Richard Dellinger et al.

Patent Trials and Appeals Board

May 10, 2021

2021001428 (P.T.A.B. May. 10, 2021)

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.
13/243,045 09/23/2011 Richard R. Dellinger P11171US1/77770000281101 9213
150004 7590 05/10/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
VU, THANH T
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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
patent.docket@dentons.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 RICHARD R. DELLINGER and NIKHIL BHOGAL

Appeal 2021-001428
Application 13/243,045
Technology Center 2100
____________

Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–13, 16–19, 21, 22, and 24–47,
which constitute all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 A telephonic hearing was held for this appeal on April 20, 2021.
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. Appeal Br. 3.
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Application 13/243,045

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STATEMENT OF THE CASE
Appellant’s disclosure is directed to electronic devices with touch-
sensitive surfaces that enable restricted access to an application while the
device is locked. Abstr.; Spec. ¶¶ 3, 14, 101, 108, 142, 148, 175, 178; Figs.
5C, 5M, 5N.
Claim 1 is representative3 of the invention and reads as follows
(emphasis added):
1. A method, comprising:
while an electronic device with a display and a touch-
sensitive surface is in a locked, passcode-protected state:
displaying a lock screen user interface on the display, the
lock screen user interface including a restricted application
launch icon corresponding to a respective application;
detecting user input to activate the restricted application
launch icon; and,
in response to detecting the user input to activate the
restricted application launch icon:
starting a restricted session for the respective application
that corresponds to the restricted application launch icon; and
maintaining the device in the locked, passcode-protected
state for applications in the device other than the respective
application;
while the respective application is in the restricted
session:

3 Appellant argues claim 1 of Group A independent claims 1, 13, 8, 19, 21,
and 22. Appeal Br. 14, 17–22. See 37 C.F.R. § 41.37(c)(1)(iv).
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generating and storing a first content item in the
respective application;
receiving a request to present stored content items in the
respective application, wherein the stored content items include
the first content item, one or more second content items
generated during the restricted session, and one or more third
content items not generated during the restricted session; and
in response to receiving the request to present stored
content items in the respective application:
presenting the first content item and one or more second
content items or representations thereof that meet restricted
session access criteria for the respective application, wherein
the restricted session access criteria include that, to be
presented in the restricted session, a respective content item in
the stored content items be generated during the restricted
session; and
not presenting the one or more third content items or
representations thereof that fail to meet the restricted session
access criteria for the respective application.
Appeal Br. 39 (Claims App).
REFERENCES AND REJECTION
The prior art relied upon by the Examiner is:
Name Reference Date
Peev et al. 2010/0146384 A1 Jun. 10, 2010
Bandyopadhyay 2012/0009896 A1 Jan. 12, 2012

Claims 1, 3–13, 16–19, 21, 22, and 24–47 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Peev and Bandyopadhyay. Final
Act. 2–8.
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Application 13/243,045

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. As discussed below, we are persuaded by Appellant’s
contentions of Examiner error. In our analysis below, we highlight and
address specific findings and arguments for emphasis.
Appellant argues the Examiner errs in finding that Bandyopadhyay
teaches selectively display multiple content items (“first and second content
items”) generated during a restrictive session and not displaying other
content items (“third content items”) that were not generated during a
restricted session as required by claim 1. Appeal Br. 15–22; Reply Br. 3–6.
In the Final Action, the Examiner finds the combination of Peev and
Bandyopadhyay teaches the limitations of claim 1. Final Act. 2–5. The
Examiner finds Peev teaches many of the claim limitations but Peev does
not teach the claim limitations regarding generating and displaying first and
second content items generated during a restrictive session and not
displaying third content items that were not generated during a restricted
session. Id.; see also Ans. 9–11. The Examiner then finds Bandyopadhyay
teaches the following claim 1 limitations (also referred to as “disputed
limitations”):
receiving a request to present stored content items in the
respective application, wherein the stored content items include
the first content item, one or more second content items
generated during the restricted session, and one or more third
content items not generated during the restricted session; and
in response to receiving the request to present stored
content items in the respective application:
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presenting the first content item and one or more second
content items or representations thereof that meet restricted
session access criteria for the respective application, wherein
the restricted session access criteria include that, to be
presented in the restricted session, a respective content item in
the stored content items be generated during the restricted
session; and
not presenting the one or more third content items or
representations thereof that fail to meet the restricted session
access criteria for the respective application.

Id. at 4 (emphasis added).
Regarding the disputed limitations, the Examiner finds
Bandyopadhyay teaches storing a first content item generated while in the
restricted session. Id. at 3 (citing Bandyopadhyay ¶¶ 6, 10, 51, 114, and
117). The Examiner then finds that Bandyopadhyay teaches the remainder
of the disputed limitations. Id. (citing Bandyopadhyay, Fig. 7, element 730,
above-lock (“restricted session”); element 750 below-lock). In particular,
the Examiner finds
[I]n fig. 7, state 730 Camera Post-Capture (Above-lock
mode (locked)) and Para. [0101], Bandyopadhyay discloses
that at state 730, the mobile device is in an above-lock camera
postcapture mode. In this state 730, functions that are not
available to the user can include functions for deleting the
capture image or other previously captured images ... in some
examples, the mobile device uses a "camera roll" metaphor (
e.g., displaying images in a strip similar to a traditional film
camera), as discussed above in FIG. 3B and accompanying
text. Using a camera roll allows a user to swipe a finger across
a touch screen and thereby move the image in the direction of
the swipe (or a drag or flip) and allows a user to see previously
taken photos. Thus, it is clear that the user is limited to view
previously captured images or previously taken photos in the
above-lock (locked) mode (i.e. a restricted session). In addition,
in Fig. 7, state 750 Camera Post-Cap[]ture (Below-lock mode
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(unlocked)), paras [0105], [0107] and [0108], Bandyopadhyay
discloses the user is allowed to view previously stored images
in an unlocked mode. Accordingly, Bandyopadhyay clearly
discloses two distinctly accessible sets of images that can be
presented to the user. The first set of images are previously
captured images which are images that are being captured or
generated during the locked mode, and the second set of images
are previously stored images which are all the images that are
previously stored. One or more of these previously stored
images are only accessible during the unlocked mode).

