Ex Parte Kocienda et al

Patent Trial and Appeal Board

Feb 27, 2017

12565755 (P.T.A.B. Feb. 27, 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.
12/565,755 09/24/2009 Kenneth L. Kocienda 106842086534 (P7567US6) 1131
119082 7590 03/01/2017
Apple c/o MORRISON & FOERSTER LLP SF
425 MARKET STREET
SAN FRANCISCO, CA 94105-2485
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
EOfficeSF @mofo.com
PatentDocket @ mofo. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH L. KOCIENDA and RICHARD WILLIAMSON
Appeal 2014-0031041
Application 12/565,755
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and ADAM J.
PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6, 9-11, 13—19, 22—29, and 32—34.2 Claims 7,
8, 20, 21, 30, and 31 are objected to as being dependent upon a rejected base
claim. (Final Act. 2.) Claim 12 is cancelled. (App. Br. 6.) We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 An oral hearing was held February 15, 2017.
2 Appellants identify Apple Inc., as the real party in interest. (App. Br. 4.)
Appeal 2014-003104
Application 12/565,755
THE INVENTION
Appellants’ disclosed and claimed invention is directed to selecting
content for editing, and displaying a command display area including
command icons. (Abstract.) Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method, comprising:
at a multifunction device with a touch screen display:
displaying a user interface element that contains content,
wherein the content includes content selected for editing;
visually distinguishing the content selected for editing
from displayed content that is not selected for editing;
displaying an editing command display area element that
includes a plurality of editing command icons, wherein:
the editing command display area element is
displayed in front of other elements in the user interface,
including the user interface element displaying content; and
activation of an editing command icon initiates
performance of a corresponding editing action with respect to the
content selected for editing; and
displaying one or more predefined priority elements in
front of which the editing command display area element cannot
be displayed.
REJECTIONS
The Examiner rejected claims 1—6, 9, 10, 13—19, 22, 23, 25—29, 32,
and 33 under 35 U.S.C. § 102(a) as anticipated by Jobs et al. (US
2008/0122796 Al, pub. May 29, 2008). (Final Act. 2-6.)
The Examiner rejected claims 11, 24, and 34 under 35 U.S.C. § 103(a)
as being unpatentable over Jobs and Rosart et al. (US 2008/0082317 Al,
pub. Apr. 3, 2008). (Final Act. 6—7.)
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Application 12/565,755
ISSUES ON APPEAL
Appellants’ arguments present the following dispositive issues:3
Issue One: Whether the Examiner erred in finding Jobs discloses the
independent claim 1 limitations:
displaying a user interface element that contains content,
wherein the content includes content selected for editing;
visually distinguishing the content selected for editing
from displayed content that is not selected for editing;
displaying an editing command display area element that
includes a plurality of editing command icons, wherein:
* * *
activation of an editing command icon initiates
performance of a corresponding editing action with respect to the
content selected for editing. . . .
. . . . and the similar limitations recited in independent claims 13 and 14.
(App. Br. 11-18.)
Issue Two: Whether the Examiner erred in finding the combination of
Jobs and Rosart teaches or suggests the additional limitations of dependent
claims 11, 24 and 34. (App. Br. 18—20.)
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner errs. As to the obviousness rejections of claims
11, 24 and 34, we agree with Appellants. As to the anticipation rejections of
claims 1—6, 9, 10, 13—19, 22, 23, 25—29, 32, and 33, we disagree with
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Sept. 3, 2013); the Reply Brief
(filed Jan. 6, 2014); the Final Office Action (mailed Jan. 3, 2013); and the
Examiner’s Answer (mailed Nov. 7, 2013) for the respective details.
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Application 12/565,755
Appellants’ arguments, and we adopt as our own (1) the pertinent findings
and reasons set forth by the Examiner in the Action from which this appeal
is taken (Final Act. 2—6) and (2) the corresponding reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(Ans. 8—11). We concur with the applicable conclusions regarding the
anticipation rejection reached by the Examiner and emphasize the following.
Issue One
In finding Jobs discloses the limitations at issue for the independent
claims, the Examiner relies, inter alia, on the disclosure in Jobs of a
computing device with a touch screen display which includes a user
interface for managing contacts and messaging with capabilities including:
(i) tapping on a subject line or in the body of the message displays a virtual
keyboard to enter text; (ii) an insertion marker indicates the current point of
