John LOUCH et al.

Patent Trials and Appeals Board

Apr 14, 2021

2020000109 (P.T.A.B. Apr. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/197,552 08/03/2011 John LOUCH 27753-50078D1 6002
132324 7590 04/14/2021
Fernando & Partners, LLP
2712 Augustine Drive
Suite 240
Santa Clara, CA 95054
EXAMINER
CHUANG, JUNG-MU T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN LOUCH and ERIC S. PEYTON
____________________

Appeal 2020-000109
Application 13/197,552
Technology Center 2100
____________________

Before ROBERT E. NAPPI, JASON J. CHUNG, and SCOTT E. BAIN,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, 7, 10 through 12, 14 through 17, 19, 20, 25, 28
through 30, 32 through 35, 37 through 41, 43, 44, 48, 49, 51 and 56 through
60. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Apple, Inc. is the real party in interest.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to controlling applications in a graphical user
interface with an item in a screen and a dock interface. See Spec. ¶¶ 27, 8,
and Figs. 1A through 1G. Claim 1 is reproduced below.
1. A machine implemented method, comprising:
at a computing device with a display and one or more
input devices:
concurrently displaying, on the display, a first item
within a first window that corresponds to a first
application and an application launch icon that
corresponds to a second application, wherein:
the application launch icon is displayed in a dock
element that is separate from the first window;
the first application and the second application
correspond to different applications; and
the first item corresponds to a representation of
respective content;
detecting, via the one or more input devices, an
input that corresponds to movement of a proxy of the
first item to a position that is at least partially over the
application launch icon that corresponds to the second
application;
in response to detecting the proxy of the first item
at a position that is at least partially over the application
launch icon that corresponds to the second application for
a predetermined period of time, displaying, on the
display, a second window of the second application that
corresponds to the application launch icon, wherein:
the second window was not displayed on the
display prior to the proxy of the first item being
positioned over the application launch icon; and
the second window is displayed concurrently with
displaying the application launch icon that corresponds to
the second application in the dock element;
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subsequent to displaying the second window of the
second application that corresponds to the application
launch icon, detecting, via the one or more input devices,
a continuation of the input that corresponds to a
continuation of the movement of the proxy of the first
item on the display;
in response to detecting the continuation of the
input:
in accordance with a determination that the
continuation of the input corresponds to movement of the
proxy of the first item over the second window of the
second application that corresponds to the application
launch icon in the dock element:
maintaining display of the second window
of the second application that corresponds to the
application launch icon in the dock element; and
displaying the respective content within the
second window in response to detecting release of
the input while the proxy of the first item is over
the second window; and
in accordance with a determination that the
continuation of the input corresponds to movement
of the proxy of the first item to a position on the
display that is outside of the second window of the
second application that corresponds to the
application launch icon in the dock element,
ceasing to display the second window of the
second application that corresponds to the
application launch icon in the dock element.
Appeal Br. 23–24 (Claims Appendix).

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REJECTIONS2
The Examiner rejected claim 49 under 35 U.S.C. § 112 first paragraph
as failing to comply with the written description requirement. Final Act. 5.
The Examiner rejected claims 37 and 38 under 35 U.S.C. § 112
second paragraph as being indefinite. Final Act. 5–6
The Examiner rejected claims 1, 2, 7, 10 through 12, 14 through 17,
19, 20, 25, 28 through 30, 32 through 35, 37 through 41, 43, 44, 48, 56, 57
and 59 under 35 U.S.C. § 103 as being unpatentable over Mifune (US
2004/0184069 A1, published September 23, 2004), Nii (US 2003/0142120
A1, published July 31, 2003), Conrad (US 6,133,918, issued October 17,
2000), and Ray (Exploring the Dock in Mac OS X “Tiger” Chapter from the
book SAMS teach Yourself Mac OS X Tiger All in One June 3, 2005. Final
Act. 7–36.
The Examiner rejected claims 49, 51, 58 and 60 under 35 U.S.C.
§ 103 as being unpatentable over Mifune, Nii, Conrad, Ray and Cummins
(US 2006/0070007 A1, published March 30, 2006). Final Act. 36–41.

