APPLE INC.

Patent Trials and Appeals Board

Jul 2, 2021

2020005427 (P.T.A.B. Jul. 2, 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.
13/797,979 03/12/2013 Jonathan Koch P11421US1/77770000292101 6847
150004 7590 07/02/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
PARKER, JEANETTE J
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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 JONATHAN KOCH, MORGAN H. WINER,
ELIZABETH C.F. CRANFILL, and STEPHEN W. SWALES
Appeal 2020-005427
Application 13/797,979
Technology Center 2100
Before MAHSHID D. SAADAT, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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 1–11 and 15–25. We heard argument
in a telephonic hearing held on June 3, 2021. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.

1 “Appellant” refers 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 13/797,979

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RELATED APPEAL
Although not identified by Appellant, we have previously issued a
decision on appeal in connection with this patent application. Specifically,
on November 30, 2018, we issued a decision (“Prior Decision”) in Appeal
2017–002223 wherein we reversed the appealed rejections, which involved
much of the same prior art at issue here.
CLAIMED SUBJECT MATTER
The claims are directed to a device, method, and graphical user
interface for displaying a virtual keyboard. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An electronic device, comprising:
a touch-sensitive display;
one or more sensors;
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 an application interface on the display;
detecting an input that corresponds to a command to
display a virtual keyboard in the application interface;
detecting one or more sensor inputs from the one or
more sensors;
in response to detecting the input that corresponds
to the command to display the virtual keyboard:
in accordance with a determination that the sensor
inputs satisfy one or more first criteria, displaying the
virtual keyboard as a split keyboard on the display; and
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in accordance with a determination that the sensor
inputs satisfy one or more second criteria, distinct from the
first criteria, displaying the virtual keyboard as an unsplit
keyboard on the display;
in accordance with a determination that the sensor
inputs are inconclusive, ambiguous, or contradictory:
displaying the virtual keyboard as a split
keyboard on the display in accordance with a
determination that the split keyboard was the last
keyboard displayed in the application interface prior
to detecting the input that corresponds to the
command to display the virtual keyboard; and
displaying the virtual keyboard as an unsplit
keyboard on the display in accordance with a
determination that the unsplit keyboard was the last
keyboard displayed in the application interface prior
to detecting the input that corresponds to the
command to display the virtual keyboard.
Appeal Br. 41 (Claims Appendix).
REFERENCES2
The prior art relied upon by the Examiner is:

2 All citations herein to the references are by reference to the first named
inventor/author only.
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Name Reference Date
Lian US 2007/0273662 A1 Nov. 29, 2007
Kim US 2009/0265627 A1 Oct. 22, 2009
Park US 2011/0263298 A1 Oct. 27, 2011
Kyprianou US 2012/0206363 A1 Aug. 16, 2012
Cohen US 2012/0324381 A1 Dec. 20, 2012
Tumanov US 2013/0002565 A1 Jan. 3, 2013
Chornenky US 2013/0234949 A1 Sept. 12, 2013
Best Keyboard for Andriod Tables and Phones, available at
https://www.youtube.com/watch?v=00CwhtvVL-O published on May 7,
2012.
REJECTIONS
Claim 25 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 2–4.
Claims 1, 2, 4, 7, 8, 11, 21, 22, and 23 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Cohen. Final Act. 5.
Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen and Kim. Final Act. 5.
Claims 3, 6 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen and Tumanov. Final Act. 5.
Claims 15, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cohen and Kyprianou. Final Act. 6.
Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Chornenky, Kyprianou, and Park. Final Act. 6.
Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Chornenky, Kyprianou, Park, and Lian. Final
Act. 6.
Claims 1, 2, 4, 7, 8, 11, 21, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cohen and Chornenky. Final Act. 5.
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Claim 3, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Chornenky, and Tumanov. Final Act. 5.
Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Chornenky, and Kim. Final Act. 5.
Claims 15, 18, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cohen, Chornenky, Kyprianou. Final Act. 6.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Chornenky, and Best Keyboard for Andriod
Tables and Phones. Final Act. 6.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen and Best Keyboard for Andriod Tables and
Phones. Final Act. 23.

ISSUES
First Issue: Has the Examiner erred in finding Cohen anticipates
claim 1 by disclosing each of the last three limitations recited in the claim?
Second Issue: Has the Examiner erred in determining that Cohen
alone, or in combination with Chornenky’s previously defined and recorded
keyboard, renders obvious the “displaying” limitations of claim 1?
