Google Inc.

Patent Trials and Appeals Board

Aug 12, 2020

2019005364 (P.T.A.B. Aug. 12, 2020)

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.
14/528,743 10/30/2014 Isaac Sterling VanDuyn 098981-4092 2989
10575 7590 08/12/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
CHUANG, JUNG-MU T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
08/12/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ISAAC STERLING VanDUYN1
________________

Appeal 2019-005364
Application 14/528,743
Technology Center 2100
________________

Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant initially appealed under 35 U.S.C. § 134(a) from the five
grounds of the Examiner’s final rejection of claims 1, 2, and 4–22. Appeal
Br. 7. The Examiner subsequently withdrew three of the five rejections.
Examiner’s Answer mailed May 5, 2019 (“Ans.”), 3–4. Appellant maintains
the appeal of the remaining two rejections of claims 1, 2, and 4–22. Reply
Brief filed July 2, 2019 (“Reply Br.”), 4–5.
We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were
held on August 6, 2020. The transcript will be added to the record in due
course. We affirm.

1 Appellant identifies Google LLC as the real party in interest. Appeal Brief
filed February 11, 2019 (“Appeal Br.”), 2.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A computer-implemented method for providing
dynamically scrolling content within a vertically scrolling online
publication is implemented by a content serving computing
device in communication with a memory. The method includes
retrieving a dynamically scrolling content item, receiving a set of
display information related to a user computing device, and
serving the dynamically scrolling content item within a slot of a
vertically scrolling online publication presented at the user
computing device, wherein the dynamically scrolling content
item is served based partially on the set of display information,
wherein the dynamically scrolling content item is configured to
scroll horizontally in response to a first haptic input received by
a user of the user computing device.
Abstract.
Independent claim 1 illustrates the appealed claims:
1. A computer-implemented method for providing
dynamically scrolling content within a vertically scrolling online
publication implemented by a content serving computing device
in communication with a memory, the method comprising:
retrieving a first dynamically scrolling content item;
receiving a set of display information related to a user
computing device;
serving the dynamically scrolling content item and a
vertically scrolling online publication to the user computing
device, wherein the vertically scrolling online publication
comprises a content element and a slot having a fixed location,
wherein the dynamically scrolling content item is served based
partially on the set of display information; and
based at least on detecting a first haptic input in a first,
vertical direction:
start scrolling, in response to the first haptic input in
the first, vertical direction, the content element of the
vertically scrolling online publication in a first scroll
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direction consisting of the first, vertical direction at a first
rate proportional to the first haptic input; and
simultaneously scrolling, in response to the first
haptic input in the first, vertical direction, the dynamically
scrolling content item in a second, horizontal direction at
a second rate proportional to the first haptic input and into
the slot of the vertically scrolling online publication for
presentation at the user computing device.

REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Hinckley US 2003/0043174 A1 Mar. 06, 2003
Wong US 2006/0242603 A1 Oct. 26, 2006
Ashkenazi US 2008/0220747 A1 Sept. 11, 2008
Epstein US 2009/0049406 A1 Feb. 19, 2009
Lin-Hendel US 2010/0281421 A1 Nov. 04, 2010

STATEMENT OF THE REJECTIONS
Claims 1, 2, 4, 6–11, 13–18, and 20–22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ashkenazi, Lin-Hendel, Wong, and
Hinckley. Final Act. 17–25.
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ashkenazi, Lin-Hendel, Wong, Hinckley, and Epstein.
Final Act. 25–27.

STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
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light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

DETERMINATIONS AND CONTENTIONS
The Examiner finds, “Ashkenazi[,] as modified by Lin-Hendel and
Wong[,] teaches scrolling content and banner ads vertically and horizontally
in synchronization (simultaneously scrolling in both directions in response to
a haptic input) as a first vertical scrolling rate and a second horizontal
scrolling rate,” as claimed. Ans. 7. The Examiner finds the combination of
Ashkenazi, Lin-Hendel, and Wong does not expressly teach that the first and
second scrolling rates are proportional to the first haptic input. Id. at 7–8.
The Examiner finds that Hinckley teaches scrolling at a rate that is
proportional to the haptic input. Id. at 8 (citing Hinckley ¶¶ 69–79, 89–91);
Final Act. 24. The Examiner determines that one of ordinary skill would
have been motivated to combine Hinckley’s teachings with the Ashkenazi,
Lin-Handel, and Wong in order to control the scrolling rate based on the
user haptic input, as taught by Hinckley. Final Act. 24.
In its principal Brief, Appellant first summarizes the Examiner’s
rejection: “[t]he Office Action concedes that the combination of Ashkenazi,
Lin-Hendel, and Wong does not teach or suggest ‘that the first vertical
scrolling rate and the second horizontal scrolling rate proportional to the first
haptic input.’” Appeal Br. 16 (citing Final Action 23). Appellant further
notes, “[t]he Office Action asserts that above subject matter of independent
claim 1 is discussed in Hinckley’s [paragraphs] 69–79 and 89–91 and
claims 7 and 8.” Id. (citing Final Action 24).
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Appellant asserts,
The claims [d]o not merely recite that “the first vertical scrolling
rate and the second horizontal scrolling rate are proportional to
the first haptic input,” as asserted by the Office Action. Rather[,]
independent claim 1 recites to “start scrolling . . . in a first scroll
direction consisting of the first, vertical direction at a first rate
proportional to the first haptic input; and simultaneously
scrolling, in response to the first haptic input in the first, vertical
direction, the dynamically scrolling content item in a second,
horizontal direction at a second rate proportional to the first
haptic input.”
Appeal Br. 16.
Appellant argues that Hinckley fails to cure the deficiencies of the
combination that are noted in the rejection. Id. According to Appellant,
Hinckley discusses a scrolling system for the “scrolling of a
document. The cited portion of Hinckley states that “a variable
rate of scrolling [can be] based on various factors[,] such as
finger speed, finger pressure/contact area, length of hold, number
of taps, and/or frequency of taps.” However, Hinckley merely
suggests scrolling the document in the same direction as a haptic
input. Irrespective of whether scroll rates can be variable,
Hinckley clearly fails to teach or suggest scrolling the content
item in a second, horizontal direction, which is different than the
direction of the first haptic input, at a second rate proportional to
the first haptic input in the first direction[,] as recited by
independent claim 1.
Id. at 16–17 (citing Hinckley ¶¶ 2, 70).
In its Reply Brief, Appellant newly argues for the first time,
[t]he combination of Ashkenazi, Lin-Hendel, Wong, or Hinckley
fails to teach or suggest “scrolling. . . the content element of the
vertically scrolling online publication in a first scroll direction
consisting of the first, vertical direction. . . and simultaneously
scrolling. . . the dynamically scrolling content item in a second,
horizontal direction.”
Reply Br. 5; see also id. at 5–9 (for supporting arguments).
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Appellant also newly argues,
[t]he combination of Ashkenazi, Lin-Hendel, Wong, and
Hinckley also fails to teach or suggest “scrolling . . . the content
element of the vertically scrolling online publication in a first
scroll direction consisting of the first, vertical direction . . . and
simultaneously scrolling . . . the dynamically scrolling content
item in a second, horizontal direction” because combining Wong
with Ashkenazi, Lin-Hendel, and/or Hinckley would
impermissibly frustrate Wong’s purpose, and therefore there is
no suggestion or motivation to modify the cited art in the manner
suggested by the Examiner.
Reply Br. 9–10; see also id. at 10 (for supporting arguments).
Appellant also newly argues, “even assuming arguendo that any of
the cited the combination references, individually, teach the foregoing
features of claim 1, the Examiner exercised impermissible hindsight in
combining these references by concluding, without argument, that the
alleged teachings of the prior art cited are prima facie sufficient.” Reply
Br. 11; see also id. at 10–12 (arguing that the Examiner’s stated motivation
for combining Hinckley with the other three references is improperly
circular, and more generally arguing why the motivation to combine is based
on impermissible hindsight).

