Ex Parte Migos et alDownload PDFPatent Trial and Appeal BoardAug 27, 201812848087 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/848,087 07/30/2010 150004 7590 08/29/2018 DENTONS US LLP - Apple P.O. Box 061080 Wacker Drive Station, Willis Tower Chicago, IL 60606 FIRST NAMED INVENTOR Charles J. Migos 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. P9096US 1/77770000236101 5210 EXAMINER HORNER, JONATHAN R ART UNIT PAPER NUMBER 2694 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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 dentons_PAIR@firsttofile.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, and WILLIAM JOHN THIMBLEBY Appeal 2016-007383 Application 12/848,087 1 Technology Center 2600 Before IRVINE. BRANCH, KARA L. SZPONDOWSKI, and MICHAEL M. BARRY, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 6, 7, 10, 11, 13, 14, and 18-32, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Technology The application relates to using a touch-sensitive input device having a display to align and/or distribute user interface objects. Spec. ,r 30. 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 5. Appeal2016-007383 Application 12/848,087 Illustrative Claim Claim 18 is illustrative and reproduced below with the limitation at issue emphasized2 : 18. A method, comprising: at a multifunction device with a touch-sensitive surface and a display: displaying a plurality of objects on the display; detecting a first contact on the touch-sensitive surface; while detecting the first contact, detecting a first gesture that includes movement of a second contact and a third contact on the touch-sensitive swface, wherein the first contact is distinct from the second contact and the third contact; and, in response to detecting the first gesture: determining a contact axis based on a location of the second contact relative to a location of the third contact on the touch-sensitive surface; determining an object-alignment axis based on the contact axis; and repositioning two or more of the objects so as to align at least a subset of the objects on the display along the object-alignment axis. 2 In the claims appendix, claim 1, which is rejected on the same grounds as claim 18, includes a typographical error in that the key limitation at issue was omitted from the claim. See App. Br. Claims App'x 49. Because it is clear that this limitation should have been included in the recitation of the claim, we treat the error as harmless, and analyze claim 1 as if the limitation is present. For clarity, however, we review claim 18, argued therewith, as exemplary. 2 Appeal2016-007383 Application 12/848,087 Rejections3 Claims 1, 2, 6, 7, 10, 18, 19, and 30-32 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kaneko (US 2010/ 0007623 Al, issued Jan. 14, 2010), Atkins (WO 2008/138046 Al, published Nov. 20, 2008), Kuzunuki (US 6,266,057 Bl, issued July 24, 2001), and Robbins (US 2006/0001650 Al, published Jan. 5, 2006). Final Act. 8-12. Claims 11, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kaneko, Atkins, Kuzunuki, Robbins, and Richard (US 6,686,935 Bl, issued Feb. 3, 2004). Final Act. 12-15. Claims 20-26 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kaneko, Kuzunuki, and Robbins. Final Act. 15-19. Claims 27-29 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Kaneko, Kuzunuki, Robbins, and Richard. Final Act. 19-20. Claims 1, 2, 6, 7, 10, 18, and 19 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kaneko, Wu (US 2005/0052427 Al, published Mar. 10, 2005), Kuzunuki, and Robbins. Final Act. 20-24. Claims 11, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kaneko, Wu, Kuzunuki, Robbins, and Richard. Final Act. 24--27. 3 Rather than repeat the Examiner's positions and Appellants' arguments in their entirety, we refer to the above mentioned Appeal Brief filed November 30, 2015 ("App. Br.") as well as the following documents for their respective details: the Final Action mailed January 2 8, 2015 ("Final Act.") the Examiner's Answer mailed May 20, 2016 ("Ans."), and Appellants' Reply Brief ("Reply Br.") filed July 20, 2016. 3 Appeal2016-007383 Application 12/848,087 ISSUES 4 1. Did the Examiner err in finding that the proposed combinations teach or suggest "while detecting the first contact, detecting a first gesture that includes movement of a second contact and a third contact on the touch- sensitive surface, wherein the first contact is distinct from the second contact and the third contact," as recited in claim 18? 2. Did the Examiner err in finding that the proposed combinations teach or suggest "while the first contact and the second contact continue to be detected on the touch-sensitive surface: detecting a second gesture that includes movement of one or more of the first contact and the second contact " . d. 1 . 20? ... , as recite m c aim . ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential); 37 C.F.R. § 4I.37(c)(i)(iv). The limitation: "while detecting the first contact, detecting a first gesture that includes movement of a second contact and a third contact on the touch- sensitive surface, wherein the first contact is distinct from the second contact and the third contact" Independent claim 18 recites "while detecting the first contact, detecting a first gesture that includes movement of a second contact and a third contact on the touch-sensitive surface, wherein the first contact is distinct from the second contact and the third contact" (herein "the argued 4 Because we reverse the Examiner based on dispositive issues, we do not address all issues raised by Appellants. 4 Appeal2016-007383 Application 12/848,087 limitation"). Independent claims 1 and 19 recite corresponding subject matter. Claims 2, 6, 7, 10, 11, 13, 14, and 30-32 depend from these independent claims. The Examiner rejects the argued limitation over the combination of Kaneko and Atkins in one rejection and the combination of Kaneko and Wu in a second rejection. Final Act. 8-10, 20-22. With respect to the argued limitation in the rejection over Kaneko and Atkins, the Examiner finds Kaneko teaches the argued limitation except that Kaneko "fail[ s] to teach detecting the first gesture while detecting the first contact." The Examiner finds that Atkins teaches what is missing from Kaneko. Id. at 9. With respect to the argued limitation in the rejection over Kaneko and Wu, the Examiner finds Kaneko teaches the argued limitation except that Kaneko "fail[ s] to teach that the first contact is distinct from the second contact and the third contact." Id. at 21. Notably, viewing the record as a whole, the Examiner finds Kaneko fails to teach both "detecting the first gesture while detecting the first contact" and "the first contact is distinct from the second contact and the third contact." Id. at 8-10, 20-22. Additionally, the Examiner finds "Wu et al. is merely relied on to teach that the contacts can be distinct." Ans. 9. For at least some of the reasons argued by Appellants (see, e.g., App. Br. 16-19; Reply Br. 13-17, 18-20) we cannot square the Examiner's findings. Appellants argue, inter alia, that "contact," properly construed, means "a contact on the touch-sensitive surface by a stylus, finger, or other suitable object or appendage" and that the argued limitation requires three distinct, 5 Appeal2016-007383 Application 12/848,087 simultaneous contacts, two of which move. See App. Br. 16-20; Reply Br. 5-13. We agree that this is a proper construction. We also are persuaded that the Examiner's proposed combination of Kaneko and Atkins does not teach the argued limitation, properly construed, because we do not find an adequate explanation for how this combination teaches detecting a two-contact gesture "while detecting [a] first contact." We are not persuaded, however, that Wu fails to disclose detecting a two-gesture contact "while detecting [a] first contact." See, e.g., Wu Abstract ("The invention provides a system and method for recognizing different hand gestures made by touching a touch sensitive surface. The gestures can be made by one finger, two fingers, more than two fingers, one hand and two hands.") But we cannot sustain the Examiner's rejection because it relies on Wu merely "to teach that the contacts can be distinct." Ans. 9, 18. See also Reply Br. 13 (taking the Examiner "at his word"). 5' 6 5 Should further prosecution ensue, we leave it to the Examiner to consider whether Wu alone discloses the argued limitation and whether one of ordinary skill in the art would recognize that Wu's disclosure includes moving only two of three or more contacts such that a "contact axis" may be determined in accordance with the remainder of the claim, the disclosure of which by the cited references is not in dispute. See, e.g., claim 18 ("in response to detecting the first gesture: determining a contact axis based on a location of the second contact relative to a location of the third contact"); see generally App. Br. and Reply Br. 6 We note, without deciding, that Appellants' arguments that the Examiner's proposed combinations of Kaneko/Wu and Kaneko/ Atkins are erroneous because they each require a change in Kaneko' s principle of operation and Kaneko teaches away (App. Br. 25-26, 28-30; Reply Br. 16-17, 21-27) appear unpersuasive, on this record, for at least the reasons stated by the Examiner (Ans. 9-10, 12-13). Should these issues arise in continued prosecution of the presently pending claim, we will review them anew. 6 Appeal2016-007383 Application 12/848,087 Accordingly, on this record, we cannot sustain the Examiner's rejections of claims 1, 2, 6, 7, 10, 11, 13, 14, 18, 19, and 30-32, all of which include the argued limitation. The limitation: "while the first contact and the second contact continue to be detected on the touch-sensitive surface: detecting a second gesture that includes movement of one or more of the first contact and the second contact . ... " Independent claim 20 recites "while the first contact and the second contact continue to be detected on the touch-sensitive surface: detecting a second gesture that includes movement of one or more of the first contact and the second contact .... " Claims 21 and 22 recite commensurate subject matter. Claims 23-29 depend from claim 22. Appellants argue that the cited references do not teach or suggest this limitation. Specifically, Appellants argue that the Examiner errs in finding that Kaneko teaches that "the two contact points are still being detected and allows for one of the two points to be re-designated such that an updated contact axis is determined using the steps as shown in Fig. 5." Reply Br. 34--37 (quoting Ans. 18). Appellants' arguments persuade us the Examiner errs. We are persuaded because, as Appellants point out, "Kaneko teaches that the contacts of the first gesture do not continue to be detected when a second gesture is detected [because] Kaneko teaches that at least one finger must be removed (i.e., lifted) from the touch-sensitive panel to complete detection of what the Examiner asserts is the first gesture." Id. at 35 (citing Kaneko ,r,r 79, 121-22). We also are persuaded of error because the Examiner's construction of "continue" to include resuming an activity after 7 Appeal2016-007383 Application 12/848,087 interruption is not reasonable in light of the claim language, which reads "while the first contact and the second contact continue to be detected." Ans. 18-19. This meaning of "continue" (resuming an activity after interruption) is negated by the claims' use of "while," as in "while [ the detection] continue[s]." The operative word is "while," and Kaneko's finger liftoff, which clearly interrupts the detecting, precludes this meaning of "continue." Accordingly, on this record, we cannot sustain the Examiner's rejection of claim 20 or of claims 21-29 for similar reasons. DECISION For the reasons above, we reverse the Examiner's decision rejecting claims 1, 2, 6, 7, 10, 11, 13, 14, and 18-32. REVERSED 8 Copy with citationCopy as parenthetical citation