Apple Inc.

Patent Trials and Appeals Board

Jan 27, 2021

2019005453 (P.T.A.B. Jan. 27, 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.
14/866,992 09/27/2015 Chanaka G. Karunamuni P28611US1/63266-7310-
US
1084
61725 7590 01/27/2021
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
01/27/2021 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,
GREGORY M. APODACA, JONATHAN R. DASCOLA,
CHRISTOPHER P. FOSS, OLIVIER D.R. GUTKNECHT,
PETER L. HAJAS, MICHAEL T. JUREWITZ,
KENNETH L. KOCIENDA, JAMES R. MONTGOMERIE,
KEVIN E. RIDSDALE, and SOPHIA TEUTSCHLER
_____________

Appeal 2019-005453
Application 14/866,992
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1–57. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is Apple, Inc. See Appeal Br. 4.
Appeal 2019-005453
Application 14/866,992

2
STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “electronic devices
with touch-sensitive surfaces, including but not limited to electronic devices
with sensors to detect intensity of contacts on touch-sensitive surfaces.”
Spec. 3.
Independent Claim 1
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 an input on
the touch-sensitive surface; and,
[L1] disambiguating, with respect to the input, between a tap
gesture, a deep press gesture, and a long press gesture,
including, in response to detecting the input on the touch-
sensitive surface while displaying the first user interface:
[L2] in accordance with a determination that the input is a tap
gesture that satisfies tap criteria including that the input ceases
to remain on the touch-sensitive surface during a first predefined
time period since the input was detected, performing a first
operation;
in accordance with a determination that the input is a deep
press gesture that satisfies deep press intensity input criteria
including that the input satisfies a first intensity threshold during
a second predefined time period since the input was detected that
is longer than the first predefined time period, while the input is

2 We herein refer to the Final Office Action, mailed August 28, 2018 (“Final
Act.”); Appeal Brief, filed January 25, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed May 9, 2019 (“Ans.”); and the Reply Brief, filed July 9,
2019 (“Reply Br.”).
Appeal 2019-005453
Application 14/866,992

3
maintained on the touch-sensitive surface, performing a second
operation that is distinct from the first operation as a result of the
input satisfying the first intensity threshold, even if the second
predefined time period has not yet been met; wherein the first
predefined time period and the second predefined time period
both start in response to detecting the input on the touch-sensitive
surface; and
[L3] in accordance with a determination that the input is
a long press gesture that satisfies long press criteria including
that the input remains below the first intensity threshold during
the second predefined time period and is continuously detected
on the touch-sensitive surface through an end of the second
predefined time period, performing a third operation that is
distinct from the first operation and the second operation.
Appeal Br. 34, “CLAIMS APPENDIX” (bracketed lettering and emphasis added
to disputed limitations).

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Pallakoff US 2005/0012723 A1 Jan. 20, 2005
Rimas-Ribikauskas et al. US 2006/0132455 A1 June 22, 2006
Migos et al. US 2010/0149096 A1 June 17, 2010
Sasaki US 2012/0038580 A1 Feb. 16, 2012
Liu et al. US 2013/0326420 A1 Dec. 5, 2013

Appeal 2019-005453
Application 14/866,992

4
Rejections
Rej. Claims Rejected 35 U.S.C.
§
Reference(s)/Basis
A 1–10, 14–17, 19–
32, 36–39, 41–49,
53–56
103 Rimas-Ribikauskas et al. (“Rimas”),
Pallakoff
B 11, 33, 50 103 Rimas, Pallakoff, Sasaki
C 12, 13, 34, 35, 51,
52
103 Rimas, Pallakoff, Migos et al.
(“Migos”)
D 18, 40, 57 103 Rimas, Pallakoff, Liu et al. (“Liu”).
Analysis
Issue under § 103
Issue: Under 35 U.S.C. § 103, we focus our analysis on the following
argued limitations regarding Rejection A of independent claim 1.
Did the Examiner err by finding that Rimas and Pallakoff in
combination teach or suggest limitations L1, L2, and L3:
[L1] disambiguating, with respect to the input, between a tap
gesture, a deep press gesture, and a long press gesture,
including, in response to detecting the input on the touch-
sensitive surface while displaying the first user interface:
[L2] in accordance with a determination that the input is a tap
gesture that satisfies tap criteria including that the input ceases
to remain on the touch-sensitive surface during a first predefined
time period since the input was detected, performing a first
operation;
in accordance with a determination that the input is a deep press
gesture that satisfies deep press intensity input criteria including
that the input satisfies a first intensity threshold during a second
predefined time period since the input was detected that is longer
than the first predefined time period, while the input is
maintained on the touch-sensitive surface, performing a second
operation that is distinct from the first operation as a result of the
input satisfying the first intensity threshold, even if the second
Appeal 2019-005453
Application 14/866,992

5
predefined time period has not yet been met; wherein the first
predefined time period and the second predefined time period
both start in response to detecting the input on the touch-
sensitive surface; and
[L3] in accordance with a determination that the input is a long
press gesture that satisfies long press criteria including that the
input remains below the first intensity threshold during the
second predefined time period and is continuously detected on
the touch-sensitive surface through an end of the second
predefined time period, performing a third operation that is
distinct from the first operation and the second operation[,]
within the meaning of independent claim 1?3

Appellant contends “the claims require disambiguation between one
shorter gesture for which intensity criteria are not recited and each of two
longer gestures with specific recited intensity criteria. These features are not
taught or suggested by the cited references.” Appeal Br. 14.
Appellant argues:
[T]hat while Rimas describes distinguishing between the three
different taps-a [normal] tap, a medium tap, and a hard tap-Rimas
uses the same predefined time period, defined by a maximum
time threshold, for identifying all three of these tap gestures, as
shown in Figs. 21-24. In addition, the maximum time threshold,
shown in Fig. 21-24, that is used for all three of the tap gestures
in Rimas is used for determining the maximum pressure
threshold satisfied by the input during that predefined time
period, and is not a maximum time limit for completion of a tap
gesture. As such, there is no basis for asserting that the “normal
tap” in Rimas corresponds to the claimed shorter “tap gesture”

3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2019-005453
Application 14/866,992

6
while the “hard tap” and “medium tap” in Rimas correspond to
the two claimed longer gestures.
Appeal Br. 15.
Appellant further contends:
While Pallakoff paragraph [00194] suggests a maximum
duration for the tap portion(s) of the tap gestures (“touching a
given spot on a touch-sensitive area briefly (for example, for less
than a certain amount of time such as 0.3 second or less)”) that
is alleged to correspond to the claimed “first time period,”
Pallakoff requires a break in the input at or before the maximum
time, and thus does not supply the claimed “second time period”
during which the input must continuously remain on the touch-
sensitive surface in order to result in either the claimed long press
or the claimed deep press. Pallakoff does not supply multiple
longer non-tap gestures (where the input is maintained, or
continuously detected, on the touch sensitive surface) between
which to disambiguate. Nor does Pallakoff use intensity input
criteria as a factor in distinguishing between gestures. The only
non-tap gesture discussed by Pallakoff, the swipe gesture, is
defined with respect to movement of a finger, without reference
to any time period or intensity criteria, and the swipe gesture of
Pallakoff is noticed by the Examiner as a basis for the rejection
of the independent claims. Thus, all of the gestures in Rimas and
Pallakoff that form the basis for the rejection of the independent
claims are tap gestures.
Appeal Br. 15–16.
Appellant additionally argues that the long press gesture recited in
claim 1 limitation L3 is not taught by the cited references. Appeal Br. 21–
22.
The Examiner finds Rimas’s tap, hard tap and medium tap teach or at
least suggest the recited tap, deep press and long press gestures. See Rimas
¶¶ 88–89, Fig. 24, Ans. 6, Final Act. 5. The Examiner further finds Rimas’s
time threshold 2403 of Fig. 24 teaches or at least suggests a second time
Appeal 2019-005453
Application 14/866,992

7
period, where Rimas’s ¼ of a second time period teaches or at least suggests
the recited second time period. Ans. 6. The Examiner finds Pallakoff’s first
time period of 0.2 seconds and touch duration of 0.3 seconds teaches or at
least suggests the recited tap criteria. Ans. 6–7. Pallakoff ¶ 194.
As a matter of claim construction, Appellant’s Specification describes
a “deep press” input as an increase of characteristic intensity of the contact
from an intensity below an intensity threshold to an intensity above the
intensity threshold. See Spec. ¶ 201. Appellant’s Specification also
describes a tap gesture includes a touch-down event followed by a lift-off
event at the same position as the touch-down event (e.g., at the position of an
icon). See Spec. ¶ 171. Appellant’s Specification further describes a long
press gesture as one that satisfies the long press criteria including that the
input remains below the first intensity threshold during the first predefined
time period. See Spec. ¶ 19.
We are not persuaded by Appellant’s arguments and do not find error
in the Examiner’s legal conclusion of obviousness because we find Rimas’s
three different tap pressures (normal, medium, hard) suggest the recited tap
and deep press gestures. See Rimas, Fig. 24. Moreover, we find Pallakoff’s
tap and swipe gestures that are performed over different lengths of time also
suggest the recited tap and long press gestures over the first and second
predefined time periods, as claimed. See Pallakoff ¶ 194.
Our reviewing court guides that nonobviousness cannot be established
by attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Moreover, the test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
Appeal 2019-005453
Application 14/866,992

8
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, to the extent Appellant interprets the references4 without
directly addressing the Examiner’s specific findings (Appeal Br. 15–16), we
find Appellant is arguing the references separately. Moreover, we conclude
the Examiner’s broader interpretations of the claim 1 terms (“tap gesture, a
deep press gesture, and a long press gesture” during the recited first and
second time periods) are not inconsistent with the Specification, because we
do not find the supporting exemplary descriptions in the Specification
preclude the Examiner’s interpretation of the disputed limitations. (emphasis
added).
Because Appellant's arguments are directed to attacking the references
in isolation, and not to the Examiner’s proffered modification of the Rimas
and Pallakoff gestures with Pallakoff’s time periods, on this record, we are
not persuaded the Examiner erred.

4 We do not interpret the reference and read it on the claim — Appellant has
it backwards. See Appeal Br. 15–16. Instead, we do the broadest reasonable
interpretation of the claim language and read it on the corresponding
feature(s) found in the reference, as mapped by the Examiner. Cf. Atlas
Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.”). See also Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and
obviousness under § 103 are two-step inquiries. The first step in both
analyses is a proper construction of the claims . . . The second step in the
analyses requires a comparison of the properly construed claim to the prior
art.” (internal citations omitted)) (emphasis added).
Appeal 2019-005453
Application 14/866,992

9
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Moreover, the question under 35
U.S.C. § 103 “is not merely what the references expressly teach but what
they would have suggested to one of ordinary skill in the art at the time the
invention was made.” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (emphasis added); see also MPEP § 2123.
This reasoning is applicable here. Although we have fully considered
Appellant’s arguments, on this record, we are not persuaded that the
Examiner has erred.
Appellant additionally argues a lack of motivation and reliance on
impermissible hindsight regarding the Examiner’s finding of motivation to
combine the references. See Appeal Br. 20.
But Appellant has not identified knowledge gleaned only from the
present application that was not within the level of ordinary skill at the time
the claimed invention was made. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971). Moreover, Appellant has not provided any objective
evidence of secondary considerations (e.g., unexpected results), which our
reviewing court guides “operates as a beneficial check on hindsight.” Cheese
Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Nor does Appellant point to any evidence of record that shows
combining the teachings of Rimas and Pallakoff in the manner found by the
Examiner would have been “uniquely challenging or difficult for one of
Appeal 2019-005453
Application 14/866,992

10
ordinary skill in the art” or would have “represented an unobvious step over
the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
It is our view that the Examiner’s proffered combination of the
respective cited features of Rimas and Pallakoff would have merely realized
a predictable result.5 See Final Act. 8–10.
Therefore, on this record, we find the Examiner has provided a
sufficient “rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). Based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness regarding Rejection A of
independent claim 1, and Rejection A of independent claims 19 and 20,
which recite similar limitations of commensurate scope.
Although Appellant raises additional arguments urging the
patentability of selected dependent claims 24–26, 37, 41–43, and 54 (Appeal
Br. 23–31), we find that the Examiner has rebutted in the Answer each of
those arguments by a preponderance of the evidence. See Ans. 17–25.
Therefore, we agree with and adopt the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness, which we incorporate
herein by reference. Consequently, we have fully considered Appellant
arguments, but on this record we are not persuaded the Examiner erred
regarding the Rejection A of dependent claims 24–26, 37, 41–43, and 54.

5 “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
Appeal 2019-005453
Application 14/866,992

11
Accordingly, we sustain the Examiner’s Rejection A of independent
claims 1, 19, and 20 under 35 U.S.C. §103. For the same reasons, we also
sustain the Examiner’s Rejection A of the remaining grouped dependent
claims, which fall with the independent claim from which they respectively
depend. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejections B–D of Dependent Claims 11–13, 18, 33–35, 50–52, and 57
Appellant does not advance separate, substantive arguments for
dependent claims 11–13, 18, 33–35, 50–52, and 57, as rejected under
Rejections B–D. Arguments not made are forfeited. See 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s obviousness
Rejections B–D of remaining claims 11–13, 18, 33–35, 50–52, and 57.

CONCLUSION
The Examiner did not err in rejecting claims 1–57, as being obvious
under 35 U.S.C. § 103, over the cited combinations of references.

Appeal 2019-005453
Application 14/866,992

12
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10,
14–17,
19–32,
36–39,
41–49,
53–56
103 Rimas, Pallakoff 1–10,
14–17,
19–32,
36–39,
41–49,
53–56

11, 33, 50 103 Rimas, Pallakoff,
Sasaki
11, 33, 50
12, 13,
34, 35,
51, 52
103 Rimas, Pallakoff,
Migos
12, 13,
34, 35,
51, 52

18, 40, 57 103 Rimas, Pallakoff,
Liu
18, 40, 57
Overall
Outcome
1–57

FINALITY AND 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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED