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14-07-15 Samsung Notice Re. Developments in Apple's '915 PTAB Appeal

14-07-15 Samsung Notice Re. Developments in Apple's '915 PTAB Appeal

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02198.51855/5919717.1

Case No. 11-cv-01846-LHK (PSG)
STATEMENT OF RECENT DEVELOPMENT
QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Bar No. 170151)
charlesverhoeven@quinnemanuel.com
50 California Street, 22
nd
Floor
San Francisco, California 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700

Kevin P.B. J ohnson (Bar No. 177129)
kevinjohnson@quinnemanuel.com
Victoria F. Maroulis (Bar No. 202603)
victoriamaroulis@quinnemanuel.com
555 Twin Dolphin Drive, 5
th
Floor
Redwood Shores, California 94065-2139
Telephone: (650) 801-5000
Facsimile: (650) 801-5100

Michael T. Zeller (Bar No. 196417)
michaelzeller@quinnemanuel.com
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100


Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA, SAN J OSE DIVISION
APPLE INC., a California corporation,

Plaintiff,

vs.

SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
TELECOMMUNICATIONS
AMERICA, LLC, a Delaware limited liability
company,

Defendant.

CASE NO. 11-cv-01846-LHK (PSG)

STATEMENT OF RECENT
DEVELOPMENT REGARDING
REEXAMINATION OF U.S. PATENT NO.
7,844,915




Case5:11-cv-01846-LHK Document3145 Filed07/15/14 Page1 of 2
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02198.51855/5919717.1
-1-
Case No. 11-cv-01846-LHK (PSG)
STATEMENT OF RECENT DECISION (L.R. 7-3(d))

Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
Samsung Telecommunications America, LLC (collectively “Samsung”) bring to the Court’s
attention documents filed in the ex parte reexamination of U.S. Patent No. 7,844,915 (the “’915
Patent”). The examiner’s decision rejecting the claims of the ’915 patent is currently on appeal
before the Patent Trial and Appeals Board (“PTAB”). On February 26, 2014, Apple filed its
Appeal Brief, a copy of which is attached hereto as Exhibit A. On May 2, 2014, the Examiner
filed an Answer, a copy of which is attached hereto as Exhibit B. On J uly 2, 2014, Apple filed its
Reply Brief, a copy of which is attached hereto as Exhibit C.

DATED: J uly 15, 2014 QUINN EMANUEL URQUHART &
SULLIVAN, LLP



By /s/ Victoria F. Maroulis
Charles K. Verhoeven
Kevin P.B. J ohnson
Victoria F. Maroulis
Michael T. Zeller

Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

Case5:11-cv-01846-LHK Document3145 Filed07/15/14 Page2 of 2
EXHIBIT A

Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page1 of 37
I hereby certify that this paper is being transmitted via the Office electronic filing system in accordance with § t .6(a)(4).
Dated: February 26, 20t 4 Electronic Signature for Lisa Yadao: /Lisa Yadao/
Docket No.: 106842803600
(PATENT)
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Ex Parte Reexamination of:
U.S. Patent No. 7,844,915
Control No.: 90/012,332
Reexamination Filing Date: May 30,2012
Issue Date: Nov. 30,2010
For: Application Programming Interfaces for Scrolling
Operations
Confirmation No.: 5963
Art Unit: 3992
Examiner: Michael J. Yigdall
APPEAL BRIEF
MS Ex Parte Reexam
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Sir/Madam:
This is an appeal from the final Office Action dated July 26,2013, and the Advisory Action
dated November 20,2013, rejecting claims 1-21 of U.S. Patent No. 7,844,915 (the '''915 patent").
A Notice of Appeal was filed on December 26,2013. As required under 37 C.P.R. § 41.37, this
Brief is filed within two months of the filing of the Notice of Appeal. The fees required under 37
C.P.R. § 41.20(b)(2) are submitted concurrently herewith. This Brief contains items under the
following headings according to § 41.37 and MPEP §§ 1205 and 2274:
I. Real Party in Interest
II Related Appeals and Interferences
III. Status of Claims
IV. Status of Amendments
V. Summary of Claimed Subject Matter
VI. Grounds of Rejection to Be Reviewed on Appeal
VII. Argument
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page2 of 37
Control No.: 901012,332 2 Docket No.: 106842803600
VIII. Claims Appendix
IX. Evidence Appendix
X. Related Proceedings Appendix
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page3 of 37
Control No.: 901012,332 3 Docket No.: 106842803600
TABLE OF CONTENTS
I. REAL PARTY IN INTEREST ................................................................................... 5
II. RELATED APPEALS, INTERFERENCES AND JUDICIAL PROCEEDINGS ..... 5
III. STATUS OF CLAIMS ............................................................................................... 6
IV. STATUS OF AMENDMENTS .................................................................................. 6
V. SUMMARY OF CLAIMED SUBJECT MATTER ................................................... 6
VI. GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL ........................... 8
VII. ARGUMENT ............................................................................................................ 10
A. Introductory Comments ................................................................................ 10
B. Broadest Reasonable Construction of the "Distinguishing" Limitation ....... 10
1. Legal framework for claim construction ........................................... 10
2. The Examiner's construction of the "distinguishing" limitation is
unreasonable ..................................................................................... 11
3. A person of ordinary skill in the art would interpret the
"distinguishing" limitation as a test between one and more than one
input. ................................................................................................. 16
4. Patent Owner's reexamination statements reinforce its interpretation
of the "distinguishing" limitation ...................................................... 18
C. Ground 4: The Examiner Erred in Concluding that Claims 1,5-8,12-15, and
19-21 Are Unpatentable over Nomura in View of Rubine ........................... 19
1. Claims 1,5-8,12-15, and 19-21, together ........................................ 19
2. Claims 8 and 12-14, separately: Nomura does not disclose a machine
readable storage medium with programming instructions that operate
as required under all circumstances .................................................. 23
3. Claims 5, 12, and 19, separately: Nomura does not disclose
"determining whether [an] event object invokes a gesture or scroll
operation ... based on receiving a drag user input for a certain time
period." .............................................................................................. 24
D. Ground 1: The Examiner Erred in Concluding that Claims 1,5-8,12-15, and
19-21 Are Anticipated by Hillis .................................................................... 25
1. Claims 1,5-8,12-15, and 19-21, together ........................................ 25
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page4 of 37
Control No.: 901012,332 4 Docket No.: 106842803600
2. Claims 8 and 12-14, separately: Hillis does not disclose a machine
readable storage medium with programming instructions that operate
as required under all circumstances .................................................. 28
3. Claims 5, 12, and 19, separately: Hillis does not disclose
"determining whether [an] event object invokes a gesture or scroll
operation ... based on receiving a drag user input for a certain time
period." .............................................................................................. 29
E. Grounds 2 and 5: The Examiner Erred in Concluding that Claims 2,9, and
16 Are Unpatentable over Hillis in View of Lira or Nomura in View of
Rubine and Lira ............................................................................................. 30
l. Lira does not disclose the "distinguishing" limitation ...................... 30
2. Lira does not disclose "rubberbanding." ........................................... 30
3. A person of ordinary skill in the art would not have been motivated to
combine Lira with Nomura or Hillis ................................................. 31
4. N omura in view of Rubine and further in view of Lira does not
establish a prima facie case of obviousness ...................................... 32
5. Hillis in view of Lira does not establish a prima facie case of
obviousness ....................................................................................... 32
6. Secondary considerations support a conclusion of non-obviousness.32
F. Grounds 3 and 6: The Examiner Erred in Concluding that Claims 3, 4, 10,
11, 17, and 18 Are Unpatentable over Hillis in View of Makus or Nomura in
View of Rubine and Makus .......................................................................... 33
l. Makus does not disclose the "distinguishing" limitation .................. 33
2. Makus does not disclose "attaching" scroll indicators ..................... 33
3. A person of ordinary skill in the art would not have been motivated to
combine Makus with Nomura or Hillis ............................................ 34
4. N omura in view of Rubine and further in view of Makus does not
establish a prima facie case of obviousness ...................................... 34
5. Hillis in view of Makus does not establish a prima facie case of
obviousness ....................................................................................... 35
6. Secondary considerations support a conclusion of non-obviousness.35
G. Conclusion .................................................................................................... 35
VIII. CLAIMS APPEND IX ................................................................................................. 1
IX. EVIDENCE APPENDIX ............................................................................................ 1
X. RELATED PROCEEDINGS APPENDIX ................................................................. 1
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page5 of 37
Control No.: 901012,332 5 Docket No.: 106842803600
I. REAL PARTY IN INTEREST
The real party in interest for this appeal is Apple Inc. ("Patent Owner" or "Appellant"), with
a principal place of business at 1 Infinite Loop, Cupertino, California 95014.
II. RELATED APPEALS, INTERFERENCES AND JUDICIAL PROCEEDINGS
Apple Inc. v. Samsung Elecs. Co., Ltd., Case No. ll-cv-1846 (N.D. CaL). The '915 patent
was one of three utility patents asserted at trial in Apple Inc. v. Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC., Case No.
11-cv-1846, in the Northern District of California. On August 24, 2012, a jury found, inter alia,
claim 8 of the '915 patent to be infringed by twenty-one different Samsung products and not invalid
and awarded substantial damages. On January 29,2013, the district court denied Samsung's motion
for judgment as a matter of law that claim 8 was not infringed or was invalid. On November 18,
2013, the Federal Circuit vacated the district court's denial of Apple's request for a preliminary
injunction based, in part, on Samsung's infringement of the '915 patent. On November 12,2013, a
damages re-trial was held as to certain Samsung products that were found to infringe, inter alia,
claim 8 of the '915 patent. The jury again awarded damages on November 24,2013. The district
court denied Samsung's motion for judgment as a matter oflaw as to the damages retrial on
February 7, 2014.
In the Matter of Certain Portable Electronic Devices & Related Software, Investigation
No. 337-TA-797 (Int'l Trade Comm'n). On July 8, 2011, Apple filed a complaint against HTC
Corp. (HTC) in the International Trade Commission (ITC) for infringement of the '915 patent,
among other patents. The ITC subsequently initiated an investigation on August 12,2011. On
January 14,2013, the full Commission determined not to review the Initial Determination dated
December 13,2012, and terminated the investigation pursuant to settlement.
Apple Inc. v. HTC Corp., Case No. ll-cv-611 (D. Del.). On July 11,2011, Apple filed suit
against HTC in the District of Delaware for infringement of the '915 patent, among other patents.
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page6 of 37
Control No.: 901012,332 6 Docket No.: 106842803600
On November l3, 2012, the parties filed a joint stipulation of dismissal without prejudice, and the
case was closed on November 16,2012.
III. STATUS OF CLAIMS
Claims 1-21 were finally rejected and are pending on appeal.
IV. STATUS OF AMENDMENTS
No amendments have been filed in the course of this reexamination.
V. SUMMARY OF CLAIMED SUBJECT MATTER
The '915 patent includes three independent claims (1, 8, and 15), all three of which are on
appeal. The subject matter for each of the appealed independent claims, with supporting reference
to the specification, is discussed below. The supporting references to the specification are by way
of example only and not an exhaustive listing for each independent claim.
Independent claim 1 (see Claims Appendix) is directed to a machine-implemented method
for scrolling on a touch-sensitive display of a device. ('915 patent at 8:4-6; FIG. 4.) The method
includes receiving a user input applied to the touch-sensitive display of the device. (ld. at 12:29-30;
FIGs. 1 and 4.) The method further includes creating an event object in response to the user input.
(ld. at 12:30-32; FIG. 1 (102).) After creating the event object, the method includes determining
whether the event object invokes a scroll or gesture operation by distinguishing between a single
input point applied to the touch-sensitive display that is interpreted as the scroll operation and two
or more input points applied to the touch-sensitive display that are interpreted as the gesture
operation. (ld. at 6:37-43, 12:29-34; FIG. 1 (106).) Depending on the result of the determination,
the method includes issuing a scroll or gesture call. (ld. at 6:46-48; FIG. 1 (108).) If a scroll call is
issued, the method includes scrolling a window having a view associated with the event object
based on an amount of a scroll with the scroll stopped at a predetermined position in relation to the
user input. (ld. at 6:48-53, 10:54-60; FIG. 1 (110).) If a gesture call is issued, the method includes
scaling the view associated with the event object based on receiving the two or more input points in
the form of the user input. (ld. at 7:4-10, l3:36-40; FIG. 1 (112).)
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page7 of 37
Control No.: 901012,332 7 Docket No.: 106842803600
Independent claim 8 (see Claims Appendix) is directed to a machine readable storage
medium storing executable program instructions that, when executed, cause a data processing
system to perform a method. ('915 patent at 4:61-5:2; FIG. 31 (3104) and FIG. 32 (3204).) The
program instructions cause the system to receive a user input applied to the touch-sensitive display
of the device. (ld. at 12:29-30; FIGs. 1 and 4.) The program instructions also cause the system to
create an event object in response to the user input. (ld. at 12:30-32; FIG. 1 (102).) After the event
object is created, the program instructions also cause the system to determine whether the event
object invokes a scroll or gesture operation by distinguishing between a single input point applied to
the touch-sensitive display that is interpreted as the scroll operation and two or more input points
applied to the touch-sensitive display that are interpreted as the gesture operation. (ld. at 6:37-43,
12:29-34; FIG. 1 (106).) Depending on the result of the determination, program instructions also
cause the system to issue a scroll or gesture call. (ld. at 6:46-48; FIG. 1 (108).) If a scroll call is
issued, program instructions also cause the system to scroll a window having a view associated with
the event object based on an amount of a scroll with the scroll stopped at a predetermined position
in relation to the user input. (ld. at 6:48-53, 10:54-60; FIG. 1 (110).) If a gesture call is issued,
program instructions also cause the system to scale the view associated with the event object based
on receiving the two or more input points in the form of the user input. (ld. at 7:4-10, 13:36-40;
FIG. 1 (112).)
Independent claim 15 (see Claims Appendix) is directed to an apparatus that includes means
for receiving, through a hardware device, a user input on a touch-sensitive display of the apparatus.
('915 patent at 6:20-31; FIG. 4 (408), FIG. 31 (3105), and FIG. 32 (3212, 3216).) The apparatus
includes means for creating an event object in response to the user input. (ld. at 4:56-5:2, 12:30-32,
20:20-49,21:10-38,22:5-16; FIG. 1 (102), FIG. 4 (408), FIG. 31 (3103-5), and FIG. 32 (3202,
3204,3212,3216).) The apparatus further includes means for determining whether the event object
invokes a scroll or gesture operation by distinguishing between a single input point applied to the
touch-sensitive display that is interpreted as the scroll operation and two or more input points
applied to the touch-sensitive display that are interpreted as the gesture operation. (ld. at 6:37-43,
12:29-34,20:20-49,21:10-38,22:5-16; FIG. 1 (106), FIG. 31 (3103-5), and FIG. 32 (3202, 3204,
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page8 of 37
Control No.: 901012,332 8 Docket No.: 106842803600
3212,3216).) The apparatus also includes means for issuing at least one scroll or gesture call based
on invoking the scroll or gesture operation. (ld. at 6:46-48,12:29-34,20:20-49,21:10-38,22:5-16;
FIG. 1 (l08), FIG. 31 (3103-5), and FIG. 32 (3202, 3204, 3212, 3216).) The apparatus further
includes means for responding to at least one scroll call, if issued, by scrolling a window having a
view associated with the event object. (ld. at 6:48-53,10:54-60,12:29-34,20:20-49,21:10-38,
22:5-16; FIG. 1 (1l0), FIG. 31 (3103-5), and FIG. 32 (3202, 3204, 3212, 3216).) The apparatus
also includes means for responding to at least one gesture call, if issued, by scaling the view
associated with the event object based on receiving the two or more input points in the form of the
user input. (ld. at 7:4-10,12:29-34, l3:36-40, 20:20-49, 21:10-38, 22:5-16; FIG. 1 (1l2), FIG. 31
(3103-5), and FIG. 32 (3202, 3204, 3212, 3216).)
Dependent claims 5, 12, and 19 (see Claims Appendix) are further directed to determining
whether the event object invokes a scroll or gesture operation based on receiving a drag user input
for a certain time period. ('915 patent at 6:40-41, 10:54-60.)
Dependent claims 2,9, and 16 (see Claims Appendix) are further directed to rubberbanding
a scrolling region by a predetermined maximum displacement. ('915 patent at 5:33-40.)
Dependent claims 3-4, 10-11, and 17-18 (see Claims Appendix) are further directed to
attaching scroll indicators to the display in response to user input. ('915 patent at 6:64-7:3; FIGs.
6A-6D.)
VI. GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
sf-3384833
The grounds of rejection on appeal are:
l. Ground 1: Claims 1,5-8,12-15, and 19-21 are rejected under 35 U.S.c. § 102(e)
as anticipated by U.S. Patent No. 7,724,242 ("Hillis").
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page9 of 37
Control No.: 901012,332 9 Docket No.: 106842803600
sf-3384833
2. Ground 2: Claims 2,9, and 16 are rejected under 35 U.S.c. § 103(a) as
unpatentable over Hillis in view of International Publication No. WO 03/081458
("Lira").
3. Ground 3: Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.c. § 103(a)
as unpatentable over Hillis in view of U.S. Patent No. 6,757,673 ("Makus").
4. Ground 4: Claims 1,5-8,12-15, and 19-21 are rejected under 35 U.S.c. § 103(a)
as unpatentable over Japanese Publication No. 2000-163031A (English
Translation) ("Nomura") in view of Dean Harris Rubine, "The Automatic
Recognition of Gestures," CMU-CS-91-202, December 1991 ("Rubine").
5. Ground 5: Claims 2,9, and 16 are rejected under 35 U.S.c. § 103(a) as
unpatentable over Nomura in view of Rubine and further in view of Lira.
6. Ground 6: Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.c. § 103(a)
as unpatentable over Nomura in view of Rubine and further in view of Makus.
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page10 of 37
Control No.: 901012,332 10 Docket No.: 106842803600
VII. ARGUMENT
A. Introductory Comments
This appeal involves the construction of the phrase "distinguishing between a single input
point ... and two or more input points" (the "distinguishing" limitation), which appears in claims 1,
8, and 15 of the '915 patent.
The "broadest reasonable interpretation" standard applicable during reexamination requires
that this limitation be interpreted from the perspective of one of ordinary skill in the art consistent
with the specification. The Examiner's construction does not do this, instead focusing on the word
"or" in isolation and ignoring its surrounding context. By ignoring the complete phrase's meaning
to those of ordinary skill and the full intrinsic evidence, the Examiner's construction is
unreasonable.
Properly construed, the "distinguishing" limitation refers to a test that distinguishes between
one input and more than one input. This construction is consistent with the understanding of one of
ordinary skill in the art, as Professor Scott Klemmer has explained after reviewing the plain claim
language and the specification.
Each pending rejection of the claims of the '915 patent, at least in part, depends on the
Examiner's faulty construction of the "distinguishing" limitation. Because that construction is
incorrect, Patent Owner respectfully asks that the pending rejections be reversed.
B. Broadest Reasonable Construction of the "Distinguishing" Limitation
1. Legal framework for claim construction
During reexamination, claims are evaluated under the "broadest reasonable interpretation"
standard. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). This standard requires that the
"words of the claim must be "given their plain meaning, unless [that] meaning is inconsistent with
the specification." MPEP § 2111.01. The MPEP explains that the "plain meaning" of a term means
"the ordinary and customary meaning given to the term by those of ordinary skill in the art at the
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page11 of 37
Control No.: 901012,332 11 Docket No.: 106842803600
time of the invention." (emphasis added); see also In re Suitco Surface, Inc., 603 F.3d 1255,1260
(Fed. Cir. 2010) (vacating rejection based on "unreasonably broad" construction).
In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en bane), the Federal Circuit
enunciated the basic principles of claim construction. The inquiry begins by considering "how a
person of ordinary skill in the art understands a claim term," as "patents are addressed to and
intended to be read by others of skill in the pertinent art." Id. at 1313. The person of ordinary skill
in the art "is deemed to read the claim term not only in the context of the particular claim in which
the disputed term appears, but in the context of the entire patent, including the specification." Id.
The court in Phillips added that expert declarations "can be useful ... to ensure that the court's
understanding of the technical aspects of the patent is consistent with that of a person of skill in the
art." Id. at 1318.
The Phillips court emphasized, however, that claim construction must not follow a "rigid
algorithm." Id. at 1324. This is because "there is no magic formula or catechism for conducting
claim construction." Id. (emphasis added); cf KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,419
(2007) (rejecting "rigid and mandatory formulas" in determining obviousness). Consistent with this
admonition, the Patent Office cannot "dissect a claimed invention into discrete elements and then
evaluate the elements in isolation." MPEP § 2103(I)(C). "Instead, the claim as a whole must be
considered." Id. (citing Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)). Applying the correct and
flexible approach to claim construction under Phillips allows the focus to remain on the critical
question, i.e., "how a person of ordinary skill in the art would understand the claim terms." Phillips,
415 F.3d at 1323.
2. The Examiner's construction of the "distinguishing" limitation is
unreasonable.
All independent claims of the '915 patent recite:
sf-3384833
determining whether the event object invokes a scroll or gesture
operation by distinguishing between a single input point applied to the
touch sensitive display that is interpreted as the scroll operation and
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page12 of 37
Control No.: 901012,332 12 Docket No.: 106842803600
two or more input points applied to the touch sensitive display that are
interpreted as the gesture operation ....
('915 claims 1, 8, 15 (emphasis added).) The Examiner interprets this limitation as disclosing two
"alternative" tests that are joined by the word "or." (See Advisory Action at 5.) According to the
Examiner, a device that distinguishes one input point from two input points, or that distinguishes
one input point from more than two input points, satisfies the limitation. (ld. at 3.) The Examiner
also interprets this limitation as satisfied by a device that only distinguishes two input points from
any other number of input points, whether one, three, four, or five. (ld. at 6.)
The Examiner's interpretation is flawed for multiple reasons. First, it applies a rigid formula
to interpret the word "or" without regard to its context within the entire claim. Second, the plain
language of the claim requires "distinguishing between a single input point ... and two or more
input points"- and not merely identifying two input points. Third, the Examiner's construction
ignores the evidence demonstrating how one of ordinary skill in the art would read the claim. Each
of these errors renders the Examiner's interpretation unreasonable.
a. The Examiner applies a rigid formula to the meaning of "or."
The Examiner's rejections are based on his mechanical interpretation of the isolated word
"or" in the "distinguishing" limitation, ignoring its context in the larger phrase. Specifically, the
Examiner construes the word "or" as providing for alternative structures, relying heavily on Brown
v. 3M, 265 F.3d l349 (Fed. Cir. 2001) and Schumer v. Laboratory Computer Systems, Inc., 308 F.3d
l304 (Fed. Cir. 2002) for support.
In Brown, the Federal Circuit explained that, "[ w ]hen a claim covers several structures or
compositions, either generically or as alternatives, the claim is deemed anticipated if any of the
structures or compositions within the scope of the claim is known in the prior art." Id. at 1351
(citations omitted). From Brown, the Examiner deduces that the "distinguishing" limitation
provides two alternatives because it uses the word "or." These alternatives are "two input points
and more than two input points." (See Advisory Action at 5.)
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Control No.: 901012,332 l3 Docket No.: 106842803600
The Examiner misapplies Brown, which concerned claims to generic or alternative structures
like Markush claims. The specific claims at issue in Brown were directed to a database containing
"at least one of two-digit, three-digit, or four-digit year-date representations." Id. at l352. Unlike
the claims in Brown, the claims of the '915 patent do not involve a series of alternative structures.
Instead, the phrase "two or more" is embedded within a larger phrase, i.e., "distinguishing between
a single input point ... and two or more input points." As the plain language makes clear, the claim
relates to the act of distinguishing between a single input point and two or more input points-not
"two or more input points" by themselves.
Schumer also is readily distinguishable. Among other things, Schumer construes the term
"or" in the context of a claim reciting "one of the following elements is different ... " and listing
several alternatives separated by "or." Schumer, 308 F.3d at l311. In Schumer, the context of the
claim clearly indicates that only one of the listed alternatives must be present.
The principles of formal logic confirm the importance of considering the word "or" in its
surrounding context, and not in isolation as the Examiner has done. De Morgan's law, for example,
holds that the logical statement [not (p or q)] can be rewritten as [(not p) and (not q)]. In the
limitations at issue, the word "or" is similarly embedded within a contrasting phrase, "distinguishing
between a single input point ... and two or more input points."
Applying De Morgan's law, the "distinguishing" limitation could be re-written as
"distinguishing between a single input point and two input points and distinguishing between a
single input point and more than two input points," without changing its meaning. Cf Vasudevan
Software, Inc. v. MicroStrategy Inc., No. ll-cv-6637, 2013 WL 5288267, at *4 (N.D. Cal. Sept. 19,
20l3) (applying De Morgan's law to a claim containing a negated "or" phrase). Because the entire
"or" phrase (i.e., "two or more input points") is used in logical contrast to another phrase (i.e., "a
single input point"), it does not set out alternative structures. Instead, a device performing this step
would need to determine whether there was a single input point and not two or more, and vice versa.
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The Examiner's approach, which focuses on the word "or" in isolation, contradicts the
MPEP's directive that Patent Office "personnel may not dissect a claimed invention into discrete
elements and then evaluate the elements in isolation." MPEP § 2l03(I)(C). Neither Brown nor the
MPEP allow the Examiner to read the word "or" rigidly as always giving rise to alternative
structures. Instead, under Phillips, the meaning of the word "or" must be understood in light of the
claim as a whole and cannot be deduced from a rigid formula. The Examiner's construction, which
formulaically interprets "or" as reciting alternative structures rather than considering its context in
the claim as a whole, runs counter to the MPEP and Phillips and therefore is unreasonable.
b. The Examiner's interpretation contradicts the plain language.
The Examiner has also suggested that the "distinguishing" limitation can be satisfied by a
device that distinguishes two input points from an arbitrary number of input points. (See Final
Office Action at 6.) This interpretation contradicts the plain language of the claims, which require
"distinguishing between a single input point. .. and two or more input points"-and not
distinguishing between "two input points" and "any other number." The Examiner's construction, if
accepted, would read "single input point" out of the claim entirely.
c. The Examiner disregards the understanding of those of
ordinary skill in the art.
The Examiner's interpretation of the "distinguishing" limitation further ignores the evidence
of how one of ordinary skill in the art would understand the claims. As a result, the Examiner's
interpretation fails to reflect the perspective of one of ordinary skill in the art.
During reexamination, Patent Owner provided a declaration from Dr. Scott Klemmer,
formerly an Associate Professor of Computer Science at Stanford University and now with the
University of California, San Diego. Dr. Klemmer explained that one of ordinary skill in the art
would understand the "distinguishing" limitation to describe an "algorithm ... [that]
disambiguate[s] user input" into either a scroll or a gesture operation. (See Klemmer Decl. <JI<JI 7-8.)
The algorithm works by distinguishing a user input of "one input point" from a user input of "more
than one input point." (ld. <JI<JI 8-9.) Because the algorithm contemplates inputs greater than two, Dr.
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Klemmer noted that "one of ordinary skill in the art would not consider it reasonable" to simply
implement a test between one input point and two input points. (ld. <JI 14 (emphasis added).)
Dr. Klemmer also explained how the person of ordinary skill would interpret the word "or"
in the "distinguishing" limitation. According to Dr. Klemmer, the term "or" in "two or more" does
not create "a palette of alternative options to implement." (ld. <JI 16.) Instead, the term "is a
component of an atomic test condition, namely, that any plurality of input points be interpreted as a
gesture operation." (ld.) A person of ordinary skill intending to implement the "distinguishing"
limitation would use this atomic test to distinguish a single input from more than one input. (ld. <JI
13.) Such a person would not consider it reasonable to implement the "distinguishing" limitation
using an "algorithm that interprets only a subset of the interval" as a gesture operation.
1
(ld. <JI 17.)
Professor Klemmer's understanding is not unique, as other academics have offered
consistent interpretations of how a person having ordinary skill in the art would view the
"distinguishing" limitation. For example, Dr. Jason Nieh, a Professor of Computer Science at
Columbia University, has explained that the "distinguishing" limitation cannot be satisfied by an
algorithm that "distinguish[es] precisely between two input points and not two input points." (Nieh
Decl. <JI<JI 15-17.) Dr. Karan Singh, a Professor of Computer Science at the University of Toronto,
has also offered trial testimony that a device that performs a gesture operation (specifically, scaling)
in response to precisely two input points, but scrolls on all other inputs, does not satisfy the
"distinguishing" limitation. (Response to Final Office Action at 7 -8 (quoting excerpt of trial
testimony of Dr. Karan Singh in Apple Inc. v. Samsung Elecs. Co. , No. C-11-0 1846 LHK, Aug. 17,
2012, vol. 11, p. 6624, 6-18).)
The Examiner completely ignored these understandings of those of ordinary skill in the art.
As for Dr. Klemmer specifically, the Examiner did not attempt to address accuracy of his statements
regarding a skilled artisan's interpretation of the "distinguishing" limitation. Nor did the Examiner
attempt to offer his own independent evidence of how one of ordinary skill would read the claims,
1 As Dr. Klemmer explained, a stored program (as in claim 8) must include instructions that can yield the required
behavior in all instances. A partial implementation of an algorithm that cannot respond to the full range of inputs would
not meet the requirements of claim 8. (See Klemmer Decl. n 18-20.)
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whether technical documentation or contrary expert testimony. Instead, the Examiner simply
disregarded Dr. Klemmer's declaration because it did not include specific cites to the
specification-overlooking the fact that Dr. Klemmer's understanding was informed by his reading
of the claims and specification. (See Klemmer Decl. <JI 3.)
It is black letter law that the perspective of the skilled artisan is central to the proper
construction of the claims. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) ("Although
the PTO must give claims their broadest reasonable interpretation, this interpretation must be
consistent with the one that those skilled in the art would reach."). By ignoring how one of ordinary
skill would read and implement the "distinguishing" limitation, the Examiner erred.
3. A person of ordinary skill in the art would interpret the
"distinguishing" limitation as a test between one and more than
one input.
In contrast to the Examiner, a person of ordinary skill reading the claims, specification, and
prosecution history would understand the "distinguishing" limitation to describe a test that
distinguishes one input point from more than one input point for the purpose of invoking a scroll
operation or gesture operation, respectively. As Dr. Klemmer has explained:
If one of ordinary skill in the art were asked to express the
distinguishing limitation as pseudo-code, it would be reasonable to
express the limitation as:
if (1 input point) {interpret as a scroll operation}
if (> 1 input point) {interpret as a gesture operation}
(Klemmer Decl. <JI 13.) This pseudo-code distinguishes one input point from all numbers greater
than one. In other words, the limitation describes an "atomic test condition, namely, that any
plurality of input points be interpreted as a gesture operation." (ld. <JI 16.)
This interpretation is fully consistent with the specification of the '915 patent. The
specification uses the phrase "two or more" interchangeably with the term "plurality." (Compare
'915 patent at 5:45-48 ("The gesture operations also include performing a rotation transform to
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rotate an image or view in response to a user input having two or more input points."), with id. at
7:4-8 ("[G]esture operations include responding to at least one gesture call, if issued, by rotating a
view associated with the event object based on receiving a plurality of input points in the form of
the user input.").) Because the inventors considered "two or more" and "plurality" to be equivalent
in the context of the invention, the phrase "two or more" in the "distinguishing" limitation does not
set out two distinct alternatives.
When describing the distinguishing step, the specification also describes a single test for
differentiating one from two or more:
The method 100 further includes determining whether the event object
invokes a scroll or gesture operation at block 106. For example, a
single touch that drags a distance across a display of the device may
be interpreted as a scroll operation. In one embodiment, a two or
more finger touch of the display may be interpreted as a gesture
operation.
(ld. at 6:38-43.) This test contrasts "a single touch" with "a two or more finger touch" to determine
which operation to invoke. The term "a two or more finger touch" describes a type of input, i. e.,
more than one finger, rather than two different categories of input to be evaluated separately.
Contrary to the Examiner's characterization, the specification thus does describe a gesture
employing three or more inputs, as it falls within the category of "two or more finger touch."
The original prosecution history also confirms this one/more than one or "atomic test"
construction. The original Examiner of the '915 patent added the "distinguishing" limitation via an
examiner's amendment. In the Notice of Allowance that followed, the Examiner explained:
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[The cited references] fail to teach or suggest ... distinguishing
between!! single input point and!! two or more input points applied to
a touch-sensitive display, wherein a single input point is interpreted as
a scroll operation and two or more input points are interpreted as a
gesture operation.
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(U.S. Pat. App. No. 11/620,717, Notice of Allowance, July 16,2010, <]I 4 (emphasis added).) The
Examiner's paraphrasing of the claim language confirms that the "distinguishing" limitation makes
a single distinction between a single input, on the one hand, and more than one input, on the other.
Dr. Klemmer's interpretation of "two or more" as describing an "atomic test condition"
requiring "any plurality of input points be interpreted as a gesture operation" also is consistent with
case precedent. The Federal Circuit has repeatedly explained that the phrase "two or more" is
equivalent to the single term "plurality." See, e.g., Dayco Prods., Inc. v. Total Containment, Inc.,
258 F.3d l3l7, l328 (Fed. Cir. 2001) ("[W]e find no reason to give 'plurality ... of projections'
any definition other than its ordinary definition of 'two or more. "'); cf Commonwealth Sci. and
Indus. Research Org. V. Buffalo Tech. (USA) Inc., 542 F.3d l363, l384-85 (Fed. Cir. 2008) (using
the terms "two or more," "plurality of," "multiple," and "at least two" interchangeably). This
confirms that the "distinguishing" limitation contrasts "two or more," i.e., a "plurality," with a
single input point.
4. Patent Owner's reexamination statements reinforce its
interpretation of the "distinguishing" limitation.
During these reexamination proceedings, Patent Owner has made multiple statements
construing the "distinguishing" limitation and clearly disavowing any scope not covered by that
