Ex Parte Weinberg et al

Patent Trials and Appeals Board

Apr 29, 2019

14580189 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/580,189 12/22/2014 Daniel Weinberg
122246 7590 05/01/2019
Keller Jolley Preece / Dropbox
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
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.
20033.8. l_p524US 1 4937
EXAMINER
ELBINGER, STEVEN Z
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL WEINBERG and ANTHONY GRUE 1
Appeal2018-007559
Application 14/5 80,189
Technology Center 2600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, all the pending claims in the
present Application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants' invention generally relates to "facilitat[ing] a user
experience in which a user can conveniently switch between different
1 Appellants name Dropbox, Inc. as the real party in interest (App. Br. 1 ).
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Application 14/580,189
applications on a mobile device for capturing and interacting with digital
content." See Abstract. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
determining, by at least one processor, that a content
capturing application and a separate content management
application are installed on a mobile device;
monitoring, by the at least one processor, display activity
corresponding to a touch screen of the mobile device;
detecting, based on the display activity, that the touch
screen of the mobile device is displaying a graphical user
interface of the content capturing application; and
in response to detecting that the touch screen is
displaying the graphical user interface of the content capturing
application, overlaying a graphical element associated with the
content management application over, and separate from, the
display of the graphical user interface of the content capturing
application.
App. Br. 19 (Claim Appendix).
Appellants appeal the following rejections:
Claims 1-20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 2.
Claims 1-20 are rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventors regard as the invention. Id. at 4--5.
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over
Sauve et al. (US 2013/0318476 Al; pub. Nov. 28, 2013) and Kim (US
2011/0225549 Al; pub. Sept. 15, 2011). Id. at 6.
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Claims 2, 3, 6-14, 16, and 17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Sauve, Kim, and Hautala (US 2012/0198386 Al;
pub. Aug. 2, 2012). Id. at 8.
Claims 4, 5, and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sauve, Kim, Hautala, and Adhikari et al. (US
2013/0016113 Al; pub. Jan. 17, 2013). Id. at 16.
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over
Sauve, Kim, and Volk et al. (US 5,673,401; iss. Sept. 30, 1997). Id. at 18.
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sauve, Kim, Hautala, Volk, and Rolston et al. (US
2015/0039616 Al; pub. Feb. 5, 2015). Id. at 20.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Re} ection under § 112 (b)
We begin our analysis by considering the Examiner's finding that the
following limitation recited in claims 1, 11, and 18 is indefinite: "overlaying
a graphical element associated with the content management application
over, and separate from, the display of the graphical user interface of the
content capturing application." Final Act. 4--5 (the "overlaying limitation")
(emphasis added); see In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)
(When claims have been rejected under both the first and second paragraphs
of 35 U.S.C. § 112, analysis "should begin with the determination of
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whether the claims satisfy the requirements of the second paragraph.").
Specifically, the Examiner finds, "[a] graphical element over, yet separate
from the GUI of the content capturing application does not provide a clear
cut indication of the scope of the subject matter covered by the claim." Final
Act. 4.
Appellants contend, "[t]he phrase 'separate from' clarifies that the
graphical element is independent from the underlying graphical user
interface, as opposed to other common graphical user interface elements
( e.g., those in the cited references) that are often found integrated within the
graphical user interface." App. Br. 17-18. The Examiner responds by
arguing that the limitation is susceptible to multiple interpretations and is
therefore indefinite. Ans. 11; see Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BP AI 2008) (precedential) ("[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite."). Specifically, the Examiner finds, and we agree,
that the phrase "over, and separate from" may be interpreted in at least three
ways:
Wherein the content capturing application does not
constrain positioning of the graphical element. ...
Wherein the system identifies a location for the graphical
element that is over the content capturing application but does
not overlay camera controls ....
Wherein the graphical element is positioned over the
content capturing application by an application other than the
content capturing application; and the graphical element is an
"always on top" element when the content capturing application
is the foreground window.
