Ex Parte Migos et al

Patent Trial and Appeal Board

Aug 27, 2018

12848087 (P.T.A.B. Aug. 27, 2018)

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