construction. (See, e.g., Response to Non-Final Office Action at 6 ("[T]he claims require
particularly identifying a single input point, when present."); Response to Final Office Action at 8-9
("[A]ny reasonable interpretation of the distinguishing limitation requires an algorithm that
interprets a single input point as a scroll operation and that interprets any input having greater than
one input point ... as a gesture operation.").)
These statements, which are part of the public record, inform the public's understanding
regarding the broadest reasonable construction of the claims of the '915 patent. Am. Piledriving
Equip., Inc. V. Geoquip, Inc., 637 F.3d l324, l336 (Fed. Cir. 2011) (citing Microsoft Corp. V. Multi-
Tech Sys., 357 F.3d l340, l350 (Fed. Cir. 2004) ("We have stated on numerous occasions that a
patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to
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claim interpretation.")). That these statements arose during reexamination does not detract from
their persuasiveness as to the correct interpretation of the claims and the public's ability to rely upon
them. See, e.g., ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1078 (Fed. Cir.
2003) (holding that statements during reexamination limited scope of unamended claims). For this
reason, as well, the Patent Owner's interpretation of the "distinguishing" limitation should be
adopted instead of the Examiner's.
C. Ground 4: The Examiner Erred in Concluding that Claims 1, 5-8, 12-15,
and 19-21 Are Unpatentable over Nomura in View of Rubine.
Claims 1,5-8,12-15, and 19-21 were rejected under 35 U.S.c. § 103(a) as unpatentable over
Nomura in view of Rubine. Appellant respectfully requests reversal of the rejections for the
following reasons, based on three groupings of the rejected claims: (1) claims 1,5-8, 12-15, and 19-
21, together, (2) claims 8 and 12-14, separately, and (3) claims 5,12, and 19, separately.
1. Claims 1, 5-8, 12-15, and 19-21, together
a. Nomura does not disclose the "distinguishing" limitation.
N omura does not disclose the "distinguishing" limitation, as it uses a different algorithm to
distinguish the categories of inputs. As Figures 33, 34, and 37 of Nomura illustrate, the device of
Nomura only distinguishes between two input points and not-two input points. In particular, it
performs map operations such as zooming if and only if it detects exactly two input points. For any
other number of inputs (whether one or three or five), Nomura performs a scroll operation.
Restated, the device of Nomura treats one input point identically to three or more inputs.
(See Nieh Decl. <JI<JI 15-17.) Notably, the device of Nomura is capable of identifying only two input
points and cannot distinguish or identify other numbers.
Nomura's two/not two test differs from the '915 patent's one/more than one test. One of
ordinary skill implementing the device of Nomura would use a different algorithm to perform a
scroll operation when one input is applied and a gesture operation when two input points are
applied. (Klemmer Decl. <JI 14.) The Examiner does not dispute that Nomura describes a two/not
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two test, and not a one/more than one test. (Final Office Action at 6.) Because Nomura does not
teach distinguishing between "a single input point" and "two or more input points," it does not
disclose the "distinguishing" limitation required by all claims of the '915 patent.
b. Nomura does not disclose an "event object. "
Each independent claim in the '915 patent requires "creating an event object in response to
user input." Other portions of the claim require further elements of an object-oriented software
architecture, such as a "scroll call," a "gesture call," and a "view associated with the event object."
(Claims 1, 8, and 15.)
Nomura does not disclose an event object or any of the other object-oriented elements of the
claims. Nomura nowhere discusses objects and calls, the hallmarks of an object-oriented
architecture. One of ordinary skill could implement the Nomura algorithms using any number of
other approaches, such as procedural programming, functional programming, or raw assembly
without any higher-level abstractions. (See Nieh Decl. <JI 19.)
Although acknowledging that Nomura does not disclose an event object (Final Office Action
at 8), the Examiner argues that Nomura teaches scroll and gesture calls "in terms of calling at least
one of a zoom-in processor 42, a zoom-out processor 44, a rotation processor 46 and a scroll
processor 48 based on user input." (ld.) The Examiner does not explain, however, how Nomura's
references to "processors" describe a scroll call or a gesture call.
As the plain language of claim 1 makes clear, a call is an object that can be issued and
responded to. A call therefore differs from Nomura's "processor," which performs actions.
(Nomura <JI 0055.)
c. Rubine does not address the deficiencies of Nomura.
Combining Nomura with Rubine does not remedy Nomura's deficiencies. First, Rubine
does not disclose the "distinguishing" limitation, and the Examiner does not argue otherwise. (Final
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Office Action at 42.) Because Nomura does not teach the "distinguishing" limitation, the
combination cannot render the claims obvious.
Second, the claims require an event object that responds to more than one user input, but
neither Rubine nor Nomura discloses this. Rubine describes three distinct systems: MDP,
GSCORE, and GDP. The latter two employ an object-oriented framework, but respond only to
"single-path gestures drawn with a mouse." (Rubine at 163.) Conversely, MDP can "respond to
multiple-finger gestures input," but does not use an object-oriented framework. (ld.)
Rubine therefore does not describe a system that is both object-oriented and responsive to
multiple user inputs. Recognizing that Rubine does not teach an event object that responds to
multiple inputs, the Examiner turns to Nomura. (See Final Office Action at 10.) As discussed
above, however, Nomura also does not disclose this.
Finally, Rubine does not disclose the claimed "gesture calls." Rubine's object-oriented
systems work only with "single-path" inputs. In arguing that Rubine teaches "an object-oriented
programming system for gestures," the Examiner cites only portions of Rubine relating to single-
path gestural inputs. (See Final Office Action at 9.) In the claims of the '915 patent, however,
"gesture calls" result only from multiple user inputs, while a single input results in a "scroll call."
(See Claims 1, 8, and 15.) Because the Examiner can point to no portion of Rubine that discloses
the creation of a gesture call object in response to multiple inputs, the combination of Nomura and
Rubine also is deficient.
d. A person of ordinary skill in the art would not have been
motivated to combine Nomura with Rubine.
One of ordinary skill would not have been motivated to combine Nomura with Rubine, as
the two references attempt to solve different problems using different trade-offs. Nomura describes
a closed, specialized hardware system. A user of this system would be most focused on efficiency
and performance. Rubine, by contrast, describes a general purpose system that is capable of
working with a variety of hardware input sources. Unlike a user of Nomura, a user of Rubine's
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system would prefer the flexibility that its object-oriented nature affords and accept the performance
costs arising from the extra layers of abstraction. (See Nieh Decl. <JI 21).
The Examiner posits that Nomura's device might benefit from the use of Rubine's object-
oriented programming to store and manage data in a structured way. (See Final Office Action at
11.) But computer systems can store and manage data in a wide variety of ways (e.g., using
structures) that avoid the costs of object-oriented programming. Moreover, nothing in Nomura
suggests any concerns regarding data management.
e. Nomura in view of Rubine does not establish a prima facie
case of obviousness.
For the reasons stated above, Nomura and Rubine fail to disclose or suggest every limitation
of independent claims 1, 8, and 15. Moreover, the Examiner has not articulated a valid rationale for
supporting a conclusion of obviousness, since a person of ordinary skill in the art would not have
been motivated to combine Nomura with Rubine. For at least these reasons, there is no prima facie
case of obviousness with respect to independent claims 1, 8, and 15 and the claims that depend
therefrom.
Appellant therefore requests that the Board overturn the rejection of the claims 1,5-8, 12-15,
and 19-21 for being unpatentable over Nomura in view of Rubine.
f Secondary considerations support a conclusion of non-
obviousness.
Secondary considerations, such as commercial success, the existence of a long-felt need for
the invention, and copying of the invention, further support a finding of non-obviousness for claims
1,5-8,12-15, and 19-21. See Graham v. John Deere Co., 383 U.S. 1 (1966).
In the related Apple v. Samsung litigation, Patent Owner presented evidence at trial of the
iPhone's commercial success and Samsung's efforts to copy it. The jury's verdict and its large
damages award in Patent Owner's favor were based, at least in part, on this substantial evidence.
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The iPhone's commercial success and Samsung's copying both weigh strongly in favor of a finding
of non-obviousness, as to warrant reversing the Examiner's rejections under Section 103.
2. Claims 8 and 12-14, separately: Nomura does not disclose a
machine readable storage medium with programming
instructions that operate as required under all circumstances.
Independent claim 8 is directed to a machine readable storage medium storing executable
program instructions that, when executed, cause a data processing system to perform a method.
Claims 12-14 depend from claim 8.
As Dr. Klemmer notes, the proper, reasonable construction of the "distinguishing" limitation
as a test between one and more than one input is particularly true for claims directed to a machine
readable storage medium. (Klemmer Decl. <JI<JI 19-20.) One of ordinary skill would understand that
the instructions stored on a medium according to claim 8 would have to include the predefined set
of instructions that dictate the logic by which the computer operates under all circumstances, and
not just in one given instance. (ld.) A medium storing instructions for performing only a portion of
the "distinguishing" limitation (e.g., interpreting one input point as a scroll operation and two input
points as a gesture operation) would not reasonably meet the requirements of claim 8, which
requires, inter alia, executable programming instructions for interpreting more than two input points
(3 input points, 4 input points, etc.) as a gesture operation. (ld.)
Accordingly, one of ordinary skill would find it unreasonable that an algorithm that provides
only one of the required procedural calculations (i.e., a gesture operation on two inputs, as in
Nomura), but not the others (i.e., a gesture operation on three inputs, four inputs, etc.) can satisfy
claim 8's "distinguishing" limitation. (Klemmer Decl. <JI<JI 16-20.)
As a consequence, Nomura and Rubine fail to disclose or suggest the "distinguishing"
limitation of independent claim 8, from which claims 12-14 depend, in particular. For this reason
and the reasons discussed in Section VILC.1, there is no prima facie case of obviousness with
respect to claims 8 and 12-14.
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Appellant therefore requests that the Board overturn the rejection of claims 8 and 12-14 for
being unpatentable over Nomura in view of Rubine.
3. Claims 5, 12, and 19, separately: Nomura does not disclose
"determining whether [an] event object invokes a gesture or scroll
operation ... based on receiving a drag user input for a certain
time period."
Dependent claims 5, 12, and 19 recite an additional limitation: "determining whether the
event object invokes a scroll or gesture operation is based on receiving a drag user input for a
certain time period."
The Examiner contends that Figure 34 of Nomura discloses this limitation (Final Office
Action at 13), but it does not. The device of Nomura does not consider whether the contact point is
moving until it has first determined whether there is "contact with two items." Although Figure 34
refers to the consideration of the "passage of time," this consideration occurs only after the device
has determined that there has been contact with two items and invoked the appropriate gesture.
Accordingly, Figure 34 of Nomura does not disclose the requirement that the determination as to a
scroll or gesture operation be based on "receiving a drag user inputfor a certain time period."
The Examiner's attempt to rely on paragraph 193 of Nomura fares no better. Paragraph 193
concerns whether to view discrete contacts as simultaneous (or not). The paragraph does not
describe using the duration of a particular contact, such as a drag input, to determine which gesture
to invoke.
As a consequence, Nomura and Rubine fail to disclose or suggest "determining whether [an]
event object invokes a gesture or scroll operation ... based on receiving a drag user input for a
certain time period," as recited in claims 5, 12, and 19. For this reason and the reasons discussed in
Section VILC.1, there is no prima facie case of obviousness with respect to claims 5, 12, and 19.
Appellant therefore requests that the Board overturn the rejection of claims 5, 12, and 19 for
being unpatentable over Nomura in view of Rubine.
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D. Ground 1: The Examiner Erred in Concluding that Claims 1,5-8,12-15,
and 19-21 Are Anticipated by Hillis.
Claims 1,5-8,12-15, and 19-21 were rejected under 35 U.S.c. § 102(e) as anticipated by
Hillis. Appellant respectfully requests reversal of the rejections for the following reasons, based on
three groupings of the rejected claims: (1) claims 1,5-8,12-15, and 19-21, together, (2) claims 8
and 12-14, separately, and (3) claims 5,12, and 19, separately.
1. Claims 1, 5-8, 12-15, and 19-21, together
a. Hillis does not disclose the "distinguishing" limitation.
Hillis cannot disclose the "distinguishing" limitation, as it does not distinguish one input
point from more than one input point. Hillis teaches a system for projecting images on a large,
touch-sensitive surface and controlling the presentation of the images through gestures. (Hillis at
1:29-31,2:60-3:3). The system interprets user gestures by "determin[ing] whether activity of the
current [user] contact [with the table] matches a predetermined pattern." (ld. at 7:46-47.) The
pattern may use any of a variety of factors, including position, movement, velocity, or force, to
choose the operation from a dictionary of gestures. (ld. at 7:51-54; see also Nieh Decl. <JI 25.)
Hillis's high-level disclosure of a general gesture identification scheme does not teach the
one/more than one algorithm of the '915 patent. The Examiner alleges, however, that "a person of
ordinary skill in the art would infer from these teachings that the number of input points, along with
the movement, velocity and force of the input points, are the criteria by which scroll and gesture
operations are determined." (Final Office Action at 7 (emphasis added).) Even assuming that such
an inference was warranted (which it is not), the "distinguishing" limitation requires more than just
using the number of input points as a criterion. The inputs must be used in a specific way, i.e., to
distinguish one input from two or more.
Although the Examiner points to Hillis's examples of gestures (e.g., panning by "drawing a
finger across a display surface" (Hillis at 8:45-46) or zooming by "placing his fingertips on the
display surface and moving them in an outwardly separating manner" (id. at 3:43-45)), Hillis
nowhere discloses how to distinguish these or other gestures from each other. The mere disclosure
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of a scroll with one input, or a gesture with two inputs, is not a disclosure of an algorithm for
"distinguishing a single input point ... from two or more." Various algorithms might be used to
achieve these results. For example, gestures could be associated with two inputs, and scrolls with
any other number, just as in Nomura. Because Hillis offers no guidance as to how any inputs would
be distinguished, it cannot anticipate the claims expressly or inherently.
b. Hillis does not disclose an "event object. "
Hillis does not disclose an event object or any of the other object-oriented limitations of the
'915 patent. Hillis does not employ an object-oriented architecture or indicate an alternative
preferred style. One of ordinary skill in the art therefore might implement the teachings of Hillis
using anyone of multiple alternative styles, such as procedural programming, message passing, or
assembly code, without any higher-level abstractions. (See Nieh Decl. <JI<JI 26-27.)
Straining to locate object-oriented teachings in Hillis, the Examiner defines an "event
object" as a '''package' of data representing the user input event." (Final Office Action at 15.) The
Examiner then argues that Hillis's discussion of "machine-readable outputs" demonstrates an "event
object."
Even accepting the Examiner's very broad construction of "event object" for the sake of
argument, Hillis still does not disclose event objects for at least two reasons. First, Hillis suggests
that the table sends information such as the "position history" or the "detected force" separately-
and not together in a "package." (Hillis at 7:16-20,7:42-45.) Second, Hillis does not explain how
the transmitted information is organized, whether in a "package" or otherwise.
Hillis also does not disclose the other hallmarks of an object-oriented framework, such as a
"view associated with the event object." While the Examiner posits that the "imagery" displayed in
Hillis constitutes the view, (Final Office Action at 16), he does not explain how that imagery is
capable of being associated with other objects. Accordingly, Hillis does not disclose the "event
object" limitation.
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c. Hillis does not disclose a touch-sensitive display.
Independent claims 1 and 8 of the '915 patent recite "receiving a user input, the user input is
one or more input points applied to the touch-sensitive display that is integrated with the device"
(emphasis added). Claim 15 similarly recites "receiving, through a hardware device, a user input on
a touch-sensitive display" (emphasis added).
Hillis does not disclose this limitation. Hillis describes a system that projects an image onto
a touch-sensitive surface. (See Hillis at 2:60-3:3, FIG. lA, FIG. 1C). The projector, not the surface,
displays the image. The touch-sensitive surface therefore is not a display. (See Nieh Decl. <JI 28.)
Although the Examiner emphasizes that Hillis's abstract uses the phrase "touch-sensitive display,"
the specification makes clear that Hillis's display is not responsive to touch. (See Hillis at 3:55-58
("The displayed imagery is generated by a projector 23 locating above and projecting 24 downward
onto the projection surface.").)
d. Hillis does not disclose a device with an "integrated" display.
Each independent claim of the '915 patent recites a "touch-sensitive display that is
integrated" with the device, data processing system, or apparatus. A person of ordinary skill in the
art would consider a touch-sensitive display to be "integrated" with a device only if the two were
combined in a single physical unit. As the specification explains, "[i]n some embodiments, the
display device and input device are integrated while in other embodiments the display device and
input device are separate devices." ('915 patent at 6: 13-15.) Consistent with this construction, the
specification provides multiple examples of integrated touch-sensitive displays. (ld. at FIGs. 4, 5A,
6A, 28, 29, 30A, and 30B.)
Hillis does not disclose an integrated system. Instead, the described system involves
multiple standalone components including a projector, a touch-sensitive surface, and a general-
purpose computer. (See Hillis at 2:63-65, FIG. 1A.) Although these components are
interconnected, they are not integrated into a single physical unit.
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The Examiner argues, however, that the sUlface and computer are "integrated" with the
display system merely because they are "necessary components of the interactive display system
120." (Final Office Action at 17 (emphasis added).) Implicit in the Examiner's argument is his
construction of "integrated" as "necessary." The Examiner's construction cannot be correct, as it
finds no support in the claim language, specification, or prosecution history, and is inconsistent with
the ordinary meaning of the term. Under any reasonable definition of "integrated," Hillis does not
disclose an "integrated" display.
e. Hillis does not anticipate claims 1,5-8,12-15, and 19-21.
For the reasons stated above, Hillis fails to disclose every limitation of independent claims 1,
8, and 15 and cannot anticipate those claims and the claims that depend therefrom.
Appellant therefore requests that the Board overturn the rejection of the claims 1,5-8, 12-15,
and 19-21 as being anticipated by Hillis.
2. Claims 8 and 12-14, separately: Hillis does not disclose a machine
readable storage medium with programming instructions that
operate as required under all circumstances.
Independent claim 8 is directed to a machine readable storage medium storing executable
program instructions that, when executed, cause a data processing system to perform a method.
Claims 12-14 depend from claim 8.
As discussed above in Section VII.D.1.a, Hillis offers no guidance as to how any inputs
would be distinguished. Accordingly, Hillis does not disclose any programming instructions that
dictate the logic by which the computer operates under all circumstances, and not just in one given
instance, for the same reasons discussed above with respect to Nomura in Section VII.C.2.
As a consequence, Hillis fails to disclose the "distinguishing" limitation of independent
claim 8, from which claims 12-14 depend, in particular. For this reason and the reasons discussed
in Section VII.D.l, Hillis does not anticipate claims 8 and 12-14.
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Control No.: 901012,332 29 Docket No.: 106842803600
Appellant therefore requests that the Board overturn the rejection of claims 8 and 12-14 as
being anticipated by Hillis.
3. Claims 5, 12, and 19, separately: Hillis does not disclose
"determining whether [an] event object invokes a gesture or scroll
operation ... based on receiving a drag user input for a certain
time period."
Dependent claims 5, 12, and 19 each recite "determining whether the event object invokes a
scroll or gesture operation is based on receiving a drag user input for a certain time period."
Hillis does not disclose this limitation. Hillis's gesture matching dictionary uses a variety of
information to determine which gesture to invoke, including "position, position history (movement),
velocity, and force information." (Hillis at 7:49-50.) But Hillis nowhere discloses using a "drag
user input" that lasts "for a certain period of time" to determine the type of gesture to invoke.
Although the Examiner points to Hillis's references to "movement" and "velocity" as
allegedly disclosing this limitation, the Examiner never explains how this information describes a
"drag user input for a certain period of time." Instead, the Examiner implies that the duration of the
drag above a certain time period does not constitute a limitation. (See Final Office Action at 17.)
This cannot be correct, as it would read the phrase "for a certain time period" out of the claims. See
Bicon, Inc. v. Straumann Co., 441 F.3d 945,950 (Fed. Cir. 2006) ("[C]laims are interpreted with an
eye toward giving effect to all terms in the claim." (citations omitted)).
As a consequence, Hillis fails to disclose "determining whether [an] event object invokes a
gesture or scroll operation ... based on receiving a drag user input for a certain time period," as
recited in claims 5, 12, and 19. For this reason and the reasons discussed in Section VII.D.l, Hillis
does not anticipate claims 5, 12, and 19.
Appellant therefore requests that the Board overturn the rejection of claims 5, 12, and 19 as
being anticipated by Hillis.
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Control No.: 901012,332 30 Docket No.: 106842803600
E. Grounds 2 and 5: The Examiner Erred in Concluding that Claims 2, 9,
and 16 Are Unpatentable over Hillis in View of Lira or Nomura in View
of Rubine and Lira.
Claims 2,9, and 16 are rejected under 35 U.S.c. § 103(a) as unpatentable over Hillis in view
of Lira, and as unpatentable over Nomura in view of Rubine and further in view of Lira. Appellant
respectfully requests reversal of the rejections for the following reasons, in addition to the reasons
provided in Sections VILC and VILD, made with respect to the independent claims from which
claims 2, 9, and 16 depend.
1. Lira does not disclose the "distinguishing" limitation.
As stated above, none of Hillis, Nomura, or Rubine discloses the "distinguishing" limitation
required by all claims. Lira, which does not describe gesture recognition, also does not disclose this
limitation. The combination of these references therefore cannot render claims 2,9, and 16
unpatentable.
2. Lira does not disclose "rubberbanding."
Dependent claims 2,9, and 16 of the '915 patent each recite "rubberbanding a scrolling
region displayed within the window by a predetermined maximum displacement when the scrolling
region exceeds a window edge based on the scroll." The specification describes rubberbanding as
setting a "predetermined maximum displacement when the scrolled region exceeds a display edge,"
which prevents a user from scrolling the content further. ('915 patent at 5:36-39.) Other aspects of
scrolling include "bouncing a scrolled region in an opposite direction of a scroll when a scroll
completes" and locking a scroll at a particular angle. (ld. at 5:33-40.)
Lira generally teaches a method of reformatting content into columns for improved viewing
on a small-sized display. (See Lira at Abstract.) As a user navigates the columns on the display, the
method takes into account whether the user has exceeded a specified threshold. If the user scrolls
past that threshold, "the display is snapped to the adjacent or repositioned column." (Lira at 15:27-
28.) Otherwise, the display "centers [on] the logical column." (Lira at 15:24-25.)
sf-3384833
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Control No.: 901012,332 31 Docket No.: 106842803600
Lira's recentering or "snapping" method does not disclose "rubberbanding," as it works in a
fundamentally different way. In the '915 patent, when a user exceeds a scrolling threshold,
rubberbanding prevents scrolling further by setting a maximum displacement value for the scrolled
content. In the same scenario, however, Lira teaches that the screen should "snap" to the next
region of content, i.e., the adjacent column. Lira's method therefore achieves the opposite effect
from rubberbanding.
Lira also does not disclose what happens if the user tries to scroll past the end of the page.
In the '915 patent, rubberbanding occurs when "a user scrolls content of the display[,] making a
region past the edge of the content visible in the display." ('915 patent at 7:62-63.) Although the
Examiner argues that '''the region outside the content' is not a limitation of the claim" (Final Office
Action at 18), the Examiner overlooks that rubberbanding is directed to and solves the specific
problem of a user's scrolling to a region outside the content. "Rubberbanding" therefore involves
the edge of the content, and not internal edges such as Lira's column boundaries.
3. A person of ordinary skill in the art would not have been
motivated to combine Lira with Nomura or Hillis.
A person of ordinary skill in the art would not have been motivated to combine Lira with
N omura or Hillis. First, the method of scrolling disclosed in Lira is incompatible with that of either
Nomura or Hillis. A downward motion in Lira results in the display of new content from below (see
Lira FIG. 14B), while the same motion in both Nomura and Hillis results in the display of new
content from above. (See Nomura <JI 0067; Hillis at 8:44-53.)
Second, Lira's recentering and snapping teachings relate to internal boundaries within the
content. But neither Hillis nor Nomura disclose internal features that would require recentering.
Although the Examiner posits that "a logical boundary within the map" might serve this function
(see Final Office Action at 20), neither Hillis nor Nomura disclose such a boundary.
sf-3384833
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4. Nomura in view of Rubine and further in view of Lira does not
establish a prima facie case of obviousness.
For the reasons stated above, Nomura, Rubine, and Lira fail to disclose or suggest every
limitation of each of claims 2,9, and 16. Moreover, the Examiner has not articulated a valid
rationale for supporting a conclusion of obviousness, since a person of ordinary skill in the art
would not have been motivated to combine Nomura with Lira or Rubine. For at least these reasons,
and the reasons provided in Section VILC, there is no prima facie case of obviousness with respect
to claims 2,9, and 16.
Appellant therefore requests that the Board overturn the rejection of the claims 2,9, and 16
for being unpatentable over Nomura in view of Rubine and further in view of Lira.
5. Hillis in view of Lira does not establish a prima facie case of
obviousness.
For the reasons stated above, Hillis and Lira fail to disclose or suggest every limitation of
each of claims 2,9, and 16. Moreover, the Examiner has not articulated a valid rationale for
supporting a conclusion of obviousness, since a person of ordinary skill in the art would not have
been motivated to combine Hillis with Lira. For at least these reasons, and the reasons provided in
Section VILD, there is no prima facie case of obviousness with respect to claims 2,9, and 16.
Appellant therefore requests that the Board overturn the rejection of the claims 2,9, and 16
for being unpatentable over Hillis in view of Lira.
6. Secondary considerations support a conclusion of non-
obviousness.
Secondary considerations, such as commercial success, the existence of a long-felt need for
the invention, and copying of the invention, support a finding of non-obviousness for claims 2,9,
and 16. See Graham v. John Deere Co., 383 U.S. 1 (1966).
In the related Apple v. Samsung litigation, Patent Owner presented evidence at trial of the
iPhone's commercial success and Samsung's efforts to copy it. The jury's verdict and its large
sf-3384833
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Control No.: 90/012,332 33 Docket No.: 106842803600
damages award in Patent Owner's favor were based, at least in part, on this substantial evidence.
The iPhone's commercial success and Samsung's copying both weigh strongly in favor of a finding
of non-obviousness, as to warrant reversing the Examiner's rejections under Section 103.
F. Grounds 3 and 6: The Examiner Erred in Concluding that Claims 3, 4,
10, 11, 17, and 18 Are Unpatentable over Hillis in View of Makus or
Nomura in View of Rubine and Makus.
Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.c. § 103(a) as unpatentable over
Hillis in view of Makus, and as unpatentable over Nomura in view of Rubine and further in view of
Makus. Appellant respectfully requests reversal of the rejections for the following reasons, in
addition to the reasons provided in Sections VILC and VILD, made with respect to the independent
claims from which claims 3, 4, 10, 11, 17, and 18 depend.
1. Makus does not disclose the "distinguishing" limitation.
Makus relates to the use of hierarchical data and does not discuss gesture recognition at all.
Accordingly, it cannot disclose the "distinguishing" limitation. The combination of Makus with
Hillis or Nomura and Rubine therefore cannot render claims 3, 4, 10, 11, 17, and 18 unpatentable.
2. Makus does not disclose "attaching" scroll indicators.
Dependent claims 3, 4, 10, 11, 17, and 18 of the '915 patent each recite "attaching scroll
indicators to" a content or window edge. The specification indicates that scroll indicators are
attached to the display in response to "user input in the form of a mouse/finger down," and fade out
when "a mouse/finger up is then detected." ('915 patent at 6:64-7:3.)
Makus, by contrast, discloses scroll bars that appear when there is more data included in a
list "than can be displayed in the available space on display screen 28 at one time." (Makus at 8:64-
66.) Unlike the '915 patent, Makus's bars do not appear dynamically when a user begins to scroll
the content and therefore are not "attached." For this reason, the combination of Makus with Hillis
or Nomura and Rubine therefore cannot render claims 3, 4, 10, 11, 17, and 18 unpatentable.
sf-3384833
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Control No.: 901012,332 34 Docket No.: 106842803600
3. A person of ordinary skill in the art would not have been
motivated to combine Makus with Nomura or Hillis.
A person of ordinary skill in the art would not be motivated to combine Makus with Nomura
or Hillis. This is because neither Nomura nor Hillis require scroll indicators for navigation, as
Makus teaches. (See Makus at 8:64-69.) Instead, Nomura contemplates a user navigating a map by
scrolling with a gesture. (See Nomura at FIG. 8.) Likewise, Hillis teaches panning to navigate a
map. (See Hillis at 8:45-46.)
Scroll indicators are often used on mobile devices to indicate a relative position to a user in a
long document. This function is not as useful for maps, which do not have a fixed starting position
and are not generally accessed sequentially. A person of ordinary skill therefore would not need to
combine Makus with Nomura or Hillis in order to provide this functionality.
Contrary to the Examiner's contention, Hillis's "slider tool" does not justify combining it
with Makus. (See Final Office Action at 23.) Hillis's slider tool does not relate to scrolling.
Instead, it allows users to move between different layers of content, and not to scroll through a
single layer. (See Hillis at 8:32-39.) As Hillis's slider bar does not indicate a scroll position, it
cannot satisfy the "scroll indicator" claims.
4. Nomura in view of Rubine and further in view of Makus does not
establish a prima facie case of obviousness.
For the reasons stated above, Nomura, Rubine, and Makus fail to disclose or suggest every
limitation of each of claims 3, 4, 10, 11, 17, and 18. Moreover, the Examiner has not articulated a
valid rationale for supporting a conclusion of obviousness, since a person of ordinary skill in the art
would not have been motivated to combine Nomura with Makus or Rubine. For at least these
reasons, and the reasons provided in Section VILC, there is no prima facie case of obviousness with
respect to claims 3, 4, 10, 11, 17, and 18.
Appellant therefore requests that the Board overturn the rejection of the claims 3, 4, 10, 11,
17, and 18 for being unpatentable over Nomura in view of Rubine and further in view of Makus.
sf-3384833
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Control No.: 901012,332 35 Docket No.: 106842803600
5. Hillis in view of Makus does not establish a prima facie case of
obviousness.
For the reasons stated above, Hillis and Makus fail to disclose or suggest every limitation of
each of claims 3, 4, 10, 11, 17, and 18. Moreover, the Examiner has not articulated a valid rationale
for supporting a conclusion of obviousness, since a person of ordinary skill in the art would not
have been motivated to combine Hillis with Makus. For at least these reasons, and the reasons
provided in Section VII.D, there is no prima facie case of obviousness with respect to claims 3, 4,
10, 11, 17, and 18.
Appellant therefore requests that the Board overturn the rejection of the claims 3, 4, 10, 11,
17, and 18 for being unpatentable over Hillis in view of Makus.
6. Secondary considerations support a conclusion of non-
obviousness.
Secondary considerations, such as commercial success, the existence of a long-felt need for
the invention, and copying of the invention, support a finding of non-obviousness for claims 3, 4,
10, 11, 17, and 18. See Graham v. John Deere Co., 383 U.S. 1 (1966).
In the related Apple v. Samsung litigation, Patent Owner presented evidence at trial of the
iPhone's commercial success and Samsung's efforts to copy it. The jury's verdict and its large
damages award in Patent Owner's favor were based, at least in part, on this substantial evidence.
The iPhone's commercial success and Samsung's copying both weigh strongly in favor of a finding
of non-obviousness, as to warrant reversing the Examiner's rejections under Section 103.
G. Conclusion
For the foregoing reasons, Appellant respectfully requests reversal of the rejections of claims
1-21 of the '915 patent.
sf-3384833
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page36 of 37
Control No.: 901012,332 36 Docket No.: 106842803600
Appellant authorizes the Commissioner to charge the cost of any petitions or fees due in
connection with this filing to Deposit Account No. 03-1952 referencing Docket No.
106842803600.
Dated: February 26, 2014
sf-3384833
Respectfully submitted,
!Peter J. Yiml
Peter J. Yim
Registration No.: 44,417
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94015-2482
(415) 268-6373
Case5:11-cv-01846-LHK Document3145-1 Filed07/15/14 Page37 of 37
EXHIBIT B

Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page1 of 39
UNITED STAlES P A lENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
90/012,332 05/3012012 7844915
20872 7590 05102/2014
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
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.
P4895USREXlI106842803600 5963
EXAMINER
YIGDALL, MICHAEL J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/02/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page2 of 39
DO NOT USE IN PALM PRINTER
(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
BRYAN CAVE LLP
1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-'1450
W"aAA"I)):.'=ptQ.gov
EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CONTROL NO. 901012,332.
PATENT NO. 7,844,915.
ART UNIT 3992.
Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
reply has passed, no submission on behalf of the ex parte reexamination requester will be
acknowledged or considered (37 CFR 1.550(g)).
PTOL-465 (Rev.07-04)
Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page3 of 39
UNITED STATES PATENT AND TRADEMARK OFFICE
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
www.uspto.gov
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Control Number: 901012,332
Filing Date: May 30, 2012
Appellant(s): Apple Inc.
Peter J. Yim
For Appellant
EXAMINER'S ANSWER
This is in response to the appeal brief filed on February 26, 2014.
Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page4 of 39
Application/Control Number: 90/012,332
Art Unit: 3992
(1) Grounds of Rejection to Be Reviewed on Appeal
Page 2
Every ground of rejection set forth in the Office action mailed on July 26,2013 from
which the appeal is taken is maintained by the examiner except for the grounds of rejection (if
any) listed under the subheading "Withdrawn Rejections." New grounds of rejection (if any) are
provided under the subheading "New Grounds of Rejection."
Thus, the following grounds of rejection are applicable to the appealed claims:
Claims 1,5-8,12-15 and 19-21 are rejected under 35 U.S.c. § 102(e) as anticipated by
Hillis. Claims 2,9 and 16 are rejected under 35 U.S.c. § 103(a) as unpatentable over Hillis in
view of Lira. Claims 3,4, 10, 11, 17 and 18 are rejected under 35 U.S.c. § 103(a) as
unpatentable over Hillis in view of Makus.
Claims 1,5-8,12-15 and 19-21 are rejected under 35 U.S.c. § 103(a) as unpatentable
over Nomura in view of Rubine. Claims 2,9 and 16 are rejected under 35 U.S.c. § 103(a) as
unpatentable over Nomura in view of Rubine and further in view of Lira. Claims 3, 4, 10, 11, 17
and 18 are rejected under 35 U.S.c. § 103(a) as unpatentable over Nomura in view of Rubine
and further in view of Makus.
New Grounds of Rejection
(No new grounds of rejection are made.)
Withdrawn Rejections
(No rejections are withdrawn.)
Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page5 of 39
Application/Control Number: 90/012,332
Art Unit: 3992
(2) Response to Argument
Section VII.B of the Appellant's Brief
Page 3
The appellant contends that the examiner's construction of the "distinguishing" limitation
is unreasonable and flawed. See the appellant's brief at pages 11-12.
The examiner respectfully disagrees. As the appellant appreciates, claims under
reexamination are given the broadest reasonable interpretation consistent with the specification.
See MPEP § 2111. The "broadest reasonable interpretation" standard is the correct standard in
reexamination proceedings because the patentee is given the opportunity to amend the claims.
See In re Yamamoto, 740 F.2d 1569,222 USPQ 934 (Fed. Cir. 1984).
Here, each of independent claims 1, 8 and 15 of the '915 patent recites:
determining whether the event object invokes a scroll or gesture operation by
distinguishing between a single input point applied to the touch-sensitive
display that is interpreted as the scroll operation and two or more input points
applied to the touch-sensitive display that are interpreted as the gesture
operation ....
(Emphasis added.) Thus, each of the independent claims recites distinguishing between (1) a
single input point that is interpreted as a scroll operation and (2) two or more input points that
are interpreted as a gesture operation.
Therefore, giving the claims the broadest reasonable interpretation, an algorithm in the
prior art that distinguishes between (1) a single input point that is interpreted as a scroll operation
and (2) two input points or more than two input points that are interpreted as a gesture operation
would meet the language of the claims. Likewise, an algorithm that distinguishes between (1) a
single input point that is interpreted as a scroll operation and (2) two input points that are
interpreted as a gesture operation would meet the language of the claims.
Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page6 of 39
Application/Control Number: 90/012,332
Art Unit: 3992
Page 4
Accordingly, the Office action reasoned that both Nomura and Hillis teach the claimed
"distinguishing" limitation. Specifically, Nomura teaches distinguishing between a single input
point that is interpreted as a scroll operation (e.g., "moving one finger") and two or more input
points that are interpreted as a gesture operation (e.g., "two fingers moving apart" and "two
fingers moving toward each other") (see Nomura at <JI [0053]). Likewise, Hillis teaches
distinguishing between a single input point that is interpreted as a scroll operation (e.g., "drawing
a finger across the display surface") and two or more input points that are interpreted as a gesture
operation (e.g., "placing his fingertips on the display surface and moving them in an outwardly
separating manner") (see Hillis at column 8, lines 44-48 and column 3, lines 42-46).
The appellant contends that the examiner's conclusions are based on a "rigid formula"
and a "mechanical interpretation of the isolated word 'or' in the 'distinguishing' limitation,
ignoring its context in the larger phrase." The patent owner argues that the claims relate "to the
act of distinguishing between a single input point and two or more input points" and "not [to the]
'two or more input points' by themselves." See the appellant's brief at pages l2-l3.
However, the examiner submits that the analysis set forth in the Office action specifically
considers the "distinguishing" limitation in the context of the claims as a whole. As noted above,
the "distinguishing" limitation is part of "determining whether [an input] invokes a scroll or
gesture operation." A plain reading of the claims is that the "determining" step or the "means for
determining" includes distinguishing between an input (consisting of "a single input point") that
is interpreted as a scroll operation and an input (consisting of "two or more input points") that is
interpreted as a gesture operation. In other words, the claimed "act of distinguishing" relates to
distinguishing between an input that is interpreted as a scroll operation and an input that is
Case5:11-cv-01846-LHK Document3145-2 Filed07/15/14 Page7 of 39
Application/Control Number: 90/012,332
Art Unit: 3992
Page 5
interpreted as a gesture operation. The condition for the input interpreted as a gesture operation
is that the input consists of two or more input points.
As pointed out in the advisory action, the Federal Circuit stated, "We have consistently
interpreted the word 'or' to mean that the items in the sequence are alternatives to each other."
Schumer v. Laboratory Computer Systems Inc., 308 F.3d l304, l3ll, 64 USPQ2d 1832, 1838
(Fed. Cir. 2002). The Federal Circuit further held, "When a claim covers several structures or
compositions, either generically or as alternatives, the claim is deemed anticipated if any of the
structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M,
265 F.3d l349, 60 USPQ2d l375, l376 (Fed. Cir. 2001).
Here, the word "or" in the claimed "two or more input points" is reasonably interpreted to
mean that the items "two" and "more" are alternatives. In other words, the alternatives are "two
input points" and "more than two input points." The condition is met and the limitation deemed
anticipated if any of these alternatives are shown in the prior art and "interpreted as a gesture
operation" such as recited in the claims. Indeed, as set forth above, Nomura clearly teaches an
input consisting of two input points that is interpreted as a gesture operation (e.g., "two fingers
moving apart" and "two fingers moving toward each other") (see Nomura at <JI [0053]).
Likewise, Hillis clearly teaches an input consisting of two input points that is interpreted as a
gesture operation (e.g., "placing his fingertips on the display surface and moving them in an
outwardly separating manner") (see Hillis at column 3, lines 42-46). Thus, both Nomura and
Hillis teach the limitation as claimed.
The examiner respectfully submits that the appellant's reference to De Morgan's law is
misplaced. See the appellant's brief at page l3. Applying De Morgan's law to the claimed "two
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or more input points" would imply that the logical negation of the statement "two or more input
points" is the same as "not two input points and not more than two input points." However, there
is no negation recited in the claims.
Nonetheless, the appellant argues that the "distinguishing" limitation "could be rewritten
as 'distinguishing between a single input point and two input points and distinguishing between a
single input point and more than two input points,' without changing its meaning" (brief at page
l3). The examiner respectfully disagrees. Such a rewriting would narrow the meaning of the
claims. If the claims were rewritten as the appellant proposes, then the claims would recite an
input that necessarily consists of more than two input points (e.g., three input points), rather than
an input that consists of two or more input points.
The appellant argues that the examiner "suggested that the 'distinguishing' limitation can
be satisfied by a device that distinguishes two input points from an arbitrary number of input
points," and further argues that such an interpretation "would read 'single input point' out of the
claim entirely." See the appellant's brief at page 14.
However, the appellant's argument mischaracterizes the examiner's position. As set
forth above, giving the claims the broadest reasonable interpretation means that an algorithm in
the prior art that distinguishes between (1) a single input point that is interpreted as a scroll
operation and (2) two input points or more than two input points that are interpreted as a gesture
operation would meet the language of the claims, as would an algorithm that distinguishes
between (1) a single input point that is interpreted as a scroll operation and (2) two input points
that are interpreted as a gesture operation. The examiner's interpretation does not read "single
input point" out of the claims.
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The appellant contends that the examiner "disregards the understanding of those of
Page 7
ordinary skill in the art" and "ignores the evidence of how one of ordinary skill in the art would
understand the claims." Namely, the appellant refers to the declaration of Dr. Jason Nieh filed
on March 19, 20l3, the declaration of Dr. Scott Klemmer filed on October 28, 2013 and an
excerpt of trial testimony from Dr. Karan Singh in the Apple Inc. v. Samsung Electronics Co.
litigation, and argues that the examiner "completely ignored these understandings of those of
ordinary skill in the art." See the appellant's brief at pages 14-16.
However, the examiner respectfully disagrees. The examiner's conclusions are based on
the evidence as a whole.
With respect to the Nieh declaration, the examiner accepted Dr. Nieh's explanation of the
algorithm shown in Figures 33, 34 and 37 of the Nomura reference. The algorithm starts with
steps S 1 0 ("Is there an input?") and S60 ("Is there contact of a finger on the touch panel?") and
proceeds to step S 11 0 ("Is there contact with two items?"). Step S 110 checks whether the input
comprises two input points. See the Nieh declaration at <JI 16. If the input comprises two input
points (the "Y" branch), the algorithm proceeds to step Sl30 ("Map operation processing") and
to the gesture processing shown in Figure 37. Otherwise, if there are not two input points (the
"N" branch), the algorithm proceeds to step S 170 ("Scroll processing").
Thus, Dr. Nieh asserts that the algorithm of Nomura would interpret two input points as a
gesture operation and would interpret all other inputs, including a single input point and further
including "three or more input points," as a scroll operation. See the Nieh declaration at <JI 17.
The examiner submits that such an understanding shows that the algorithm of Nomura is indeed
within the scope of the claims: An input consisting of a single input point is interpreted as a
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scroll operation, and an input consisting of two input points is interpreted as a gesture operation.
As noted above, the claims do not recite an input that necessarily consists of more than two input
points (e.g., three input points). Rather, the claims recite an input consisting of two or more
input points that is interpreted as a gesture operation.
The Klemmer declaration does not address the Nomura reference, but Dr. Klemmer
asserts in general that an algorithm "interpreting three input points as a scroll [operation] would
not reasonably meet the distinguishing limitation." See the Klemmer declaration at <JI 12. Dr.
Singh offers essentially the same opinion (see the appellant's brief at page 15). However, the
examiner respectfully points out that an input consisting of three input points is not a limitation
of the claims. Dr. Klemmer goes on to assert:
If one of ordinary skill were asked to express the distinguishing limitation as
pseudo-code, it would be reasonable to express the limitation as:
if (1 input point) {interpret as a scroll operation}
if (> 1 input point) {interpret as a gesture operation}
(Klemmer declaration at <JI 13.) The examiner does not dispute the accuracy of Dr. Klemmer's
pseudo-code. However, the examiner submits that Dr. Klemmer's algorithm is not the only
implementation that would anticipate the claims under the broadest reasonable interpretation.
Namely, an algorithm in the prior art that distinguishes between (1) a single input point that is
interpreted as a scroll operation and (2) two input points or more than two input points that are
interpreted as a gesture operation would meet the language of the claims, as would an algorithm
such as Nomura's that distinguishes between (1) a single input point that is interpreted as a scroll
operation and (2) two input points that are interpreted as a gesture operation.
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As the appellant appreciates, the examiner must weigh the probative value of the Nieh
and Klemmer declarations. See MPEP § 7l6.0l(c). The expert declarations are one source of
information, but the "best source" of information for construing the claims is the specification.
See MPEP § 211l.0l. Therefore, as set forth in the advisory action, the opinions of Dr. Nieh and
Dr. Klemmer were weighed and considered in the context of the specification.
Namely, there are no examples in the specification of a gesture operation that results
from an input consisting of more than two (e.g., three) input points. Likewise, the assertions of
Dr. Nieh and Dr. Klemmer are made without reference to the specification. While the Klemmer
declaration proposes pseudo-code for the "distinguishing" limitation (<JI l3), the '915 patent itself
does not describe a particular algorithm for distinguishing between a single input point and two
or more input points (see below). In the case of a means-plus-function limitation, for example,
the specification must disclose an algorithm to perform the recited function even if a person of
ordinary skill in the art would have been able to devise one. See In re Katz Interactive Call
Processing Pat. Lit., 639 F.3d l303, 97 USPQ2d 1737, 1748 (Fed. Cir. 2011).
The appellant contends that "a person of ordinary skill [in the art] reading the claims,
specification, and prosecution history would understand the 'distinguishing' limitation to
describe a test that distinguishes one input point from more than one input point." The appellant
argues, based on the pseudo-code set forth in the Klemmer declaration (<JI l3), that the limitation
describes "an atomic test condition, namely, that any of a plurality of input points be interpreted
as a gesture operation." The appellant concludes that such an interpretation is consistent with the
use of the term "plurality" interchangeably with the words "two or more" in the specification.
See the appellant's brief at pages 16-18.
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However, the examiner notes that there is no description in the '915 patent of a particular
"atomic test" for distinguishing between a single input point and two or more input points. That
is to say, the specification does not describe a particular algorithm for distinguishing between a
single input point and two or more input points. The term "distinguishing" is nowhere found in
the specification of the '915 patent, nor was the term recited in the claims as originally filed.
Rather, the specification describes that a single input point "may be" interpreted as a scroll
operation and that two or more input points "may be" interpreted as a gesture operation:
FIG. 1 is flow chart of a method for responding to a user input of a device.
The method 100 includes receiving a user input at block 102. The user input
may be in the form of an input key, button, wheel, touch, or other means for
interacting with the device. The method 100 further includes creating an
event object in response to the user input at block 104. The method 100
further includes determining whether the event object invokes a scroll or
gesture operation at block 106. For example, a single touch that drags a
distance across a display of the device may be interpreted as a scroll
operation. In one embodiment, a two or more finger touch of the display may
be interpreted as a gesture operation. In certain embodiments, determining
whether the event object invokes a scroll or gesture operation is based on
receiving a drag user input for a certain time period.
('915 patent at column 6, lines 32-46; emphasis added.)
The examiner's interpretation of the "distinguishing" limitation is consistent with the
specification. As noted above, a plain reading of the claims is that the "determining" step or the
"means for determining" includes distinguishing between an input that is interpreted as a scroll
operation and an input that is interpreted as a gesture operation. The input that is interpreted as a
scroll operation consists of "a single input point," and the input that is interpreted as a gesture
operation consists of "two or more input points." Nomura and Hillis teach the same. Even if the
term "plurality" were substituted for the claimed "two or more," Nomura and Hillis would teach
the limitation because "two input points" is within the scope of a "plurality" of input points.
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Accordingly, the examiner respectfully submits that the appellant's construction of the
"distinguishing" limitation is not the broadest reasonable interpretation consistent with the
specification. Whereas the appellant argues that the original examination of the '915 patent
confirms the appellant's "one/more than one" or "atomic test" construction (see the appellant's
brief at pages 17-18), there is nothing to suggest that the "distinguishing" element was added to
the claims to define a "one/more than one" or "atomic test." Rather, the amendment was made
after the attorney argued that the "determining" step (or the "means for determining") "simply
[distinguishes] between the scroll operation and the gesture operation without having to select an
object or icon to define the operation." See the interview summary mailed on June 21, 2010 in
U.S. App. No. 11/620,717. Here, the examiner's interpretation is consistent with the statements
made in the original examination of the '915 patent.
The appellant notes that the patent owner "made multiple statements" in the instant
proceeding "construing the 'distinguishing' limitation and clearly disavowing any scope not
covered by that construction." See the appellant's brief at pages 18-19.
Nonetheless, while the examiner acknowledges the role of such disclaimer in the courts,
the Office employs a different standard for construing the claims. Namely, as noted above,
claims under reexamination are given the broadest reasonable interpretation consistent with the
specification. Construing the claims broadly is not unfair to the patentee because the patentee is
given the opportunity to amend the claims. See In re American Academy of Science Tech
Center, 367 F.3d l359, 70 USPQ2d 1827 (Fed. Cir. 2004).
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Section VII.C.l of the Appellant's Brief
Page 12
The appellant contends that Nomura does not teach the "distinguishing" limitation,
arguing that Nomura "is capable of identifying only two input points and cannot distinguish or
identify other numbers." See the appellant's brief at pages 19-20.
However, the examiner respectfully submits that "identifying" the number of input points
is not a limitation of the claims. As noted above, the claims recite distinguishing between an
input (consisting of "a single input point") that is interpreted as a scroll operation and an input
(consisting of "two or more input points") that is interpreted as a gesture operation. Nomura
teaches a finger movement detector 10 "for detecting the movement history of fingers on the
display area ... for input of operations by the user such as zoom-in, zoom-out, rotate, scroll and
the like" (see Nomura at <JI [0049]). Zooming and rotating are examples of gesture operations;
scrolling is a scroll operation. Nomura further teaches an operations details determination part
30 for determining whether the input is a scroll or gesture operation:
The operations details determination part 30 judges the operation details input
by the user based on the finger movement history detected by the finger
movement detector 10. Specifically, the operations details determination part
30 judges finger movement history detected by the finger movement detector
10 of two fingers moving apart as input of a map image zoom-in operation.
Furthermore, for example, the operations details determination part 30 judges
finger movement history detected by the finger movement detector 10 of two
fingers moving toward each other as input of a map image zoom-out
operation. Furthermore, the operations details determination part 30 judges
finger movement history detected by the finger movement detector 10 of one
finger rotating with another finger as an axis as input of a map image rotate
operation. Furthermore, for example, the operations details determination part
30 judges finger movement history detected by the finger movement detector
10 of action of moving one finger as input of a map scroll operation.
(Nomura at <JI [0053]; emphasis added.) Thus, Nomura teaches distinguishing between an input
consisting of a single input point (i.e., one finger) that is interpreted as a scroll operation and an
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input consisting of two or more input points (i.e., two fingers) that is interpreted as a gesture
operation (i.e., a zoom-in, zoom-out or rotate operation).
As set forth in the Office action, the examiner generally agrees with Dr. Nieh that based
on Figure 34, the processing of three or more input points in Nomura apparently would be the
same as the processing of a single input point (see the Nieh declaration at <JI 17). However, the
examiner points out that Nomura does not actually describe a scroll operation resulting from an
input of three or more input points, and instead consistently shows that a single input point (i.e.,
"moving one finger" or "a finger") is what results in a scroll operation (see Nomura at <JI [0053]
and <JI [0067]). Moreover, none of the claims recites an input that necessarily consists of more
than two (e.g., three) input points. Rather, the claims recite an input consisting of two or more
input points that is interpreted as a gesture operation, such as the "two fingers moving apart" or
the "two fingers moving toward each other" described in Nomura (<JI [0053]).
The appellant contends that Nomura does not teach an "event object," arguing that
Nomura does not describe the "object-oriented elements" of the claims and "nowhere discusses
objects and calls, the hallmarks of an object-oriented architecture." The appellant contends that
"a call is an object that can be issued and responded to," and argues that a call "therefore differs
from Nomura's 'processor,' which performs actions." See the appellant's brief at page 20.
However, the examiner respectfully points out that the test for obviousness is what the
combined teachings of the references would have suggested to those of ordinary skill in the art.
One cannot show non-obviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 4l3, 208 USPQ 871 (C.c.P.A.
1981); In re Merck & Co., 800 F.2d 1091,231 USPQ 375 (Fed. Cir. 1986).
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Specifically, the Office action reasoned that "creating an event object in response to the
user input" in Nomura would have been obvious in combination with Rubine. Nomura teaches
that "detection data" from the finger movement detector 1110 is input to the processor 1100 (see
Nomura at <JI [0l39]), but does not explicitly describe "creating an event object" in response to
the user input. Nonetheless, Rubine teaches creating an event object in response to user input.
Namely, Rubine describes an object-oriented programming system known as GRANDMA (see
Rubine at page 95). Rubine describes that gesture input in GRANDMA "is handled by objects"
(see Rubine at page 128). Rubine further teaches, "When input occurs, it is represented as an
event" (Rubine at page 105). The input events (i.e., the gestures) are represented as objects. For
example, Rubine states, "Input events are full-blown objects" (Rubine at page 120), and further
describes the handling of "GestureEvent" objects in the GRANDMA system (see Rubine at page
l33). Thus, the teachings of Rubine would have suggested "creating an event object in response
to the user input" in Nomura to those of ordinary skill in the art.
Moreover, the examiner respectfully points out that "object-oriented" is not a limitation
of the claims. A "call" is not necessarily an "object" in the object-oriented (programming) sense.
The specification of the '915 patent does not define the term "call" to mean "object," but instead
describes calls in terms of "function calls or messages" (see the '915 patent at column 5, lines
12-19). Thus, the Office action reasoned that Nomura teaches the claimed "issuing at least one
scroll or gesture call" in terms of calling at least one of the zoom-in processor 42, the zoom-out
processor 44, the rotation processor 46 and the scroll processor 48 (see Nomura at <JI [0054]). A
person of ordinary skill in the art would understand that the "call" is not the processor itself, but
rather the transfer of execution or the transfer of control to the processor. As set forth in the
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Office action, for example, Nomura describes that "[when] the user performs various types of
finger operation[ s] on the display ... the CPU 1010 executes the operation indicated by the user
based on the input details" (see Nomura at   [0l37]).
Specifically, the "scroll call" in Nomura is the transfer of execution or the transfer of
control to the scroll processor 48. Nomura describes that when called, the scroll processor 48
"performs the necessary processing" for a scroll operation "corresponding to the movement of
one finger" (see Nomura at <JI [0056]). Likewise, the "gesture call" in Nomura is the transfer of
execution or the transfer of control to the zoom-in processor 42, the zoom-out processor 44 or
the rotation processor 46. When called, each of these processors "performs [the] necessary
processing" for a gesture operation "corresponding to the distance that two fingers are moved
apart" or "moved toward each other," or "corresponding to the angle of rotation" (see Nomura at
<JI [0055]). Thus, the examiner respectfully submits that Nomura teaches or suggests a "scroll
call" and a "gesture call" such as recited in the claims.
The appellant further contends that Rubine does not teach the "distinguishing" limitation
or the "creation of a gesture call object in response to multiple inputs," arguing that Rubine does
not describe a system "that is both object-oriented and responsive to multiple inputs." See the
appellant's brief at pages 20-21.
However, the examiner respectfully points out that the Office action does not rely on the
Rubine reference for teaching the "distinguishing" limitation or the claimed "receiving a user
input [that] is one or more input points." As set forth in the Office action, Nomura teaches
receiving an input consisting of "one or more input points" on a touch panel 1060 and display
screen 1070 (see Nomura at <JI [0l30]). Nomura further teaches distinguishing between an input
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consisting of a single input point and an input consisting of two or more input points (see
Page 16
Nomura at <JI [0053]). Thus, Nomura teaches an input consisting of "multiple" input points. The
teachings of Rubine would have suggested "creating an event object" in response to that input.
As noted above, Nomura further teaches "issuing at least one scroll or gesture call" in response
to that input. Thus, the combined teachings of Nomura and Rubine would have suggested the
claimed features to those of ordinary skill in the art. The examiner notes that the "creation of a
gesture call object" is not a limitation of the claims.
The appellant contends that a person of ordinary skill in the art "would not have been
motivated to combine Nomura with Rubine" because the references "attempt to solve different
problems using different trade-offs," arguing that "computer systems can store and manage data
in a wide variety of ways" and that "nothing in Nomura suggests any concerns regarding data
management." The appellant concludes therefore that there is no rationale and no prima facie
case of obviousness. See the appellant's brief at pages 21-22.
However, the examiner respectfully disagrees. A person of ordinary skill in the art would
have been prompted to combine the teachings of Nomura and Rubine so as to manage Nomura's
"detection data" in a way that is both structured and flexible. Specifically, a person of ordinary
skill in the art would have been prompted to represent the "movement history, contact pressure,
and contact area of the finger" that defines the input event (see Nomura at <JI [0l39]) in the form
of an "event object" such as described in Rubine (see Rubine at page 120).
For example, as set forth in the Office action, Rubine describes at least one "motivation"
for an object-oriented programming system for gesture input:
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A single idea motivated the author to use object-oriented toolkits to construct
gesture-based systems: gestures should be associated with objects on the
screen. Just as an object's class determines the messages it understands, the
author believed the class could and should be used to determine which
gestures an object understands. The ideas of inheritance and overriding then
naturally apply to gestures .... Thus, the author created GRANDMA.
Page 17
(Rubine at page 95). Rubine further describes that the object-oriented system allows display
views to have any number of event handlers, where input events are "automatically routed to the
appropriate handler," and allows different views to share the same event handler (see Rubine at
page 121). Thus, the input event objects described in Rubine are flexible.
Rubine further suggests that an event object would simply "impose structure" (e.g., a data
structure) on the input event (see Rubine at page 120). Thus, as reasoned above, a person of
ordinary skill in the art would have been prompted to "impose structure" on the input event
"detection data" described in Nomura (see Nomura at <JI [0l39]) in a way that is both structured
and flexible. Therefore, "creating an event object in response to the user input" in Nomura
would have been obvious to those of ordinary skill in the art in light of Rubine.
Moreover, the examiner respectfully submits that the existence of a "wide variety" of
other known options, such as "structures" (see the appellant's brief at page 22), would not have
discouraged those of ordinary skill in the art from combining the teachings of Nomura and
Rubine. "A person of ordinary skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense." KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398,421,82 USPQ2d l385, l397 (U.S. 2007).
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The appellant further argues that secondary considerations "such as commercial success,
the existence of a long-felt need for the invention, and copying of the invention, further support a
finding of non-obviousness." See the appellant's brief at pages 22-23.
However, as set forth in the Office action, evidence of secondary considerations must be
factually supported with actual proof and must establish a nexus with the claimed invention. See
MPEP §§ 7l6.0l(c) and 7l6.0l(b). Here, the appellant refers only generally to "evidence ... of
the iPhone's commercial success and Samsung's efforts to copy it" presented in the Apple v.
Samsung litigation (brief at page 22). The appellant does not attempt to show, for example, that
the commercial success of the iPhone is due to the claimed features of the' 915 patent and not to
unclaimed features. See MPEP § 716.03. Likewise, more than the mere fact of copying Apple's
iPhone is necessary to make that action (of copying) significant. See MPEP § 716.06. Thus, the
examiner respectfully submits that the appellant's general assertion of non-obviousness based on
secondary considerations is of little probative value.
Section VII.C.2 of the Appellant's Brief
The examiner notes that claim 8 is directed to "[a] machine readable storage medium
storing executable program instructions which when executed cause a data processing system to
perform a method." The appellant argues that the construction of the "distinguishing" element of
that method "as a test between one and more than one input" is "particularly true" for claim 8,
arguing that "the instructions stored on a medium according to claim 8 would have to include the
