Ex Parte Elias et al

Patent Trial and Appeal Board

Aug 30, 2018

11619571 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/619,571 01/03/2007
69753 7590 09/04/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
John Greer Elias
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.
106842010101 (P4096US2) 7724
EXAMINER
SHIAU, SHEN C
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN GREER ELIAS, WAYNE CARL WESTERMAN, and
MYRA MARY HAGGERTY
Appeal2018-001849
Application 11/619,571
Technology Center 2100
Before BRUCE R. WINSOR, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 2, 5-10, 12, 14--18, 21-25, 28-32, and 35--43, which constitute
all the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b). Claims 3, 4, 11, 13, 19, 20, 26, 27, 33, and 34 are
cancelled. App. Br. 23-27.
We affirm.
1 Appellants identify Apple, Inc., as the real party in interest. App. Br. 2.
Appeal2018-001849
Application 11/619,571
RELATED PROCEEDINGS
Appellants state that "[ t ]here are no other appeals, interferences, or
judicial proceedings which will directly affect or be directly affected by or
have a bearing on the Board's decision in this appeal." App. Br. 2. 2
Appellants filed a previous appeal, Appeal 2013-004289, decided August
26, 2015, related to the present application. See Manual of Patent
Examining Procedure (MPEP) § 706.07(h) XI. A. (9th ed. Rev. 08.2017,
Jan. 2018) ("[A .. ] Board decision in an application is the 'law of the case,'
and is thus controlling in that application and any subsequent, related
application."). In addition, Application 11/763,908, now U.S. Patent
9,311,528 B2, claims priority from the present application. See '289 Dec'n
3. Application 11/763,908 is the subject of Appeal 2013-008900, decided
August 27, 2015. Accordingly, Appeal 2013-004289 and Appeal 2013-
008900 are related to the present appeal, and the decision in Appeal 2013-
004289 is the law of the case. 3
STATEMENT OF THE CASE
Appellants' disclosed invention relates to a "dictionary of multi-touch
gestures that is interactively presented to a user of a computer system having
a multi-touch user interface." (Spec. ,r 5.) Claim 1, which is illustrative,
reads as follows:
2 Appellants are reminded of the requirements of37 C.F.R. § 4I.37(c)(ii)
(2016).
3 \Ve need not consider here whether the decision in Appeal 2013-008900 is
law of the case in the present application.
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Application 11/619,571
1. A method of providing to a user of a device a
dictionary entry of gestures usable to interact with the device,
the method comprising:
identifying a trigger presented by the user, wherein the
trigger comprises a user interaction with the device;
determining whether the trigger comprises a chord
representing one or more hand parts in a particular
configuration for beginning one or more gestures; and
if the trigger comprises a chord, displaying a dictionary
entry associated with the chord, the dictionary entry including
one or more indications corresponding to one or more gestures
that begin with the chord.
The Examiner relies on the following prior art in rejecting the claims:
Wilson et al.
Hill et al.
Marvi t et al.
US 2004/0189720 Al
US 2005/0057524 Al
US 2005/0210417 Al
Sept. 30, 2004
Mar. 17, 2005
Sept. 22, 2005
Wayne Westerman, Hand Tracking, Finger Identification, and
Chordic Manipulation on a Multi-Touch Screen (Spring 1999) (Ph.D.
dissertation, University of Delaware) (hereinafter "Westerman").
Claims 1, 9, 15, 24, and 31 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
See Final Act. 5.
Claims 9, 24, 39, 41, and 43 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. See Final Act. 6.
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Application 11/619,571
Claims 1, 6-8, 10, 14--17, 22-24, 29-31, 36-38, 40, 42, and43 stand
rejected under 35 U.S.C. § I03(a)4 as being unpatentable over Westerman
and Wilson et al. (hereinafter "Wilson"). See Final Act. 7-14.
Claims 5, 9, 12, 21, 28, 35, 39, and 41 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Westerman, Wilson, and Marvit et al.
(hereinafter "Marvit"). See Final Act. 14--17.
Claims 2, 18, 25, and 32 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Westerman, Wilson, and Hill et al. (hereinafter
"Hill"). See Final Act. 1 7-19.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed June 22, 2017; "Reply Br." filed Dec. 13, 2017) for Appellants'
positions; the Office Actions ("Final Act." mailed Aug. 25, 2016; "1st Adv.
Act." mailed Feb. 13, 2017; "2nd Adv. Act." mailed June 22, 2017) and
Examiner's Answer ("Ans." mailed Oct. 19, 2017) for the Examiner's
reasoning, findings, and conclusions; the Specification ("Spec." filed Mar. 1,
2007); and the decision in Appeal 2013-004289 ("'289 Dec'n"). Only those
arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
4 All prior art rejections are under the provisions of 35 U.S.C. in effect prior
to the effective date of the Leahy-Smith America Invents Act of 2011 ("pre-
AIA"). See, e.g., Final Act. 7.
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Application 11/619,571
CLAIM CONSTRUCTION5
We begin by construing certain aspects of the claims. During
prosecution, claims are to be given their broadest reasonable interpretation,
as enlightened by the written description in Appellants' Specification, In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without importing limitations
into the claims from the Specification, In re Van Geuns, 98 8 F .2d 1181,
1184 (Fed. Cir. 1993).
Open-Ended Transition Terms
The claims utilize the open-ended transition term "comprising"
between the preamble and the remainder of the claim. In addition, certain
claims uses the term "comprises," a variant of "comprising," as a transition
term within the claim. See, e.g., claim 1 ("the trigger comprises a user
interaction;" "the trigger comprises a chord"). "'Comprising' is a term of art
used in claim language which means that the named elements are essential,
but other elements may be added and still form a construct within the scope
5 A number of the pending claims are method, i.e., process, claims that
include contingent limitations, i.e., limitations that are only performed if a
condition precedent is met. See, e.g., claim 1 ("if the trigger comprises a
chord, ... " (emphasis added)). According to our precedent, as a matter of
claim construction, the broadest reasonable interpretation of a method
incorporating a conditional limitation encompasses a method in which only
one of the alternative paths of the conditional limitation is performed. See
Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *3-5
(PTAB Apr. 28, 2016) (precedential). In view of our findings and
conclusions herein, it has not been necessary to consider the impact
Schulhauser has on claim construction. In the event of further prosecution,
Appellants and the Examiner may wish to consider the effect of the holdings
in Schulhauser on claim construction.
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Application 11/619,571
of the claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997) (citation omitted). "The word 'comprising' transitioning from the
preamble to the body signals that the entire claim is presumptively open-
ended." Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371 (Fed.
Cir. 2005) (citations omitted). See also MPEP § 2111.03 (9th ed. 2012, rev.
08.2017). In the absence of a clear indication in the Specification that the
transition term refers only to the named elements without the possibility of
un-named added elements, we construe "comprising" and "comprises" as
open-ended transition terms.
Trigger, Gesture, Chord, and Motion
"We conclude the broadest reasonable interpretation of a 'trigger'
encompasses, but is not necessarily limited to, any 'user interaction with the
device' ( claim 1) that causes the display of a gesture dictionary (Spec. ,r,r 8,
53, 55-56)." '289 Dec'n 5. A "gesture" encompasses two phases, a "chord"
and a "motion." Spec. ,r,r 25-26. The "chord" encompasses "presenting a
specific combination of hand parts, i.e., fingers, thumbs, etc., in a particular
configuration." Spec. ,r 25; see also id. ,r 5 (giving "a combination of
fingers, thumbs, and/or other hand parts" as examples of a "chord"). The
hand parts making up a chord may include "fingers," "thumbs, palm heels,
etc." and may involve "either or both hands." Spec. ,r 26. The "motion"
encompasses "motion of the specific hand parts" making up the chord, "may
take the form of lateral motions such as rotation, translation, scaling
( expansion and contraction), etc.," and "may also comprise vertical motions
... such as tapping, double-tapping, etc." Spec. ,r 25.
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REJECTIONS UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Issues
Does the Examiner err in finding that the Specification lacks support
for "determining whether the trigger comprises a chord ... if the trigger
comprises a chord, display a dictionary entry ... corresponding to one or
more gestures that begin with the chord," as recited in claims 1 and 15?
Does the Examiner err in finding that the Specification lacks support
for "if the trigger does not comprise a chord, displaying a dictionary index
... the dictionary index," as recited in claim 9?
Does the Examiner err in finding that the Specification lacks support
for "determining whether the trigger is associated with a chord ... but is not
recognized as a particular gesture ... if the trigger is associated with a chord
but is not recognized as a particular gesture, displaying a dictionary entry,"
as recited in claims 24 and 31?
Claims 1 and 15
The Examiner finds that the Specification lacks support for
"determining whether the trigger comprises a chord ... if the trigger
comprises a chord, display a dictionary entry ... corresponding to one or
more gestures that begin with the chord," as recited in claim 1. Final Act. 5.
More particularly, the Examiner finds that "the lack of support is with
respect to the 'trigger' which applicant claims to be the 'chord."' Id. The
Examiner explains that: (1) claim 1 "does not preclude [the trigger from
including] any motion involving the hand parts (e.g. hand and/or finger
motion)" (Final Act. 2); (2) according to the Specification, a "'time delay' is
the determining factor for interpreting a trigger not the chord" (id. ( citing
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Spec. ,r,r 56-57))6; and (3) in order to create a chord a "user has [to] move
his or her hand and/or finger, for example, to change the number of finger
count (e.g. raising two fingers), to change the hand and/or finger orientation,
etc., for presenting user's fingers in a particular configuration" (Final Act.
3).
Appellants identify paragraphs 6, 41, and 53 of the Specification as
supporting "determining whether the trigger comprises a chord ... if the
trigger comprises a chord, display a dictionary entry ... corresponding to
one or more gestures that begin with the chord," as recited in claim 1. App.
Br. 6-7. Appellants contend
[ t ]he [S Jpecification ... explicitly states that (1) a chord does
not require motion, and that (2) a chord can be a trigger.
Accordingly, the claim limitation 'trigger comprises a chord
... for beginning one or more gestures' is fully supported by
the specification, and clearly in possession of the inventors at
the time the application was filed.
App. Br. 7. We agree with Appellants.
The written description requirement requires us to determine "whether
the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language." In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983) ( citations omitted). Thus, "the description must 'clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed."' Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (quoting Vas-Cath Inc. v. Mahurkar,
6 The Examiner mentions a possible enablement issue. See Final Act. 2-3.
However, there is no rejection for lack of enablement before us.
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935 F.2d 1555, 1562---63 (Fed. Cir. 1991)). "In other words, the test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad, 598
F.3d at 1351.
Id.
[T]he [ written description] test requires an objective inquiry into
the four comers of the specification from the perspective of a
person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.
[I]t is the specification itself that must demonstrate possession
[ of the claimed invention]. And while the description
requirement does not demand any particular form of disclosure,
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008), or that the specification recite the
claimed invention in haec verba, a description that merely
renders the invention obvious does not satisfy the requirement,
Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir.
1997).
Id. at 1352.
Even accepting, arguendo, all of Examiner's characterizations of the
Specification as correct, they do not demonstrate that the Specification lacks
support for the claim as recited. For example, the Specification states that
"the foregoing embodiments have used a chord presented to a multi-touch
interface to trigger the display of a dictionary entry." Spec. ,r 53 (emphases
added); see also id. ,r,r 6, 41, 49.
The Examiner's position appears to be that Specification does not
support a trigger that is a chord, without more. See Final Act. 2-3; Ans. 2-
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3. Claim 1 recites that the "trigger comprises a chord" ( emphasis added).
As discussed above, we construe "comprises" as an open-ended transition
term, such that the element that follows is required, but other elements
may also be present. Therefore, even if, arguendo, the Specification or
common sense reasoning were to require that for a chord to be a trigger it
must be accompanied by a time-delay or by movement before, after, or
simultaneously with, the chord, the Specification still demonstrates that
the Appellants had possession of an invention in which a "trigger
comprises a chord."
As to the Examiner's contention that the Specification only supports
a trigger that is an actual user interaction with the device, rather than a
"represent[ation ]" of a chord, as recited in claim 1 (see Ans. 2-3), one of
ordinary skill in the art at the time of the invention would have understood
the interpretation of any user interaction by the device is merely a digital
representation of that interaction rather than the interaction itself.
For the foregoing reasons we do not sustain the rejection under
§ 112, first paragraph, of claim 1 and claim 15, which was rejected
together with claim 1.
Claim 9
The Examiner finds that the Specification lacks support for "if the
trigger does not comprise a chord, displaying a dictionary index ... the
dictionary index," as recited in claim 9." Final Act. 5. To the extent the
Examiner's position with regard to claim 9, is based on its dependency from
claim 1, discussed above, we agree with Appellants for the same reasons as
for claim 1. See Ans. 3.
The Examiner further explains as follows:
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Application 11/619,571
[T]he paragraphs applicant cited, for example, paragraphs
[0055] and [0057] describe different types of trigger ( e.g.
voice, button, etc.) to invoke the display of a dictionary entry.
Paragraph [0008] describes the event triggering a gesture
dictionary application may not correspond to a gesture
groupmg. None of these paragraphs describe that the
displaying of a dictionary index was a result of the
determining that the trigger does not comprise a chord.
Id. (bracketed numbers in original). We disagree with the Examiner.
The written description requirement does not require "that the
specification recite the claimed invention in haec verba," Ariad, 598 F.3d at
1352. We find that the Appellants' disclosure of various examples of
displaying a dictionary index when it is determined that the trigger is a user
interaction other than a chord (see Spec. ,r,r 8, 19, 30, 54--55, 57 (cited at
App. Br. 11)) "reasonably conveys to those skilled in the art that the inventor
had possession of ['if the trigger does not comprise a chord, displaying a
dictionary index' (claim 9)] ... as of the filing date." Ariad, 598 F.3d at
1351.
For the foregoing reasons we do not sustain the rejection under
§ 112, first paragraph, of claim 9.
Claims 24 and 31
The Examiner finds that the Specification lacks support for
"determining whether the trigger is associated with a chord ... but is not
recognized as a particular gesture ... if the trigger is associated with a chord
but is not recognized as a particular gesture, displaying a dictionary entry"
(emphases added), as recited in claim 24. Final Act. 5. To the extent the
Examiner's positions and Appellants' arguments are substantially the same
as for claim 1, we agree with Appellants. See Final Act. 5, 2-3; Ans. 3--4;
App. Br. 10. Although claim 24 recites "determining whether the trigger is
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associated with a chord" (emphasis added), rather than claim 1 's "comprises
a chord" ( emphasis added), we have previously concluded that "is associated
with" is a more general transition term than "comprises." See '289 Dec'n 5-
6. Therefore, if, as we find above "comprises a chord" is supported by the
Specification, the more general "is associated with a chord" is similarly
supported by the Specification.
The Examiner posits that the phrase "but is not recognized as a
particular gesture" is not supported by paragraph 6 of the Specification,
which states that "[i]f a user presents a chord associated with a gesture
without a motion completing the gesture, the dictionary application can
present a dictionary entry for the presented chords." Ans. 4; cf App. Br. 10.
We disagree. A situation in which there is no motion to complete a gesture,
as described in paragraph 6 of the Specification, is at least one example of a
situation in which the trigger ( a chord) would not be recognized as a
particular gesture, as claimed. See Reply Br. 2-3.
For the foregoing reasons we do not sustain the rejection under
§ 112, first paragraph, of claim 24 and claim 31, which was rejected
together with claim 24.
REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
Issues
Does the Examiner err in concluding claims 9, 39, 41, and 43 to be
unclear because of conflicts between the use of the terms "dictionary index"
and "gesture dictionary index" in the Specification, including the claims as
filed, and "chord index" in the claims as filed?
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Has the Examiner effectively withdrawn the rejection of claim 24 for
insufficient antecedent basis for the phrase "the particular group of
gestures?"
Claims 9, 39, 41, and 43
The Examiner concludes the use of the term "dictionary index" in
claim 9, is unclear due to conflicts between the use of the terms "dictionary
index" and "gesture dictionary index" in the Specification, including the
claims as filed, and "chord index" in the claims as filed. Final Act. 6 ( citing
Spec. ,r,r 53-54,7 as-filed claims 1, 15). The Examiner explains that the
original filed claims remain a part of the Specification. Ans. 4.
Appellants contend the claims have been amended to eliminate
references to the "chord index" and to use the terms "gesture dictionary
index" and its shortened form, "dictionary index," in a manner that is
consistent within the claims within the remainder of the Specification, so
that that is no longer any lack of clarity in the claims. App. Br. 11; Reply
Br. 3--4.
We agree with Appellants. "During prosecution, an examiner's
indefiniteness rejection begins what is intended to be an interactive process
in which the applicant has the opportunity to respond to the examiner by
amending the claims or by providing evidence or explanation that shows
why the claims are not indefinite." Ex parte McAward, 2017 WL 3669566,
*2, Appeal 2015-006416 (PTAB 2017) (precedential) (citing In re Packard,
751 F.3d 1307, 1311-12 (Fed. Cir. 2014) (citing 35 U.S.C. §§ 132-134))
( emphasis added). The Examiner's continued use of inconsistencies in as-
7 Cited as ,r,r 60--61 of the published application (US 2007/0177804 Al;
publ. Aug. 2, 2007).
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Application 11/619,571
filed claims as a justification to reject for indefiniteness claims that have
been amended to overcome the alleged indefiniteness, runs counter to the
interactive process described in McAward and Packard.
As to the Examiner's position that claim 9 is indefinite because the
broadest reasonable interpretation of a "gesture" is a "chord," we disagree in
view of our claim interpretation above. Although we construe a "gesture" to
be made up of two parts, a "chord" and a movement, a "chord" alone is not a
gesture.
For the foregoing reasons we do not sustain the rejection under
§ 112, second paragraph, of claim 9 and claims 39, 41, and 43, which were
rejected on the same basis as claim 9. See Final Act. 4.
Claim 24
Claim 24 was rejected by the Examiner as indefinite because the
phrase "the particular group of gestures" ( emphasis added) lacked proper
antecedent basis in the claim. The Examiner entered an amendment
changing the phrase to "a particular group of gestures" ( emphasis added)
with no explanation as to how the claim would remain rejected. 2nd Adv.
Act. 1; App. Br. 26. Appellants argue that entry of the amendment
effectively withdrew the rejection. App. Br. 26. Although the Examiner
does not expressly withdraw the indefiniteness rejection of claim 24 (see 2nd
Adv. Act. 1; Ans. 2), the Examiner does not counter Appellants' contention
that it has been effectively withdrawn (see Ans. 4). Accordingly, we agree
with Appellants that this rejection is effectively withdrawn and is not before
us on appeal. To the extent claim 24 still stands rejected under§ 112,
second paragraph, we will reverse the rejection proforma.
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REJECTIONS UNDER 35 U.S.C. § 103(a)
Issues
Does the Examiner err in finding the combination of Westerman and
Wilson teaches or suggests "determining whether the trigger comprises a
chord representing one or more hand parts in a particular configuration for
beginning one or more gestures," as recited in claim 1 ("Issue 1 ")?
Does the Examiner err in finding the combination of Westerman and
Wilson teaches or suggests "if the trigger comprises a chord, displaying a
dictionary entry . . . corresponding to one or more gestures that begin with
the chord," as recited in claim 1 ("Issue 2")?
Does the Examiner err in finding the combination of Westerman and
Wilson teaches or suggests "if the trigger is not associated with a particular
group of gestures, the computer system displays a dictionary index, the
dictionary index including a visual depiction of one or more chord icons
representative of possible chords," as recited in claim 43?
Does the Examiner err in finding the combination of Westerman,
Wilson, and Marvit teaches or suggests "if the trigger does not comprise a
chord, displaying a dictionary index, the dictionary index including a visual
depiction of one or more chord icons representative of possible chords," as
recited in claim 9?
Claim 1
As an initial matter, we note that the argued claim limitations and the
cited art are substantially the same as that discussed in the '289 Decision.
See generally '289 Dec'n. As noted by the Examiner, the only change in the
language of claim 1 from the claim discussed in the '289 Decision is to
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change "trigger is associated with a chord" to "trigger comprises a chord" in
two places. 8 See Ans. 2; compare App. Br. 23, with '289 Dec'n 2.
Issue 1
In accordance with our claim construction above, the recitation that "a
trigger comprises a chord ... for beginning one or more gestures" is open-
ended and does not preclude a trigger from also including other elements,
such as motion or a time delay. Thus, a trigger that is a complete gesture
including both a chord for beginning the gesture and a motion to continue or
complete the gesture comes within the broadest reasonable interpretation of
"a trigger that comprises a chord ... for beginning one or more gestures."
Appellants contend "Wilson fails to teach the determination of any
pre-gesture activity such as a chord or other trigger." App. Br. 13 (heading
i) (emphasis omitted). Appellants further contend "[t]he recognition of a
gesture in Wilson is not the same as a 'chord ... for beginning a gesture."'
App. Br. 14 (heading ii) (emphasis omitted). Appellants' arguments do not
demonstrate Examiner error because they are not commensurate with the
broadest reasonable interpretation of claim 1.
Nothing in claim 1 requires that the chord be limited to "pre-gesture"
activity. Indeed, as we have construed the term "gesture" above, a chord is
not "pre-gesture" but rather is a part of the gesture, as is motion. Indeed,
Appellants' own Specification teaches that the chord is maintained during
the motion that completes the gesture. See, e.g., Spec. , 28. Similarly,
Wilson teaches gestures that comprise hand configurations, i.e., chords, and
8 We note that Appellants' arguments do not consistently refer to the current
wording of claim 1. See e.g., App. Br. 13 (heading a recites "the trigger is
associated with a chord").
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hand motions (Wilson ,r 40), as does Westerman (Westerman 14 (Table
1.4) ). One of ordinary skill in the art would have understood both Wilson
and Westerman to teach that the hand configuration, i.e., chord, would be
present in some form throughout the gesture, i.e., would be "for beginning
one or more gestures" as well as for continuing the gesture thus begun.
Appellants point to passages of the Specification which describe the
presentation of a dictionary as being in response to the presentation of the
chord "without a motion completing the gesture" (Spec. ,r 6; accord id.
,r 41). App. Br. 15. However, this limitation is not recited in claim 1 and it
would be improper to import such an un-recited limitation into the claim.
Van Geuns, 988 F.2d at 1184.
As to Appellants' argument that the combination of Wilson with Westerman
would be inconsistent with the purpose of the claimed invention, i.e., to
teach the user how to perform gestures (App. Br. 15), "the problem
motivating the patentee may be only one of many addressed by the patent's
subject matter. The question is not whether the combination was obvious to
the patentee but whether the combination was obvious to a person with
ordinary skill in the art." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). That said, however, we note that Wilson explains "the ability of
users to learn and remember gestures as an important design consideration"
(Wilson ,r 10).
Finally, we note that Appellants' argument addresses Wilson in
isolation, whereas the rejection is over Wilson as combined with
Westerman. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.")
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Issue 2
To the extent that Appellants arguments regarding issue 2 are
substantively the same as for issue 1 (see App. Br. 16-17 (headings i and ii),
the arguments do not demonstrate Examiner error for the reasons discussed
above.
Appellants contend "Wilson's icon, displayed after a gesture has been
recognized, cannot be mapped to a dictionary entry for beginning a gesture."
App. Br. 17 (heading iii) ( emphasis omitted). Appellants' argument does
not demonstrate Examiner error because it is not commensurate with the
scope of the claim. Claim 1 recites "displaying a dictionary entry associated
with the chord, the dictionary entry including one or more indications
corresponding to one or more gestures that begin with the chord." Claim 1
does not recite that the dictionary entry be displayed before the motion phase
of the gesture begins, or that the dictionary entry ( as distinct from the chord)
be "for beginning a gesture" (App. Br. 17). Wilson discloses that in
response to a gesture, which comprises a hand position (together with
motion) for beginning (and continuing) a gesture, i.e., a "chord," at least one
icon ( a "dictionary entry") that includes one or more indications that
correspond to one or more gestures that begin with the chord. See Wilson
,r,r 51-52, 71, Fig. 7.
Summary
Appellants have failed to demonstrate error in the rejection of claim 1.
Accordingly, we sustain the rejection under§ 103(a) over Westerman and
Wilson of (1) independent claim 1 ; (2) independent claims 15, 24, and 31,
which are argued together with claim 1 (App. Br. 12, 18); and (3) claims 6-
8, 10, 14, 16, 17, 22, 23, 29, 30, 36-38, 40, and 42, which variously depend
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from claims 1, 15, 24, and 31 and were not separately argued with
particularity (see App. Br. 12). We also sustain the rejections under§ 103(a)
(4) over Westerman, Wilson, and Marvit of claims 5, 12, 21, 28, and 35,
which variously depend from claims 1, 15, 24, and 31, and were argued
relying on the arguments for claim 1 (App. Br. 19-20); and (5) over
Westerman, Wilson, and Hill of claims 2, 18, 25, and 32, which respectively
depend from claims 1, 15, 24, and 31, and were argued relying on the
arguments for claim 1 (App. Br. 21 ).
Claim 43
The Examiner finds that Wilson, when combined with Westerman,
teaches "if the trigger is not associated with a particular group of gestures,
the computer system displays a dictionary index, the dictionary index
including a visual depiction of one or more chord icons representative of
possible chords," as recited in claim 43. Final Act. 14 (citing Wilson ,r 71,
Figs. 7, 8.).
Claim 43 depends from claim 31. Appellants' contentions relying on
the arguments made for claim 1, with which claim 31 was argued, do not
demonstrate error for the reasons discussed above. See App. Br. 18.
Appellants contend that "paragraph [0070] of Wilson states that the
icons are representations 'of some of the gestures 702 recognized by the
system.' Thus, the icons are recognized gestures, not a visual depiction of
possible chords as required by the claims." App. Br. 19 (bracketed number
in original). Appellants do not demonstrate Examiner error. Each of the
displayed icons in Wilson's Figure 7 and 8, includes a combination of hand
parts in a particular configuration that falls within the broadest reasonable
interpretation of a "chord."
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Appellants further contend "in its rejection of claim 1, the final Office
Action attempts to read the recited 'dictionary entry' on the icons of Wilson,
and in its rejection of claim 43, attempts to read the recited 'dictionary
index' in the icons of Wilson. The Examiner cannot have it both ways."
