Ex Parte Boettcher et al

Patent Trial and Appeal Board

Feb 23, 2017

13610693 (P.T.A.B. Feb. 23, 2017)

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.
13/610,693 09/11/2012 Jesse William Boettcher P16612US1 (772.133US1) 9971
133036 7590
DLA Piper LLP (US)
2000 University Avenue
East Palo Alto, CA 94303-2215
EXAMINER
BLAUFELD, JUSTIN R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
ApplePros Admin @ dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE WILLIAM BOETTCHER, ANTON M.
DAVYDOV, JONATHAN ANDERSON BENNETT,
TAIDO LANTZ NAKAJIMA, IMRAN A. CHAUDHRI, and
TIFFANY S. JON
Appeal 2017-001583
Application 13/610,693
Technology Center 2100
Before JEAN R. HOMERE, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—23 and 26—29, all claims currently pending in
the application. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 13/610,693
STATEMENT OF THE CASE
Appellants’ invention is directed to controlling audio volume on an
electronic device, and in particular to enabling a user input to selectively
raise the volume output beyond an initially limited level. Spec. 11. Claims
1 and 2, reproduced below with the disputed limitations in italics, are
representative of the claimed subject matter:
1. A method of controlling an electronic device having a
display and a touch-sensitive input surface, comprising:
during playback of a media presentation, receiving a first
touch input through the touch-sensitive surface to increase a
volume of an audio signal provided at an output port of the
electronic device, wherein the volume increases to a first limit
that is less than a maximum volume the electronic device is able
to supply at the output port;
upon reaching the first limit, displaying a non-textual
visual indicator on the display that additional volume levels are
available;
receiving a second touch input through the touch-sensitive
surface during playback of the media presentation to temporarily
override the first limit and increase the volume of the audio
signal provided at the output port of the electronic device,
wherein the second touch input is recognized as a valid volume
limit override input only after a break in contact with the touch-
sensitive surface after receiving the first touch input, and
wherein the second touch input repeats the first touch input', and
in response to receiving the second touch input, increasing
the volume of the audio output signal at the output port beyond
the first limit without changing the first limit.
2. The method of claim 1, wherein receiving the second
touch input to increase the volume beyond the first limit further
includes detecting within the second touch input a pre­
determined gesture indicative of a desire to override the first
limit.
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Application 13/610,693
REJECTIONS
Claims 1—4, 6, 8—12, 14, 16—20, 22, and 26—29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Marino et
al. (US 2014/0037107 Al; published Feb. 6, 2014) (“Marino”) and Hiipakka
et al. (US 2012/0110452 Al; published May 3, 2012) (“Hiipakka”).
Claims 5, 13, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Marino, Hiipakka, and Park et al. (EP
2 378 752 A2; published Oct. 19, 2011) (“Park”).
Claims 7, 15, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Marino, Hiipakka, and Morin (US
2009/0245537 Al; published Oct. 1, 2009).
ANALYSIS
Claims 1, 8, 16, 26, and 28
Issue 1: Did the Examiner err in finding the combination of Marino
and Hiipakka teaches or suggests “wherein the second touch input is
recognized as a valid volume limit override input only after a break in
contact with the touch-sensitive surface after receiving the first touch input,
and wherein the second touch input repeats the first touch input,” as recited
in independent claim 1 and commensurately recited in independent claims 8,
16,26, and 28?
The Examiner relies on the combination of Marino and Hiipakka to
teach or suggest the disputed limitation. Final Act. 7—11. Marino describes
both a group volume indicator and individual volume indicators for specific
listening zones, where playback volume is adjusted via a touch screen
interface by dragging the volume indicator along a volume scale. Marino
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11 104, 105. A section of the volume scale may change color as the user
drags the group volume indicator beyond the maximum volume indicator for
a specific listening zone, indicating the volume difference between the
adjusted group volume and the maximum volume of the listening zone. Id.
1105. The user may provide an indication to override the maximum volume
of the specific listening zone, such as by entering a passcode. Id. 1106.
