Ex Parte Ording et al

Patent Trial and Appeal Board

Nov 13, 2017

13399987 (P.T.A.B. Nov. 13, 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.
13/399,987 02/17/2012 Bas Ording 106842054500
(P10101US5)
2125
69753 7590 11/15/2017
APPT F cln MORRTSON Rr FOFRSTFR T T P T A
EXAMINER
707 Wilshire Boulevard
Los Angeles, CA 90017
BURWELL, JOSEPH R
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
EOfficeL A @ mofo. com
PatentDocket @ mofo. com
pair_mofo @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAS ORDING and JOHN O. LOUCH
Appeal 2017-001542
Application 13/3 99,9871
Technology Center 2100
Before BRUCE R. WINSOR, KARA L. SZPONDOWSKI,
and MICHAEL M. BARRY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—27, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest identified by Appellants is Apple Inc. App. Br. 1.
Appeal 2017-001542
Application 13/399,987
STATEMENT OF THE CASE
Appellants’ disclosed invention “relates generally to managing virtual
workspaces on a computing device.” Spec. 12. Claim 1, which is
illustrative, reads as follows:
1. A method performed by one or more processors
executing on a computer system, the method comprising:
concurrently displaying:
a plurality of workspace images in a user interface
that correspond to different virtual
workspaces that are available to a user of the
computer system; and
a view of a first virtual workspace including a
representation of a window that is associated
with the first virtual workspace;
while concurrently displaying the plurality of workspace
images and the view of the first virtual workspace,
receiving user input indicating a movement of the
representation of the window from the view of the
first virtual workspace onto a respective workspace
image of the plurality of workspace images,
wherein the respective workspace image
corresponds to a second virtual workspace that is
different from the first virtual workspace, and the
representation of the window is larger than the
respective workspace image; and
in response to receiving the input indicating movement of
the representation of the window onto the
respective workspace image, scaling down the
representation of the window to fit within the
respective workspace image.
Independent claims 8, 17, and 26, along with their dependent claims
9, 18, and 27, stand rejected under 35 U.S.C. § 112, second paragraph, as
2
Appeal 2017-001542
Application 13/399,987
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Applicant regards as the invention. See Final Act. 2—3.
Dependent claims 9, 18, and 27 stand rejected under 35 U.S.C. § 112,
fourth paragraph, for failing to further limit the claimed invention. See Final
Act. 3.
Claims 1—27 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Robertson et al. (US 7,512,902 B2; Mar. 31, 2009)
(hereinafter “Robertson”). See Final Act. 4—12.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Jan. 8, 2016; “Reply Br.” filed Nov. 8, 2016) and the Specification
(“Spec.” filed Feb. 17, 2012) for the positions of Appellants and the Final
Office Action (“Final Act.” mailed Jan. 12, 2015) and Answer (“Ans.”
mailed Sept. 8, 2016) for the reasoning, findings, and conclusions of the
Examiner.
REJECTIONS UNDER 35 U.S.C. § 112
Appellants do not traverse the rejections of claims 8, 9, 17, 18, 26, and
27 under 35 U.S.C. § 112, first paragraph, and claims 9, 18, and 27 under 35
U.S.C. § 112, fourth paragraph. See Ans. 15—16; Reply Br. 2. Therefore
Appellants have waived argument as to the § 112 rejections of claims 8, 9,
17, 18, 26, and 27, see 37 C.F.R. § 41.37(c)(l)(iv) (2014), and we
summarily sustain those rejection, see Manual of Patent Examining
Procedure (MPEP) §§ 1205.02, 1215.03 (9th ed., Rev. 7, Nov. 2015).
3
Appeal 2017-001542
Application 13/399,987
REJECTION UNDER 35 U.S.C. § 102(b)
Issue
The pivotal issue presented by Appellants’ arguments is whether the
Examiner errs in finding Robertson discloses
while concurrently displaying the plurality of workspace images
and the view of the first virtual workspace, receiving user input
indicating a movement of the representation of the window from
the view of the first virtual workspace onto a respective
workspace image of the plurality of workspace images, wherein
the respective workspace image corresponds to a second virtual
workspace that is different from the first virtual workspace, and
the representation of the window is larger than the respective
workspace image; and in response to receiving the input
indicating movement of the representation of the window onto
the respective workspace image, scaling down the representation
of the window to fit within the respective workspace image
(emphasis added), as recited in claim 1.
Analysis
The Examiner maps the recited “window” in claim 1 to Robertson’s
window 738 and maps the recited “respective workspace image” to
Robertson’s task 736. See Final Act. 4—5 (citing Robertson, col. 26,11. 31—
49, Figs. 46B—E). The Examiner explains as follows:
Examiner understands, as would not only one having ordinary
skill in the art by Robertson et al.’s effective filing date of 1999
but also a mere user of the disclosed system, that window 738
could be apparently pulled forward as much as a user might
desire. In the context of ordinary knowledge of 3D virtual
spaces, one could potentially apparently pull window 738 to an
apparent distance that is so close to the user that window 738
blocks the user’s entire view of the remainder of the virtual
space, thereby making window 738 to reach an apparent size that
is as large as the user might desire, and thereby necessarily
making window 738 apparently larger than all other objects in
the 3D virtual space, including any of the task objects. The user
4
Appeal 2017-001542
