, on the basis of the term “gradually.”
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Obviousness of Claims 1—18
Issue 2
Appellant contends the Examiner erred in finding Hoellwarth teaches
initiate a menu-creation animation in response to the
object becoming proximate to the display; and
provide a contextual menu in response to the object
remaining at substantially the position until the menu-creation
animation completes, the contextual menu including a plurality
of options, creation of the contextual menu being cancelled in
response to the object ceasing to remain at substantially the
position before the menu-creation animation completes,
as recited in claim 1. (App. Br. 11—13; Reply Br. 2—3). Specifically,
Appellant argues “Hoellwarth discloses that pressing on and holding a word
for a preset time will invoke a command to display information . . . after the
user has pressed and held the word for [a] preset period of time,” but
“Hoellwarth fails to disclose displaying anything during the press and hold
(i.e., before the predetermined time period is reached).” (App. Br. 12—13;
Reply Br. 3). Appellant further argues an animation is not a static image
(Reply Br. 2)
We are not persuaded.4 The Examiner finds (Final Act. 5), and we
agree, Hoellwarth teaches a touchscreen system in which a user “presses and
holds on word 604 [on the touchscreen] for a preset time period” and, after
the preset time period, an animation is presented (Hoellwarth | 63). The
Examiner further finds, and we agree, Hoellwarth cancels the creation of the
4 We note that, although we sustain the Examiner’s indefmiteness rejection,
we need not speculate as to the scope of Appellant’s claims to address the
arguments raised in Appellant’s brief regarding the Examiner’s obviousness
rejections. Cf. In re Steele, 305 F.2d 859, 862—63 (CCPA 1962).
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Appeal 2017-000461
Application 14/043,015
animation if the input gesture is not pressed and held for a predetermined
time. (Final Act. 5, 13 (citing Hoellwarth || 57, 63); Ans. 13—14).
Appellant’s arguments are not commensurate with the scope of the
claim. In particular, the claim does not exclude Hoellwarth’s press and hold
process from the recited initiation of the animation creation and does not
require animation during the press and hold operation. Hoellwarth’s user
initiates the animation creation, as required by the claims, by pressing the
display, starting Hoellwarth’s preset timer (Hoellwarth | 63). The animation
creation process continues and is ultimately completed when Hoellwarth’s
user holds the press for a preset time period, causing the animation to appear
and run; correspondingly, the animation creation is cancelled, i.e., the
animation does not appear, when Hoellwarth’s user does not hold the press
for a preset time period. (Id.).
Furthermore, Appellant’s arguments directed to Hoellwarth’s images
(Reply Br. 2) do not address the Examiner’s reliance on Hoellwarth’s
animations (Final Act. 5 (citing Hoellwarth | 63)). Accordingly, we are not
persuaded the Examiner erred in finding the combination of Hoellwarth and
Gourdol teaches
initiate a menu-creation animation in response to the
object becoming proximate to the display; and
provide a contextual menu in response to the object
remaining at substantially the position until the menu-creation
animation completes, the contextual menu including a plurality
of options, creation of the contextual menu being cancelled in
response to the object ceasing to remain at substantially the
position before the menu-creation animation completes,
within the meaning of claim 1.
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Application 14/043,015
Remaining Claims 2—18
Appellant does not argue separate patentability for dependent claims
2—7, which depend directly or indirectly from claim 1. (See App. Br. 11—
13). For the reasons set forth above, therefore, we are not persuaded the
Examiner erred in rejecting these claims. Additionally, Appellant has not
provided arguments directed to the Examiner’s rejection of independent
claims 7 and 13 and respective dependent claims 8—12 and 14—18 (see App.
Br. 11—13) and we summarily sustain those rejections. Accordingly, we
sustain the Examiner’s decision to reject claims 2—18. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Double Patenting of Claims 1—3, 5—9, 11—15, and 17—19
In their Reply Brief, Appellant states it is submitting a terminal
disclaimer to overcome the double patenting rejection (Reply Br. 4) of
claims 1—3, 5—9, 11—15, and 17—19. However, the Examiner has not yet had
the opportunity to review the terminal disclaimer. Furthermore, Appellant
has not addressed the merits of the double patenting rejection. (See Reply
Br. 4; see also App. Br. 2—14). Therefore, we leave it to the Examiner to
review the terminal disclaimer, and we sustain the double patenting rejection
of claims 1—3, 5—9, 11—15, and 17—19.
DECISION
The Examiner’s rejection of claims 1—3, 5—9, 11—15, and 17—19 under
the judicially-created doctrine of nonstatutory obviousness-type double
patenting over claims 1—3, 5—9, 11—15, and 17—19 of US 8,543,941 B2 is
affirmed.
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Application 14/043,015
The Examiner’s rejection of claims 1, 3—13, and 15—18 under
35 U.S.C. § 112, second paragraph, as being indefinite is affirmed.
The Examiner’s rejection of claims 1—3, 7—9, and 13—15 under
35 U.S.C. § 103(a) as being unpatentable over Hoellwarth and Gourdol is
affirmed.
The Examiner’s rejection of claims 5, 11, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Hoellwarth, Gourdol, and Iwema is
affirmed.
The Examiner’s rejection of claims 4, 6, 10, 12, 16, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Hoellwarth, Gourdol, Iwema,
and Sakamoto is 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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