Ex Parte Williamson et al

Patent Trial and Appeal Board

Jun 9, 2017

11961773 (P.T.A.B. Jun. 9, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/961,773 12/20/2007 Richard Williamson 106842108700(P4969US 1) 6871
119082 7590 06/13/2017
Apple c/o MORRISON & FOERSTER LLP SF
425 MARKET STREET
SAN FRANCISCO, CA 94105-2485
EXAMINER
THATCHER, PAUL A
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
06/13/2017 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 RICHARD WILLIAMSON, CHARLES J. PISULA,
GREG CHRISTIE, STEPHEN O. LEMAY, IMRAN CHAUDHRI,
and TIMOTHY P. OMERNICK
Appeal 2014-005076
Application 11/961,773
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
On May 30, 2017, Appellants filed a Request for Rehearing
(hereinafter “Request” or “Req. Reh’g”) under 37 C.F.R. § 41.52 from the
Decision on Appeal (Decision) of the Patent Trial and Appeal Board
(Board), mailed March 28, 2017. In the Decision, we affirmed the
Examiner’s obviousness rejections of claims 2, 3, 7, 10, 11, 13, 15, 21,
28—31, and 33—46.
We deny the Request for Rehearing.
Appeal 2014-005076
Application 11/961,773
In the Request, Appellants argue the Board “misapprehended the
claim term ‘visually rotating’ by overlooking both the language of the claims
and relevant portions of the disclosure.” (Req. Reh’g 2.) Appellants rely on
an interpretation of the claim language that was propounded to the Examiner
during prosecution, and referred to during the oral hearing, but was not
raised in the briefs on appeal — as Appellants concede:
Appellants argued that “visually rotating the item of
inline multimedia content 90° to a landscape orientation of the
touch screen display,” as recited in representative claim 2,
“means displaying on the touch screen display a transition (e.g.,
an animation) that changes the displayed orientation of the item
from a portrait orientation to a landscape orientation of the
touch screen display.” (Response to Non-final Office Action
filed August 10, 2012 at p. 12-13 (bridging paragraph);
Response to Final Office Action filed March 29, 2013, p. 12;
see also Record of Oral Hearing, 4:11—19, 8:18—23, and 10:6—
12.).
(Req. Reh’g 2.) Notably, Appellants’ Request for Rehearing never once
cites to either the Appeal Brief or the Reply Brief.
The Examiner’s Answer even addressed Appellants’ earlier position in
the Answer:
[DJuring the last interview the concept of visually
rotating the video was discussed. It was mentioned by the
Examiner that ‘visual rotating’ was broad enough to include
showing a thumbnail in one orientation and then showing the
video rotated 90 degrees. The Examiner stated that such an
amendment would be covered by the cited prior art. Examiner
did however state that if it was claimed in such a way to show a
animated transition of the rotation including the video image is
some position between 0 and 90 degrees that this might
overcome the cited prior art, but that more examination would
be necessary. In the current amendment Applicant has only
amended the claims to include ‘visual rotating’ and discussed in
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Application 11/961,773
the arguments that this might include animation. Because
Applicant either could not find support for more narrow
amendment to the claims or decided not to do so the Examiner
cannot help but find the amendment and arguments
unpersuasive.
(Ans. 2—3.) Despite such statements in the Examiner’s Answer, Appellants
chose not to directly address the meaning of “visually rotating” in the Reply
Brief to counter the Examiner’s findings and conclusions.
“Arguments not raised, and Evidence not previously relied upon,
pursuant to §§ 41.37 [Appeal Brief], 41.41 [Reply Brief], or 41.47 [Oral
Hearing] are not permitted in the request for rehearing,” except in specific
enumerated circumstances not alleged here (i.e., recent precedent or a new
ground of rejection). 37 C.F.R. § 41.52(a). Moreover, “[a]t the oral hearing,
appellant may only . . . present argument that has been relied upon in the
brief or reply brief,” with an exception for recent precedent not relevant
here. 37 C.F.R. § 41.47(e)(1). Accordingly, because Appellants could have
argued the claim construction of “visually rotating” in its briefs yet chose
not to, Appellants’ argument is deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Even if Appellants’ belated claim construction argument is
considered, like the Examiner, the Board has not been persuaded, and
remains unpersuaded, of Appellants’ claim interpretation:
Under a broad but reasonable interpretation of the claims,
the requirement of visually rotating does not require a rotation
animation effect, as Appellants appear to argue. (See Final Act.
2—3.) “Visually rotating” may exclude merely rotating data in
memory without ever displaying the data, but we are not
persuaded that visually rotating excludes the scenario here of
displaying a thumbnail of a video or image on the monitor
followed by displaying the video in full-screen rotated by 90
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Appeal 2014-005076
Application 11/961,773