Written Description Rejection
The Examiner rejects claim 49 for lacking written description
because:
the limitation of “in accordance with a determination that the
first item is a proper item, receiving the first item within the
second window of the second application” needs a step of
“receiving an input indicating a release of the proxy of the first
item over the second window of the application” or dropping

2 Throughout this Decision we refer to the Appeal Brief filed January 18,
2019 (“Appeal Br.”); Final Office Action mailed May 30, 2018 (“Final
Act.”); and the Examiner’s Answer mailed March 28, 2019 (“Ans.”).
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the proxy of the first item to the second window after it is
determined to be a proper item.
Final Act. 5.
Appellant argues the Examiner’s rejection is in error as the claim does
not need the proposed step because it recites “detecting movement of the
proxy of the first item over the second item” and that the skilled artisan
would understand that the disputed limitation is performed after detecting
the movement. Appeal Br. 13–14 (citing claim 49). Further, Appellant
argues that the rejection is improper as the proposed step is not an essential
or critical feature. Appeal Br. 14 (citing Gentry Gallery, Inc. v. Berkline
Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998); and In re Sus, 306 F.2d 494,
504 (CCPA 1962)).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 49 as lacking written description. The written description
requirement serves “to ensure that the inventor had possession, as of the
filing date of the application relied on, of the specific subject matter later
claimed by him; how the specification accomplishes this is not material.” In
re Wertheim, 541 F.2d 257, 262 (CCPA 1976). Further, “a claim which
omits matter disclosed to be essential to the invention as described in the
specification or in other statements of record may be rejected under 35
U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling”
MPEP 2172.01 (citing Gentry Gallery, Inc. v. Berkline Corp). Here the
Examiner has not established that a limitation of releasing or dropping the
proxy is an essential step or critical step.3 Accordingly we do not find that

3 It appears from Appellant’s Specification, paragraph 57 that steps of
dragging the proxy to a new window (steps 103 through 108 (of dropping
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the Examiner has shown that claim 49 fails to comply with the written
description requirement and we do not sustain the Examiner’s rejection 35
U.S.C. § 112 first paragraph.

Indefiniteness Rejection
The Examiner has rejected claims 37 and 38 as being indefinite under
35 U.S.C. § 112 second paragraph. Final Act 6. The Examiner concludes
the recited “means for concurrently displaying,” “means for detecting the
proxy,” “means for displaying a second window,” and “means for detecting
a continuation,” invoke 35 U.S.C. § 112 sixth paragraph, but the
Specification does not provide a description of the corresponding structure.
Final Act 6.
Appellant argues that the Specification provides support for the
claimed means for displaying, an display controller and means for detecting
an I/O controller. Appeal Br.14 (citing Specification ¶ 92). Further
Appellant argues that even if these elements are considered general purpose
computer components, the Specification provides a sufficient algorithm to
perform the claimed functions. Appeal Br. 14–15 (citing Finisar Corp. v.
DirecTV Group, Inc., 523 F.3d 1323, 1340, (Fed. Cir. 2008)). Further, in
the summary of the claimed invention Appellant identifies that these
limitations are supported by paragraphs 41, 60–62 and 92, and Figs. 1A-2A,
8 of the Specification. Appeal Br. 8–9.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claims 37 and 38 as indefinite. When means-plus-function

