Ex Parte Zadesky et al

Patent Trial and Appeal Board

Mar 15, 2017

11882004 (P.T.A.B. Mar. 15, 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.
11/882,004 07/30/2007 Stephen Paul Zadesky 106842005303
(P2759USC3)
2119
67673 7590 03/17/2017
APPT F cln MORRTSON V FOFRSTFR T T P NOVA
EXAMINER
1650 TYSONS BLVD. AMADIZ, RODNEY
SUITE 300
MCLEAN, VA 22102 ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN PAUL ZADESKY and TANG YEW TAN
Appeal 2016-006271
Application 11/882,0041
Technology Center 2600
Before ROBERT E. NAPPI, LARRY J. HUME, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1—7, 9-27, 29-36, and 38, which are all of the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Apple Inc. as the real party in interest. App. Br. 2.
Appeal 2016-006271
Application 11/882,004
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to a
media player having a touch pad with scrolling features. Spec. 14.2
Claim 1 is representative and reproduced below (with the disputed
limitation emphasized)'.
1. A handheld electronic device, comprising:
an input arrangement disposed in the handheld electronic
device, the input arrangement comprising a first input
mechanism that detects a direction and speed associated with
an input and a second input mechanism comprising multiple
buttons that generate different inputs at different locations of
the second input mechanism,
a display that displays a list of media items, wherein
input comprising 360 degrees of rotational motion using the
first input mechanism translates to continuous linear movement
through the list of media items on the display, and
an electromechanical device that provides an
electromechanical feedback signal in response to a detected
speed of the input,
wherein the linear movement through the list of media
items on the display is accelerated by increasing the speed of
the input.
App. Br. 11 (Claims App’x).
2 Our Decision refers to the Non-Final Office Action mailed June 10, 2015
(“Non-Final Act.”); Appellants’ Appeal Brief filed Dec. 11, 2015 (“App.
Br.”) and Reply Brief filed June 6, 2016 (“Reply Br.”); the Examiner’s
Answer mailed May 25, 2016 (“Ans.”); and, the original Specification filed
July 30, 2007 (“Spec.”).
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Application 11/882,004
Rejections on Appeal
Claims 35, 36, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gerpheide (US 2002/0000978 Al; published Jan. 3,
2002), Anderson (US 6,683,649 Bl; issued Jan. 27, 2004), Rosenberg et al.
(US 2001/0035854 Al; published Nov. 1, 2001) (“Rosenberg”), and
Hinckley et al. (US 2003/0043174 Al; published Mar. 6, 2003)
(“Hinckley”).
Claims 1—7, 9—27, and 29-34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wood et al. (US 6,810,271 Bl; issued Oct. 26,
2004) (“Wood”), Anderson, Gerpheide, Rosenberg, and Hinckley.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs and are not persuaded the Examiner erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Non-
Final Act. 4—19) and in the Examiner’s Answer (Ans. 2-4), and we concur
with the conclusions reached by the Examiner. For emphasis, we consider
and highlight specific arguments as presented in the Briefs.
Rejection of Claims 1—7, 9—27, 29—36, and 38 under § 103(a)3
Appellants contend the cited references fail to teach or suggest “a first
input mechanism that detects a direction and speed associated with an
input,” as recited in claim 1, and as similarly “found, either expressly or via
3 We decide the rejection of claims 1—7, 9-27, 29—36, and 38, which are
rejected under the second-stated ground of rejection, on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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dependency, in each of the rejected claims 1—7, 9-27, 29-36, and 38.” App.
Br. 4—6; see also fn. 1, p. 4. In particular, Appellants argue Rosenberg,
which is cited and relied on by the Examiner, contains “a single mention of
the ‘velocity’ of a user’s finger” (citing Rosenberg 155) and fails to teach or
suggest “detecting the direction of an input.” Id. at 5. In response to the
Examiner’s citation of paragraphs 25, 33, and 34 in the Answer, Appellants
argue these paragraphs fail to teach or suggest a device that detects a
direction and speed associated with an input.’” Reply Br. 2. Appellants also
argue Rosenberg does not teach or imply that detecting input direction or
speed will increase “the realism of tactile sensations and create [s] a more
compelling interaction,” as the Examiner finds. App. Br. 5 (citing Non-Final
Act. 7, 10, 17, 18). Thus, according to Appellants, the Examiner’s finding
that a person of ordinary skill in the art “would have been motivated to
combine Rosenberg’s alleged ‘direction and speed’ teaching with the other
references ‘in order to increase the realism of tactile sensations and create a
more compelling interaction’ is both incorrect and misleading.” Id. at 5—6.
