Ex Parte Prakash et al

Patent Trial and Appeal Board

Feb 5, 2018

13366840 (P.T.A.B. Feb. 5, 2018)

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.
13/366,840 02/06/2012 Priya Prakash 042933/414371 4636
10949 7590
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
EXAMINER
FARAGALLA, MICHAEL A
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
02/07/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRIYA PRAKASH, JOE PHILLIPS, and
IAN MOREIRA DE ANDRADE SILVA
Appeal 2016-002702
Application 13/366,840
Technology Center 2600
Before ALLEN R. MacDONALD, NATHAN A. ENGELS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002702
Application 13/366,840
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3—8, 10—15, and 17—21. Claims 2, 9, and 16 have been cancelled.
App. Br. 14—18. We have jurisdiction under 35 U.S.C. § 6(b).
Representative Claim
Representative claim 8 under appeal reads as follows (emphasis,
formatting, and bracketed material added):
8. A method comprising:
[A.] providing for display of a first screen comprising at least one
representation of first interactive content;
[B.] receiving an input from a user comprising a contact component
and a movement component;
[C.] providing for a visual indication, in response to receipt of the
contact component and prior to receipt of the movement
component, of an operation to be performed, wherein the
operation
[i.] is determined based on at least a position of the contact
component and
[ii.] comprises a visual transition from the first screen to a
second screen comprising at least one representation of a
second interactive content; and
[D.] providing for execution of the operation based on receipt of at
least a portion of the movement component,
[E.] wherein the visual indication comprises
[i.] a graphical effect applied to at least a portion of the screen
proximate the position of the contact component and
[ii.] reveals a portion of the second screen underlying the first
screen.
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Application 13/366,840
Rejection on Appeal
The Examiner rejected claims 1, 3—8, 10-15, and 17—21 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Hinckley et al. (US 2010/0251112 Al; pub. Sept. 30, 2010) and
Chaudhri (US 8,587,528 B2; iss. Nov. 19, 2013).1
Issues on Appeal
Did the Examiner err in rejecting claim 8 as being obvious?
ANALYSIS2
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred.
A
The Examiner finds Hinckley shows “[p]rovid[ing] for a visual
indication, in response to receipt of the contact component and prior to
receipt of the movement component, of an operation to be performed.”
Final Act. 3.
Appellants contend that the Examiner erred in rejecting claim 8 under
35 U.S.C. § 103(a) because “any ‘visual indication’ provided in Hinckley
occurs as the operation is being executed, and not ‘prior to receipt of the
movement component.’” App. Br. 5. Specifically, Appellants argue:
1 As to this rejection, our decision as to the rejection of claim 8 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 1, 3—7, 10-15, and 17—21 is not discussed further herein.
2 The contentions discussed herein are determinative as to the rejection on
appeal.
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Appeal 2016-002702
Application 13/366,840
There is no teaching or suggestion in Hinckley of any
indication that occurs prior to the movement of the image. The
reference made by the Examiner in the Final Office Action to the
original location in Hinckley being indicated to the user
performing the operation by a dashed line and the final location
being indicated to the user (at the same instance in time) by a
solid line is ill-informed, as the use of dashed versus solid lines
in the figures is merely for explanatory purposes, so that the
reader of Hinckley will understand the operation being described
in the disclosure of Hinckley.
App. Br. 6. Appellants further argue:
In his Advisory Action mailed on January 5, 2015, the
Examiner additionally points to Figs. 8-10 of Hinckley as
showing examples of a visual indication that is presented prior to
a drag operation.
App. Br. 6. However, according to Appellants:
Figures 8-10 of Hinckley ... do not show a visual
indication prior to movement. The “duplication” that is allegedly
shown in the cited Figs. 8-10 is only apparent to the user after
movement has occurred, which is why the duplicated icon is not
shown in Fig. 8 (illustrating the touch input, only), but rather is
shown in Figs. 9 and 10 (showing movement of the icon
occurring or having already occurred).
App. Br. 7.
The Examiner responds as follows with a new citation to Hinckley:
(a) Regarding the argued limitation of “provide for a visual
indication, in response to receipt of the contact component and
prior to receipt of the movement component”, Hinckley et al
(Publication number: US 2010/0251112) shows on figures 8-10,
as well as paragraph 44 that an object 104 is duplicated (this can
be read as the visual effect), the user then drags that object using
a finger or a pen touch. Therefore, the visual indication takes
place prior to the dragging (read as movement component), the
contact component is read as touch by finger or touch pen.
([b]) Further, another example given by Hinckley et al is
figures 11-13, here a user touches a folder, the folder shows files,
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Application 13/366,840
then the user drags one of the file[s]. This also shows that there
is a “visual indication’ [sic] prior to the dragging motion.
The operation to be performed is read as copying and
pasting the file. Regarding the limitation of “wherein the
operation is determined based on at least a position of the contact
