Ex Parte Ma et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201711620876 (P.T.A.B. Feb. 21, 2017) Copy Citation 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). 2 Appeal 2016-003549 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. 3 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). 4 Appeal 2016-003549 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. 5 Appeal 2016-003549 Application 11/620,876 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. 6 Appeal 2016-003549 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, 7 Appeal 2016-003549 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 Copy with citationCopy as parenthetical citation