Ex Parte Kang et al

Patent Trial and Appeal Board

Oct 13, 2016

13470885 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/470,885 05/14/2012
22879 7590 10/17/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jinman Kang
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.
82964798 6983
EXAMINER
DA VIS, TONY 0
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINMAN KANG and CHARLES JIA
Appeal2015-005158
Application 13/470,885
Technology Center 2600
Before JUSTIN BUSCH, NATHAN A. ENGELS, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-20, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b)
We REVERSE.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. (App. Br. 2.)
Appeal2015-005158
Application 13/470,885
STATEivIENT OF THE CASE
Introduction
Appellants' invention generally relates to a "method for recognizing a
command to a system with a depth sensor." (May 14, 2012 Specification
("Spec.") i-f 17 .) Claim 1 is illustrative, and is reproduced below:
1. A method for recognizing a command with a depth sensor,
compnsmg:
monitoring a tangible reference at a reference distance
from a depth sensor;
maintaining a virtual reference approximately on
calibrated three dimensional coordinates derived from said
reference distance, said virtual reference intermediary to said
tangible reference and said depth sensor;
maintaining a touch space between said virtual reference
and a touch boundary separated from said virtual reference by a
touch distance; and;
recognizing a command when a predetermined object
enters said touch space.
Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Gokturk et al.
("Gokturk")
Kobayashi
Miyazawa et al.
("Mi yaza wa")
Newton et al.
("Newton")
US 2003/0156756 Al Aug. 21, 2003
US 2005/0041216 Al Feb.24,2005
US 2011/0175829 Al July 21, 2011
US 2011/0205186 Al Aug. 25, 2011
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Appeal2015-005158
Application 13/470,885
Claims 1--4, 7-9, 11, 12, 14, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Miyazawa in view of Newton. (See
Final Office Action (mailed June 27, 2014) ("Final Act.") 2-10.)
Claims 5, 6, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miyazawa, in view Newton, and further in view of
Gokturk. (See Final Act. 10-12.)
Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyazawa, in view Newton, and further in view of
Kobayashi. (See Final Act. 12-13.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 1, the Examiner finds that "Miyazawa teaches
all of the claimed limitations except said virtual reference intermediary to
said tangible reference and said depth sensor." (Final Act. 4, emphasis
added.) However, according to the Examiner, "[i]n a similar field of
endeavor, Newton discloses Imaging Methods and Systems for Position
Detection [and i]n particular, Newton teaches said virtual reference
intermediary to said tangible reference and said depth sensor." (Id. at 3.)
The Examiner further finds that:
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to position said virtual
reference intermediary to said tangible reference and said depth
sensor, since it has been held to be within the general skill of a
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Appeal2015-005158
Application 13/470,885
worker in the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious design
choice.
(Id. at 4, emphasis omitted.)
Appellants contend that the:
modification of Miyazawa in the way proposed by the Action
would render the invention of the primary reference inoperable
for its intended purpose ... because [if] Miyazawa has been
modified by placing the described location . . . between the
tangible surface and the depth sensor, [it] would require a user
to physically break through the depth sensor [in Miyazawa]
thereby damaging the sensors.
(App. Br. 11-12, emphasis in original.) The Examiner disagrees and
clarifies that:
[t]he modification suggested by the exammer was a
replacement of Miyazawa 's capacitive depth sensor (the
plurality of electrostatic sensors) on the operation surface of the
capacitive touch panel 104 B by a multiple cameras 112 based
depth sensor of _Newton . . . . Such modification would require
putting two external to the operation surface cameras 112 and
thus would not require a user to physically break through the
depth sensor thereby damaging the sensors.
(Ans. 6, emphases added, emphasis omitted.) Appellants reply that:
in removing the electrostatic sensors in Miyazawa, the Answer
has also removed the ability of any device (including the
cameras of Newton) to "maintain[ ] a virtual reference ... ,"
[to] "maintain[] a touch space . . . " or [to] create "a touch
boundary ... because the Answer attempts to remove from the
device of Miyazawa a sensor that allegedly maintains a virtual
reference and touch space as well as determines a touch
boundary. Due to the nature of the electrostatic sensors in
Miyazawa, their removal would result in a complete removal of
these elements and such a combination of Miyazawa with
Newton does not then describe then describe or suggest all the
elements recited in claim 1.
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Appeal2015-005158
Application 13/470,885
/~ .. / .. • .. .. .. >. ') "TT T • '.. .l .... ' '.. ' '.. .. '
~Kep1y b, empnas1s aaaea.r we agree wnn Appellants mat me replacement
of the electrostatic sensors in Miyazawa with the cameras of Newton makes
the mapping of Miyazawa to the other limitations unclear. For example, in
the Final Office Action, the Examiner points to the electrostatic sensors in
Miyazawa, rather than to the cameras of Newton, as the depth sensor used
for "monitoring a tangible reference at a reference distance from a depth
sensor." (See Final Act. 2-3 ("Miyazawa teaches A method for recognizing
a command ... with a depth ... sensor ... comprising: monitoring a
tangible reference ... from a depth sensor (paragraph 54, fig. 4)"), emphasis
in original.) The Examiner does not explain how this limitation is performed
using the cameras of Newton instead of the electrostatic sensors in
Miyazawa (as described in paragraph 54 ofMiyazawa).
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 103 rejection of claim
1.3 We also do not sustain the 35 U.S.C. § 103 rejection of claims 2-10,
which depend from claim 1. Independent claims 11 and 14 contain a similar
limitation at issue and the Examiner cites to the same passages of Miyazawa
and Newton for the limitations and makes similar findings. (Final Act. 5-8;
Ans. 6 ("The limitations of independent claims 11 and 14 are similar to
those found in claim 1 and therefore the arguments above would apply to
their rejection also.").) Thus, for the same reason, we do not sustain the
2 Appellants' Reply Brief does not contain page numbers other than for the
first page. We will refer to the pages starting from the first page of the brief.
3 Because we do not sustain the Examiner's rejection for the reasons
discussed herein, we need not address Appellants' further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on "a single
dispositive issue").
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Appeal2015-005158
Application 13/470,885
35 U.S.C. § 103 rejection of independent claims 11 and 14, as well as claims
12, 13, and 15-20, which depend from independent claim 11 or 14.
DECISION
We reverse the decision of the Examiner to reject claims 1-20.
REVERSED
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