Ex Parte Migos et al

Patent Trial and Appeal Board

Nov 9, 2017

13076411 (P.T.A.B. Nov. 9, 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.
13/076,411 03/30/2011 Charles J. Migos 106842103630
(P10411US2)
3697
150004 7590 11/14/2017
DFNTONS T TS TIP. Annie
EXAMINER
P.O. Box 061080
Wacker Drive Station, Willis Tower
TAN, ALVIN H
Chicago, IL 60606 ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. MIGOS, JAY CHRISTOPHER CAPELA,
MARKUS HAGELE, DIEGO BAUDUCCO, AKIVA D. LEFFERT,
BRITT S. MIURA, and DONALD ROZINAK BEAVER
Appeal 2015-006643
Application 13/076,411
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER,
and MICHAEL J. ENGLE, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—16, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 An oral hearing was held for this appeal on April 27, 2017.
2 According to Appellants, the real party in interest is Apple Inc. (App. Br.
3).
Appeal 2015-006643
Application 13/076,411
STATEMENT OF THE CASE
Appellants ’ Invention
Claim 1 is illustrative of the invention and reads as follows:
1. A method, comprising:
at an electronic device having a touch-sensitive display
and a touch-sensitive surface that is distinct from the touch-
sensitive display:
detecting a predefined gesture, wherein the predefined
gesture is configured to result in display of a character input
user interface that includes one of a split keyboard and an
unsplit keyboard;
determining whether the predefined gesture is detected
on the touch-sensitive display or the touch-sensitive surface that
is distinct from the touch-sensitive display; and
in response to detecting the predefined gesture,
displaying a character input user interface on the display,
wherein:
in accordance with a determination that the
predefined gesture is detected on the touch-sensitive
surface, the character input user interface includes a split
keyboard; and
in accordance with a determination that the
predefined gesture is detected on the touch-sensitive
display, the character input user interface includes an
unsplit keyboard.
The Examiner’s Answer relies on the following prior art references:
The Examiner’s Rejections
Kerr
Chen
Ellis
Thompson
Brisebois
US 2006/0197750 A1
US 2009/0091541 A1
US 2009/0258677 A1
US 2012/0127206 A1
US 8,368,658 B2
Sept. 7, 2006
Apr. 9, 2009
Oct. 15,2009
May 24, 2012
Feb. 5,2013
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Claims 1,3,4, 6, 7, 9, 10, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kerr, Chen, and Thompson (Final Act.
3-5).
Claims 2, 5, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kerr, Chen, Thompson, and Ellis (Final Act. 5—6).
Claims 13—16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kerr, Chen, Thompson, and Brisebois (Final Act. 6—7).
Appellants ’ Contentions
With respect to the rejection of independent claims 1, 4, 7, and 10,
Appellants contend:
1. Kerr includes no discussion about determining “whether a
predefined gesture is detected on one specific touch-sensitive element or
another specific touch-sensitive element, much less the claimed feature of
selectively displaying a split keyboard or an unsplit keyboard in accordance
with such a determination” (App. Br. 15).
2. Chen does not cure the deficiency of Kerr because Chen’s
keyboard appears automatically in response to detecting any touch contact,
and therefore teaches away from the claimed “actions ‘in accordance with’
detecting any ‘predefined gesture’” (App. Br. 16).
3. Thompson displays a keyboard in response to a three-finger tap
gesture, but fails to disclose or suggest “selectively displaying a split
keyboard ‘in accordance with a determination that the predefined gesture is
detected on the touch-sensitive surface’ and displaying an unsplit keyboard
‘in accordance with a determination that the predefined gesture is detected
on the touch-sensitive display’” (App. Br. 17).
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4. The Examiner’s proposed combination of the references is not
based on articulated reasoning and stems from impermissible hindsight
(App. Br. 20). Chen’s automatically displaying or hiding the keyboard in
order to avoid covering the page teaches away and provides no reason to one
of ordinary skill in the art to combine Chen with Kerr (App. Br. 21).
Thompson’s disclosure of a split keyboard alone is not sufficient to motivate
one of ordinary skill in the art to modify Kerr and include such keyboard in a
general touch-sensitive display (App. Br. 22—23).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 11—23; Reply Br. 3—6) that the Examiner erred. We
disagree with Appellants’ above contentions 1—4. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 3—7) and (2) the reasons set forth by
the Examiner in the Examiner’s Answer (Ans. 2—12) in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
Independent Claims 1, 4, 7, and 10
Regarding Appellants’ contention 1 that nothing in Kerr discloses or
suggests determining whether a predefined gesture is detected on a touch-
sensitive display or a touch-sensitive surface, we agree with the Examiner
that neither the claims, nor the Specification, defines the locations of the
touch-sensitive elements or what the gesture is (Ans. 3 (citing Spec. 1 67)).
The Examiner finds paragraphs 51 and 56 of Kerr describe different types of
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touch-sensitive elements such as touch panel, touch pads, or touch screens,
which may be placed on the sides, top, bottom, front and back surfaces of
the device (Ans. 3; see also Kerr Figs. 14—15). The Examiner further finds
Kerr recognizes “gestures applied to the touch screen 106 and/or touch
sensitive surface 108 of the housing” control “aspects of the hand held
electronic device” by executing “instructions to carry out operations
associated with the gestures” (Ans. 3 (citing Kerr | 81)). As further
explained by the Examiner (id.), the control system of Kerr also determines
when and where the touch takes place (see Kerr 181). Contrary to
Appellants’ contention that Kerr does not teach or suggest making “a
