Ex Parte van Os et al

Patent Trial and Appeal Board

Sep 6, 2017

12364470 (P.T.A.B. Sep. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/364,470 02/02/2009 Marcel van Os 106842083501 (P3939USC1) 4065
119082 7590 09/08/2017
Apple c/o MORRISON & FOERSTER LLP SF
425 MARKET STREET
SAN FRANCISCO, CA 94105-2485
EXAMINER
TILLERY, RASHAWN N
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
09/08/2017 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):
EOfficeSF @mofo.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL VAN OS, FREDDY ALLEN ANZURES, SCOTT
FORSTALL, GREG CHRISTIE, and IMRAN CHAUDHRI
Appeal 2013-004862
Application 12/364,470
Technology Center 2100
Before JEAN R. HOMERE, DANIEL N. FISHMAN, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing under 37 C.F.R. 47.52(a)(1) (“Request”)
for reconsideration of our Decision on Appeal mailed April 25, 2017
(“Decision”). The application on appeal was before the Board on remand
from the U.S. Court of Appeals for the Federal Circuit. In re Van Os,
Appeal 2015-1975 (Fed. Cir. Jan. 3, 2017) (Order). Our Decision
responsive to the remand reversed the rejections of 38-41 and entered a New
Ground of Rejection of claim 38 over the same art previously applied by the
Examiner. We reconsider our decision in light of Appellants’ Request for
Rehearing, but we decline to change the decision.
Appellants contend the new ground of rejection is insufficient to show
claim 38 is obvious. Request 1. More particularly, Appellants argue as
Appeal 2013-004862
Application 12/364,470
follows:
Argument I: The Board overlooked that the combination of
Hawkins et al. (US 7,231,229 Bl; iss. June 12, 2007) and Gillespie et
al. (US 2002/0191029 Al; pub. Dec. 19, 2002) fails to disclose a
second user touch. Request. 5—8, 10.
Argument II: The Board did not provide sufficient rationale for
why a person of ordinary skill in the art would modify Hawkins and
Gillespie to arrive at claim 38. Request 8—12.
ANALYSIS
Argument I
Appellants contend that the combination of Hawkins and Gillespie
fails to disclose the “second user touch” of claim 38. Request. 5—8, 10.
Appellants acknowledge that Hawkins discloses a second user touch.
Request 7. Appellants also acknowledge that Gillespie teaches a touch that
holds steady on an icon. Id. Appellants argue that the combination of
Gillespie and Hawkins, however, fails to teach a touch “is on an application
icon” or that “it is an input that initiates an interface reconfiguration mode.”
Id. at 8.
First, Appellants overlook that in our Decision, we relied upon
Hawkins, and not Gillespie alone, as teaching input initiating an interface
reconfiguration mode. Decision 4. We found that Hawkins teaches
interpreting user input as an input initiating a user interface reconfiguration
mode, and “Gillespie explicitly teaches ‘holding the finger steady over an icon
for a given duration,’ which triggers an action.” Decision 4.
Regarding the second touch “on an application icon” argument,
Appellants argue that the Decision “seems to overlook” that Hawkins’ touch
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Appeal 2013-004862
Application 12/364,470
is not a touch “on an application icon.” Request 7. However, Appellants,
for the first time, raise this new argument that “claim 38’s ‘second user
touch’ is an zmknown element not disclosed in Hawkins or Gillespie because
the second user touch must be on an application icon.” Request 10
(emphasis in original). In addition to the fact that this “on an application
icon” argument is a new argument, which Appellants have never before
raised to the Board even given earlier opportunities, the language that the
second user touch “be on an application icon” does not appear in claim 38.
Instead, claim 38 merely recites “detecting a second user touch . . . “at a
location proximate a second icon of the plurality of icons.” Therefore,
Appellants raise new arguments regarding limitations not recited in claim
38. Accordingly, Appellants have not persuaded us of error in our finding
that the combination of references teaches the “second user touch” recited in
claim 38.
Argument II
Appellants contend that our Decision erred in failing to provide
rationale for why a person of ordinary skill in the art would modify Hawkins
and Gillespie. Request 8—12. We are not persuaded that we failed to
provide a rationale as to why a person of ordinary skill in the art would
modify Hawkins and Gillespie. Rather, the Decision specifically addressed
the motivation for combining Hawkins and Gillespie. Decision 3—6.
Appellants repeat their argument about a limitation not in the claim, i.e., that
the second user touch must be “on” an application icon (request 10-11),
which we have addressed above. Accordingly, Appellants have not
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Appeal 2013-004862
Application 12/364,470
persuaded us of error in our finding that the combination of references
teaches the elements recited in claim 38.
CONCLUSION
We have reconsidered our Decision of April 25, 2017 in light of
Appellants’ comments in the Request, and we have granted Appellants’
Request for Rehearing to the extent that we have reviewed our Decision and
considered the arguments made in the Request. We are not persuaded of
errors in our previous Decision. Therefore, we deny the Request for
Rehearing in that we decline to make any changes in the Decision.
DECISION
The Request for Rehearing is denied.
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).
REHEARING DENIED
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