the proxy into the window)) are performed with a single click of the mouse
throughout the entire sequence and does not require the release of the mouse.
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language is employed in a claim, the Specification must provide an adequate
disclosure showing what is meant by that language. If an adequate
disclosure is not set forth, an applicant has in effect failed to particularly
point out and distinctly claim the invention as required by the second
paragraph of 35 U.S.C. § 112. In Re Donaldson Co., 16 F.3d 1189, 1195
(Fed.Cir.1994) (en banc). The Examiner in the Answer has not addressed
the Appellant’s assertion that the structure of the display controller and the
I/O controller meet the claimed means for displaying and the claimed means
for detecting or that the algorithms disclosed in the Specification are
sufficient under Finnisar. Rather the Examiner concludes that the
limitations are more than generic means for displaying and detecting as the
processor needs to perform the steps of concurrently displaying and
detecting movement. Answer 5. We have reviewed Appellant’s
Specification and disagree with the Examiner’s finding. Claim 37 recites
two means for displaying; 1) “means for concurrently displaying, on the
display, a first item within a first window that corresponds to a first
application and an application launch icon that corresponds to a second
application,” and 2) “means for … displaying, on the display, a second
window of the second application that corresponds to the application launch
icon.” Contrary to the Examiner’s findings on page 5 of the Brief, these
steps do not require a step of determining concurrent display, rather just that
displays are concurrently made. The Examiner has not shown nor do we
find that this function cannot be performed by video adaptors described in
Appellant’s Specification paragraph 92 and the displays depicted in
Appellant’s figures 1A through 5D.
Claim 37 similarly recites two means for detecting; 1) “means for
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detecting, via the one or more input devices, an input that corresponds to
movement of a proxy of the first item to a position” and “means
for…detecting, via the one or more input devices, a continuation of the input
that corresponds to a continuation of the movement of the proxy of the first
item on the display.” We concur with the Examiner that this is more than
the generic function of computer device, however we consider Appellant’s
Specification to provide a sufficient algorithm. For a computer-implemented
claim limitation interpreted under § 112, sixth paragraph, the corresponding
structure must include the algorithm needed to transform the general purpose
computer or processor disclosed in the specification into the special purpose
computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333. Thus, the
Specification must sufficiently disclose an algorithm to transform the
general purpose computer or processor to a special purpose processor
programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at
1338. The disputed means for detecting limitations are merely reciting
detecting whether an input is moving a proxy, by detecting location of
movement of a input device, i.e. a drag and drop operation which is known
in many graphical user interfaces4. See Spec ¶ 90. Further, Appellant’s
Specification provides a description of an algorithm in Figures 9 and 10
which describe the recited steps of detecting. “An algorithm may be
expressed in any understandable terms including as a mathematical formula,
in prose, in a flow chart, or “in any other manner that provides sufficient
structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d at 1340 (Fed.

4 See generally, the abstract of Nii and Conrad each discuss drag and drop
being known.
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Cir. 2008). The Examiner has not identified why these algorithms, are
insufficient. As such we do not find that the Examiner has adequately
demonstrated that Appellant’s Specification fails to provide adequate
structure to show what is meant by the disputed claim language and we do
not sustain the Examiner’s rejection of claims 37 and 38 under 35 U.S.C.
§ 112 second paragraph.

Obviousness Rejections
With respect to independent claims 1, 19 and 37, Appellant argues
that the Examiner’s obviousness rejection is in error as neither Mifune nor
Conrad teaches “displaying the respective content within the second window
in response to detecting the release of the input while the proxy is over the
second window.” Appeal Br. 15–19. Appellant argues that Mifune’s
Figures 8 and 9 which the Examiner relies upon to teach the second window,
depicts a recording sheet with an input to show a stapling position, and not
teach displaying content within the second window. Appeal Br. 17. Further,
with respect to Conrad, Appellant argues that Figures 8A–D, the drag of the
star identifier into the different windows, does not display the respective
content in the second window as claimed. Appeal Br. 18.
The Examiner, in response to Appellant’s arguments, states that
Mifune teaches the limitation in figures 8 and 9 as:
the window 200EX of the printer application is maintained and
the first item content is displayed when the first item is dropped
to the staple function. The picture 300 in Fig. 9 of Mifune is
interpreted as a “respective content” of the dropped item to
designate a staple position.