Id. at 4.
Appellant argues the Examiner errs in finding Bandyopadhyay teaches
the camera roll can be used in the above-lock mode (locked) and the camera
roll displays multiple photographs captured in the above lock mode without
displaying photographs captured in a below locked mode. Appeal Br. 18
(citing Final Act. 3). Appellant argues the camera roll is specifically being
used when the device is in the below-lock mode. Id. (citing
Bandyopadhyay, Fig. 3, ¶ 72). According to Appellant, Bandyopadhyay
teaches a confirmation image can be viewed and added to the camera roll
when the device is above-lock (locked). Id. at 19–20 (citing Bandyopadhyay
101). Appellant argues the ability to swipe to view previously taken photos
using the camera mode while in the above-lock mode is not disclosed by
Bandyopadhyay as Bandyopadhyay merely describes that some functions
are disabled in the above-lock node, such as deleting an image, or the entire
camera roll is disabled. Id.
Appellant specifically argues, even if Bandyopadhyay disclosed that
previously taken photos can be viewed while in the above-lock mode, there
is no teaching that Bandyopadhyay “previously taken photos” and
“previously captured images” as being limited to only images captured while
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the device is in the above-lock (locked mode). Id. at 20–21. Appellant also
argues Bandyopadhyay does not teach that the photos included in the
“previously captured images” or the “previously taken photos” are different
in the above-lock mode versus in the below lock mode. Id. at 21.
According to Appellant, if the ability to view previously taken photos were
enabled in the above-lock mode, the available photos would be the same as
in the below-lock mode, and this would include all photos. Id.
Appellant argues the Examiner errs in finding Bandyopadhyay,
paragraph 108, teaches that because a function for “viewing previously
stored images” could not be accessed, those “previously stored images” were
not viewable in the camera roll when the camera mode is used in the above-
lock (locked) mode, but the other (undisclosed) images were viewable. Id.
at 22. According to Appellant, Bandyopadhyay’s paragraph, 108 refers to
the below-lock mode where the camera roll is enabled and is disabled in the
above-lock mode. Id. (citing Bandyopadhyay ¶¶ 108, 72, 101). Appellant
argues paragraph 108 of Bandyopadhyay merely states that all of the
functions of the camera roll, including viewing previously stored images,
can be accessed after the device transitions to the below-link mode, and
Bandyopadhyay does not limit which images can be viewed in the camera
roll in the above-lock versus in the below-lock mode. Id.
In the Answer, the Examiner reiterates and refers to Bandyopadhyay,
paragraph 45, teaching that a user can capture images even when the device
is in an above-lock state (locked). Ans. 10–11.
In the Reply Brief, Appellant reiterates and argues that even if the
camera roll were to be enabled in the above-lock mode (which Appellant
asserts is not explicitly disclosed), Bandyopadhyay would still provide no
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teaching that the photos available to be viewed in the camera roll would be
limited to only those photos which were captured while the device is in the
above-lock mode. Reply Br. 4. Appellant additionally argues that the
Examiner does not rebut Appellant’s argument that the Examiner
misconstrues Bandyopadhyay, paragraph 108, and the Answer simply
restates the same incorrect assertion. Id. at 5; See Appeal Br, 21–22; Ans.
11. According to Appellant, paragraph 108 “viewing previously stored
images can now be accessed” refers to the camera roll of Fig. 3B where the
camera roll is enabled in the below-lock mode and disabled in the above-
lock mode (locked). Id. (citing Bandyopadhyay ¶¶ 72, 101, and 108).
Appellant argues Bandyopadhyay, paragraph 108, teaches that all functions
of the camera roll, including viewing previously stored images, can be
accessed after the device transitions to the below-lock mode, and
Bandyopadhyay does not limit which images can be view in the above-lock
versus the below-lock mode. Id.
We now refer to the disputed limitations discussed, supra, which
requires first, second, and third content items in which the first and second
content items are generated and presented in the restricted session, but the
third content item is not presented because it is not generated in the
restricted session.
On the record before us, we are persuaded by Appellant’s argument
because the Examiner provides insufficient evidence to support the finding
that Bandyopadhyay teaches performing the disputed limitations. Although
Bandyopadhyay teaches a locked and unlocked state and content items
associated with these states, the Examiner does not sufficiently identify
teaching in Bandyopadhyay in which first and second content items are
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generated and presented during the restricted session, and third content items
not generated during the restricted session are not presented. In particular,
the Examiner refers to a first content item of Bandyopadhyay generated and
displayed in a restricted session, but does not sufficiently identify a second
content item generated and displayed in a restrictive session. Moreover, the
cited Bandyopadhyay, paragraph 101, appears to describe a one way process
in which Bandyopadhyay teaches a confirmation image can be viewed and
added to the camera roll when the device is above-lock (locked).
Further, the Examiner’s assertion that Figure 3B of Bandyopadhyay
supports the use of camera rolls in below-lock (unlocked) and above-lock
(locked) does not sufficiently explain the relationship of Figures 3B and 3A
in which Figure 3B describes below lock and camera roll and Figure 3A
describes above lock (locked) with no description of camera roll. See
Bandyopadhyay ¶¶ 71, 72).
Additionally, we note claim 1 is directed to a restricted session and a
locked state. Bandyopadhyay portions cited by the Examiner describe an
“above-lock” mode which the Examiner characterizes as a restrictive session
and a “below-lock” mode which the Examiner characterizes as unlocked.
For example, Bandyopadhyay ¶¶ 6, 10, 51, 101, 105, 107, 108, 114, 117;
Fig. 7; Final Act. 3–4. Thus, the Examiner’s discussion of the two modes
does not directly correspond to the claimed modes and the Examiner
provides insufficient support for the findings of record.
Accordingly, the Examiner does not provide prima facie support for
the rejection. “[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Therefore, on the record before us, we are constrained to conclude the
Examiner errs in rejecting representative claim 1, and independent claims
13, 18, 19, 21, and 22, as obvious.

CONCLUSION
For the reasons stated above, we do not sustain the obviousness
rejection of representative claim 1, independent claims 13, 18, 19, 21, and
22, and dependent claims 2–12, 16, 17, and 24–47. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992).
Because our decision with regard to the disputed limitations is
dispositive of the rejections made, we do not address additional arguments
raised by Appellant.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–13,
16–19, 21,
22, 24–47
103(a) Peev,
Bandyopadhyay
1, 3–13, 16–
19, 21, 22,
24–47
Overall
Outcome
1, 3–13, 16–
19, 21, 22,
24–47

REVERSED