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Ans. 11 (bullet formatting omitted).
Appellants do not address the Examiner's assertion that the claim is
susceptible to multiple interpretations. Instead, Appellants merely argue
"that this limitation provides a clear picture to one of ordinary skill in the art
that the graphical element is both overlaid over a graphical user interface of
a content capturing application while also being separate (not integrated
within or part of) the content capturing application." Reply Br. 10. This
conclusory assertion does not persuasively rebut the Examiner's finding that
the claim is susceptible to multiple interpretations. Thus, we are constrained
on this record to conclude the phrase "over, and separate from" is indefinite.
We accordingly sustain the Examiner's rejection of claim 1 as
indefinite under 35 U.S.C. § 112(b). Appellants' arguments regarding the
rejection of independent claims 11 and 18 rely on the same arguments as for
claim 1, and Appellants do not argue the dependent claims separately. See
App. Br. 18. We, therefore, also sustain the Examiner's§ 112(b) rejection
of claims 2-20. See 37 C.F.R. § 41.37( c )(1 )(iv).
Rejection under§ 112(a)
The Examiner finds two limitations lacking written description
support: (1) "determining ... that a content capturing application and a
separate content management application are installed on a mobile device"
(in claims 1 and 11 2) (the "separate application limitation"); and (2)
2 The Examiner asserts that claims 1 and 18 include this limitation. Final
Act. 3. However, while claim 18 does not include a similar limitation, claim
11 does ("identifying ... a first application and a separate second
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"overlaying a graphical element associated with the content management
application over, and separate from, the display of the graphical user
interface of the content capturing application" (in claims 1, 11, 18) ( as
above, the "overlaying limitation"). Final Act. 3--4. We address each
limitation in tum.
First, the Examiner finds limitation ( 1) lacks written description
support because the Specification does not describe "determining a separate
content management application is installed." Id. at 3. Appellants
respond that the Specification supports limitation (1) at least in paragraphs
31 and 42--44. App. Br. 16. Specifically, Appellants argue "paragraph
[0042] of Appellant[s'] Specification states 'application manager 106 can
identify various applications installed on a computing device have various
functionalities' such as 'one or more applications on a computing device that
have content capturing functionality."' Reply Br. 9. We agree with
Appellants.
In addition to paragraph 42 relied on by Appellants, the Specification
also states, "application manager 106 can monitor the operation of different
applications installed on a computing device." Spec. ,r 44. "In particular,
application manager 106 can monitor ... an application operating in the
foreground of an operating system" or "one or more applications operating
in the background." Id. ,r,r 44--45. "For example, a content management
application operating in the background can detect captured content." Id. ,r
45. Taken together, we find these statements support the limitation (1)
because the application manager 106 monitors "different applications
application installed on a mobile device"). Accordingly, we interpret the
Examiner's inclusion of claim 18 in the rejection as a typographical error.
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installed" and "can identify various applications installed"; these
applications include those operating in the background; and the content
management application is a background application. Accordingly, we do
not sustain the Examiner's § 112 (a) rejection on limitation (1) of claims 1
and 11.
Turning to the overlaying limitation (2), the Examiner finds the phrase
"over, and separate from" lacks written description support because the
Specification does not describe "a separate content management graphical
element." Ans. 10. Appellants respond that this phrase "finds support at
least in paragraphs [0051 ]-[0052]." App. Br. 17. Specifically, Appellants
contend:
As an example of support for this limitation, paragraph [0051]
of the Specification sets out that "based on detecting that a
graphical user interface associated with a content capturing
application is displayed, graphical element manager 108 can
overlay the graphical element over the graphical user interface
of the camera application."
Reply Br. 10. We disagree.
Appellants' argument for supporting the "over and separate from"
concept relies on a statement that solely discloses the "over" concept-i.e.,
"can overlay the graphical element over the graphical user interface of the
camera application." See Spec. ,r 51 ( emphasis added). This statement is
insufficient to support the claimed "over, and separate from." (Emphasis
added.) Indeed, we cannot find a single instance of the term "separate" in
the Specification, in relation to an overlaid graphical element. While the
disclosure need not provide in haec verba support, see Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003), Appellants do
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not persuasively identify any other language in the Specification supporting
"over, and separate from."
Accordingly, we sustain the Examiner's § 112(a) rejection for the
overlaying limitation (2) of claim 1, which is included in all of the claims.
Regarding limitation (2), Appellants' arguments regarding the rejection of
independent claims 11 and 18 rely on the same arguments as for claim 1, and
Appellants do not argue the dependent claims separately. See App. Br. 17.
We therefore also sustain the Examiner's§ 112(a) rejection of claims 2-20.
See 37 C.F.R. § 4I.37(c)(l)(iv).
Rejections under§ 103 of Claims 1-18
In some cases, the claims are so indefinite that we are unable to make
a determination as to patentability. See, e.g., In re Steele, 305 F.2d 859, 862
(CCPA 1962) (holding that the Examiner and the Board were wrong in
relying on what at best were speculative assumptions as to the meaning of
the claims and basing a rejection under§ 103). This is not the case here
because the obviousness questions presented do not tum on the meaning of
the indefinite phrase "over, and separate from." Accordingly, we now
analyze the Examiner's obviousness rejections.
Appellants contend Sauve fails to teach or suggest "overlaying the
graphical element 'in response to detecting that the touch screen is
displaying the graphical user interface of the content capturing application,'
as independent claim 1 requires." App. Br. 11. Specifically, Appellants
contend "the image-related application screen in Sauve is presented only
'after pressing button 378. "' Id. We agree with Appellants.
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The Examiner finds, "[t]he application launch button (Fig. 3 (378)) is
presented when the content capturing application is displayed. Additional
application launch buttons that comprise content management applications
(Suave Fig. 4) are displayed when the application launch button (Fig. 3
(378)) is pressed." Ans. 5. Specifically, Sauve teaches "[a]pplication launch
button 378 is used to launch or otherwise execute an image-related
application screen." Sauve ,r 51. In other words, the display of a graphical
user interface in Sauve does not trigger overlaying a graphical element, but
rather user selection of the application launch button 378 triggers displaying
another user interface.
Accordingly, we do not sustain the Examiner's§ 103 rejection of
claim 1. We do not reach Appellants' further allegations of error with
respect to claim 1 because we find the issue discussed above to be
dispositive of the § 103 rejection of claim 1. 3 We discuss claim 1 's
dependent claims below.
Claim 11 recites, "in response to detecting that the first application
has captured content, overlaying a graphical element associated with the
second application over ... a graphical user interface associated with the
first application." The Examiner relies on an additional reference, Hautala,
for this limitation. Final Act. 14. But Appellants do not address the
Examiner's specific rejection of claim 11 over Sauve, Kim, and Hautala,
specifically Hautala. See App. Br. 12 ("For similar reasons, Appellant
submits that independent claims 11 and 18 are also allowable over the cited
references."). Accordingly, we are constrained on this record to sustain the
Examiner's § 103 rejection of claim 11 and dependent claims 12-17, which
3 However, see note 5 below.
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are all rejected using Hautala for the argued limitation. See Frye, 94
USPQ2d at 1075 (The Board "reviews ... rejection[s] for error based upon
the issues identified by appellant, and in light of the arguments and evidence
produced thereon," and treats arguments not made as waived.).
Claim 18 recites, "provide, based on the mobile device displaying the
graphical user interface of the camera application, an overlay of a graphical
element over ... the graphical user interface of the camera application,
wherein the graphical element is associated with a separate content
management application." Appellants argue that claim 18 is allowable for
similar reasons as claim 1. 4 App. Br. 12. However, claim 18 does not recite
the "in response to" language of claim 1, but rather "provide ... an overlay"
that is "based on the mobile device displaying the graphical user interface."
