Ex Parte Grimme et alDownload PDFPatent Trial and Appeal BoardOct 30, 201814091767 (P.T.A.B. Oct. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/091,767 11/27/2013 58127 7590 10/31/2018 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 FIRST NAMED INVENTOR Jason Grimme 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. RPS920130139USNP(710.280) 6969 EXAMINER DINH,DUCQ ART UNIT PAPER NUMBER 2692 MAIL DATE DELIVERY MODE 10/31/2018 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) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON GRIMME and RODD. WALTERMANN 1 Appeal 2018-003635 Application 14/091,7672 Technology Center 2600 Before JAMES R. HUGHES, JOHN P. PINKERTON, and BETH Z. SHAW, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1-21, which constitute all the claims 1 Appellants identify Lenovo (Singapore) PTE. LTD, as the real party in interest. See Appeal Br. 3. 2 The application on appeal has an effective filing date of Nov. 27, 2013. Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the U.S. Code(§§ 102, 103) are applicable. See Manual of Patent Examining Procedure (MPEP) § 2159. 02 (The amended sections "apply to any patent application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013."). Appeal 2018-003635 Application 14/091,767 pending in this application. Final Act. 1. 3 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants 'Invention The invention at issue on appeal generally concerns devices that "supplement or supplant conventional forms of writing" (Spec. 1 ), including devices, computer program products, and methods for detecting user motion utilizing a muscle activity sensor ( of a wearable information handling device worn by a user), where the user motion is a motor movement of the user irrespective of movement of the wearable information handling device. The method also detects motion of the wearable information handling device utilizing a different sensor (distinct from the muscle activity sensor). The method processes the user motion and the motion of the wearable information handling device into user motion data utilizing the wearable information handling device, determines that the user motion data is handwriting input, and converts the user motion data into a digital handwriting. Spec. ,r,r 3---6, 17, and 28-33; Abstract. 3 We refer to Appellants' Specification ("Spec.") filed Nov. 27, 2013; Appeal Brief ("Appeal Br.") filed Sept. 19, 2017; and Reply Brief ("Reply Br.") filed Feb. 21, 2018. We also refer to the Final Office Action ("Final Act.") mailed Apr. 19, 2017; and Examiner's Answer ("Ans.") mailed Dec. 21, 2017. 2 Appeal 2018-003635 Application 14/091,767 Illustrative Claim Independent claim 1, reproduced below with key disputed limitations emphasized, further illustrates the invention: 1. A method, comprising: detecting, via a muscle activity sensor of a wearable information handling device worn by a user, a user motion, wherein the user motion comprises a motor movement of the user irrespective of movement of the wearable information handling device; detecting, via a sensor different from the muscle activity sensor, motion of the wearable information handling device; processing, via the wearable information handling device, the user motion and the motion of the wearable information handling device into user motion data; determining, using a processor, that the user motion data is handwriting input; and converting, using the processor, the user motion data into a digital handwriting input. Rejections on Appeal 1. The Examiner rejects claims 1-21 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. See Final Act. 2-3. 2. The Examiner rejects claims 1-21 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. See Final Act. 3--4. 3. The Examiner rejects claims 1-21 under 35 U.S.C. § 103 as being unpatentable over Nasiri et al. (US 2012/0007713 Al, published Jan. 12, 2012) ("Nasiri"), and Shen (US 6,848,083 B2, issued Jan. 25, 2005). See Final Act. 4--8. 3 Appeal 2018-003635 Application 14/091,767 ISSUES Based upon our review of the record, Appellants' contentions, and the Examiner's findings and conclusions, the issues before us follow: 1. Did the Examiner err in finding Appellants' claims 1-21 fail to comply with the enablement requirement under 35 U.S.C. § 112(a)? 2. Did the Examiner err in finding Appellants' claims 1-21 fail to comply with the written description requirement under 35 U.S.C. § 112(a)? 3. Did the Examiner err in finding the combination ofNasiri and Shen would have taught or suggested: detecting, via a muscle activity sensor of a wearable information handling device worn by a user, a user motion, wherein the user motion comprises a motor movement of the user irrespective of movement of the wearable information handling device; [and] processing, via the wearable information handling device, the user motion and the motion of the wearable information handling device into user motion data ( claim 1 ), within the meaning of Appellants' claim 1 and the commensurate limitations of claims 11, 20, and 21? ANALYSIS Enablementunder35 US.C. § 112(a) The Examiner rejects claims 1-21 as failing to comply with the enablement requirement. See Final Act. 2-3; Ans. 2-3. Specifically, the Examiner states: the specification is not enabling as to how one of ordinary skill would actually detecting a user motion irrespectively of movement of the wearable device, e.g., the wearable device is moved respectively with the user motion, in order to detect the 4 Appeal 2018-003635 Application 14/091,767 user motion, the wearable device must be move so that the motion sensor to detect user motion in the wearable device can obtain user motion data (Final Act. 3 ( emphasis omitted)). Appellants contend that their Specification, as originally filed, supports the disputed claim language. See Appeal Br. 16-17; Reply Br. 18- 19. For example, Appellants contend that the recited "muscle activity sensor" in claim 1 is described in paragraph 30 of the originally filed Specification as an "electrical or optical sensor[] of the wearable device, e.g., muscle activity sensor[], to detect refined motor movements." Appeal Br. 16 (quoting Spec. ,r 30). We agree with Appellants. Appellants' Specification discusses the disputed language and its functionality. See Appeal Br. 16-17; Reply Br. 18-19. The test for enab lement is whether Appellants' Specification would teach one of ordinary skill in the art how to make and use the claimed invention without undue experimentation. See MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1380-81 (Fed. Cir. 2012). Accordingly, Appellants persuasively argue that the Specification describes, supports, and enables the disputed language. The Examiner, on the other hand, misconstrues the disputed claim limitation and does not present any discussion of undue experimentation. The limitation in question does not proscribe movement of the wearable device, but rather requires detection of movement distinct from that of the wearable device. Such movement is detected utilizing, e.g., an optical sensor. See Spec. ,r 30. Consequently, the Examiner erred in rejecting claims 1-21 as failing to comply with the enablement requirement. Accordingly, we reverse the Examiner's § 112(a) enablement rejection of claims 1-21. 5 Appeal 2018-003635 Application 14/091,767 Written Description under 35 USC§ l 12(a) The Examiner rejects claims 1-21 as failing to comply with the written description requirement. See Final Act. 3--4; Ans. 2-3. Appellants contend that the Specification, as originally filed, supports the disputed claim language. See Appeal Br. 16-17; Reply Br. 18-19. The test for sufficiency under the written description requirement "is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company, 598 F.3d 1336, 1351 (Fed. Cir. 2010). Appellants explain that the disputed claim language-"detecting ... a user motion ... [that] comprises a motor movement of the user irrespective of movement of the wearable information handling device" ( claim 1 }-is accomplished utilizing the recited "muscle activity sensor" in claim 1, which is described in the Specification as an "electrical or optical sensor." App. Br. 16 (quoting Spec. ,r 30); see discussion (supra) regarding enablement. The Specification describes and supports the disputed language. We find the above-described subject matter from Appellants' Specification provides sufficient written description support for the claimed features the Examiner found lacking in such support. Consequent! y, the Examiner erred in rejecting claims 1-21 as failing to comply with the written description requirement. Accordingly, we reverse the Examiner's§ 112(a) written description rejection of claims 1-21. The Obviousness Rejection under 35 USC§ 103 The Examiner rejects independent claim 1 (as well as independent claims 11, 20, and 21) as being obvious in view ofNasiri and Shen. See 6 Appeal 2018-003635 Application 14/091,767 Final Act. 4--7; Ans. 3--4. Appellants contend that the Examiner does not provide a proper rationale for combining Nasiri and Shen and that the combination does not teach the disputed limitations of claim 1. See Appeal Br. 17-23; Reply Br. 19-25. Specifically, Appellants contend, inter alia, that neither Nasiri nor Shen describe the recited wearable information handling device including a muscle activity sensor that detects a user motion irrespective of movement of the wearable information handling device (i.e., regardless of and/or distinct from the movement of the wearable information handling device). See id. More specifically, Appellants contend "Nasiri does not teach both detecting a user motion and detecting a motion of the wearable information handling device. Rather, Nasiri only teaches detecting a motion of the wearable information handling device." Appeal Br. 20. Appellants further contend "Shen ... teaches a system which 'senses the user's wrist muscle movements due to the user's hand digit movements representing the keyboard character intended for input to the computer system."' "Specifically, Shen teaches a system which identifies the angles of the user's fingers to determine which keyboard character the user would be touching, as if a user were typing on a keyboard." Appeal Br. 22 (quoting Shen col. 4, 11. 16-19 and citing Shen col. 5, 11. 15-56). We agree with Appellants that the Examiner-cited portions ofNasiri and Shen do not describe wearable information handling device including a muscle activity sensor that detects a user motion irrespective of movement of the wearable information handling device. See Appeal Br. 17-23; Reply Br. 19-25. In particular, we agree with Appellants that Nasiri does not describe the recited motion detection utilizing a muscle activity sensor (see Appeal Br. 20-22; Reply Br. 22-24; Nasiri ,r,r 33-39, 46), and Shen does not 7 Appeal 2018-003635 Application 14/091,767 describe the disputed feature of detecting motion utilizing a muscle activity sensor regardless of the motion of the wearable information handling device (see Appeal Br. 22-23; Reply Br. 24--25; Shen 4:16-19, 5:15-56). The Examiner does not sufficiently explain how the cited portions ofNasiri and Shen may be combined to teach or suggest these features. As explained by Appellants, nothing in the cited collective teachings ofNasiri and Shen would have suggested using a muscle activity sensor in a wearable device to detect motor movement of a user such that the motion (user motion and wearable device motion) may be processed to determine handwriting input. See Appeal Br. 20-23; Reply Br. 22-25. As further pointed out by Appellants, it is also unclear how the cited portions ofNasiri and Shen would be combined to teach the disputed feature. See id. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of N asiri and Shen renders obvious Appellants' claim 1. Independent claims 11, 20, and 21 include limitations of commensurate scope. Claims 2-10 and 12-19 depend on, and stand with, claims 1 and 11, respectively. CONCLUSIONS The Examiner erred in rejecting claims 1-21 under 35 U.S.C. § 112(a). The Examiner erred in rejecting claims 1-21 under 35 U.S.C. § 103. DECISION We reverse the Examiner's rejection of claims 1-21. REVERSED 8 Copy with citationCopy as parenthetical citation