Ex Parte McConville et al

Patent Trials and Appeals Board

May 13, 2019

13928738 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/928,738 06/27/2013 Anton S. McConville
73109 7590 05/15/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CA920130012US1_8150-0368 2736
EXAMINER
DASGUPTA, SHOURJO
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON S. McCONVILLE and KENNETH N. WALKER
Appeal2018-007709
Application 13/928,738
Technology Center 2100
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
BELISLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
all pending claims, namely, claims 1, 3-8, and 10-16. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify INTERNATIONAL BUSINESS MACHINES
CORPORATION as the real party in interest. App. Br. 1.
Appeal2018-007709
Application 13/928,738
STATEMENT OF THE CASE
The Claimed Invention
Appellants' invention generally relates to "software development
using gestures." Spec. ,r 2.
In an exemplary method embodiment, the method includes "receiving,
in an integrated development environment (IDE), a gesture input through a
gesture capture device and matching, using a processor, the gesture input to
a selected gesture of a plurality of gestures." Spec. ,r 3. "Each of the
plurality of gestures is mapped to a programmatic action of the IDE." Id.
The method also includes "determining the programmatic action mapped to
the selected gesture and performing the programmatic action mapped to the
selected gesture within the IDE." Id.
According to the Specification, "[a] gesture that is formed of one
touch, e.g., as detected using a gesture capture device, that overlaps in time
with at least one other touch is referred to as a multi-touch gesture." Spec.
,r 28. Thus, according to the Specification, "any gesture involving two or
more touches ... is considered a multi-touch gesture." Id.
Also, according to the Specification, "each gesture can be correlated,
or associated, with a programmatic action and, optionally, a program code
template." Spec. ,r 44. "Responsive to detecting the gesture during
operation of an IDE, e.g., during a session, the programmatic action
associated with the gesture inserts the program code specified by the
program code template ... [at an insertion point]," which "can be the
location of a cursor or a pointer for the current project." Id.
Appellants assert "[i]ncorporating gestures within an IDE allows fast
and efficient creation of program code for software development when using
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a gesture-enabled device," such as "a mobile phone or tablet computing
device." Spec. ,r 20; see id. ,r,r 22-23.
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal:
1. A system for developing software, comprising:
a processor programmed to initiate executable operations
compnsmg:
receiving, in an integrated development environment, a
multi-touch gesture through a gesture capture device;
mapping the multi-touch gesture to a programmatic action
within the integrated development environment;
identifying, around an insertion point associated with the
multi-touch gesture, contextual information about the software;
and
performing the programmatic action within the integrated
development environment using the contextual information.
References
The Examiner relied on the following references as evidence of
unpatentability of the claims on appeal:
Neill
Dias
Belisle
US 2012/0198419 Al
US 2014/0173563 Al
US 2014/0331130 Al
Rejections
Aug. 2, 2012
June 19, 2014
Nov. 6, 2014
The Examiner made the following rejections of the claims on appeal:
Claims 1, 3-8, and 10-16 stand provisionally rejected on the ground
of non-statutory double-patenting as being unpatentable over claims 1-8 of
co-pending U.S. Patent Application No. 13/935,607.
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Claims 8, 10-14, and 16 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1, 3, 4, 8, 10, 11, 15, and 16 stand rejected under 35 U.S.C.
§ 103 as obvious over Dias and Belisle.
Claims 5-7 and 12-14 stand rejected under 35 U.S.C. § 103 as
obvious over Dias, Belisle, and Neill.
ANALYSIS 2
Provisional Obviousness-type Double Patenting Rejection
Appellants do not respond to the Examiner's provisional rejection of
claims 1, 3-8, and 10-16 under the doctrine of obviousness-type double
patenting other than to state: "This rejection is not the subject of the present
appeal." App. Br. 3 n.1. Appellants do not substantively address this
provisional rejection in their Appeal Brief or Reply Brief as one of the
grounds of rejection to be reviewed on appeal. See id. Appellants also have
not filed a terminal disclaimer in the subject application or in co-pending
U.S. Patent Application No. 13/935,607, which is a continuation of the
subject application. In the Examiner's Answer, however, the Examiner
maintained "[ e ]very ground of rejection set forth in the Final Office Action
dated 02/24/2017 from which the appeal is taken," including this provisional
rejection. Ans. 1. Because the rejection is still maintained (i.e., the
2 Throughout this Decision, we have considered Appellants' Appeal Brief
filed July 19, 2017 ("App. Br."); Appellants' Reply Brief filed July 19,
2018; the Examiner's Answer mailed May 22, 2018 ("Ans."); the Final
Office Action mailed February 24, 2017 ("Final Act."); and Appellants'
Specification filed June 27, 2013 ("Spec.").
