Ex Parte Ramrattan et al

Patent Trial and Appeal Board

Mar 30, 2016

12784618 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121784,618 05/21/2010
89133 7590 04/01/2016
RIDOUT & MAYBEE LLP
250 UNIVERSITY A VENUE
5THFLOOR
TORONTO, ON MSH 3E5
CANADA
FIRST NAMED INVENTOR
Colin Shiva Ramrattan
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.
42783-1487 9186
EXAMINER
PATEL, JAYESH A
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
ipinfo@ridoutmaybee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN SHIVA RAMRATTAN, ROBERT JAMES LOWLES, and
GRAHAM CHARLES TOWNSEND 1
Appeal2014-001265
Application 12/784,618
Technology Center 2600
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
KAMRAN JIVANI, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1-7, 9, 11-15, 17, 19, and20, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appellants indicate the real party-in-interest is Research In Motion
Limited. Br. 3.
Appeal2014-001265
Application 12/784,618
BACKGROUND
The disclosed invention relates to a mobile communication device
including a photography subsystem configured to be operated in a
fingerprint scanning mode and a normal mode. Spec. Abs., i-fi-f 18-21.
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
1. A method of operating a photography subsystem, the
method comprising:
receiving input from a finger on a capacitive touch sensor
proximate to a lens;
responsive to the rece1vmg, determining that the
photography subsystem is to be operated in fingerprint scanning
mode;
operating the photography subsystem in fingerprint
scanning mode, wherein operating the photography subsystem in
fingerprint scanning mode includes initializing an autofocus
module to control the lens with an initial focal length set for
capturing a fingerprint from said finger;
receiving, from an image sensor, a digital image; and
storing the digital image in a memory.
REJECTION
Claims 1-7, 9, 11-15, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee (US 2006/0008129 Al; Jan. 12, 2006),
and Strong (US 2009/0179862 Al; July 16, 2009).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief presented in response to the Final Office
Action, and in light of the Examiner's Answer. We agree with, and adopt as
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Application 12/784,618
our own, the Examiner's findings and conclusions of obviousness regarding
claims 1-5, 7, 11-13, 17, 19, and 20. We highlight and address specific
findings and arguments for emphasis below.
Claims 1, 2, 7, 11-13, 17, and 19
The Examiner relies on Lee for teaching all of the limitations of
independent claims 1, 7, and 13, but Lee teaches a key instead of a
capacitive touch sensor. Final Act. 5, 7, 8; Ans. 5, 7-8, 9. The Examiner
relies on Strong for teaching a mobile device including a capacitive touch
sensor. Final Act. 5, 7, 8; Ans. 5, 8, 9. The Examiner determined it would
have been obvious to one with ordinary skill in the art at the time the
invention was made for the input generating key to be replaced by an input
generating capacitive touch sensor as taught by Strong, to simply place a
finger over a physical sensor instead of pressing a combination of key
buttons. Final Act. 5, 7, 8; Ans. 5-6, 8, 9.
Appellants argue the capacitive touch sensor may be considered to be
more than merely "proximate to a lens," as recited in claim 1, because claim
1 also recites that the autofocus module is initialized to control the lens with
an initial focal length set for capturing a fingerprint from the finger that
provided the input to the capacitive touch sensor. Br. 11-12.
Appellants' argument is not persuasive because it is premised
incorrectly on claim 1 either requiring: (1) the capacitive touch sensor to be
collocated with the lens, or (2) the finger that provides the input to the
capacitive touch sensor cannot move for the purpose of fingerprint capture.
Claim 1 merely recites that the capacitive touch sensor is proximate to the
lens.
Appellants also argue that Lee's key input unit 110 includes a
plurality of keys, and Strong's user input assembly 140 includes a capacitive
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Application 12/784,618
touch sensor 150. Br. 12 (citing Lee i-f 33; Strong i-f 49). On this basis,
Appellants state "the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references such that the
user input assembly 140 of Strong is used for the key input unit 110 of Lee."
Br. 12, 17-18, 21. Appellants assert that Strong's input assembly 140 is not
merely a capacitive touch sensor 150, but includes an opaque coating 170.
Appellants assert the opacity of the coating 170 of Strong's user input
assembly 140 would prevent fingerprint capture by the lens. Id.
Appellants' arguments are not persuasive because they are premised
incorrectly on claims 1, 7, and 13, requiring the capacitive touch sensor to be
collocated with the lens. Because claim 1 merely requires the capacitive
touch sensor to be proximate the lens, we are not persuaded an opaque
coating on the capacitive touch sensor would prevent fingerprint capture by
the lens. Appellants' arguments are also misplaced because the Examiner
does not propose substituting Strong's user input assembly 140 for Lee's
key input unit 110. See Final Act. 5, 7, 8; Ans. 5---6, 8, 9, 11-12. Instead,
the Examiner proposes substituting Strong's capacitive touch sensor unit 150
for Lee's key input unit 110. Final Act. 5, 7, 8; Ans. 5-6, 8, 9, 11-12.
For all these reasons, we are not persuaded of error in the rejection of
independent claims 1, 7, and 13. Appellants do not present substantive
arguments addressing claims 2, 11, 12, 17, and 19 dependent therefrom.
Accordingly, for the same reasons as claims 1, 7, and 13, we are not
persuaded of error in the rejection claims 2, 11, 12, 17, and 19.
Claims 3, 4, and 20
Claim 3 depends from claim 1, and further recites in pertinent part:
"triggering an image processor to employ digital processing techniques to
achieve near field focus." Claim 20 recites similar limitations to claim 3.
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Application 12/784,618
The Examiner finds Lee's description of processor 120, 221 b using digital
control signals to move physical elements to achieve the second focal
position P A2 teaches or suggests the aforementioned limitation of claim 3.
Final Act. 6, 8 (citing Lee Figs. 1, 4a, 4b, i-fi-f 16, 48-51); Br. 6, 9-10 (citing
Lee Figs. 1, 4a, 4b, i-fi-f 16, 48-51 ).
Appellants assert "near field focus" is a term of art and would be
known by the ordinary artisan. Br. 14. Appellants further argue "digital
control signals used to move physical elements would be understood to not
qualify as 'digital processing techniques' used to 'achieve near field focus."'
Appellants' arguments are not persuasive because they are conclusory
and unsupported by objective evidence, such as, for example, a definition for
"near field focus," or testimony by an ordinary artisan. Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
For these reasons in addition to the reasons discussed above
addressing independent claims 1 and 13, we are not persuaded of error in the
rejection of claims 3 and 20. Appellants do not present substantive
arguments addressing claim 4, dependent from claim 3. Accordingly, for the
same reasons as claims 3 and 20, we are not persuaded of error in the
rejection claim 4.
Claim 5
Claim 5 depends from claim 1, and further recites "transmitting the
digital image to an image signal processor." The Examiner finds Lee
teaches the limitations of claim 5 based on Lee's disclosure of main
controller 120 in Figure 1 and data processor 250 in Figure 10.
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Appellants argue that item 120 of Figure 1 or item 250 of Fig 10 of
Lee cannot play the role of both the element carrying out the method of
claim 1 and the image signal processor to which the digital image is
transmitted in claim 5. Br. 15. Appellants contend Lee fails to disclose
transmitting digital images away from the main controller. Id.
Appellants' arguments are not persuasive because Appellants do not
explain sufficiently why Lee's main controller 120 or data processor 250
cannot be utilized in the performance of the steps recited in claim 1, and
cannot also be an image processor. To the extent that Appellants' arguments
are premised on the sequential performance of the steps recited in claims 1
and 5, we are not persuaded. Claims are not limited to the performance of
the steps in the order recited, unless the claims explicitly or implicitly
requires a specific order. Baldwin Graphic Systems, Inc. v. Siebert Inc., 512
F.3d 1338, 1345 (Fed. Cir. 2008). Claims 1 and 5 do not explicitly or
implicitly require performance of "transmitting the digital image to an image
signal processor" after the steps of "receiving, from an image sensor, a
digital image; and storing the digital image in a memory," recited in claim 1.
We construe the method of claim 5 as being performed as a part of claim 1
in any order, including after the receiving step, but before the storing step.
We further observe, for example, that Lee teaches: (1) display 130 receiving
a digital image from image sensor 240; (2) transmitting a digital image to
main controller 120 or data processor 250; and (3) storing the digital image
in memory 140. See Lee Fig. 1, i-fi-134, 35, 39, 40.
For these reasons, in addition to the reasons discussed above
addressing claim 1, we are not persuaded of error in the rejection of claim 5.
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Claim 6
Claim 6 depends from claim 5, and recites: "receiving, from the
image signal processor, a request for further digital images, and responsive
to the receiving the request, receiving a further digital image and the
transmitting the further digital image to the image signal processor." The
Examiner finds Lee's description of item 1001 of Figure 6, along with the
Examiner's assertion that Lee's invention is repeatable teaches "receiving
from the image signal processor, a request for further digital images." Final
Act. 6; Ans. 7.
We agree with Appellants' argument that the photograph input signal
received in Figure 6, item 1001 of Lee is not received from the image signal
processor. See Br. 16. Instead, Lee teaches main controller 120 receives
PINS control signal set request from the key input unit 110 at step 1001 of
Figure 6. Lee Fig. 6, i-f 54.
Therefore, we cannot sustain the rejection of claim 6.
Claims 9, 14, 15
Claim 9 depends from claim 7, and further recites: "a communication
interface for managing communication with an image processor; wherein the
processor is further adapted to trigger, via the communication interface, the
image processor to employ digital processing techniques to achieve near
field focus." Claim 14, dependent from claim 13, recites similar limitations.
The Examiner identifies Lee's key input unit 110 as corresponding to
the communication interface, and main controller 120 of Figure 1 and lens
driving unit 221 b of Figure 4 B as corresponding to the claimed image
processor. Final Act. 7; Ans. 8-9. The Examiner further asserts that Lee
teaches the processor is adapted to trigger, via the communication interface,
the image processor to employ digital processing techniques to achieve near
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field focus. Final Act. 7 (citing Lee Figs. 4a, 4b, i-fi-1 16, 48-51 ); Ans. 8-9
(citing Lee Figs. 4a, 4b, i-fi-1 16, 48-51 ).
Appellants contend that the Examiner cites Lee's main controller 120
of Figure 1 or data processor 250 of Figure 10 as corresponding to both the
"processor" and the "image processor." Br. 18. Appellants argue the
Examiner's application of Lee to the elements of claim 9 fails to hold up to
scrutiny. Id. Appellants specifically argue an interface (least of all a key
input unit 110) is unnecessary when main controller 120 corresponds to both
the processor and the image processor. Id.
We are persuaded that there is insufficient evidence to demonstrate
that Lee teaches or suggests main controller 120 or data processor 250 is
adapted to trigger, via key input unit 110, the main controller 120 or data
processor 250. Accordingly, we cannot sustain the rejection of claims 9, and
14, and claim 15, dependent from claim 14.
DECISION
We AFFIRM the rejection of claims 1-5, 7, 11-13, 17, 19, and 20.
We REVERSE the rejection of claims 6, 9, 14, and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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