predefined set of instructions that dictate the logic by which the computer operates under all
circumstances." See the appellant's brief at pages 23-24.
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Page 19
However, the examiner respectfully submits that a plain reading of claim 8 is that the
"determining" step includes distinguishing between an input consisting of "a single input point"
that is interpreted as a scroll operation and an input consisting of "two or more input points" that
is interpreted as a gesture operation. Giving the claim the broadest reasonable interpretation
consistent with the specification, instructions in the prior art that cause a data processing system
to distinguish between (1) a single input point that is interpreted as a scroll operation and (2) two
input points or more than two input points that are interpreted as a gesture operation would meet
the language of the claim, as would instructions that cause the data processing system to
distinguish between (1) a single input point that is interpreted as a scroll operation and (2) two
input points that are interpreted as a gesture operation. The claim does not recite an input that
necessarily consists of more than two (e.g., three) input points.
As set forth in the Office action, Nomura teaches a machine-readable storage medium
storing executable program instructions for a data processing system (see Nomura at <JI [0l32]
and <JI [0l34]). Nomura further teaches that the instructions cause the data processing system to
distinguish between a single input point that is interpreted as a scroll operation (e.g., "moving
one finger") and two or more input points that are interpreted as a gesture operation (e.g., "two
fingers moving apart" and "two fingers moving toward each other") (see Nomura at [0053]).
Thus, Nomura teaches instructions for interpreting an input consisting of "two or more input
points" as a gesture operation. In other words, the instructions stored on the machine-readable
storage medium of Nomura are capable of interpreting an input consisting of "two or more input
points" as a gesture operation such as recited in claim 8.
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Section VII.C.3 of the Appellant's Brief
Page 20
The appellant contends that Nomura does not teach the limitation that "determining
whether the event object invokes a scroll or gesture operation is based on receiving a drag user
input for a certain time period" such as recited in claims 5, 12 and 19. The appellant argues that
Nomura's consideration of time "occurs only after the device ... has invoked the appropriate
gesture." See the appellant's brief at page 24.
However, the examiner respectfully disagrees. As set forth in the Office action, Nomura
specifically describes:
U sing the present invention, the user can input at least one operation selected
from rotate, zoom-in, zoom-out, and scroll of a map image displayed in the
display area through the movement history of his fingers.
The movement history of fingers contacting the display area is a concept
including a passage of time element and is distinguished from an operation of
simply touching an input mark or the like with a finger that does not include a
passage of time element.
(Nomura at <]I [0009] and <]I [0010]; emphasis added.)
In Nomura, mere contact of one or more input points without movement is not enough to
signal a scroll or gesture operation. Instead, interpreting an input as a scroll or gesture operation
is based on the movement history of the one or more input points moving or "dragging" for some
amount of time (i.e., the "passage of time" element). The tests for movement or dragging are
illustrated, for example, in Figure 34 at step S 140 ("Is the contact point moving?") and in Figure
37 at steps S320 ("Did the distance between the two [contact] points become larger?") and S340
("Did the distance between the two [contact] points get reduced?").
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Step S140 is part of the algorithm for interpreting an input as a scroll operation that
proceeds to step S170 ("Scroll processing"). Likewise, steps S320 and S340 are part of the
algorithm for interpreting an input as a gesture operation that proceeds to step S330 ("Zoom-in
processing") or step S350 ("Zoom-out processing"). See Nomura at Figures 34 and 37. Thus,
Nomura teaches the limitation that "determining whether the event object invokes a scroll or
gesture operation is based on receiving a drag user input for a certain time period" such as
recited in claims 5, 12 and 19.
The examiner notes that Nomura further contemplates testing for "contact by fingers
within a specified amount of time" (see Nomura at <JI [0193]).
Section VII.D.l of the Appellant's Brief
The appellant contends that Hillis does not teach the "distinguishing" limitation, arguing
that Hillis "does not distinguish one input point from more than one input point." The appellant
further argues that Hillis does not teach "the one/more than one algorithm of the '915 patent."
The appellant acknowledges the description of a "scroll with one input [point]" and a "gesture
with two [input points]" in Hillis, but contends that Hillis "nowhere discloses how to distinguish
these or other gestures from each other." See the appellant's brief at pages 25-26.
However, the examiner respectfully disagrees. As noted above, there is no description in
the '915 patent of a particular "one/more than one" algorithm. A plain reading of the claims is
that the "determining" step or the "means for determining" includes distinguishing between an
input (consisting of a "single input point") that is interpreted as a scroll operation and an input
(consisting of "two or more input points") that is interpreted as a gesture operation. As set forth
in the Office action, Hillis teaches distinguishing between an input consisting of a single input
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point that is interpreted as a "pan" or scroll operation (i.e., "drawing a finger across the display
surface") (see Hillis at column 8, lines 44-48) and an input consisting of two or more input points
that is interpreted as a gesture operation (i.e., "placing his fingertips on the display surface and
moving them in an outwardly separating manner") (see Hillis at column 3, lines 42-46).
Hillis further teaches how the scroll and gesture operations are "distinguished." First,
Hillis precisely detects and tracks the number of input points:
In step 201, the user initiates (and the display/computer detects) the user's
physical contact with the display surface 124. Without any intended
limitation, the illustrated embodiment of the sequence 200 performs one
instance of the (repeating) steps 202-204 for each such contact initiated. The
contact of step 201 is referred to as the "current" contact. In one gesture
recognition scheme, the computer 126 tracks a predetermined number of
distinct contact locations (such as two). If the computer identifies another
contact location (such as a third), the computer 126 ignores it until the user
releases a sufficient number of the existing contact locations.
(Hillis at column 7, lines 4-14; emphasis added.) Then, Hillis determines whether the one or
more input points match a predetermined pattern:
In step 208, the computer 126 determines whether actIvIty of the current
contact matches a predetermined pattern, and therefore constitutes a "gesture."
Step 208 repeats continually, utilizing some or all of the position, position
history (movement), velocity, and force information from steps 202, 204, 206.
More particularly, in step 208 the computer 126 compares the history of
contact position, size, movement, velocity, and/or force to the dictionary l26a
of predetermined gestures to determine if the user has performed any of these
gestures. As long as the current contact continues, but no gesture has been
detected, step 208 repeats (via 208a) .... In contrast, if step 208 detects that
the user has initiated a gesture (208c), the computer in step 214 utilizes the
mapping l26c to identify the action l26b associated with the gesture that was
identified in step 208.
(Hillis at column 7, lines 46-65.) The patterns and actions described in Hillis include "panning,
zooming, rotating, and the like" (see Hillis at column 8, lines 4-8). Zooming and rotating are
examples of gesture operations; panning is a scroll operation.
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Thus, Hillis teaches an algorithm for distinguishing between a single input point (i.e., one
finger) that is interpreted as a scroll operation (i.e., panning) and two or more input points (i.e.,
two fingers) that are interpreted as a gesture operation (i.e., zooming or rotating). As reasoned
above, giving the claims the broadest reasonable interpretation, an algorithm in the prior art that
distinguishes between (1) a single input point that is interpreted as a scroll operation and (2) two
input points or more than two input points that are interpreted as a gesture operation would meet
the language of the claims. Likewise, an algorithm that distinguishes between (1) a single input
point that is interpreted as a scroll operation and (2) two input points that are interpreted as a
gesture operation would meet the language of the claims. Accordingly, the teachings of Hillis
anticipate the "distinguishing" limitation as claimed.
Moreover, the examiner respectfully submits that the appellant's argument that "gestures
could be associated with two inputs, and scrolls with any other number" is not what Hillis
describes (see the appellant's brief at page 26). Rather, Hillis describes that "the computer 126
tracks a predetermined number of distinct contact locations (such as two)" and states, "If the
computer identifies another contact location (such as a third), the computer 126 ignores it until
the user releases a sufficient number of the existing contact locations" (Hillis at column 7, lines
9-14). Thus, Hillis teaches that an input consisting of more than two (e.g., three) input points
would be interpreted the same as an input consisting of two input points.
The appellant contends that Hillis does not teach an "event object" or "any of the other
object-oriented limitations of the '915 patent," arguing that the "position history" and "detected
force" described in Hillis is not an "event object." The appellant further contends that Hillis
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"does not disclose the other hallmarks of an object-oriented framework," arguing that Hillis does
not teach a "view associated with the event object." See the appellant's brief at page 26.
However, the examiner respectfully disagrees. As set forth in the Office action, Hillis
teaches creating "a machine readable output" that "is representative of the position, size, shape,
and timing of each contact region," and creating "a position history for each contact region" that
"provides a record of how each contact region moves and/or changes shape over time" (see Hillis
at column 7, lines 15-25). The "machine readable output" and "position history" are created in
step 202 in response to the user input (see Hillis at FIG. 2A). Thus, Hillis teaches "creating an
event object in response to the user input" such as recited in the claims.
The examiner notes that the claims do not specify or limit what constitutes an "event
object," nor does the specification of the '915 patent define the term "event object." At best, the
specification describes, "A multi-touch driver of the device receives the user input and packages
the event into an event object" (see the '915 patent at column 12, lines 30-32). Thus, a
reasonable interpretation is that the claimed "event object" is an entity or "package" of data
representing the user input event. The "machine readable output" and "position history" created
in step 202 of Hillis, representing the position, size, shape and timing of each input point (see
Hillis at column 7, lines 15-25), is such an entity. Accordingly, giving the claims the broadest
reasonable interpretation consistent with the specification, Hillis teaches "creating an event
object in response to the user input."
The examiner further notes that the term "object-oriented" is nowhere found in the
specification or claims of the '915 patent. Likewise, an "object-oriented framework" is not a
limitation of the claims. Hillis teaches that "the presentation of imagery by the display" is
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updated in response to the scroll or gesture operation (see Hillis at column 7, line 65 to column 8,
line 1). Specifically, Hillis describes that the display "pan[s] the imagery" in response to a user
"drawing a finger across the display surface" (Hillis at column 8, lines 44-52). Hillis further
describes that "a closer, more detailed view of the displayed imagery" is presented in response to
a user "placing his fingertips on the display surface and moving them in an outwardly separating
manner" (Hillis at column 3, lines 42-49). Thus, with respect to the claimed "view associated
with the event object," the part of the imagery in Hillis that is panned, zoomed or otherwise
updated in response to the user input is the "view associated with the event object."
The appellant contends that Hillis does not teach a "touch-sensitive display." Namely,
the appellant argues that Hillis "describes a system that projects an image onto a touch-sensitive
surface" that "is not a display," concluding that the display in Hillis "is not responsive to touch."
See the appellant's brief at page 27.
However, the examiner respectfully submits that the appellant's argument is contrary to
the teachings of Hillis. As set forth in the Office action, Hillis clearly teaches "[an] interactive
display system, including a touch sensitive display" (Hillis at Abstract; emphasis added). Hillis
states, for example, that "[the] table 122 detects touch input from human users as applied to the
display surface 124" (Hillis at column 3, lines 4-7). Hillis further describes "various approaches
to detect when and where a user touches the display surface" (Hillis at column 4, lines 17-19).
Thus, Hillis teaches a "touch-sensitive display" such as recited in the claims.
Turning to the system 120 illustrated in FIG. lA of Hillis, the examiner agrees that the
projector 128 projects an image onto the display surface 124 of table 122. One does not look
into the projector to view the image; the image is displayed on the display surface 124. For
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example, FIG. lB "shows several users operating an interactive, touch detecting display 11 ...
such that each user can view the display sUlface 12, which shows imagery of interest to the
users" (Hillis at column 3, lines 33-36). Here, the "touch detecting display 11" responds to
touch. The examiner notes that Hillis further contemplates other "display technologies ... such
as LCDs, OLEDs, or plasma displays" (see Hillis at column 4, lines 3-6).
The appellant contends that Hillis does not teach a display that is "integrated" with the
device, data processing system, or apparatus. The appellant construes the term "integrated" to
mean "combined in a single physical unit." See the appellant's brief at pages 27-28.
First, however, the examiner notes that the physical housing of the display and the
device, data processing system, or apparatus is not a limitation of the claims.
Second, the examiner respectfully submits that contrary to the appellant's argument, the
Office action does not construe the term "integrated" to mean "necessary" in a way that would be
"inconsistent with the ordinary meaning of the term" (see the appellant's brief at page 28).
Rather, the Office action reasoned that the display surface 124 and the computer 126 of Hillis are
"integrated" into a single interactive display system 120. The display surface 124, the computer
126 and the projector 128 are "combined" into the interactive display system 120 and operate
together as a "unit" or as a "whole" (see Hillis at FIG. lA and column 2, lines 63-66). Thus,
consistent with the specification and the ordinary meaning of the term, Hillis teaches a display
that is "integrated" with the device, data processing system, or apparatus.
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Section VII.D.2 of the Appellant's Brief
Page 27
The appellant argues that Hillis "does not disclose any programming instructions that
dictate the logic by which the computer operates under all circumstances, and not just in one
given instance, for the same reasons discussed above with respect to Nomura in Section
VII.C.2." See the appellant's brief at pages 28-29.
However, the examiner respectfully disagrees. As set forth in the Office action, Hillis
teaches a machine-readable storage medium storing executable program instructions that, when
executed, cause a data processing apparatus to perform a method (see Hillis at column 5, lines
48-59). Claim 8 further recites that the "determining" step includes distinguishing between an
input consisting of "a single input point" that is interpreted as a scroll operation and an input
consisting of "two or more input points" that is interpreted as a gesture operation. As noted
above, Hillis teaches distinguishing between an input consisting of a single input point that is
interpreted as a scroll operation (e.g., "drawing a finger across the display surface") and an input
consisting of two or more input points that is interpreted as a gesture operation (e.g., "placing his
fingertips on the display surface and moving them in an outwardly separating manner") (see
Hillis at column 8, lines 44-48 and column 3, lines 42-46). Thus, Hillis teaches instructions for
the "distinguishing" limitation such as recited in claim 8.
Moreover, the examiner respectfully points out that none of the claims recites an input
that necessarily consists of more than two (e.g., three) input points. Still, Hillis teaches that such
an input would be interpreted the same as an input consisting of two input points (see Hillis at
column 7, lines 9-14).
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Section VII.D.3 of the Appellant's Brief
Page 28
The appellant contends that Hillis does not teach the limitation that "determining whether
the event object invokes a scroll or gesture operation is based on receiving a drag user input for a
certain time period" such as recited in claims 5, 12 and 19. The appellant argues that the
examiner "never explains" how the "movement" and "velocity" described in Hillis describe a
"drag user input for a certain time period." See the appellant's brief at page 29.
However, the examiner respectfully disagrees. In Hillis, interpreting an input as a scroll
or gesture operation is based on "the timing of each contact region" and "a record of how each
contact region moves and/or changes shape over time" (see Hillis at column 7, lines 15-25;
emphasis added). A contact (i.e., an input point) that moves or "drags" over a period of time
constitutes "receiving a drag user input for a certain time period." As noted above, Hillis further
describes that interpreting the input as a scroll or gesture operation is based on the movement,
velocity and force of the drag:
In step 208, the computer 126 determines whether actIvIty of the current
contact matches a predetermined pattern, and therefore constitutes a "gesture."
Step 208 repeats continually, utilizing some or all of the position, position
history (movement), velocity, and force information from steps 202, 204, 206.
More particularly, in step 208 the computer 126 compares the history of
contact position, size, movement, velocity, and/or force to the dictionary 126a
of predetermined gestures to determine if the user has performed any of these
gestures. As long as the current contact continues, but no gesture has been
detected, step 208 repeats (via 208a) .... In contrast, if step 208 detects that
the user has initiated a gesture (208c), the computer in step 214 utilizes the
mapping 126c to identify the action 126b associated with the gesture that was
identified in step 208.
(Hillis at column 7, lines 46-65; emphasis added.) As set forth in the Office action, the velocity
of the contact represents the change in the position of the contact over a period of time. Thus,
the examiner respectfully submits that Hillis teaches the limitation that "determining whether the
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event object invokes a scroll or gesture operation is based on receiving a drag user input for a
certain time period" such as recited in claims 5, 12 and 19.
Section VILE of the Appellant's Brief
The appellant contends that Lira does not teach "rubberbanding a scrolling region
displayed within the window by a predetermined maximum displacement when the scrolling
region exceeds a window edge based on the scroll" such as recited in claims 2, 9 and 16. The
appellant argues that the "snapping" described in Lira is not "rubberbanding" because it "works
in a fundamentally different way." See the appellant's brief at pages 30-31.
However, the examiner respectfully disagrees. The specification of the '915 patent
describes "rubberbanding" in terms of "rubberbanding a scrolled region by a predetermined
maximum displacement when the scrolled region exceeds a display edge" (see the '915 patent at
column 5, lines 35-40). Here, the appellant argues that the rubberbanding "prevents a user from
scrolling the content further" and "solves the specific problem of a user's scrolling to a region
outside the content" (see the appellant's brief at pages 30-31). On that basis, the appellant argues
that Lira "does not disclose what happens if the user tries to scroll past the edge of the page"
(brief at page 31). However, as set forth in the Office action, the "region outside the content" is
not a limitation of the claims. The claims do not recite "preventing" the user from scrolling.
Lira teaches snapping or "rubberbanding" a column of a page in a display window 1205
based on whether the user's horizontal scrolling of the column exceeds a threshold:
Referring to Fig. 14B, in another implementation, the vertical alignment
control is enabled when the user lifts the pen 1200 from the display 1205.
This causes the logical column 1220 to snap into alignment with the display
window 1205 as the user stops scrolling. The user can adjust the snap
sensitivity by, for example, setting the alignment control to snap to the nearest
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logical column based on a user-defined snap threshold. If the user's scrolling
does not exceed the threshold, which indicates an intention to continue to
view the text column 1220, the display 1205 centers the logical column 1210
as the pen 1200 is lifted from the screen. If the user's scrolling exceeds the
threshold, which indicates an intention to move beyond the boundary of the
logical column 1220, the display is snapped to the adjacent or repositioned
column. In other implementations, no snapping occurs when the user's
scrolling exceeds the threshold. The snap-on-column feature can also be
animated to provide an appearance of movement as the display scrolls to the
correct column-viewing position.
Page 30
(Lira at page 15, lines l8-3l.) When the user's scrolling does not exceed the threshold, the
column is re-centered and snapped back "into alignment with the display window 1205." When
the user's scrolling exceeds the threshold and "[moves] beyond the boundary" of the column, the
display window 1205 is snapped to the next nearest column. Thus, Lira teaches "rubberbanding"
a column of the page.
The examiner respectfully submits that the appellant's argument that the snapping
described in Lira relates to "internal edges" of the page and not to "the edge of the content" is
immaterial (see the appellant's brief at page 31). The claims recite "a window edge" rather than
a "content" edge. Moreover, the test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d
4l3, 425, 208 USPQ 871, 881 (C.c.P.A. 1981).
As set forth in the Office action, Lira describes that the columns of the page are sized
such that "[the] width of each logical column is less than or equal to the display window width"
(see Lira at page 11, lines 10-17). Therefore, in the case where the width of the logical column is
equal to or the same as the width of the display window 1205, the snapping or "rubberbanding"
is performed when the user's horizontal scrolling of the column "exceeds a window edge based
on the scroll" such as recited in claims 2,9 and 16. Thus, the teachings of Lira would have
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suggested "rubberbanding a scrolling region displayed within the window by a predetermined
maximum displacement when the scrolling region exceeds a window edge based on the scroll" to
those of ordinary skill in the art.
The appellant contends that a person of ordinary skill in the art "would not have been
motivated to combine Lira with Nomura or Hillis," arguing that the scrolling described in Lira
"is incompatible" with that of Nomura and Hillis because "[a] downward motion in Lira results
in the display of new content from below ... while the same motion in both Nomura and Hillis
results in the display of new content from above." The appellant further argues that the snapping
and re-centering teachings of Lira "relate to internal boundaries within the content" that are not
described in Hillis or Nomura. The appellant concludes therefore that there is no rationale and
no prima facie case of obviousness. See the appellant's brief at pages 31-32.
However, the examiner respectfully disagrees. As the Lira reference suggests, the
snapping (i.e., "rubberbanding") feature would "provide an appearance of movement as the
display scrolls to the correct [viewing] position" (see Lira at page 15, lines 29-31). A person of
ordinary skill in the art would have been prompted to incorporate such a feature into Hillis or
Nomura. Specifically, as set forth in the Office action, a person of ordinary skill in the art would
have been prompted to implement the teachings of Hillis or Nomura such that the "scrolled" or
"panned" area is automatically and visually snapped back into alignment with the window based
on whether the scrolling exceeds a threshold.
The direction of the scrolling in Lira as compared to the direction of the scrolling in Hillis
or Nomura would not have prevented a person of ordinary skill in the art from combining the
teachings of the references. In fact, choosing the direction of the scrolling (or the direction from
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which "new content" is displayed) would have been within the level of ordinary skill. A person
of ordinary skill is also a person of ordinary creativity, not an automaton. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398,421,82 USPQ2d l385, l397 (U.S. 2007).
Likewise, even if the teachings of Lira were limited to "internal boundaries within the
content" (see the appellant's brief at page 31), a person of ordinary skill in the art could have
implemented the snapping or "rubberbanding" feature for an internal boundary within the
content that is displayed in Hillis or Nomura. For example, both references describe the display
of maps and geographic imagery (see Nomura at Figure 8 and <JI [0067]; Hillis at FIG. lB and
column 3, lines 36-40). The examiner respectfully submits that it would have been obvious to
those of ordinary skill in the art to implement the snapping or "rubberbanding" feature for a
logical boundary within such maps (e.g., at the boundary of a geographical area), analogous to
the logical columns of the pages described in Lira (see Lira at page 15, lines 18-31).
The appellant argues that secondary considerations "such as commercial success, the
existence of a long-felt need for the invention, and copying of the invention, support a finding of
non-obviousness for claims 2,9 and 16." See the appellant's brief at pages 32-33.
However, as set forth in the Office action and reiterated above, evidence of secondary
considerations must be factually supported with actual proof and must establish a nexus with the
claimed invention. See MPEP §§ 7l6.0l(c) and 7l6.0l(b). Here, the appellant refers only
generally to "evidence ... of the iPhone's commercial success and Samsung's efforts to copy it"
presented in the Apple v. Samsung litigation (brief at page 32). The appellant does not attempt to
show, for example, that the commercial success of the iPhone is due to the claimed features of
the '915 patent and not to unclaimed features. See MPEP § 716.03. Likewise, more than the
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mere fact of copying Apple's iPhone is necessary to make that action (of copying) significant.
See MPEP § 716.06. Thus, the examiner respectfully submits that the appellant's assertion of
non-obviousness based on secondary considerations is of little probative value.
Section VII.F of the Appellant's Brief
The appellant contends that Makus does not teach "attaching scroll indicators" such as
recited in claims 3, 4, 10, 11, 17 and 18. The appellant argues that "[unlike] the '915 patent," the
scroll bars of Makus "do not appear dynamically when a user begins to scroll the content" and
therefore are not "attached." See the appellant's brief at page 33.
However, the examiner respectfully disagrees. The claims do not specify that the scroll
indicators "appear dynamically when a user begins to scroll the content." Indeed, the claims do
not specify when the scroll indicators are "attached" at all. In the Makus reference, the scroll bar
76 (i.e., the "scroll indicator") is attached when the user touches the display screen 28 "causing a
list 74 of [items] to be displayed" (see Makus at column 8, lines 59-64). The scroll bar 76 is then
displayed (i.e., "attached" to the display) because more items are included in the list 74 "than can
be displayed in the available space on display screen 28 at one time" (see Makus at column 8,
line 64 to column 9, line 1). As set forth in the Office action, Makus illustrates the "before" and
"after" of attaching the scroll bar 76 to the display in FIG. 4 and FIG. 5, respectively. Thus, the
teachings of Makus would have suggested "attaching scroll indicators" such as recited in the
claims to those of ordinary skill in the art.
The appellant contends that a person of ordinary skill in the art "would not have been
motivated to combine Makus with Nomura or Hillis," arguing that Nomura and Hillis do not
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"require scroll indicators for navigation" since Nomura teaches "navigating a map by scrolling"
and Hillis describes "panning to navigate a map." The appellant argues, "Scroll indicators are
often used on mobile devices to indicate a relative position to a user in a long document." The
appellant contends that such a feature "is not as useful for maps" such as described in Nomura
and Hillis because maps "do not have a fixed starting position and are not generally accessed
sequentially." The appellant concludes therefore that there is no rationale and no prima facie
case of obviousness. See the appellant's brief at pages 34-35.
However, the examiner respectfully disagrees. The test for obviousness is what the
combined teachings of the references would have suggested to those of ordinary skill in the art.
See In re Keller, 642 F.2d 4l3, 425, 208 USPQ 871, 881 (C.c.P.A. 1981). A person of ordinary
skill in the art would understand that the maps displayed in Hillis and Nomura have a length and
a width. The part of the map that is viewable to the user would change as the map is panned or
scrolled; a "scroll indicator" such as described in Makus would show, for example, the relative
position of that view with respect to the size or dimensions of the full map. Thus, as set forth in
the Office action, "attaching scroll indicators" to the maps of Nomura and Hillis would have
been obvious to those of ordinary skill in the art.
With respect to the appellant's argument that the further teaching of a "slider tool" in
Hillis "does not justify combining it with Makus" (see the appellant's brief at page 34), the
examiner respectfully disagrees. The slider mode described in Hillis includes attaching a slider
tool to the display such as a "linearly moveable slider bar 560" that "observes an appropriately
convenient scale" (see Hillis at FIG. 5B and column 16, lines 29-39). The slider bar 560 is a
form of a "scroll indicator." Thus, Hillis teaches "attaching a scroll indicator" to the display. To
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the extent that the "slider mode" of Hillis is separate from the description of panning or scrolling
a map, the Office action cited the Makus reference. As noted above, Makus teaches a scroll bar
76 (see Makus at FIG. 5) that would show, for example, the relative position of the part of the
map that is viewable to the user with respect to the size or dimensions of the full map. Thus, as
set forth in the Office action, "attaching scroll indicators" to the maps of Hillis would have been
obvious to those of ordinary skill in the art.
The appellant argues that secondary considerations "such as commercial success, the
existence of a long-felt need for the invention, and copying of the invention, support a finding of
non-obviousness for claims 3, 4, 10, 11, 17 and 18." See the appellant's brief at page 35.
However, as set forth in the Office action and reiterated above, evidence of secondary
considerations must be factually supported with actual proof and must establish a nexus with the
claimed invention. See MPEP §§ 7l6.0l(c) and 7l6.0l(b). Here, the appellant refers only
generally to "evidence ... of the iPhone's commercial success and Samsung's efforts to copy it"
presented in the Apple v. Samsung litigation (brief at page 35). The appellant does not attempt to
show, for example, that the commercial success of the iPhone is due to the claimed features of
the '915 patent and not to unclaimed features. See MPEP § 716.03. Likewise, more than the
mere fact of copying Apple's iPhone is necessary to make that action (of copying) significant.
See MPEP § 716.06. Thus, the examiner respectfully submits that the appellant's assertion of
non-obviousness based on secondary considerations is of little probative value.
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For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
/Michael J. Yigdall/
Primary Examiner, Art Unit 3992
Conferees:
/Stephen J. Ralis/
Primary Examiner, Art Unit 3992
/SUDHANSHU PATHAK!
Supervisory Patent Examiner, Art Unit 3992
Page 36
Requirement to pay appeal forwarding fee: In order to avoid dismissal of the instant appeal in
any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an
appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely
paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18,2013.
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EXHIBIT C