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Application 13/928,738
Examiner has not withdrawn the rejection), it is still properly before the
Board.
Although Appellants do not expressly argue they do not need to
address this pending provisional rejection in this appeal, Appellants cite
Ex parte Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010), purportedly as a
basis for unilaterally excluding this pending rejection. See App. Br. 3 n.1.
However, unlike in Moncla where the Board had reversed the Examiner's
rejections under 35 U.S.C. §§ 102 and 103 and affirmed the provisional
rejection, herein below we affirm the Examiner's rejections under 35 U.S.C.
§§ 101 and 103. At least in this circumstance, we do not find it premature to
address all pending rejections.
To the extent Appellants have not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2016); see also Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived."). Additionally, "[i]f a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer." Manual of Patent Examining Procedure
("MPEP") § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018).
Accordingly, we summarily sustain the Examiner's provisional
rejection of claims 1, 3-8, and 10-16 under the doctrine of obviousness-type
double patenting.
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Statutory Subject Matter
Appellants argue the Examiner erred in rejecting claims 8, 10-14,
and 16 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter, and submit these claims "stand or fall together with independent
claim 8." App. Br. 7. Thus, for purposes of our analysis, we select claim 8
as representative of the group, and any claim not argued separately will
stand or fall with our analysis of the rejection of claim 8. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2016).
The issue here is whether the scope of claim 8, which recites "a
computer readable storage medium," encompasses transitory signals (as
opposed to being limited to non-transitory media). "A transitory,
propagating signal ... is not a 'process, machine, manufacture, or
composition of matter.' Those four categories define the explicit scope and
reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal
cannot be patentable subject matter." In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007), reh 'gen bane denied, 515 F.3d 1361 (Fed. Cir. 2008), cert.
denied, 555 U.S. 816 (2008). This is a policy of the U.S. Patent and
Trademark Office. See Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). More recently, a
precedential PT AB decision held that, absent disclosure to the contrary in
the specification, "those of ordinary skill in the art would understand the
claim term 'machine-readable storage medium' would include signals per
se." Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013)
(precedential).
Appellants argue the Specification provides a "special definition" for
"computer readable storage medium" in claim 8 that "explicitly excludes the
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term 'storage medium' from encompassing a propagating signal (i.e., a
transitory, propagating signal per se)." App. Br. 13; see id. at 7-15. But to
do so, Appellants also argue the many uses of the term "may" in connection
with characterizing "storage medium" in the Specification "must be
interpreted as meaning 'shall, must."' App. Br. 15; see id. at 7-15. Like the
Examiner, we find Appellants' arguments unpersuasive. See Ans. 2-12.
