Ex Parte Ladouceur et alDownload PDFPatent Trial and Appeal BoardFeb 17, 201512023191 (P.T.A.B. Feb. 17, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NORMAN M. LADOUCEUR and STEVEN H. FYKE ____________ Appeal 2012-009030 Application 12/023,191 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 4–6, 11–19, 22, 23, and 25–27, which are all the claims pending in the application. Claims 3, 7–10, 20, 21, 24, and 28 were cancelled during prosecution. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2012-009030 Application 12/023,191 2 Invention The claimed invention on appeal relates to “portable electronic devices and control of electronic devices when changing modes.” (Spec. ¶ 1). Representative Claim Independent claim 1 is representative of the rejected claims on appeal: 1. A method comprising: [a] associating, with an application, one or more touch locations outside a display of a portable electronic device, wherein the associating is based on prior use of the portable electronic device in the application; [b] detecting at least one touch at the one or more touch locations on the portable electronic device; [c] determining the application associated with the one or more touch locations; and [d] in response to the detecting, changing to the application associated with the one or more touch locations. (Contested limitations emphasized, lettering added for each step [a], [b], [c] and [d].) Appeal 2012-009030 Application 12/023,191 3 Rejections A. The Examiner rejected claims 1, 2, 4, 5, 11–19, and 22 under 35 U.S.C. § 102(b) as anticipated by Kerr (US 2006/0197750 A1). 1 B. The Examiner rejected claims 6, 23, and 25–27 under 35 U.S.C. §103(a) as obvious over the teachings and suggestions of Kerr.2 Grouping of Claims Based on Appellants’ arguments, we decide the appeal of rejection A of claims 1, 2, 4, 5, 11–19, and 22 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).3 We address rejection B separately, infra. 1 The heading of the Examiner’s rejection A is incorrect. (Ans. 5). We have corrected it here to account for cancelled claims and only list the claims for which the Examiner provides a detailed statement of rejection. (Ans. 5–12). In future appeals, we urge the Examiner and all participants in the appeal conference to carefully review all statements of rejection for accuracy. 2 The heading of rejection B omits claim 27 (Ans. 12). However, the Examiner sets forth a detailed rejection for claim 27 under rejection B on page 16 of the Answer. We consider this as a typographical error. We again we urge the Examiner and all participants in the appeal conference to carefully review all statements of rejection for accuracy. 3 Appellants filed a Notice of Appeal on December 16, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board rules published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-009030 Application 12/023,191 4 ANALYSIS Rejection A of Representative Claim 1 We consider all of Appellants’ arguments and evidence presented. We disagree with Appellant's contentions regarding the Examiner's rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants’ Appeal Brief. (Ans. 17–21). We highlight and address specific findings and arguments below. Appellants advance three principal contentions: (1) “Kerr fails to teach or suggest associating, with an application, one or more touch locations outside a display of a portable electronic device, wherein the associating is based on prior use of the portable electronic device in the application.” (App. Br. 8, emphasis added; see also limitation [a], claim 1). (2) “Kerr fails to teach or suggest determining the application associated with the one or more touch locations as set forth in independent claim 1.” (App. Br. 10, emphasis added; see also limitation [c], claim 1). (3) “Kerr fails to teach or suggest in response to the detecting, changing to the application associated with the one or more touch locations, as set forth in independent claim 1.” (App. Br. 11, emphasis added; see also limitation [d], claim 1). Appeal 2012-009030 Application 12/023,191 5 Issues: Under § 103, did the Examiner err by finding the cited prior art would have collectively taught or suggested contested limitations: [a], [c], and [d], within the meaning of representative claim 1? (emphasis added). This appeal turns upon claim construction. Regarding the broadest reasonable interpretation for the contested claim term “application” the Examiner finds and concludes: However, as stated in the advisory action, the examiner considers the "application" as configuring the device for left or right handed use, which encompasses the calibration step 262 and the use step 264 as shown in Figure 21 and paragraph [0116]. Thus, when a user picks up the device, the device generates signals at sensing points to determine how the user is holding the device ([0105] ;). These signals are used to generate a current hand signal which is compared to a baseline left or right hand signal in order to configure the device for left or right handed use ([0115];). Thus as described by Kerr, the calibration step 262, is a "prior use of the portable electronic device in the application", since the calibration step 262 is used to generate a baseline hand signal in order to have the device compare the detected current hand signal against the baseline hand signal, in order to configure the device for left or right handed use. (Ans. 17–18, emphasis added). Appellants further respond, inter alia, in the Reply Brief (3): the Examiner's interpretation of "changing to the application" makes no sense in the context of the Examiner's interpretation of "the application" because the configuration of the device for left or right handed use occurs in use step 264 (i.e. at step 278), which the Examiner states is part of "the application". Thus, Kerr teaches that the device is configured for left or right Appeal 2012-009030 Application 12/023,191 6 handed use during "the application." The device does not "change to the application" when the device is configured for left or right handed use as contended by the Examiner because the device is already in "the application" when the device is configured for left or right handed use. Regarding the broadest reasonable interpretation of the claim term “application”, we turn to Appellants’ Specification for context, and observe Appellants use the terms “applications” and “modes” interchangeably: Devices configured with functions that are intuitively easy to determine and use are attractive to potential users. Therefore, devices configured for easily changing between applications or modes, when desired by the user, are advantageous. (Spec. ¶ 3, emphasis added). Appellants’ Specification further expressly describes changing between a left-handed mode and right-handed mode based on touch locations: [0063] In another example, the mode can be changed between a left-handed mode and right-handed mode, changing the locations of user-selectable options or icons on the touch screen display 38 based on the touch locations. Appellants’ Specification additionally describes applications in terms of non-limiting exemplary embodiments that appear to include any third party application: [0035] Other types of software applications can also be installed on the portable electronic device 20. These software applications can be third party applications, which are added after the manufacture of the portable electronic device 20. Appeal 2012-009030 Application 12/023,191 7 Examples of third party applications include games, calculators, utilities, etc. (Emphasis added). Given the interchangeable use of the claim term “application” with “modes” as described in the Specification (¶ 3), and given that “modes” include changing between left and right-handed modes (Spec. ¶ 63), and in further consideration that Appellants provide no limiting definition for the contested claim term “application” in the Specification (¶ 35), on this record, we are not persuaded the Examiner’s interpretation for “an application” (claim 1) is overly broad, unreasonable, or inconsistent with Appellants’ Specification. 4 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Regarding Appellants first contention (App. Br. 8), we find Kerr discloses contested associating touch locations with an application (step [a]) based on prior use of the device in at least paragraph 109, i.e., when the user customizes the device by setting the baseline hand signal before use (e.g., calibration): [0109] In another embodiment, the similarity between a baseline hand signal and a current hand signal may indicate the user's desire to implement a control function (e.g., gesturing). For example, if the baseline hand signal corresponds to a first 4 We broadly but reasonably construe “associated with” or “associating” as denoting any nexus, correspondence, or relationship between the respective claimed features, no matter how attenuated, within the meaning of Appellants’ claim 1. Appeal 2012-009030 Application 12/023,191 8 button function and the current hand signal is similar to the baseline hand signal then the device can implement the first button function. The user may customize the device by setting the baseline hand signal before use (e.g., calibration). [0110] In another embodiment, the similarity between a baseline hand signal and a current hand signal may also indicate the user type (e.g., handedness of the user or the identity of the user). For example, if the baseline hand signal corresponds to a left hand user and the current hand signal is similar to the baseline hand signal then the device knows that the user is left handed. The user may customize the device by setting the baseline hand signal before use (e.g., calibration). (Emphasis added). Regarding Appellants second contention (App. Br. 10), we find Kerr discloses contested step [c]: “determining the application associated with the one or more touch locations” (claim 1) at paragraph 115, where we find the determined “application” is described in Kerr at decision block 246 (Fig. 20) when it is determined the current hand signal is similar to the left hand signal, thus requiring a left-hand application: Following block 244 the process flow proceeds to block 246 where a determination is made as whether the current hand signal is similar to the baseline left hand signal. If the current hand signal is similar, then the process flow proceeds to block 248 where the device is configured for left hand use. (Kerr, ¶115, emphasis added). Regarding Appellants third contention (App. Br. 11), we find Kerr at paragraph 115 additionally discloses contested step [d] (“in response to the detecting, changing to the application associated with the one or more touch locations” (claim 1) at “block 248 where the device is configured for left Appeal 2012-009030 Application 12/023,191 9 hand use.” Kerr ¶ 115, (See also Kerr, Fig. 20). We find the actual configuration of the device effects a change to a left-handed application. For the aforementioned reasons, on this record, we are not persuaded of error regarding the Examiner’s finding that contested limitations [a], [c], and [d] of claim 1 are anticipated by Kerr. Accordingly, we sustain rejection A of representative independent claim 1, and the associated grouped claims which fall therewith. See Claim Grouping, supra. Rejection B of claims 6, 23, and 25–27 Appellants advance no separate substantive arguments for the remaining claims 6, 23, and 25–27, which stand rejected under §103 rejection B as being obvious over the teachings and suggestions of Kerr. Instead, Appellants urge these remaining claims are believed to be allowable for the same reasons previously argued regarding respective independent claim 1. (App. Br. 13). However, we find no deficiencies regarding rejection A of independent claim 1, for the reasons discussed above. Although Appellants additionally allege “[t]he Examiner has provided mere hindsight as motivation” (App. Br. 13), Appellants provide no evidence in support. Attorney “argument . . . cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are insufficient to rebut a prima facie case). This reasoning is applicable here. Therefore, on this record, we are not persuaded the Examiner erred regarding rejection B. Accordingly, we sustain the Examiner’s rejection B of claims 6, 23, and 25–27. Appeal 2012-009030 Application 12/023,191 10 DECISION We affirm the Examiner’s decision rejecting claims 1, 2, 4, 5, 11–19, and 22 under §102. We affirm the Examiner’s decision rejecting claims 6, 23, and 25–27 under §103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED tkl Copy with citationCopy as parenthetical citation