Tzu-Wei Liu

Patent Trials and Appeals Board

Nov 8, 2019

14691725 - (D) (P.T.A.B. Nov. 8, 2019)

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.
14/691,725 04/21/2015 Tzu-Wei Liu 83242-US-PA 1042
31561 7590 11/08/2019
JCIPRNET
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
EXAMINER
LI, LIN
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
11/08/2019 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):
Belinda@JCIPGROUP.COM
USA@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TZU-WEI LIU
Appeal 2018-002206
Application 14/691,725
Technology Center 2600
Before JEAN R. HOMERE, BADLEY W. BAUMEISTER, and
JAMES B. ARPIN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12. Appeal Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We refer to the Specification, filed April 21, 2015 (“Spec.”); Final Office
Action, mailed May 8, 2017 (“Final Act.”); Appeal Brief, filed August 9,
2017 (“Appeal Br.”); Examiner’s Answer, mailed October 25, 2017
(“Ans.”); and Reply Brief, filed December 22, 2017 (“Reply Br.”).
2 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 Mstar
Semiconductor, Inc. Appeal Br. 2.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to
calibrating a coordinate value near an edge of a touch panel. Spec. ¶ 1. In
particular, upon obtaining a calculated coordinate according to a capacitance
change indicating an erroneous touch position as compared to the actual
location of the touch on the panel, the processor selects a suitable linear
function in a look-up table (LUT) to correct the calculated coordinate into a
calibrated coordinate. Spec. ¶¶ 6, 32, 33, 37, 52.
Of the rejected claims, claims 1 and 7 are independent. Claim 1,
reproduced below with disputed limitations emphasized in italics, is
illustrative of the claimed subject matter:
1. A method for calibrating a coordinate value near an edge of a
touch panel, comprising:
obtaining a calculated coordinate according to a capacitance
change corresponding to a proximity event;
selecting a first linear function from a plurality of first linear
functions comprised in a look-up table (LUT) according to the
calculated coordinate and the capacitance change; and
correcting the calculated coordinate into a calibrated
coordinate according to the first linear function and the calculated
coordinate.
III. REFERENCES3
The Examiner relies prior art upon the following references:
Fedder US 2011/0316054 A1 Dec. 29, 2011

3 All citations herein to these references are by reference to the first named
inventor only.
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Oh US 2014/0168171 A1 June 19, 2014
Oonishi US 2016/0070371 A1 Mar. 10, 2016

IV. REJECTIONS
Claims 1 and 7 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Final Act.
2–3.
Claims 1, 2, 7, and 8 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Oh and Oonishi. Final Act. 3–
10.
Claims 3–6 and 9–12 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Oh, Oonishi, and Fedder. Final
Act. 10–13.
V. ANALYSIS
1. Written Description Rejection
Appellant argues that the Examiner erred in determining that claims 1
and 7 do not comply with the written description requirement because the
amended claim language of “correcting the calculated coordinate into a
calibrated coordinate according to the first linear function and the calculated
coordinate” allegedly is not supported by the original Specification. App.
Br. 17. In particular, Appellant argues although the Specification does not
recite, verbatim, the original claim recitation of “obtaining a calibrated
coordinate according to the linear function and the calculated coordinate,”
the original claim language necessarily implies the amended claim language
of “correcting the calculated coordinate into a calibrated coordinate
according to the first linear function and the calculated coordinate”. Id.
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According to Appellant, the ordinarily-skilled artisan would discern that
relationship from the written description. Id. at 18 (citing Spec. ¶¶ 33).
Further, Appellant argues that the Examiner’s interpretation of
“correcting the calculated coordinate into a calibrated coordinate” as
“inserting the calculated coordinate into a calibrated coordinate” is not
supported by the record because the claim does not recite “inserting,” nor
does the step of correcting the calculated coordinate require inserting the
calculated coordinate into the calibrated coordinate. Reply Br. 5–6.
These arguments are persuasive. To satisfy the written description
requirement, a patent Specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Moba, B.V. v. Diamond
Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). An applicant may
show possession of the claimed invention by describing the claimed
invention with all of its limitations using such descriptive means as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997).
However, our reviewing court guides that “[a] description [that]
renders obvious the invention for which an earlier filing date is sought is not
sufficient.” Lockwood 107 F.3d at 1572 (quoting Jepson v. Coleman, 314
F.2d 533, 536 (CCPA 1963)). “[I]t is ‘not a question of whether one skilled
in the art might be able to construct the patentee's device from the teachings
of the disclosure.... Rather, it is a question whether the application
necessarily discloses that particular device’” (Id., emphasis added).
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As a preliminary matter, we note it is indisputable that the original
claim recitation of “obtaining a calibrated coordinate according to the linear
function and the calculated coordinate” is supported by Appellant’s
originally-filed Specification, drawings, or claims. Ans. 22; Appeal Br. 18
(citing Spec. ¶ 33, Fig. 6, S640). Although the written description
requirement does not impose an “in haec verba” recitation of the disputed
claim language in the original Specification, it nonetheless requires a
sufficient description of the claim subject matter so as to enable one of
ordinary skills in the art to make and use the invention. In re Wright, 866 F.
2d 422 (Fed. Cir 1989); see Agilent Techs., Inc. v. Affymetrix, Inc., 567 F. 3d
1366 (Fed. Cir. 2009).
While the Examiner correctly notes that the originally-filed
Specification supports the original claim language, the Examiner disagrees
with Appellant’s argument that the original claim limitation necessarily
implies the amended claim limitation. Ans. 23–26. We do not agree with
the Examiner that the amended claim language of “correcting the calculated
coordinate into the calibrated coordinate” somehow implies inserting the
calculated coordinate into the calibrated coordinate. Id. Instead, the cited
amended claim language must be given its broadest reasonable interpretation
consistent with Appellant’s disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted as
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broadly as their terms reasonably allow.”). Our reviewing court further
states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en banc).
Appellant’s originally-filed Figure 6 sets forth a flowchart that recites
the following steps of: “providing LUT” (S610); “Calculating coordinate
and projection area corresponding to proximity event to obtain square root of
total capacitance change” (S620); “Selecting first linear function from LUT
according to calculated coordinate of square root of total capacitance
change” (S630); and “Obtaining calibrated coordinate according to first
linear function and calculated coordinate” (S640). We note that the step
S640 of “obtaining the calibrated coordinate” is the result of the earlier steps
of S610–630 wherein the calculated coordinate (S620) is revised (S630)
according to a linear function selected from LUT (S610).
In other words, the ordinarily-skilled artisan would readily appreciate
that Figure 6 does support that the calibrated coordinate is obtained by
correcting the calculated coordinate according to the first linear function and
the calculated coordinate. Accordingly, we agree with Appellant that the
originally-filed step of “obtaining a calibrated coordinate according to first
linear function and calculated coordinate” necessarily implies the amended
step of “correcting a calibrated coordinate into a calibrated coordinate
according to the first linear function and the calculated coordinate.”
Because Appellant has demonstrated possession of the amended
claim recitation, we are persuaded of error in the Examiner’s written
description rejection of claim 1. Accordingly, we do not sustain the written
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description rejection of claim 1, or of claim 7, which recites commensurate
limitations.
2. Obviousness Rejection
1. Claims 1, 2, 7, and 8
Appellant argues that the Examiner erred in finding that the
combination of Oh and Oonishi teaches or suggests “selecting a first linear
function from first linear functions comprised in the LUT ... and correcting
the calculated coordinate into a calibrated coordinate according to the first
linear function and the calculated coordinate, as recited independent claim 1.
Appeal Br. 11. In particular, Appellant argues that Oh discloses correcting
positional determination error with a simple multiplication factor, which
does not use the complex edge proximity correction curves, as shown in
Appellant’s Figures 4A and 4B. Id. at 10–11. Further, Appellant argues that
Oonishi discloses using a multiplier LUT to boost the capacitance in intra-
electrode points (i.e. capacitance correction), as opposed to coordinate
