Apple Inc.

Patent Trials and Appeals Board

Oct 9, 2020

14292159 - (D) (P.T.A.B. Oct. 9, 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.
14/292,159 05/30/2014 RAINER BRODERSEN P7777USC1/63266-7372-
US
1009
61725 7590 10/09/2020
Morgan, Lewis & Bockius LLP (PA)(Apple)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
AFRIFA-KYEI, ANTHONY D
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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 RAINER BRODERSEN, ALAN CANNISTRARO, JEFFREY L.
ROBBIN, and GREGORY CHARLES LINDLEY
Appeal 2019-002982
Application 14/292,159
Technology Center 2600
Before LARRY J. HUME, JUSTIN BUSCH, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–24. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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.
4.
Appeal 2019-002982
Application 14/292,159

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CLAIMED SUBJECT MATTER
The claims are directed to a directional touch remote. Claim 2,
reproduced below, is illustrative of the claimed subject matter:
2. A method, comprising:
at a first device with a touch-sensitive surface including an
unstructured area having no individually selectable items:
while the first device is in a gesture entry mode of
operation, receiving a touch input at a location on the
unstructured area having no individually selectable items that
includes movement with a respective velocity; and
transmitting information about the touch input, including
information about the respective velocity of the movement of the
touch input, to a remotely controlled device;
at the remotely controlled device, remotely controlled by
the first device:
in response to receiving information about the touch input,
including information about the respective velocity of the
movement of the touch input, at the first device:
in accordance with a determination that an interface of the
remotely controlled device is in a first context, performing a first
action at the remotely controlled device in response to the touch
input that was received on the touch-sensitive surface of the first
device; and
in accordance with a determination that the interface of the
remotely controlled device is in a second context, different from
the first context, performing a second action at the remotely
controlled device, different than the first action, in response to
the touch input that was received on the touch-sensitive surface
of the first device.

Appeal 2019-002982
Application 14/292,159

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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Wells US 2009/0143141 A1 June 4, 2009
Hope US 2009/0153289 A1 June 18, 2009
Park US 2009/0199119 A1 Aug. 6, 2009
Negron US 2009/0239587 A1 Sept. 24, 2009
Migos US 2010/0164745 A1 July 1, 2010
REJECTIONS
Claims 2, 3, 5, 8–10, 12, 15–17, and 21–24 are rejected under pre–
AIA 35 U.S.C. § 103(a) as being unpatentable over Migos, Negron, and
Wells. Final Act. 2.
Claims 4, 7, 11, 14, and 18–20 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over Migos, Negron, Wells, and Hope. Final
Act. 9.
Claim 6 and 13 are rejected under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over Migos, Negron, Wells, and Park. Final Act. 10.
OPINION
The Final Office Action states, “[i]t would have been obvious to a
person of ordinary skill in the art at the time the invention was made to
combine Migos with Negron in order to have a method to effectiv[ly] input
an array of different commands for different devices/appliances.” Final Act.
4.
Appellant argues, in part, that the Final Office Action fails to explain
why a person of ordinary skill in the art would modify Migos to do away
with Negron’s selection icons 306, which enable Negron’s smartphone
device 102 to interface with multiple appliances. Appeal Br. 17. Appellant
Appeal 2019-002982
Application 14/292,159

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argues that the Office Action also lacks a clear or sufficient explanation of
why one skilled in the art would combine Migos and Negron, or Migos,
Negron, and Wells, in the manner claimed. Id. In the Answer, the Examiner
does not address or respond to these arguments. See Ans. 4–6.
“[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does. This is so because inventions in most,
if not all, instances rely upon building blocks long since uncovered, and
claimed discoveries almost of necessity will be combinations of what, in
some sense, is already known.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418–19 (2007). Even if a person of ordinary skill in the art would have
recognized that the combination of Migos and Negron would have conveyed
the concept of touch sensitive commands for different devices, on this
record, the Examiner does not provide sufficient explanation or evidence as
to why one ordinarily skilled in the art would have combined Migos’s
unstructured area with Negron’s selection icons. See Appeal Br. 17.
Thus, the record falls short of providing articulated reasoning with
rational underpinning to support a legal conclusion that the subject matter of
claim 2 would have been obvious to one of ordinary skill in the art in view
of what Migos, Negron, and Wells would have conveyed about touch
sensitive user interfaces to a person of ordinary skill in the art. KSR, 550
U.S. at 418 (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Thus, constrained as we are by the record before us, we do not sustain the
Appeal 2019-002982
Application 14/292,159

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rejection of claim 2. For the same reasons, we do not sustain the rejections
of the remaining pending claims.
CONCLUSION
We reverse the Examiner’s rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3, 5, 8–
10, 12, 15–
17, 21–24
103 Migos, Negron,
Wells
2, 3, 5, 8–
10, 12, 15–
17, 21–24
4, 7, 11, 14,
18–20
103 Migos, Negron,
Wells, Hope
4, 7, 11, 14,
18–20
6, 13 103 Migos, Negron,
Wells, Park
6, 13
Overall
Outcome:
2–24

REVERSED