2019002015 (P.T.A.B. May. 22, 2020)

Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals BoardMay 22, 2020

2019002015 (P.T.A.B. May. 22, 2020)

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. 14/890,554 11/11/2015 Matthew John Lawrenson 1009-1629 / P47509 US1 6418 102721 7590 05/22/2020 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 EXAMINER PATEL, PREMAL R ART UNIT PAPER NUMBER 2623 NOTIFICATION DATE DELIVERY MODE 05/22/2020 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW JOHN LAWRENSON, TILL BURKERT, and JULIAN CHARLES NOLAN Appeal 2019-002015 Application 14/890,554 Technology Center 2600 Before ERIC B. CHEN, GREGG I. ANDERSON and MICHAEL M. BARRY, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-002015 Application 14/890,554 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 32–38, 46–52, and 60–66. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to allowing a user to use one digit of the hand holding an electronic device to operate a touchscreen of the device. Spec. 1:17–20. The Specification describes the invention in the context of “one- handed touch entry, such as where a user operates the touchscreen of the device using a digit 20 of the same hand used to hold the device.” Id. Claim 32, reproduced below, is illustrative of the claimed subject matter: 32. A method performed by an electronic device having a touchscreen, said method comprising: detecting that a user is reaching with a digit to make a touch input to the touchscreen by detecting a movement or orientation of the electronic device that is characteristic of the user extending the digit in a reaching motion with respect to the touchscreen while holding the electronic device in the hand associated with the digit, in conjunction with detecting that the digit of the user is in a reaching orientation with respect to the touchscreen; and 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 Telefonaktiebolaget LM Ericsson. Appeal Brief (“App. Br.”), 2. Appeal 2019-002015 Application 14/890,554 3 temporarily adapting a screen currently being displayed on the touchscreen, to bring an estimated touch target within a defined reach extent that is configured in the electronic device. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Terrero US 2015/0234581 A1 Aug. 20, 2015 Prasad US 8,769,431 B1 July 1, 2014 Rakic US 2016/0154566 A1 June 2, 2016 Braun US 2016/0274622 A1 Sept. 22, 2016 REJECTIONS 1. Claims 32–37, 46–51, and 60–62 are rejected under 35 U.S.C. § 103 as being unpatentable over Terrero and Prasad. Final Act. 2–13. 2. Claims 38 and 52 are rejected under 35 U.S.C. § 103 as being unpatentable over Terrero, Prasad, and Rakic. Id. at 13–14. 3. Claims 63–66 are rejected under 35 U.S.C. § 103 as being unpatentable over Terrero, Prasad, and Braun. Id. at 15–17. OPINION Issue: Did the Examiner err in finding Terrero teaches or suggests “detecting that a user is reaching with a digit to make a touch input to the touchscreen by detecting a movement or orientation . . . while holding the electronic device in the hand associated with the digit” (“detecting orientation”), as recited in independent claim 32? The Examiner contends the “detecting orientation” limitation is taught by Terrero’s teaching of single handed operation of an “endpoint device.” Final Act. 2–3; see also Terrero ¶ 17 (“endpoint device 100 may be a smart Appeal 2019-002015 Application 14/890,554 4 phone”). The Examiner relies on paragraph 28 of Terrero, which explains the endpoint device “may also include a button 106 to engage a single hand operation mode.” Id. at 2 (quoting Terrero ¶ 28, Figs. 1–3). The button “may be a physical button located externally, as illustrated in FIG. 1, or a soft button as an object 114 on the touch screen display 108.” Id. (quoting Terrero ¶ 28, Figs. 1–3). Appellant argues Terrero requires touching, i.e., “an actual button press,” which is not “detection” of a “reaching motion.” Appeal Br. 7. The Examiner’s response is that the claimed “reaching orientation” broadest reasonable interpretation includes “any manner in which device can detecting that the user is trying to perform action with respect to touchscreen would read on the claim.” Ans. 18–19. Based on this construction, the Examiner finds “the device performs the other remaining claimed subject matter of bringing an estimated touch target within a defined reach extent.” Id. at 19. Stated in the context of the detecting orientation limitation, Appellant’s argument is that pressing a button in Terrero, be it on the endpoint device or its screen, is not “detecting that a user is reaching.” Appeal Br. 7 (emphasis added). Construction of the detecting orientation limitation is not required. The detecting orientation limitation recites that “reaching” occurs “while holding the electronic device in the hand associated with the digit,” i.e., that the device is held in one hand. Terrero requires activating “button 106 to engage a single hand operation mode.” Terrero ¶ 28. Terrero does not teach the claimed “detecting” because Terrero’s single hand operation requires activation of the button to engage single hand operation before detection Appeal 2019-002015 Application 14/890,554 5 occurs. See Terrero ¶¶ 18, 19, Fig. 1 (endpoint device external button 106 and user’s thumb 122). In other words, in Terrero the user must manually activate single handed use. The claim requires that detection occurs “while holding” the device. The claimed detection occurs “while,” i.e., contemporaneously, with the reaching and not after single handed use is activated. For the above reasons, the Examiner's rejection of independent claim 32, under 35 U.S.C. § 103 is improper because the Examiner has not established a prima facie case for unpatentability for the detecting orientation limitation based on Terrero. Independent claims 46, 61, and 62 are also rejected using Terrero. See Final Act. 6–8 (claim 46), 9–11 (claim 61), 11–13 (claim 62); see also Appeal Br. 10 (arguing all independent claims are rejected on “[s]ubstantially the same evidence”). Therefore, we do not sustain the rejection of these claims. Claims 33–38, 47–52, 60, and 63–66 all depend from claims 32, 46, 61, or 62. Accordingly, we do not sustain the rejection of claims 33–38, 47–52, 60, and 63–66 under 35 U.S.C. § 103 for the same reasons discussed with respect to claim 32. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter the following new ground of rejection: Claims 32, 46, 61, and 62 are rejected under 35 U.S.C. § 103(a) as unpatentable over Prasad and Terrero. Prasad teaches “automatically and intelligently” locating the single handed usability zone (SHUZ) based on “an estimation of the location of the thumb of the user’s hand in which the device is being held.” Prasad 6:22– 24, see also id. at 3:41–42. Prasad teaches the “detecting that a user is Appeal 2019-002015 Application 14/890,554 6 reaching” because Prasad teaches locating the SHUZ “automatically” based on an “estimation” of the location of the user’s thumb. Unlike Terrero, no prior manual action is required. We agree with the Examiner’s finding that Prasad teaches the “in conjunction” part of claim 32, “detecting that the digit of the user is in a reaching orientation with respect to the touchscreen detecting that user is reaching with a digit.” See Final Act. 3 (citing Prasad, Fig. 8D (step 1040), 14:51–57 (“the present invention provides for a SHUZ 200 to be a dynamic area that can be personalized to individual users, and used by software in a context-dependent way”). In addition to the Examiner’s findings, we find that Figure 8D of Prasad describes “auto placement of SHUZ” and teaches detecting the thumb to create the SHUZ. Prasad, 23:25–26, Fig. 8D, step 1042 (placing “an imaginary rectangle of the same size as the SHUZ in the proper SHUZ region right below the location of the thumb.”). Prasad also teaches detecting user interaction from a finger or thumb input from the user at the touchscreen. Prasad, 23:29–32. Figure 8U of Prasad relates to customizing a profile for a user and further teaches adjusting the size of the SHUZ based on estimated thumb movement. Id. at 29:4–5, 29:29–32, Fig. 8U (step 1267 “estimate the movement of the thumb in the negative or positive x and y directions”). A person of ordinary skill would understand from the above teachings of Prasad that the user’s thumb is detected in a reaching motion to define the SHUZ, meeting the “in conjunction” limitation. We are not persuaded that Prasad’s teaching of using the thumb to define the SHUZ is different from “detecting the act of reaching.” See Appeal Br. 9. Similarly, we are not persuaded that Prasad’s X and Y coordinates used in “a dedicated processing Appeal 2019-002015 Application 14/890,554 7 routine” is patentably distinct from “detecting that the digit of the user is in a reaching orientation with respect to the touchscreen.” Id. (citing Prasad 27:17). The last limitation of claim 32, “temporarily adapting a screen . . . to bring an estimated touch target within a defined reach” is taught by Terrero. See Final Act. 2 (citing Terrero, Fig. 3 (elements 1141, 116). Prasad also teaches its SHUZ is “a small form factor mobile device” which is not always visible to the user, i.e., it’s “temporary.” Prasad 13:30–42. We agree with the Examiner and find the combination of Terrero with Prasad is based on articulated reasoning with rational underpinnings. Specifically, we find both Prasad and Terrero “simulate[] a small form factor user experience,” a small screen within a larger one, and allow a user to use a thumb to control inputs “into a smaller area on the screen that can be naturally and comfortably covered by the thumb of the hand in which the device is being held.” Final Act. 4; see also Terrero 4:19–22 (“This enables single-handed access to the desktop even with a large form factor device but using the same thumb stroke actions commonly used and understood by a user of a small form factor device.”); Prasad 13:30–36. Because the Patent Trial and Appeal Board is a review body, rather than a place of initial examination, we have not reviewed dependent claims 33–38, 47–52, 60, and 63–66 to the extent necessary to determine whether Prasad, alone or in combination with Terrero, Rakic, or Braun, renders any of these claims obvious. We leave it to the Examiner to determine the appropriateness of any further rejections of dependent claims 33–38, 47–52, 60, and 63–66 under 35 U.S.C. § 103(a). Appeal 2019-002015 Application 14/890,554 8 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 32–37, 46–51, 60–62 103 Terrero, Prasad 32–37, 46–51, 60–62 38, 52 103 Terrero, Prasad, Rakic 38, 52 63–66 103 Terrero, Prasad, Braun 63–66 32, 46, 61, 62 103 Prasad, Terrero 32, 46, 61, 62 Overall Outcome 32–38, 46–52, 60–66 32, 46, 61, 62 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, 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 examiner. . . . Appeal 2019-002015 Application 14/890,554 9 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)