Ex Parte van Os et al

Patent Trial and Appeal Board

Apr 21, 2017

12364470 (P.T.A.B. Apr. 21, 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
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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 04/25/2017
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
04/25/2017 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
PatentDocket @ 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 REMAND
The application on appeal is 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).
BACKGROUND
In a Final Office Action mailed October 19, 2011, the Examiner
finally rejected all pending claims as follows: the Examiner rejected claims
1—3, 5, 6, 8, 9, 11—25, and 31—37 under 35 U.S.C. § 103(a) as being
unpatentable over Hawkins (US 7,231,229 Bl; iss. June 12, 2007), Gillespie
(US 2002/0191029 Al; publ. Dec. 19, 2002), and Krishnan (US 6,278,454
Bl; iss. Aug. 21, 2001) (Final Act. 2—12); and the Examiner rejected claims
Appeal 2013-004862
Application 12/364,470
38-41 under 35 U.S.C. § 103(a) as being unpatentable over Hawkins and
Gillespie. Final Act. 12—16.
Appellants appealed to the Board pursuant to 37 C.F.R. § 41.31(a),
requesting review of all grounds of rejection. We entered a final Decision
(mailed May 21, 2015) (“Decision”) reversing the rejection of claims 1—3, 5,
6, 8, 9, 11—25, and 31—37, and affirming the rejection of claims 38-41. Ex
parte Van Os, Appeal 2013-004862. Appellants appealed to the Federal
Circuit pursuant to 35 U.S.C. §§ 141 and 142, requesting reversal of the
Board’s decision to affirm the rejection of claims 38-41. The Federal
Circuit vacated and remanded the case, and the appeal of claims 38—41 is
now before the Board for further consideration consistent with the Federal
Circuit’s remand.
We reverse the Examiner’s Decision rejecting claims 38-41, and enter
a new ground of rejection.
ANALYSIS
In our prior Decision, we concluded the Examiner did not err in finding
one skilled in the art would have recognized the combination of Hawkins and
Gillespie teaches or suggests the disputed limitation of claim 38. Dec. 7. We
quoted the Examiner, who concluded:
[i]t would have been obvious to one of ordinary skill in the art
at the time that the invention was made to combine the teachings of
Hawkins of initiating a mode for reconfiguring the positions of
icons displayed on a touch-sensitive display by dragging the icons
to a new position with the teachings of Gillespie of visually
indicating to a user on a display when a predefined user interface
reconfiguration mode has been entered into by the user by
sustaining a touch on the user interface. One of ordinary skill in the
art would have recognized that Gillespie's technique of entering a
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user interface reconfiguration mode in response to a user sustaining
a touch in proximity to an icon displayed on the touchscreen would
be an intuitive way for users of Hawkins' device to enter into the
editing mode in which they could rearrange the icons
corresponding to applications on the interface.
In its opinion, the Federal Circuit stated that neither the Board nor the
Examiner “provided any reasoning or analysis to support finding a
motivation to add Gillespie’s disclosure to Hawkins beyond stating it would
have been an ‘intuitive way’ to initiate Hawkins’ editing mode.” In re Van
Os, Appeal 2015-1975 (Fed. Cir. Jan. 3, 2017) (Order at 5). The Federal
Circuit stated that the Board “did not explain why modifying Hawkins with
the specific disclosure in Gillespie would have been ‘intuitive’ or otherwise
identify a motivation to combine.” Id.
In light of the Federal Circuit’s opinion, we do not sustain the
Examiner’s rejection of claims 38-41.
NEW GROUND OF REJECTION
37 C.F.R. § 41.50(b)
We make the following new ground of rejection using our authority
under 37 C.F.R. §41.50(b).
Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hawkins and Gillespie.
We adopt as our own the findings set forth by the Examiner in the
Grounds of Rejection concerning the teachings of Gillespie and Hawkins of
the steps of claim 38. Final Act. 12—14.
An explicit teaching, suggestion, or motivation in the references is not
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necessary to support a conclusion of obviousness. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415-16 (2007); In re Ethicon, Appeal 2015-1696 (Fed.
Cir. Jan. 3, 2017) (Order). The Supreme Court has instructed that “a court
must ask whether the improvement is more than the predictable use of prior
art elements according to their established functions” (KSR, 550 U.S. at
417), and apply “an expansive and flexible approach” to obviousness (id. at
415).
Hawkins teaches the limitations of claim 38, including interpreting a
user input “as an input initiating an interface reconfiguration mode,”
(Hawkins, Fig. 13, 17:25—63 (“Screen 1300 may be activated, for example,
by selecting an ‘Edit Favorites Pages’ command from an onscreen menu”)
(emphasis added); 13:54—56, Fig. 7, Fig. 13), but Hawkins does not
explicitly teach a “second, longer, user touch.” Gillespie, entitled “Touch
Screen with User Interface Enhancement,” teaches a second, longer user
touch. In particular, Gillespie teaches icons being “touched in a special way
instead of by an overall touch screen activation state.” Gillespie 171.
Gillespie explicitly teaches “holding the finger steady over an icon for a
given duration,” which triggers an action. Id.
One of ordinary skill in the art would have been motivated to combine
Hawkins and Gillespie to have Hawkins’ user interface icon reconfiguration
mode (e.g., its “Edit Favorites” functionality) being initiated by a longer user
touch because Gillespie, directed to user interface enhancement, also, like
Hawkins, explicitly teaches moving and rearranging user interface icons
(“[e]xisting icons could also be moved or rearranged”) (Gillespie 161).
Therefore, it would have been obvious to the ordinarily-skilled artisan at the
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time of the invention to combine Hawkins’s disclosure of an interface
reconfiguration mode (Hawkins 17:44-54) with Gillespie’s teachings of a
user touch of a longer duration (see Gillespie 171) because Gillespie is also
directed to user icons and a user interface reconfiguration process (see id. 1
61). Because both references are directed to enhancing features of user
interfaces, the ordinarily-skilled artisan would have reasonably used
Gillespie’s longer touch for an icon, even if Hawkins does not explicitly
teach a second, longer touch to activate its user reconfiguration mode. See
Hawkins, 1:24—26; Gillespie 1 58. Moreover, such a combination is an
obvious predictable variation of known elements. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416. “If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. at 417. The use of Gillespie’s second, longer
touch is a simple substitution for Hawkins’s teaching of a user input. We
note that it was well known to those of skill in the art to enter an edit mode,
for example to change a time setting of a digital watch, by using a well-
known sustained hold on a button/input of a digital watch. The ordinarily-
skilled artisan, being “a person of ordinary creativity, not an automaton,”
would be able to fit the teachings of Hawkins and Gillespie together like
pieces of a puzzle to predictably result in an interface wherein icons are
reconfigured with a user's input of a longer touch. Id. at 420—21. Because
Appellants have not demonstrated that the proposed combination would
have been “uniquely challenging or difficult for one of ordinary skill in the
art,” the proposed modification would have been well within the purview of
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the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
We leave the patentability determination of claims 39-41 to the
Examiner. See Manual of Patent Examining Procedure § 1213.02 (9th ed.
Rev. 07. 2015, Nov. 2015).
DECISION
We reverse the rejection of claims 38-41.
We enter a new ground of rejection of claim 38 pursuant to 37 C.F.R.
§ 41.50(b) (2010). This section provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
TIME PERIOD
37 C.F.R. § 41.50(b) also provides that the Appellants, 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).
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REVERSED: 37 C.F.R. 41.500?)
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