The Examiner finds “entering a passcode inherently involves breaking
contact with the screen in order to type each subsequent character of the
passcode.” Final Act. 9. Further, the Examiner finds “Marino does not
explicitly disclose the same ‘wherein the second input repeats the first touch
input,’ because entering a passcode and sliding a volume slider are two
different kinds of inputs.” Id.
Accordingly, the Examiner relies on Hiipakka to teach “wherein the
second input repeats the first touch input.” Final Act. 9—11. Similar to
Marino, Hiipakka describes a general master volume level indicator with a
master volume level slider marker, as well as various specific application
volume level indicators with corresponding volume level slider markers.
Hiipakka H 48, 55. The master volume level corresponds to the loudest of
the currently active applications. Id. 155. At the end of the master volume
level indicator is an extra area, located beyond the nominal maximum
volume level position. Id. 148. Moving the master volume slider marker
into the extra area beyond the maximum level position will increase all of
the application volume levels which are not at the maximum level, rather
than having to increase each volume level individually, yet the volume of
any applications already at the maximum is not increased. Id. H 60-61.
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Retaining the maximum volume level slider marker in the extra area may
require continuous input from the user. Id. 1 60.
Appellants argue in Hiipakka, “the increase in volume beyond a
‘maximum level’ into the ‘extra area 210’ includes ‘a continuous input from
a user [...]’ [which] stands in direct contrast to claim 1 ‘wherein the second
touch input is recognized as a valid volume limit override input only after a
break in contact with the touch-sensitive surface after receivins the first
touch input. ’” App. Br. 12. Appellants further argue “if it is alleged that
dragging the master slider 203 in the extra area 210 [in Hiipakka] is the
second touch input of Appellants’] claim, it follows that this dragging
contact must also have [been] done a first time” and the Examiner “has not
explained where in Hiipakka the dragging allegedly] occurs a first time.”
Id.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s findings. See Final Act. 7—11; Ans. 3—5. The Examiner relies
on Marino, not Hiipakka, to teach the claimed “break in contact,” and
modifies Marino’s second input (i.e., entering the passcode) with Hiipakka’s
teaching of repeating the volume input (i.e., dragging the slider into the extra
area). Ans. 5.1 We agree with the Examiner that dragging the master
1 We note without reliance in rendering our decision that Hiipakka also
teaches or at least suggests the claimed “break in contact” after the master
volume level marker is dragged across the first portion of the volume slider,
and before the master volume level marker is dragged across the second
portion of the volume slider. See, e.g., Final Act. 11 (“It is noted that some
of the features are shown to be taught by both references supra.”). For
example, a person of ordinary skill would have known that moving a volume
slider from its position in Figure 3 to its position in Figure 5 was
interchangeable with moving the slider from its position in Figure 3 to its
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volume level marker in Hiipakka across a first portion of the volume slider
(i.e., to the maximum volume level position), followed by dragging the
master volume level marker across a different second portion of the volume
slider (i.e., to the extra area) teaches the respective first and second inputs,* 2
as well as the second touch input repeats the first touch input (i.e., dragging
the slider for both the first and second input). See Ans. 3^4 (citing Hiipakka
Figs. 3, 4, 5).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Marino and Hiipakka teaches or suggests the disputed
limitation.
Issue 2: Did the Examiner err in combining Marino and Hiipakka?
In the Final Office Action, the Examiner finds one of ordinary skill in
the art “would have been motivated to combine Marino with Hiipakka
because Hiipakka’s master volume control ‘allows advantages of the
invention to be applied to existing applications, thereby increasing the
usefulness of the invention.’ Hiipakka, | [0081].” Final Act. 11.
Appellants contend “[t]he Office Action fails to state what the
advantages are and why they would apply to Marino” and “why one override
mechanism would be replaced with the other.” App. Br. 14—15. Further,
Appellants contend “if the password override feature of Marino were
replaced, the modification would change the principal mode of operation of
Marino.” Id. at 15.
position in Figure 4, breaking contact, then moving the same slider from its
position in Figure 4 to its position in Figure 5. See Hiipakka ]ff[ 83—85.