Although Appellants are free to redefine terms in their Specification,
any such novel definitions must be clearly indicated. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[W]ords in a
claim are generally given their ordinary and customary meaning, [but] a
patentee may choose to be his own lexicographer and use terms in a manner
other than their ordinary meaning, as long as the special definition of the
term is clearly stated in the patent specification or file history."). In this
case, the Specification states, for example: "A computer-readable storage
medium may be, for example, but is not limited to, an electronic, magnetic,
optical, electromagnetic, infrared, or semiconductor system, apparatus, or
device, or any suitable combination of the foregoing." Spec. ,r 11 (emphasis
added). The Specification also states the term "computer-readable storage
medium" "means a tangible storage medium that contains or stores program
code for use by or in connection with an instruction execution system,
apparatus, or device," and provides a "non-exhaustive list" of specific
examples thereof that includes "an electrical connection having one or more
wires" and "an optical fiber." Spec. ,r 11. The Specification further states,
"[p ]rogram code embodied on a computer-readable medium may be
transmitted using any appropriate medium, including but not limited to
wireless, wireline, optical fiber, cable, RF, etc." Spec. ,r 13. As found by
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the Examiner, and we agree, "[t]he effect of this language is to disclose
examples that qualify as a 'computer-readable storage medium' while
explicitly leaving open the possibility that other unmentioned examples may
also qualify." Ans. 7; see In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994) (holding that an inventor may define specific terms used to describe
an invention, but must do so "with reasonable clarity, deliberateness, and
precision" and, if done, "'must set out his uncommon definition in some
manner within the patent disclosure' so as to give one of ordinary skill in the
art notice of the change" in meaning) (quoting Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)). The
Examiner also found, and we agree:
Appellants explicitly include [as examples of a computer-
readable storage medium] "an electrical connection having one
or more wires" and/or "an optical fiber", which ... are well-
known conduits for signals. Said another way, an electrical
connection as implemented over a wire when characterized as a
storage medium necessarily involves signals, e.g. to transmit
information across the wire. An optical fiber functions in a
similar manner. Hence, these are explicit examples that
Appellants include within the meaning of a "computer-readable
storage medium" which cover signals. That Appellants'
specification provides these types of examples is in and of itself
sufficient to support the contention that "computer-readable
storage medium " includes signals and therefore render
Appellants' position/argument completely unpersuasive.
Ans. 7 ( emphasis in original).
Furthermore, we find Appellants' argument here that "may" must not
mean "may" but only "must" unpersuasive. App. Br. 15. In short, we agree
with the Examiner's finding that "[ e ]ven if one definition of 'may' is
shall/must, there are other definitions of 'may' in the English language that
are plainly less strict and are more permissive and widely-used." Ans. 9.
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For the reasons discussed supra, we find Appellants have not
attributed, with reasonable clarity, deliberateness, and precision, any special
meaning to "computer readable storage medium," beyond its ordinary and
customary meaning. Based on the Specification as written, we conclude that
claim 8 is broad enough to encompass a transitory, propagating signal and is
not limited to a tangible medium within one of the statutory classes of
35 U.S.C. § 101. Accordingly, we sustain the Examiner's rejection of
claims 8, 10-14, and 16, all of which were argued together as a group, as
noted above.
We note that Appellants are not precluded from amending the subject
claims to overcome the pending Section 101 rejection. Guidance on this
point is provided in U.S. Patent and Trademark Office, Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) ("A claim drawn to such a computer readable medium 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 U.S.C. § 101 by adding the limitation 'non-transitory' to the
claim.").
Obviousness
Appellants argue the Examiner erred in rejecting claims 1, 3-8, and
10-16 as obvious under 35 U.S.C. § 103. See App. Br. 16-26; Reply Br. 2-
8. Appellants submit claims 3-8 and 10-14 "stand or fall together" with
independent claim 1, and claim 16 "stands or falls together" with dependent
claim 15. App. Br. 16, 26. Thus, for purposes of our analysis, we select
independent claim 1 and dependent claim 15 as representative claims, and
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any claim not argued separately will stand or fall with our analysis of the
rejections of claims 1 and 15. See 37 C.F.R. § 4I.37(c)(l)(iv).
Independent Claim 1
Appellants make three patentability arguments regarding independent
claim 1 : (1) Dias and Belisle do not teach "mapping" a gesture to a
programmatic action (App. Br. 16-20); (2) Belisle is non-analogous art
(App. Br. 20-21 ); and (3) there is no motivation to combine Belisle with
Dias (App. Br. 21-22). We find Appellants' arguments unpersuasive, as
explained below.
(1) Mapping: Claim 1 recites, in relevant part, "mapping the multi-
touch gesture to a programmatic action within the integrated development
environment." Appellants argue "Dias does not teach mapping a gesture to a
programmatic action. Instead, the programmatic actions are mapped to
individual locations that each correspond to a different code solution 604a,
604b." App. Br. 17. Appellants also argue "Belisle suffers from the same
problem in that it does not describe a mapping between a particular multi-
touch gesture to a particular programmatic action within the integrated
development environment." App. Br. 19.
As a preliminary matter, we must first construe the term "mapping."
