Ex Parte Anderson et alDownload PDFPatent Trial and Appeal BoardNov 14, 201713209058 (P.T.A.B. Nov. 14, 2017) Copy Citation 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. 13/209,058 08/12/2011 Jen Anderson 333000-US-NP/104709.00079 9288 41505 7590 11/16/2017 Baker & Hostetler LLP (MICROSOFT CORPORATION) CIRA CENTRE, 12TH FLOOR 2929 ARCH STREET PHILADELPHIA, PA 19104-2891 EXAMINER MISHLER, ROBIN J ART UNIT PAPER NUMBER 2628 NOTIFICATION DATE DELIVERY MODE 11/16/2017 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): u sdocket @ micro soft .com eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEN ANDERSON, ERIC CHRISTIAN BROWN, JENNIFER TEED, GORAN PREDOVIC, BRUCE EDWARD JAMES, FEI SU, MAYBELLE LIPPERT, and MUDIT AGRAWAL1 Appeal 2017-000911 Application 13/209,058 Technology Center 2600 Before BRADLEY W. BAUMEISTER, BETH Z. SHAW, and PHILLIP A. BENNETT, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—7 and 9—20. See generally App. Br.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. We designate the rejections under 35 U.S.C. §§ 102 and 103 as constituting new grounds. 1 Appellants list Microsoft Technology Licensing, LLC, as the real party in interest. Appeal Brief 3 filed June 1, 2016 (“App. Br.”). 2 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the noted Appeal Brief, as well as the following documents for their respective details: the Final Action mailed November 24, 2015 (“Final Act.”) and the Examiner’s Answer mailed August 15, 2016 (“Ans.”). Appeal 2017-000911 Application 13/209,058 STATEMENT OF THE CASE Appellants describe the present invention as follows: User inputs can indicate an intent of a user to target a location on a display. In order to determine a targeted point based on a user input, a computing device can receive an indication of at least one point, an indication of a width, and an indication of a height. The computing device can estimate a portion of the display based on the indication of the at least one point, the indication of the width, and the indication of the height. The computing device can also determine the targeted point based on a location of the at least one point and based on a location of a portion of one or more objects within the estimated portion of the display. Abstract. Independent claim 1, reproduced below, is illustrative of the appealed claims: 1. A method of determining a targeted point shown on a display based on a user input, the method comprising: receiving an indication of at least one point, an indication of a width, and an indication of a height; estimating a portion of the display based on the indication of the at least one point, the indication of the width, and the indication of the height; determining that at least a portion of one or more objects is located within the estimated portion of the display; determining the targeted point of the one or more objects based on a location of the at least one point and based on the portion of the one or more objects within the estimated portion of the display, wherein determining the targeted point, when two or more objects are located within the estimated portion of display and a second object encompasses a greater portion within the estimated portion of the display than a portion that a first object encompasses within the estimated portion of the display, 2 Appeal 2017-000911 Application 13/209,058 comprises determining that the at least one point is located within the first object and determining that the second object does not contain the at least one point; determining an offset between the at least one point and the targeted point of the one or more objects, wherein the offset represents a distance between the at least one point and the targeted point of the one or more objects; receiving an indication of a change in the location of the at least one point; and changing a size or location of the one or more objects such that the offset between the at least one point and the targeted point of the one or more objects is maintained. Claims 1,11, and 17 stand rejected under 35 U.S.C. § 112(a) or § 112, 11 (pre-AIA), as failing to comply with the written description requirement. Final Act. 2—3. Claims 1,11, and 17 stand rejected under 35 U.S.C. § 112(b) or § 112, 12 (pre-AIA), as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor regards as the invention. Final Act. 3^4. Claims 1, 2, 4, 9, 11, 12, 15, and 17—19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Bernstein (US 2010/0079405 Al; published Apr. 1, 2010). Final Act. 4—7. Claims 3, 5—7, 10, 13, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bernstein and Philipp (US 2011/0157085 Al; issued June 30, 2011). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 3 Appeal 2017-000911 Application 13/209,058 THE WRITTEN DESCRIPTION REJECTION Findings and Contentions The Examiner finds that the originally filed Specification does not provide support for the following limitation of claim 1, or the similar limitations of independent claims 11 and 17: wherein determining the targeted point, when two or more objects are located within the estimated portion of display and a second object encompasses a greater portion within the estimated portion of the display than a portion that a first object encompasses within the estimated portion of the display, comprises determining that the at least one point is located within the first object and determining that the second object does not contain the at least one point. Final Act. 2—3. In the Answer, the Examiner further explains that “[o]ut