Ex Parte Russell et al

Patent Trial and Appeal Board

Sep 28, 2016

12701827 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121701,827 02/08/2010 Deborah C. Russell
33438 7590 09/30/2016
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
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.
DC-17628 1848
EXAMINER
PARKER, JEFFREY ALAN
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
tmunoz@tcchlaw.com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBORAH C. RUSSELL, DAVID BREBNER, and
ROBERT GRAPES
Appeal2015-004664
Application 12/701,827 1
Technology Center 2600
Before JOHNNY A. KUMAR, LARRY J. HUME, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-5 and 7-11. Appellants have canceled claims 6
and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Dell Products L.P.
Br. 1.
Appeal2015-004664
Application 12/701,827
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed "invention relates to information
handling systems and more particularly to intuitive grouping and viewing of
grouped objects using touch." Spec. ,-r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and labeling added to contested limitations):
1. A method for providing intuitive grouping and
viewing of grouped objects using touch comprising:
providing a touch sensitive display device;
presenting a first object on the touch sensitive display
device;
sensing when the first object is touched;
enabling the first object to be dragged based upon a user
dwelling on the first object;
associating the first object with a second object when the
first object is dragged in proximity to the second object, the
associating creating a pile containing the first object and the
second object; and,
unassociating the first object and the second object in
response to a gestural input of the user, the gestural input
comprising dwelling on the pile and then moving at least two
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Nov. 19, 2014); Examiner's Answer ("Ans.," mailed Jan. 16, 2015); Final
Office Action ("Final Act.," mailed July 25, 2014); and the original
Specification ("Spec.," filed Feb. 8, 2010). We note Appellants did not file a
Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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Application 12/701,827
fingers apart, spreading the pile across a workspace in response
to moving the at least two fingers apart,
the unassociating comprising generating an on screen
display, the on screen display comprising a visual affordance
reflecting an unstuck behavior.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Choi et al. ("Choi '641 ") US 2010/0088641 A 1 Apr. 8, 2010
Choi et al. ("Choi '971") US 2010/0090971 Al Apr. 15, 2010
Rejection on Appeal
Claims 1-5 and 7-11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Choi '971 and Choi '641. Ans. 3. 3
CLAIM GROUPING
Based on Appellants' arguments (Br. 2-5), we decide the appeal of the
obviousness rejection of claims 1-5 and 7-11 on the basis of representative
claim 1.
ISSUE
Appellants argue (Br. 2-5) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination of Choi '971 and
Choi '641 is in error. These contentions present us with the following issue:
3 The Examiner refers to the Choi '641 reference as "Choi II" throughout the
Final Action and Answer.
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Appeal2015-004664
Application 12/701,827
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "method for providing intuitive grouping and viewing of
grouped objects using touch" that includes, inter alia, the step of
"associating the first object with a second object when the first object is
dragged in proximity to the second object, the associating creating a pile
containing the first object and the second object," as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants contend, "the associating as disclosed and claimed is
patentably distinct from the stack [of Choi '641 because] in Choi ['641] the
stack is generated by combining a sequential set of objects by a multi-touch
gesture of sliding a fingers together while the fingers are on the first and last
object of the sequence." App. Br. 5 (citing Choi '641 Fig. 6B). Further, in
Choi '641 "the top object in the stack provides a representation of all of the
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Application 12/701,827
items within the stack (see e.g., item 'C-H' of Choi ['641])." Id. Appellants
contrast "associating" limitation LI with Choi '641 by alleging, "[i]n the
present claims, the associating creates a pile [containing] the first object and
the second object when [] the first object is dragged in proximity to the
second object." Id. (emphasis added). Appellants further attempt to
distinguish limitation L 1 by arguing "that the associating creating a pile as
disclosed and claimed is patentably distinct from the single icon that is
created when the two objects are contracted as disclosed by Choi ['641]." In
essence, Appellants' argument regarding limitation L 1 is that the recited
"pile" does not read on the icon taught by Choi '641.
"In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.").
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
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In response, the Examiner further explains the rejection:
In the rejection, the base reference Choi ['971] teaches
stacks. Which are icons/objects that are "picked up" by multi-
touch input and stored in order of pickup selection (Choi ['971
i-f ]68 and Fig. 6) and can be released in reverse order (Choi
['971 i-f ]69). The claims are very broad regarding the definition
of a ''pile," requiring only "associating the first object with a
second object when the first object is dragged in proximity to
the second object" to create a ''pile containing the first object
and the second object." The Specification, while not necessary
for the interpretation of the claims, in paragraph 4, describes
that a pile can be used to stick one dragged object into
association with another object, which can be used to organize
and/or send objects to another desired location.
Ans. 6-7 (emphasis added).
In terms of original disclosure that arguably might be construed as a
"definition" of the recited "pile," we note paragraph 4 of Appellants'
Specification, cited by the Examiner in the above quotation states, in
pertinent part, "[s]pecifically, a user can tap on an object and drag it on top
of another object. The first object is associated with (e.g., sticks to) the
second object, thereby forming a pile. The pile can continue to be used to
'stick' to other single objects and/or formed piles. The pile can then be used
to organize and/or send objects to another desired location." Spec. i-f 4.
We agree with the Examiner's finding that Choi '971 teaches both
definitions, i.e., that found in the Specification and that by the claim
language itself, because Choi '971 teaches or suggests
the gestures for picking up a first object into a stack, dragging it
to another icon/object, and adding the second object into a stack
with the first, are discussed in paragraphs 60-65 and 73. The
only lacking limitation from the claimed description in Choi
['971] is a specific requirement that the first object must be
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dragged into the second object to create the stack. As in Choi
['971] the icons are simply picked up in sequence.
Ans. 7.
The Examiner further finds Choi '641 teaches or suggests dragging
objects to create the pile, i.e., "if a gesture for collecting the selected icons
into a single icon occurs, the controller 100 contracts the icons designated in
the selection area, and then generates a single, contracted, icon." Id.
(quoting Choi '641 i-f 43, citing Figs. 6A---6C (which "make clear that this is
accomplished by dragging multiple objects towards each other and
together.")). Ans. 7.
We also agree with the Examiner's finding that "the claims are silent
regarding what kind of icon if any is or is not created when a pile is formed.
Therefore, Applicant is at best reading limitations into the claims from the
Specification, but more specificity would need to be amended into the
claims for a possible legal distinction with the prior art. "4 Ans. 8.
Thus, we are not persuaded by Appellants' assertion that the
combination of Choi '971 and Choi '641 fails to teach or suggest
"unassociating the first object and the second object in response to a gestural
input of the user," "the gestural input comprising dwelling on the pile and
then moving at least two fingers apart, spreading the pile across a workspace
in response to moving the at least two fingers apart," or "the unassociating
comprising generating an on screen display, the on screen display
4 "Choi's Fig. 7 shows icon 300 representing the formed stack, which
certainly reads on 'pile'. And Choi ['641]'s Fig. 6C shows the new icon C-H
with sheets under it to represent the stack, which also reads on any
reasonable definition of a pile." Ans. 8. We agree with the Examiner's
findings and legal conclusions.
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Application 12/701,827
comprising a visual affordance reflecting the unstuck behavior" (Br. 5)
because Appellants do not provide sufficient explanation in support of those
assertions.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2-5 and 7-11 which fall therewith. See Claim Grouping, supra.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1-5 and 7-11 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-5 and 7-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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