Although Appellants assert the Examiner "has not explicitly construed"
mapping, neither do Appellants submit an explicit construction of
"mapping," but for arguing Dias and Belisle do not teach "mapping." See
App. Br. 18-19. In the Answer, the Examiner proffered: "In its ordinary
and customary meaning, a mapping is merely an association. As
generalized, the concept of a mapping is such that if Xis mapped to Y, then
X and Y are associated by way of the mapping." Ans. 12 (emphasis
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omitted). Like the Examiner, we construe "mapping" to mean "correlating
or associating," consistent with the Specification. See, e.g., Spec. ,r 44
("each gesture can be correlated, or associated, with a programmatic
action;" "FIG. 3-1 illustrates an example in which a gesture is associated
with a programmatic action;" and "the programmatic action associated with
the gesture") ( emphases added); Spec. ,r 19 ("the programmatic action that is
performed utilizes the program code template associated with the detected
gesture") ( emphasis added); see also, e.g., Spec. ,r,r 30, 34, 35, 47, 50, 52,
55, 56-59, and 64 ("associated"). Next, we tum to the teachings of Dias and
Belisle.
Dias is generally directed to methods, systems, and computer program
products for inferring the programming intent of code developers to suggest
code solutions, as illustrated, for example, in Dias' s Figure 6, reproduced
below. See Dias ,r,r 6, 59; Abstract.
402,
.,
user i11terface
4()4
Â¥
.) .................... . 602
Â¥ 4
6
7
-~~::~:~~::::_ .~ ~11~~ ~~-:d~ ~~1~!~.i(:t~ ~ ---r (~)4a
r-----------1 t _
1----------- -: secornl code so{ution r 604b
406) -.-.:------------------1
FIG. 6
Figure 6 of Dias shows a block diagram of user interface 402 displaying
selectable code solutions 602, according to an exemplary embodiment. Dias
,r 59. More specifically:
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Application 13/928,738
Selectable code solutions 602 are displayed as code solutions for
line of code 406, as determined by program code suggestion
system 110 (FIG. 1) and provided in code solution(s) 116. As
shown in FIG. 6, selectable code solutions 602 includes a first
code solution 604a, a second code solution 604b, and potentially
further code solutions. Each code solution of selectable code
solutions 602 is enabled to be selected by the developer ( e.g.,
using a mouse click, a key combination, a gesture applied to a
touch screen or other gesture interface, voice, etc.) to be inserted
into program code 404.
Dias ,r 59 ( emphases added).
Dias also teaches that the user device 102, which includes the user
interface 402, "may be any type of stationary or mobile computing device,
including ... a tablet computer (e.g., an Apple iPadâ„¢, a Microsoft
Surfaceâ„¢, etc.), ... [and] a mobile phone (e.g., a smart phone such as an
Apple iPhone[)]." Dias ,r 45. Dias further teaches "the [user] may be
enabled to use a key combination (or other user interface interaction) to
change the contents of code solutions 602 to cycle through different platform
APis and/or other code solution variations .... " Dias ,r 60 (emphasis
added).
Belisle is generally directed to "a computing device displaying
content related to the functionality of control elements of a user interface
within a moveable interactive element." Belisle ,r 1. An exemplary
embodiment includes a moveable interactive element ( e.g., a pop-up box)
that can be dragged and moved onto control elements ( e.g., graphical user
interface elements like buttons and icons) to display information about the
functionality of the control elements, allowing a user to learn about what a
particular control element does without selecting it. Belisle ,r,r 19-21;
Abstract. Upon receiving an initial touch input, the moveable interactive
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element is displayed in the user interface. Belisle ,r,r 19-21. The interactive
element may be dragged onto a control element and may become associated
with that control element. Belisle ,r,r 20, 21. Content related to the
functionality of the control element may be determined and displayed within
the interactive element. Belisle ,r 21.
Belisle teaches "[ m Jany computing devices include a touchscreen
interface that can detect physical contact from a user of the device and
perform a corresponding action." Belisle ,r 3. Belisle continues:
For instance, some computing devices can detect when a user has
provided a particular gesture ( e.g., using one or more of the
user's fingertips) on a touchscreen user interface, such as a
single-tap, double-tap, drag, swipe, pinch, flick, rotation, multi-
touch gesture, and the like. Upon receiving a gesture, such
computing devices can generate an event corresponding to the
gesture which may cause an application running on the device to
perform a particular action.