of all of the variants of figure 7 [i.e., figures 7A—F], only figure 7B shows wherein only the first object (e.g., 721) and not the second object contain one point (e.g., T).” Ans. 3. The Examiner then explains why the passages of Appellants’ Specification discussing FIG. 7B do not support the disputed claim language. Ans. 2—3. Appellants assert that this claim language finds support in paragraphs 43^47 of the Specification, which discuss FIGs. 7 A—D. App. Br. 9—10. Appellants more specifically point to FIGs. 7B and 7C, as well as the supporting disclosure at paragraph 44 of the Specification. App. Br. 10. Analysis The Examiner appears to misunderstand the disputed claim language. The claim does not require that the touch point (T) be in only one object. Rather, the claim is directed to the situation in which two or more objects are within the estimated portion of the display. See claim 1. This situation is disclosed by FIG. 7D, which depicts more than two objects 741—743 4 Appeal 2017-000911 Application 13/209,058 partially located within the estimated portion of [the] display (dashed fingerprint ellipsis 740). The claim language further requires that in such a case, determining (i.e., deciding) that the targeted point or snap point (S) is in a first object even though more of the estimated portion is in a second object. Paragraph 46 of the Specification discloses such a determining step: [0046] FIG. 7D depicts a determination of a targeted point when the touch point is ambiguous. A touch point is ambiguous when the touch point is not located over an object, but multiple objects are at least partially located within the estimated portion of a display. As depicted in FIG. 7D, portions of each of objects 741, 742, and 743 are located within estimated portion of a display 740. However, touch point T is not located over any of objects 741, 742, and 743. To resolve the ambiguity of which location is the targeted point, the computing device can determine the distance between the touch point T and each of objects 741, 742, and 743. The computing device may make the determination solely based on the distances, or the computing device may weight those distances. The distances can be weighted by one or more of a rank associated with each of objects 741, 742, and 743, a shape of each of objects 741, 742, and 743, the portion of each of objects 741, 742, and 743 located in the estimated portion of a display 740, and the like. In the embodiment depicted in FIG. 7D, the computing device determined that the targeted point S is located on object 741. The determination of the targeted point S can be based on the distance between touch point T and object 741 being shorter that either of the distances between touch point T and objects 742 and 743. Spec. 146 (emphases added). Accordingly, the Examiner has not established that independent claims 1, 11, or 17 lack adequate written description support. We therefore do not sustain the rejection of these claims under 35 U.S.C. § 112(a) or § 112,11 (pre-AIA). 5 Appeal 2017-000911 Application 13/209,058 THE INDFINITENESS REJECTION Findings and Contentions The Examiner concludes that it is unclear whether the language “a targeted point” located in the preamble, “the targeted point of the one or more objects” located in fifth paragraph and “the targeted point” located in the sixth paragraph of the independent claims are meant to be the same targeted point or are separate targeted points. Final Act. 3. Appellants “submit[] that the language in the claims is clear and that ‘the targeted point’ in the fifth paragraph and ‘the targeted point’ in the sixth paragraph of claims 1,11, and 17 all refer to the same targeted point recited in the preamble.” App. Br. 10. As a separate basis for finding the claims indefinite, the Examiner finds that “[cjlaims 1,11 and 17 recite[] the limitation ‘the targeted point of the one or more objects’ in the fifth paragraph of each of the independent claims” and concludes “[tjhere is insufficient antecedent basis for this limitation in the claim.” Id. at 4. Appellants argue in relation to this second basis of rejection, As described in the Specification, a targeted point is determined based on a user’s touch. The targeted point is not described to be a moving point. Rather, it is described to be a single and definite point located within an estimated portion of a display. Moreover, the Examiner has also construed the claim to be a single targeted point since the Examiner has applied prior art to purportedly meet this single targeted point. See Office Action, at 5 ((noting that “ ...determining a targeted point (see representative point 530 in fig. 7D and fig. 8A; also para. 91 wherein the representative point is the centroid 535 in fig. 2D)...”)). App. Br. 10-11. 6 Appeal 2017-000911 Application 13/209,058 Analysis The Examiner does not articulate a basis for concluding that it is unclear whether the noted recitations all refer to the same targeted point. See Final Act. 3^4; see also Ans. (wherein the Examiner failed to address any of Appellants’ arguments regarding the indefmiteness rejection). Nor does the Examiner articulate a basis for concluding that insufficient antecedent bases exist for the disputed language “the targeted point of the one or more objects.” To the contrary, the preamble affirmatively recites that claim 1 is directed to “[a] method of determining a targeted point shown on a display.” Accordingly, the Examiner has not established that the metes and bounds of any of claims 1,11, and 17 are insufficiently clear. We therefore do not sustain the Examiner’s rejection under 35 U.S.C. § 112(b) or § 112, § 2 (pre-AIA). THE ART-BASED REJECTIONS Findings and Contentions Appellants assert the Examiner erred in finding Bernstein discloses all of the limitations of the independent claims. App. Br. 11—13. Specifically, Appellants argue, inter alia, “there is no disclosure that point 720-3 (where the line intersects the ellipse) is ever determined by Bernstein.” Id. at 12. Appellants argue that Bernstein does not disclose “receiving an indication of at least one point.” Id. According to Appellants, Bernstein does not disclose “that a portion of the display is estimated based on the indication of the at least one point.'1'’ Id. at 13. 7 Appeal 2017-000911 Application 13/209,058 Analysis The Examiner technically does not find that element 720—3 corresponds to the claimed at least one point. Rather, the Examiner finds that the at least one point corresponds to “the upper point where [line] 720-3 intersects [touch area] 525—1 in fig. 7D.” Final Act. 4—5. The Examiner additionally finds that line 720-3 corresponds to the claimed indication of the height and that line 715—3 corresponds to the claimed indication of a width. Id. at 5 (citing Bernstein FIG 7D). This mapping is problematic. Bernstein indicates that the touch area 525, as well as its major and minor axes 715, 720, are models generated from the finger contact area 520: [0189] .. . FIG. 5A shows finger 540 in contact 520—1 with a touch screen display 505—1. A touch area 525—1 created by the device that corresponds to the contact 520 is shown, along with a representative point 530—1 and a centroid 535 of the touch area. Note that. ... the touch area 525 models the finger contact 520, but the touch area 520 is typically not shown on the touch screen display 505. . . . [0194] FIGS. 7A—7E illustrate touch areas created by modeling a single finger contact as a geometric object in accordance with some embodiments. The touch areas 525 are modeled as ellipses with major axis 720 and minor axis 715 in FIGS. 7A, 7D, and 7E. The touch areas 525 are modeled as polygons in FIGS. 7B and 7C. Bernstein H 189—94. As such, the claimed “portion of the display,” which the Examiner maps to the touch area 525 (Final Act. 5), is not estimated based on the touch area’s major axis 720, minor axis 715, or based a point on the touch area 525. Rather these relied upon elements, like the rest of touch area 525, are themselves generated or “estimated” from the finger contact area 520. 8 Appeal 2017-000911 Application 13/209,058 However, this shortcoming in the rejection is not dispositive of whether Bernstein anticipates the cited claims. Bernstein’s “touch area 525 is created in response to detecting a finger contact 520 with a touch screen display 510.” Bernstein 1191; FIGs. 5A-C). The finger contact area 520, by definition, necessarily includes a height, a width, and a plurality of contact points. The touch area 525 (or claimed “portion of the display”), then, is modeled or estimated based on the finger contact area’s width, height, and plural points contained therein. Accordingly, we are unpersuaded by Appellants’ arguments that Bernstein fails to disclose the disputed limitations of independent claim 1. We therefore affirm the anticipation rejection of claim 1, as well as claims 2, 4, 9, 11, 12, 15, and 17—19, which are not argued separately. See App. Br. 13.3 3 Should there be further prosecution, the Examiner and Appellants should consider that the limitation of claim 1, “wherein determining the targeted point, when two or more objects are located within the estimated display. . .” (emphasis added) appears to set forth a conditional statement. As such, the claim theoretically could be anticipated without satisfying that limitation, at least in the limited situation, for example, where a determination is made that the at least a portion of only one object—as opposed to two objects—is located within the estimated portion of the display. See claim 1, third limitation (“determining that at least a portion of one or more objects is located within the estimated portion of the display”) (emphasis added); see also Ex parte Schulhauser, 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (holding that according to the broadest reasonable interpretation, a method claim is met if the prior art performs all mandatory steps, even if the prior art does not teach or suggest performing the optional conditional steps). 9 Appeal 2017-000911 Application 13/209,058 We likewise affirm the Examiner’s obviousness rejection of claims 3, 5—7, 10, 13, 14, and 16 over the combination of Bernstein and Phillip. Appellants have not particularly pointed out errors in the Examiner’s reasoning regarding the additional teachings of Phillip, as it pertains to the dependent claims. Appellants instead assert that Phillip does not cure Bernstein’s alleged deficiencies, as was argued in relation to the independent claims. App. Br. 13—15. DECISION The Examiner’s decision rejecting claims 1—7 and 9—20 is affirmed. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we designate the anticipation and obviousness rejections as constituting new grounds. Rule 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 41.50(b) also provides the following: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection 10 Appeal 2017-000911 Application 13/209,058 designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 37 C.F.R, §41.500?) 11 Copy with citationCopy as parenthetical citation