Ex Parte Vaananen et alDownload PDFPatent Trial and Appeal BoardAug 4, 201612691506 (P.T.A.B. Aug. 4, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/691,506 0112112010 61725 7590 08/08/2016 Morgan, Lewis & Bockius LLP I AI 1400 Page Mill Road Palo Alto, CA 94304-1124 FIRST NAMED INVENTOR Johannes Vaananen 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. Pl2850USXC2/63266-7155US 9918 EXAMINER HAILU, TADESSE ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 08/08/2016 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHANNES V AANANEN and MANNE HANNULA Appeal2015-000295 Application 12/691,506 Technology Center 2100 Before BRUCE R. WINSOR, ADAM J. PYONIN, and AARON W. MOORE, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 13-33, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 1-12 are cancelled. App. Br. 43. We REVERSE and institute a NEW GROUND OF REJECTION within the provisions of 37 C.F.R. § 41.50(b) (2013). 1 The real party in interest identified by Appellants is Apple, Inc. App. Br. 5. Appeal2015-000295 Application 12/691,506 STATEMENT OF THE CASE Appellants' disclosed "invention relates to display devices where information can be browsed" and "[i]n particular, the present invention relates to ... browsing information with hand-held devices with a display device." Spec. i-f 2. Claim 13, which is illustrative, reads as follows: 13. An electronic device comprising: a processor; and a display in communication with the processor, wherein the processor is configured to: determine a tilt angle associated with the display, wherein the tilt angle associated with the display depends upon an orientation of the display; and cause, based upon the tilt angle associated with display, a subset of content corresponding to the tilt angle to be displayed on the display, wherein a first subset of the content corresponding to a first tilt angle is displayed whenever the tilt angle associated with the display is determined to be the first tilt angle and a second subset of the content corresponding to a second tilt angle different from the first tilt angle is displayed whenever the tilt angle associated with the display is determined to be the second tilt angle, wherein the second subset of content is different from the first subset of content. Claims 13, 20, and 27 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Lands (US 6,201,554 Bl; iss. Mar. 13, 2001). See Final Act. 9--12. Claims 13-17, 19--25, and 27-32 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Bradski (US 2004/0012566 Al; publ. Jan. 22, 2004). See Final Act. 13-18. Claims 18, 26, and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradski and Bartlett (US 6,151,208; iss. Nov. 21, 2000). See Final Act. 18-19. 2 Appeal2015-000295 Application 12/691,506 Rather than repeat the arguments here, we refer to the Briefa ("App. Br." filed May 5, 2014; "Reply Br." filed Sept. 23, 2014) and the Specification ("Spec." filed Jan. 21, 2010) for the positions of Appellants and the Final Office Action ("Final Act." mailed Aug. 5, 2013) and Examiner's Answer ("Ans." mailed July 23, 2014) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). ISSUES Appellants group the appealed claims into 13 groups, designated Groups A-M. See App. Br. 12. Based on similarities among the claims, the rejections, and the arguments presented, we discuss the Appeal based on the following claim groupings: Group I: Appellants' Groups A, F, and J, claims 13, 15, 17, 20, 22-24, 27, and 29-31, as rejected for anticipation by Bradski. Group II: Appellants' Groups B, G, and K, claims 14, 21, and 28, as rejected for anticipation by Bradski. Group III: Appellants' Group C, claim 16, as rejected for anticipation by Bradski. Group IV: Appellants' Groups D, I, and M, claims 18, 26, and 33, as rejected for obviousness over Bradski and Bartlett. Group V: Appellants' Groups E, H, and L, claims 19, 25, and 32, as rejected for anticipation by Bradski. Group VI: Appellants' Groups A, F, and J, claims 13, 20, and 27, as rejected for anticipation by Lands. 3 Appeal2015-000295 Application 12/691,506 Appellants' arguments present the following pivotal issues2 : Whether the Examiner errs in finding Bradski discloses that: a first subset of the content corresponding to a first tilt angle is displayed whenever the tilt angle associated with the display is determined to be the first tilt angle and a second subset of the content corresponding to a second tilt angle different from the first tilt angle is displayed whenever the tilt angle associated with the display is determined to be the second tilt angle, wherein the second subset of content is different from the first subset of content (hereinafter the "content display limitation"), as recited in claim 13. Whether the Examiner errs in finding Lands discloses the content display limitation. ANALYSIS Claim Construction Appellants contend that the broadest reasonable interpretation of the content display limitation of claim 13, consistent with the Specification, requires a one-to-one correspondence between a displayed subset of content and a corresponding tilt angle. See generally App. Br. 7-9, 18-19. Appellants explain "the claim's plain language requires that when a particular condition is met - 'whenever the tilt angle associated with the display is determined to be the first tilt angle' - a particular result occurs - 'a first subset of the content ... is displayed."' (App. Br. 19.) The Examiner accepts this claim construction. See, e.g., Ans. 15. We agree with Appellant's proposed interpretation of the content display limitation. 