ANALYSIS
We note, as a threshold matter, “it is inappropriate for appellants to
discuss in their reply brief matters not raised in . . . the principal brief[ ].
Reply briefs are to be used to reply to matter[s] raised in the brief of the
appellee.” Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed.
Cir. 1986). “Considering an argument advanced for the first time in a reply
brief . . . is not only unfair to an appellee but also entails the risk of an
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improvident or ill-advised opinion on the legal issues tendered.” McBride v.
Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986)
(internal citations omitted).
There are cogent reasons for not permitting an appellant to raise
issues or arguments in a reply brief. Among them are the
unfairness to the appellee who does not have an opportunity to
respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief “would be unfair
to the court itself, which without the benefit of a response from
appellee to an appellant’s late-blooming argument, would run the
risk ‘of an improvident or ill-advised opinion, given [the court’s]
dependence . . . on the adversarial process for sharpening the
issues for decision.’” Headrick [v. Rockwell Int’l Corp.], 24 F.3d
[1272,] 1278 [(10th Cir. 1994)], (quoting Herbert v. Nat’l
Academy of Sciences, 974 F.2d 192, 196 (D.C. Cir. 1992)).
Carbino v. West, 168 F.3d 32, 34–35 (Fed. Cir. 1999).
We, therefore, do not address Appellant’s first argument of the Reply
Brief—that the combination of Ashkenazi, Lin-Hendel, Wong, or Hinckley
fails to teach or suggest “scrolling. . . the content element of the vertically
scrolling online publication in a first scroll direction consisting of the first,
vertical direction. . . and simultaneously scrolling. . . the dynamically
scrolling content item in a second, horizontal direction.” Reply Br. 9.
Appellant does not argue in its Appeal Brief that the Examiner erred in
finding that the combination of Ashkenazi, Lin-Hendel, and Wong teaches
this feature. See generally Appeal Br.
We, likewise, do not address Appellant’s second argument of its
Reply Brief—that it would be improper to combine the four references so as
to teach this limitation of simultaneously scrolling vertically and
horizontally because doing so allegedly would frustrate the purpose of
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Wong. Reply Br. 9–10. Again, Appellant did not argue in its Appeal Brief
that the Examiner errs in finding the combination of Ashkenazi, Lin-Hendel,
and Wong teaches this feature, much less, did Appellant argue that Wong
teaches away from adding the teachings of Hinckley. See generally Appeal
Br.
We, likewise, do not address Appellant’s third argument of the Reply
Brief—that the Examiner’s stated rationale to combine Hinckley with the
other three references was insufficient due to the stated rationale being
impermissibly circular. Reply Br. 10–12. Appellant only timely argues in
its Appeal Brief that while Hinckley teaches scrolling can be proportional to
the rate of the haptic input, Hinckley’s scroll direction is the same as the
direction of the haptic input. Appeal Br. 16. And according to Appellant,
“Hinckley clearly fails to teach or suggest scrolling the content item in a
second, horizontal direction, which is different than the direction of the first
haptic input, at a second rate proportional to the first haptic input in the first
direction as recited by independent claim 1.” Id. at 16–17.
As for this timely presented argument, the argument does not address
the Examiner’s findings. In particular and contrary to Appellant’s argument
regarding Hinckley, the Examiner finds that the combination of Ashkenazi,
Lin-Hendel, and Wong teaches, in response to a haptic input, vertically
scrolling the first, content element of the online publication and
simultaneously scrolling horizontally the second content element at the
second rate in the slot. Final Act. 23; Ans. 5. The Examiner relies upon
Hinckley only for teaching that scrolling rates can be proportional to the
haptic input. Final Act. 23–24; Ans. 8.

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To the extent that Appellant’s arguments do address the Examiner’s
findings, we agree with the Examiner that Appellant’s arguments constitute
an attack on the references individually, whereas the rejection is based on
the combination of references. Ans. 5 (citing In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986)).
For the foregoing reasons, Appellant’s timely arguments do not
persuade us of error in the Examiner’s obviousness rejection of independent
claim 1. Accordingly, we sustain the obviousness rejection of that claim and
of claims 2, 4, 6–11, 13–18, and 20–22, which Appellant does not argue
separately. Appeal Br. 17. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.”).
We, likewise, sustain the Examiner’s obviousness rejection of
claims 5, 12, and 19 over the combination of Ashkenazi, Lin-Hendel, Wong,
Hinckley and Epstein. Appellant has not particularly pointed out errors in
the Examiner’s reasoning regarding the additional teachings of Epstein, but
merely reiterates the same arguments that are set forth in relation to
independent claim 1 regarding the alleged deficiencies of the four base
references. Appeal Br. 17.

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DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 6–11,
13–18, 20–22
103 Ashkenazi, Lin-
Hendel, Wong,
Hinckley
1, 2, 4, 6–
11, 13–18,
20–22

5, 12, 19 103 Ashkenazi, Lin-
Hendel, Wong,
Hinckley,
Epstein
5, 12, 19
Overall
Outcome
1, 2, 4–22