John Samuels

Patent Trials and Appeals Board

Apr 27, 2021

2020000102 (P.T.A.B. Apr. 27, 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.
14/111,380 10/11/2013 John Samuels 042933/438532 3487
10949 7590 04/27/2021
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
One South at The Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
PAN, YONGJIA
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
04/27/2021 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN SAMUELS
___________

Appeal 2020-000102
Application 14/111,380
Technology Center 2100
____________

Before ALLEN R. MACDONALD, ERIC B. CHEN, and
ADAM J. PYONIN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-000102
Application 14/111,380

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 5, 7, 8, 13–17, 20, 25–27, 31, 41,
42, and 44–47, which constitute all the claims pending in this application.
Claims 2, 3, 6, 9–12, 18, 19, 21–24, 28–30, 32–40, and 43 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter is directed to switching between operating
in a two-dimensional user interface state and operating in a three-
dimensional user interface state on a hand-portable apparatus. (Abstract,
Spec. 5:22–23.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A method comprising:
performing user input detection using at least a first
detector, wherein the at least first detector comprises a touch
sensitive device configured to detect touch on a two-dimensional
surface;
detecting using at least the first detector a predefined first
phase of a predefined user gesture, wherein the predefined first
phase of the predefined user gesture comprises movement
substantially in a first plane;
enabling at least a second detector;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nokia
Technologies Oy. (Appeal Br. 2.)
Appeal 2020-000102
Application 14/111,380

3
detecting using at least the second detector a predefined
second phase of the predefined user gesture, wherein the
predefined second phase of the predefined user gesture
comprises movement substantially outside of the first plane;
responsive to detecting both the predefined first phase and
the predefined second phase of the predefined user gesture,
switching between operating in a two-dimensional user interface
state and operating in a three-dimensional user interface state,
wherein performing user input detection using at least the first
detector comprises performing user input detection using the first
detector but not using the second detector; and
wherein enabling at least the second detector comprises:
switching on at least the second detector or adjusting at
least the second detector from a lower energy consumption mode
to a higher energy consumption mode, and wherein enabling at
least the second detector is responsive to detecting, using the first
detector, the predefined first phase of the predefined user gesture.
(Appeal Br. 12 (Claims Appendix).)

REFERENCES
Name Reference Date
Perski et al. US 2006/0012580 A1 Jan. 19, 2006
Elias et al. US 2007/0177803 A1 Aug. 2, 2007
Duarte et al. US 2010/0156813 A1 June 24, 2010
King et al. US 2011/0164029 A1 July 7, 2011
Rabii US 2012/0147531 A1 June 14, 2012

REJECTIONS
Claims 1, 4, 5, 7, 8, 13–16, 31, 41, 42, and 44–47 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over King, Perski, and Rabii.
Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over King, Perski, Rabii, and Elias.
Appeal 2020-000102
Application 14/111,380

4
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over King, Perski, Rabii, and Duarte.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over King and Rabii.

OPINION
We are persuaded by Appellant’s arguments (Appeal Br. 9) that the
Examiner improperly combined King, Perski, and Rabii.
The Examiner found that the touch screen finger tracking detection
mode of King and that the touch screen stylus-search detection mode of
King combine to render obvious the limitation “wherein performing user
input detection using at least the first detector comprises performing user
input detection using the first detector but not using the second detector.”
(Ans. 4; see also Final Act. 4.) The Examiner concluded that “it would have
been obvious to one of skilled in the art to modify King to include Perski’s
switching to achieve the predictable result of toggling detector to improving
the detection of user interactions.” (Ans. 5; see also Final Act. 4–5.) We do
not agree with the Examiner’s findings and conclusions.
King relates to “working with 3D objects” (¶ 1), in particular,
“[c]omputer assisted design (CAD) software [that] allows users to generate
and manipulate two-dimensional (2D) and three-dimensional (3D) objects”
(¶ 2). King explains the following:
A device having a touch-sensitive display that enables a
user to generate and manipulate 3D objects using 3D gesture
inputs is disclosed. The device has touch sensors that can sense
positions and movements of objects contacting a surface of the
display, and proximity sensors that can sense positions and
movements of objects in a three-dimensional space in the
Appeal 2020-000102
Application 14/111,380

5
vicinity of the display surface (including movements in
proximity to, but not actually touching, the display surface).
. . . .
The touch inputs, 2D gesture inputs, and 3D gesture
inputs can be used by application programs to trigger events,
such as applying certain transformations to objects, allowing
the user to generate and manipulate 3D objects quickly and
intuitively.
(¶ 17.) Moreover, Figures 3–20 of King illustrate “exemplary 3D gesture
inputs and 3D objects that are generated or modified based on the 3D gesture
inputs according to various embodiments of the invention.” (¶ 13.)
Although the Examiner proposes to modify King with Perski, the
Examiner has not provided an articulated reasoning with some rational
underpinning as to why one of ordinary skill in the art would modify King.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”); see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, because
King relates to CAD software for the generation of 3D objects using both 2D
and 3D gesture inputs, as illustrated in Figures 3–20, the Examiner has not
provided sufficient articulated reasoning as to why one of ordinary skill
would be “toggling detector[s] to improving the detection of user
interactions.”
Accordingly, we are persuaded by Appellant’s argument that:
King’s embodiments disclose a touch screen with a
proximity sensor where in response to touching a 2D shape on
the touch screen and then lifting the fingers away from the
touch screen, the user can extrude the 2D shape into a 3D
Appeal 2020-000102
Application 14/111,380

6
shape. King discloses that the proximity sensor in combination
with the touch sensor detects the 3D gesture inputs. Modifying
King such that the touch sensor alone is only used with the
proximity sensor not being used to detect user interactions, as
allegedly provided by Perski, would fundamentally alter the
embodiments of King such that the embodiments of King
would not work as intended, and as such, the proposed
combination is improper.
(Appeal Br. 9 (emphasis omitted).)
Thus, the Examiner has improperly combined King, Perski, and Rabii
to reject claims 1, 4, 5, 7, 8, 13–16, 31, 41, 42, and 44–47 under 35 U.S.C.
§ 103(a). Accordingly, we do not sustain the rejection of claims 1, 4, 5, 7, 8,
13–16, 31, 41, 42, and 44–47 under 35 U.S.C. § 103(a).
In addition, we do not sustain the rejections of claims 17, 20, 25, 26,
27 under 35 U.S.C. § 103(a) over various combinations of King, Perski,
Rabii, Elias, and Duarte for the same reasons discussed previously with
respect to the rejection of claims 1, 4, 5, 7, 8, 13–16, 31, 41, 42, and 44–47
under 35 U.S.C. § 103(a) over King, Perski, and Rabii.

CONCLUSION
The Examiner’s decision rejecting claims 1, 4, 5, 7, 8, 13–17, 20, 25–
27, 31, 41, 42, and 44–47 under 35 U.S.C. § 103(a) is reversed.
Appeal 2020-000102
Application 14/111,380

7
DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7,
8, 13–16,
31, 41, 42,
44–47
103(a) King, Perski, Rabii 1, 4, 5, 7,
8, 13–16,
31, 41, 42,
44–47
17, 20 103(a) King, Perski,
Rabii, Elias
17, 20
25, 26 103(a) King, Perski,
Rabii, and Duarte
25, 26
27 103(a) King, Rabii 27
Overall
Outcome
1, 4, 5, 7,
8, 13–17,
20, 25–27,
31, 41, 42,
44–47

REVERSED