2 Appellants' arguments present additional issues. Because the identified issues are dispositive of the appeal, we do not reach the additional issues. 4 Appeal2015-000295 Application 12/691,506 Group! The Examiner finds Bradski discloses the content display limitation recited in claim 13. See Final Act. 13-14 (citing Bradski i-f 25, Figs. 3A---C); Ans. 17-18 (additionally citing Bradski Figs. 2B---C). Appellants contend the cited passages of Bradski do not disclose the content display limitation for the following reasons: When the Bradski device is tilted to a particular tilt angle there is no specific content that corresponds to that particular tilt angle. Rather, Bradski ... discloses that a direction of the particular tilt angle determines whether information is scrolled left or right and the degree of the angle determines the speed with which the information is scrolled. Thus, tilting the Bradski device merely performs a scrolling and the tilt angle identifies the direction and speed at which the scrolling is performed. App. Br. 18 (referring to Bradski i-fi-125, 40). Appellants further explain as follows: [T]he Bradski device performs a scroll function when the device is tilted and a data set is scrolled continuously until the device is no longer tilted. There may be portions of the data set that can be associated with a tilting of the device at an angle, but there is not one specific portion of the data set that corresponds to a particular tilt angle, such that whenever the device is put in the particular tilt angle the corresponding particular portion of the data set is then displayed . . . . Contrary to a one-to-one mapping relationship where a particular tilt angle corresponds to a particular view whenever the display is in that tilt angle, Bradski performs a scrolling action upon tilting the device where each angle may correspond to multiple portions of content and the multiple portions of content may be different each time the device is placed at that angle. Reply Br. 4. 5 Appeal2015-000295 Application 12/691,506 We agree with Appellants for the reasons stated by Appellants. Accordingly, we do not sustain the rejection for anticipation by Bradski of (a) claim 13; (b) independent claims 2 0 and 2 7, which each incorporate a limitation substantially similar to the content display limitation; and ( c) claims 15, 17, 22-24, and 29-31, which variously depend from claims 13, 20, and 27. Groups 11-V Each of the claims in Groups II-V, i.e., claims 14, 16, 18, 19, 21, 25, 26, 28, 32, and 33, depend, directly or indirectly, from one of claims 13, 20, and 27. Therefore, the rejections of each of claims 14, 16, 19, 21, 25, 28, and 32, for anticipation by Bradski, and claims 18, 26, and 33, for obviousness over Bradski and Bartlett, are in error for the same reasons as for the claims from which they variously depend. Accordingly, we do not sustain the rejections of claims 14, 16, 18, 19, 21, 25, 26, 28, 32, and 33. Our reversal of the rejections of these claims should not be construed to mean that we agree or disagree with Appellants' arguments relating to Groups II-V. See supra n.2. Group VI The Examiner also finds Lands discloses the content display limitation recited in claim 13. See Final Act. 9-10 (citing Lands col. 5, 11. 13--46, Figs. 4A-E); Ans. 15-17 (additionally citing Lands col. 2, 11. 4--19, col. 5, 11. 47---65, Fig. 3). Appellants contend the cited passages of Lands do not disclose the content display limitation for the following reasons: [A ]ccording to the method of Lands, a particular tilt angle does not correspond to a particular portion of the content, but instead corresponds to a paging rate (see Lands, column 5, lines 13--46). 6 Appeal2015-000295 Application 12/691,506 Specifically, Lands discloses that "the rate of forward paging through the windows 1-n, one at a time, may be controlled by simply varying the angle of tilt of the device." (See Lands, column 5, lines 42--44 (emphasis added)). Lands does not teach using a particular tilt angle to determine which portion of the content should be displayed. That is, when the Lands device is tilted to a particular tilt angle, a forward/backward paging begins and the device continually pages through window after window until the device is no longer tilted - there is not a 1 : 1 correspondence between the tilt angle and the displayed content. According to the method of Lands, there may be multiple windows that can be associated with a tilting of the device at an angle, but there is not one specific portion of the content that corresponds to the particular tilt angle. App. Br. 14--15. Appellants further explain as follows: Depending on how long the device is tilted at the angle, the Lands device may page through a different number of windows. . . . A particular tilt angle does not correspond to a particular portion of the content, but instead corresponds to a paging rate (see Lands, column 5, lines 13--46). The tilt angle affects the rate at which the windows are paged through. (See Lands, column 5, lines 41--46). And as the tilt angle of the device increases/ decreases, the rate of window paging increases/ decreases accordingly. (See Lands, column 5, lines 41---61). Reply Br. 3. We agree with Appellants for the reasons stated by Appellants. Accordingly, we do not sustain the rejection for anticipation by Lands of claim 13 and independent claims 20 and 27, which each incorporate a limitation substantially similar to the content display limitation. 