Apple Inc.

Patent Trials and Appeals Board

Dec 7, 2021

2020004315 (P.T.A.B. Dec. 7, 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.
15/650,765 07/14/2017 Johannes VAANANEN P12850USXC4/063266-7505US 1009
61725 7590 12/07/2021
Morgan, Lewis & Bockius LLP (PA)(Apple)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
12/07/2021 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 JOHANNES VAANANEN and MANNE HANNULA
_____________

Appeal 2020-004315
Application 15/650,7651
Technology Center 2100
______________

Before ERIC S. FRAHM, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

1 Throughout this opinion, we refer to: (1) the Final Office Action mailed
May 23, 2019 (“Final Act.”); (2) the Advisory Action mailed September 6,
2019; (3) the Appeal Brief filed December 9, 2019 (“Appeal Br.”); (3) the
Examiner’s Answer mailed March 6, 2020 (“Ans.”); (4) the Supplemental
Examiner’s Answer mailed March 27, 2020 (Suppl. Ans.); and (5) the Reply
Brief filed May 22, 2020. We note that the Supplemental Examiner’s
Answer appears to be a duplicate of the first Examiner’s Answer, but is
paginated differently.
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STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention, entitled “Method,
Device and Program for Browsing Information on a Display” (see Title),
“relates to display devices [see Fig. 1, hand-held device 40] where
information can be browsed. In particular, the present invention relates to a
novel and improved method and system for browsing information with
hand-held devices with a display device” (Spec. ¶ 2). According to
Appellant,
When the information to be viewed on the display must be
viewed by parts, it is difficult and slow to browse the whole
information part by part. It is, for example, difficult to display
a wide panorama picture on the display, while at the same time
quickly and easily browsing the picture

(Spec. ¶ 6).
Also according to Appellant,
An objective of the present invention is to adjust the view
on a display device in a manner as natural as possible so that the
user of the hand-held device can concentrate on the information
displayed on the display device and not on the adjustment of the
displayed information.

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). “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).
According to Appellant, Apple Inc. is the real party in interest (Appeal
Br. 3).
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Spec. ¶ 11. With this in mind, Appellant claims a method (claim 1),
electronic device (claim 9), and non-transitory computer readable storage
medium storing a program (claim 17) for causing the electronic device to
change the size of a displayed object on a user interface in response to the
device’s camera detecting a change in distance between a user and the
electronic device (see claims 1, 9, 17). Independent claims 1, 9, and 17 have
commensurate scope, and claim 1 is illustrative of the claimed subject
matter:
1. A method, comprising:
at an electronic device with a display and a camera:
displaying, on the display, a user interface that includes a
user interface object displayed at a first size;
[A] detecting, via the camera, a change in distance
between a user of the electronic device and the electronic device;
and
in response to detecting the change in distance between the
user the electronic device and the electronic device, changing
size of the displayed user interface object.

Appeal Br. 21, Claims Appendix (emphases and bracketed information
added).

EXAMINER’S REJECTIONS
(1) The Examiner rejected claims 1–6, 9–14, and 17–20 under 35
U.S.C. § 102(e) as being anticipated by Bradski (US 2002/0140666 A1;
published Oct. 3, 2002). Final Act. 3–6; Suppl. Ans. 3–5. In the rejection of
claims 1, 9, and 17, the Examiner cites Figures 5–7 and paragraphs 1, 17, 33,
50 of Bradski (see Final Act. 3–4; Suppl. Ans. 3–4; see also Advisory Act.
2).
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(2) Claims 7, 8, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bradski and Lands (US 6,201,554 B1; issued March
13, 2001). Final Act. 6–7; Suppl. Ans. 6–7. In the rejection of claims 7, 8,
15, and 16, the Examiner additionally cites paragraphs 15 and 63 of Bradski
(as teaching changing a zoom factor in relation to distance of the device
from the user), along with portions of Lands (as teaching tilting the device to
change the zoom factor) (see Final Act. 6–7; Suppl. Ans. 6–7, 9; see also
Advisory Act. 2).

ISSUE ON APPEAL
Based on Appellant’s arguments (Appeal Br. 12–14; Reply Br. 1–2),
the following principal issue is presented:
Did the Examiner err in rejecting claims 1–20 because the Examiner
fails to show that Bradski discloses, expressly or inherently, each and every
limitation and element of claims 1, 9, and 17, as arranged in those claims,
including detecting, “via the camera, a change in distance between a user of
the electronic device and the electronic device” (see e.g., claim 1, limitation
A), as set forth in claims 1, 9, and 17?

ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 3–6; Suppl.
Ans. 3–7) and Advisory Action (Advisory Act. 2) in light of Appellant’s
arguments (Appeal Br. 10–20; Reply Br. 4–7) that the Examiner has erred,
as well as the Examiner’s response to Appellant’s arguments in the Briefs
(Suppl. Ans. 7–10). We concur with Appellant’s contentions (Appeal Br.
12–14; Reply Br. 1–2) that the Examiner erred in finding each of
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independent claims 1, 9, and 17 (as well as claims 2–6, 10–14, and 18–20
depending respectively therefrom) anticipated by Bradski.
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
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)).
This is done by presenting, for anticipation, a prima facie case.
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks — the
so-called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
“burden of proof [is] on the [USPTO] to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)); see also Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential) (Examiner has initial burden to
set forth basis for any rejection so as to put Appellant on notice of reasons
why Appellant is not entitled to patent on claim scope sought, i.e., a prima
facie case).
In anticipation, “the Board must compare the construed claim to a
prior art reference and make factual findings that ‘each and every limitation
is found either expressly or inherently in [that] single prior art reference.’”
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In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (citation omitted). In case
of doubt as to whether claims of an application are anticipated, the scales
should be inclined toward the applicant. See In re Coley, 40 F.2d 982, 986
(CCPA 1930) (“Where there is such doubt, the scales should be inclined
toward the applicant.”).
“[F]or the instant rejection under 35 U.S.C. § 102(e) to have been
proper, the [prior art] reference must clearly and unequivocally disclose the
claimed compound or direct those skilled in the art to the compound without
any need for picking, choosing, and combining various disclosures. . . .
Such picking and choosing may be entirely proper in the making of a 103,
obviousness rejection, where the applicant must be afforded an opportunity
to rebut with objective evidence any inference of obviousness . . . , but it has
no place in the making of a 102, anticipation rejection.” In re Arkley, 455
F.2d 586, 587-88 (CCPA 1972). “[D]ifferences between the prior art
reference and a claimed invention, however slight, invoke the question of
obviousness, not anticipation.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added), citing In re Arkley, 455
F.2d 586, 587 (1972).
In the instant case, the Examiner’s notification to Appellant of the
determination of the anticipation of independent claims 1, 9, and 17 is found
at pages 3 through 4 of the Final Action, page 2 of the Advisory Action, and
pages 3 through 4 of the Supplemental Examiner’s Answer. With regard to
claim 1, and specifically limitation A therein, the Examiner, in the (i) Final
Action, relies on paragraphs 33 and 50 and Figure 5 as anticipating the
claimed subject matter set forth in limitation A (see Final Act. 4);
(ii) Advisory Action, relies on Figure 5 (see Advisory Act. 2); and
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(iii) Supplemental Examiner’s Answer, relies additionally on paragraph 17
and Figure 7 (see Suppl. Ans. 4; see also Suppl. Ans. 9).
We address the portions of Bradski relied on by the Examiner as
disclosing limitation A ad seriatim.
Paragraph 33 of Bradski describes Figure 5, and discloses changing a
zoom amount of a displayed object 504/506 based on detecting motion of a
mobile device “from a first position 502a to a second position 502b” (¶ 33).
No user is depicted in Figure 5, and no determination of the “distance
between a user of the electronic device and the electronic device” (claims 1,
9, 17) is disclosed. The device zooms based on an absolute position of the
device relative to a fixed point/object (see ¶¶ 15, 42, 50, 62, 63, p. 5 (claim
15)).
Paragraph 50 of Bradski also describes Figure 5, and discloses an
accelerometer “to detect relative movement, absolute acceleration, and/or
absolute movement by integrating the acceleration” such that motion is
sensed “to enable zooming in and zooming out the virtual space 504 and
506” (¶ 50). Again, no user is depicted in Figure 5, and no determination of
the “distance between a user of the electronic device and the electronic
device” (claims 1, 9, 17) is disclosed. The device zooms based on an
absolute position of the device relative to a fixed point/object (see ¶¶ 15, 42,
50, 62, 63, p. 5 (claim 15)).
As noted above, Figure 5 merely shows a device 502 being moved
perpendicular to an axis from one position (502a) to another (502b). The
embodiment of Figure 5 is described as showing how “moving a mobile
device towards, or away from, the user causes a[] zoomed-in, or zoomed-
out, view of a virtual object to be displayed on the screen of the mobile
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device” (¶ 15). However, this description of Figure 5 is silent as to detecting
the “distance between a user of the electronic device and the electronic
device” and then zooming relative to the detected distance. To the contrary,
Bradski merely discloses zooming based on a detected absolute or relative
distance to an object. And, the description of Figure 5 is silent as to using
the camera of the device to detect the distance (and instead, describes using
a single accelerometer for this purpose).
Paragraph 17 describes another embodiment, that of Figure 7. Figure
7 shows a mobile device 702 being moved from one position (702a) to
another (702b), and using “a camera [704] on the mobile device to recognize
a plurality of external reference points” (¶ 17). As further described in
paragraph 63 of Bradski, and as illustrated in Figure 7,
[T]he mobile device 702 may include a camera 704 which, by
detecting the location of external reference points 710, 712, and
714, may be used to determine the absolute or relative location
and orientation of the mobile device 70[2]. Thus, the mobile
device may display a first view 706 when it is at a first spatial
position 702a and a second view 708 when it is at a second spatial
position 702b.

Bradski ¶ 63 (emphasis added). Although a camera is used to determine
change in position, similar to the claims, only absolute or relative position of
the device is determined, not the “distance between a user of the electronic
device and the electronic device” (claims 1, 9, 17), as claimed. Further, the
change in distance is used to change the view of an object in space (see Fig.
7), not to change the zoom amount, as claimed.
Therefore, because Bradski does not clearly disclose that the zoom
amount is changed in response to the detected “distance between a user of
the electronic device and the electronic device” (claims 1, 9, 17) as claimed,
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the Examiner has not shown all of the elements claimed, as arranged in
claims 1, 9, and 17. To establish anticipation, every element and limitation
of the claimed invention must not only be found in a single prior art
reference, but must be arranged as in the claim. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (emphasis added).
In the case before us, this burden has not been met by the Examiner.
Instead, the Examiner leaves us to speculate as to how to either
modify Bradski to meet the claims, or to somehow and for some reason
combine multiple, distinct teachings to achieve the claimed invention. See
Net MoneyIN, Inc. v. VeriSign, Inc., 545 at 1371; Arkley, 455 F.2d at 587–88
(while “[s]uch picking and choosing may be entirely proper in the making of
a 103, obviousness rejection . . . it has no place in the making of a 102,
anticipation rejection.”); see also In re Chudik, 851 F.3d 1365, 1374 (Fed.
Cir. 2017) (“Prior art that ‘must be distorted from its obvious design’ does
not anticipate a new invention.” (quoting In re Wells, 53 F.2d 537, 539
(CCPA 1931))). Although Bradski’s device could employ the user of the
device as the reference object when determining absolute or relative position
of the device, Bradski does not inherently or expressly disclose such, and the
Examiner has not articulated how/why this would have been obvious.
Furthermore, in finding a claim anticipated under 35 U.S.C. § 102,
the Board cannot “fill in missing limitations” simply because a skilled
artisan would immediately envision them from the prior art. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed.
Cir. 2017) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
1376, 1381 (Fed. Cir. 2015)); see Microsoft Corp. v. Biscotti, Inc., 878 F.3d
1052, 1069 (Fed. Cir. 2017) (citation omitted) (holding “anticipation is not
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proven by ‘multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention”’); see also Microsoft Corp., 878
F.3d at 1086 (Newman, dissenting) (to anticipate, a reference must show
“the same components, having the same function, combined in the same way
for the same purpose”). 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); see also In re Coley, 40 F.2d at 986.
In this light, there are too many differences between what is recited in
claims 1, 9, and 17, and what is disclosed by Bradski, for Bradski to
anticipate the claims. In view of the foregoing, Appellant’s arguments
(Appeal Br. 10–15; Reply Br. 4–5) that Bradski fails to anticipate claims 1,
9, and 17 are persuasive, and Appellant has shown the Examiner’s
anticipation rejection of claims 1–6, 9–14, and 17–20 to be in error. Based
on Bradski’s disclosure discussed above, we find the Examiner improperly
relies upon Bradski to disclose and anticipate the disputed claim limitations
(see Warner, 379 F.2d at 1017), and thus failed to present a prima facie case
of anticipation. As a result, and for similar reasons, we also find the
Examiner has therefore failed to present a prima facie case of obviousness
for claims 7, 8, 15, and 16.

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CONCLUSION3
The Examiner’s rejections of claims 1–20 are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–6, 9–14,
17–20
102(e) Bradski 1–6, 9–14,
17–20
7, 8, 15, 16 103(a) Bradski, Lands 7, 8, 15,
16
Overall
Outcome
1–20

REVERSED

3 Although not before us on Appeal, we leave it to the Examiner to evaluate
whether the independent claims are obvious under 35 U.S.C. § 103(a) over
the combination of Bradski alone or in combination with another reference.
Although not relied on by the Examiner in rejecting claim 1, we note that
Bradski discloses one embodiment where “moving a mobile device towards,
or away from, the user causes a[] zoomed-in, or zoomed-out, view of a
virtual object to be displayed on the screen of the mobile device” (¶ 15). We
note that this embodiment appears to be separate and distinct from the
embodiments Figure 7 which uses the device’s camera to detect motion and
position (see ¶ 17), and Figure 6 which changes a spatial view in response to
detecting a position change using an external camera 602 (see ¶¶ 16, 62),
and that it is improper to cite to multiple embodiments in an anticipation
rejection. 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.