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EX PARTE RE-EXAMINATION Docket No.: 106842803600(P4895USREXl)
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Reexamination of:
Andrew PLATZER et al.
Reexam Control No.: 901012,332
U.S. Patent No.: 7,844,915
Filing Date: May 30, 2012
For: APPLICATION PROGRAMMING
INTERFACES FOR SCROLLING
OPERATIONS
MS Appeal Brief - Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Madam:
Confirmation No.: 5963
Art Unit: 3992
Examiner: M. J. Yigdall
REPLY BRIEF
This is an appeal from a Final Office Action, dated July 26,2013, and an Advisory Action,
dated November 20,2013, rejecting claims 1-21 of U.S. Patent No. 7,844,915 ("the '915 patent").
Appellant Apple Inc. ("Appellant" or "Patent Owner") filed its Notice of Appeal on December 26,
2013 and its Appeal Brief on February 26,2014. The Examiner filed his Answer Brief on May 2,
2014. This Reply Brief is timely under 37 c.F.R. § 41.41 and accompanied by the appeal
forwarding fee under 37 c.F.R. § 41.20(b)(4). Additionally, a request for oral hearing, and
appropriate fees, are filed herewith.
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Control No.: 901012,332 2 Docket No.: 106842803600(P4895USREXl)
TABLE OF CONTENTS
I. INTRODUCTION ....................................................................................... 4
II. ARGUMENT ............................................................................................. 5
A. The References Do Not Teach the "Distinguishing" Limitation (All Claims) ......... 5
1. The broadest reasonable construction of the "distinguishing"
limitation refers to a test that distinguishes between one input
and more than one input. .............................................................. 5
2. The Examiner's proposed construction, which ignores the
understanding of those skilled in the art and the Patent Owner's
disclaimers, cannot be correct. ....................................................... 8
3. Nomura does not disclose the "distinguishing" limitation ..................... 14
4. Hillis does not disclose the "distinguishing" limitation ......................... 14
B. The References Do Not Teach the "Event Object" Limitation (All Claims) ......... 16
1. The broadest reasonable construction of the "event object"
limitation requires object-oriented programming ................................ 16
2. The Examiner's construction of "event object" is unreasonable ............... 17
3. The combination of Nomura and Rubine does not disclose the
claimed "event object" ............................................................... 18
4. One would not have been motivated to combine Nomura and Rubine ....... 19
5. Hillis also does not disclose the claimed "event object" ........................ 20
III. HILLIS, WHETHER ALONE OR IN COMBINATION, DOES NOT DISCLOSE A
"TOUCH-SENSITIVE DISPLAY" LIMITATION (CLAIMS 1,8, & 15) .................... 21
IV. HILLIS, WHETHER ALONE OR IN COMBINATION, DOES NOT DISCLOSE THE
"INTEGRATED" DISPLAY LIMITATION (ALL CLAIMS) .................................. 22
V. THE REFERENCES DO NOT TEACH THE "DRAG INPUT"
LIMITATION (CLAIMS 5,12, & 19) ............................................................... 24
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VI. THE REFERENCES DO NOT TEACH THE "RUBBERBANDING"
LIMITATION (CLAIMS 2, 9, & 16) ............................................................... 26
VII. THE REFERENCES DO NOT TEACH THE "ATTACHING SCROLL
INDICATORS" LIMITATION (CLAIMS 3, 4, 10, 11, 17, & 18) .............................. 29
VIII. CONCLUSION .......................................................................................... 32
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Control No.: 901012,332 4 Docket No.: 106842803600(P4895USREXl)
I. INTRODUCTION
The Examiner's Answer confirms that the Board should reverse the pending rejections. The
Examiner does not rebut Appellant's arguments that Nomura! and Hillis,2 whether alone or in
combination with other references, do not disclose all limitations of the '915 patent claims. Indeed,
the Examiner fails to address several of Appellant's arguments at all.
In its Appeal Brief, Appellant explained that the "broadest reasonable interpretation" of the
"distinguishing" limitation in all claims refers to a test that distinguishes between one input and
more than one input.
3
This is consistent with the understanding of no fewer than three professors
skilled in the art, the plain claim language, the specification, and the prosecution history.4 In
advancing a different construction, the Examiner continues to ignore the understanding of one of
ordinary skill in the art and discounts the only record evidence of how one skilled in the art would
actually construe the "distinguishing" limitation.
5
The Examiner's arguments for the remaining limitations (e.g., that an "event object" need
not be object-oriented,6 that a projector positioned over a table is both a "touch-sensitive display"
and "integrated,,,7 that "rubberbanding" can encompass something that does not snap back after
reaching a predetermined maximum displacement,
8
or that a bar for sliding between layers is a
"form of a 'scroll indicator",9) fare no better. Because the cited references do not teach multiple
claim limitations of the '915 patent, Appellant respectfully urges the Board to reverse.
1 Japanese Pub. No. 2000-163031A.
2 U.S. Patent No. 7,724,242.
3 See Appeal Br. at 10.
4 See id. at 14-19.
5 See Answer at 7 -9 (rejecting Drs. Nieh and Klemmer's constructions in favor of the "evidence as a whole," and
ignoring Dr. Singh's opinion entirely).
6 See id. at 24 (construing "event object" instead as "an entity or 'package' of data representing the user input").
7 See id. at 25 ("[T]he [E]xaminer agrees that the projector 128 projects an image onto the display surface 124 of table
122.").
8 See id. at 30 ("When the user's scrolling [in Lira] exceeds the threshold ... , the display window 1205 is snapped to
the next nearest column.").
9 [d. at 34.
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II. ARGUMENT
A. The References Do Not Teach the "Distinguishing" Limitation (All Claims).
All independent claims require:
determining whether the event object invokes a scroll or gesture
operation by distinguishing between a single input point applied to
the touch sensitive display that is interpreted as the scroll operation
and two or more input points applied to the touch-sensitive display
h
. d h . 10
t at are mterprete as t e gesture operatIOn ....
The plain language of this limitation requires distinguishing between (i) one input point and (ii)
more than one input point. The Examiner, however, believes that an algorithm that distinguishes
between (i) one input point and (ii) two input points-but not, e.g., three input points-would
satisfy this limitation. 11 The Examiner's interpretation is not the broadest reasonable interpretation
in light of the specification for several reasons, as discussed below.
1. The broadest reasonable construction of the "distinguishing" limitation
refers to a test that distinguishes between one input and more than one
input.
The "broadest reasonable interpretation" standard governs the construction of the
"distinguishing" limitation during reexamination. 12 "Under a broadest reasonable interpretation,
words of the claim must be given their plain meaning, unless such meaning is inconsistent with the
specification.,,13 "The plain meaning of a term means the ordinary and customary meaning given to
the term by those of ordinary skill in the art at the time of the invention.,,14 The broadest reasonable
10 (Emphasis added.)
11 Answer at 3.
12 See MPEP § 2258(1)(G).
13 MPEP § 2111.01(1).
14 [d.
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construction of a limitation must be consistent with both the specification and "the interpretation
that those skilled in the art would reach.,,15
Applying these maxims, the broadest reasonable construction of the "distinguishing"
limitation refers to a test that distinguishes between one input and more than one input. As
Dr. Scott Klemmer of the University of California, San Diego (formerly of Stanford University) has
explained: "If one of ordinary skill were asked to express the distinguishing limitation as pseudo-
code, it would be reasonable to express [it] as:
if (1 input point) {interpret as a scroll operation};
if (> 1 input point) {interpret as a gesture operation H.],,16
This pseudo-code distinguishes one input point from all numbers greater than one. In other
words, the limitation describes an "atomic test condition, namely, that any plurality of input points
be interpreted as a gesture operation.,,17 Dr. Klemmer further explained that one of ordinary skill
"would not reasonably interpret the distinguishing limitation as something substantially different"
from this test.
18
No fewer than three professors-Dr. Scott Klemmer, Dr. Karan Singh of the
University of Toronto, and Dr. Jason Nieh of Columbia University-have confirmed that this is the
appropriate construction for the "distinguishing" limitation, after reviewing the '915 patent's claims
and specification.
19
This construction also is required by the plain claim language. Claim 8, for example, refers
to a "machine readable storage medium" with instructions for performing the recited method. This
method includes the "determining" step, with its "distinguishing" limitation. The instructions on
that medium would dictate the logic by which a computer responds under all circumstances, not
15 See MPEP § 2111; Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane).
16 Klemmer Decl. <J[ 13.
17 [d. <J[ 16.
18 [d. <J[ 11.
19 See Appeal Br. at 15; Klemmer Decl. n 7-17; Nieh Decl. n 15-17; Response to Final Office Action, dated Oct. 28,
2013, at 7-8 (quoting Singh trial testimony).
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just in isolated instances.
2o
Restated, one of ordinary skill in the art would understand that a
medium that stored instructions for performing only a portion of the "distinguishing" limitation
(e.g., interpreting one input point as a scroll operation and two input points as a gesture operation)
would not satisfy claim 8.
Appellant's interpretation is fully consistent with the '915 patent specification. The
specification uses the phrase "two or more" interchangeably with the term "plurality.,,21 This
equivalence, which is consistent with Federal Circuit precedent,22 confirms that the "distinguishing"
limitation contrasts "a single input point" with "two or more input points," i.e., a "plurality."
When describing the distinguishing step, the specification also describes a single test for
differentiating one from two or more:
The method 100 further includes determining whether the event object
invokes a scroll or gesture operation at block 106. For example, q
single touch that drags a distance across a display of the device may
be interpreted as a scroll operation. In one embodiment, q two or
more finger touch of the display may be interpreted as a gesture
. 23
operatIOn.
This test contrasts "q single touch" with "q two or more finger touch" to determine which operation
to invoke. The term "q two or more finger touch" describes a type of input, i. e., more than one
finger, rather than two different categories of input to be evaluated separately. This is consistent
with Dr. Klemmer's "atomic" test condition.
20 See Klemmer Decl. <Jrl[ 19-20.
21 Compare '915 patent at 5:45-48 ("The gesture operations also include performing a rotation transform to rotate an
image or view in response to a user input having two or more input points."), with id. at 7:4-8 ("[G]esture operations
include responding to at least one gesture call, if issued, by rotating a view associated with the event object based on
receiving a plurality of input points in the form of the user input.").
22 See, e.g., Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir. 2001) ("[W]e find no reason
to give 'plurality ... of projections' any definition other than its ordinary definition of 'two or more. "'); cf
Commonwealth Sci. and Indus. Research Org. V. Buffalo Tech. (USA) Inc., 542 F.3d 1363, 1384-85 (Fed. Cir. 2008)
(using the terms "two or more," "plurality of," "multiple," and "at least two" interchangeably).
23 '915 patent at 6:38-43 (emphasis added).
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Appellant's interpretation also is consistent with the original prosecution history. The
original examiner of the ' 915 patent added the "distinguishing" limitation via an examiner's
amendment when allowing the claims, explaining:
[The cited references] fail to teach or suggest ... distinguishing
between q single input point and q two or more input points applied to
a touch-sensitive display, wherein a single input point is interpreted as
a scroll operation and two or more input points are interpreted as a
. 24
gesture operatIOn.
The Examiner's paraphrasing of "two or more input points" as "q two or more input points"
confirms that the "distinguishing" limitation makes a single distinction between a single input and
more than one input.
Finally, the Patent Owner's own construction of the "distinguishing" limitation during
reexamination is persuasive. In its October 28, 2013 Response to Final Office Action, the Patent
Owner emphasized that "any reasonable interpretation of the distinguishing limitation requires an
algorithm that interprets a single input point as a scroll operation and that interprets any input
having greater than one input point ... as a gesture operation.,,25 These statements during
reexamination, which are part of the public record, inform the public's understanding as to the
broadest reasonable construction of the '915 patent claims?6
2. The Examiner's proposed construction, which ignores the understanding
of those skilled in the art and the Patent Owner's disclaimers, cannot be
correct.
As in the Final Office Action and Advisory Action, the Examiner maintains in his Answer
that the broadest reasonable construction of the "distinguishing" limitation encompasses:
24 U.S. Pat. App. No. 11/620,717, Notice of Allowance, dated July 20,2010, <J[ 4 (emphasis added).
25 Response to Final Office Action, dated Oct. 28, 2013, at 8-9.
26 Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011) (citing Microsoft Corp. v. Multi-
Tech Sys., 357 F.3d 1340, 1350 (Fed. Cir. 2004) ("We have stated on numerous occasions that a patentee's statements
during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.")); ACCD Brands,
Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1078-79 (Fed. Cir. 2003) (reexamination statements may limit scope of
unamended claims).
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[or]
an algorithm ... that distinguishes between (1) a single input point that
is interpreted as a scroll operation and (2) two input points or more
than two input points that are interpreted as gesture operation ....
an algorithm that distinguishes between (1) a single input point that is
interpreted as a scroll operation and (2) two input points that are
. d . 27
mterprete as gesture operatIOn ....
Restated, the Examiner's proposed construction would allow the claims to encompass a system in
which a single input was interpreted as a scroll operation, two input points were interpreted as
gesture operation, but three or more inputs were interpreted as a scroll operation-or not at all.
28
The Examiner's construction cannot represent the broadest reasonable construction of the
"distinguishing" limitation for multiple reasons:
First, the Examiner's construction wholly ignores the requirement that claims be construed
from the perspective of one of ordinary skill in the art. Although emphasizing that the "broadest
reasonable construction" standard applies during reexamination and that the specification is the
"best source" for determining the meaning of a claim term,29 the Examiner never once
acknowledges that the broadest reasonable construction standard must be applied from that
perspective.
The requirement that claims be construed from the perspective of one skilled in the art is
black letter law, with multiple cases emphasizing this principle. In Phillips v. AWH Corp., for
example, the en bane Federal Circuit explained that:
The Patent and Trademark Office ("PTO") determines the scope of the
claims in patent applications not solely on the basis of the claim
language, but upon giving claims their broadest reasonable
27 Answer at 3, 6, 8, 23; see Final Office Action, dated July 26,2013, at 4; Advisory Action, dated Nov. 20, 2013, at 3.
28 Answer at 13 (interpreting claims to cover Nomura, in which "the processing of three or more input points ... would
be the same as the processing of a single input point"), 23 (interpreting claims to cover Hillis, in which "the computer
ignores [a third contact location] until the user releases a sufficient number of existing contact locations" (citation
omitted)).
29 Answer at 3, 9.
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construction "in light of the specification as would be interpreted by
one of ordinary skill in the art. ,,30
The MPEP is in accord, explaining that "[t]he broadest reasonable interpretation of the claims
must ... be consistent with the interpretation that those skilled in the art would reach.,,31 The
Federal Circuit has expressly relied on this principle in reversing rejections based on constructions
that did not reflect the understanding of one skilled in the art.
32
By refusing to acknowledge (much less apply) this requirement, the Examiner's construction
does not reflect the understanding of one skilled in the art and cannot be the broadest reasonable
construction.
Second, the Examiner erred by rejecting the opinions of Drs. Klemmer, Nieh, and Singh that
Appellant's construction of the "distinguishing" limitation is correct. The Examiner implicitly
concedes that Dr. Nieh' s and Dr. Klemmer's opinions are reasonable, admitting that he "does not
dispute the accuracy of Dr. Klemmer's pseudo-code" and that he "accept[ s] Dr. Nieh' s explanation
of the algorithm shown in [Nomura]. ,,33 Nevertheless, the Examiner rejects Dr. Nieh' sand
Dr. Klemmer's constructions based on his personal assessment of "the evidence as a whole.,,34 The
Examiner does so despite offering no evidence of his own reflecting the alleged understanding of
one skilled in the art,35 and despite Dr. Klemmer's opinion that the Examiner's construction would
be unreasonable to one of ordinary skill in the art. 36
The Examiner's rationale for discounting Dr. Nieh's and Dr. Klemmer's opinions is plainly
wrong. While the Examiner contends that "the assertions of Dr. Nieh and Dr. Klemmer [were]
made without reference to the specification," both professors expressly stated that they read and
30 415 F.3d at 1316 (quoting In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (emphasis added).
31 MPEP § 2111.01.
32 See, e.g., In re Cortright, 165 F.3d 1353, 1358-59 (Fed. Cir. 1999) (reversing rejection where Board's construction of
"restore hair growth" did not reflect interpretation of one of ordinary skill in the art).
33 Answer at 7,8.
34
Id
. at 7.
35 Cf MPEP § 2144.02 ("[WJhen an examiner relies on a scientific theory, evidentiary support for the existence and
meaning of that theory must be provided.").
36 Klemmer Decl. n 11, 14.
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considered the specification (which includes column 6, lines 38-43, discussed above) in arriving at
their conclusions?7 As for Dr. Singh, the Examiner offers no justification for ignoring his opinions
whatsoever. 38 Because the only record evidence of how one of ordinary skill in the art would
construe the "distinguishing" limitation supports Appellant's construction, that construction must be
correct.
Third. the Examiner misreads the use of the word "or" as supporting his construction. In
particular, the Examiner continues to interpret "or" mechanically and in isolation, rather than in the
context of the entire limitation (i.e., "distinguishing between a single input point ... and two or
more input points,,39). But a term "cannot be defined by some ordinary meaning isolated from the
proper context .... ,,40 The Examiner's approach also runs contrary to the principles of claim
construction, which require that "[a] claim must be read in accordance with the precepts of English
grammar.,,41 The Federal Circuit has expressly cautioned against attempting to construe a claim
term "in the abstract, out of its particular context.,,42
As in the Advisory Action, the Examiner again contends that two Federal Circuit
decisions-Brown v. 3M and Schumer v. Laboratory Computer Systems, Inc.-support his
construction that "two or more" presents alternatives (i.e., "two" and "more than twO,,).43 But the
Examiner makes no attempt to respond to Appellant's explanations in its Appeal Brief as to why
both Brown and Schumer are unsupportive.
As Appellant explained in its Appeal Brief, Brown involved a very specific situation-
claims to an explicit alternative structure. The claims at issue in Brown were directed to a database
37 Nieh Decl. <J[ 4 ("I have read and understood the technical content of the '915 Patent .... "); Klemmer Decl. <J[ 3
(same).
38 See Answer at 7 (acknowledging Dr. Singh's trial testimony, but never referring to it again).
39 (Emphasis added.)
40 TAP Pharms. Prods., Inc. v. OWL Pharms., L.L.c., 419 F.3d 1346, 1354 (Fed. Cir. 2005).
41 In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983).
42 Phillips, 415 F.3d at 1321.
43 Compare id. at 5 (discussing Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) and Schumer v. Lab. Computer Sys., Inc.,
308 F.3d 1304 (Fed. Cir. 2002)), with Advisory Action at 5 (raising virtually identical arguments, both in substance and
form).
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containing "at least one of two-digit, three-digit, or four-digit year-date representations.,,44
Although holding that the claims would be satisfied by anyone of those date representations, the
Federal Circuit did not declare that "or" must always be construed similarly.
Unlike the claims in Brown, the "distinguishing" limitation does not involve a series of
alternative structures. The phrase "two or more" instead is embedded within a larger phrase, i.e.,
"distinguishing between a single input point ... and two or more input points." The '915 patent
claims therefore relate to the act of distinguishing between a single input point and two or more
input points as a group-not just between a single input point and two input points, or a single input
point and more than two input points.
Schumer also is readily distinguishable. In Schumer, the claim required that "one of the
following elements [be] different ... " and then listed several alternatives separated by "0r.,,45 The
context of the claim therefore clearly indicated that only one of the listed alternatives needed to be
present. This is in contrast to the "distinguishing" limitation of the '915 patent claims, which
requires "distinguishing between a single input point ... and two or more input points."
Fourth, the Examiner also does not meaningfully address the impact of claim 8's express
recitation of a "machine readable storage medium." As discussed above and also in the Appeal
Brief,46 one of ordinary skill in the art would never implement instructions on a storage medium for
performing only a portion of the "distinguishing" limitation (e.g., interpreting one input point as a
scroll operation and two input points as a gesture operation, but not accounting for more than two
input points). Besides arguing that his construction of "two or more" is the broadest reasonable
construction, the Examiner does not try to explain why such an implementation would be logical,
practical, or desirable.
47
The Board can reverse the rejection of claims 8-14, all of which recite the
"machine readable storage medium," on this basis alone.
44 265 F.3d. at 1352.
45 308 F.3d at 1311.
46 Appeal Br. at 23,28-29.
47 See Answer at 19 ("Giving the claim the broadest reasonable interpretation consistent with the specification,
... instructions ... that cause a data processing system to distinguish between (1) a single input point that is interpreted
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Fifth, although contending that "there is no description in the '915 patent of a particular
atomic test for distinguishing between a single input point and two or more input points," the
Examiner does not address the specification's discussion of "!!, single touch" versus "!!, two or more
finger touch" at all.
As discussed above and also in the Appeal Brief (at 17), the phrase "!!, two or more finger
touch" confirms that "two or more" means "more than one finger"-and not two different
categories of input to be evaluated separately (i.e., "two" and "more than two").
Sixth, the Examiner misunderstands the import of the original prosecution history. In the
Notice of Allowance, the original examiner paraphrased the claim language "two or more input
points" as "!!, two or more input points." This paraphrasing reveals how that examiner understood
this phrase within the "distinguishing" limitation, i.e., as an atomic group. The original examiner
did not understand "two or more" to refer to alternatives, as the current Examiner now proposes.
Accordingly, and contrary to the Examiner's position, the "distinguishing" limitation "was added to
the claims to define a 'one/more than one' or 'atomic test.",48
Seventh, the Examiner does not respond to Appellant's authority that a patent owner's
statements during reexamination also can limit the scope of unamended claims.
49
Although arguing
that "[c]onstruing the claims broadly is not unfair to the patentee because the patentee is given the
opportunity to amend the claims," the Examiner does not address the impact of Appellant's
statements on claim scope at all. Because disclaimer and estoppel principles apply equally during
original prosecution and reexamination, 50 Appellant's repeated statements regarding the appropriate
construction of the "distinguishing" limitation should be persuasive.
as a scroll operation and (2) two input points that are interpreted as a gesture operation [would meet the language of the
claim]. The claim does not recite an input that necessarily consists of more than two (e.g., three) input points.").
48 Answer at 11 (emphasis added).
49 See Appeal Br. at 18-19.
50 See Ex parte Jacobus, No. 2009-997, 2009 WL 2137370, at *4-5 (B.P.A.I. Jul. 16,2009) (in view of appellant's
"strenuous[]" reexamination arguments regarding claim scope, reversing examiner's rejection of claims as based on
erroneous construction).
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3. Nomura does not disclose the "distinguishing" limitation.
Nomura discloses an algorithm for distinguishing between two input points and not-two
input points. The Examiner concedes that "based on Figure 34 [of Nomura], the processing of three
or more input points in Nomura apparently would be the same as the processing of a single input
point.,,51 Because the "distinguishing" limitation requires that the algorithm distinguish between
one input point, on the one hand, and more than one input points, on the other hand, Nomura does
not disclose this limitation. The Examiner does not dispute that Nomura does not teach the
"distinguishing" limitation, applying Appellant's construction.
The references that the Examiner proposes to combine with Nomura-Rubine
52
(ground 4),
Lira
53
(ground 5), and Makus
54
(ground 6)-do not cure this deficiency, and the Examiner does not
contend otherwise. Accordingly, the rejections of claims 1-21 in light of Nomura, whether alone or
in combination with other references, should be reversed.
4. Hillis does not disclose the "distinguishing" limitation.
Hillis discloses a system for projecting images on a large, touch-sensitive table and
controlling the presentation of the images through "user performed touch.,,55 Figure IB depicts
users around the table, and Figure lC depicts a side view of the tabletop projection display:
51 Answer at 13 (citation omitted).
52 Dean Harris Rubine, The Automatic Recognition of Gestures, CMU-CS-91-202 (Dec. 1991) (unpublished Ph.D.
dissertation, Carnegie Mellon University).
53 Int'l Pub. No. WO 03/081458.
54 U.S. Pat. No. 6,757,673.
55 See Hillis at 1:29-31,2:60-3:3.
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'--
-"
/
FIG,1B FIG.1C
The system interprets user gestures by "determin[ing] whether activity of the current [user]
contact [with the table] matches a predetermined pattern.,,56 The pattern may use any of a variety of
factors, including position, movement, velocity, or force, to choose the operation from a dictionary
of gestures. 57 In response to these gestures, the system may take certain actions, such as "panning,
zooming, rotating, and the like.,,58
Even applying the Examiner's construction, Hillis still would not disclose
"distinguishing" between one input and two or more inputs. Hillis discloses only a general gesture
identification scheme based on position, movement, velocity, and force of input points-not a
specific test for one input versus more than one input. 59 Matching these various factors against a
"gesture dictionary" to determine which action to take does not constitute "distinguishing" one input
from more than one input, and Hillis does not explain how these gestures would be distinguished
(whether based on number of input points or otherwise). The Examiner also argues that Hillis
discloses distinguishing a third input point because it "ignores" a third contact location until another
is released.
60
But this is a precursor step that takes effect before gestures are identified through
56 [d. at 7:46-47.
57 [d. at 7:51-54; see also Nieh Decl. <J[ 25.
58 Hillis at 8 :4-8.
59 [d. at 7:51-54; Nieh Dec!. <J[ 25.
60 Answer at 23 (quoting Hillis at 7:9-14).
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matching in the gesture dictionary.61 As a result, it does not remedy Hillis's failure to disclose any
specific "distinguishing" algorithm. Hillis therefore cannot anticipate any claim of the '915 patent
(ground 1).
The references that the Examiner proposes to combine with Hillis-Lira (ground 2) and
Makus (ground 3)-do not cure this deficiency, and the Examiner does not contend otherwise.
Accordingly, the rejections of claims 1-21 in light of Hillis, whether alone or in combination with
other references, should be reversed.
B. The References Do Not Teach the "Event Object" Limitation (All Claims).
1. The broadest reasonable construction of the "event object" limitation
requires object-oriented programming.
Each independent claim of the '915 patent requires "creating an event object in response to
user input." As the use of the word "object" implies, the broadest reasonable construction of "event
object" requires the use of object-oriented programming.
This interpretation is consistent with the plain meaning of the term and the understanding of
one of ordinary skill in the art. According to the Microsoft Press Computer Dictionary, "object"
means:
1. Short for object code (machine-readable code). 2. In object-
oriented programming, a variable comgrising both routines and data
that is treated as a discrete entity. . .. 2
As Dr. Nieh also has explained, the phrase "event object" does not encompass assembly code,
procedural programming, message-passing mechanisms, or mere machine-readable outpUt.
63
61 See Hillis at 7:9-14,7:46-55.
62 Microsoft Press Computer Dictionary (5th ed. 2002) at 372. The first definition, which refers to machine code or
compiled or assembled source code, obviously does not apply.
63 See Nieh Decl. n 19, 26 (distinguishing "event object" from assembly code, procedural programming, message-
passing mechanisms, and mere machine-readable output).
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This interpretation of "event object" also is consistent with the '915 patent claim language
and specification. The claims refer to a "scroll call" or "gesture call" (i.e., routine) and a "view
associated with the event object" (i.e., data). The specification also suggests that the event object
involves both routines and data:
In certain embodiments, a user input in the form of two or more points
is received by a display of a device. A multi-touch driver of the device
receives the user input and packages the event into an event object. A
window server receives the event object and determines whether the
event object is a gesture event object. If the window server determines
that a gesture event object has been received, then user interface
software issues or transfers the handle gesture call at block 1302 to a
software application associated with the view. The software
application confirms that a gesture event has been received and passes
the handle gesture call to a library of the user interface software. 64
2. The Examiner's construction of "event object" is unreasonable.
The Examiner contends that "a reasonable interpretation ... [of] the claimed 'event object'
is an entity or 'package' of data representing the user input event.,,65 The Examiner's construction
is unreasonably broad for several reasons.
First, it does not recognize the plain meaning of the word "object" to one of ordinary skill in
the art, as discussed above. The Examiner's construction essentially would allow any user input
data to qualify as an "event object." Second, it ignores the claims' references to scroll and gesture
"calls" and "views associated with the event object." Finally, the Examiner bases his construction
on a single excerpt from the specification referring to "receiv[ing] the user input and packag[ing]
the event into an event object.,,66 By doing so, the Examiner ignores the specification's subsequent
references to "gesture calls." For all of these reasons, the Examiner's construction cannot reflect the
broadest reasonable construction.
64 '915 patent at 12:30-38 (emphasis added).
65 Answer at 24.
66 [d. (citing '915 patent at 12:30-32).
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3. The combination of Nomura and Rubine does not disclose the claimed
"event object."
The combination of Nomura and Rubine forms the basis for grounds 4,5, and 6. The
Examiner implicitly concedes that Nomura does not disclose "event objects," as he relies on Rubine
for this disclosure instead.
67
But the combination of Nomura and Rubine (ground 4) also cannot disclose the claimed
"event object." Per the plain language of the independent claims, an event object is "created in
response to [the received] user input." Next, it is "determin[ed] whether the event object invokes a
scroll or gesture operation by distinguishing between a single input point applied to the touch
sensitive display that is interpreted as a scroll operation and two or more input points applied to the
touch sensitive display that are interpreted as a gesture operation.,,68 "[A]t least one scroll or
gesture call [is issued] based on invoking the scroll or gesture operation."
Rubine refers to three distinct applications-MDP, GDP, and GSCORE.
69
The MDP
application involves multi-path gestures, but is programmed in C (a procedural language) and
therefore does not involve event objects.
7o
GDP and GSCORE, by contrast, involve only single-
path gestures using a mouse?1 GDP and GSCORE are built in Objective C (an object-oriented
language) using the GRANDMA system.
72
Combining Nomura and Rubine therefore would not result in the claimed "event objects."
The combined system would lack an "event object [that] invokes a gesture operation" based on
interpreting "two or more input points applied to the touch sensitive display ... as a gesture
operation." This is because the allegedly corresponding functionality in Rubine, MDP, is not
67 See id. at 13-14 (emphasizing reliance on alleged obviousness in light of Nomura and Rubine, rather than alleged
anticipation by Nomura alone); see also Nieh Decl. <J[ 19 (explaining that Nomura does not disclose event objects).
68 (Emphasis added.)
69 See Rubine at 163; Nieh Decl. <J[ 20.
70 See Rubine at 163; Nieh Decl. <J[ 20.
71 See Rubine at 22; Nieh Decl. <J[ 20.
72 See Rubine at 163; Nieh Decl. <J[ 20.
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object-oriented. The combined system therefore would use an event object only for scrolling, but
not gesturing.
The references that the Examiner proposes to further combine with Nomura and Rubine-
Lira (ground 5) and Makus (ground 6)-do not cure this deficiency, and the Examiner does not
contend otherwise. Accordingly, the rejections of claims 1-21 in light of Nomura and Rubine,
whether alone or in combination with other references, should be reversed.
4. One would not have been motivated to combine Nomura and Rubine.
The Examiner maintains that one would have been motivated to combine Nomura and
Rubine in order to "manage Nomura's 'detection data' in a way that [was] both structured and
flexible.,,73 As Appellant explained in its Appeal Brief (at 21-22), however, the Examiner points to
nothing in Nomura identifying any data management concerns that would have prompted this
combination.
Moreover, because Nomura is a closed, specialized hardware system, its user would have
been most focused on efficiency and performance.
74
Users of Rubine's general purpose system, by
contrast, would have been focused on flexibility at the expense of performance. 75 These different
purposes would have taught away from the proposed combination by rendering Nomura
unsatisfactory for its intended purpose 76 and changing its principle of operation.
77
Although the
73 Answer at 16.
74 See Nieh Decl. <J[ 21.
75 See id.
76 See In re Gordon, 733 F.2d 900,902 (Fed. Cir. 1984); MPEP § 2143(0l)(V); accord In re Gurley, 27 F.3d 551,553
(Fed. Cir. 1994) ("A reference may be said to teach away when a person of ordinary skill, upon reading the reference,
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.").
77 See In re Ratti, 270 F.2d 810,813 (C.c.P.A. 1959) (reversing rejection where the "suggested combination of
references would ... change ... the basic principles under which the [primary reference] construction was designed to
operate"); MPEP § 2143(01)(VI).
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Federal Circuit has held that such trade-offs can render a patent non-obvious for lack of motivation
to combine,78 the Examiner does not address this performance trade-off at all.
Finally, secondary considerations demonstrate the non-obviousness of the '915 patent
claims. As Appellant explained in its Appeal Brief (at 22-23), the Patent Owner presented
substantial evidence of the iPhone' s commercial success and Samsung' s efforts to copy it during the
Apple v. Samsung litigation. The jury's verdict and large damages award in the Patent Owner's
favor were based on this evidence, at least in part.
Although the Examiner suggests that Appellant has offered no evidence linking the iPhone's
commercial success to the '915 patent, Dr. Nieh's declaration does exactly that. As he explained:
It is my understanding that the iPhone practices the claimed subject
matter of the '915 patent. Moreover, I believe that the patented feature
contributed to the widely acclaimed usability and intuitiveness of the
iPhone's touch-driven interface.
79
5. Hillis also does not disclose the claimed "event object."
Hillis forms the basis for grounds 1,2, and 3. Like the combination of Nomura and Rubine,
Hillis also does not disclose the claimed "event objects."
The Examiner implicitly concedes that Hillis alone (ground 1) does not disclose an "event
object," if construed to require object-oriented programming.
80
The Examiner instead repeats his
argument that "machine readable output" and "position history" "representing the position, size,
shape[,] and timing of each input point" constitute an "entity" or '''package' of data representing [a]
user input event.,,81 As Appellant explained in its Appeal Brief (at 26), however, Hillis does not
provide "machine readable output" "representing the user's input event" as a single "package." In
78 See, e.g., Winner Int'/. Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) ("Trade-offs often concern what
is feasible, not what is, on balance, desirable. Motivation to combine requires the latter.").
79 Nieh Decl. <J[ 13.
80 See id. n 26-27 (explaining that Hillis does not disclose event objects or views associated with an event object).
81 Compare Answer at 24 with Final Office Action, dated Mar. 19,2013, at 15.
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particular, the "detected force" information is provided as machine-readable output separately from
the "position history" information. 82
The references that the Examiner proposes to further combine with Hillis-Lira (ground 2)
and Makus (ground 3)-do not cure this deficiency, and the Examiner does not contend otherwise.
Accordingly, the rejections of claims 1-21 in light of Hillis, whether alone or in combination with
other references, should be reversed.
III. HILLIS, WHETHER ALONE OR IN COMBINATION, DOES NOT DISCLOSE A
"TOUCH-SENSITIVE DISPLAY" LIMITATION (CLAIMS 1,8, & 15)
Independent claims 1, 8, and 15 each refer to "receiving ... a user input" applied to or on a
"touch-sensitive display." Figures 4 and 5A-5C of the '915 patent depict a touch-sensitive display:
,I   "-",

/.-
: -.. ---"'-. =---. -------
f f .. : .............. -.......... " i :
, ' ,
FlO. 4 FIG .. 5A FIG.5B FIG. SC
The Examiner contends that Hillis discloses this limitation, but this is incorrect. Hillis
discloses a projector (128) that projects an image onto a table (122) with a display surface (124):
82 Hillis at 7: 15-25, 41-45 (explaining that "position history" information is provided at step 202, but "detected force"
information is provided at step 206 of Fig. 2A).
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DISPLAY SURFACE ., ..
Although Hillis's Abstract refers to a "touch-sensitive display," the table surface 124 in
Hillis does not correspond to the claimed display. The projector in Hillis, and not the display,
displays the image but is not responsive to touch.
83
While the Examiner notes that Hillis refers to
other display technologies, "such as LCDs, OLEDs, and plasma displays,,,84 nothing in Hillis
indicates that any of these other display technologies are touch-sensitive.
IV. HILLIS, WHETHER ALONE OR IN COMBINATION, DOES NOT DISCLOSE THE
"INTEGRATED" DISPLAY LIMITATION (ALL CLAIMS)
Independent claims 1, 8, and 15 each refer to a touch-sensitive display that is "integrated"
with the device, data processing system, or apparatus. The broadest reasonable interpretation of
"integrated" in the context of the '915 patent claims and specification refers to being combined into
a single physical unit. This is consistent both with the plain meaning of "integrated" and the
understanding of one of ordinary skill in the art. For example, the American Heritage Dictionary
defines "integrate" as:
83 See Nieh Decl. <J[ 28.
84 Answer Br. at 26 (citing Hillis at 4:3-6).
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l. To make into a whole by bringing all parts together; unify.
2.a. To join with something else; unite. b. To make part of a larger
unit. ... 85
This interpretation also is consistent with the specification. Figure 29 depicts device 2950,
and Figures 30A and 30B depict device 3070:
FIG. 29 FIG,30A
The specification then explains that "[t]he device 2950 may be a cellular telephone or a
device which is an integrated PDA and a cellular telephone or a device which is an integrated
media player and a cellular telephone or a device which is both an entertainment system (e.g. for
playing games) and a cellular telephone .... ,,86 The specification also explains that "[t]he device
3070 may be a cellular telephone integrated with a media player which plays MP3 files, such as
MP3 music files.,,87 Finally, the specification continues that, "[i]n some embodiments, the display
device and input device are integrated while in other embodiments the display device and input
device are separate devices.,,88
The Examiner suggests that Hillis discloses an "integrated" system. According to the
Examiner:
85 Am. Heritage Dictionary (3d ed. 1992) at 937.
86 '915 patent at 19:7-13 (emphasis added).
87 [d. at 19:66-20:2 (emphasis added).
88 [d. at 6:14-16.
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The display surface 124, the computer 126 and the projector 128 are
"combined" into the interactive display 120 and operate together as a
"unit" or as a "whole" (see Hillis at FIG. lA and column 2, lines 63-
66).89
Figure lA of Hillis (depicted above), however, plainly demonstrates that Hillis's components are
not combined into a single physical unit. The projector 128 is separate from the computer 126,
which is separate from the table 122 and display surface 124. These "various hardware
components" communicate over "interconnections,,90 and need not touch (or even exist) in the same
room. Despite the Examiner's reference to the specification, the cited excerpt (column 2, lines 63-
66) never mentions the words "combined," "unit," or "whole" to describe Hillis's system. Hillis
therefore does not disclose the "integrated" display limitation required by all claims.
V. THE REFERENCES DO NOT TEACH THE "DRAG INPUT" LIMITATION
(CLAIMS 5, 12, & 19)
Claims 5, 12, and 19 require that "determining whether the event object invokes a scroll or
gesture operation is based on receiving a drag input for a certain period of time." The Examiner
alleges that Figures 34 and 37 of Nomura and the disclosures of Hillis at column 7 disclose this
limitation.
Nomura. The Examiner's belief that Nomura teaches the "drag input" limitation continues
to be based on his contradictory interpretations of Nomura. As Dr. Nieh has explained, Figure 34 of
Nomura discloses a flow chart.
91
At step SllO, the system determines whether "there [is] contact
with two items.,,92 Based on that determination (and only that determination), the system proceeds
down one of two branches: the "N" branch (S140, S150, S160, S170, and S180), or the "Y" branch
89 Answer at 26.
90 Hillis at 2:60-63.
91 Nieh Decl. <J[ 16.
92 [d.
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(S120 and S130).93 The first path may result in a scroll operation, and the second path may result in
a gesture operation in Figure 37.
94
At page 7 of his Answer, the Examiner expressly "accept[s] Dr. Nieh's explanation of [this]
algorithm." At page 20 of his Answer, however, the Examiner points to steps S 140 ("Is the contact
point moving?"), S320 ("Did the distance between the two points become larger?"), and S340 ("Did
the distance between the two points get reduced?") as allegedly satisfying the "drag input"
limitation. The Examiner's contention cannot be correct, as the decision as to whether to proceed
down the scroll (N) branch or gesture (Y) branch already occurred at step S110. It is undisputed
that S140, S320, and S340 all occur downstream of the determination at step S110. Moreover, even
assuming otherwise, steps S140, S320, and S340 only refer to movements or distances-but not
movements or distances over "a certain time period." For this reason as well, Nomura cannot
disclose the "drag input" limitation.
Almost as an aside, the Examiner continues to emphasize that Nomura also "contemplates
testing for 'contact for fingers within a specified amount of time'" at paragraph 193.
95
The
Examiner's selective excerpt from this paragraph is both irrelevant and misleading. Paragraph 193
relates to a "search processing" embodiment in which the user can search for information
concerning, e.g., "South India" and "Lodging" by depressing both categories at the same time.
96
The entirety of paragraph 193 makes this clear:
Furthermore, this is not limited to the simultaneous contact of fingers,
but output of search information that is a logical product for contact
by fingers within a specified amount of time would also be
acceptable. 97
Hillis. Also incorrect is the Examiner's belief that Hillis teaches the "drag input"
limitation.
98
The Examiner cites Hillis's references to "move[ment] [of] the contact region ... over
93 [d.
94 [d.
95 Answer at 21.
96 Nomura n 192-196; see also n 76-79 (describing search processing functionality).
97 [d. <J[ 193 (emphasis added).
98 See Answer at 28.
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time," "the timing of each contact region," "velocity," and "force" as allegedly disclosing this
limitation.
99
None of these teachings, however, discloses receipt of a drag input for a "certain
period of time." As the Examiner implicitly concedes, "velocity ... represents the change in the
position of [a] contact over a period of time"lOO-but not necessarily a "certain" period of time.
The rejections of claims 5, 12, and 19 therefore should be reversed.
VI. THE REFERENCES DO NOT TEACH THE "RUBBERBANDING" LIMITATION
(CLAIMS 2, 9, & 16)
Dependent claims 2,9, and 16 of the '915 patent recite "rubberbanding a scrolling region
displayed within the window by a predetermined maximum displacement when the scrolling region
exceeds a window edge based on the scroll." As the Examiner agrees, the specification describes
rubberbanding as setting a "predetermined maximum displacement when the scrolled region
exceeds a display edge," which prevents a user from scrolling the content further. 101 "If a user
scrolls content of the display making a region past the edge of the content visible in the display, then
the displacement value limits the maximum amount for the region outside the content.,,102
Rubberbanding therefore is directed to and solves the specific problem of a user's scrolling to a
region outside the content.
Repeating his arguments from the final Office Action, the Examiner continues to argue that
Lira discloses the "rubberbanding" limitation. 103 Lira describes a method of reformatting content
into columns for improved viewing on a small-sized display. 104 As a user navigates the columns,
the method assesses whether the user has exceeded a specified threshold. If the user scrolls past that
99 [d. (quoting Hillis at 7:15-25, 46-65).
100 [d.
101 '915 patent at 5:36-39; see Answer at 29 ("The specification of the '915 patent describes 'rubberbanding' in terms of
'rubberbanding a scrolled region by a predetermined maximum displacement when the scrolled region exceeds a display
edge' (see the '915 patent at column 5, lines 35-40).").
102 [d. at 7:62-65.
103 Compare Answer at 29-33 ("Therefore, in the case where the width of the logical column ... ") with Final Office
Action, dated July 26,2013, at 18-21 ("Therefore, in the case where the width of the column ... ").
104 See Lira at Abstract.
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threshold, "the display is snapped to the adjacent or repositioned column.,,105 Otherwise, the display
"centers [on] the logical column.,,106 As Figure l4B from Lira illustrates:
The Examiner agrees that this is how the system of Lira operates. As the Examiner
concedes:
When the user's scrolling [in Lira] does not exceed the threshold,
the column is re-centered and snapped back "into alignment with the
display window 1205." When the user's scrolling exceeds the
threshold and "[moves] beyond the boundary" of the column, the
display window 1205 is snapped to the nearest column. 107
Lira cannot disclose the "rubberbanding" limitation. The Examiner's error continues to arise
from his conflation of "rubberbanding" with "snapping"-regardless of direction, and regardless of
whether a maximum threshold is reached. The Examiner's implicit construction of "rubberbanding"
105 Answer at 30 (quoting Lira at 15, lines 18-31).
106 [d. (quoting Lira at 15, lines 24-25).
107 [d. <J[ 193 (emphasis added).
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as permitting an accelerated movement to another region, rather than constraining movement
beyond the current region, reverses the term's actual meaning in the context of the '915 patent.
When the "rubberbanding" limitation is properly understood, Lira does not teach this
limitation. Unlike in the '915 patent, when the user in Lira exceeds the scrolling threshold, the
system of Lira does not prevent further scrolling by setting a maximum displacement value for the
scrolled content. Rather than snap back to the same column, Lira teaches that the display window
should "snap" to the next region of content, i.e., the adjacent column. This effect is the precise
opposite of rubberbanding.
In its Appeal Brief (at 31), Appellant explained why one of ordinary skill in the art would
not have been motivated to combine Lira with either Nomura or Hillis. Among other things, Lira's
method of scrolling is incompatible with that of either Nomura or Hillis. A downward motion in
Lira causes new content from below to be displayed. 108 By contrast, the same motion in Nomura
and Lira results in the display of new content from above.
109
The Examiner does not dispute this
incompatibility, but only conclusorily alleges that it "would not have prevented a person of ordinary
skill in the art from combining the teachings of the references.,,110
Appellant also previously explained that there would have been no reason to combine
Nomura or Hillis, which discloses displaying images such as maps,111 with Lira, which involves
navigating a document with internal boundaries such as a webpage.
1l2
Stretching to justify the
combination, the Examiner posits that the "rubberbanding" feature could be applied to a "logical
boundary within such maps (e.g., at the boundary of a geographical area).,,1l3 But the Examiner
offers no evidence that maps are routinely (or ever) logically divided in such a manner.
108 Lira at Fig. 14B.
109 Nomura <J[ 0067; Hillis at 8:44-53.
110 Answer at 31.
m See Nomura <J[ 0057 (describing use with "map image"); Hillis at 3:31 (referring to "imagery such as a photograph or
map").
112 See Lira at 1 (referring to "content correspond[ing] to a hypertext markup language ('HTML') page").
113 Answer at 32.
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Finally, secondary considerations again demonstrate the non-obviousness of the '915 patent
claims. In response, the Examiner again suggests that Appellant has offered no evidence linking the
iPhone's commercial success to the '915 patent. As discussed above, however, Dr. Nieh's
declaration did exactly that in his declaration. 114 For at least the preceding reasons, the rejections of
claims 2,9, and 16 involving Lira (grounds 2 and 5) should be reversed.
VII. THE REFERENCES DO NOT TEACH THE "ATTACHING SCROLL
INDICATORS" LIMITATION (CLAIMS 3, 4,10,11,17, & 18)
Dependent claims 3, 4, 10, 11, 17, and 18 of the '915 patent recite "attaching scroll
indicators to" a content or window edge. As the '915 patent explains, these scroll indicators are
attached to the display in response to "user input in the form of a mouse/finger down" and fade out
when "a mouse/finger up is then detected.,,115
The Examiner continues to argue that Makus discloses the "attaching scroll indicator"
limitation. Makus relates to the display of hierarchical data in list form on a personal digital
assistant ("PDA,,).116 The Examiner does not dispute that the system of Makus employs scroll bars
on lists only when there is more data included in a list "than can be displayed in the available space
on display screen 28 at one time.,,117 Unlike the '915 patent, Makus's bars do not appear
dynamically when a user begins to scroll the content.
The scroll bars in Makus, which are not "attached," therefore cannot satisfy the "attaching
scroll indicators" limitation. The Examiner disagrees, pointing to Figures 4 and 5 of Makus as
allegedly disclosing "before" and "after" illustrations.
1l8
The Examiner misunderstands these
figures. They do not relate to the attachment of a scroll bar to the same list, but instead the
appearance (or not) of a scroll bar on different lists depending on whether more information is
114 See Nieh Decl. <J[ 13.
115 '915 patent at 6:64-7:3.
116 See Makus at 1:13-17,6:24-41,8:51-9:1.
117 [d. at 8:64-66.
118 Answer at 33.
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Control No.: 901012,332 30 Docket No.: 106842803600(P4895USREXl)
available than can be displayed. Because Makus's scroll bars depend on the predetermined amount
of content to display rather than on a user action, there is no need to "attach" them:
   
