Ex Parte Warren et al

Patent Trial and Appeal Board

Feb 24, 2016

12205085 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/205,085 09/05/2008 Daniel A. Warren
111349 7590 02/26/2016
Van Court & Aldridge LLP
Apple Inc.
154 Grand St.
New York, NY 10013
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.
P6259US1 6174
EXAMINER
SNYDER, STEVEN G
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
docket@vcaiplaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL A. WARREN, MATTHEW ROGERS, and
JOHN SULLIVAN 1
Appeal2014-001488
Application 12/205,085
Technology Center 2100
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-13, 15-25, and 27-51. Claims 2, 14, and 26 have been canceled.
App. Br. 2. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Apple Inc. as the real party in interest. App. Br. 2.
Appeal2014-001488
Application 12/205,085
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to "setting up an action on an
electronic device before an input is confirmed and performing the action
once the input is confirmed." Abstract. In particular, when an input to an
electronic device is detected, there is a finite period of time before the input
is confirmed. Spec. i-f 2. During this time, preparatory steps may be taken
on the anticipated action(s). Spec. i-f 2. According to the Specification,
Appellants' invention "enhance[s] the response time of the electronic device
by providing methods for setting up an action before the input is confirmed
and reducing the wait time between confirming the input and performing the
action." Spec. i-f 3.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. An electronic device for initiating a set up of an action, the
electronic device comprising:
an input mechanism operative to receive an input; and
control circuitry, wherein the control circuitry is operative to:
detect a received input from the input mechanism;
confirm the detected input;
predict at least one action to peiform in response to the
detected input but before the detected input has been
confirmed;
set up the at least one action; and
perform the at least one set up action in response to the
confirmed input.
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Application 12/205,085
The Examiner ;s Rejections
1. Claims 1, 3, 5, 7, 9-13, 15, 17, 18, 20, 22-25, 27, 29, 30, 31,
33, 34, 35, 38, and 40-48 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Appellants' Admitted Prior Art ("AAP A"); Roessler et al.
(US 2005/0071777 Al; Mar. 31, 2005) ("Roessler"); and Sjogren et al. (US
2009/0125651 Al; May 14, 2009) ("Sjogren"). Final Act. 2-36.
2. Claims 4, 16, 36, 37, 39, and 49-51 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over AAPA, Roessler, Sjogren, and
Hawes (US 5,315,539; May 24, 1994). Final Act. 36-47.
3. Claims 6, 8, 19, 21, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, Roessler, Sjogren, and
Ramagopal et al. (US 5,832,297; Nov. 3, 1998) ("Ramagopal"). Final
Act. 47-53.
4. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Roessler, Sjogren, and Tallman et al. (US
5,025,411; June 18, 1991) ("Tallman"). Final Act. 53-55.
Issues on Appeal
1. Did the Examiner err in finding the combination of AAP A,
Roessler, and Sjogren teaches or suggests "detect[ing] a received input from
the input mechanism" and "predict[ ing] at least one action to perform in
response to the detected input but before the detected input has been
confirmed," as recited in claim 1?
2. Did the Examiner err in relying on the combination of AAPA,
Roessler, and Sjogren because either (i) Roessler teaches away from
Appellants' invention; (ii) there is no motivation to combine the teachings of
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Application 12/205,085
Roessler with those of Sjogren; or (iii) the Examiner relies on hindsight
reconstruction to combine Roessler and Sjogren?
ANALYSIS 2
Appellants argue the Examiner erred in rejecting claim 1 because:
[N]owhere does AAP A, Roessler, or Sjogren, either alone or in
any combination, show or suggest an electronic device that may
"detect a received input from [an] input mechanism [and then]
predict at least one action to perform in response to the detected
input before the detected input has been confirmed."
App. Br. 12. In particular, Appellants contend AAPA does not predict
anything, Roessler fails to teach or suggest detecting a user interaction, and
Sjogren does not predict at least one action to perform in response to a
detected input before the detected input has been confirmed. App. Br. 12-
13; see also App. Br. 10-11, 14--15.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Merck & Co., Inc., 800 F .2d
1091, 1097 (Fed. Cir. 1986). Rather, the test for obviousness is whether the
combination of references, taken as a whole, would have suggested the
patentee's invention to a person having ordinary skill in the art. In re Keller,
642 F.2d 413, 425 (CCPA 1981).
2 Throughout this Decision we have considered the Appeal Brief filed July 8,
2013 ("App. Br."); the Reply Brief filed November 12, 2013 ("Reply. Br.");
the Examiner's Answer mailed on September 12, 2013 ("Ans."); and the
Final Office Action mailed on January 9, 2013, from which this Appeal is
taken ("Final Act.").
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Application 12/205,085
We are not persuaded of Examiner error because Appellants'
arguments are not responsive to the Examiner's rejection and attack the
references separately, whereas the Examiner's rejection relies on the
combined teachings of AAP A, Roessler, and Sjogren. Final Act. 2-5. The
Examiner finds Roessler teaches pre-processing user interaction events.
Final Act. 4 (citing Roessler i-f 4). Further, the Examiner finds Roessler
teaches that these events may be "predicted." Id. (citing Roessler i-f 23). The
Examiner concludes, therefore, Roessler teaches "predict[ing] at least one
action to perform." Final Act. 3. In response to Appellants' contention that
Roessler fails to teach detecting a user interaction, the Examiner explains
"Roessler describes a period of inactivity preceding the prediction
mechanisms, [but] this period of inactivity is a period after a user input has
been received." Ans. 57. The Examiner concludes the period of inactivity
identified by Appellants (see, e.g., App. Br. 11) "occurs after a user input
selection that brings the user to the current user interface state." Ans. 57.
We agree with the Examiner's findings and conclusions and adopt them as
our own. See also Roessler, Abstract ("The user interface is operable to
receive input from a user interacting with the client and to generate user
interaction events from the input."). 3
The Examiner further finds Sjogren teaches "performing processing
unrelated to de bouncing 'in response to the detected input but before the
detected input has been confirmed."' Final Act. 4 (citing Sjogren i-f 15,
3 We also note Appellants concede that if "Roessler had mentioned
predicting a new user interface in response to any sort of detection of any
user interaction event ... then a combination of Roessler with the processing
capabilities taught by Sjogren may be more appropriate for attempting to
make obvious" Appellants' invention. App. Br. 14.
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Application 12/205,085
Fig. 3). We agree with the Examiner's finding. Sjogren teaches push-button
keypads may be used to provide input to processors, but that "the electrical
coupling created when a key is pressed will be broken several times before a
steady coupling occurs." Sjogren i-f 2. Sjogren further teaches "[g]iven the
speed of many microprocessors, the amount of processor time dedicated to
debouncing [(i.e., waiting for a steady coupling of the input)] could be used
to perform a large number of calculations." Sjogren i-f 4.
We agree with the Examiner's conclusion that it would have been
obvious to a person of ordinary skill in the art to modify the teachings of
AAPA to include the teachings of Roessler "so that a possible user input
event would be predicted." Final Act. 4. Further, we agree with the
Examiner's conclusion that it would have been obvious to modify the
teachings of AAPA and Roessler to include the teachings of Sjogren "so that
the device would detect an input (as in Sjogren) and a possible user input
event would be predicted (as in Roessler) while waiting for de bounce time
(as in Sjogren)." Final Act. 5.
Appellants argue the Examiner erred in relying on the combination of
AAPA, Roessler, and Sjogren because (i) Roessler teaches away from
Appellants' invention (App. Br. 11); (ii) there is no motivation to combine
the teachings of Roessler with those of Sjogren (App. Br. 16-17); and/or
(iii) the Examiner relies on hindsight reconstruction to combine Roessler and
Sjogren (App. Br. 14--16). We address Appellants' arguments seriatim.
Appellants assert Roessler teaches away from Appellants' invention
because Roessler does not teach performing any step in response to a
detected input. App. Br. 11; Reply Br. 9-10. "A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
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Application 12/205,085
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) (quotations
and citation omitted). As discussed supra, we do not find Appellants'
argument persuasive of Examiner error. As the Examiner explains, "a
period of inactivity at a current user interface state occurs after a user input
selection that brings the user to the current user interface state." Ans. 57.
We agree with the Examiner. In other words, a person of ordinary skill
would understand that Roessler's period of inactivity, i.e., before pre-
processing of a predicted user interaction event, is initiated by a user
selection (i.e., a detected input). Appellants do not provide sufficient,
persuasive argument or evidence to rebut the Examiner's finding.
Accordingly, we do not find that Roessler teaches away from Appellants'
invention.
Appellants contend a person of ordinary skill in the art would not have
been motivated to combine the teachings of Roessler with those of Sjogren.
App. Br. 15-17. In addition to asserting that Roessler teaches away from
Appellants' invention (which we do not find persuasive), Appellants argue
Roessler is "totally unrelated" to debouncing, as taught by Sjogren. App.
Br. 16.
We are unpersuaded of Examiner error. As the Examiner explains, a
person of ordinary skill in the art would have been motivated to combine the
teachings of Roessler and Sjogren "to use the time dedicated to de bouncing
to perform other calculations." Final Act. 5. We agree with the Examiner
and find the Examiner's determination to be consistent with the teachings of
Roessler and Sjogren. For example, Sjogren teaches "[g]iven the speed of
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Application 12/205,085
many microprocessors, the amount of processor time dedicated to
debouncing could be used to perform a large number of calculations."
Sjogren i-f 4. Roessler teaches by pre-processing predicted user interaction
events "[a ]pplications appear to run smoothly and responsively." Roessler
i-f 8; see also Final Act. 4. Contrary to Appellants' assertion, Roessler need
not relate to debouncing in order to be relied upon by the Examiner. The
test for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991) andin re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we agree with the Examiner that a person of ordinary skill in
the art would have been motivated "to replace Sjogren's processing
unrelated to debouncing with Roessler's prediction processing." Ans. 62-
63. Additionally, we find the Examiner has set forth articulated reasoning
with rational underpinning in support of the proposed combination of prior
art references. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants also assert the Examiner relies on improper hindsight
reconstruction to combine Roessler and Sjogren. App. Br. 14--16; Reply Br.
12-13. In particular, Appellants argue "by relying on a reference, such as
Sjogren, that is unrelated to processing of instructions related to (1) an
'action to perform in response to a detected input' and (2) 'predicting' an
action of any kind," the Examiner has relied on "[A ]ppellants' disclosure
and nothing more." App. Br. 16.
We do not find Appellants' arguments persuasive of Examiner error
because, as discussed supra, and as the Examiner finds, "it would have been
obvious to one of ordinary skill to replace Sjogren's processing unrelated to
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Application 12/205,085
debouncing with virtually any processing," including the prediction
processing taught by Roessler. Ans. 62.
Accordingly, for the reasons discussed supra, we sustain the
Examiner's rejection of independent claim 1. Additionally, for similar
reasons, we sustain the Examiner's rejections of claims 3-13, 15-25, and
27-51, for which Appellants advance similar arguments or which were not
argued separately. See App. Br. 18-28.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-13, 15-25,
and 27-51.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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