Third Issue: Has the Examiner erred in finding Tumanov teaches or
suggests “wherein the first criteria include that the sensor inputs detect a
face in front of the touch-sensitive display,” as recited in claim 6?
Fourth Issue: Has the Examiner erred in finding Kim teaches or
suggests “wherein the first criteria include that the sensor inputs indicate the
device is shaking by less than a predefined threshold amount,” as recited in
claim 5?
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Fifth Issue: Has the Examiner erred in finding the Specification fails
to provide adequate written description for “affordance[s]” as recited in
claim 25?
ANALYSIS
Claim Interpretation
Our analysis of many of the issues raised in this appeal turns on an
issue of claim interpretation. We give disputed claims terms their broadest
reasonable interpretation in light of the Specification. In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004). Claim 1 recites a process in which a virtual
keyboard is displayed as a split keyboard when sensor inputs meet a first
criterion, and displayed as an unsplit keyboard when sensor inputs meet a
second criterion. The disputed limitation of claim 1 recites a third potential
situation—that “the sensor inputs are inconclusive, ambiguous, or
contradictory.” In this third situation, the device maintains the prior
keyboard display setting. That is, if the previous keyboard was displayed as
split, the keyboard is displayed as a split keyboard upon receiving
inconclusive, ambiguous, or contradictory sensor inputs. Similarly, if the
previous keyboard was unsplit, the keyboard is displayed as an unsplit
keyboard.
We begin with the claim language. The disputed limitation recites “in
accordance with a determination that the sensor inputs are inconclusive,
ambiguous, or contradictory.” We observe that the disputed limitation does
not recite with specificity the way in which the sensor inputs are
inconclusive, ambiguous, or contradictory. That is, the disputed limitation
does not recite any specific way in which the sensor inputs must be
inconclusive, ambiguous, or contradictory.
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We look to the specification for context. This claimed feature is
discussed in only a single paragraph in the Specification:
It may be the case that the sensor inputs do not satisfy the first
criteria and do not satisfy the second criteria. For example, the
sensor inputs may be inconclusive, ambiguous, or contradictory
with respect to whether the sensor inputs indicate that device 100
is being held by hand or lying on a surface (e.g., a table top).
Spec. ¶ 150. Here, the Specification indicates with specificity that the
sensor inputs “may be inconclusive, ambiguous, or contradictory with
respect to whether the sensor inputs indicate that device 100 is being held by
hand or lying on a surface.” Id. On the one hand, this description, as the
only description of “inconclusive, ambiguous, or contradictory” sensor
inputs, might be interpreted to show that the intended meaning of the
disputed limitation is that the sensor inputs are inconclusive, ambiguous, or
contradictory with respect to the first criterion and second criterion. On the
other hand, our reviewing court has repeatedly cautioned against importing
embodiments from the specification into the claims. Additionally, that the
specification provides this additional context, and Appellant nevertheless
chose to incorporate broader language, weighs in favor of a broader
interpretation. Given our adherence to the broadest reasonable interpretation
approach, we conclude the broadest reasonable interpretation of the disputed
limitation is that “a determination that the sensor inputs are inconclusive,
ambiguous, or contradictory” means that the system determines the sensor
inputs are inconclusive, ambiguous, or contradictory in any respect.
First Issue
Having interpreted the disputed limitation, we turn to the claim
rejections. The Examiner rejects claim 1 as anticipated by Cohen. Final
Act. 5. Relevant to this issue, the Examiner finds that Cohen discloses “in
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accordance with a determination that the sensor inputs are inconclusive,
ambiguous, or contradictory.” Final Act. 10–11 (citing Cohen ¶¶ 52, 53, 58,
60). The Examiner finds Cohen’s description of sensing that the device is
held in one hand is ambiguous with respect to whether the device is being
held by both hands, which the Examiner finds corresponds to the first
criterion, and also is ambiguous as to whether the device is laying flat on a
surface, which the Examiner finds corresponds to the recited second
criterion. Thus, the Examiner’s analysis finds that when the device is held in
only one hand, the sensor inputs are inconclusive, ambiguous, or
contradictory.
Appellant argues the Examiner erred because there is no situation
where the sensor inputs received by Cohen are inconclusive, ambiguous, or
contradictory because, in each of the described scenarios, the sensor inputs
are understood and acted upon by the system. That is, even in the case
where the device is being held by one hand, Appellant asserts there is no
inconclusive, ambiguous, or contradictory sensor reading, as the system
understands that the device is being held in one hand.
Appellant’s argument is not persuasive because it relies on an overly
narrow interpretation of the disputed limitation. As we determined above,
the limitation “a determination that the sensor inputs are inconclusive,
ambiguous, or contradictory,” means that the sensor inputs are inconclusive,
ambiguous, or contradictory in any respect. Cohen discloses at least three
scenarios for sensor readings: (1) the device is lying flat, (2) the device is
held in two hands, and (3) the device is held in one hand. The Examiner
finds the scenario where the device is lying flat corresponds to the recited
“first criteria” and the scenario where the device is held in two hands as
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corresponding to the “second criteria.” Here, in the situation where the
Cohen’s device is held only on one side of the device, it satisfies the argued
limitation because the sensor reading that yields such a determination is
inconclusive and/or ambiguous in various ways. For example, a person of
ordinary skill in the art would have understood the sensor reading to be
ambiguous as to the battery life remaining in the device. A person of
ordinary skill in the art would have also understood the sensor reading to be
ambiguous as to whether the device is submerged in water. Still further, a
person of ordinary skill in the art would have understood this sensor reading
to be inconclusive or ambiguous as to whether the device is being held by
one hand or by two hands on the same side of the device. Given that “a
determination that the sensor inputs are inconclusive, ambiguous, or
contradictory,” means that the sensor inputs are inconclusive, ambiguous, or
contradictory in any respect, we agree with the Examiner that Cohen at least
inherently discloses a scenario in which the sensor inputs are inconclusive,
ambiguous, or contradictory.
However, that does not end the anticipation analysis before us.
Appellant also argues that Cohen fails to disclose the final two “displaying”
limitations of claim 1, which recite:
displaying the virtual keyboard as a split keyboard on the
display in accordance with a determination that the split
keyboard was the last keyboard displayed in the application
interface prior to detecting the input that corresponds to the
command to display the virtual keyboard; and
displaying the virtual keyboard as an unsplit keyboard on
the display in accordance with a determination that the unsplit
keyboard was the last keyboard displayed in the application
interface prior to detecting the input that corresponds to the
command to display the virtual keyboard.
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Appeal Br. 41 (Claims Appendix). Specifically, Appellant argues:
Cohen does not teach or suggest that a last displayed keyboard
(e.g., graphical keyboard 16A or graphical keyboard l6C) is
displayed when the criteria for the user holding the mobile device
10 with one hand are satisfied. Indeed, Cohen explicitly discloses
that the graphical keyboard 16B, which is different from
graphical keyboard 16A and graphical keyboard l6C, is the only
keyboard displayed in response to satisfying the criteria for the
user holding the mobile device 10 with one hand.[] Moreover,
Cohen fails to teach or suggest that a determination is made that
any of the three graphical keyboards disclosed (i.e., graphical
keyboards 16A, 16B, and 16C) was a last displayed keyboard.
Appeal Br. 25.
With respect to these limitations, the Examiner relies on our prior
decision in this case, where we stated:
Cohen discloses determining whether various criteria are met
and, therefore, at least suggests determining when those criteria
are not met (i.e., when Cohen determines neither a first criteria
is met nor a second criteria is met, Cohen suggests determining
neither criteria is met). See, e.g., Cohen ¶¶ 48 (“continuous
graphical keyboard is graphically positioned . . . opposite from
the side where the user is holding mobile device 10”), 53
(“mobile device 10 may further determine whether the user is
holding mobile device 10 with one hand”), 54 (“mobile device
10 may also determine whether the user is holding mobile device
10 with both hands” and, if so, “mobile device 10 may present a
split graphical keyboard layout”), Figs. 2B, 2C. Furthermore, in
computer graphic display systems that alter the display upon
detecting certain criteria, it appears to follow that Cohen suggests
continuing to display the graphical keyboard layout determined
based on the most recently met criteria until different criteria
exist that trigger changing the graphical display.
Ans. 6–8 (quoting Prior Decision 7–8 n.2). The Examiner states that our
prior decision demonstrates that Cohen discloses the final two limitations of
claim 1. Ans. 7 (“[I]t appears that the decision in prior appeal . . . and the
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Record of Oral Hearing . . . note that Cohen teaches this limitation.”). We
disagree.
Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top-
U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the
strict identity test for anticipation, all elements must be disclosed, in a single
reference, in exactly the same way as they are arranged or combined in the
claim. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
(Fed. Cir. 2010).