degrees. (See also Spec. 1136 (“In some embodiments,
enlarging the item of inline multimedia content comprises
rotating the item of inline multimedia content by 90°.”).)
(Decision 5—6.)
Appellants now argue the Board’s above-quoted interpretation of the
claim language is incorrect because “a thumbnaiF of an item of inline
multimedia content is a “different object[]” from “the video” of that content,
whereas the claims require the rotated item of inline multimedia content to
be the “same” as the originally displayed item. (Req. Reh’g 3.) Both the
language of the claims and the embodiment of the claimed subject matter
disclosed in the Specification contradict this argument. The claims require
the item of inline media content to be “enlarged,” as well as rotated, and
then “played” after being enlarged and rotated. (E.g., Spec, claim 2; App.
Br. 19.) This is consistent with starting with a reduced still image — i.e., a
thumbnail — and ending with an enlarged, rotated video. The disclosed
embodiment elsewhere relied upon by Appellants in support of the claims
(Req. Reh’g 5—6; App. Br. 8) likewise describes this scenario of a reduced
still image and an enlarged, rotated video. (Spec. Figs. 7A—7C, 8, 132—
146.)
Appellants also argue the Board’s interpretation of “visually rotating”
contradicts the plain meaning of the phrase, in that the Board’s interpretation
“merely shows the state of the video rather than the act that achieved that
state. (Req. Reh’g 3—4.) However, we agree with the Examiner that a broad
but reasonable interpretation of the claim language encompasses “the effect
of viewing a webpage in portrait format. . . including a thumbnail and video
link enlarging said thumbnail to full screen mode . . . and showing or playing
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Appeal 2014-005076
Application 11/961,773
the video in a rotated landscape format. . . [and] that some form or sort of
visual rotation has necessarily taken place.” (Ans. 10.)
Appellants argue this interpretation is unreasonably broad because
“when presented with only the display of the thumbnail and the display of
the video as allegedly disclosed by the cited references, one does not know
whether the video was arrived at by rotating. 90 degrees or whether it was
arrived at by rotating in an opposite direction by 270 degrees.” (Req. Reh’g
4.) This argument is not commensurate with the claim language, as there is
no requirement regarding direction of rotation, nor does the specification
describe the mechanism causing the image to be rotated, other than
providing for a “graphics module [that] includes various known software
components for rendering and displaying graphics on the touch screen . . . .”
(Spec. | 56.) Whether the “behind-the-scenes” rotation operation literally
translates the image clockwise or counterclockwise is not relevant insofar as
the scope of the claims is concerned, provided the end result is perceivable
as resulting in the image rotated ninety degrees with respect to its original
position.
Appellants further argue the Specification supports Appellants’ claim
construction because the embodiment described in the Specification only
depicts “rotating the item of inline multimedia content by 90°,” whereas the
claims require “visually rotating the item of inline multimedia content.”
(Req. Reh’g 6.) Appellants read too much into this difference. As is evident
from a review of the prosecution history, Appellants amended the claim to
add the word “visually” in an (unsuccessful) attempt to distinguish the cited
references, and supported that amendment by referring to the same
disclosure in the Specification that Appellants now assert to be different
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Application 11/961,773
from the claimed subject matter. (8/10/12 Amendment, p. 11.) As we
observe in the Decision, this Amendment at most distinguishes merely
rotating data in memory without initially displaying the original un-rotated
image, but it does not support Appellants’ assertion that viewable animation
of the rotation is required. (Decision 5; see a Iso Reply Br. 12.) Indeed,
unlike enlargement (e.g., zooming), there is no disclosure in the
Specification of animated rotation, and the only support for “visually
rotating” is the portion of the Specification discussed above and relied on by
Appellants in the above-cited Amendment, which supports the interpretation
of the Examiner and the Board, not Appellants.
In summary, having fully considered the arguments in the Request, on
this record, we are not persuaded that we have misapprehended or
overlooked any points raised by Appellants. We find none of Appellants’
arguments are persuasive that our Decision was in error. We have
reconsidered our Decision, but decline to grant the relief requested.
DECISION
In view of the foregoing discussion, we have granted Appellants’
Request to the extent that we have reconsidered the original Decision but
have denied it with respect to making any changes to the Decision.
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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