Stephen Hayden. Cotterill

Patent Trials and Appeals Board

Feb 4, 2020

13077670 - (D) (P.T.A.B. Feb. 4, 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.
13/077,670 03/31/2011 Stephen Hayden Cotterill P10483US2/77770000265102 5972
150004 7590 02/04/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
TILLERY, RASHAWN N
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
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 STEPHEN HAYDEN COTTERILL
Appeal 2018-001661
Application 13/077,670
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal Br.
3.
Appeal 2018-001661
Application 13/077,670

2
CLAIMED SUBJECT MATTER
The claims are directed to a device, method, and graphical user
interface for switching between two user interfaces. Spec. Title. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 An electronic device, comprising:
a display;
a touch-sensitive surface;
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 user interface on the display;
displaying a graphical object at a first location on the
display;
while displaying the graphical object at the first location
on the display, detecting a first gesture by a user on the touch-
sensitive surface, the first gesture starting at a location on the
touch-sensitive surface that corresponds to the first location of
the graphical object on the display;
in response to detecting the first gesture, transitioning to a
second user interface, the transitioning comprising:
moving the graphical object across the display;
displaying a second user interface on the display, distinct
from the first user interface;
detecting a termination of the first gesture; and
in response to detecting the termination of the first gesture,
continuing to move the graphical object to a second location on
the display, distinct from the first location;
while displaying the graphical object at the second
location on the display, detecting a second gesture by the user on
the touch-sensitive surface, the second gesture starting at a
location on the touch-sensitive surface that corresponds to the
second location of the graphical object on the display;
and,
Appeal 2018-001661
Application 13/077,670

3
in response to detecting the second gesture, transitioning
to the first user interface, the transitioning comprising:
moving the graphical object across the display;
displaying the first user interface on the display;
detecting a termination of the second gesture; and
in response to detecting the termination of the second
gesture, continuing to move the graphical object to the first
location on the display.
REJECTIONS
Claims 1–8, 11, 12, and 14–17 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Kim (US 2008/0158189 A1,
published July 3, 2008) in view of Ording (US 2010/0235794 A1, published
Sept. 16, 2010). Non-Final Act. 2.
Claims 9 and 10 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Kim, Ording, and Chaudhri et al. (US
2009/0064055A1, published March 5, 2009) (“Chaudhri”). Non-Final
Act. 7.
Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Kim, Ording, and Garside et al. (US
2006/0209040 Al, published Sept. 21, 2006) (“Garside”). Non-Final Act. 9.
ANALYSIS
Rejection of Claims Under 35 U.S.C. § 103(a)
We have reviewed the rejections of claims 1–17 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-001661
Application 13/077,670

4
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Claims 1–8, 11, 12, and 14–17 (Group A)
Appellant argues claims 1–8, 11, 12, and 14–17 as a group. Appeal
Br. 14. We select independent claim 1 as representative of the group of
claims pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(iv).
With respect to representative claim 1, Appellant contends that the
Examiner erred because the cited portions of Kim and Ording do not teach
or suggest a detection of the first gesture and a detection of the termination
of the same first gesture. Appeal Br. 15. Appellant further argues that the
cited portions of the prior art do not teach or suggest that, in response to the
detection of a gesture that starts at a location corresponding to the location of
a graphical object, the graphical object moves across the display (as part of
transitioning to a second user interface). Id. Appellant also argues that the
cited prior art does not teach or suggest that, in response to detection of the
termination of the gesture, the graphical object continues to move across the
display to a second location. Id.
We are not persuaded that the Examiner erred. The Examiner found
that the display regions in Kim are separated by a movable menu bar
(“graphical object”), and that the user performs a drag operation (“gesture”)
on the menu bar to transition from one display region to the other. Ans. 3
(citing Kim Fig. 3B). The Examiner further found that Ording teaches
scrolling a display screen using a swipe gesture, which moves the screen
from a first position to a second position. The Examiner also found that
Appeal 2018-001661
Application 13/077,670

5
Ording teaches that, after the user’s finger is lifted off the screen
(“termination of first gesture”), the scrolling continues until the end of the
screen is reached. Id. (citing Ording ¶ 152).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Here, Appellant attacks the prior art references individually, even
though the Examiner relied on the combined teachings of Kim and Ording in
rejecting claim 1. Appellant, for example, argues that Kim teaches a
draggable menu bar that stops moving when the termination of a drag
gesture is detected. Appeal Br. 15–19. The Examiner, however, relied on
Ording in combination with Kim as teaching the limitation “in response to
detecting the termination of the first gesture, continuing to move the
graphical object to a second location on the display, distinct from the first
location.” Non-Final Act. 4 (citing Ording ¶ 152). Similarly, Appellant
argues that “Ording is not directed to methods for moving individual graphic
objects[.]” Appeal Br. 26. The Examiner, however, relied on Kim for the
recited “graphical object” and the recited limitations “in response to
detecting the first gesture, transitioning to a second user interface, the
transitioning comprising: moving the graphical object across the display[.]”
Non-Final Act. 4.
Appeal 2018-001661
Application 13/077,670

6
Because Appellant’s arguments are not commensurate in scope with
the Examiner’s rejection, which was based on the combined teachings of
Kim and Ording, we are not persuaded that the Examiner erred in finding
that the combination of Kim and Ording teaches or suggests the disputed
limitations of claim 1.
Appellant next contends that the Examiner relied on impermissible
hindsight reasoning in rejecting claim 1. Appeal Br. 27. In particular,
Appellant argues that “[t]he Examiner’s two-sentence ‘articulation of the
reason’ [to combine the references] is not sufficient to establish a prima
facie case of obviousness.” Id.
We disagree with Appellant. The Examiner has set forth articulated
reasoning with rational underpinnings for the combination. Non-Final Act.
5. Appellant has not identified any knowledge relied upon by the Examiner
that was gleaned only from Appellant’s disclosure and that was not
otherwise within the level of ordinary skill in the art at the time of invention.
See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor has
Appellant provided objective evidence of secondary considerations, which
“operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak
Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For these reasons, we are not persuaded that the Examiner erred by
engaging in hindsight.
Appellant next contends that the Examiner failed to consider that Kim
“teaches away” from continuing to move the moveable menu bar after the
gesture terminates. Appeal Br. 31–32 (citing Kim ¶¶ 45, 49).
Appellant’s “teaching away” argument is not persuasive because
Appellant has not identified where Kim actually criticizes, discredits, or
Appeal 2018-001661
Application 13/077,670

7
otherwise discourages “in response to detecting the termination of the first
gesture, continuing to move the graphical object to a second location on the
display, distinct from the first location.” See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed”) (citing Fulton). Appellant has not
persuaded us that the cited paragraphs 45 and 49 of Kim criticize, discredit,
or otherwise discourage the disputed limitation.
Appellant’s argument that combining Kim and Ording would “require
a significant change to Kim’s principle of operation and render Kim
unsatisfactory for its intended purpose” also fails. Appeal Br. 32. Appellant
argues that “[m]odifying Kim such that the menu bar continues to move
after the drag gesture ends would mean that the user would no longer be
able to specify the desired relative sizes of the two display regions.” Id.
It is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. See Keller, 642 F.2d at 425. The Supreme Court
has held that “analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appeal 2018-001661
Application 13/077,670

8
For these reasons, we are not persuaded that the Examiner erred in
combining the cited teachings of Kim and Ording.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 1, as well as the Examiner’s § 103(a) rejection of
independent claims 15, 16, and 17, argued in the group with claim 1. We
also sustain the Examiner’s § 103(a) rejection of dependent claims 2–8, 11,
12, and 14, argued as a group with claim 1.
Claims 9 and 10 (Group B)
Appellant argues that the § 103(a) rejection of dependent claims 9 and
10 should be reversed for the reasons discussed above for claim 1, because
Chaudhri does not cure the alleged deficiencies of Kim and Ording. Appeal
Br. 33–34.
For the reasons discussed above with regard to claim 1, we are not
persuaded that the Examiner erred in rejecting claims 9 and 10. Accordingly,
we sustain the Examiner’s § 103(a) rejection of claims 9 and 10.
Claim 13 (Group C)
In addition to the arguments discussed above for claim 1, Appellant
contends that the rejection of dependent claim 13 should be reversed because
the combination of Kim, Ording, and Garside does not teach or suggest the
limitation “wherein the first gesture is a tap gesture and the second gesture is
a tap gesture,” as recited in claim 13. Appeal Br. 34. Appellant argues that it
would not be possible to substitute Garside’s tap gesture for Kim’s
draggable menu bar. Id. at 35–37. Appellant further argues that “it is not
possible for the graphical object to continue to move in response to
detecting the termination of a tap gesture, because the graphical object
would not have started moving before Garside detected the termination of a
Appeal 2018-001661
Application 13/077,670

9
tap gesture.” Id. at 37. Moreover, Appellant argues that the Examiner used
hindsight reconstruction to “cherry-pick one feature from Garside (tapping
an activation target to scroll a keyboard) without due consideration of either
the claim language or how Garside’s feature would be applied to Kim
according to Kim’s and Garside’s teachings.” Id. at 34–35.
We are not persuaded that the Examiner erred. As we explained above
with regard to independent claim 1, from which claim 13 depends,
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See Merck, 800 F.2d at 1097. The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See Keller, 642 F.2d at 425.
Here, Appellant has not persuaded us that the claimed subject matter
would not have been obvious to those of ordinary skill in the art in light of
the combined teachings of the cited references. The Examiner found that
although Kim does not expressly disclose the first gesture is a tap gesture
and the second gesture is a tap gesture, Garside teaches tap gestures. Non-
Final Act. 5 (citing Garside Figs. 5D–5F, ¶ 63). “[A] determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332
(citations omitted). Nor is the test for obviousness whether a secondary
reference’s features can be bodily incorporated into the structure of the
primary reference. See Keller, 642 F.2d at 425.
Appeal 2018-001661
Application 13/077,670

10
Appellant’s “hindsight” argument is not persuasive because the
Examiner has set forth articulated reasoning with rational underpinnings for
the combination. Non-Final Act. 9. Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See McLaughlin, 443 F.2d at
1395. Nor has Appellant provided objective evidence of secondary
considerations, which “operates as a beneficial check on hindsight.” Cheese
Sys., 725 F.3d at 1352.
For these reasons, we sustain the Examiner’s § 103(a) rejection of
claim 13.
DECISION
We affirm the decision of the Examiner rejecting claims 1–17.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 11, 12,
14–17
103(a) Kim, Ording 1–8, 11,
12, 14–17

9, 10 103(a) Kim, Ording, Chaudhri 9, 10
13 103(a) Kim, Ording, Garside 13
Overall
Outcome:
1–17
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED