Motorola Mobility LLCDownload PDFPatent Trials and Appeals BoardMay 4, 20202019002166 (P.T.A.B. May. 4, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/711,833 05/14/2015 Rachid M. Alameh MM01283 1065 138908 7590 05/04/2020 Burrus Intellectual Property Law Group (MM Files) 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER RETALLICK, KAITLIN A ART UNIT PAPER NUMBER 2482 NOTIFICATION DATE DELIVERY MODE 05/04/2020 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): BIPLaw_docketing@burrusiplaw.com pburrus@burrusiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RACHID M. ALAMEH and PAUL STEUER Appeal 2019-002166 Application 14/711,833 Technology Center 2400 Before CARL W. WHITEHEAD JR., GREGG I. ANDERSON, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Motorola Mobility LLC. Appeal Br. 2. Appeal 2019-002166 Application 14/711,833 2 CLAIMED SUBJECT MATTER The claims relate to a finger print sensor with passive proximity detection for power savings in an electronic device. Spec., Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electronic device, comprising: a housing; a user interface; and one or more processors operable with the user interface; the user interface comprising a fingerprint sensor proximately located with at least one proximity sensor component comprising an infrared signal receiver receiving an infrared emission from an object external to the housing; the at least one proximity sensor component actuating the fingerprint sensor when the infrared signal receiver receives the infrared emission from the object; the at least one proximity sensor component disposed about a perimeter of the fingerprint sensor. REFERENCES The prior art relied upon by the Examiner is: Zhao Mullins Setlak Vieta Pi US 2011/0050643 A1 US 2013/0076485 A1 US 2013/0314105 A1 US 2014/0003683 A1 US 2015/0146944 A1 Mar. 3, 2011 Mar. 28, 2013 Nov. 28, 2013 Jan. 2, 2014 May 28, 2015 REJECTIONS Claims 1–5, 7–11, and 13–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Mullins, Zhao, and Pi. Final Act. 17. Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable over Mullins, Zhao, Pi, and Vieta. Id. at 33. Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable over Mullins, Zhao, Pi, and Setlak. Id. at 35. Appeal 2019-002166 Application 14/711,833 3 ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv). Independent Claim 1 Issue 1: Did the Examiner err in finding that the combination of Mullins, Zhao, and Pi teaches or suggests “the at least one proximity sensor component disposed about a perimeter of the fingerprint sensor,” as recited in claim 1? Appeal Br. 12–17; Reply Br. 8–11. Appellant initially contends Mullins and Zhao do not teach or suggest this limitation. Appeal Br. 12–15. These arguments are irrelevant because the Examiner applies Pi, not Mullins or Zhao, to this limitation. Final Act. 19–20. With respect to Pi, Appellant contends it would not be obvious to modify Mullins and Zhao with Pi’s teachings “because a fingerprint sensor physically separated from an infrared sensing pad, both of which are surrounded by a conductive metal touch sensor ring is simply not what is claimed.” Appeal Br. 16. Appellant asserts the following Appellant-generated figure represents the Examiner’s proposed combination: Appeal 2019-002166 Application 14/711,833 4 Id. The above figure appears to include an amalgamation of features from Mullins, Zhao, and Pi. Appellant then contends, The problem with this is that the resulting device is simply not what is claimed. . . . Appellant does not claim a fingerprint sensor, next to, but physically separated from, an infrared sensing pad, surrounded by a conductive metal touch ring. To the contrary, claim 1 recites a proximity sensor disposed about a perimeter of a fingerprint sensor. Moreover, the proximity sensor is not a metal touch ring. It is instead an infrared signal receiver. Id. at 17. Appellant continues, “there is no infrared signal receiver disposed about a perimeter of the fingerprint sensor” in the above diagram. Id. The Examiner finds that Pi discloses a proximity sensor component disposed about a perimeter of the fingerprint sensor. Final Act. 20 (citing Pi ¶ 70). The Examiner further finds, Appeal 2019-002166 Application 14/711,833 5 It would have been obvious . . . to modify the teachings of Mullins’ proximity sensor using light emission and detection to determine the detection of a finger with the passive IR sensor that uses the thermal radiation (IR radiation) from a user’s finger to detect the user's finger as taught by Zhao. . . . It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the teachings of Mullins and Zhao with the locating of a touch sensor around the fingerprint detection module (sensor) as taught by Pi . . . [See Pi, 0070]. Id. (emphasis added). Appellant’s argument is unpersuasive. The Examiner is not proposing a bodily incorporation of Pi and Zhao into Mullins. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Instead, the Examiner proposes using, in Mullins’s proximity sensor, detection of a finger with Zhao’s passive IR sensors and locating those passive IR sensors around the fingerprint detection module as taught by Pi. See Final Act. 20; Ans. 21–49. Thus, Appellant’s arguments that “the proximity sensor is not a metal touch ring [but] an infrared signal receiver” and that “there is no infrared signal receiver disposed about a perimeter of the fingerprint sensor” overlook that the Examiner is not bodily incorporating Pi’s touch ring into Mullins, but rather finds, as we also find, that one of ordinary skill in the art would have used Pi’s touch ring to show that Zhao’s IR sensors could go Appeal 2019-002166 Application 14/711,833 6 around Mullin’s fingerprint sensor. Appeal Br. 17. As Appellant has not persuaded us of error2, we sustain the Examiner’s rejection of claim 1. Independent Claim 9 Issue 2: Did the Examiner err in finding that the combination of Mullins, Zhao, and Pi teaches or suggests “an infrared signal receiver, proximately located with the fingerprint sensor with sides of the infrared receiver and the fingerprint sensor abutting,” as recited in claim 9? Appeal Br. 22–23; Reply Br. 15–16. As with claim 1, Appellant reproduces the above figure and asserts it represents the Examiner’s combination, arguing that the Final Action “fails to provide a teaching of an infrared signal receiver abutting a fingerprint sensor.” Appeal Br. 22–23. Appellant similarly contends, “the claim does not recite a metal touch ring abutting a sensor chip.” Id. at 23. Moreover, Appellant contends “the alleged motivation is suspect, as it does not appear 2 Appellant also implicitly makes a teaching away argument based on Zhao’s film to protect “from hazardous elements such as dust and moisture.” Appeal Br. 14, 17. Zhao, however, does not teach away from applying the film in a different configuration, such as in an annulus to cover IR sensors disposed around a fingerprint sensor as suggested by Pi. Zhao merely discloses that “IR sensing pad 40 includes a film . . . covering IR detectors,” which does not disparage alternative film configurations. Zhao ¶ 22 (emphasis added); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference for an alternative invention.”). Appellant also implies a teaching away argument based on Mullins, contending “there is a required physical separation between Mullins’s fingerprint sensor, element 38, and the proximity sensor, element 40.” Appeal Br. 12–13, 17. But Appellant’s argument is based only on Appellant’s own interpretation of Figure 3 of Mullins, which we do not adopt, and not on any explicit disparagement in Mullins. Appeal 2019-002166 Application 14/711,833 7 relevant given the context of the primary reference” because “it is not clear under the disclosed circumstances how reducing the distance required between the sensor lines of Mullins in the combination and the infrared sensing pad of Zhao in the combination would be beneficial.” Id. The Examiner finds, and we agree, that Pi discloses a “receiver, proximately located with the fingerprint sensor with sides of the . . . receiver and the fingerprint sensor abutting.” Final Act. 26. The Examiner specifically finds Pi teaches that the fingerprint sensor and IR receiver abut each other. Id. (citing Pi ¶ 70 (touch sensor and detection module “border at . . . the outline of the fingerprint detection module”)). The Examiner further, finds, and we agree, It would have been obvious . . . to modify the teachings of Mullins’ sensor and Zhao’s IR sensor which are used to determine the proximity and/or presence of an object (finger) with the touch sensor for determining contact of an object touching the fingerprint detection module as taught by Pi in order to activate fingerprint detection module and main processor out of standby mode in response to a light contact, without additional user input through a mechanical switch, such as actuating a physical button [See Pi, 0070]. Id. (emphasis added). As with claim 1, Appellant makes a bodily incorporation argument, which is unpersuasive. We agree with the Examiner and find motivation for modifying Mullins and Zhao with Pi’s fingerprint detection module “would have been to improve the detection of the portion of the human body using the thermal radiation from the body received by the passive IR sensor” of Zhao. Id. Appellant’s argument against the combination does not mention Pi and simply denies that “the combination would be beneficial.” Appeal Br. 23. Appeal 2019-002166 Application 14/711,833 8 This argument does not address the Examiner’s rationale to combine, and is hence, unpersuasive. In any event, Appellant does not point to any evidence of record that the combination would be “uniquely challenging or difficult for one of ordinary skill in the art” or “represent[] an unobvious step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)). Nor has Appellant provided objective evidence of secondary considerations, which our reviewing court states “operate[] as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). The Examiner’s findings are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” because the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. The claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416; see also Ans. 67–68 (modifications made would “yield predictable results”). We, therefore, sustain the Examiner’s rejection of claim 9. Independent Claim 14 Issue 3: Did the Examiner err in finding that the combination of Mullins, Zhao, and Pi teaches or suggests “at least one proximity sensor component concentrically aligned with a fingerprint sensor,” as recited in claim 14? Appeal Br. 24–25. Appeal 2019-002166 Application 14/711,833 9 Appellant contends that Mullins and Zhao do not teach concentric alignment, but these arguments are again irrelevant because the Examiner relies on Pi for “concentrically aligned.” Appeal Br. 24; Final Act. 30. Appellant then contends, Even assuming arguendo that Pi’s metal ring and its fingerprint sensor have a common center, in making the rejection, the Examiner uses Mullins's fingerprint sensor and Zhao’s infrared sensing pad, with the latter modified into the Mullins invention in accordance with the teaching of Mullins. This requires the fingerprint sensor and metal ring to have non-common centers to accommodate the infrared sensing pad of Zhao. Appeal Br. 25. Appellant also contends that “placing a fingerprint sensor at a common center with a metal ring is simply not what is claimed.” Id. Appellant’s arguments again argue for a bodily incorporation that the Examiner does not make. Rather, the Examiner finds, and we agree, that in the combination, “Pi discloses determining, with at least one proximity sensor component concentrically aligned with a fingerprint sensor.” Final Act. 30 (citing Pi ¶ 70). Accordingly, Appellant does not persuade us of error. Dependent Claims Appellant argues the following dependent claims separately: 2–4, 6, 11, and 12. Of these, Appellant persuades us of Examiner error only with respect to claim 3. Claim 3 recites, “the at least one proximity sensor component circumscribing the fingerprint sensor.” Appellant contends that while “Pi teaches a metal ring that surrounds a fingerprint sensor,” none of the references “make known or obvious circumscribing a fingerprint sensor with Appeal 2019-002166 Application 14/711,833 10 an infrared signal receiver.” Appeal Br. 20. Although the Examiner again relies on Pi in the combination for this feature (Final Act. 21; Ans. 58–59), Appellant persuades us of Examiner error. Below is an image of Zhao’s IR sensors (Figure 2): Figure 2 of Zhao depicts an IR sensor pad, including four sensors 42–48. Id. ¶ 22. The sensors are passive IR detectors positioned at four corners of a square for detecting various user inputs. Id. ¶¶ 22–24. Even if Mullins were modified with Zhao and Pi, at most, one of ordinary skill in the art would have placed Zhao’s IR sensors around Mullins’s fingerprint sensor, according to the teachings of Pi. We agree with Appellant that Zhao’s sensors, however, would not circumscribe (e.g., surround as a boundary) the fingerprint sensor. See Appeal Br. 18. Rather, Zhao’s sensors would occupy specific points around the fingerprint sensor. Likewise, although Pi’s metal ring circumscribes a fingerprint sensor (see Pi Fig. 3C, ¶ 70), in the combination, we do not agree with the Examiner that in the combination Zhao’s four IR sensors would circumscribe Mullins’s fingerprint sensor. We, therefore, reverse the Examiner’s rejection of claim 3. Appeal 2019-002166 Application 14/711,833 11 Appellant does not persuade us of error in the remainder of the Examiner’s rejections. Claim 2, for instance, requires the fingerprint sensor to be “collocated with the at least one proximity sensor component.” Appellant contends that Mullins does not teach collocation because “Mullins requires physical separation between the sensor array and the sensor structure.” Appeal Br. 18. Appellant also relies