Ex Parte TuliDownload PDFPatent Trial and Appeal BoardJun 20, 201612317175 (P.T.A.B. Jun. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/317, 175 12/18/2008 10949 7590 06/22/2016 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 Apaar Tuli 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. 042933/379439 9426 EXAMINER LOWENBERGER, AARON J ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 06/22/2016 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 AP AAR TULI Appeal2014-007563 Application 12/317,175 Technology Center 2100 Before MAHSHID D. SAADAT, JAMES R. HUGHES, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3-9, 11-14, 18, and 20-26, which constitute all of the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Nokia Corp. App. Br. 2. 2 Claims 2, 10, 15-17, and 19 have been cancelled. Final Act. 2. Appeal2014-007563 Application 12/317,175 INVENTION Appellant's invention relates to apparatus, method, computer program and user interface for enabling user input. Abstract. Claim 1 is illustrative and reads as follows: 1. An apparatus comprising at least one processor and at least one memory storing computer program code, wherein the at least one memory and stored computer program code are configured to, with the at least one processor, cause the apparatus to at least: cause display of a first item; receive an indication of a detected touch input to a touch sensitive user input device, the touch input provided on an area of the touch sensitive user input device corresponding to the first item; receive an indication of a detected acceleration of the apparatus, the detected acceleration occurring while the touch input is maintained; select the first item in response to the touch input; determine an acceleration profile of the apparatus based at least in part on the detected acceleration of the apparatus, the determined acceleration profile being defined based at least in part on a change in acceleration of the apparatus and on a direction of motion of the apparatus; determine a function corresponding to the determined acceleration profile from a plurality of functions, each of the plurality of functions corresponding to a respective acceleration profile; and perform the determined function on the selected first item in response to the acceleration of the apparatus occurring while the touch input is maintained. REJECTIONS Claims 1, 3-9, 11-14, 18, 20-23, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of van Os et al. 2 Appeal2014-007563 Application 12/317,175 (US 2009/0228792 Al; published September 10, 2009) ("van Os"), Rubin et al. (US 2009/0132197 Al; published May 21, 2009) ("Rubin"), and Hinckley (US 2005/0093868 Al; published May 5, 2005). Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of van Os, Rubin, Hinckley, and Studt (US 2006/0077182 Al; published April 13, 2006). ANALYSIS We have considered Appellant's arguments, but do not find them persuasive of error. We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We provide the following explanation for emphasis. With respect to claim 1, Appellant contends the cited portions of van Os, Rubin, and Hinckley "would not induce a person of ordinary skill in the art to arrive at the claimed invention" because "none of the cited prior art teaches or suggests the use of a selected item as a dual-purpose input for also initiating acceleration measurement as required by the independent claims." App. Br. 8. We are not persuaded of Examiner error. Appellant attacks the references individually, even though the Examiner relies on Hinckley in combination with van Os and Rubin as teaching or suggesting the disputed limitation. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). We 3 Appeal2014-007563 Application 12/317,175 find that the Examiner has provided a valid articulated line of reasoning with a rational underpinning to support the conclusion of obviousness with respect to the proposed combination of van Os, Rubin, and Hinckley (Final Act. 2-6). Moreover, Appellant's argument is not commensurate with the scope of claim 1. Appellant argues that the claim requires the touch input to "initiate measurement of the device acceleration in order to perform a function derived from the acceleration" (App. Br. 7) and "initiate the process for determining the particular function to be performed on the selected first item" (Reply 3). We agree with the Examiner that plain language of claim 1 does not require measurement of acceleration or determination of a function to begin when a touch input is received---only that acceleration is detected while the touch input is maintained. See Ans. 2-3. Furthermore, we find that it would have been well within the level of skill of one skilled in the art to combine the known techniques in van Os and Hinckley to use van Os's touch screen and accelerometer so that touch on a touch sensor is maintained while acceleration is detected, as taught or suggested by Hinckley. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill" (citations omitted)). We are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been "uniquely challenging or difficult for one of ordinary skill in the art" at the 4 Appeal2014-007563 Application 12/317,175 time of Appellant's invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). For these reasons, we are not persuaded that the Examiner erred in finding that the combination of van Os, Rubin, and Hinckley teaches or suggests the limitations of claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 1, as well as the 35 U.S.C. § 103(a) rejection of independent claims 8, 14, and 18, which Appellant argues are patentable for similar reasons. App. Br. 7. We also sustain the Examiner's rejection of dependent claims 3-7, 9, 11-13, and 20-26, for which Appellant makes no additional arguments. Id. at 8. DECISION The decision of the Examiner to reject claims 1, 3-9, 11-14, 18, and 20-26 is affirmed. 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 5 Copy with citationCopy as parenthetical citation