Apple Inc.

Patent Trials and Appeals Board

Dec 28, 2020

2019003742 (P.T.A.B. Dec. 28, 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.
14/536,464 11/07/2014 Nicholas Zambetti P13217US5/063266-5843-
US
1683
61725 7590 12/28/2020
Morgan, Lewis & Bockius LLP (PA)(Apple)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
SPRATT, BEAU D
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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 NICHOLAS ZAMBETTI and
JEFFREY TRAER BERNSTEIN
____________________

Appeal 2019-003742
Application 14/536,464
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
LARRY J. HUME, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 6–26, which constitute all the
claims pending in this application. Claims 4 and 5 have been canceled (see
Appeal Br. 31). 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. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Apple, Inc. (Appeal Br. 4; Reply Br. 3).
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STATEMENT OF THE CASE
Disclosed Invention and Exemplary Claim
Appellant’s disclosed invention, entitled “Device, Method, and
Graphical User Interface for Displaying User Interface Objects
Corresponding to an Application” (Title), “generally relates to electronic
devices [see e.g., Figures 2 and 4A] with touch-sensitive surfaces, including
but not limited to electronic devices with touch-sensitive surfaces that detect
inputs for manipulating user interfaces” (Spec. ¶ 4; see also Figs. 2, 11A).
More specifically, According to Appellant, the present invention relates to
touch pads and touch screen displays that allow for:
adjusting the position and/or size of one or more user interface
objects or activating buttons or opening files/applications
represented by user interface objects, as well as associating
metadata with one or more user interface objects or otherwise
manipulating user interfaces. Exemplary user interface objects
include digital images, video, text, icons, control elements such
as buttons or other graphics.
Spec. ¶ 6 (emphasis added).
Exemplary independent claim 1 under appeal, with emphases and
bracketed lettering added to key portions of the claim at issue, reads as
follows:
1. A non-transitory computer readable storage medium
storing one or more programs, the one or more programs
comprising instructions, which when executed by an
electronic device with a display, a touch-sensitive surface and
one or more sensors to detect intensities of contacts with the
touch-sensitive surface, cause the device to:
[A] display a plurality of application icons, wherein the
plurality of application icons includes a first application icon
corresponding to a first application;
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[B] while a focus selector is over a single application icon,
wherein the single application icon is the first application icon,
detect a gesture that includes a single contact on the touch-
sensitive surface; and
[C] in response to detecting the gesture while the focus
selector is over the first application icon:
in accordance with a determination that the single
contact had a maximum intensity during the gesture that was
above a first intensity threshold and below a second intensity
threshold, the first intensity threshold being greater than a
nominal detection threshold, display an application window of
the first application; and
[D] in accordance with a determination that the
single contact reached an intensity during the gesture that was
above the second intensity threshold, concurrently display
a plurality of reduced-scale representations of currently open
application windows for the first application while maintaining
display of the first application icon.
Appeal Br. 30, Claims App. (emphases and bracketed lettering added).
Remaining independent claims 11 and 12 recite an electronic device having
a display with a touch-sensitive surface (claim 11), and a method (claim 12),
for displaying a plurality of icons and detecting a gesture upon contact of the
touch-sensitive surface “while a focus selector is over s single application
icon” (claims 1, 11, 12).
As discussed below, limitations A, C, and D (see e.g., claim 1), which
are all based on detecting a gesture while a focus selector is over s single
application icon (see e.g., claim 1, limitation B), will be dispositive of the
instant appeal.
The Examiner’s Rejections
(1) Claims 1–3, 10–14, 19–21, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the base combination of Moore (US
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2013/0063389 A1; published March 14, 2013), Geurts et al. (US
2007/0222768 A1; published Sept. 27, 2007) (hereinafter, “Geurts”), and
Lessing et al. (US 2012/0236037 A1; published Sept. 20, 2012) (hereinafter,
“Lessing”). Final Act. 2–16; Ans. 3–16.
(2) Claims 6, 7, 15, 16, 22, and 23 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the base combination of Moore, Geurts,
and Lessing, taken with Desai et al. (US 2012/0084713 A1; published April
5, 2012) (hereinafter, “Desai”). Final Act. 16–19; Ans. 16–20.
(3) Claims 8, 17, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the base combination of Moore, Geurts, and
Lessing, taken with Kim et al. (US 2010/0017710 A1; published Jan. 21,
2010) (hereinafter, “Kim”). Final Act. 19–22; Ans. 20–23.
(4) Claims 9, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the base combination of Moore, Geurts, and
Lessing, taken with Kluttz et al. (US 2012/0311498 A1; published Dec. 6,
2012) (hereinafter, “Kluttz”). Final Act. 22–27; Ans. 23–28.
Appellant’s Dispositive Contention
Appellant contends (see Appeal Br. 13–15; Reply Br. 8–10) the
Examiner erred in rejecting claims 1–3 and 6–26 under 35 U.S.C. § 103(a)
based on, inter alia, the failure of the base combination of Moore, Geurts,
and Lessing to teach or suggest displaying a plurality of icons including a
first application icon corresponding to a first application (see e.g., claim 1,
limitation A), and concurrently displaying a plurality of reduced-scale
representations of currently open application windows for the first
application while maintaining display of the first application icon” (see e.g.,
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claim 1, limitation D) “in response to detecting the gesture while the focus
selector is over the first application icon” (see e.g., claim 1, limitation C).
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 12–
28) and Reply Brief (Reply Br. 7–18), the following dispositive issue is
presented on appeal:
Has Appellant shown that the Examiner erred in rejecting claims 13
and 6–26 under 35 U.S.C. § 103(a) because the combination of Moore,
Geurts, and Lessing fails to teach or suggest A, C, and D, as recited in
claim 1 (see claim 11), and as commensurately recited in remaining
independent claims 11 and 12?
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br.
12–28; Reply Br. 2–18), the Examiner’s rejection as to claims 1, 11, and 12
(Final Act. 3–5, 7–13; Ans. 3–6, 8–14), as well as the Advisory Action
mailed October 10, 2018 (p. 2), and the Examiner’s response (Ans. 28–31)
to Appellant’s arguments in the Appeal Brief. We are persuaded by
Appellant’s contentions that the Examiner has not sufficiently shown that
the combination of applied references, teaches or suggests the subject matter
recited in limitations A, C, and D of claim 1, and the commensurate
limitations found in remaining independent claims 11 and 12 (see Appeal
Br. 13–15; Reply Br. 8–10). Our reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
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quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In this light, and in view of the Examiner’s explanations as to the
basis for the rejection of claim 1 (see Final Act. 3–5; Ans. 3–6), it is not
sufficiently clear which of the four applied references the Examiner mapped
to each claim limitation, because the Examiner maps multiple references to
individual limitations. Specifically, the Examiner cites to Lessing as
teaching limitation D of claim 1 (see Final Act. 5; Ans. 5–6). The Examiner
further finds that:
Lessing teaches previewing applications that may or may not be
already open and the previews themselves can change size (or
control amount displayed) (see Lessing ¶11 “the application may
be opened” and ¶57 “application is already open”). Further
Lessing Fig. 14-15 illustrate previews from different applications
represented by different icons such as email and phone more
examples discussed in Lessing ¶35 the icons are shown in both
figures as the preview opens.
Ans. 30.
However, even if Lessing teaches concurrent display of reduced-scale
representations as set forth in limitation D of claim 1, Lessing is notably
silent as to doing so “in accordance with a determination that the single
contact reached an intensity during the gesture that was above the second
threshold” (claim 1, limitation D), while displaying icons including a first
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application icon (claim 1, limitation A), and most importantly, doing so “in
response to detecting the gesture while the focus selector is over the first
application icon” (claim 1, limitation C). And, the Examiner’s additional
reliance on Geurts as teaching multiple preview windows (see Ans. 30–31
citing Geurts ¶ 27) does not cure this deficiency, because even if Geurts
teaches previewing thumbnails, Geurts is silent as to doing so “in
accordance with a determination that the single contact reached an intensity
during the gesture that was above the second threshold” (claim 1, limitation
D), while displaying icons including a first application icon (claim 1,
limitation A), and most importantly, doing so “in response to detecting the
gesture while the focus selector is over the first application icon” (claim 1,
limitation C).
As a result, we are persuaded by Appellant’s argument in the Reply
Brief:
Thus, the Examiner’s Answer fails to rebut the Appellant’s
arguments that Moore in view of Geurts and Lessing does not
teach or suggest “a plurality of reduced-scale representations of
currently open application windows for the first application” that
are “concurrently display[ed] . . . while maintaining display of
[a] first application icon” “corresponding to the first
application,” as recited by claim 1.
Reply Br. 10.
Thus, the Examiner makes insufficient findings as to how/why any
combination of Moore, Geurts, and Lessing disclose, teach, or suggest
displaying a plurality of icons including a first application icon
corresponding to a first application, and concurrently displaying a plurality
of reduced-scale representations of currently open application windows for
the first application while maintaining display of the first application icon in
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response to detecting the gesture while the focus selector is over the first
application icon, as required by claims 1, 11, and 12 (see e.g., claim 1,
limitations A, C, D).
At best, the Examiner’s proposed combination leaves us to speculate
as to how or why one of ordinary skill in the art would modify Moore and
Geurts with Lessing to meet limitations A, C, and D recited in claim 1, and
the commensurate limitations recited in claims 11 and 12. See In re Warner,
379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999)
(unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process
whereby the examiner . . . invite[s] the [B]oard to examine the application
and resolve patentability in the first instance.”).
In view of the foregoing, we agree with Appellant’s contentions
(Appeal Br. 13–15; Reply Br. 8–10) that the Examiner has not adequately
shown that (i) Lessing teaches or suggests limitations A and C recited in
claim 1; and thus (ii) the combination of Moore, Geurts, and Lessing teaches
or suggests limitations A, C, and D of claim 1, and the commensurate
limitations recited in claims 11 and 12. Simply put, the Examiner has not
shown that any of the applied references are concerned in any way with (i)
displaying a plurality of icons including a first application icon
corresponding to a first application (see e.g., claim 1, limitation A); and (ii)
concurrently displaying a plurality of reduced-scale representations of
currently open application windows for the first application while
maintaining display of the first application icon” (see e.g., claim 1, limitation
D) “in response to detecting the gesture while the focus selector is over the
first application icon” (see e.g., claim 1, limitation C) (emphasis added).
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Based on the record before us, we find that the Examiner
(i) incorrectly relies upon the combination of Moore, Geurts, and Lessing to
teach or suggest limitations A, C, and D in claim 1, and the commensurate
limitations recited in claims 11 and 12; and thus, (ii) has not properly
established factual determinations and articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness for claims 1, 11,
and 12, resulting in a failure to establish a prima facie of obviousness. The
Examiner has not sufficiently shown the combination of applied references
teaches or suggests limitations A, C, and D recited in claim 1, and as
commensurately recited in claims 11 and 12.
As a result, based on the record before us, Appellant has shown the
Examiner erred in rejecting independent claims 1, 11, and 12, and thus
claims 2, 3, 10, 13, 14, 19–21, and 26 depending respectively therefrom,
under 35 U.S.C. § 103(a), and we cannot sustain the Examiner’s obviousness
rejection of claims 1–3, 10–14, 19–21, and 26 over the base combination of
Moore, Geurts, and Lessing.2 For similar reasons as provided for claims 1,
11, and 12, and because claims 6–9, 15–18, and 22–25 ultimately depend
from claims 1, 11, and 12, respectively, we likewise cannot sustain the
Examiner’s obviousness rejection of claims 6–9, 15–18, and 22–25 over the
same base combination of Moore, Geurts, and Lessing, further in view of

2 We recognize that Appellant’s arguments concerning the obviousness
rejections present additional issues (see, e.g., Appeal Br. 16–28; Reply Br.
10–18). Because we were persuaded of error by the issue regarding
limitations A, C, and D, as recited in claim 1 and similarly recited in claims
11 and 12, we do not reach the additional issues (e.g., such as to dependent
claims 6, 7, 8, and 9 argued separately), as the issue as to limitations A, C,
and D is dispositive of the appeal.

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Desai (claims 6, 7, 15, 16, 22, and 23), Kim (claims 8, 17, and 24), or Kluttz
(claims 9, 18, and 25).

CONCLUSION
For all of the reasons above, we hold as follows:
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 10–14,
19–21, 26
103(a) Moore, Geurts,
Lessing
1–3, 10–14,
19–21, 26
6, 7, 15, 16,
22, 23
103(a) Moore, Geurts,
Lessing, Desai
6, 7, 15, 16,
22, 23
8, 17, 24 103(a) Moore, Geurts,
Lessing, Kim
8, 17, 24
9, 18, 25 103(a) Moore, Geurts,
Lessing, Kluttz
9, 18, 25
Overall
Outcome
1–3, 6–26

REVERSED