Ex Parte Hotelling et alDownload PDFPatent Trial and Appeal BoardMay 5, 201613351096 (P.T.A.B. May. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/351,096 01/16/2012 69753 7590 05/09/2016 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 Steven P. Hotelling 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. 106842051502 5072 EXAMINER NGUYEN, JIMMY H ART UNIT PAPER NUMBER 2696 NOTIFICATION DATE DELIVERY MODE 05/09/2016 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): EOfficeLA@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN P. HOTELLING, CHRIS LIGTENBERG, DUNCAN KERR, BARTLEY K. ANDRE, JOSHUA A. STRICKON, BRIAN Q. HUPPI, IMRAN CHAUDHRI, GREG CHRISTLE, and BAS ORDING Appeal2014-005993 Application 13/351,0961 Technology Center 2600 Before ROBERT E. NAPPI, LARRY J. HUME, and STACY B. MARGOLIES, Administrative Patent Judges. MARGOLIES, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a) from the rejection of claims 1-7 and 9-21. No other claims are pending. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 2. Appeal2014-005993 Application 13/351,096 SUMMARY OF THE INVENTION The invention is generally described as a portable computer with a touchpad that is wider than that of conventional portable computers. See Spec. iTiT 2, 3, 6. Claim 1 is illustrative of the subject matter on appeal and is reproduced below (with disputed limitations emphasized): 1. A portable computer, comprising: a display assembly coupled to a base assembly; a touchpad disposed on the base assembly, wherein the touchpad has a width that is half or greater than half a width of the base assembly and the touchpad includes a plurality of predefined regions, wherein the touchpad can detect an object in contact with a surface at any position on the touchpad within a first predefined region of the plurality of predefined regions; and a processor coupled to the touchpad, wherein, in response to the processor determining that the contact is unintentional, the processor deactivates the first predefined region independently of a second predefined region of the plurality of predefined regions. REJECTIONS2 The Examiner rejected claims 1-7 and 9-21under35 U.S.C. § 112, first paragraph, as based on a disclosure which is not enabling. Non-Final Act. 8-9. 2 We note that the Examiner withdrew the separate rejection (Non-Final Act. 7-8) of claims 2, 3, 10, 11, 16, and 17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 2. 2 Appeal2014-005993 Application 13/351,096 The Examiner rejected claims 1-7 and 9-21under35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Non-Final Act. 6-7. ISSUES The dispositive issues in this appeal are: (i) whether the Examiner erred in concluding that a sensor for detecting a hand location is critical or essential to the practice of the invention, and because such a sensor is not recited in the claims, the claims are not enabled by the disclosure; and (ii) whether the Examiner erred in finding that the rejected claims on appeal---each of which recites "in response to the processor determining that the contact is unintentional, the processor deactivates the first predefined region independently of a second predefined region of the plurality of predefined regions"-fail to meet the written description requirement. ANALYSIS Enablement Appellants argue that their specification describes examples of the present invention without a hand sensor, and therefore the Examiner's enablement rejection for failure to recite the hand sensor in the claims is erroneous. App. Br. 6, 7-8. Specifically, Appellants argue that paragraphs 7 and 25 of the specification describe examples "without the allegedly critical hand sensor" and "make[] it clear that the invention can function as intended without the need for the hand sensor .... " Id. at 8. Appellants also cite paragraph 44 of the specification, which states that an embodiment of the portable computer system "supports a wide touchpad and/or hand sensor." Spec. i-f 44; see also App. Br. 8. Appellants assert that a skilled 3 Appeal2014-005993 Application 13/351,096 artisan "would conduct the contact patch analysis techniques described in the specification without utilizing an output" from the hand sensor. App. Br. 8. The Examiner responds that the cited embodiment of paragraphs 7 and 25 in which the touchpad possesses the ability to accept the intentional contact and reject the unintentional contact is directed to a different embodiment than the embodiment to which the claims are drawn. Ans. 6-7; see also Non-Final Act. 3--4. Specifically, the Examiner concludes that the claims require that the processor-but not the touchpad---determine that the contact is unintentional. Ans. 6-7. The Examiner also observes that in response to the written description rejection, Appellants rely on a description of a different embodiment---one that that requires a hand sensor. Id. at 7. We are persuaded that the Examiner erred. The Examiner's enablement rejection is premised on a finding that a sensor that determines the hand location is critical or essential to the practice of the inventions recited in independent claims 1, 9, and 15. See Ans. 3--4, 6-7; Non-Final Act. 8-9. We agree with Appellants, however, that the specification discloses the touch pad can be used to determine unintentional contact, thus showing that the device can function without a hand sensor. Spec. i-fi-17, 25. We therefore do not sustain the Examiner's enablement rejection of claims 1-7 and 9-21. Written description Appellants argue that the specification provides ample support for "the processor deactivat[ing] the first predefined region independently of a second predefined region of the plurality of predefined regions," as recited 4 Appeal2014-005993 Application 13/351,096 in claims 1, 9, and 15. App. Br. 4-5. Specifically, Appellants argue that paragraphs 4 7 and 50 of the specification disclose that the various contact patch acceptance and rejection techniques may be carried out by a processor, and that paragraphs 29 and 32 disclose that certain predefined regions of the touchpad may be deactivated independently of other predefined regions of the touchpad. Id. Appellants argue that these disclosures sufficiently disclose the claim limitation. Id. The Examiner responds that, because the specification discloses that the touchpad itself or the sensor may deactivate regions of the touchpad, the disclosure does not inherently provide support for the claim limitation of the processor deactivating a region of the touchpad. Ans. 4-5. The Examiner finds that the disclosure in the specification that the processor can reject a contact patch does not disclose independently deactivating predefined regions as claimed. Ans. 5---6. The Examiner also finds that paragraph 32 of the specification does not explicitly disclose that the deactivation is executed by the processor. Id. at 6. We are persuaded that the Examiner erred. The specification as a whole discloses to one of ordinary skill in the art a processor deactivating one predefined region of a touchpad independently of another predefined region. See, e.g., Spec. i-fi-132, 47, Fig. 11. Paragraph 47 discloses that "aspects of ... either accepting or rejecting a contact patch on touchpad 224 may be embodied, at least in part, in software[;] [t]hat is, the techniques may be carried out" by a "processor ... executing sequences of instructions contained in a memory .... " Spec. i1 4 7. The same paragraph also states that "[i]n various embodiments, hardwired circuitry may be used in combination with software instructions to implement the present invention." 5 Appeal2014-005993 Application 13/351,096 Id. Thus, to a skilled artisan, the disclosure in paragraph 4 7 that a processor may execute aspects of rejecting a contact patch on the touchpad applies to the functionality described in paragraph 32 of selectively deactivating one touchpad region and not another.3 We therefore do not sustain the Examiner's written description rejection of claims 1-7 and 9-21. DECISION We reverse the Examiner's rejection of claims 1-7 and 9-21. REVERSED 3 Sufficiency of written description requires that the original disclosure reasonably convey to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of filing. The exact level of detail required depends upon "the nature and scope of the claims and on the complexity and predictability of the relevant technology." See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). In this Appeal, we find the level of detail provided in Appellants' specification, as discussed, infra, is sufficient for a person of ordinary skill in the art to appreciate Appellants' possession of the claimed invention. 6 Copy with citationCopy as parenthetical citation