Answer 6. Further, the Examiner finds that Conrad teaches this limitation in
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Figures 6A–C as the item being dragged and dropped in window 605.
Answer 7 (citing col. 7, ll. 1–19). Also, the Examiner finds that this feature
is taught in Figures 8A–D of Conrad as the star, item 30, is dragged over
item 27 and several other temporary windows and released in window 56.
Answer 7 (citing col. 7, l. 47 – col. 8, l. 17). The Examiner states that the
claim term “content” is broad term and can be the picture 300 in Mifune Fig
9, and star icon in figure 8D of Conrad. Answer 6, 7.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 19 and 37. Independent claim 1 recites “a
first item” corresponding to a representation of content, and an input
corresponding to movement of a proxy of a first item and “displaying the
respective content within the second window in response to detecting release
of the input while the proxy of the first item is over the second window”.
Independent claims 19 and 37 recite similar limitations. Thus, the proxy is
of an item that represents content, and as such there is a distinction between
the content, item and its proxy which is moved. As such we disagree with
the Examiner’s interpretation that the star, item 30 in the cited portions of
Conrad meet the claimed content as the star is the icon which is moved by
user input and not the content associated with the item moved. Summarily,
we disagree with the Examiner that the picture 300 in Fig. 9 of Mifune meets
the claimed content. Paragraph 81 of Mifune identifies that this is a picture
of a recording sheet and is used to identify where the staple is to be added in
the print out. The Examiner has not identified any teaching nor do we find
that this picture 300 is related to the item or the content of the item, rather it
is a graphic depiction of possible locations to staple a document.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
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independent claims 1, 19, 37 and dependent claims 2, 7, 20, 25, 39 through
41, 56, 57 and 59 which are rejected based upon the same art.
With respect to all of the independent claims, claims 1, 10, 19, 28, 37,
and 38, Appellant’s argue focus on claim 1 and state:
Citing the “enlarged printer icon 200EX” of Mifune for the
claimed “second window of the second application” is improper
because content corresponding to an item cannot be displayed
within the enlarged printer icon 200EX.
Appeal Br. 19.
We are not persuasive of error in the Examiner’s rejection of
independent claims 10, 28 and 38 by this argument as it is not commensurate
with the scope of the claims. Appellant’s arguments focus on claim 1, which
as discussed above we reverse, however independent claims 10, 28 and 38
are of different scope and do not recite displaying content corresponding to
an item. As such, Appellant has not identified an error in the Examiner’s
obviousness rejection of independent claims 10, 28 and 38 and sustain the
Examiner’s rejection of independent claim 10, 28, 38 and dependent claims
11, 12, 14 through 17, 29, 30, 32 through 35, 43, 44, and 48 which are
rejected based upon the same art.

The Examiner’s rejection of dependent claims 49, 51, 58, and 60,
relies upon the teaching of Mifune, Contrad, and Ray to teach the limitations
of claims 1, 19 and 37, from which they depend. The Examiner has not
shown that the additional teachings of Cummings makes up for the
deficiency noted above in the rejection of independent claims 1, 19 and 37.
Accordingly, we similarly do not sustain the Examiner’s obviousness
rejection claims 49, 51, 58 and 60 for the same reasons discussed above with
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respect to independent claims 1, 19 and 37.

CONCLUSION

In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
49 112 Written Description 49
37, 38 112 indefinite 37, 38
1, 2, 7, 10–
12, 14–17,
19, 20, 25,
28–30, 32–
35, 37–41,
43, 44, 48,
56, 57, 59
103 Mifune, Nii,
Conrad, and Ray
10–12, 14–
17, 28–30,
32–35, 38,
43, 44, 48
1, 2, 7, 19,
20, 25, 37,
39–41, 56,
57, 59
49, 51, 58,
60
103 Mifune, Nii,
Conrad, and Ray,
Cummings
49, 51, 58,
60
Overall
Outcome
10–12, 14–
17, 28–30,
32–35, 38,
43, 44, 48
1, 2, 7, 19,
20, 25, 37,
39–41, 49,
51, 56–60
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.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED IN PART