Belisle ,r 3 ( emphases added); Belisle ,r 30; see id. ,r 48 ("touch input may
correspond to one or more gestures, such as a drag, swipe, pinch, flick,
single-tap, double-tap, rotation, multi-touch gesture, and/or the like").
Belisle further teaches that the disclosed system "may be part of a portable
communications device, such as a mobile telephone, a smart phone, or a
multifunction device," including "the iPhone®." Belisle ,r 47. Belisle
explains that the disclosed interactive element "may be used to provide
content related to the functionality of control elements for any suitable
application," such as "source code editors, database query
tools, command line interpreters, and the like." Belisle ,r 28 ( emphasis
added).
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The Examiner finds:
Dias makes clear that a gesture is received, e.g. to select a code
solution. Hence, it is fair to say that the input of the gesture
causes or results in [ or is correlated or associated with] selection
of the code solution, e.g. for insertion into the software product.
Said another way, the gesture as an input is mapped to one or
both of the selection result or the insertion result, where either
result may be considered a "programmatic action."
Ans. 14. Appellants argue, inter alia, Dias teaches mapping individual
locations to programmatic actions, not mapping gestures to programmatic
actions. App. Br. 17; Reply Br. 2--4. But we find Dias's teachings are not
so limited.
For example, as explained by the Examiner (Ans. 14), Dias discloses
each code solution of selectable code solutions 602 is "enabled to be
selected" by the developer to be inserted into program code 404, and may be
selected "using a mouse click, a key combination, a gesture applied to a
touch screen or other gesture interface, voice, etc." Dias ,r 59. This teaches,
inter alia, code solutions enabled to be selected and inserted into program
code using a key combination, gesture, or voice-these selection techniques
do not merely involve mouse-clicking a particular location on the screen.
Rather, the disclosure of enabling selection by "voice" in tum teaches an
association (i.e., mapping) between a voice command and the selection and
insertion of a code solution. Likewise, the disclosure of enabling selection
by "key combination," which we find akin to a multi-touch gesture, in tum
teaches the same type of association and mapping between a key
combination and the selection and insertion of a code solution ( e.g., pressing
"Control"-"Alt"-"Delete" on a keyboard uses three fingers, which if done on
a touchscreen keyboard would effectively be a multi-touch gesture). Given
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these teachings in Dias, we find Dias's disclosure of enabling selection of
code solutions using "a gesture applied to a touch screen or other gesture
interface" (Dias ,r 59), teaches associating (i.e., mapping) such a gesture
with the selection and insertion of a code solution (i.e., programmatic
actions3).
Accordingly, we agree with the Examiner that Dias teaches or fairly
suggests mapping a gesture to a programmatic action within an integrated
development environment. See In re Burckel, 592 F .2d 117 5, 1179 (CCP A
1979) ("[A] reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests.").
In addition, the Examiner also finds: "Even if the primary reference
Dias is somehow construed to not teach a mapping, the Examiner
respectfully submits that Belisle provides an express teaching of a gesture
and event correspondence, i.e. a mapping, and one that results in the
performance of a particular function, i.e. 'a programmatic action."' Ans. 18.
Appellants argue "Belisle does not necessarily teach that a particular multi-
touch gesture is mapped to a particular programmatic action, as claimed
since the same gesture can lead to different functionality." App. Br. 20. As
a preliminary matter, Appellants' argument here lacks merit, as it is based on
limitations not found in independent claim 1, namely, the feature of a "one-
3 The Specification states: "A programmatic action is a set of one or more
operations or tasks that are pre-defined, and available within, an application.
As such, a programmatic action is performed by a processor responsive to a
gesture input. The programmatic action may utilize or include operating
system operations." Spec. ,r 33. Like the Examiner, we find both the
selection and the insertion of code solutions to be pre-defined operations or
tasks performed by a processor responsive to input. See Ans. 14.
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to-one correspondence between the gesture and a resulting programmatic
action" (Reply Br. 3). Regardless, the following express disclosure of
Belisle belies Appellants' position: "Upon receiving ... a gesture,
computing device 100 can generate an event corresponding to the gesture
which may cause an application running on the device ( e.g., the photo
application of PIG. 1) to perform a particular function." Belisle ,r 30. We
again agree with the Examiner, and find at least this disclosure in Belisle
teaches or fairly suggests mapping a gesture, including "multi-touch
gestures" (Belisle ,r 30), to a programmatic action. A fortiori, we find the
combination of Dias and Belisle teaches or fairly suggests the limitation at
issue.
(2) Analogous Art: Appellants do not dispute that Dias is analogous
art in this case (Reply Br. 5), but do challenge Belisle (App. Br. 20).
Specifically, Appellants argue "the claimed invention and Belisle are not
within the same field of endeavor" (App. Br. 20), and dispute the
Examiner's finding that "Dias and Belisle both relate to the onscreen
manipulation of content, e.g. as might be done using a code editor/IDE"
(Final Act. 8). Appellants argue that, "[e]ssentially, the Examiner has
argued that any reference that includes a graphical user interface (i.e., an
interface that permits one to interact/manipulate with a data structure/content
stored within the computer) is within the field of endeavor," and that "[t]his
alleged field is unreasonably broad." App. Br. 21. Appellants argue "[t]he
field of endeavor of the claimed invention is associated with software
development and more particularly is associated with an integrated
development environment." App. Br. 21. Appellants contend that "Belisle
... is within the field of graphical user interfaces having dynamically
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moveable control elements," and therefore, "is nonanalogous prior art that
cannot be properly applied against the claimed invention." App. Br. 21.
In the Answer, the Examiner explains: "[T]he Examiner's rationale
expressly accounts for code editors/IDEs ... , since the relied-upon prior art
references do in fact contemplate implementations that are relevant to
software development. For example, ... Belisle's [0028] expressly
discussing the use context of 'source code editors,' which is squarely
situated within the subject matter area of software development." Ans. 21.
Appellants respond in a conclusory manner: "a single mention (within the
entirety of Belisle) of a 'source code editor' within a laundry list of disparate
applications ... does not transform the field of endeavor to which Dias is
directed." Reply Br. 5-6. We find Appellants' arguments unpersuasive.
Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). We are mindful that the Supreme Court's decision in
KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007), directs us
to construe the scope of analogous art broadly, stating that "familiar items
may have obvious uses beyond their primary purposes, and a person of
ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle." See Wyers v. Master Lock Co., 616 F.3d
1231, 1238 (Fed. Cir. 2010).
In reviewing Appellants' Specification and claims, we find the
claimed invention is directed to software development using gestures. See
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Claims 1 and 8; Spec. ,r 18 ("This specification relates to using gestures for
software development."). Appellants' invention receives gestures through
gesture capture devices, maps the gestures to programmatic actions or
program code templates, and inserts program code ( e.g., source code) into
software under development using a system for developing software. See,
e.g., Claims 1, 3, and 4; Spec. ,r 20. In doing so, according to the
Specification, such software development systems and gesture capture
devices may be "any of a variety of devices that support gestures," including
"a mobile phone or tablet computing device." Spec. ,r 20. According to
Appellants, "[i]ncorporating gestures within an IDE allows fast and efficient
creation of program code for software development when using a gesture-
enabled device." Spec. ,r 20.
Belisle discloses structure similar to Appellants' claimed invention,
namely, "a portable communications device, such as a mobile telephone, a
smart phone, or a multifunction device," including "the iPhone®." Belisle
,r 47; see, e.g., Spec. ,r 20 ("mobile phone"). Belisle discloses functions
similar to Appellants' claimed invention, such as using gestures, including
multi-touch gestures, received through touchscreens, generating events
corresponding (i.e., mapped) to such gestures, and causing applications
running on the mobile phone, for example, to perform particular functions.
Belisle ,r 30; see, e.g., Spec. ,r,r 18-20. Belisle also discloses an application
similar to Appellants' claimed invention: "An interactive element as
described in [Belisle] may be used to provide content related to the
functionality of control elements for any suitable application," which "may
include, without limitation, ... source code editors." Belisle ,r 28
( emphases added); see, e.g., Spec. ,r 20 ("source code").