correction. Id. at 12–13. Therefore, Appellant submits that the proposed
combination teaches or suggests a capacitance correction table for
smoothing out capacitance values, as opposed to correcting coordinates. Id.
at 14.
Additionally, Appellant argues that because Oonishi’s system for
improving touchscreen calligraphy has no utility in Oh’s system of
correcting in touch screen positional calculation error, the Examiner has not
provided sufficient rationale to combine the teachings of Oh and Oonishi.
Id. at 14–15.
Appellant’s arguments are unpersuasive of reversible Examiner error.
As a preliminary matter, we note that the claim does not recite selecting a
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complex edge proximity for coordinate correction. Instead, the claim merely
recites selecting a linear function from a set of linear functions in a LUT for
correcting a calculated coordinate. Accordingly, we agree with the
Examiner that Oh’s disclosure of using before and after correction functions
to correct position coordinates teaches the limitation of selecting a linear
function to correct position coordinates. Ans. 4–5 (citing Oh ¶¶ 54–60).
Further, while Oonishi discloses selecting values to correct
capacitance values, we agree with the Examiner that these values represent
position coordinates on the input touchscreen. Id. (citing Oonishi ¶ 10,
Fig. 23). Oonishi particularly discloses a coordinate correction section for
correcting coordinate values. Id.
One cannot show non-obviousness by attacking the references
individually where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner relies
upon Oh for its teaching of a first linear function for correcting coordinate
values. Ans. 8–9 (citing Oh ¶ 61, Figs. 23 (a), (b)). Further, the Examiner
relies upon Oonishi’s disclosure of selecting capacitance values from look-
up table (LUT) to correct position coordinates. Id. at 9.
We agree with the Examiner that the proposed combination of the
teachings of Oh and Oonishi would predictably result in Oh’s linear
functions being stored in Oonishi’s LUT to facilitate the selection of linear
functions to correct position coordinates, thereby calibrating the coordinates.
Id. at 10. We find the Examiner’s proposed combination of the cited
teachings of Oh and Oonishi is no more than a simple arrangement of old
elements with each performing the same function it had been known to
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perform, yielding no more than one would expect from such an arrangement.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The ordinarily
skilled artisan, being “a person of ordinary creativity, not an automaton,”
would have had reason to fit the teachings of the cited references together to
predictably result in correcting position coordinates into calibration
coordinates using the selected linear function and the position coordinates.
Id. at 420–21.
Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we are
satisfied that, on the record before us, the Examiner has established by a
preponderance of the evidence that the combination of Oh and Oonishi
renders claims 1 and 7 unpatentable. Accordingly, we are not persuaded of
error in the Examiner’s obviousness rejection of claims 1 and 7.
Regarding claims 2 and 8, Appellant argues that Oonishi’s
capacitance value corrections into “pen pressure data,” even if construed as a
correction of a third dimensional “z-coordinate,” do not apply in the context
of claim 2. Appeal Br. 15. This argument is not persuasive.
Although Appellant makes a nominal discussion of textual portions
relied upon by the Examiner to reject those claims, Appellant has not
provided a meaningful analysis of those textual portions sufficient to
distinguish the disputed claim limitations therefrom. Appellant is reminded
that a general allegation as to the purported benefits of the claimed
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invention, coupled with a general discussion of the prior art relied upon by
the Examiner in the rejection, are not tantamount to a responsive argument.
Such a response to the Examiner’s findings is insufficient to persuade us of
Examiner error, as mere attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip op.
at 7–8 (BPAI Aug. 10, 2009) (informative); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Accordingly, we are not persuaded of error in the Examiner’s obviousness
rejection of claims 2 and 8.
2. Claims 3–6, and 9–12
Regarding the rejection of claims 4 and 10, Appellant argues that the
combined teachings of Oh, Oonishi, and Fedder do not teach the two-step
look-up process of “selecting a second linear function from the second linear
functions comprised in the LUT according to the calculated coordinate and
the capacitance change; and obtaining the square root of the total
capacitance change according to the second linear function and the
calculated coordinate”. Appeal Br. 15–16. In particular, Appellant argues
that Oonishi’s disclosure of converting capacity values to pen pressure
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irrespective of position does not teach the LUT containing second linear
function for obtaining the square root of the total capacitance change. Id.
at 16. Further, Appellant argues because Fedder’s disclosure of an Allan
derivation equation is not obtained from the LUT, it does not remedy the
noted deficiencies of Oh and Oonishi. Id.
These arguments are not persuasive. We agree with the Examiner that
Fedder’s disclosure of detecting the capacitance change by taking the square
root of the capacitance change taken in combination with Oh-Oonishi’s
disclosure of selecting linear functions from a LUT to correct position
coordinates teaches the disputed limitations of claims 4 and 10. Ans. 19–20.
Accordingly, we are not persuaded of error in the Examiner’s obviousness
rejection of claims 4 and 10.
Regarding the rejection of claims 3, 5, 6, 9, 11, and 12, because
Appellant either has not presented separate patentability arguments or has
reiterated substantially the same arguments as those previously discussed for
patentability of claims 4, 7, 8, and 10 above, claims 3, 5, 6, 9, 11, and 12
fall respectively therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
VI. CONCLUSION
We affirm the Examiner’s rejections of claims 1–12 under 35 U.S.C.
§ 103. We reverse the Examiner’s rejection of claims 1 and 7 under
35 U.S.C. § 112, first paragraph. Because we have affirmed at least one
ground of rejection with respect to each claim on appeal, the Examiner’s
decision is affirmed. See 37 C.F.R. § 41.50(a)(1).

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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7, 8 103 Oh, Oonishi 1, 2, 7, 8
3–6, 9–12 103 Oh, Oonishi, Fedder 3–6, 9–12
1, 7 112 1
st paragraph Written
Description 1, 7
Overall Outcome 1–12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED