Ex Parte Blumenberg

Patent Trial and Appeal Board

Apr 15, 2016

13251121 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/251,121 09/30/2011
61725 7590 04/19/2016
Morgan, Lewis & Bockius LLP I AI
1400 Page Mill Road
Palo Alto, CA 94304-1124
FIRST NAMED INVENTOR
Christopher Blumenberg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P5040USC3/63266-5579US 3734
EXAMINER
DAO, TUANC.
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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 TR~ADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BLUMENBERG
Appeal2014-007542
Application 13/251,121
Technology Center 2100
Before MAHSHID D. SAADAT, CHARLES J. BOUDREAU, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-14 and 16-26. Claim 15 has been canceled. App. Br.
6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-007542
Application 13/251,121
STATEMENT OF THE CASE
Introduction 1
Appellant's disclosure is directed to "an environment with user
interface software interacting with a software application to provide gesture
operations for a display of a device." Abstract. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method performed by an electronic device having a
display of multiple views of a software application, the method
compnsmg:
in response to a user input comprising two or more
concurrent finger touch inputs, transferring a scaling transform
function call for a scaling transform of a view of the multiple
views of the software application, through an application
programming interface, from user interface software to the
view, of the multiple views of the software application,
associated with the user input;
and, in accordance with the transferring of the scaling
transform function call, performing the scaling transform,
including a zoom in or zoom out; of the view of the multiple
views of the software application.
References and Re} ections
Claims 1, 2, 6-9, 13, 14, 16, 20-22, and 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hotelling (US 2006/0026521
Al; Feb. 2, 2006) and Russo (US 2007/0061126 Al; Mar. 15, 2007). Final
Act. 2.
Claims 3, 10, 17-19, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hotelling, Russo, and Chithambaram (US
2001/0045949 Al; Nov. 29, 2001). Final Act. 14.
1 We note the Appeal Brief does not identify any related appeals and
interferences. See App. Br. 5; Reply Br. 2; see also 37 CPR 41.37(c)(l).
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Application 13/251,121
Claims 4, 11, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hotelling, Russo, Chithambaram, and Meier (US
5,513,309; Apr. 30, 1996). Final Act. 17.
Claims 5, 12, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hotelling, Russo, Chithambaram, Meier, and Morita (US
6,985,178 Bl; Jan. 10, 2006). Final Act. 19.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. Except as indicated below with respect
to dependent claims 5, 12, and 25, we disagree with Appellant that the
Examiner erred and adopt as our own the findings and reasons set forth by
the Examiner in the Final Action, the Advisory Action, and the Examiner's
Answer. We highlight and address specific findings and arguments for
emphasis as follows.
A. Independent claims 1, 8, 16, 20, and 26
Appellant argues the Examiner erred in rejecting independent claim 1,
because "Hotelling describes the zooming operation without disclosing
'transferring a scaling transform function call for a scaling transform of a
view of the multiple views of the software application."' App. Br. 15-16.
Particularly, Appellant contends "a function call is 'an invocation of a
routine' or more generally 'an invocation of a software routine or function"'
(App. Br. 15, referring to the Random House Personal Computer Dictionary
definition of "call"), whereas "[ t ]he Examiner's definition of 'function call'
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Application 13/251,121
improperly includes both an action and performing a software function"
(Reply Br. 4).
Appellant's argument does not persuade us of Examiner error. We
agree with the Examiner that Hotelling reasonably teaches the recited
"function call," because Hotelling discloses invoking various functions
related to a selected graphical image. 2 See Hotelling i-f 60 ("the user can
select and activate various graphical images in order to initiate functions and
tasks associated therewith"); see also App. Br. 45 (definition of "call").
Further, we agree with the Examiner that Hotelling teaches or suggests
transferring a scaling transform function call from user interface software to
the view, within the meaning of the claim, because Hotelling discloses "the
computer system 50 recognizes the user input as a zoom gesture, determines
what action should be taken, and outputs control data to the appropriate
device, in this case the display." Hotelling i-f 69; see also id. i-f 65.
Appellant, furthermore, does not provide sufficient evidence or persuasive
reasoning to show Hotelling' s system does not require function calls to
implement the disclosed scaling transforms. 3 See Advisory Act. 2.
Additionally, the Examiner correctly finds Russo teaches a function
call (see Final Act. 3, citing Russo i-fi-16-7), and Appellant has not shown
that one of ordinary skill in the art would not implement Hotelling' s scaling
2 Separately, we note Hotelling teaches or suggests that each gestural input
has (i.e., invokes) a different function. See Hotelling i-f 13 ("Each gestural
input has a different function such as zooming, panning, rotating and the
like.").
3 Cf In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.").
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Application 13/251,121
transform using Russo's function call, as recited in claim 1. See KSR Int?
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
Regarding Russo, Appellant argues "Russo describe[ s] a set of
functions that modify the performance of the application programming
interface itself, but do[ es] not teach or suggest transferring a function call
through an application programming interface to a particular
destination." App. Br. 24.
The Examiner finds "Russo further discloses transferring a transform
function call through an application programming interface (FIG. 2;
paragraphs 0006-0007 and 0018)." Final Act. 3 (emphasis omitted). We
agree. Appellant's Specification discloses "[t]ransferring the function calls
or messages may include issuing, initiating, invoking or receiving the
function calls or messages." Spec. i-f 58; see also id. i-f 150. Accordingly,
we agree with the Examiner that the disputed limitations broadly but
reasonably encompass Russo's transferring the function calls, because Russo
discloses using sensor inputs to control functions by way of an application
programming interface (API). 4 See Russo i-f 45 ("[T]he API will translate
the outputs generated by the finger sensor 140 into mouse click outputs,
which are then received by the software program 104."). Further, Appellant
argues Russo's API "modifies the outputs" but does not persuade us the
recited "transferring ... through" precludes modifications while transferring.
See Reply Br. 6; Final Act. 3; Ans. 22.
4 Additionally, we note the claim recites beginning and ending locations of
the transfer ("from user interface software to the view") but does not specify
the software or hardware portion of the device that performs the transfer.
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Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 1 or independent claims 8, 16, 20, and 26, for which
Appellant does not argue separately. See App. Br. 25.
B. Dependent claims 2, 9, 22, and 26
Appellant argues the Examiner erred in rejecting dependent claim 2,
because the references do not teach the "transfer of three distinct function
calls" as claimed. App. Br. 27. We agree with the Examiner, however, that
Hotelling in view of Russo teaches three distinct function calls, as claimed.
See Final Act. 4--5. As correctly found by the Examiner, Hotelling teaches a
user applies "two fingers on the map displayed on the touch screen ... to
initiate[] the zooming operation," the user spreads out the "two fingers on
the touch screen (California area) in order to zoom in," and the user's fingers
"lift[] off the touch screen or the user stops spreading [the] fingers in order
to stop the zooming operation." Ans. 34 (citing Hotelling Figs. 1 lA-H, i-f
104).
As an initial matter, Appellant's argument that the cited zooming
operation of Hotelling is only a "single zooming sequence function" (Reply
Br. 9) is not persuasive because the claim recites function calls, but does not
preclude a single zooming sequence function. In any event, Hotelling
teaches or suggests multiple functions or sequences by continuously
monitoring gesture inputs, which will affect the operations performed on the
display. See Hotelling i-fi-172, 81 (stating parameter reporting is "repetitively
performed during a user stroke thereby generating a plurality of sequentially
configured signals. The initial and current parameters can be compared in
later steps to perform actions.").
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Application 13/251,121
Further, Appellant has not pointed to any evidence in the record
before us that the combination of Hotelling' s distinct functions with Russo's
function call transfers was "uniquely challenging or difficult for one of
ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we sustain the Examiner's
rejection of dependent claim 2. For the same reasons, we also sustain the
Examiner's rejection of dependent claims 9, 22, and 26, 5 for which
Appellant does not present any separate argument. See App. Br. 28.
C. Dependent claims 4, 11, and 24
Appellant argues the Examiner erred in rejecting dependent claim 4,
because the "values in Meier are horizontal and vertical positions of a stylus,
and are not scale factors. Thus, calculating Xo, XA, Ya and YA as described
in Meier does not teach or suggest 'varying a scale factor of the view from
the minimum scale factor to the maximum scale factor based on a flag being
disabled."' App. Br. 30 (emphasis omitted).
Appellant's arguments are unpersuasive of error because they attack
Meier individually, and thus fail to address the Examiner's findings with
respect to the combination of references. Here, the Examiner finds
"Chithambaram further discloses performing the scaling transform from a
minimum scale factor to a maximum scale factor" (Final Act. 14 (emphasis
omitted), citing Chithambaram i-fi-189--90 with respect to parent claim 3), and
5 We note Appellant groups independent claim 26 in Group A, along with
independent claim 1 (see App. Br. 13, 25), and also includes independent
claim 26 in the arguments presented for dependent claim 2 (see App. Br.
28). We sustain the rejection of claim 26 for the same reasons discussed
above with respect to claims 1 and 2.
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Application 13/251,121
that one of ordinary skill in the art would modify Chithambaram's teaching
with Meier's teaching of varying a scale factor based on a flag being
disabled or enabled (Final Act. 18, citing Meier Figs. 7-8). We agree,
because Meier teaches or suggests each flag will control whether there is
scaling in a particular dimension. See Ans. 37; see also Meier 12:60-65,
13: 15-16. Accordingly, we agree with the Examiner that the combination of
Chithambaram and Meier, in further combination with the other cited
references, teaches or suggests the disputed limitations of dependent claim 4,
as well as claims 11 and 24 not separately argued. See App. Br. 30; see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("[T]he test [for obviousness]
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.").
D. Dependent claims 5, 12, and 25
Appellant argues the Examiner erred in rejecting dependent claim 5,
because "a scale factor of a view does not exceed the maximum scale factor
in Morita," which teaches the scale factor calculations "are performed before
the actual controlling of the zoom magnification of the camera." Reply Br.
12; see also App. Br. 34--35.
We are persuaded by Appellant's arguments. Morita is directed to a
camera control system that limits the camera zoom in certain designated
areas. As cited by the Examiner, Morita discloses:
An area in which imaging will take place is calculated
beforehand based upon a control command input by the camera
operating panel 114. If overlap occurs between the calculated
imaging area and an area in which zoom magnification is
limited, reference is had to the allowable zoom magnification of
the limited area and a limitation is imposed upon zoom control
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Application 13/251,121
in such a manner that the upper limit of zoom magnification is
lowered below that which prevails when there is no overlap. As
a result, it is possible to control imaging by the camera ....
Morita 6:55-64; see also Ans. 39. Thus, we agree with Appellant that
Morita discloses calculating a reduced zoom amount prior to controlling the
zoom (see Morita Fig. 3, items S305, S308), but does not teach or suggest
the claim limitation "performing the scaling transform varies the scale factor
of the view from the minimum scale factor to exceed the maximum scale
factor based on the flag being enabled prior to snapping back the scale factor
of the view" recited by claim 5. See Reply Br. 12-13. Accordingly, we do
not sustain the Examiner's rejection of dependent claim 5 and of dependent
claims 12 and 25, which contain commensurate limitations. See App. Br.
36.
CONCLUSION
We agree with Appellant's arguments regarding dependent claims 5;
12, and 25. We are not persuaded of error, however, in the Examiner's
rejection of claims 1, 2, 4, 8, 9, 11, 16, 20, 22, 24, and 26. Thus, we sustain
the Examiner's rejection of those claims and the remaining dependent
claims, which are not separately argued with particularity. See App. Br. 13,
28.
DECISION
The Examiner's rejections of claims 1--4, 6-11, 13, 14, 16-24, and 26
are affirmed.
The Examiner's rejection of claims 5, 12, and 25 is reversed.
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Application 13/251,121
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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