Ex Parte Pryor

Patent Trial and Appeal Board

May 23, 2016

11980721 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111980,721 10/31/2007
69753 7590 05/25/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Timothy R. Pryor
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.
106842036801 6660
EXAMINER
WANG-HURST,KATHYW
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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
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PTOL-90A (Rev. 04/07)
~UNITED STATES PATENT AND TR~ADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY R. PRYOR
Appeal2014-007136
Application 11/980, 721
Technology Center 2600
Before ALLEN R. MacDONALD, HUNG H. BUI, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 4, 6-12, 14--17, 21, and 22, which are all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is directed to "enable[ing] the reconfigurable
control of vehicles, homes, computers and other applications. Physical
controls and virtual displayed controls on single and multipoint touch
Appeal2014-007136
Application 11/980, 721
screens are used, separately or in combination." Abstract. Claims 1, 8, 11,
16, and 21 are independent. Claim 1 is reproduced below for reference (with
emphasis added):
1. A method for coordinating and assocrntmg system
functions in a touch-sensitive device, the method comprising:
displaying a plurality of icons on a touch-sensitive
display of the touch-sensitive device, each icon representing a
unique application for peiforming an operation at the touch
sensitive device;
detecting positions of a plurality of objects in contact
with the touch-sensitive display, wherein the objects are in
contact at the same time;
determining two or more icons corresponding to the
detected positions of the plurality of objects;
determining an interconnected operation based on the
applications represented by the determined icons; and
causing the touch-sensitive device to perform the
interconnected operation.
The Examiners Rejection1
Claims 1, 4, 6-12, 14--17, 21, and 22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Westerman (US 6,570,557 Bl; May 27,
2003). Non-Final Act. 4.
ISSUE
Appellant's argument presents us with the following issue: Did the
Examiner err in finding Westerman's multi-touch keyboard discloses the
1 In the Answer, the Examiner withdraws the rejection of claims 1, 4, 6-
12, 14--17, 21, and 22 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph. Ans. 9. Accordingly, such rejection is not before us.
Although the Board has discretion to enter a new ground of rejection for
issues not before us (see 37 C.F.R. § 41.50(b)), no inference should be
drawn when we decline to exercise that discretion.
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Application 11/980, 721
display of a plurality of icons on a touch-sensitive display, each icon
representing a unique application for performing an operation at a touch
sensitive device, as required by the independent claims?
ANALYSIS
Appellant argues the Examiner erred in finding Westerman discloses
the "unique application" recited by claim 1, because the term "'application'
is understood to be software that can be executed to perform an operation,
and the letter and control keys shown in FIG. 3 of Westerman do not
represent unique applications for performing operations as required by claim
1." Br. 9.
We are persuaded by Appellant's argument. We give claims their
broadest reasonable interpretation (BRI) consistent with the specification. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
However, "the proper BRI construction is not just the broadest construction,
but rather the broadest reasonable construction in light of the specification."
In re Man Mach. Interface Techs. LLC, No. 2015-1562, 2016 WL 1567181,
at *3 (Fed. Cir. 2016), citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1298 (Fed. Cir. 2015) ("A construction that is unreasonably broad and
which does not reasonably reflect the plain language and disclosure will not
pass muster.") (internal quotation marks and citations omitted).
Here, Appellant's Specification describes a touch-sensitive display for
sensing input "variables at multiple points at once," which is useful for an
"instrument panel enabling safer vehicle operation" or other "applications
... such as military vehicles, control systems, home automation systems,
CAD or Graphics terminals, and the like." Spec. i-f 14. According to
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Appeal2014-007136
Application 11/980, 721
Appellant's Specification, the term "application" is described as particular
end user systems (see Abstract) including, for example: (1) automobile
applications (Spec. i-f 323), (2) video camera applications (id. at i-f 492), and
(3) home theater applications (id. at i-f 522).
In contrast, Westerman is directed to a touch surface used as a
QWERTY keyboard. See Westerman Figs. 1, 3. We disagree with the
Examiner's finding that "[ t ]he capitalization of letters is a software process
and is an application under a broadest reasonable interpretation" such that
"the Shift keys and letter keys disclosed in Westerman fit the definition of
'unique application."' Ans. 10. We find the functionality of inputting a
particular letter is not a unique application that performs an operation, under
the broadest reasonable construction, because it does not account for the
recited "application" light of Appellant's Specification. See Abstract
(describing applications as, for example, vehicles, homes, and computers).
Particularly, Westerman' s capitalization of letters is not a unique
application, as each letter is capitalized by the same software. Further,
Appellant's Specification differentiates the operation performed by the
selected application (see, e.g., Spec. i-f 496 describing setting the temperature
in a vehicle) from the indication of the performed operation (see, e.g., Spec.
i-fi-1602-603 describing lights showing a selected temperature level). The
Examiner, therefore, incorrectly maps Westerman's indication to the recited
operation. See Ans. 10 ("When you press the letters of a keyboard a
software process runs to display that particular letter"); see also Non-Final
Act. 4 ("an interconnected operation ... [is] the display being updated").
Additionally, we note Appellant's Specification discloses that
"external input devices such as keyboards can be plugged into the system if
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Appeal2014-007136
Application 11/980, 721
desired, to allow the display and computer to function conventionally when
the vehicle is stopped." Spec. i-f 572, see also i-fi-1385, 492. Thus,
Appellant's Specification contemplates a keyboard, but as an external
hardware keyboard, rather than a touchscreen keyboard as shown in
Westerman. See Man Mach. Interface Techs. LLC, 2016 WL 1567181, at *2
("The broadest reasonable interpretation of a claim term cannot be so broad
as to include a configuration expressly disclaimed in the specification.").
Accordingly, we are constrained by the record before us to find the
Examiner's claim construction to be unreasonably broad, and agree with
Appellant that the Examiner erred in the rejection of claim 1.
CONCLUSION
We find Westerman does not disclose all limitations of independent
claim 1, or independent claims 8, 11, 16, and 21, which recite limitations
commensurate in scope with claim 1. Thus, we do not sustain the rejection
of these claims, or the claims depending thereon.
DECISION
The Examiner's rejection of claims 1, 4, 6-12, 14--17, 21, and 22 is
reversed.
REVERSED
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