The Examiner finds that Cohen discloses the final two limitations of
claim 1 based on our statement in the Prior Decision that “Cohen suggests
continuing to display the graphical keyboard layout determined based on the
most recently met criteria until different criteria exist that trigger changing
the graphical display.” Prior Decision 8 n.2. However, a finding of
anticipation requires more than a suggestion—it requires explicit or inherent
disclosure. The Prior Decision did not find that Cohen discloses the final
two limitations of claim 1. Rather, the Prior Decision indicated that Cohen
would have suggested to a person of ordinary skill the art that a keyboard
layout should be maintained until change-triggering criteria are received.
We agree with Appellant that the cited portions of Cohen do not
disclose a keyboard display protocol that is identical to the final two
limitations of claim 1. As we indicated in the Prior Decision and will
discuss in detail below, Cohen may well suggest such a display protocol, but
Cohen is not sufficient to clear the high bar imposed by the law of
anticipation. As such, we are persuaded the Examiner has erred in rejecting
claim 1 as anticipated by Cohen, and we do not sustain the rejection of
claim 1 under 35 U.S.C. § 102.
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Second Issue
Claim 1 also is separately rejected under 35 U.S.C. § 103 as obvious
over the combined teachings of Cohen and Chornenky. Final Act. 25–30.
The same three limitations are disputed with respect to the obviousness
rejection. In rejecting claim 1, the Examiner again relies upon Cohen as
teaching or suggesting the limitation of “a determination that the sensor
inputs are inconclusive, ambiguous, or contradictory.” Final Act. 28 (citing
Cohen ¶¶ 52, 53, 58, 60). The Examiner also cites Cohen for the
“displaying” limitations, relying again on statements made in the Prior
Decision. Final Act. 29 (citing Prior Decision 7–8). The Examiner further
determines that “[i]n the even[t] that it is determined Cohen does not
explicitly disclose” (Final Act. 30) the “displaying” limitations, the
Examiner additionally relies on Chornenky. Final Act. 30 (citing Chornenky
¶ 86). The Examiner concludes that it would have been obvious “to
combine Chornenky with Cohen ‘for improved virtual and/or physical
keyboards.’” Id. (citing Chornenky ¶ 10).
Appellant argues the anticipation rejection (based on Cohen) and the
obviousness rejection (based on Cohen and/or Cohen/Chornenky) together.
Appeal Br. 17–27. As such, Appellant’s arguments as to Cohen with respect
to the obviousness rejection are the same as those discussed above—(1) that
Cohen does not teach or suggest the limitation “a determination that the
sensor inputs are inconclusive, ambiguous, or contradictory,” and (2) Cohen
does not teach or suggest the “displaying” limitations. Appeal Br. 24–25.
Appellant also offers arguments pertaining to Chornenky. Appeal Br. 26–
27. Noting that “the Examiner relied on Chornenky for allegedly disclosing
[the displaying limitations],” Appellant asserts that “similar to Cohen,
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Chonenky does not teach or suggest an electronic device that displays a last
displayed keyboard in accordance with a determination that sensor inputs are
inconclusive, ambiguous, or contradictory.” Appeal Br. 26. Appellant
further argues that the Board’s statements from the Prior Decision are not
dispositive because the claims have been amended since the prior appeal.
Reply Br. 7.
Appellant further challenges the Examiner’s reliance on Chornenky
for the “displaying” limitations, arguing that the cited paragraph in
Chornenky merely “discloses that sensor inputs indicate a particular
application that caused the keyboard to be launched, and based on those
sensor inputs, the softkeys may be configured as the softkeys were
previously defined and recorded when the particular application was last
run.” Appeal Br. 27. According to Appellant, “nothing in Chornenky
teaches or suggests that ‘previously defined and recorded’ means last
displayed.” Id.
We are not persuaded the Examiner has erred in rejecting claim 1
under § 103. Unlike a rejection under anticipation, there is no “strict
identity” requirement imposed by the law of obviousness. Instead, the
standard for determining whether a claim is obvious is “an expansive and
flexible approach.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007).
Here, Appellant argues that Cohen does not teach the “inconclusive,
ambiguous, or contradictory” limitation. As we discussed above,
Appellant’s argument relies on an unduly narrow interpretation, and for the
same reasons we discussed in connection with the anticipation rejection, we
are not persuaded the Examiner erred in finding Cohen teaches or suggests
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“a determination that the sensor inputs are inconclusive, ambiguous, or
contradictory.”
Having determined supra that Cohen teaches or suggests the recited
“inconclusive, ambiguous, or contradictory” sensor input determination, our
decision with respect to obviousness turns on whether the cited references
teach the displaying limitations. Appellant contends that Cohen does not
teach or suggest the displaying limitations. Although we agreed with
Appellant that Cohen does not identically disclose these limitations and
reversed the anticipation rejection above, we are not persuaded that Cohen
fails to teach, suggest, or otherwise render obvious displaying the previously
displayed keyboard when an ambiguous sensor reading is obtained.
In the Prior Decision we noted that “Cohen suggests continuing to
display the graphical keyboard layout determined based on the most recently
met criteria until different criteria exist that trigger changing the graphical
display.” Prior Decision 8 n.2. We agree with Appellant that this analysis is
not dispositive because the claim has been subsequently amended to specify
that the “displaying” is performed in the context of a determination of
inconclusive, ambiguous, or contradictory sensor input. Nevertheless, we
disagree with Appellant that the subsequent claim amendments require a
conclusion of nonobviousness over the teachings of Cohen and Chornenky.
Cohen teaches that a displayed keyboard can be modified based on
sensor readings regarding how the device is held and/or positioned. As we
discussed supra, Cohen further teaches that the sensor readings may be
ambiguous in certain respects—which is within the broad meaning of “a
determination that the sensor inputs are inconclusive, ambiguous, or
contradictory.” Chornenky demonstrates that it was generally known, in the
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context of virtual keyboards, to maintain default keyboard settings for an
application, and to maintain those settings between application sessions (i.e.,
display a last displayed keyboard). See Chornenky ¶ 86. Taken together, we
agree with the Examiner that a person of ordinary skill in the art, would have
recognized that when the sensor inputs of Cohen are ambiguous in some
respect, it would be beneficial to maintain the prior displayed keyboard as
taught by Chornenky. In such a situation, only a finite number of choices
would be available for responding to the ambiguous sensor input: (1) the
existing keyboard could be maintained, (2) the keyboard could be modified,
or (3) no keyboard could be displayed until useful sensor input is received.
Given the limited available choices, we agree with the Examiner that it
would have been obvious to continue displaying the currently displayed
keyboard in response to an ambiguous sensor reading. As such, we are not
persuaded the Examiner erred in rejecting claim 1 as obvious over the
combined teachings of Cohen and Chornenky.
Third Issue
Claim 6 depends from claim 1 and recites “wherein the first criteria
include that the sensor inputs detect a face in front of the touch-sensitive
display.” Appeal Br. 42 (Claims Appendix). The Examiner finds this
limitation taught or suggested by Tumanov. Final Act. 16–17 (citing
Tumanov ¶¶ 3, 23, 51). Specifically, the Examiner finds Tumanov’s
disclosure that smartphones are typically “held in one hand in front of the
user’s face” teaches this limitation.
Appellant argues the cited portions of Tumanov “generally relate to
determining whether a user is using an electronic device using feedback
from an accelerometer and/or touch signals.” Appeal Br. 30. Appellant
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argues Tumanov is deficient, however, because “Tumanov fails to teach or
suggest that sensors of the smart phone or electronic device detect the user’s
face in any manner.” Appeal Br. 31. According to Appellant, “Tumanov is
completely silent with respect to detecting a user’s face in front of the smart
phone or electronic device, much less displaying a particular keyboard in
response to a determination that the user’s face is, or is not, present in front
of the smart phone or electronic device.” Appeal Br. 31. We agree with
Appellant.
Although Tumanov notes that a smart phone may be easier to use by
holding it in one hand in front of a user’s face, this does not mean that
Tumanov is actually detecting the presence of a face in front of a phone. We
discern no disclosure in Tumanov regarding a sensor that detects a user’s
face. Without any such disclosure, we are constrained by the record to
reverse the rejection of claim 6. For the same reasons, we also do not
sustain the rejection of claim 10, which recites a similar limitation.
Fourth Issue
Claim 5 depends from claim 1 and recites “wherein the first criteria
include that the sensor inputs indicate the device is shaking by less than a
predefined threshold amount.” Appeal Br. 42 (Claims Appendix). The
Examiner rejects claim 5, relying on the teachings of Kim. Final Act. 34
(citing Kim ¶¶ 12, 84). The Examiner finds that Kim’s description of
shaking a mobile device to cause a virtual keyboard to disappear teaches this
limitation. Id.
Appellant argues the cited portion of Kim merely describes causing a
keyboard to disappear, while the claim recites that shaking causes the
keyboard to be displayed. Appeal Br. 35. Appellant further argues that Kim
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is silent with respect to making any determination about shaking being less
than a threshold amount. Appeal Br. 35.
In the Answer, the Examiner further explains that “Cohen . . .
discloses detecting threshold movement, Movement that is more than
movement when resting against the surface,” which, when combined with
Kim’s triggering action based on shaking of the device, teaches the subject
matter recited in claim 5. Ans. 13–14.
In reply, Appellant challenges the Examiner’ reliance on Cohen,
arguing that “[w]hile Cohen discloses that a motion detection unit 36 can
determine an amount of movement of mobile device 28, Cohen is silent with
respect to comparing the amount of movement detected by the motion
detection unit to a predefined threshold amount.” Reply Br. 15–16.
We are persuaded of error. Although Cohen generally describes
detecting motion, nothing in Cohen teaches or suggests detecting that a
device is shaking “less than a predefined threshold amount.” Nor does
Kim’s use of a predetermined time account for Cohen’s deficiency. As
such, we are persuaded the Examiner has erred in rejecting claim 5, and we
do not sustain its rejection. For the same reasons, we also do not sustain the
rejection of claim 9, which recites a similar limitation.
Fifth Issue
Claim 25 recites, inter alia, “displaying a split keyboard selection
affordance.” Appeal Br. 46 (Claims Appendix). The Examiner rejects
claim 25 for lack of written description. Final Act. 3–4. The Examiner finds
that the Specification does not explicitly refer to an affordance, and instead
describes the use of the narrower term “selection key.” Final Act. 4.
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Appellant argues the Examiner erred because there is no in haec verba
requirement for written description, and the application provides an example
of an affordance as a key such that the limitation is adequately supported in
the Specification. Appeal Br. 38. We agree with Appellant.
In rejecting claim 25, the Examiner notes that the definition of
affordance is “the quality or property of an object that defines its possible
users or makes clear how it can or should be used.” Final Act 4 (citing
(https://www.merriamwebster.com/dictionary/affordance)). We agree with
the Examiner’s definition of the term “affordance,” but we do not agree that
under this definition the Specification is deficient. As Appellant correctly
explains, the Specification provides an example of an affordance, which is in
the form of a key. Appeal Br. 38 (citing Spec. ¶¶ 130–137). Moreover, we
note that items 512, 514, and 518, depicted in Figures 5A–5C would have
demonstrated that the inventor possessed the recited “affordances.” As such,
we are persuaded the Examiner erred in rejecting claim 25 for lack of written
description, and we do not sustain the rejection under 35 U.S.C. § 112, first
paragraph.
Remaining Claims
Appellant presents no separate arguments for patentability of any
other claims. Accordingly, we sustain the Examiner’s rejections of these
claims for the reasons stated with respect to the independent claims from
which they depend. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm in part the Examiner’s decision to reject the claims.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7, 8,
11, 21, 22,
23
102 Cohen 1, 2, 4, 7, 8,
11, 21, 22,
23
3, 6, 10 103 Cohen, Tumanov 3, 6, 10
5, 9 103 Cohen, Kim 5, 9
15, 18, 24 103 Cohen, Kyprianou 15, 18, 24
25 103 Cohen, Best
Keyboard
25
1, 2, 4, 7, 8,
11, 21, 22,
23
103 Cohen, Chornenky 1, 2, 4, 7, 8,
11, 21, 22,
23

3, 6, 10 103 Cohen, Chornenky,
Tumanov
3, 6, 10
5, 9 103 Cohen, Chornenky,
Kim
5, 9
15, 18, 24 103 Cohen, Chornenky,
Kyprianou
15, 18, 24
16, 19 103 Cohen, Chornenky,
Kyprianou, Park
16, 19
17, 20 103 Cohen, Chornenky,
Kyprianou, Park,
Lian
17, 20
25 103 Cohen, Chornenky,
Best Keyboard
25
25 112 Written description 25
Overall
Outcome
1, 2, 4, 7, 8,
11, 15–24
3, 5, 6, 9,
10, 25

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).
Appeal 2020-005427
Application 13/797,979

20
AFFIRMED IN PART