Thus, Appellants’ contend the Examiner fails to identify a motivation to
combine the references. Reply Br. 2—3. Appellants further argue the
Examiner’s proposed combination of Wood’s alphanumeric input device
with Anderson’s device displaying a list of media items “in order to
view/hear and scroll through media content” is based on impermissible
hindsight, and “[t]he suggestion to ‘view/hear and scroll through media
content’ on Wood’s alphanumeric input device, as proposed by the
Examiner, is found in none of the cited references.” App. Br. 9—10.
We are not persuaded by Appellants’ arguments the Examiner erred.
First, we agree with the Examiner’s finding that Rosenberg teaches or
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suggests “a first input mechanism that detects a direction and speed
associated with an input,” as recited in claim 1. See Ans. 2—3 (citing
Rosenberg || 25, 33, 34). We agree with Appellants’ argument the teaching
of paragraph 55 of Rosenberg that an output vibration may depend “upon the
current velocity of the user’s finger ... on the touchpad” does not teach this
limitation. However, the Examiner finds, and we agree, paragraph 25 of
Rosenberg teaches “speed” associated with an input (“the speed of the
fingertip on the touchpad correlates to the distance that the cursor is
moved”). The Examiner also finds, and we agree, paragraphs 33 and 34
teach a “direction” associated with an input. In that regard, paragraph 34
explains “[t]he user can control the direction of the cursor by moving a
finger ... on the touchpad.” These portions of Rosenberg also suggest the
mechanism “detects” a direction and speed associated with the inputs
because the system produces a response to each of them — the directional
input controlling the direction of the cursor, and the speed input correlating
to the distance the cursor is moved. See Rosenberg || 25, 33, 34.
Second, we are not persuaded by Appellants’ arguments the Examiner
has not provided proper motivation to combine Rosenberg with the other
references. See App. Br. 5—6; Reply Br. 2—3. The Supreme Court has
rejected the rigid requirement of demonstrating a teaching, suggestion, or
motivation in the references to show obviousness. See KSR Int'l Co., v.
Teleflex Co., 550 U.S. 398, 419 (2007). As our reviewing court recently
held:
KSR directs that an explicit teaching, suggestion, or motivation
in the references is not necessary to support a conclusion of
obviousness. 550 U.S. at 415—16. 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
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their established functions,” id. at 417, and apply “an expansive
and flexible approach” to obviousness, id. at 415.
In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017).
In regard to combining Rosenberg with Wood, Anderson, and
Gerpheide, the Examiner finds:
At the time the invention was made, it would have been obvious
to a person of ordinary skill in the art to include the capability to
detect a direction and speed associated with an input and an
electromechanical device that provides an electromechanical
feedback signal in response to a detected speed of the input, as
taught by Rosenberg, in the handheld device taught by Wood, as
modified by Anderson and Gerpheide, in order to increase the
realism of tactile sensations and create a more compelling
interaction.
Non-Final Act. 10 (citing Rosenberg 152).
In the Answer, the Examiner explains the “motivational statement
found in Rosenberg was used in the Office Action mainly for supporting the
inclusion of electromechanical feedback signals” and finds “[t]he inclusion
of electromechanical feedback signals (based on the input direction and
input seed of an object) help[s] to increase realism of tactile sensations to
create a more compelling interaction.” Ans. 3. Thus, we discern the
Examiner finds the feedback or results based on input direction and speed, as
taught by Rosenberg — controlling the direction of the cursor, and
correlating the distance the cursor is moved — also create an improved
interaction. Accordingly, we find the rejection is supported by “some
articulated reasoning with some rational underpinning” to combine known
elements in the manner required by the claim. See KSR, 550 U.S. at 418.
We also find the combination of Rosenberg’s teaching or suggestion of a
mechanism “that detects a direction and speed associated with an input” with
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Wood and the other references is merely a combination of known elements
that would yield no more than predictable results. See KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Third, we are not persuaded by Appellants’ argument the combination
of Wood’s alphanumeric input device with Anderson’s device displaying a
list of media items is based on impermissible hindsight. See App. Br. 9—10.