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Based on the structural and functional similarities between
Appellants' claimed invention and Belisle, we find one of ordinary skill in
the art would have considered Belisle within the same field of endeavor as
Appellants' claimed invention. We also observe that both Appellants'
claimed invention and Belisle are classified by the U.S. Patent and
Trademark Office in U.S. Patent Classification Class 715 (defined as "Data
Processing: Presentation Processing of Document, Operator Interface
Processing, and Screen Saver Display Processing"). Compare U.S. Patent
Publication No. US 2015/0007118 Al, pub. Jan. 1, 2015, with Belisle; see In
re Ellis, 476 F.2d 1370, 1372 (CCPA 1973) (Although Patent Office
classification of references and the cross-references in the official search
notes of the class definitions are "some evidence" of "nonanalogy" or
"analogy" respectively, the court has found "the similarities and differences
in structure and function of the inventions to carry far greater weight.").
Accordingly, we find Belisle is analogous art in this case.
For completeness, we also find that Belisle is reasonably pertinent to
Appellants' problem or objective of mapping multi-touch gestures to
programmatic actions. Prior art is "reasonably pertinent" when it would
"logically ... commend[ ] itself' to an inventor's attention in considering
his problem. In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379-80
(Fed. Cir. 2007) (citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).
The Examiner found Dias teaches all aspects of claim 1, but "does not
expressly disclose or render obvious that a gesture is a multi-touch gesture
as claimed." Final Act. 8. However, the Examiner found that the feature of
using "multi-touch gestures" versus "gestures" "is well-known in the art,"
and relied on Belisle to show the well-known aspect of receiving multi-touch
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gestures through a gesture capture device. Final Act. 8; Ans. 15 ("[W]hile
Dias simply teaches that gestures may be used, Belisle more expansively
teaches that many gestures are capable of use, and expressly provides that a
'multi-touch gesture' may be used."). Given Appellants' problem or
objective of mapping multi-touch gestures received via smart phones to
programmatic actions, we find Belisle, which likewise receives multi-touch
gestures that perform actions or programmatic actions through smart phones,
would logically have commended itself to one of ordinary skill in the art
considering Appellants' problem or objective.
(3) Motivation to Combine: The Examiner found it would have been
obvious to a skilled artisan to:
modify Dias to include the gesture type as claimed and as
contemplated by Belisle for purposes of providing [an]
opportunity to enrich Dias' s UI to allow for many different types
of gestures as contemplated by Beslisle [sic], e.g. [0030], and
hence many different types of corresponding commands - as a
means to provide ease-of-use benefits / shortcuts.
Final Act. 8-9. Appellants argue the "Examiner's analysis is no more than
the Examiner repeating the limitations at issue as the 'rational
underpinning,"' and "[i]n essence, the Examiner is merely arguing that it
would have been obvious to include 'X' for the purpose of having 'X.' This
is not a rational underpinning- it is circular reasoning." App. Br. 21-22.
In the Answer, the Examiner clarifies the motivation to combine:
Dias contemplates a GUI framework where gestures are but one
feasible mechanism for input, e.g. in addition to [other] well-
known alternatives such as mouse, keyboard, voice, etc. Hence,
Dias plainly contemplates that inputs may be provided in a
manner of different ways, but as pertaining to gestures does not
go so far as to describe all the possible types of gestures that may
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be used. That said, one of ordinary skill in the art would
recognize that various gestures are capable of use. For example,
some well-known and widely-practiced gestures include tapping,
swiping, pinching in, pinching out, and so forth. Belisle
contemplates a similar framework where gestures may be used,
and proceeds to provide a more rich description, see e.g. [0003]
and [0042] and [0061] which provide a listing of different gesture
types. Contrary to Appellants' belief, the Examiner contends
that a framework that can recognize a larger input set thereby
allows for a more expressive UI experience, e.g. one that more
readily allows a user to enter a greater number of commands and
so forth. This is an obvious benefit, and one that the Examiner
was relying upon.
Ans. 21. Appellants respond, inter alia, that Dias "does not mention
multiple gestures or explain a need for multiple gestures." Reply Br. 7.
Appellants further respond that the Examiner's stated motivation "is not
based upon the teachings of the applied prior art," but "this benefit is pulled
out of thin air." Reply Br. 7. We find Appellants' arguments unpersuasive.
The Court has held the relevant inquiry in an obviousness analysis is
whether the Examiner has set forth "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in 550 U.S. at
418). Additionally, "[m]otivation to combine may be found in many
different places and forms." Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286,
1292 (Fed. Cir. 2013); see also Alza Corp. v. Mylan Labs., Inc., 464 F.3d
1286, 1294 (Fed. Cir. 2006) (stating that the motivation to combine does not
have to be explicitly stated in the prior art).
In this case, Dias discloses each code solution of selectable code
solutions 602 is "enabled to be selected" by the user to be inserted into
program code 404, and may be selected "using a mouse click, a key
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combination, a gesture applied to a touch screen or other gesture interface,
voice, etc." Dias ,r 59 ( emphasis added). We agree with the Examiner that
"Dias plainly contemplates that inputs may be provided in a manner of
different ways." Ans. 21. In addition, as discussed above under "Mapping,"
Dias's disclosure of enabling selection by, for example, "voice" or "key
combination" in tum teaches a mapping between those inputs and the
selection and insertion of a code solution. As such, we agree with the
Examiner that "one of ordinary skill in the art would recognize that various
gestures are capable of use" in Dias (Ans. 21 ), including multi-touch
gestures, and that incorporating various multi-touch gestures would "enrich
Dias' s UI to allow for many different types of gestures ... and hence many
different types of corresponding commands - as a means to provide ease-of-
use benefits/shortcuts" (Final Act. 8-9). Thus, we are unpersuaded of error
in the Examiner's stated reason and rationale for combining Dias and
Belisle.
For the reasons discussed supra, we sustain the Examiner's rejection
of independent claim 1, as well as claims 3-8 and 10-14 that "stand or fall
together" with independent claim 1, under 35 U.S.C. § 103. See App.
Br. 16, 26.
Dependent Claim 15
Claim 15 requires that the "mapping" includes "identifying the multi-
touch gesture from a plurality of different multi-touch gestures" and
"selecting, from a plurality of different programmatic actions respectively
associated with the plurality of different multi-touch gestures, the
programmatic action based upon the identified multi-touch gesture." App.
Br. 32 (Claims Appendix). Appellants again argue Belisle and Dias do not
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teach "mapping" (App. Br. 23-24; Reply Br. 8), which we find unpersuasive
for the reasons discussed above regarding independent claim 1. Appellants
also argue "Belisle does not teach a plurality of different multi-touch
gestures or that these multi-touch gestures are respectively associated with a
plurality of different programmatic actions." App. Br. 24. We find
Appellants' arguments unpersuasive and belied by the teachings of Belisle.
For example, as cited by the Examiner, Belisle discloses:
The touchscreen displaying user interface 102 may be configured
to detect physical contact from the user of computing device 100
such as a user-provided gesture ( e.g., a single-tap, double-tap,
drag, swipe, pinch, flick, rotation, multi-touch gestures, and the
like). Upon receiving such a gesture, computing device 100 can
generate an event corresponding to the gesture which may cause
an application running on the device ... to perform a particular
function.
Belisle ,r 30 (emphases added); see Final Act. 10-11 (citing Belisle ,r 30).
Belisle also discloses that "touch input may correspond to one or more
gestures," including "multi-touch gesture[s]." Belisle ,r 48; see Ans. 22
( citing Belisle ,r 48). This disclosure of a plurality of gestures and
generating an event "corresponding" to a received gesture that causes an
application to perform "a particular function" teaches or fairly suggests
recognizing a particular multi-touch gesture and selecting the programmatic
action corresponding to that gesture. See In re Burckel, 592 F .2d at 1179.
Accordingly, we find the combination of Dias and Belisle teaches or fairly
suggests the limitations of dependent claim 15.
For the reasons discussed supra, we sustain the Examiner's rejection
of dependent claim 15, as well as claim 16 that "stands or falls together"
with dependent claim 15, under 35 U.S.C. § 103. See App. Br. 16.
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DECISION
We summarily affirm the Examiner's decision provisionally rejecting
claims 1, 3-8, and 10-16 under the doctrine of obviousness-type double
patenting.
We affirm the Examiner's rejection of claims 8, 10-14, and 16 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
We affirm the Examiner's obviousness rejections of claims 1, 3-8,
and 10-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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