Ex Parte Hillis

Patent Trial and Appeal Board

Mar 23, 2018

14207201 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/207,201 03/12/2014
12371 7590 03/27/2018
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
W. Daniel Hillis
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.
QC133889BlC1ClCl 5024
EXAMINER
NGUYEN, JIMMY H
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. DANIEL HILLIS
Appeal2017-007947
Application 14/207,201
Technology Center 2600
Before JOHN A. EV ANS, JOYCE CRAIG, and STEVEN M.
AMUNDSON, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of Claims 1and13-31. See App. Br. 12-15.
Claims 2-12 are cancelled. Id. at 12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM. 2
1 Appellant identifies Qualcomm Incorporated as the real party in interest.
App. Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed October 27, 2016, "App. Br."), the Reply
Brief (filed April 26, 2017, "Reply Br."), the Examiner's Answer (mailed
February 28, 2017, "Ans."), the Final Action (mailed June 10, 2016, "Final
Appeal2017-007947
Application 14/207,201
STATEMENT OF THE CASE
The Invention
The claims relate to a method and apparatus for identifying gestures
performed by a user to control an interactive display. See Abstract.
Claims 1, 19, and 26 are independent. Claim 1 is illustrative and is
reproduced below with some formatting added:
1. In an interactive display, a method for identifying a
specific user gesture, the method comprising:
displaying imagery on an imaging surface of the
interactive display;
detecting a plurality of contact locations at which at least
one user contacts a touch sensor to control the interactive
display;
responsive to a determination that a deformation of a
bounding box enclosing at least two of said plurality of contact
locations exceeds a predetermined deformation threshold and
responsive to a determination that a motion of said bounding
box is less than a predetermined motion threshold, identifying
said specific user gesture as a rotate gesture;
determining a direction of rotation of the bounding box
based on characteristics of the at least two of said plurality of
contact locations;
associating said specific user gesture with a display
command; and
executing said display command to alter the imagery.
References
Hollemans, et al., US 2007/0252821 Al Nov. 1, 2007
Hillis (Hillis '532) US 7,719,532 B2 May 18, 2010
Act."), and the Specification (filed March 12, 2014, "Spec.") for their
respective details.
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Appeal2017-007947
Application 14/207,201
Robbins, et al., US 7,743,348 B2
Hillis (Hillis '043) US 8, 139,043 B2
Rejections
June 22, 2010
Mar. 20, 2012
1. Claims 19--25 stand rejected under 35 U.S.C. 112, second
paragraph, as being indefinite. Final Act. 9--10.
2. Claims 1 and 13-31 stand rejected under 35 U.S.C. 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 10-17.
3. Claims 1 and 13-31 stand rejected under the judicial grounds of
non-statutory, obviousness-type double patenting. Final Act. 17-19.
4. Claims 1, 13, 14, 19-21, and 26-28 stand rejected under the
judicial grounds of non-statutory, obviousness-type double patenting.
Final Act. 19-20.
ANALYSIS
We have reviewed the rejection of Claims 1 and 13-31 in light of
Appellant's arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellant actually raised in the Brief. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
consider Appellant's arguments seriatim, as they are presented in the Appeal
Brief, pages 5-10.
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Application 14/207,201
CLAIMS 1 AND 13-31 ST AND REJECTED UNDER THE WDICIAL GROUNDS OF
NON-STATUTORY, OBVIOUSNESS-TYPE DOUBLE PATENTING.
Claims 1 and 13-31 stand rejected under the judicial grounds of non-
statutory, obviousness-type double patenting over claims 4, 10, 15, and 21 of
Hillis '532. Final Act. 17. Claims 1, 13, 14, 19-21, and26-28 stand
similarly rejected over claims 1 and 15 of Hillis '043 in view of Robbins.
Id. at 17-19. Claims 1, 13, 14, 19-21, and 26-28 stand further rejected over
claims 1and15 of Hillis '043 in view ofHollemans. Id. at 19-20.
Appellant presents no arguments directed to these rejections. See
App. Br. 11. We, therefore, summarily affirm. See 37 C.F.R. § 41.3 l(c)
("An appeal, when taken, is presumed to be taken from the rejection of all
claims under rejection unless cancelled by an amendment filed by the
applicant and entered by the Office."); 3 7 C.F .R. § 41.3 7 ( c )(iv) ("[A ]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal."); MPEP
§ 1205.02 (9th ed. March 2014) ("[T]he Board may summarily sustain any
grounds of rejections not argued.").
CLAIMS 19-25: INDEFINITENESS;
CLAIMS 1 AND 13-31: WRITTEN DESCRIPTION.
The instant appeal relates to Application 14/207,201. The '201
Application is a continuation of Application 13/413,594, now US 8,692,792.
The '792 patent is a continuation of Application 12/615,224, now Hillis
'043. Hillis '043 is a continuation of Application 11/134,802, now Hillis
'532. See Spec. 1. Each application in the chain of priority is incorporated
by reference in the Application on appeal. Id. ("Each of the foregoing
applications is incorporated herein in its entirety by this reference thereto").
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Application 14/207,201
Each application was examined by the Examiner of the present
application. Claims 1 and 13-31 stand rejected under the judicial grounds of
non-statutory, obviousness-type double patenting over claims 4, 10, 15, and
21 of Hillis '532. Final Act. 17 ("the conflicting claims are not identical,
they are not patentably distinct from each other because claims 1 and 13-31
of the instant application are anticipated by patent claims 4, 10, 15 and 21
[of Hillis '532]"). To affirm the Examiner on the issue of indefiniteness, we
must find that patentably indistinct claims, arising from the same
specification, can be sufficiently definite to be patented (as the Examiner
found for the Hillis '532 claims) and simultaneously be unpatentably
indefinite (as the Examiner finds for the instant claims).
Indefiniteness is a question of law, subject to underlying facts. Akzo
Nobel Coatings, Inc. v. Dow Chem. Co., 811F.3d1334, 1343 (Fed. Cir.
2016) ("Indefiniteness is a question of law that we review de novo, [] subject
to a determination of underlying facts."). The Federal Circuit reviews the
Board's decisions to ensure that they are not "arbitrary, capricious, an abuse
of discretion, ... otherwise not in accordance with law ... [or] unsupported
by substantial evidence." Personal Web Techs., LLC v. Apple, Inc.,
848 F.3d 987, 992 (Fed. Cir. 2017) (citing 5 U.S.C. § 706(2)(A), (E); see
Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307, 1313 (Fed.
Cir. 2016). The Board, as an administrative agency, "must articulate 'logical
and rational' reasons for [its] decision [ ]." Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016); see Power
Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015). The record
before us contains no indication that there has been either a relevant change
in 35 U.S.C. § 112 or a change in U.S.P.T.O. examination policy as reflected
in a relevant section of the MPEP. We, therefore, are unable to articulate
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Application 14/207,201
logically and rationally how patentably indistinct claims can be both definite
and indefinite. Accordingly, on the record before us, we do not sustain the
Examiner's rejection of claims 19-25 for indefiniteness.
Similarly, we fail to see how identical specifications could
simultaneously provide and fail to provide adequate written-description
support for patentably indistinct claims. Accordingly, on the record before
us, we do not sustain the Examiner's rejection of claims 1 and 13-31 for
lack of written description.
DECISION
The rejections of Claims 1 and 13-31 under the judicial grounds of
non-statutory, obviousness-type double patenting is AFFIRMED.
The rejection of Claims 1 and 13-31 under 35 U.S.C. 112 (1st in is
REVERSED.
The rejection of Claims 19-25 stand rejected under 35 U.S.C. 112
(2nd if) is REVERSED.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1 and 13-31
is affirmed. See 37 C.F.R. § 41.50(a)(l).
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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