Apple Inc.

Patent Trials and Appeals Board

Jul 2, 2020

15380747 - (D) (P.T.A.B. Jul. 2, 2020)

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.
15/380,747 12/15/2016 Steven P. HOTELLING 106842010203
(P4480USC3)
1041
161038 7590 07/02/2020
Apple c/o Kubota & Basol LLP
445 S. Figueroa Street
Suite 2140
Los Angeles, CA 90071
EXAMINER
MARINELLI, PATRICK
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
docket@kuba-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN P. HOTELLING,
JOHN GREER ELIAS, and KAPIL VINOD SAKARIYA
Appeal 2019-004825
Application 15/380,747
Technology Center 2600
Before ERIC B. CHEN, CARL L. SILVERMAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–17, which are all of the claims pending in the
application. A telephonic oral hearing was held on June 24, 2020. The
record will include a written transcript of the oral hearing. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Apple Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2019-004825
Application 15/380,747

2
TECHNOLOGY
The application relates to “touch sensing devices” in which “multiple
drive lines may be simultaneously or nearly simultaneously stimulated with
drive signals having unique characteristics, such as phase or frequency.”
Spec. Abstract.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A touch sensing device comprising:
drive circuitry configured to:
apply a first drive signal to a first drive line of a
plurality of drive lines during a first stimulus window; and
apply a second drive signal to a second drive line of
the plurality of drive lines during a second stimulus
window, the second stimulus window at least partially
overlapping the first stimulus window during an
overlapping stimulus window, wherein the first and
second drive signals have a predetermined frequency
relationship and are in phase during a first portion of the
overlapping stimulus window and out of phase during a
second portion of the overlapping stimulus window; and
sense circuitry configured to:
detect a sense signal from at least one sense line, the
sense signal being related to the first and second drive
signals by touch or proximity of one or more objects to
one or more sensing points associated with the at least one
sense line, a sensing point being associated with at least
one of the plurality of drive lines and at least one of a
plurality of sense lines; and
derive touch information for the one or more
sensing points from the sense signal.
Appeal 2019-004825
Application 15/380,747

3
REJECTION
Claims 1–17 stand rejected under 35 U.S.C. § 112, first paragraph for
lack of written description. Final Act. 3.
ANALYSIS
Claim 1 recites (A) “a first drive signal . . . during a first stimulus
window”; (B) “a second drive signal . . . during a second stimulus window”;
(C) “the second stimulus window at least partially overlapping the first
stimulus window during an overlapping stimulus window”; and (D) “the
first and second drive signals . . . are in phase during a first portion of the
overlapping stimulus window and out of phase during a second portion of
the overlapping stimulus window.” Independent claim 11 recites
commensurate limitations.
The Examiner and Appellant agree that Figures 12B–E of the present
application disclose various ways two stimulus windows can overlap and
that Figure 8 discloses a specific example of waveforms for first and second
drive signals that are in phase during a first portion of a stimulus window
and out of phase during a second portion of the stimulus window. See Ans.
4–5. The sole dispute is whether a person of ordinary skill in the art would
have understood that the phase teachings for the waveforms in Figure 8
apply to the overlapping stimulus windows in Figures 12B–E (as Appellant
contends) or alternatively whether Figures 12B–E only apply to waveforms
“other” than those in Figure 8 (as the Examiner determines).
An excerpted portion of Figure 8 of the present application is
reproduced below:
Appeal 2019-004825
Application 15/380,747

4

Figure 8 illustrates a multi-line stimulation arrangement in which
two lines may be stimulated simultaneously. Specifically, Row
A and Row B may be simultaneously (or nearly simultaneously)
stimulated with waveforms 801 and 802. As can be seen, the
phase of waveform 801 may be adjusted, e.g., after the fourth
pulse. As a result, the remaining pulses of waveforms 801 and
802 may be 180° out of phase. . . . The phase relationships
between the waveforms may be easily understood with reference
to the + and − signs above.
Spec. ¶ 37. Thus, Figure 8 depicts waveforms 801 and 802 as being in phase
during time X1 (from t0 to t1) and out of phase during time X2 (from t1 to t2).
Figure 12 of the present application is reproduced below:
Appeal 2019-004825
Application 15/380,747

5

Figures 12A - E illustrate generally various alternatives for
stimulus windows in accordance with an embodiment of the
present invention.
Spec. ¶ 19. Elsewhere, the Specification explains Figure 12 as follows:
Examples of other possibilities for stimulus waveforms
according to the principles described herein may be understood
with reference to Fig. 12. Timing signal 1201 can define a
stimulus time window. Each line can have a corresponding
timing signal. During the stimulus time window, e.g., when
signal 1201 is high, a stimulation waveform can be applied to the
corresponding line (or lines). This stimulation waveform may
take a variety of forms, including a square wave, a sine wave, an
exponentially decaying sine wave, a pulsed sine wave, etc.
Spec. ¶ 50 (emphasis added).
The Examiner relies on the word “other” in the first sentence of
paragraph 50 to determine that “the stimulus waveforms described with
Appeal 2019-004825
Application 15/380,747

6
respect to Figure 12 are described as being other stimulus waveforms from
those previous[ly] described, such as those in Figure 8.” Ans. 4 (emphasis
added). Thus, the Examiner determines that the teachings of Figure 8 do not
apply to Figure 12.
For written description, “the test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
Here, we agree with Appellant that the text describing Figures 8 and
12A–E would have reasonably conveyed the subject matter of claim 1 to a
person of ordinary skill in the art. Appeal Br. 11–12. The waveforms of
Figure 8 are straightforward examples of the stimulus time windows shown
in Figures 12A and 12B. Figures 12C to 12E then are “[e]xamples of other
possibilities for stimulus waveforms” that “may be understood with
reference to” Figures 12A and 12B. Spec. ¶ 50; Reply Br. 5; see also Spec.
¶ 19 (“Figures 12A - E illustrate generally various alternatives for stimulus
windows”). As Appellant points out, the first sentence of paragraph 50 also
states that its waveforms are “according to the principles described herein,”
which includes the teachings surrounding Figure 8. Reply Br. 5; Appeal Br.
11. Figures 12B–E merely depict varying the overlap between “various
alternatives for stimulus windows.” Spec. ¶ 19; see also id. ¶ 28 (disclosing
“at least partially overlapping time periods”). Figure 8 on the other hand
depicts varying the phase within a particular waveform. Those teachings are
complimentary, not mutually exclusive. Appeal Br. 11–12.
Thus, we do not sustain the Examiner’s rejection of claims 1–17.
Appeal 2019-004825
Application 15/380,747

7
DECISION
The following table summarizes the outcome of each rejection:
Claims Rejected Statute Basis Affirmed Reversed
1–17 § 112 Written description 1–17
REVERSED