text entry; (iii) activation of a “Cancel” icon cause the device to “display the
save draft icon 1810, the don’t save (or delete message) icon 1812, and the
edit message icon 1890.” (Final Act. 2—3; Ans. 8—11; Jobs Abstract, Figs.
6B, 6D, 181,1438; see also Jobs Fig. 18G, H 236, 279, 430.)
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Application 12/565,755
An annotated version of Figure 181 is depicted below:
Figure 181 depicts one stage of a user interface for
incorporating an image into an email, including a subject
line, the body of the email, and user-activated icons 1810,
1812, and 1890.
Appellants argue the text entry box and insertion marker of Jobs
Figures 6B and 6D “do not teach or suggest ‘content selected for editing’ at
all, much less visually distinguishing content selected for editing from
displayed content that is not selected for editing.” (App. Br. 14.) However,
we agree with the Examiner that under the broadest reasonable interpretation
of the claim language at issue, “Any change made to contents is editing. . . .”
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Application 12/565,755
(Ans. 9.) Thus, the contents of the text entry box of Figures 6B and 6D are
reasonably considered content selected for editing. (Id.) In addition, as the
Examiner correctly finds:
[T]he insertion marker denoted by a vertical bar in entry box
612 of figure 6D makes content (“How was your vacatl”)
visually distinguishing from other contents that is not selected
for editing (“R U there” or “IM is the best” or g2g” or “Hola”).
(Ans. 10.) Under the same analysis, placing the insertion marker in a text
box of Figure 181, such as the subject line or email body, satisfies the
requirements of selecting text for editing and distinguishing selected content
from unselected content. (See Jobs Fig. 18G, 1430.)
Appellants further argue “none of the icons in the cited sections of
Jobs are ‘editing command icons’ that ‘initiate[] performance of a
corresponding editing action with respect to the content selected for
editing.’” (App. Br. 17.) To the contrary, the Examiner reasonably finds the
“Save Draft,” “Delete Message,” and “Edit Message” icons depicted in
Figure 181 and described in paragraph 438 of Jobs satisfy the claim
limitation at issue, particularly given the Examiner’s reasonable construction
of the recited “editing.” (Ans. 11.)4
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 13, and 14.5
4 We note that, although activating these icons affects content in addition to
selected content, such is not precluded by the claim language.
5 At the Hearing in this action, Counsel argued that Jobs did not disclose the
last element of claim 1: “displaying one or more predefined priority
elements in front of which the editing command display area element cannot
be displayed.” This argument is not raised in the Briefs and is waived. 37
C.F.R. § 41.47(e)(l)(2015).
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Issue Two
Dependent claims 11, 24 and 34 specifically require:
ceasing to display the editing command display area
element while moving the content; and,
when the content stops moving, redisplaying the editing
command display area element at a second position relative to
the content selected for editing ....
(App. Br. 24.) In rejecting these claim limitations, the Examiner cites the
disclosure in Rosart of a “tooltip” ceasing to be displayed when an indicator
is moved. (Final Act. 6—7; Rosart Fig. 4,126.)
Appellants argue this disclosure does not teach or suggest the claim
limitations at issue. (App. Br. 19—20.) Upon review of the Examiner’s
articulation of how the combination of Jobs and Rosart teach or suggest
these limitations, we do not find sufficient basis for the rejection.
Accordingly, we agree with Appellants that the Examiner does not provide
prima facie support for the rejections of these dependent claims; for
example, the Examiner does not identity portions of the cited references that
teach or suggest the “redisplaying” limitation occurring after the “ceasing”
limitation. See Ans. 12. “[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, on the record before us, we are constrained to find the Examiner
errs in rejecting claims 11, 24, and 34.
CONCLUSIONS
For the reasons stated above, we sustain the anticipation rejections of
independent claims 1,13, and 14. We also sustain the anticipation rejections
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of dependent claims 2—6, 9, 10, 15—19, 22, 23, 25—29, 32, and 33, which
rejections are not argued separately with particularity.
Also for the reasons stated above, we do not sustain the obviousness
rejection of claims 11, 24 and 34 over Jobs and Rosart.
DECISION
We affirm the Examiner’s anticipation rejections of claims 1—6, 9, 10,
13-19, 22, 23, 25-29, 32, and 33.
We reverse the Examiner’s obviousness rejections of claims 11, 24,
and 34.
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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