Ex Parte KENNEDY

Patent Trial and Appeal Board

Oct 17, 2018

12609980 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/609,980 10/30/2009
69753 7590 10/19/2018
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Peter KENNEDY
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.
106842050701
(P3207USC1)
CONFIRMATION NO.
9516
EXAMINER
PIZIALI, JEFFREY J
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER KENNEDY
Appeal2017-001929 1
Application 12/609,9802
Technology Center 2600
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 1, 2, 7, 24--26, 28, and 29. Claims 3-6, 8-23, and
27 are withdrawn from consideration. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b ).
We reverse.
1 An oral hearing was held for this appeal on October 9, 2018.
2 Appellant identifies Apple Inc. as the real party in interest. (App. Br. 2.)
Appeal2017-001929
Application 12/609,980
THE INVENTION
Appellant's disclosed and claimed invention is directed to generating
a touch signal with a signet, recognizing the signet, and performing an action
associated with the signet. (Abstract.) Independent claim 1, reproduced
below, is illustrative of the subject matter on appeal:
1. A method, comprising:
generating a touch signal with a signet on a touch
sensitive display, the touch sensitive display having at least one
input to an associated computer processor, the touch signal
representing a particular shape or pattern of the signet itself,
wherein said signet is an inanimate object;
recognizing the particular signet shape or pattern with the
associated computer processor; and
performing an action associated with the particular signet
shape or pattern.
REJECTIONS
The Examiner rejected claims 1, 2, 7, 24--26, 28, and 29 under 35
U.S.C. § 112, second paragraph, as being indefinite. (Non-Final Act. 2-9.)
The Examiner rejected claims 1, 2, 7, 24--26, 28, and 29 under
35 U.S.C. § 103(a) as being unpatentable over Humble et al. (US 4,792,018,
issued Dec. 20, 1988), Busch et al. (US 2002/0028708 Al, pub. Mar. 7,
2002), Fraser et al. (US 5,620,061, issued Apr. 15, 1997), and Bellis, Jr. et
al. (US 2003/0024982 Al, pub. Feb. 6, 2003). (Non-Final Act. 10-14.)
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Application 12/609,980
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issues: 3
First Issue: Whether the Examiner erred in concluding claims 1, 2, 7,
24--26, 28, and 29 are indefinite. (App. Br. 9--17.)
Second Issue: Whether the Examiner erred in finding the combination
of Humble, Busch, Fraser, and Bellis teaches or suggests the limitations in
independent claim 1. (App. Br. 17-31.)
ANALYSIS
First Issue
During prosecution of a patent application, an application claim is
rejected under 35 U.S.C. § 112, first paragraph "when it contains words or
phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014); see also MPEP § 2173.02(I) (Rev. 07.2015, Nov. 2015)
(advising examiners that a rejection for indefiniteness is appropriate "after
applying the broadest reasonable interpretation to the claim, if the metes and
bounds of the claimed invention are not clear").
For claim 1, the Examiner concludes that the phrase "touch sensitive
display" is indefinite because it is not defined in the claims or specification,
and "sensitive" is a "purely subjective." (Non-Final Act. 3.) Nonetheless,
3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 18, 2016) (herein, "App.
Br."); the Reply Brief (filed Nov. 15, 2016) (herein, "Reply Br."); the Non-
Final Office Action (mailed June 18, 2015) (herein, "Non-Final Act."); and
the Examiner's Answer (mailed Sep. 15, 2016) (herein, "Ans.") for the
respective details.
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Application 12/609,980
touch sensitive displays are well known in the context of computer input
devices. Appellant's specification states:
Touch screens, in particular, are becoming increasingly
popular because of their ease and versatility of operation as
well as to their declining price. Touch screens allow a user to
make selections and move a cursor by simply touching the
display screen via a finger or stylus. For example, a user may
make a selection by pointing directly to a graphical object
displayed on the display screen. The graphical object may for
example correspond to an on-screen button for performing
specific actions in the computer system. In general, the touch
screen recognizes the touch and position of the touch on the
display screen and the computer system interprets the touch
and thereafter performs an action based on the touch event.
There are several types of touch screen technologies including
resistive, capacitive, infrared and surface acoustic wave.
(Spec. ,r 4.) The Examiner points out that the original specification,
including the original claims, does not use the term, "touch sensitive
display." (Ans. 18.) However, this is accounted for by the fact that the
original claims were directed to a "touch sensitive surface." (Spec. 25
( original claim 1 ).) According to the specification, a touch screen "may be
integrated with the display device ... or it may be a separate component."
(Spec. ,r 39.) That Appellant elected to narrow the claims to cover only
touch screens rather than all touch sensitive surfaces does not create any lack
of clarity in the claim.
The Examiner also concludes the phrase, "a particular shape," in
claim 1 is indefinite because it is a relative term that is not defined in the
claims or specification, and "particular" is a purely subjective term. (Non-
Final Act. 3.) However, in the context of claim 1, a "particular shape" ( or a
"particular pattern") of a signet is one which can generate a touch signal that
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Application 12/609,980
represents the shape ( or pattern), and be recognized by a computer
processor. (App. Br. 11.) The term is broad, but not indefinite. In re
Miller, 441 F.2d 689 (CCPA 1971).
The Examiner posits a number of additional indefiniteness rejections