The Examiner finds “[a]t the time the invention was made, it would have
been obvious to a person of ordinary skill in the art to use the teachings of
Anderson, that is, to display a list of media items, in the handheld electronic
device taught by Wood, in order to view/hear and scroll through media
content.” Non-Final Act. 8—9. Appellants’ argument “[t]he suggestion to
‘view/hear and scroll through media content’ on Wood’s alphanumeric input
device, as proposed by the Examiner, is found in none of the references,” is
unconvincing because, as previously set forth, “KSR directs that an explicit
teaching, suggestion, or motivation in the references is not necessary to
support a conclusion of obviousness.” Ethicon, 844 F.3d at 1350. We
further find the combination of Anderson’s device displaying a list of media
items with Wood’s device is merely “the predictable use of prior art
elements according to their established functions.” See KSR, 550 U.S.
at 417. Appellants have not demonstrated the Examiner’s proffered
combination of references would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
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check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For the aforementioned reasons, and based upon a preponderance of
the evidence, we are not persuaded the Examiner erred in (1) finding
Rosenberg teaches or suggests the limitation “detects a direction and speed
associated with an input” and (2) concluding that the combination of Wood,
Anderson, Gerpheide, Rosenberg, and Hinckley renders the subject matter of
claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s rejections of independent claims 1, 19, and 27, as well as
dependent claims 2—7, 9—18, 20-26, and 29—34, which variously depend
therefrom and are not argued separately.
Rejection of Claims 35, 36, and 38 under § 103(a)
As noted by Appellants, independent claim 35 recites a handheld
electronic device that “stores applications and media files,” and independent
claim 36, as well as dependent claim 38, recite a “handheld media player.”
App. Br. 7. Appellants argue the rejection of claims 35, 36, and 38 is based
on impermissible hindsight. App. Br. 7—9; Reply Br. 3—A.
Appellants argue the primary reference, Gerpheide, teaches an
alphanumeric input device, and the secondary reference, Anderson, teaches a
multimedia presentation device, and the Examiner fails “to identify any
reason why a skilled person would seek to ‘view/hear and scroll through
media content’ on Gerpheide’s input device. App. Br. 7. In response to the
Examiner’s finding in the Answer (see page 4) that the combination is
proper because Anderson ‘“adds functionality’ to the overall device of
Gerpheide/Wood by allowing a user to view/hear media content on a mobile
telephone,” Appellants argue “the suggestion to add Anderson’s
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functionality to the devices of Gerpheide and Wood conies only from
[Appellants’] application, not from the prior art.” Reply Br. 3. Appellants
further argue a suggestion to transform Gerpheide’s simple device into “a
‘media player,’ ... is found in none of the cited references.” App. Br. 8;
Reply Br. 3^4.
We are not persuaded by Appellants’ arguments the Examiner erred.
First, as the Examiner finds,
it must be recognized that any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight
reasoning. [However,] so long as it takes into account only
knowledge which was within the level of ordinary skill at the
time the claimed invention was made, and does not include
knowledge gleaned only from the [Appellant’s] disclosure, such
a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392,
[1395] (CCPA 1971).
Ans. 4.
Here, we conclude the Examiner did not use impermissible hindsight
because the rejection is based on the references and what they would have
taught or suggested to a person of ordinary skill in the art. As the Examiner
finds:
Both primary references Gerpheide and Wood are mobile
telephones. Anderson, the secondary reference, is a small
handheld device. These references are analogous in that they are
all small handheld devices that scroll through lists. Both primary
references fail to teach storing “media files” and scrolling
through “media items” rendered on a display. The secondary
reference, Anderson, however, teaches storing and displaying
media files and scrolling through a list of media files. Therefore,
Anderson, adds functionality to the overall device of
Gerpheide/Wood by allowing a user to view/hear media content
on a mobile telephone.
Ans. 4.
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Second, as discussed supra regarding claim 1, Appellants’ argument
that “[a] suggestion to transform Gerpheide’s simple alphanumeric input
device into a ‘media player’ ... is found in none of the cited references”
(App. Br. 8) is unconvincing because “KSR directs that an explicit teaching,
suggestion, or motivation in the references is not necessary to support a
conclusion of obviousness.” Ethicon, 844 F.3d at 1350.
Third, the Supreme Court guides: 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. The skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420-21. This principle is
applicable here because combining Anderson’s teaching of displaying media
files and scrolling through a list of media files with Gerpheide’s mobile
device would produce the predictable result identified by the Examiner of
“allowing a user to view/hear media content on a mobile telephone.” Ans. 4.
Thus, for these reasons, we find the Examiner did not err in
combining Gerpheide and Anderson in the rejection of claims 35, 36, and 38
and, therefore, we sustain the Examiner’s rejection of claims 35, 36, and 38.
DECISION
We affirm the Examiner’s rejections of claims 1—7, 9-27, 29-36, and
38 under 35 U.S.C. § 103(a).
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). See 37
C.F.R. §41.50(f).
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AFFIRMED
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