determination” of the location of the touch (Reply Br. 6), we understand the
Examiner’s rejection to be based on the teachings of Kerr related to a device
having two touch sensitive elements on different surfaces of the device
which allows a controller to determine where and when the touch takes place
in order to carry out the operation associated with the determined location of
the touch (see, e.g., Kerr Figs. 14—15, H 97—98).
As to Appellants’ contentions 2 and 3 that Chen and Thompson
disclose a split or unsplit keyboard in accordance with detecting any touch
or a three-finger tap gesture, respectively, or whether the touch was on the
touch panel or the touch screen, we are unpersuaded.3 In fact, we
understand the Examiner’s reliance on these two references to be focused on
3 We also observe that the broadest reasonable interpretation of claim 1 does
not require displaying both types of keyboards. Instead, the claim only
require display of one type of keyboard in response to a determination of
where the touch takes place. For example, if the gesture is detected on the
touch-sensitive surface, a split keyboard is displayed, or alternatively, an
unsplit keyboard is displayed if the gesture is detected on the touch-sensitive
display.
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the operations that one of ordinary skill in the art would associate with the
gestures on the two different touch-sensitive elements discussed in
paragraph 81 of Kerr. In other words, displaying a split or unsplit keyboard
are known operations that the user’s touch on different touch-sensitive
elements would invoke (see Ans. 3—5).
As to Appellants’ contention 4, the Examiner provides a
comprehensive response to Appellants’ arguments by describing the features
of Chen and Thompson the ordinary skilled artisan would have combined
with Kerr, consistent with the guidelines stated in KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398 (2007) (Ans. 6—12). The Examiner specifically identifies
(Ans. 6—8) improvements made by the combination to the hand-held device
of Kerr (see Kerr 181), where the particular types of split and unsplit
keyboards as the specific operations that are associated with the gestures
detected on different touch-sensitive elements, are disclosed by Chen and
Thompson (see e.g., Chen 128 and Thompson 1 51). Indeed, the Supreme
Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem. . . . Common sense teaches
. . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted). Additionally, the Examiner
properly relies on In re Keller and states that “one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references” (Ans. 2 \ In re Keller, 642 F.2d 413,
425 (CCPA 1981)). Further, when combining references, “a court can take
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account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” See KSR, 550 U.S. at 418.
As such, the Examiner’s articulated rationale based on the discussion
of displaying known types of keyboards as the types of operations invoked
by where the gesture is detected is sufficient to justify this combination (see
Ans. 7—8, 10-11). We further find that the proposed substitution would
merely require the ordinarily skilled artisan to use no more than ordinary
skill to appreciate that incorporating the familiar element of different types
of keyboards in Kerr’s device according to known methods would have the
predictable result of improving the user interface to appreciate that
incorporating different types of keyboards in Kerr’s device would have
improved the user interface. See KSR, 550 U.S. at 416-417.
Additionally, Appellants’ contention 4 that the combination of Chen
and Thompson with Kerr is based on improper hindsight reasoning does not
present persuasive evidence that the Examiner’s rejection is based on
knowledge gleaned only from Appellants’ disclosure, or based on
knowledge which was beyond the level of ordinary skill in the art at the
time. (See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)). We are
satisfied that the Examiner has provided “some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,”
which is based on knowledge available to one of ordinary skill in the art at
the time of the invention. (See KSR, 550 U.S. at 417—18 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).) Specifically, we agree with the
Examiner’s finding that displaying each of the split or unsplit keyboards
provides for different sets of advantages that are well known in the art, and
the simple substitution of each of the known keyboard types as the operation
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associated with the detected gesture is obvious. (Final Act. 4; Ans. 6—8)
(See KSR, 550 U.S. at 416: “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”)
We are also unpersuaded of Examiner error by Appellants’ contention
4 that Chen teaches away from the proposed modification. Appellants argue
Chen displays the keyboard automatically, but Appellants have not
identified a teaching in Chen that criticizes, discredits, or otherwise
discourages displaying a split keyboard, and similarly displaying an unsplit
keyboard taught by Thompson, in response to detecting a particular gesture
or detecting a gesture on one of the two touch-sensitive elements of Kerr.
(See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Thus, we do not
agree that either Chen or Thompson teaches away from a combination with
Kerr.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 4, 7, and 10 under 35 U.S.C. § 103(a) as unpatentable over Kerr,
Chen, and Thompson.
Remaining Claims
No separate arguments are presented for the remaining dependent
claims (see App. Br. 23—24). Thus, for the reasons stated with respect to
independent claims 1, 4, 7, and 10, we sustain the Examiner’s rejections of
the dependent claims under 35 U.S.C. § 103(a). See 37 C.F.R.
§ 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner’s decision to reject claims 1—16.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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