on its bodily incorporation figure (reproduced above) to argue against collocation. Appellant’s latter argument is unpersuasive for similar reasons as set forth above, while Appellant’s former argument overlooks the teachings of Mullins. Figure 3 of Mullins is reproduced below: Figure 3 of Mullins depicts a cross-sectional view of a fingerprint reader, including fingerprint sensors 38 and the optional additional sensor(s) 40. Mullins ¶ 50. We find one of ordinary skill in the art would readily appreciate from the above figure that, under the broadest reasonable interpretation, the sensors 38 and 40 are collocated (e.g., set or placed together). A small space between the sensors 38 and 40 does not obviate this fact. Claim 4 requires the fingerprint sensor to be “concentrically aligned with the at least one proximity sensor component.” Appellant’s arguments Appeal 2019-002166 Application 14/711,833 12 for claim 4 mirror those for claim 14, and we find them unpersuasive for similar reasons. See Appeal Br. 20–22. Appellant also contends claim 6, which recites “the at least one proximity sensor component disposed about only a portion of the perimeter of the fingerprint sensor,” is patentable over Mullins, Zhao, Pi, and Vieta. Appeal Br. 25. Specifically, Appellant contends that “Vieta, like Mullins, requires physical separation between its orientation detectors and its fingerprint sensor.” Id. (citing Vieta Fig. 3A). The Examiner finds Vieta discloses “orientation sensors . . . disposed in one or more optional locations about the touch I/O device 2012.” Final Act. 34 (emphasis omitted). Appellant’s argument does not address the Examiner’s finding that Vieta discloses sensors in one or more optional locations—and hence suggests disposing a proximity sensor component about only a portion of the perimeter. Thus, Appellant does not persuade us of error. Claim 11 differs significantly from the previous claims, reciting: 11. The electronic device of claim 9, further comprising a timer, one of the infrared signal receiver or the one or more processors to initiate the timer when the infrared signal receiver receives the infrared emission, and, where the fingerprint sensor fails to capture and store fingerprint data prior to expiration of the timer, transition the fingerprint sensor from the active mode to the low-power or sleep mode. Appellant contends “Zhao never uses the word ‘timer’ in its disclosure.” Appeal Br. 23–24. Appellant makes other arguments about Zhao’s teachings, but these arguments are all irrelevant because the Examiner finds Mullins teaches or suggests the entirety of claim 11 and only relies on Zhao redundantly for a portion of claim 11. Final Act. 27–28. As Appellant did not make any argument that Mullins fails to teach or suggest claim 11 (other Appeal 2019-002166 Application 14/711,833 13 than a mere conclusory statement that it does not), Appellant’s argument is unpersuasive. See Appeal Br. 24 (“The addition of Mullins and Pi to Zhao fail to correct this deficiency because none of the references teach this limitation.”). For claim 12, Appellant contends the combination of Mullins, Zhao, Pi, and Setlak fails to teach or suggest a “fingerprint sensor comprising a push button.” Appeal Br. 25–26. Specifically, Appellant contends “Setlak uses the fingerprint sensor itself for any proximity detection, thereby leading one of ordinary skill in the art further away from Appellant’s claim 9.” Id. at 25–26 (citing Setlak ¶ 61). The Examiner finds Setlak discloses “a biometric finger sensor 30 is carried by the pushbutton switch 24 to sense a user’s finger 40.” Final Act. 35 (citing Setlak ¶ 41, emphasis omitted). Appellant appears to make a teaching away argument, but it is unpersuasive because Appellant’s cursory argument fails to explain why one of ordinary skill in the art would not have used additional input from a pushbutton sensor to confirm the input of another sensor, to detect user touch. The claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. We remind Appellant that arguments not made are waived. Frye, 94 USPQ2d at 1075; 37 C.F.R. § 41.37(c)(1)(iv). Therefore, we sustain the Examiner’s rejection. Apart from claim 3, then, we sustain the Examiner’s rejections of all the dependent claims. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-002166 Application 14/711,833 14 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–11, 13–20 103 Mullins, Zhao, Pi 1, 2, 4, 5, 7–11, 13– 20 3 6 103 Mullins, Zhao, Pi, Vieta 6 12 103 Mullins, Zhao, Pi, Setlak 12 Overall Outcome 1, 2, 4–20 3 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. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation