APPLE INC.

Patent Trials and Appeals Board

Apr 15, 2020

14174707 - (D) (P.T.A.B. Apr. 15, 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.
14/174,707 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