2 In addition, we agree with the Examiner that the first and second inputs are
also taught by Marino. See Final Act. 7—8.
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We are not persuaded by Appellants’ arguments for the reasons set
forth by the Examiner in the Answer, including “Hiipakka’s explicit
suggestion to apply its volume technique to other volume-related user
interfaces”; the combination achieving the same goal as Marino; and the
predictable results and interchangeability of the combination. Ans. 7—8.
Accordingly, we are not persuaded the Examiner erred in combining
Marino and Hiipakka. For the foregoing reasons, we sustain the Examiner’s
35 U.S.C. § 103(a) rejection of independent claims 1, 8, 16, 26, and 28. For
the same reasons, we sustain the Examiner’s 35 U.S.C. § 103(a) rejections of
dependent claims 3—7, 9-15, 17—23, 27, and 29, which were not separately
argued. See App. Br. 13, 14.
Claim 2
Issue 3: Did the Examiner err in finding the combination of Marino
and Hiipakka teaches or suggests “wherein receiving the second touch input
to increase the volume beyond the first limit further includes detecting
within the second touch input a pre-determined gesture indicative of a desire
to override the first limit,” as recited in dependent claim 2?
The Examiner finds Marino’s passcode teaches the “predetermined
gesture because it involves recognizing that a specific combination of taps at
specific locations on the screen match a previously stored specific
combination of taps.” Final Act. 12 (citing Spec. 27, 30, 41, 42). The
Examiner finds Appellants’ Specification does not make a clear departure
from the common usage of the term “gesture,” and therefore, a “gesture” is
not limited to an embodiment describing “contact at a selected location and
movement of the contact.” Final Act. 3—5. However, even assuming
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“movement of the contact” is required, the Examiner further finds “the
passcode input from Marino involves more than merely a ‘tap,’” because
“moving one’s finger to the next number, and tapping the next number,
qualifies as ‘movement of the contact.’” Ans. 10.
Appellants contend the Specification “details the difference between
taps (as would be used in the passcode) and gestures which involve
‘movement of the contact.’” App. Br. 15 (citing Spec. 120). Specifically,
Appellants argue a “gesture” involves movement after contact. App. Br. 16.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s findings. Final Act. 3—5; Ans. 9—10. Specifically, we agree
with the Examiner that the Specification lists non-limiting examples, and has
not assigned a special meaning to the term “gesture.” See Ans. 9—10 (citing
Spec. 120); Final Act. 4—5 (citing Spec. Tflf 20, 65); see also Spec. Tflf 22, 27,
30, 41—43, 106. As a result, Appellants merely cite an example from the
Specification and argue the claim term should incorporate the limitations
from the example, i.e., “movement of the contact.” We decline to import
limitations from the Specification into the claim, particularly in light of
Appellants’ failure to sufficiently address the Examiner’s evidence that the
ordinary meaning of “gesture” includes taps and long-presses. Final Act. 3;
e.g., US 2006/0238517 *[[ 67 (“Some examples of‘touch
single ‘tap’ at a location”) (listing an assignee of Apple Inc., which is also
listed as the real party in interest in the present application). It is well
established that during examination, claims are given their broadest
reasonable interpretation consistent with the specification, but without
importing limitations from the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted); Super
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Guide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Moreover, we agree with the Examiner that Marino teaches or suggests the
claimed “gesture” under either interpretation of the term. See Final Act. 3—
5, 12; Ans. 10.
Accordingly, we are not persuaded the Examiner erred, and we,
therefore, sustain the Examiner’s 35 U.S.C. § 103(a) rejection of dependent
claim 2.3
DECISION
For the above reasons, the Examiner’s rejections of claims 1—23 and
26—29 are affirmed.
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
3 In the event of further prosecution, the Examiner may also wish to consider
whether Hiipakka’s user moving the volume slider from a maximum volume
level (Figure 4) into the extra area (Figure 5) teaches or suggests “detecting
within the second touch input a pre-determined gesture indicative of a desire
to override the first limit” (e.g., because movement of a slider is a gesture
and the use of an extra area is indicative of a desire to override the volume
maximum).
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