6;l1'':'v N>,1,<\TION
      ,t.,iRUNSS - MAJ(JR _ '--'2$
AjR1JNf;$ -'
AlRUNES " IN'fEI:{NA'n{)W,l
AlRUNES -
,A.lRf'ORfS
AtRCARGO
-- , c-"" ro
FIG: 4
As in his final Office Action, the Examiner still does not show why one of ordinary skill
would be motivated to combine Makus with the other references. As Apple explained in its Appeal
Brief (at 34), map display systems like those in Nomura and Hillis do not require scroll indicators
for navigation. This is because maps lack a fixed starting position and are generally not accessed
sequentially. While the Examiner notes that maps have "a length and a width,,,119 this does not
explain why user interface elements that show relative position would be important to map users.
While the Examiner also asserts that the "slider bar 560 is a form of a 'scroll indicator,'" this
is obviously incorrect. 120 As depicted below, Hillis's slider tool allows users to move between
different layers of content, not to scroll through a single layer: 121
119 [d. at 34.
120 [d.
121 See Makus at 8:32-39.
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Finally, secondary considerations again demonstrate the non-obviousness of the '915 patent
claims. In response, the Examiner again suggests that Appellant has offered no evidence linking the
iPhone's commercial success to the '915 patent. As discussed above, however, Dr. Nieh's
declaration did exactly that in his declaration. 122 For at least the preceding reasons, the rejections of
claims 3-4, 10-11, and 17 -18 involving Makus (grounds 3 and 6) should be reversed.
* * * * *
122 See Nieh Decl. <J[ 13.
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VIII. CONCLUSION
The cited references fail to disclose multiple limitations of the claims of the '915 patent.
These include the "distinguishing," "event object," "touch-sensitive" and "integrated" display, "drag
input," "rubberbanding," and "attach[ed] scroll indicators" limitations. Because the cited references
can neither anticipate nor render obvious any claims of the '915 patent, Appellant respectfully urges
the Board to reverse the pending rejections of claims l-2l.
Appellant authorizes the Commissioner to charge the cost of any petitions or other fees due
relating to the filing of this document to Deposit Account No. 03-1952 referencing Docket No.
106842803600.
Date: July 2,2014
sf-3432677
Respectfully submitted,
By IBrian B. Hoi
Brian B. Ho
Registration No. 60,199
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Case5:11-cv-01846-LHK Document3145-3 Filed07/15/14 Page33 of 33

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