based on assertions of lack of antecedent basis for various words and
phrases: "pattern" in lines 4, 6, and 8 of claim 1, and in claims 25 and 26;
"of the signet itself' and "the particular signet shape" in claim 1; "contact"
and "the particular shape of the signet" in claim 7; "document" in claim 24;
"the signet shape," "raised," and "recessed portion" in claim 25; and "pattern
of the signet" in claim 26. (Non-Final Act. 3-8.) Based on our review of
the claims, there is no lack of clarity with respect to these words and
phrases, and therefore no reasonable basis for any of these rejections.
The Examiner further concludes that the limitation of claim 26, "the
sensor nodes activating when the signet is pressed against the touch sensitive
display" ( emphasis added), is indefinite because it is "unclear whether the
conditional step may not occur." (Non-Final Act. 6-7.) However, claim 1
affirmatively requires "generating a touch signal with a signet on a touch
sensitive display," which necessarily means that, for its dependent claim 26,
the signet is pressed against the touch sensitive display, and therefore the
claim does require the step to occur. (App. Br. 15.)
Finally, the Examiner concludes the terms "promotion," "promotional
signet," and "winning signet" of claims 28 and 29 are subjective, undefined,
relative terms. (Non-Final Act. 8.) The specification explains:
In another embodiment, the action is configured to open
a particular program or web site. This may be [done] in
conjunction with a promotional signet. If the owner of the
signet has the winning signet the web site may indicate that
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Appeal2017-001929
Application 12/609,980
the user has won something. The promotional signet may be
bundled with other products or given out as for example at a
trade show. In addition, there may be a promotional kiosk for
receiving the promotional signets. That way, the owner can
readily determine if they won anything.
(Spec. ,r 74.) When considered in light of the specification, these terms,
although broad, are not unclear.
Second Issue
For the independent claim 1 limitation, "generating a touch signal
with a signet on a touch sensitive display ... the touch signal representing a
particular shape or pattern of the signet itself," the Examiner relies on the
disclosure in Humble of an "operator-unattended" checkout counter that
includes a touch sensitive display screen, a conveyor belt upon which
purchased goods are place, an "electronic curtain" made up of an array of
LED light beams that scans the articles as they pass by, and a weight sensor
in the conveyor belt that weighs the articles. (Non-Final Act. 10; Humble
Figs. 1, 2; col. 2, 11. 47--49, col. 4, 11. 53-56, col. 5, 11. 34--42, 62---66.) The
Examiner finds:
Grocery articles/"signets" are placed directly on
Humble's conveyer. However, the conveyer is physically
connected to the display screen in a single housing (see Fig.
2). Therefore, those same grocery articles/"signets" are placed
indirectly (i.e., "through intervening elements) on the display
screen.
The combination ofHumble's display screen and
conveyer constitutes a "touch sensitive display" in two ways:
1. The display screen senses locations of touch directly
on the display screen itself.
2. The conveyer overlays a weight sensor for weighing
grocery articles/"signets" placed directly on the conveyer ( and
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Application 12/609,980
indirectly [i.e., through intervening elements] "on" the display
screen).
(Ans. 38-39.)
However, we agree with Appellant:
[ A ]s shown in Fig. 2 of Humble ... the display screen 11 is
disposed separately from the conveyor 12 and article weight
sensor 43. This is not the same as the surface of the display
including a touch sensor, what a person of ordinary skill in the
art would understand a "touch sensitive display" to be.
Additionally, the Examiner provides no rationale for why it
would be obvious to one of ordinary skill in the art to combine
these elements to create a "touch sensitive display."
Accepting arguendo the Examiner's equating of "signets" to products on a
checkout counter, neither the display screen nor the weight sensor of
Humble has anything to do with generating a touch signal representing a
particular shape or pattern of the product. The fact that these components
are in a housing that also includes a light curtain that senses product shapes
does not sufficiently support the Examiner's rejection.
The Examiner also relies on the disclosure in Fraser of a checkout
counter with an advertising display that has a transparent surface and
conveyor belt through which potential purchasers can see merchandise
displayed below. (Non-Final Act. 11; Fraser Fig. 3, col. 5, 11. 6-32.) The
Examiner explains, "if [the transparent surface] were touched with enough
force, it would break-thereby making it 'sensitive."' (Non-Final Act. 11
( emphasis omitted).) This is not a reasonable interpretation of the reference
or the term "touch sensitive display," and therefore this reference does not
support the Examiner's rejection. The Examiner does not rely on Busch or
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Application 12/609,980
Bellis as teaching or suggesting the "touch sensitive display" requirement of
claim 1.
Accordingly, we are constrained by the record to find the Examiner
erred in rejecting independent claim 1.
CONCLUSION
For the reasons stated above, we do not sustain the indefiniteness
rejections of the claims, and do not sustain the obviousness rejection of
claim 1 over Humble, Busch, Fraser, and Belli. We also do not sustain the
obviousness rejections of claims 2, 7, 24--26, 28, and 29 over Humble,
Busch, Fraser, and Belli, which claims depend from claim 1.
DECISION
We reverse the Examiner's rejections of claims 1, 2, 7, 24--26, 28,
and 29.
REVERSED
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