Ex Parte 7844915 et al

Patent Trial and Appeal Board

Sep 24, 2015

90012332 (P.T.A.B. Sep. 24, 2015)

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.
90/012,332 05/30/2012 7844915 P4895USREX1/106842803600 5963
20872 7590 09/24/2015
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/24/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte APPLE, INC.
Patent Owner and Appellant
____________

Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915
Technology Center 3900
____________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD JR., and
JASON J. CHUNG, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant Apple, Inc. (hereinafter “Appellant”), the real party in
interest of Patent 7,844,915 (referred to by Appellant as “the ‘915 patent”),
requests rehearing of the Decision on Appeal mailed December 9, 2014
(“Decision”), wherein we affirmed the Examiner’s rejections of claims 1–21
of the ‘915 patent (see Decision 5–11). We refer herein to Appellant’s
Appeal Brief filed February 26, 2014 (“App. Br.”), the Examiner’s Answer
mailed May 2, 2014 (“Ans.”), Appellant’s Reply Brief filed July 2, 2014
(“Reply Br.”), and Appellant’s Request for Rehearing filed February 9, 2015
(“Reh’g Req.”). We reconsidered the Decision in light of Appellant’s
Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915

2
arguments in the Request for Rehearing, but, for the reasons discussed
below, we do not modify the Decision.
A request for rehearing is limited to matters overlooked or
misapprehended by the panel in rendering the original decision. See
37 C.F.R. § 41.52. Appellant’s arguments do not persuade us we overlooked
or misapprehended matters in the Decision, but, for completeness, we
address Appellant’s arguments in the Request for Rehearing below.

CLAIM CONSTRUCTION
Appellant argued in the Appeal Brief that one of ordinary skill in the
art would have understood the claim limitation of “distinguishing between a
single input point applied to the touch-sensitive display that is interpreted as
the scroll operation and two or more input points applied to the touch-
sensitive display that are interpreted as the gesture operation” in the
“determining” limitation of claims 1, 8, and 15 as a distinction between one
and more than one input (App. Br. 14–17). In the Decision, we considered
Appellant’s proposed construction and found no error in the Examiner’s
construction based on giving the claim language its broadest interpretation
consistent with the ’915 patent disclosure and finding the claimed gesture
operation requires either two or more input points, similar to the two-finger
input disclosed by Nomura and Hillis (Decision 5–7). In the Request for
Rehearing, Appellant argues that our Decision was based on claim
construction that is inconsistent with the Specification, as well as the
ordinary meaning and structure of the claim (Req. Reh’g 3–10).
Appellant asserts the claim language, rather than providing “a choice
between gestures of two points and gestures of more than two points,”
Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915

3
“establishes a dichotomy between ‘scroll operation’ and ‘gesture operations’
in which every ‘event object’ must be determined to be either a scroll or a
gesture” (Req. Reh’g 5). Appellant further challenges our Decision by
arguing:
The Board’s affirmance of the Examiner’s conclusion that prior
art which distinguishes between a single input point and two
input points--but indisputably does not distinguish between a
single input point and more than two input points--
misapprehends the dichotomous nature of the claim language
and is contrary to Federal Circuit precedent. The claims cannot
be met by prior art that practices only a portion of the
“determining” step, but never performs the entire step.
(Req. Reh’g 5–6).
Appellant’s argument is not persuasive. In fact, this argument, similar
to Appellant’s reliance on Ferguson Beauregard/Logic Controls Div. of
Dover Res. Inc. v. Mega Sys. LLC, 350 F.3d 1327, 1346 (Fed. Cir. 2003)
(id.), improperly focuses on whether prior art meets all the possible number
of input points that could be interpreted as a scroll operation.
Although Appellant urges the term “two or more input points” is not
to be interpreted as either two input points or more than two input points, the
outcome of our analysis remains unchanged. That is, whether the disputed
term is interpreted as “either two or more,” as proposed by the Examiner, or
as requiring any number of input points that is equal to or greater than two
be interpreted as a gesture operation, as argued by Appellant, the cited
portions in Namura disclose scroll and gesture operations requiring one and
two finger movements, respectively. Namura’s disclosure in paragraphs 55
and 56 includes interpreting the event as a scroll with the movement of one
finger and interpreting the event as a gesture operation with the movement
Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915

4
of two fingers. Both of these operations meet Appellant’s claimed
“determining” step in view of the broadest reasonable interpretation of the
claim term, which is also consistent with Appellant’s Specification.
Contrary to Appellant’s contention that other passages in columns 1,
5, and 7 of ‘915 patent indicate that the “two or more input points” limitation
should be construed as narrowly as Appellant argues (see Req. Reh’g 8–9),
these passages and others in columns 12 and 13 describe a gesture operation
merely as “a user input in the form of two or more points.” In fact, the term
“a two or more finger touch” is mentioned only once in column 6 of
Appellant’s Specification whereas in other instances a gesture operation is
performed based on “a user input having two or more input points”
(emphasis added).
Additionally, we are unpersuaded that the cited supplemental
authority, filed April 20, 2015, supports Appellant’s position regarding the
conjunctive interpretation of “or” in the disputed claim limitation. We
observe that Appellant’s argued position differs from the decision in
Vasudevan Software, Inc. v. Microstrategy, Inc., No. 2014-1094 (Fed. Cir.
Apr. 3, 2015) because, unlike Vasudevan, Appellant has not pointed to any
part of the prosecution history to show that Appellant was relying on the
definition based on a conjunctive interpretation of “or.”

PRIOR ART REJECTIONS
Rejection of Claims 2, 9, and 16
Appellant argues our Decision misapprehended the “rubberbanding”
limitation because Lira does not disclose “limiting the maximum amount for
the region outside the content” (Reh’g Req. 13); “there is no ‘predetermined
Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915

5
maximum displacement’ in Lira that prevents additional scrolling once a
threshold is met” (id.); and “when the threshold is met––as is required by the
‘rubberbanding’ limitation––the result achieved by Lira is the opposite of
the result disclosed by the ‘915 patent” (Reh’g Req. 14). Appellant’s
argument is untimely and waived because Appellant does not show good
cause as to why this argument was not presented in the Appeal Brief. Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Further,
even if Appellant’s additional arguments were presented timely, which they
are not, they are not persuasive in view of the Examiner’s findings and
conclusion (see Ans. 29–33) and for the reasons stated on pages 10 and 11 of
our Decision.

Obviousness of Claims 5, 12, and 19 over Nomura and Rubine
Appellant argues we erred because Nomura does not teach the “drag
user input” because “Nomura determines whether to invoke a scroll or
gesture operation before it ever assesses input movement; that determination
therefore cannot be based on a drag user input” (Reh’g Req. 15). However,
Appellant’s contentions in the Appeal Brief were limited to Figure 34 of
Nomura and whether the determination of a scroll or gesture operation is
based on “receiving a drag user input for a certain time period” (App. Br.
24).
As explained in the Decision, paragraphs 9, 10, and 193 and Figures
34 and 37 of Nomura disclose considering movement history and passage of
time as the user’s fingers produce a drag (Decision 9). We further observe
that Figure 34 of Nomura at step 110 determines whether contact is made
with two items or one item, then at step 140 determines if the contact point
Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915

6
is moving, and lastly, at step 170 processes a scroll. Therefore, the disclosed
processing a scroll operation depends on determining contact with one item,
moving contact point, and passage of time, which meets the disputed claim
limitation because the claim does not specify a specific order for receiving a
drag user input and the determination of the duration of contact.

Anticipation of Claims 5, 12, and 19 by Hillis
Appellant argues we erred because Hillis does not teach “determining
whether the event object invokes a scroll or gesture operation is based on
receiving a drag user input for a certain time period” (Reh’g Req. 19).
Appellant’s argument is not persuasive. As stated in our Decision, the
Examiner’s findings related to the disclosure of Hillis in column 7 meet the
disputed claim limitation (Decision 9–10). As found by the Examiner, Hillis
discloses the recited determination step or whether the activity of the current
contact constitutes a “gesture” using a position history, movement velocity,
and force (see Ans. 28 (citing Hillis col. 7, ll. 15–25 and 46–65)). That is,
Hillis determines invoking a scroll or gesture based on position history,
which provides a record of contact movement and change over a certain time
period.

DECISION
We grant the Request for Rehearing to the extent that we reconsidered
the Decision in light of Appellant’s arguments in the Request for Rehearing,
but we deny the Request for Rehearing in that we do not modify the
Decision.
Appeal 2014-007899
Reexamination Control 90/012,332
Patent 7,844,915

7

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

DENIED

FOR PATENT OWNER:

MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482

FOR THIRD PARTY REQUESTER:

JOSEPH J. RICHETTI
BRYAN CAVE LLP
1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104

Ssc