App. Br. 19. Again, Appellants do not demonstrate Examiner error. As
recited in claim 1, a "dictionary entry include[ es] one or more indications
corresponding to one or more gestures that begin with the chord."
(Emphases added.) Claim 3 1, recites "a dictionary entry including a group
of indications corresponding to a particular group of gestures," which is
insubstantially different from the language of claim 1, as its ordinary
meaning encompasses groups having one or more members. Thus, each
displayed icon in Figures 7 and 8 fall within the broadest reasonable
interpretation of a "dictionary entry." The display of icons collectively falls
within the broadest reasonable interpretation of the "dictionary index."
Therefore, we find Appellants' argument that the Examiner has mapped two
elements of the claim to the same elements of Wilson's disclosure to be
unavailing.
Appellants have failed to demonstrate error in the rejection of claim
43. Accordingly, we sustain the rejection under§ 103(a) over Westerman
and Wilson of claim 43. 9
Claim 9
The Examiner finds Marvit, when combined with Westerman and
Wilson, teaches or suggests "if the trigger does not comprise a chord,
displaying a dictionary index, the dictionary index including a visual
9 In the event of further prosecution, the Examiner and Appellants may wish
to consider the applicability of the teachings of Marvit to claim 43.
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depiction of one or more chord icons representative of possible chords," as
recited in claim 9. Final Act. 15 (citing Marvit ,r,r 104, 109.).
Appellants contend as follows.
[T]he final Office Action relies upon Marvit's disclosure of
"provid[ing] the user with a number of potentially intended
gestures" if motion input is unrecognized, and concludes that it
would have been obvious to modify Westerman and Wilson with
the teachings of Marvit to provide the user with a number of
potentially intended gestures. However, that reasoning is
flawed, because claim 9 requires the display of a dictionary index
of possible chords, not gestures as taught by Marvit.
App. Br. 20-21. Appellants do not demonstrate Examiner error.
"[T]he [obviousness] analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418 (2007). "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421. "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). Furthermore,
"one cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references." Id.
at 426.
Westerman and Wilson both teach gestures made up of two parts, a
hand configuration or "chord" and a motion. See Westerman 14 (Table 1.4),
19; Wilson ,r,r 40, 51-52, Figs. 7, 8. Westerman suggests that the chord is
formed before the motion. Westerman 14 (Table 1.4). Wilson further
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teaches display of icons representing chords to assist a user when the chord
portion of a gesture is recognized. Wilson Figs. 7, 8. Marvit teaches the
display of suggestions ("potentially intended gestures") when an entire
gesture is unrecognized. Marvit ,r 109. We find that Marvit would have
suggested to a person of ordinary skill in the art to display suggestions when
the entire gesture is unrecognized, and that it would require no more than
ordinary creativity for the suggestions to be suggestions of chords, i.e., the
initial potion of a gesture, as taught by Westerman. See KSR, 550 U.S. at
421.
Appellants have failed to demonstrate error in the rejection of claim 9.
Accordingly, we sustain the rejection under§ 103(a) over Westerman,
Wilson, and Marvit of claim 9 and claims 3 9 and 41, which are argued
together with claim 9 (App. Br. 20, 21 ).
DECISION
The Examiner's decision to reject claims 1, 2, 5-10, 12, 14--18, 21-
25, 28-32, and 35--43 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 1, 9, 15, 24, and 31 under 35
U.S.C. § 112, first paragraph, is reversed.
The Examiner's decision to reject claims 9, 39, 41, and 43 under 35
U.S.C. § 112, second paragraph, is reversed.
The Examiner's decision to reject claim 24 under 35 U.S.C. § 112,
second paragraph, is reversed proforma.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision to reject the claims
is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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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). See 37 C.F.R.
§§ 41.50(±), 4I.52(b).
AFFIRMED
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