APPLE INC.Download PDFPatent Trials and Appeals BoardApr 15, 202014174707 - (D) (P.T.A.B. Apr. 15, 2020) Copy Citation 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. 14/174,707 02/06/2014 William Bull P5768USC1/63266-7088US 9543 61725 7590 04/15/2020 Morgan, Lewis & Bockius LLP (PA)(Apple) 1400 Page Mill Road Palo Alto, CA 94304-1124 EXAMINER HO, RUAY L ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 04/15/2020 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM BULL, KOURTNY MINH HICKS, POLICARPO WOOD, and ERIC JAMES HOPE Appeal 2018-008370 Application 14/174,707 Technology Center 2100 Before JAMES R. HUGHES, CARL L. SILVERMAN, and SCOTT E. BAIN, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 21–47 are pending, stand rejected, are appealed by Appellant,1 and are the subject of our decision under 35 U.S.C. § 134(a). See Final Act. 1–2; Appeal Br. 5.2 We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was held on March 16, 2020. 1 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. See Appeal Br. 3. 2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 6, 2014 (claiming benefit of US 60/967,457, filed Sept. 4, 2007); Appeal Brief (“Appeal Br.”), filed May 18, 2018; and Reply Brief (“Reply Br.”), filed Appeal 2018-008370 Application 14/174,707 2 We REVERSE. CLAIMED SUBJECT MATTER The invention relates “to systems and methods for improving the scrolling of user interfaces of electronic devices.” Spec. ¶ 2. More specifically, Appellant’s invention relates to devices, computer-readable storage media, and methods for providing a quick scrolling mode (an accelerated navigation mode) and displaying subset identifiers in the quick scrolling mode. See Spec. ¶¶ 6–14; Abstract. Claims 21, 29, and 37 are independent. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A method performed by a device with one or more processors and one or more input devices, comprising: receiving, at the device with one or more processors and one or more input devices, from a user of the device, a user input for scrolling through a representation of a set of assets, the set including a plurality of subsets of the assets; determining, by the device, that an attribute associated with the received input is above a threshold value; setting a scrolling mode to be an accelerated navigation mode in response to determining that the attribute associated with the received input is above the threshold value; while the scrolling mode is in the accelerated navigation mode and while scrolling through the representation of the set of assets in accordance with the input, providing, in addition to the scrolling representation of the set of assets, a plurality of asset subset identifiers that each identify a respective subset of the assets through which the device is currently scrolling in accordance with the input, wherein a respective individual asset Aug. 24, 2018. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Dec. 1, 2017; and Answer (“Ans.”) mailed June 28, 2018. Appeal 2018-008370 Application 14/174,707 3 subset identifier of the plurality of asset subset identifiers corresponds to a plurality of the assets in the set of assets; while continuing to scroll through the representation of the set of assets in accordance with the input, terminating the accelerated navigation mode; and after terminating the accelerated navigation mode, continuing to scroll through the representation of the set of assets in accordance with the input without providing asset subset identifiers that each identify a respective subset of the assets through which the device is currently scrolling. Appeal Br. 20 (Claims App.) (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ma et al. (“Ma”) US 2003/0023591 A1 Jan. 30, 2003 Tsuk et al. (“Tsuk”) US 2003/0076301 A1 Apr. 24, 2003 Reynolds et al. (“Reynolds”) US 2008/0065471 A1 Mar. 13, 2008 (filed Oct. 26, 2007)3 Gandert et al. (“Gandert”) US 9,251,172 B2 Feb. 2, 2016 (filed June 2, 2008) (claiming benefit of US 60/941,582, filed June 1, 2007. 3 The instant Reynolds application is a Continuation-in-part application of (claims benefit of) US 10/927,222, filed on Aug. 25, 2004, and US 60/497,882 (Provisional application), filed on Aug. 25, 2003. Appeal 2018-008370 Application 14/174,707 4 REJECTIONS4 1. The Examiner rejects claims 21–24, 26–32, 34–40, and 42–475 under 35 U.S.C. § 103(a) as being unpatentable over Ma, Reynolds, and Tsuk. See Final Act. 5–10. 2. The Examiner rejects claims 25, 33, and 41 under 35 U.S.C. § 103(a) as being unpatentable over Ma, Reynolds, Tsuk, and Gandert. See Final Act. 10–11. ANALYSIS Obviousness Rejection of Claims 21–24, 26–32, 34–40, and 42–47 The Examiner rejects independent claim 21 (as well as independent claims 29 and 37, and dependent claims 22–24, 26–28, 30–32, 34–36, 38– 40, and 42–47) as being obvious over Ma, Reynolds, and Tsuk. See Final Act. 5–7; Ans. 3–5, 11–13. Appellant contends, inter alia, that Ma, Reynolds, and Tsuk do not teach the disputed limitations of claim 21. See Appeal Br. 12–16; Reply Br. 7–12. Specifically, Appellant contends that Reynolds does not describe providing “a plurality of asset subset identifiers” “in the accelerated navigation mode” (Appeal Br. 14 (emphases omitted)). See Appeal Br. 13–16; Reply Br. 9–12. 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, e.g., to revise 35 U.S.C. § 103’s subsections. Because the present application has an effective filing date (Sept. 4, 2007) prior to the AIA’s effective date for applications (March 16, 2013), this decision refers 35 U.S.C. § 103(a). 5 The Examiner does not include claims 45–47 in the statement of rejection or address these claims in Final Office Action (see Final Act. 5, 10). The Examiner does address claims 45–47 in the Examiner’s Answer (see Ans. 3, 7–8, 15). We edit the statement of rejection for clarity and consistency. Appeal 2018-008370 Application 14/174,707 5 We agree with Appellant that the Examiner-cited portions of Reynolds (see Reynolds ¶¶ 768, 773, 798, 819, 1050, 1051; Fig. 54) do not teach or suggest asset subset identifiers displayed during only an accelerated navigation mode or quick scrolling mode as required by Appellant’s claim 21. See Appeal Br. 14–15; Reply Br. 8–10. The Examiner-cited portions of Reynolds describe a scrolling list of data (corresponding to the recited assets) (see Reynolds ¶¶ 798, 819; Figs. 44, 54) and various identifiers for the data in the lists (see Reynolds ¶¶ 768 (Group Id (identifier), Short Title (label)), 1050–1051 (binary classifiers); Figs. 41, 45). See Final Act. 6–7; Ans. 3–5, 11–13. The cited portions of Reynolds, however, do not describe displaying specific identifiers for a subset of the data during only accelerated scrolling. See Appeal Br. 14–15; Reply Br. 8–10. The Examiner does not explain sufficiently how the cited portions of Reynolds (in combination with Ma and Tsuk) at least suggest the disputed features of displaying subset identifiers in an accelerated scrolling mode—“while the scrolling mode is in the accelerated navigation mode . . . , providing, in addition to the scrolling representation of the set of assets, a plurality of asset subset identifiers that each identify a respective subset of the assets through which the device is currently scrolling” (claim 21 (Appeal Br. 20 (Claims App.)). Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Ma, Reynolds, and Tsuk renders obvious Appellant’s claim 21. Independent claims 29 and 37 include limitations of commensurate scope. Claims 22–24, 26–28, 30–32, 34–36, 38–40, and 42–47 depend from and stand with their respective base claims. Appeal 2018-008370 Application 14/174,707 6 Appellants also contend that the Reynolds reference is not valid prior art because the cited portions of Reynolds are not supported in the priority applications. See Appeal Br. 12–13; Reply Br. 7–8. We need not address this issue as Reynolds does not teach the disputed features of Appellant’s claims (supra), and this that issue is dispositive of the obviousness rejection. Obviousness Rejection of Claims 25, 33, and 41 The Examiner rejects dependent claims 25, 33, and 41 under 35 U.S.C. § 103(a) as being obvious over Ma, Reynolds, Tsuk, and Gandert. See Final Act. 10–11. The Examiner does not suggest, and we do not find, that the additional cited reference, Gandert, cures the deficiencies of Reynolds (in combination (Ma and Tsuk) (supra). Therefore, we reverse the Examiner’s obviousness rejection of dependent claims 25, 33, and 41 for the same reasons set forth for claim 21 (supra). CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 21– 47 under 35 U.S.C. § 103(a). We, therefore, do not sustain the Examiner’s rejection of claims 21–47. Appeal 2018-008370 Application 14/174,707 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–24, 26–32, 34–40, 42–47 103(a) Ma, Reynolds, Tsuk 21–24, 26–32, 34–40, 42–47 25, 33, and 41 103(a) Ma, Reynolds, Tsuk, Gandert 25, 33, and 41 Overall Outcome None 21–47 REVERSED Copy with citationCopy as parenthetical citation