7 Appeal2015-000295 Application 12/691,506 NEW GROU-ND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claims 13, 20, and 27 are rejected on a new ground of rejection under 35 U.S.C. § 103(a) as being unpatentable over Bradski. Claim 13 As to claim 13, except as discussed supra under the heading "Group I," we adopt the Examiner's findings and explanations regarding the teachings ofBradski as our own. See Final Act. 13-14; Ans. 17-18. The passages of Bradski cited by the Examiner teach or suggest all the limitations of claim 13 except the cited passages alone do not teach the entirety of the content display limitation. We find the Examiner-cited passages of Bradski teach or suggest that: a first subset of the content corresponding to a first tilt angle is displayed ... [at a] tilt angle associated with the display [that] is determined to be [a] first tilt angle and a second subset of the content ... is displayed ... [at a] tilt angle associated with the display [that] is determined to be the second tilt angle, wherein the second subset of content is different from the first subset of content. See Final Act. 13-14 (citing Bradski i-f 25, Figs. 3A---C); Ans. 17-18 (additionally citing Bradski Figs. 2B---C). However, the Examiner-cited passages of Bradski do not teach or suggest that: [the] first subset of the content corresponding to [the] first tilt angle is displayed whenever the tilt angle associated with the display is determined to be the first tilt angle and [the] second subset of the content corresponding to a second tilt angle different from the first tilt angle is displayed whenever the tilt angle associated with the display is determined to be the second tilt angle ... (emphases added), as recited in claim 13. In other words, as we found supra, the Examiner-cited passages of Bradski do not teach or suggest a one- 8 Appeal2015-000295 Application 12/691,506 to-one correspondence between the display tilt angle and the displayed subset of content. Bradski further teaches the following: "In other embodiments, mixed mode operation is also possible. For example a user may move the mobile device to an absolute position, relative to some fixed point, to view a specific location on a two-dimensional map displayed on the screen." Bradski i-f 42. In other words, Bradski teaches a one-to-one correspondence between the display device position ("absolute position relative to some fixed point") and a displayed subset of content ("specific location on a two- dimensional map"). It would have been obvious to a person of ordinary skill in the art at the time of the invention, who was "a person of ordinary creativity, not an automaton" (KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)), to substitute Bradski's teaching of using a tilt angle (i.e., position relative to a fixed angle) to change the displayed content, for Bradski's teaching of using position relative to a fixed point to view specific displayed content, resulting in a one-to-one correspondence between the tilt angle and the specific displayed content. Such a substitution yields predictable results, and is no more than "[ t ]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results" (id. at 416), i.e., a predictable variation that can be implemented by a person of ordinary skill (see id. at 417). Indeed, Bradski teaches that "[a] person of ordinary skill in these arts will recognize that many different combinations of gestures or motions may have a different effect on the data set, virtual object, or virtual environment displayed on the screen of the mobile device." Bradski i-f 39. 9 Appeal2015-000295 Application 12/691,506 Claims 20 and 27 As to claims 20 and 27, except as discussed supra under the heading "Group I," we adopt the Examiner's findings and explanations regarding the teachings ofBradski as our own. See Final Act. 16-17, 18; Ans. 17-18. The passages of Bradski cited by the Examiner teach or suggest all the limitations of claims 20 and 27 except, as we found supra, the Examiner- cited passages of Bradski do not teach or suggest a one-to-one correspondence between the display tilt angle and the displayed subset of content. As we found supra regarding claim 13, Bradski teaches a one-to-one correspondence between the display device position ("absolute position relative to some fixed point") and a displayed the displayed subset of content ("specific location on a two-dimensional map"). See Bradski i-f 42. For the reasons articulated supra regarding claim 13, it would have been obvious, to a person of ordinary skill in the art at the time of the invention, to substitute Bradski's teaching of using tilt angle (i.e., position relative to a fixed angle) to change the displayed content, for Bradski's teaching of using position relative to a fixed point to view specific displayed content. Dependent Claims We have entered a new ground of rejection for independent claims 13, 20, and 27. We leave to the Examiner to consider the patentability of dependent claims 14--19, 21-26, and 28-33 in light of our findings and conclusions supra regarding the independent claims. The fact that we did not enter new grounds of rejection for the dependent claims should not be 10 Appeal2015-000295 Application 12/691,506 construed to mean that we consider the dependent claims to be directed to patentable subject matter or to be patentable over the prior art of record. DECISION The decision of the Examiner to reject claims 13-33 is reversed. We enter a new ground of rejection for claims 13, 20, and 27 under 35 U.S.C. § 103(a). Section 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record .... 37 C.F.R. § 41.50(b). 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 ). See 37 C.F.R. §§ 41.50(±), 41.52(b). REVERSED 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation