Apple Inc.

Patent Trials and Appeals Board

Jan 21, 2022

2021000516 (P.T.A.B. Jan. 21, 2022)

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. 15/676,954 08/14/2017 Joshua H. Shaffer P19914USC1/063266-7509- US 8904 61725 7590 01/21/2022 Morgan, Lewis & Bockius LLP (PA)(Apple) 1400 Page Mill Road Palo Alto, CA 94304-1124 EXAMINER ELNAFIA, SAIFELDIN E ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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 JOSHUA H. SHAFFER ____________________ Appeal 2021-000516 Application 15/676,954 Technology Center 2600 ____________________ Before MARC S. HOFF, ELENI MANTIS MERCADER, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, 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 2, 3, 7-9, 13-16, 20, and 21. Claim 1 has been cancelled. The Examiner has indicated that claims 4-6, 10-12, and 17-19 contain allowable subject matter. Final Act. 8. 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 the real party in interest as Apple Inc. Appeal Br. 3. Appeal 2021-000516 Application 15/676,954 2 CLAIMED SUBJECT MATTER Claim 2 is illustrative of the claimed subject matter (emphasis added): 2. A method comprising: at an electronic device with a touch-sensitive surface: detecting an input on the touch-sensitive surface; and in response to detecting the input: processing the input with a first gesture recognizer for an operating system application, to determine whether the first gesture recognizer recognizes the input as a gesture; processing the input with a second gesture recognizer for a first software application that is distinct from the operating system application, to determine whether the second gesture recognizer recognizes the input as a gesture; in accordance with a determination that the first gesture recognizer recognizes the input as an edge swipe gesture, based on the input including a swiping movement of a contact that originates from a location at an edge of the touch-sensitive surface, performing an operation defined by the operating system application and transitioning the second gesture recognizer into an event impossible state; and in accordance with a determination that the second gesture recognizer recognizes the input as a gesture other than an edge swipe gesture, delaying performance of an operation defined by the first software application for the input until the first gesture recognizer indicates that the input does not match a gesture definition of the first gesture recognizer. Appeal Br. 18 (Claims Appendix). REJECTION Claims 2, 3, 7-9, 13-16, 20, and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Shaffer (2011/00179380, published July Appeal 2021-000516 Application 15/676,954 3 21, 2011) in view of Frederickson (US 2014/0310661 A1, published October 16, 2014). ANALYSIS We select claim 2 as the representative claim for this rejection.2 The contentions discussed herein as to claim 2 are dispositive as to this rejection. We have reviewed the Examiner’s rejection of claim 2 in light of Appellant’s arguments that the Examiner has erred. Appellant’s contentions we discuss are dispositive as to the rejection on appeal. Therefore, Appellant’s other contentions are not discussed in detail herein. Claim 2 recites inter alia: in accordance with a determination that the first gesture recognizer recognizes the input as an edge swipe gesture, based on the input including a swiping movement of a contact that originates from a location at an edge of the touch-sensitive surface, performing an operation defined by the operating system application and transitioning the second gesture recognizer into an event impossible state (hereinafter “disputed prioritization limitations”). In rejecting claim 2, the Examiner finds that the combination of Shaffer ‘380 and Frederickson teaches the disputed prioritization limitations. Final Act. 4-6 (citing Shaffer ‘380 ¶¶ 159, 303, 304, 309, and 310; Figures 7G, 9B, and 9C; and Frederickson ¶¶ 32-35; Figure 3). The Examiner also finds: Shaffer ‘380 taught the first gesture recognizer and the second gesture recognizer to recognize the input as a gesture and also taught give priority to process one gesture recognizer before the other gesture recognizer, in other words to delay delivering one or more sub-events of the sequence of sub-events until after the event recognizer recognizes 2 Independent claims 8 and 15 recite similar subject matter. Appeal 2021-000516 Application 15/676,954 4 the event, for example a single tap gesture in a view for which multiple tap gestures are possible. Fredrickson taught the gesture recognizer recognizes the input as an edge swipe gesture. Ans. 5. (Emphasis added, hereinafter the delay feature) Appellant contends that, and we agree: Shaffer ‘380 at best relate to giving priority to one gesture recognizer over another gesture recognizer for processing ‘a single tap gesture in a view for which multiple tap gestures are possible.’ These remarks do not address giving priority for processing gestures to a first gesture recognizer of an operating system application over a second gesture recognizer of another application generally, nor of giving priority to the first gesture recognizer of the operating system application for specifically processing edge swipe gestures. Reply Br. 7, 8. (Emphasis added). We agree the Examiner has not adequately addressed Appellant’s contentions and find the Examiner has not fully developed the record to show how the delay feature of Shaffer ‘380, when modified by Frederickson, teaches the disputed prioritization limitations, as recited in independent claim 2, and recited in similar form having commensurate scope in independent claims 8 and 15. In an ex parte appeal, the Board “is basically a board of review - we review … rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner … invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because the Board is “basically a board of review,” Ex parte Gambogi, 62 USPQ2d at 1211, and not a place of initial examination, we will not engage in the de novo examination required to precisely map the Appeal 2021-000516 Application 15/676,954 5 aforementioned disputed prioritization limitation to the teachings of Shaffer ‘380 and Frederickson cited by the Examiner (Ans. 3-6). Therefore, we are constrained on this record to reverse the Examiner’s obviousness rejection of each independent claim 2, 8, and 15 on appeal. Because we have reversed the Examiner’s rejection of each independent claim on appeal, we also reverse the Examiner’s rejection of each associated dependent claim. CONCLUSION The Appellant has demonstrated the Examiner erred in rejecting claims 2, 3, 7-9, 13-16, 20, and 21 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejection of claims 2, 3, 7-9, 13-16, 20, and 21 as being unpatentable under 35 U.S.C. § 103 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 7-9, 13-16, 20, 21 103 Shaffer ‘380, Frederickson 2, 3, 7-9, 13-16, 20, 21 REVERSED