Ex Parte Caliendo et alDownload PDFPatent Trial and Appeal BoardMay 26, 201613084857 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/084,857 04/12/2011 Neal Robert Caliendo JR. 63203 7590 05/31/2016 ROGITZ & AS SOCIA TES 750B STREET SUITE 3120 SAN DIEGO, CA 92101 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. RPS920110001-US-NP 1917 EXAMINER ISANIANS, RAFF! ART UNIT PAPER NUMBER 2612 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEAL ROBERT CALIENDO JR., LISA LOUISE CARTER, TIMOTHY L. HUMPHREY, PAUL DOUGLAS PLASKONOS, ADAM MILES SMITH, RUSSELL SPEIGHT V ANBLON, and ADRIANA ARCEO VILLARREAL Appeal2015-001357 Application 13/084,857 1 Technology Center 2600 Before ALLEN R. MacDONALD, KEVIN C. TROCK, and AARON W. MOORE, Administrative Patent Judges. TROCK, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 2, 8, 15, 16, 19, 21, 28, 30, 32-35, 37, and 39- 44, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants indicate the real party in interest is Lenovo Singapore PTE, Ltd. App. Br. 2. Appeal2015-001357 Application 13/084,857 Invention The claims are directed to a tile based user interface to rotate objects that appear on a display screen. Spec. i-f 1. Exemplary Claim Exemplary claim 1 is reproduced below, with disputed limitations emphasized. 1. A machine-implemented method comprising: receiving a request to rotate a plurality of graphical objects displayed on a touch-enabled display screen in a first orientation, the request received based on input from a user operating the machine, the request to rotate including receiving a rotation menu request, wherein the rotation menu request is received based on a user's gesture being directed to a menu icon included in a rotation tile displayed on the display screen, the rotation tile being larger than the menu icon such that the menu icon is only presented on a portion of the rotation tile; displaying a rotation menu on the display screen in response to receiving the rotation menu request, wherein the rotation menu includes at least one menu items, wherein the rotation menu includes a menu title indicating that the rotation menu pertains to rotating the plurality of graphical objects; receiving a rotation menu item request, wherein the rotation menu item request corresponds to selection of at least one of the at least one displayed menu items; calculating a second orientation of the plurality of graphical objects based on a rotational reference associated with the menu item corresponding to the received rotation menu item request; and displaying the plurality of graphical objects on the display screen at the calculated second orientation, wherein the second orientation is visually rotated from the first orientation. 2 Appeal2015-001357 Application 13/084,857 Applied Prior Art The Examiner relies on the following prior art in rejecting the claims: Sakuragi Spohrer et al. Uyehara et al. Robbins Blythe et al. Dieckmann us 4,893,258 us 5,450,540 us 6,154,214 US 6,326,978 B 1 US 2006/0156249 Al US 2011/0058020 Al Jan. 9, 1990 Sept. 12, 1999 Nov. 28, 2000 Dec. 4, 2001 July 13, 2006 Mar. 10, 2011 ACROBAT TUTORIALS, https://techsupporttutorials. wordpress.com/2007 I 09 I 06/permanentl y-rotate-pages-in-ado be-aero bat/ (hereinafter "Aero bat"). GATEWAY, SUPPORT DOCUMENTS, https://panam.gateway.com/s/Mobile/ 2007 /ViperSR/l 0 l 4382R/l 0l4382Rfaq19 .shtml (hereinafter "Gateway"). MICROSOFT OFFICE WORD 2007 TUTORIAL, http://www.java2s.com/ Tutorial/Microsoft-Office-Word-2007 /0080_Shape-Picture-WordArt- SmartArt-Clip-Art/RotateanObj ecttoany Angle.htm (hereinafter "Microsoft"). Examiner's Rejections (1) Claims 15, 28, and 37 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. (2) Claims 1and21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe, Uyehara, and Acrobat. (3) Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe and Microsoft. 2 (4) Claims 8, 28, 30, 35, 39, 42, and 44 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe and Spohrer. 2 The heading of the section rejecting claim 15 in the Final Action does not list the Microsoft reference, but the reference is discussed in the discussion 3 Appeal2015-001357 Application 13/084,857 (5) Claim 40 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe, Spohrer, and Gateway. (6) Claim 41 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe, Spohrer, Gateway, and Robbins. (7) Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe, Uyehara, Sakuragi, and Robbins. (8) Claims 32 and 37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe and Sakuragi. (9) Claims 19, 36, and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe, Sakuragi, and Dieckmann. (10) Claims 16, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blythe, Sakuragi, and Robbins. ANALYSIS We have reviewed the Examiner's rejections and the evidence of record in light of Appellants' arguments the Examiner has erred. We disagree with Appellants' arguments and conclusions. We adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the Action from which this appeal is taken; and (2) the findings and the reasons set forth in the Examiner's Answer. We concur with the conclusions reached by the Examiner and further highlight specific findings and argument for emphasis as follows. of the substantive rejection. See Final Act. 6-8. We consider this oversight harmless error. 4 Appeal2015-001357 Application 13/084,857 Section j Oj Rejection - Independent Claim j 5 The relevant portion of independent claim 15 now recites, "[a] program product stored in a computer readable storage medium that is not a carrier wave comprising program code that, when executed by an information handling system, causes the information handling system to perform actions comprising ... " (emphasis added). Appellants contend claim 15 is now within the realm of patentable subject matter under Ex Parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). App. Br. 5---6. Appellants argue a claim that explicitly excludes "carrier" waves is no longer subject to a Section 101 rejection "because only waves that are carrier waves could conceivably be 'mediums' of some sort 'bearing' program code for doing what is recited in the claims." Reply Br. 1-2. The Examiner had expressly advised Appellants, however, that "[a] claim drawn to [] a computer program product that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 USC§ 101 by adding the limitation 'non-transitory' to the claim." Final Act. 2-3. Rather than follow the Examiner's advice, Appellants chose to amend claim 15 after final by adding the language "not a carrier wave." The Examiner finds that the claim amendment reciting that the computer readable storage medium is not a carrier wave does not overcome the deficiency. Ans. 5. We agree. As the Federal Circuit has recognized, "the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution." Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir. 5 Appeal2015-001357 Application 13/084,857 2008). Accordingly, we sustain the Examiner's Section 101 rejection of independent claim 15. Section 103 Rejection - Independent Claim 1 Appellants contend the Examiner erred in rejecting independent claim 1 because the combination of Blythe, Uyehara, and Acrobat does not teach or suggest "the rotation menu includes a menu title indicating that the rotation menu pertains to rotating a plurality of graphical objects," as recited in the claim. App. Br. 6. Appellants argue the portions of Blythe cited by the Examiner "are unaccompanied by any sort of menu title" and "merely indicates that it includes items that represent predetermined degrees of rotation without any reference to titles for the menu." App. Br. 6. Appellants also argue Acrobat "has nothing to do with rotating a plurality of graphical objects presented on a touch-enabled display screen." App Br. 7. The Examiner finds, however, and we agree, that Acrobat teaches a title on a rotation menu, where the image displayed shows a menu with the title "Rotate Pages," which indicates that the pages, and the graphical objects rendered thereon, will be rotated. Ans. 5. Accordingly, we are not persuaded the Examiner erred in rejecting independent claim 1 because the combination of Blythe, Uyehara, and Acrobat does not teach or suggest "the rotation menu includes a menu title indicating that the rotation menu pertains to rotating the plurality of graphical objects." Section 103 Rejection - Independent Claim 15 Appellants contend the Examiner erred in rejecting independent claim 15 because the combination of Blythe and Microsoft does not teach or suggest: 6 Appeal2015-001357 Application 13/084,857 a portion of the rotation tile includes the menu icon presented thereon such that selection of the menu icon causes the rotation menu to be presented and selection of a portion of the rotation tile not including the menu icon causes a second request to rotate to be received without presenting the rotation menu. App. Br. 7. Appellants argue the Examiner's reference to "Microsoft has absolutely nothing to do with rotating for any purpose, much less rotating a plurality of objects from a first orientation to a second orientation in a way fairly approaching what is claimed. Instead, it deals with a highlighting tool for highlighting text in a word processing document." Reply Br. 7. Appellants' argument is not responsive to the Examiner's rejection. The rejection is based on the combination of Blythe and Microsoft, and the Examiner relied on Microsoft to teach "a button wherein a standard option is presented which may be selected and applied by a user without presenting a menu and a separate portion associated with that button will present a dropdown menu with a list of other similar options." Final Act. 7-8. Accordingly, we are not persuaded the Examiner erred in rejecting independent claim 15 because the combination of Blythe and Microsoft does not teach or suggest a portion of the rotation tile includes the menu icon presented thereon such that selection of the menu icon causes the rotation menu to be presented and selection of a portion of the rotation tile not including the menu icon causes a second request to rotate to be received without presenting the rotation menu as recited in independent claim 15. Section 103 Rejection - Independent Claim 8 Appellants contend the Examiner erred in rejecting independent claim 8 because the combination of Blythe and Spohrer does not teach or suggest a "rotation menu [that] includes at least one menu item with an image of a laptop computer representing an absolute rotation back to a home 7 Appeal2015-001357 Application 13/084,857 orientation." App. Br. 13. Appellants argue that for the selection of an image of a laptop computer as a menu item to be a design choice, the image cannot be altogether missing from the reference(s). Id. at 9 (citing In re Kuhle, 526 F.2d 553 (CCPA 1975)). Appellants' reliance on Kuhle is misplaced because that case does not require that a feature be explicitly described in the cited art. Instead, Kuhle found that the use of the claimed feature "would be an obvious matter of design choice" when it "solves no stated problem" and "presents no novel or unexpected result" over the disclosed alternatives, without regard to whether or not it was expressly disclosed. Kuhle, 526 F.2d at 555. The relevant issue in the context of a rejection based on design choice is whether the alleged differences between the claimed invention and the prior art "result in a difference in function or give unexpected results." In re Rice, 341 F .2d 309, 314 (CCPA 1965). Here, the Examiner finds, and we agree, that the image displayed on the rotation button is irrelevant and has no bearing on the functionality of the button. Ans. 6. The Examiner finds that the functionality of a rotation button will remain the same even if the disclosed image on the rotation button on the icon is changed to an image of a laptop. Id. Accordingly, we are not persuaded the Examiner erred in rejecting independent claim 8 because the combination of Blythe and Spohrer does not teach or suggest a "rotation menu includes at least one menu item with an image of a laptop computer representing an absolute rotation back to a home orientation." 8 Appeal2015-001357 Application 13/084,857 Remaining Claims 2, j6, j9, 2j, 28, 30, 32-35, 37, and 39--44 Appellants have not presented separate, substantive, persuasive arguments with respect to claims 2, 16, 19, 21, 28, 30, 32-35, 37, and 39--44. Accordingly, we sustain the Examiner's rejection of these claims. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We AFFIRM the Examiner's rejections of claims 1, 2, 8, 15, 16, 19, 21, 28, 30, 32-35, 37, and 39--44. 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 9 Copy with citationCopy as parenthetical citation