Ex Parte Alameh et al

Patent Trial and Appeal Board

Nov 20, 2018

14629895 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/629,895 02/24/2015
138858 7590 11/23/2018
Motorola/
Miller, Matthias & Hull LLP
1 North Franklin Street
Suite 2350
Chicago, IL 60606
FIRST NAMED INVENTOR
Rachid M Alameh
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.
MM01038 1019
EXAMINER
KETEMA, BENY AM
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
11/23/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ppippenger@millermatthiashull.com
docketing.mobility@motorola.com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RACHID M. ALAMEH and JIRI SLABY
Appeal 2018-005531
Application 14/629,895 1
Technology Center 2600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and JOYCE CRAIG,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Motorola Mobility,
LLC (App. Br. 2).
Appeal 2018-005331
Application 14/629,895
Disclosed Field of Invention
Appellants disclose a method and device for securing a mobile device
(e.g., cellular telephone) using iris authentication (Title, Abstract, Spec. ,r,r 1,
5, and generally Fig. 5). More specifically, infrared (IR) light emitting
devices (LEDs) are used to illuminate the iris for authentication (Spec. ,r 6),
and may be directed toward the eye using mirrors (Abstract (see claims 1,
13, 20)).
Exemplary Claims
Exemplary claims 1 and 20, with bracketed lettering and emphases
added to disputed portions of the claims, read as follows:
1. A method of IR illumination in an electronic
device having a gesture recognition system comprising a
plurality of IR LEDs and an IR receiver, the method
including:
detecting a presence of a user; sensing device operational
parameters;
determining a device operational mode based on the
sensed device operational parameters;
driving the plurality of IR LEDs to provide IR
illumination from each IR LED; and
while driving the plurality of IR LEDs, [A] directing
the IR illumination of each IR LED in a direction selected
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based at least partly on the determined device operational
mode.
20. A portable electronic device comprising:
a device housing and a plurality of IR LEDs mounted and
configured to emit IR illumination outward from the device
housing;
one or more light-steering elements associated with each
IR LED; a device state sensor system configured to sense
device parameters reflective of a device state; and
[BJ a controller configured to:
determine a device mode based on the sensed
device parameters, wherein the device mode is one of an
approach mode wherein the device is lying still
horizontally and locked, an iris mode wherein the device is
handheld and tilted within an inclination range, and a gesture
mode wherein the device is in neither the approach mode nor
the iris mode; and
drive the IR LEDs and the light-steering elements
associated with each IR LED to direct IR illumination
angularly away from a vertical device axis centered on the
device when the device mode is the approach mode, to direct
IR illumination in one of a direction parallel to the vertical
device axis and angularly inward toward the vertical device
axis when the device mode is the gesture mode, and to direct
IR illumination to a point that is within one foot of the device
when the device mode is the iris mode.
The Examiner's Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 103 over the
combination of Alameh et al. (US 2015/0069249 Al; published Mar. 12,
2015, hereinafter "Alameh") and Neumann (US 2016/0006914 Al;
published Jan. 7, 2016). Final Act. 5-21.
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Application 14/629,895
Issues on Appeal
Appellants: (i) present arguments as to claims 1-12 as a group with
independent claim 1 as representative of the group (App. Br. 8-9; Reply Br.
1-3); (ii) argue claims 13-19 on the same basis as claim 1 (App. Br. 9); and
(iii) argue independent claim 20 separately (App. Br. 9-11). We select
claim 1 as representative of the group of claims consisting of claims 1-19,
and we will only address independent claim 1 and 20 in our analysis herein.
Based on Appellants' arguments in the Briefs (App. Br. 8-12; Reply
Br. 1-3), the following issues are presented on appeal:
( 1) Did the Examiner err in rejecting claims 1-19 under
35 U.S.C. § 103(a) over the combination of Alameh and Neumann because
the combination fails to teach or suggest the directing limitation [A] as
recited in claim 1?
(2) Did the Examiner err in rejecting claim 20 under
35 U.S.C. § 103(a) over the combination of Alameh and Neumann because
the combination fails to teach or suggest limitation [BJ recited in
independent claim 20?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 5-21) in light
of Appellants' arguments in the Appeal Brief (App. Br. 8-12) and the Reply
Brief (Reply Br. 1-3) that the Examiner has erred, as well as the Examiner's
response to Appellants' arguments in the Appeal Brief (Ans. 2-7).
Claims 1-19
With regard to claim 1, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
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taken (Final Act. 6-7), and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (see Ans. 2-5).
We concur with the conclusions reached by the Examiner with regard to the
obviousness of claim 1 in view of the combination of Alameh and Neumann.
We disagree with Appellants' contentions (App. Br. 8-9; Reply Br. 1-3) that
the Examiner erred in rejecting claim 1 (and claims 2-19 grouped therewith)
because the combination of Alameh and Neumann fails to teach or suggest
limitation [A] recited in claim 1.
Specifically, Appellants have failed to show that the Examiner erred
because the arguments (App. Br. 8-9; Reply Br. 1-3) are not commensurate
in scope with the claims. Independent claim 1 does not include a limitation
requiring "each LED of a multiple LED array may be individually directed"
as Appellants' argue (Reply Br. 2). Instead, limitation [A] recited in claim 1
merely requires "directing the IR illumination of each IR LED in a direction
selected based at least partly on the determined device operational mode"
(App. Br. 13, Claims App. (see claim 20)) ( emphasis added). In other
words, each (and every) IR LED only need be directed in one and the same
direction to meet the claim language. This, Neumann, and thus, the
combination, teaches. And, Appellants even admit "Neumann directs every
IR light it has [Jin the same direction" (Reply Br. 2).
In short, we agree with the Examiner (Final Act. 6-7; Ans. 2-5) that
(i) the combination of Alameh and Neumann teaches or suggests the
limitations recited in independent claim 1, and conversely, (ii) the subject
matter recited in claim 1 encompasses the combined teachings and
suggestions of Alameh and Neumann.
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Accordingly, we sustain the Examiner's rejection of representative
claim 1, as well as claims 2-19 grouped therewith.
Claim 20
We concur with Appellants' contention (App. Br. 9-11) that the
combination of Alameh and Neumann fails to teach or suggest limitation [BJ
recited in independent claim 20. Specifically, we agree with Appellants that
the Examiner has failed to show the combination teaches or suggests all
three operational modes, especially the iris mode. Although Alameh teaches
operational modes, they are portrait and landscape modes, and have not been
shown to be encompassed by the three modes recited in claim 20, including
modes that operate to direct IR illumination: (i) "angularly away from a
vertical device axis centered on the device when the device mode is in the
approach mode"; (ii) "in one of a direction parallel to the vertical device axis
and angularly inward toward the vertical device axis when the device mode
is in the gesture mode"; and (iii) "to a point that is within one foot of the
device when the device mode is the iris mode" (App. Br. 16, Claims App.
(see claim 20)). Alameh and Neumann are silent as to the specifics of these
three recited modes.
Neither the Examiner's findings and reasoning in the Final Rejection
as to claim 20 (Final Act. 19-21 ), nor the response in the Answer (Ans. 5-
7), provide an adequately articulated rationale as to how/why "using a
particular discretion (i.e. approach mode, iris mode and gesture mode) to
describe the orientation of a portable electronic device in view of the
absence of what said mode does would be obvious" (Ans. 6). And, although
Neumann may teach directing IR illumination using microelectromechanical
systems (MEMS) mirrors, the Examiner has not adequately explained
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how/why the many details of limitation [BJ recited in claim 20 would have
been obvious to one of ordinary skill in the art at the time of Appellants'
claimed invention. At best, the Examiner leaves us to speculate as to
how/why one of ordinary skill in the art would modify the combination of
Alameh and Neumann to meet the three operational mode limitations recited
in limitation [BJ. We will not resort to speculation or assumptions to cure
the deficiencies in the Examiner's fact finding and/or reasoning. See
Application of Warner, 379 F.2d 1011, 1017 (CCPA 1967); Ex parte
Braeken, 54 USPQ2d 1110, 1112 (BP AI 1999) ( unpublished) ("The review
authorized by 35 U.S.C. [§J 134 is not a process whereby the examiner ...
invite[ s J the [BJoard to examine the application and resolve patentability in
the first instance.").
Accordingly, we do not sustain the Examiner's obviousness rejection
of claim 20.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-19 under
35 U.S.C. § 103(a) over the combination of Alameh and Neumann because
the combination teaches or suggests the directing limitation [ A J as recited in
claim 1.
(2) The Examiner erred in rejecting claim 20 under
35 U.S.C. § 103(a) over the combination of Alameh and Neumann because
the combination fails to teach or suggest limitation [BJ recited in
independent claim 20.
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DECISION
The Examiner's obviousness rejection of (i) claims 1-19 is affirmed,
and (ii) claim 20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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