(Emphasis added.) The phrase "based on" here is broader than the phrase
"in response to."
In Sauve, "[a]pplication launch button 378 is used to launch or
otherwise execute an image-related application screen." Sauve ,r 51. This
application launch button 378 must be displayed prior to a user selecting it.
See id. ,r 49 ("As shown, the display 305 of the mobile device 300 includes
buttons or controls ... 378."). We therefore find that overlay of the image-
related application screen in Sauve is "based on" display of the application
launch button 378. Accordingly, we sustain the Examiner's§ 103 rejection
of claim 18. We address claim 18's dependent claims separately below.
4 Although the Examiner adds the Volk reference to the claim 18 rejection
(Final Act. 18), like claim 1, the Examiner relies on Sauve for the disputed
limitation.
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Rejections under§ 103 of Claims 2, 3, and 6-8
Each of these dependent claims are rejected not just under the
combination of Sauve and Kim, as with claim 1, but Sauve, Kim, and
Hautala. Final Act. 8. As we noted above, the Examiner finds, and
Appellants do not dispute, that Hautala teaches claim 11 's "in response to
detecting that the first application has captured content, overlaying a
graphical element associated with the second application over ... a
graphical user interface associated with the first application." Id. at 14.
Appellants imply, and we agree, that this limitation is similar to the "in
response to ... content capturing application" limitation of claim 1. See
App. Br. ("For similar reasons, Appellant submits that independent claims
11 and 18 are also allowable over the cited references.").
"A claim in dependent form shall be construed to incorporate by
reference all the limitations of the claim to which it refers." 35 U.S.C.
§ 112(d). As such, each of dependent claims 2, 3, and 6-8 incorporate the
"in response to ... content capturing application" limitation of claim 1.
Because Appellants do not dispute the Examiner's finding that Hautala
teaches a similar limitation in claim 11, do not argue that Hautala fails to
cure the deficiency of Sauve, and provide no separate arguments for these
dependent claims, we are constrained on this record to sustain the
Examiner's rejection of claims 2, 3, and 6-8. 5
5 While a rejection of claim 1 over Sauve, Kim, and Hautala is not before us,
the Examiner should evaluate whether Sauve, Kim, and Hautala render
claim 1 obvious for similar reasons as claim 11. See, e.g., Hautala ,r 39.
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Rejections under§ 103 of Claims 4 and 5
Appellants contend that none of the cited references teach or suggest
claim 4 's "determining, based on the one or more characteristics, a location
void of user interaction elements within the graphical user interface of the
content capturing application." App. Br. 12-13. Appellants also contend
that none of the cited references teach or suggest claim 5 's "positioning the
graphical element associated with the content management application at the
location void of user interaction elements." Id. at 13.
Appellants argue both claims 4 and 5 together, contending "Adhikari
relates to a system that identifies active and passive regions within a video or
image." Id. at 12. "However," Appellants argue, "the passive regions of
Adhikari are areas with a low probability of containing text or having a high
frequency of a particular color ... and do not depend on placement of user
interaction elements." Id. at 13. Appellants further assert "Adhikari relates
to more traditional television content that has no user interaction and does
not describe any user interaction elements at all." Id.
The Examiner also discusses claims 4 and 5 together, finding:
Adhikari (Fig. 2 [0022]-[0023]) displays a graphic
window in a displayed video (GUI) based on passive regions
identified in an image. For example, graphic element 225 is
place[ d] on the video screen without blocking vital sections of
the image data on a screen. It would have been obvious for
Adhikari to locate graphic element (215) in a different location
than interactive graphic element (225) [0023].
Ans. 6. Specifically, Adhikari discloses "[a] device may select passive area
220 [ of a display] and present graphic element 225 in passive area 220 ....
Graphic element 225 is depicted as a user interface menu to allow a user to
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select one or more elements of the menu to control operation of a device."
Adhikari ,r,r 22-23.
We agree with the Examiner. Appellants do not persuasively
distinguish claim 4 's "location void of user interaction elements" from
Adhikari's "passive area." Likewise, Appellants do not persuasively
distinguish claim 5 's "graphic element" from Adhikari' s "graphic element
225." Accordingly, we sustain the Examiner's § 103 rejections of claims 4
and 5.
Rejections under§ 103 of Claims 9-10 and 19-20
Appellants contend that none of the cited references teach or suggest
all the limitations of claims 9 and 19. App. Br. 14--16; Reply Br. 8-9. With
respect to claim 9, Appellants argue Hautala fails to teach or suggest
"selecting, without further user interaction, each of the one or more captured
digital content items." App. Br. 14--16. 6 In particular, Appellants assert the
Examiner improperly "appl[ies] a single aspect of Hautala to reject two
distinct elements of Appellant[s'] claims: 1) presenting a graphical user
interface ... and 2) selecting, without further interaction, the captured digital
content items." Id. at 15. Appellants explain, "[t]he Office Action states (at
12) that expanding the captured image in Hautala to fill the entire screen
covers both presenting the graphical user interface of the content
management application and selecting the captured digital content items."
Id.
6 Appellants assert that Hautala fails to teach or suggest all the limitations of
claim 9 but only provide specific arguments for the "selecting" limitation.
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The Examiner finds Hautala's teaching of "expand[ing] one of the
thumbnail images to fill the whole display, in response to a user input,"
teaches both the claimed "presenting" limitation and the claimed "selecting,
without further user interaction, each of the one or more captured digital
content items." Ans. 7. The Examiner asserts, "Hautala [0009] expands one
of the thumbnail images to fill the whole display, in response to a user input.
No further action is required to view the expanded image." Id. Specifically,
Hautala teaches "[t]he apparatus may be ... responsive to a third user input
to cause one of the at least one thumbnail images to be enlarged to fill
substantially the whole of the display." Hautala ,r 9. We disagree with the
Examiner.
"Where a claim lists elements separately, the clear implication of the
claim language is that those elements are distinct component[ s] of the
patented invention." Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP,
616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotations omitted); see also
Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed.
Cir. 2008) ("[D]ifferent claim terms are presumed to have different
meanings."). The Specification confirms that the claimed "presenting" and
"selecting" are separate actions with different meanings. See, e.g., Spec.
,r 100 ("Method 500 can also include ... presenting .... Further, method
500 can include selecting .... ") ( emphasis added). Accordingly, we
disagree with the Examiner that Hautala's "expand[ing] one of the
thumbnail images to fill the whole display, in response to a user input"
(Ans. 7; see Hautala ,r 9) teaches or suggests both the claimed "presenting"
and "selecting, without further user interaction, each of the one or more
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captured digital content items." We therefore do not sustain the Examiner's
§ 103 rejection of claim 9 and claim 10, which depends on claim 9.
However, Appellants ignore that the Examiner relied on different art
for a similar limitation in claim 19. Specifically, the Examiner relied on
Rolston for claim 19' s "preselect each of the one or more captured digital
content items within the gallery interface." Final Act. 21. Because
Appellants did not address the Examiner's specific rejection, we are
constrained on this record to sustain the Examiner's § 103 rejection of claim
19 and claim 20, which depends on claim 19. See Frye, 94 USPQ2d at 1075
( discussed supra).
DECISION
We affirm the Examiner's§ 112(a) rejection of claims 1-20.
We affirm the Examiner's § 112(b) rejection of claims 1-20.
We reverse the Examiner's§ 103 rejection of claims 1, 9, and 10.
We affirm the Examiner's§ 103 rejection of claims 2-8 and 11-20.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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
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