Imran A. Chaudhri et al.

Patent Trials and Appeals Board

Oct 7, 2019

14142640 - (D) (P.T.A.B. Oct. 7, 2019)

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.
14/142,640 12/27/2013 Imran A. Chaudhri P5702USC1/77770000132201 1004
150004 7590 10/07/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
BRAY, STEPHEN A
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
10/07/2019 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):
dentons_PAIR@firsttofile.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IMRAN A. CHAUDHRI, BAS ORDING, and STEVEN JOBS
Appeal 2018-001095
Application 14/142,640
Technology Center 2600
Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
LILAN REN, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1

1 The record on appeal includes the Specification of December 27, 2013
(“Spec.”), the Examiner’s Final Action of March 8, 2016 (“Final Act.”),
Appeal Brief of April 10, 2017 (“Appeal Br.”), the Examiner’s Answer of
September 8, 2017 (“Ans.”), and Reply Brief of November 8, 2017 (“Reply
Br.”).
Appeal 2018-001095
Application 14/142,640

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,2 Apple Inc., appeals from
the Examiner’s decision to reject claims 22–56. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 22, reproduced below, is illustrative of the claimed subject
matter:
22. A portable electronic device comprising:
a touch-sensitive display;
one or more processors;
memory; and
one or more programs, wherein the one or more programs
are stored in the memory and configured to be executed by the
one or more processors, the one or more programs including
instructions for:
displaying a first icon in a first position of the touch-
sensitive display;
displaying a second icon in a second position of the touch-
sensitive display, the second position distinct from the first
position;
detecting a touch input on the first icon corresponding to
the first position of the touch-sensitive display;
determining whether the touch input on the first icon
corresponding to the first position of the touch-sensitive display
remains in contact with the display for more than a
predetermined time period;
in accordance with a determination that the touch input on
the first icon corresponding to the first position of the touch-
sensitive display does not remain in contact with the display for

2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Apple Inc.
of Cupertino, California.” Appeal Br. 4.
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Application 14/142,640

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more than the predetermined time period, activating an
application associated with the first icon; and
in accordance with a determination that the touch input on
the first icon corresponding to the first position of the touch-
sensitive display remains in contact with the display for more
than the predetermined time period:
modifying a visual appearance of the first icon;
detecting movement of the touch input from the first
position to a position proximate to the second position on the
touch-sensitive display, wherein the detected movement of the
touch input causes the first icon to be moved from the first
position to the position proximate to the second position on the
touch-sensitive display; and
in response to detecting movement of the touch input from
the first position to the position proximate to the second position
on the touch-sensitive display, moving the second icon from the
second position to a different position on the touch-sensitive
display.
Claims Appendix (Appeal Br. 50–51).

Appeal 2018-001095
Application 14/142,640

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REFERENCES
The prior art references relied upon by the Examiner are:
Ludolph
Alimpich
Hoshino
Yoshihara
Hawkins
Ewing
Sato
Keely
Niles
Carroll
Ito
Lin
Chiang
US 5,745,096
US 5,774,119
US 2004/0021643 A1
US 2004/0056839 A1
US 6,781,575 B1
US 6,915,490 B1
US 2006/0007182 A1
US 2006/0033751 A1
US 2006/0055700 A1
US 7,017,118 B1
US 7,587,683 B2
US 8,365,084 B1
US 8,601,370 B2
Apr. 28, 1998
June 30, 1998
Feb. 5, 2004
Mar. 25, 2004
Aug. 24, 2004
July 5, 2005
Jan. 12, 2006
Feb. 16, 2006
Mar. 16, 2006
Mar. 21, 2006
Sept. 8, 2009
Jan. 29, 2013
Dec. 3, 2013

REJECTIONS
Claims 22, 34, and 42 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hawkins in view of Keely and Hoshino. Final
Act. 3.
Claims 23, 35, and 43 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hawkins, Keely, Hoshino, and further in view of
Ito. Final Act. 13.
Claims 24, 36, and 44 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hawkins, Keely, Hoshino, and further in view of
Alimpich. Final Act. 14.
Claims 25, 26, 37, and 45 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Hawkins, Keely, Hoshino, and further in
view of Niles. Final Act. 15.
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Claims 27 and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hawkins, Keely, Hoshino, and further in view of
Yoshihara. Final Act. 17.
Claims 28 and 39 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hawkins, Keely, Hoshino, Yoshihara, and further in
view of Chiang. Final Act. 19.
Claims 29, 31, 40, 47, 49, and 50 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Hawkins, Keely, Hoshino, and
further in view of Carroll. Final Act. 20.
Claims 30, 41, and 48 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hawkins, Keely, Hoshino, and further in view of
Sato. Final Act. 23.
Claims 32 and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hawkins, Keely, Hoshino, and further in view of
Ewing. Final Act. 25.
Claim 46 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hawkins, Keely, Hoshino, and further in view of Chiang.
Final Act. 27.
Claims 51, 53, and 55 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hawkins, Keely, Hoshino, and further in view of
Ludolph. Final Act. 28.
Claims 52, 54, and 56 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Hawkins, Keely, Hoshino, Ludolph, and further
in view of Lin. Final Act. 30.

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OPINION
The Examiner rejects claim 22 finding, among others, that Keely
teaches or suggests “activating an application associated with the first icon”
upon meeting a particular recited condition. Final Act. 6. Specifically, the
Examiner finds that step 307 in Figure 3, as well as Figure 5A and paragraph
35 of Keely collectively teaches this limitation. Id. Paragraph 30 of Keely,
describing step 307 states:
If the first threshold has been exceeded, then the system
proceeds to step 304 where the user’s input is classified as a
stroke and the system steps to point A 305. If the first threshold
has not been exceeded, the system determines if the stylus was
still in contact with the digitizer when a time threshold had
expired in step 306. If no (meaning that the stylus was still in
contact with the digitizer surface), the system classifies the
input as a tap in step 307 and proceeds to point B 308.

In the Examiner’s Answer, the Examiner provides that step 307 (in
conjunction with step 308) determines “whether a double left-click event
(i.e.[,] an icon launch command) or other input type was intended to be
made by the user” and “the tap input (Step 307, 501) is being checked in
step 507 to determine if this is a double-tap input (i.e.[,] a double-left-click
operation used in the Windows environment to activate an application
associated with an icon).” Ans. 5–6. The Examiner further finds the
limitation is also taught by Hawkins’ teaching that “[t]he speed dial record
tag or label (or a portion thereof) is displayed on the screen button, and
activating (‘tapping’) the button causes the Phone App to control the
handheld computer and telephone peripheral to dial the telephone number of
the corresponding speed dial record.” Hawkins 7:26–31 (cited in Ans. 3).
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Appellant argues, on the other hand, that the Examiner reversibly
erred because activating an application as recited is distinct from the post-
activation usage of an application. See Appeal Br. 29 (arguing that the
actions in Keely upon step 307 “are all editing features and are completely
unrelated to activating an application”); see also Reply Br. 4 (stating that
“when a user taps on one of the speed dial numbers, the system performs a
function (e.g., calling) of the previously activated phone application, but will
not activate an application” in Hawkins) (emphasis omitted).
We are cognizant of the fact that Keely states a general objective to
“permit[] a user to perform all operations of a mouse-type device using a
stylus” (Keely ¶ 5; see Ans. 4–6). However, based on Appellant’s
distinction of “activating an application” from the post-activation usage of
an application and based on Keely’s teaching that “the system classifies the
input as a tap in step 307” (Keely ¶ 30), the record before us does not
adequately show that the limitation “activating an application associated
with the first icon” is taught by paragraph 35 of Keely cited in the Final
Rejection or the cited portion of Hawkins in the Answer. We accordingly
reverse the rejection of claim 22. The rejection of claims 34 and 42 based on
the same references is reversed. The rejections of all dependent claims are
reversed based on their dependency from claims 22, 34, and 42.
CONCLUSION
The Examiner’s rejections are reversed.
Claims
Rejected
Basis Affirmed Reversed
22–56 35 U.S.C. § 103(a)
(pre-AIA)
22–56
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Application 14/142,640

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Claims
Rejected
Basis Affirmed Reversed
Overall
Outcome
22–56

REVERSED