Apple Inc.

Patent Trials and Appeals Board

Apr 12, 2021

2019006764 (P.T.A.B. Apr. 12, 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.
14/867,892 09/28/2015 Chanaka G. Karunamuni P28611USC2/63266-7345-
US
5559
61725 7590 04/12/2021
Morgan, Lewis & Bockius LLP (PA)(Apple)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
LIN, HANG
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
04/12/2021 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):
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 CHANAKA G. KARUNAMUNI, MARCOS ALONSO RUIZ,
JONATHAN R. DASCOLA, OLIVIER D.R. GUTKNECHT,
PETER L. HAJAS, KENNETH L. KOCIENDA, KEVIN E. RIDSDALE,
and SOPHIA TEUTSCHLER
________________

Appeal 2019-006764
Application 14/867,892
Technology Center 2600
____________

Before THU A. DANG, SCOTT B. HOWARD, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒26.1 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 Apple Inc. as the real party in interest.
Appeal Br. 4.
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Application 14/867,892

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STATEMENT OF THE CASE
Introduction
The claimed subject matter relates to processing touch inputs on
electronic devices. Spec. ¶ 7. Claim 1 is illustrative of the appealed subject
matter and reads as follows:
1. A method, comprising:
at an electronic device with a display, a touch-sensitive
surface, and one or more sensors to detect intensity of contacts
with the touch-sensitive surface:
displaying a first user interface;
while displaying the first user interface, detecting a
plurality of inputs on the touch-sensitive surface, wherein each
input is continuously detected on the touch-sensitive surface,
and wherein each input includes a first portion that includes a
contact on the touch-sensitive surface and a second portion that
is subsequent to the first portion and that includes a change in
intensity of the contact;
in response to detecting each input in the plurality of
inputs:
in response to detecting at least the first portion of
the input, identifying a plurality of different gesture
recognizers that correspond to at least the first portion of
the input, the identified gesture recognizers including a
first gesture recognizer that is configured to recognize a
tap gesture and a second gesture recognizer that is
distinct from the first gesture recognizer and configured
to recognize an intensity-based gesture;
while the first gesture recognizer is in a state that
indicates that the first gesture recognizer is capable of
recognizing the input as a tap gesture, and the second
gesture recognizer is in a state that indicates that the
second gesture recognizer is capable of recognizing the
input as an intensity-based gesture, detecting the second
portion of the input; and,
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in response to detecting the second portion of the
input while displaying the first user interface:
in accordance with a determination by the
second gesture recognizer that the input satisfies
intensity input criteria that require that the input
satisfy a first intensity threshold and that a duration
of the input continuously detected on the touch-
sensitive surface exceed a first predefined time
period:
transitioning the second gesture
recognizer into a state that indicates that the
input has been recognized as an intensity-
based gesture and performing a first
operation in accordance with the transition
of the second gesture recognizer into the
state that indicates that the input has been
recognized as an intensity-based gesture;
and
transitioning the first gesture
recognizer into a state that indicates that the
input will not be recognized by the first
gesture recognizer; and,
in accordance with a determination by the
first gesture recognizer that the input satisfies tap
criteria including that the input is removed from
the touch-sensitive surface prior to an end of the
first predefined time period, transitioning the first
gesture recognizer into a state that indicates that
the input has been recognized as a tap gesture and
performing a second operation that is distinct from
the first operation in accordance with the transition
of the first gesture recognizer into the state that
indicates that the input has been recognized as a
tap gesture;
wherein each respective gesture recognizer of the
identified gesture recognizers has a respective state
determined by the respective gesture recognizer;
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Application 14/867,892

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wherein the plurality of inputs includes at least one input
that satisfies the intensity input criteria, and at least one input
that satisfies the tap criteria.
The Examiner’s Rejections
Claims 1‒15 and 17‒26 stand rejected under 35 U.S.C. § 103 as
unpatentable over Rimas-Ribikauskas (US 2006/0132455 A1; June 22,
2006), Weng (US 2013/0278520 A1; Oct. 24, 2013), and Reeve (US
2016/0062619 A1; Mar. 3, 2016). Final Act. 3‒43.
Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Rimas-Ribikauskas, Weng, Reeve, and Yoon (US 2011/0063248 A1; Mar.
17, 2011). Final Act. 43‒44.
ANALYSIS
The Examiner finds the combination of Rimas-Ribikauskas, Weng,
and Reeve teaches or suggests “in response to detecting at least the first
portion of the input, identifying a plurality of different gesture recognizers,”
as recited in claim 1. Final Act. 5‒6. In particular, the Examiner finds
Rimas-Ribikauskas teaches a touch screen that, when turned on, is capable
of recognizing gestures such as normal taps or hard taps. Ans. 6 (citing
Rimas-Ribikauskas ¶ 89, Figs. 18‒19). The Examiner finds that the turning
on of the touch screen teaches identification of gesture recognizers. Id.
Appellant argues the Examiner errs because Rimas-Ribikauskas does
not teach or suggest identifying a plurality of different gesture recognizers
“in response to detecting at least the first portion of the input.” Appeal
Br. 19‒21. Appellant argues the Examiner’s findings do not account for the
“in response to” condition because a touch screen that identifies gesture
recognizers upon being turned on does not identify the gesture recognizers in
response to detecting touch input. Id. Appellant argues the Examiner has,
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Application 14/867,892

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therefore, not explained how the alleged normal and hard tap gesture
recognizers are identified after and in response to detecting an input. Reply
Br. 9.
Appellant has persuaded us of Examiner error. Claim 1 recites
“detecting a plurality of inputs on the touch-sensitive surface.” Claim 1
further recites a series of steps performed “in response to detecting each
input in the plurality of inputs.” These steps include “in response to
detecting at least the first portion of the input, identifying a plurality of
different gesture recognizers that correspond to at least the first portion of
the input.” Thus, claim 1 first requires detection of an input, including at
least a “first portion that includes a contact on the touch-sensitive surface.”
In response to this detection, claim 1 recites “identifying a plurality of
different gesture recognizers.” The Examiner’s findings regarding Rimas-
Ribikauskas at most establish that the reference teaches identifying a
plurality of gesture recognizers. However, the Examiner has not shown, nor
have we found, any teaching in Rimas-Ribikauskas of performing this
identification “in response to detecting at least the first portion of the input.”
Accordingly, we are constrained by the record to agree with Appellant
that the Examiner errs in finding the combination of Rimas-Ribikauskas,
Weng, and Reeve teaches or suggests “in response to detecting at least the
first portion of the input, identifying a plurality of different gesture
recognizers,” as recited in claim 1. For these reasons,2 we do not sustain the
Examiner’s obviousness rejection of claim 1.3 We also do not sustain the

2 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
3 In the event of further prosecution, including any review for allowance, we
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Examiner’s obviousness rejection of independent claims 18 and 19, which
recite commensurate subject matter. By virtue of their dependency from one
of these independent claims, we also do not sustain the Examiner’s
obviousness rejection of dependent claims 2‒15, 17, and 20‒26 for the same
reasons.
Claim 16 stands rejected as unpatentable over Rimas-Ribikauskas,
Weng, Reeve, and Yoon. Final Act. 43‒44. The Examiner does not find that
Yoon teaches or suggests instructions executable by the processor to “in
response to detecting at least the first portion of the input, identifying a
plurality of different gesture recognizers,” as recited in claim 1. See id.
Accordingly, we also do not sustain the Examiner’s obviousness rejection of
claim 16 for the same reasons discussed above.

leave it to the Examiner to consider whether claim 1 is indefinite under
35 U.S.C. § 112(b) for adding an apparatus limitation (an electronic device)
to a method claim. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (holding invalid a claim covering both a system
and a method as a hybrid claim); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011). In each of
these cases, the Federal Circuit held claims indefinite for combining two
classes of invention. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02
(9th ed. Rev. 10.2019, rev. June 2020).
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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1‒15, 17‒
26
103(a) Rimas-Ribikauskas,
Weng, Reeve
1‒15, 17‒26
16 103(a) Rimas-Ribikauskas,
Weng, Reeve, Yoon
16
Overall
outcome
1‒26

REVERSED