Application 13/399,987
could leave window 738 at that position and come back to it at a
later point in time. At that moment, window 738 is larger than a
task object, as required by the analogized claim language, or in
reference to the noted statement in the appeal brief as noted
above, “the window being moved onto the workspace image is
larger than the workspace image”. The user could then perform
an apparent push of window 738 backwards into the virtual
space; when the user begins to do so, that is the moment in
time that can be reconciled to the requirements of the
analogized claim language, or in reference to the noted
statement in the appeal brief as noted above, “at the time the input
for doing so is received”.
Ans. 22 (bold-faced emphases added).
Appellants contend “Robertson wholly lacks a detail contained in
claim 1—namely, that the window being moved onto the workspace image
is larger than the workspace image at the time the input for doing so is
received.” App. Br. 10. Appellants argue that the Examiner improperly
relies on inherency, explaining as follows:
[The] Examiner . . . fails to make even a [prima facie] case for
inherent disclosure. Instead, Examiner proposes, and relies
heavily on, custom modifications of Robertson in which the
apparent size of a window could be larger than the workspace
image. At best, Examiner's modifications may be compatible
with Robertson. But Examiner offers no basis in fact and/or
technical reasoning showing inherent disclosure under the
appropriate legal standard: whether the above limitations
necessarily flow from the teachings of Robertson.
Reply Br. 4—5. We agree with Appellants.
We agree with the Examiner that in an anticipation rejection it is
proper to consider what one of ordinary skill in the art would reasonably
infer from a cited reference. Ans. 23; see In re Preda, 401 F. 2d 825, 826
(CCPA 1968) (“[In establishing anticipation] it is proper to take into account
not only specific teachings of the reference but also the inferences which one
5
Appeal 2017-001542
Application 13/399,987
skilled in the art would reasonably be expected to draw therefrom.”) (citing
In re Shepard, 319 F.2d 194 (CCPA 1963). Further, we accept, arguendo,
that a person of ordinary skill in the art would have drawn the inferences
described by the Examiner. See, e.g., Ans. 22. However, to show
anticipation, it is necessary that a single reference disclose, explicitly or
inherently, all of the limitations of the claim, Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), arranged as in the claim,
In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990), in as complete detail as in
the claim, Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989), abrogated on other grounds as recognized by Robert Bosch LLC v.
Pylon Mfg. Corp., 659 F.3d 1142, 1148 (Fed. Cir. 2011). The inferences
described by the Examiner would merely establish that it is probable or
possible that the user of Robertson’s system could make it perform as
described in the claim. “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (quoting Cont’l Can Co. v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991)). The Examiner has not established
that it necessarily flows from Robertson’s disclosure that the user of
Robertson’s system would use it in the manner described by the Examiner,
or even that it could be used in the precise manner described by the
Examiner. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)
(‘[Inherency requires that] the allegedly inherent characteristic necessarily
flows from the teachings of the applied prior art.”).
For emphasis, we note that it is unclear to us that the skilled person
would, in fact, infer that the user of Robertson’s system could “pull window
6
Appeal 2017-001542
Application 13/399,987
738 to an apparent distance that is so close to the user that window 738
blocks the user's entire view of the remainder of the virtual space” (Ans. 22),
as posited by the Examiner. Such a use would appear to require pulling
window 738 completely out of the boundaries of virtual space illustrated in
Robertson’s Figures 46A—E. Further, it is unclear to us that the user of
Robertson’s system “could leave window 738 at that position [outside of any
of Robertson’s tasks] and come back to it at a later point in time” (Ans. 22).
The Examiner does not point to any disclosure in Robertson of these
capabilities.
Conclusion
The Examiner does not establish that claim 1 is anticipated by
Robertson. The Examiner relies, in relevant part, on substantially the same
reasoning in rejecting independent claims 4, 8, 10, 13, 17, 19, 22, and 26
(see Final Act. 7—8, 11—12) and, therefore, for substantially the same reasons
as for claim 1, does not establish that claims 4, 8, 10, 13, 17, 19, 22, and 26
are anticipated by Robertson. Accordingly, constrained by the record before
us,2 we do not sustain the rejection for anticipation by Robertson of (1)
independent claims 1, 4, 8, 10, 13, 17, 19, 22, and 26; and (2) claims 2, 3, 5—
1,9, 11, 12, 14—16, 18, 20, 21, 23—25, and 27, which variously depend from
claims 1, 4, 8, 10, 13, 17, 19, 22, and 26.
2 We express no opinion as to whether any of claims 1—27 are obvious under
35 U.S.C. § 103(a) over Robertson alone or in combination with other prior
art. As pointed out by Appellants, the rejection before us is for anticipation
under § 102(b) and not obviousness under § 103(a). See Reply Br. 5 n.l.
7
Appeal 2017-001542
Application 13/399,987
DECISION
The decision of the Examiner to reject claims 8, 9, 17, 18, 26, and 27
under 35 U.S.C. § 112 is summarily affirmed.
The decision of the Examiner to reject claims 1—27 under 35 U.S.C. §
102(b) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
8