component and comprises a visual transition from the first screen
to a second screen comprising at least one representation of a
second interactive content”, Hinckley on paragraph 44 shows
that upon duplicating the object, the user precisely drags the
duplicated object via a pentouch and precisely places the
duplicated object adjacent to a line being displayed on touch
sensitive display device 102, as shown in FIG. 10.
Ans. 7.
Appellants reply to the Examiner’s Answer to further argue,
First, the Examiner has no basis for his conclusion that the
duplication occurs prior to the user beginning to drag his or her
finger to a new location. The duplication may occur as the user
begins to move his or her finger, for example ....
Second, even if the Examiner’s interpretation is correct
and the duplication occurs at the moment that the object is
touched (which Appellant does not concede), such a duplication
cannot be considered a visual indication because it is not visually
apparent to the user that such a duplication has occurred until
after the user begins to move the duplicated object. In other
words, a visual indication must be able to be seen; otherwise it
does not “visually indicate” anything. There is, however, no
disclosure in Figs. 8-10 or the description of Hinckley that would
indicate that the user can see the duplicated object at any point
before the user has begun to move the object to the desired
location on the screen (as apparent from Figs. 9 and 10). The
views depicted in Figs. 9 and 10 clearly show the screen after
such movement, and thus the Examiner’s conclusions that
Hinckley teaches a visual indication “in response to receipt of the
contact component and prior to receipt of the movement
component” is unjustified.
In the second example the Examiner provides (the second
point (a) on page 7 of the Examiner’s Answer), the Examiner
asserts that Figs. 11-13 also show a visual indication prior [to]
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Application 13/366,840
the user’s dragging motion. This example is even less relevant
than that of Figs. 8-10. ... [T]he display of the expanded file
items in Fig. 12 cannot be considered the claimed visual
indication as it occurs as a result of the first touch gesture, and
the first touch gesture has no movement component. Appellant
is therefore at a loss to discern what other visual indications there
may be in the example of Figs. 11-13 that occur in response to
the contact component and prior to receipt of the movement
component, as claimed, where the contact component and the
movement component are aspects of the same input, as claimed.
Reply Br. 2—3.
We conclude, consistent with Appellants’ argument, there is
insufficient articulated reasoning to support the Examiner’s findings that
Hinckley shows “[p]rovid[ing] for a visual indication, in response to receipt
of the contact component and prior to receipt of the movement component,
of an operation to be performed.” Final Act. 3. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner’s final
conclusion that claim 8 would have been obvious to one of ordinary skill in
the art at the time of Appellants’ invention.
B
The Examiner finds:
Chaudhri shows that the visual indication comprises a graphical
effect applied to at least a portion of the screen proximate the
position of the contact component. . . (see figures 7 and 9).
Final Act. 4.
Appellants contend that the Examiner erred in rejecting claim 8 under
35 U.S.C. § 103(a) because
In Figs. 7 and 9 of Chaudhri . . . there is no indication of where
the user makes contact with the screen. Chaudhri cannot be
interpreted as teaching a graphical effect applied proximate the
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Application 13/366,840
position of the contact component because it is unknown where
the position of the contact in Chaudhri (if it exists) is located.
App. Br. 11.
The Examiner responds (reproduced below in its entirety) with a new
citation to Hinckley.
Regarding the argued limitation of “provide for a visual
indication, in response to receipt of the contact component and
prior to receipt of the movement component”, Hinckley et al
(Publication number: US 2010/0251112) shows on figures 8-10,
as well as paragraph 44 that an object 104 is duplicated (this can
be read as the visual effect), the user then drags that object using
a finger or a pen touch. Therefore, the visual indication takes
place prior to the dragging (read as movement component), the
contact component is read as touch by finger or touch pen.
Therefore, the duplication constitutes a “graphical effect”.
Ans. 8—9.
Our review of this Examiner’s response finds no meaningful
relevance to Appellants’ “proximate the position of the contact component”
argument. Rather, this Examiner’s response merely repeats an earlier
unpersuasive response (Ans. 7) directed to Appellants’ earlier “visual
indication prior to receipt” argument.
We conclude, consistent with Appellants’ argument, there is
insufficient articulated reasoning to support the Examiner’s findings that
Chaudhri shows “the visual indication comprises a graphical effect applied
to at least a portion of the screen proximate the position of the contact
component.” Final Act. 4 (emphasis added). Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner’s final
conclusion that claim 8 would have been obvious to one of ordinary skill in
the art at the time of Appellants’ invention.
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 3—8, 10-15, and 17—21 as being unpatentable under 35 U.S.C.
§ 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
DECISION
The Examiner’s rejection of claims 1, 3—8, 10-15, and 17—21 is
reversed.
REVERSED
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