Ex Parte Ma et al

Patent Trial and Appeal Board

Feb 21, 2017

11620876 (P.T.A.B. Feb. 21, 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.
11/620,876 01/08/2007 Jeffrey Ma 337722-326900/P5027USX1 1111
133036 7590 02/23/2017
DLA Piper LLP (US)
2000 University Avenue
East Palo Alto, CA 94303-2215
EXAMINER
PAN, PHOEBE X
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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 JEFFREY MA, RAINER BRODERSEN,
JEFFREY ROBIN, THOMAS MICHAEL MADDEN,
MIHNEA CALIN PACURARIU, and
RACHEL CLARE GOLDEEN
Appeal 2016-003549
Application 11/620,8761
Technology Center 2100
Before LARRY J. HUME, NATHAN A. ENGELS, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—39. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Apple Inc. App.
Br. 2.
Appeal 2016-003549
Application 11/620,876
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions are "related to media
processing systems and methods" (Spec. 1,1. 9), particularly "systems and
methods for presenting media items in an interface environment." Spec. 1,
11. 17-18.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. One or more non-transitory computer readable
media storing instructions that are executable by a processing
device, and upon such execution cause the processing device to
perform operations comprising:
selecting a first plurality of video items;
generating an instance for each of the selected first
plurality of video items;
depicting the generated instances of the first plurality of
video items in a plurality of planes, each plane in the plurality
of planes displaced from the other planes in an arrangement;
transitioning video items within a first plane in the
plurality of planes in a linear direction independently of video
items within other planes in the plurality of planes', and
rotating the plurality of planes about a single axis in a
common plane including at least one of the plurality of planes
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 8, 2015); Reply Brief ("Reply Br.," filed Feb. 18, 2016); Examiner's
Answer ("Ans.," mailed Dec. 18, 2015); Final Office Action ("Final Act.,"
mailed May 5, 2015); and the original Specification ("Spec.," filed
Jan. 8, 2007).
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Application 11/620,876
while maintaining the relative orientation of the arrangement
between the plurality of planes.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Jones
Karukka et al. ("Karukka")
Ni et al. ("Ni")
Drucker et al. ("Drucker")
US 2005/0131924 Al June 16, 2005
US 2006/0268100 Al Nov. 30, 2006
US 2006/0274060 Al Dec. 7, 2006
US 7,657,845 B2 Feb. 2,2010
Rejections on Appeal
Rl. Claims 1, 2, 5—7, 9—18, 21, 23—30, and 34—39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Jones and Ni. Final Act. 3.
R2. Claims 3, 4, and 31—33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Jones, Ni, and Karukka.
Final Act. 13.
R3. Claims 8 and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jones, Ni, and Drucker. Final
Act. 15.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 8—12), we decide the
appeal of obviousness Rejection Rl of claims 1, 2, 5—7, 9—18, 21, 23—30,
and 34—39 on the basis of representative claim 1.
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Appeal 2016-003549
Application 11/620,876
Remaining claims 3, 4, 8, 22, and 31—33 in rejections R2 and R3, not
argued separately, stand or fall with the respective independent claim from
which they depend.3
ISSUE
Appellants argue (App. Br. 8—11; Reply Br. 2—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Jones and Ni is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[o]ne or more non-transitory computer readable media storing
instructions that are executable by a processing device, and upon such
execution cause the processing device to perform operations" that include,
inter alia, the operation of "transitioning video items within a first plane in
the plurality of planes in a linear direction independently of video items
within other planes in the plurality of planes," as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Application 11/620,876
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants contend the Examiner erred in rejecting claim 1 because
Ni, cited at paragraphs 83 and 130 by the Examiner, allegedly does not cure
the acknowledged deficiencies of Jones with respect to the contested
limitation of claim 1. App. Br. 8. "By rejecting the claims based on these
paragraphs and using the combination of Jones and Ni, the Examiner relies
on deficient references and must hand-wave away the recited elements of the
claims." App. Br. 9. "The emphasized section of paragraph [0130] actually
would make 'transitioning video items within a first plane in the plurality of
planes in a linear direction' impossible . . . Ni merely discusses removing
images from one area and then making them appear in another." Id.
Appellants further allege:
Ni fails to disclose the ''linear direction'' transition as recited in
the claims because nothing in Ni discusses a transition in a
linear direction. Instead, Ni discusses taking the thumbnail
images away and then displaying them elsewhere. It appears
that the Examiner has wrongly equated the "longitudinal
direction" of the list in Ni with ''transitioning video items ... in
a linear direction.'' The Examiner completely neglects the
action recited in the claim, namely, ''transitioning video items
within a first plane in the plurality of planes in a linear
direction," and instead provides a reference that discusses a
longitudinally organized list. Therefore, Ni fails to disclose the
recited elements of claim 1.
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Next, Ni fails to disclose transitioning video items "in a
linear direction independently of video items within other
planes in the plurality ofplanes."
Id.
We first note the test for obviousness is what the combined teachings
of the prior art would have suggested to the hypothetical person of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants have not challenged the combinability of the teachings of Jones
and Ni.
In response to Appellants' arguments, the Examiner reiterates his
interpretation that "the [contested] limitation . . . mean[s] that video items
within a first plane are transitioned in a linear direction which is independent
of transitions of video items within other planes." Ans. 2. The Examiner
further finds:
Ni teaches a 3D objects organization display system that shows
different categories of images in different planes of a 3D object
such as a cube . . . [and] the selected images travel[] in different
linear directions independently of each other to a list by the side
of the cube as shown in [Ni] Fig. 9 . . . where images from
different planes transitions independently of each other in a
linear direction.
Ans. 3.
The Examiner further finds, and we agree,
In the claim, the applicant does not distinguish between the
plane that the items reside in and the planes that the items
move/transition in. As shown in Fig. 9 [of] Ni, each of the
images IM1—IM4 moves in a linear direction that lies within its
own plane as defined by a starting position in the 3D cube.
Ans. 5.
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Application 11/620,876
We note Appellants have not cited to a definition of "transitioning
video items within a first plane in the plurality of planes in a linear direction
independently of video items within other planes in the plurality of planes"
in the Specification that would preclude the Examiner's broader reading.4
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 5—7, 9—18, 21, 23—30, and 34—39 which fall therewith. See Claim
Grouping, supra.
§ 103(a) Rejections R2 andR3 of Claims 3, 4, 8, 22, and 31—33
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejections R2 and R3 of claims 3, 4, 8, 22, and 31—33
under § 103 (see App. Br. 11), we sustain the Examiner's rejection of these
claims. We deem arguments not made waived.5
4 Any special meaning assigned to a term or phrase "must be sufficiently
clear in the specification that any departure from common usage would be so
understood by a person of experience in the field of the invention."
Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer
and assign to a term a unique definition that is different from its ordinary
and customary meaning; however, a patentee must clearly express that intent
in the written description.").
5 Appellants merely argue, "[njothing in Karukka or Drucker cures the
deficiencies of the combination of Jones and Ni, and thus claims 3—4, 8,
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Application 11/620,876
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R3 of claims 1—39 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—39.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
19—20, 22, and 31—33 are similarly allowable over the cited references."
Therefore, all of the pending the claims are allowable over the cited
references and Appellants] requests that their rejections be reversed. App.
Br. 11.
8