Ex Parte Paretti et al

Patent Trial and Appeal Board

Sep 19, 2016

13334431 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/334,431 12/22/2011
10949 7590 09/21/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Christopher Paretti
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.
042933/413192 1059
EXAMINER
POINTE, WHITNEY A
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER PARETTI and WILLIAM LINDMEIER
Appeal2015-005284
Application 13/334,431
Technology Center 2600
Before JASON V. MORGAN, MELISSA A. RAAP ALA, and
NABEEL U. KHAN, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2015-005284
Application 13/334,431
REJECTIONS ON APPEAL
Claims 15-18 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Final Act. 2.
Claims 1--4, 8-11, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McDaniel (US 8,433,626 Bl; April 30, 2013),
Hemmings (US 7,315,312 B2; Jan. 1, 2008), and Shaffer (US 2010/0302278
Al; Dec. 2, 2010). Final Act. 3-14.
Claims 5-7, 12-14, and 19-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McDaniel, Hemmings, Shaffer, and
Liesaputra (V. Liesaputra, I.H. Witten: Computer Graphics Techniques for
Modeling Page Turning (Working Paper: 08/2007), Dept. of Comp. Sci.,
Univ. of Waikato, Hamilton, New Zealand (Oct. 2007)). Final Act. 14--19. 1
35 U.S.C. § 101
The Examiner finds claims 15-18 are non-statutory under 35 U.S.C.
§ 101 because the claims encompass transitory storage media. Final Act. 2.
Appellants amended claim 15 in an After Final Amendment (dated June 9,
2014) to recite the computer-readable storage medium is "non-transitory."
The claim amendment was entered by the Examiner; however, the section
101 rejection was not explicitly withdrawn or discussed. See Adv. Act. 1-2.
1 The Final Action's statement of rejection for dependent claims 5-7, 12-14,
and 19-21 does not denote Hemmings and Shaffer, which are applied in the
rejection of the respective base claims 1, 8, and 15. See Final Act.14--15.
Because the Examiner incorporates the findings and rationale presented in
claim 1 in the rejection (Ans. 5) and these findings include Hemmings and
Shaffer, (see Ans. 2--4), we understand the rejection to be over Hemmings
and Shaffer in addition to McDaniel and Liesaputra.
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Application 13/334,431
We determine the amendment overcomes the rejection. Accordingly,
we reverse the 35 U.S.C. § 101 rejection of claims 15-18.
35 U.S.C. 103(a)
Issue
Appellants' contentions present us with the following issue: Did the
Examiner set forth sufficient articulate reasoning, with a rational
underpinning, to support combining the teachings of McDaniel, Hemmings,
and Shaffer?
Analysis
We have reviewed the Examiner's rejection in consideration of
Appellants' contentions and the evidence of record. We agree with
Appellants that the Examiner has failed to establish the claims are
unpatentable over the cited prior art.
For each of the independent claims, the Examiner relies on ~v1cDaniel,
Hemmings, and Shaffer as follows. The Examiner relies on McDaniel's
Figure 3 rotation of element 253 to teach "provid[ing] for a visual transition
from the origin screen to a destination screen representing a second,
different interactive content in response to the input by applying a graphical
effect to the display of the origin screen" (claims 1, 8, and 15). Final Act. 4.
The Examiner relies on Hemmings' Figure 4 page tum of element 5 to teach
"the graphical effect comprises a translation aspect so as to cause the origin
screen to move along an axis of a two-dimensional plane with respect to the
viewing area" (claims 1, 8, and 15). Ans. 3--4; Final Act. 5. And, the
Examiner relies on Shaffer's Figures 7 A-B rotation of element 710-730
(composing the interface) to teach "the graphical effect further comprises a
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Appeal2015-005284
Application 13/334,431
rotational aspect so as to cause the origin screen to rotate within the
two-dimensional plane about the reference point" (claims 1, 8, and 15).
Ans. 2-3; Final Act. 4--5. The Examiner finds it would have been obvious to
one of ordinary skill in the art at the time the invention was made to modify
the teachings of McDaniel to include Hemmings' teachings of the claimed
translation aspect "in order to realistically depict a turning, flipping
animation motion" and Shaffer's teachings of the claimed rotational aspect
"in order to realistically depict a turning, flipping animation motion." Final
Act. 5.
Appellants contend the Examiner has not identified a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the prior art elements in the manner claimed. App. Br. 8; Reply
Br. 2-5. Appellants also contend no reason exists because there is no
apparent manner of combining the cited features, stating:
Appellant's argument with respect to the non-combinability of
the references cited by the Examiner is that one skilled in the art
would have no reason to combine a reference (McDaniel)
regarding a 3-dimensional "flipping" from a first view to a
second view in a region on a network page with a reference
(Shaffer) regarding a 2-dimensional rotation of a single screen of
displayed content to match a new orientation of the electronic
device. Like McDaniel, Hemmings also relates to providing "a
realistic 3-dimensional graphical representation."
Reply Br. 4--5.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
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Application 13/334,431
agree with Appellants that the Examiner's reason to combine does not have
the requisite rational underpinning required to support the legal conclusion
of obviousness. The Examiner's rationale for combining McDaniel's
flipping over of element 253, Hemmings' page turning of element 5, and
Shaffer's dial-like rotating of element 710-730 essentially consists of a mere
conclusion that the combination would "realistically depict a turning,
flipping animation motion." App. Br. 5. The Examiner never presents an
underpinning reason and explanation for piecing these movements together.
The Examiner, rather, only explains how these movement respectively teach
the claim features quoted supra. See e.g., Ans. 3--4. Because the Examiner
fails to present findings that show how the cited movements of McDaniel's,
Hemmings', and Shaffer's would be combined, we cannot discern, but for
the movements recited in the claimed invention, how the proposed
combination pieces together the movements. In KSR, the Supreme Court
guides that "[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning." KSR, 550 U.S. at 421. The Examiner's articulated
reasoning is insufficient to support the combination because it improperly
relies upon ex post reasoning.
For the reasons stated above, Appellants have persuaded us of error in
the 35 U.S.C. § 103(a) rejection of the independent claims. Accordingly, we
do not sustain the 35 U.S.C. § 103(a) rejections of: (1) independent claims 1,
8, and 15; and (2) their dependent claims 2-7, 9-14, and 16-23 also rejected
over the deficient combination.
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Appeal2015-005284
Application 13/334,431
DECISION
We reverse the Examiner's decision to reject claims 1-21.
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.
§ 41.50(±).
REVERSED
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