Ex Parte Hollemans et al

Patent Trial and Appeal Board

Nov 20, 2014

11570922 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GERARD HOLLEMANS, HUIB V. KLEINHOUT,
HENRIETTE C. M. HOONHOUT,
SANDER B.F. WIJDEVEN, and VINCENT BUIL
____________________

Appeal 2012-006743
Application 11/570,9221
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics N.V. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants' invention relates to a multi-layered display of a graphical
user interface that uses 3-D sensing in order to manipulate various functions
by using the finger of a user at a certain distance from the screen. Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and labeling added to disputed limitations):
1. A graphical user interface for a display device for
selectively displaying a menu of options on a display screen of
the display device, said graphical user interface comprising:
[L1] means for detecting a distance (Z) that a finger of a
user is from the display screen, said detecting means generating
a detection signal when said distance (Z) is within a
predetermined threshold distance;
means for determining a position of said user's finger
with respect to said display screen;
[L2] means for displaying said menu on said display
screen at said determined position in response to said detection
signal;
means for further detecting movements of said user's
finger in a plane parallel to the display screen; and
means for using said detected further movements to
effect selections from the menu options.

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 8, 2011); Reply Brief ("Reply Br.," filed Mar. 19, 2012); Examiner's
Answer ("Ans.," mailed Jan. 19, 2012); Final Office Action ("Final Act.,"
mailed June 16, 2011); and the original Specification ("Spec.," filed
July 28, 2008).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Vranish US 2002/0000977 A1 Jan. 3, 2002
Gillespie et al.
("Gillespie")
US 2002/0093491 A1 July 18, 2002
Wang3 US 2005/0093831A1 May 5, 2005
Rejection on Appeal
Claims 1–14 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Vranish, Gillespie, and Wang. Ans. 8.
GROUPING OF CLAIMS
Based on Appellants’ arguments (App. Br. 9 and 17), we decide the
appeal of the rejection of claims 1–14 on the basis of representative claim 1.
ISSUE
Appellants argue (App. Br. 9–17; Reply Br. 2–4) the Examiner's
rejection of claims 1–14 under 35 U.S.C. § 103(a) as being obvious over the
prior art combination of record is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art teaches or suggests
limitations [L1] and [L2], i.e., "means for detecting a distance (Z) that a

3 We note the "Evidence Relied Upon," section (8) of the Answer,
incorrectly lists "US 2003/0048262 Wang 5-2005" as the
tertiary reference. Ans. 7. The correct patent application publication
number is " US 2005/0093831A1," with a publication date of May 5, 2005,
as listed, supra.
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finger of a user is from the display screen . . . ; [and] means for displaying
said menu on said display screen at said determined position in response to
said detection signal," as recited in claim 1?
ANALYSIS
We only considered those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments.
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments with respect to
claims 1–14, and we incorporate herein and adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner's Answer in response to Appellants' arguments. We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted and we highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
Limitation [L1]
Appellants contend the portions of Gillespie cited by the Examiner
(Ans. (citing Gillespie ¶¶ 82 and 88)) only disclose "detecting the XY
position and pressure of the finger on the display, and not the distance Z of
the finger from the display," and therefore does not teach or suggest "means
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for detecting a distance (Z) that a finger of a user is from the display
screen," as recited in claim 1. App. Br. 11; and see Reply Br. 2–3.
We find Gillespie paragraph 82 teaches, in relevant part, "[c]apacitive
position sensing system 6 can accurately determine the position of a finger 8
or other conductive object proximate to or touching a sensing plane 10."
(Emphasis added). Thus, contrary to Appellants' allegation that Gillespie
requires touching the display, Gillespie teaches or at least suggests the first
disputed means plus function limitation. Further, "[t]he outputs of X input
processing circuitry 12 and Y input processing circuitry 14 are presented to
arithmetic unit 16, which uses the digital information to derive digital
information representing the position and pressure of the finger 8 or other
conductive object relative to the sensing plane 10.” Gillespie ¶ 82
(emphasis added). We also find, with respect to Gillespie Figure 1, if
Gillespie were only concerned with determining X and Y coordinates as
Appellants allege because probe or finger 8 purportedly must be in contact
with sensing plane 10, then there would be no need for Arithmetic Unit 16 to
determine the Z coordinate, i.e., the dimension perpendicular to sensing
plane 10.
In further support of the Examiner's rejection, we note Vranish
teaches or at least suggests determination of the probe distance (d) above
display 104 by the relationships disclosed in paragraphs 43 and 44.
Limitation [L2]
With respect to limitation [L2], i.e., "means for displaying said menu
on said display screen at said determined position in response to said
detection signal," we find, in agreement with the Examiner, Wang teaches or
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at least would have suggested displaying a menu on the display screen at a
position determined by Wang's digitizer. See Wang ¶¶ 16–17; Fig. 3,
control circuit 64 and on-screen display (OSD) circuit 62; and see Ans. 11.
We also note, because the Examiner rejects the claims as obvious over
the combined teachings of Vranish, Gillespie, and Wang, the test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants have provided no evidence that combining such teachings
was "uniquely challenging or difficult for one of ordinary skill in the art,"
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007), nor have Appellants presented evidence that this incorporation
yielded more than expected results.
Rather, we find that Appellants' invention is simply a combination of
known teachings that realize a predictable result. The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would "be able
to fit the teachings of multiple patents together like pieces of a puzzle" since
the skilled artisan is "a person of ordinary creativity, not an automaton." Id.
at 420-21.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
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suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 1, and claims 2–14 which fall therewith.
REPLY BRIEF
To the extent Appellants’ advance new arguments in the Reply Brief
(Reply Br. 2–4) not in response to a shift in the Examiner's position in the
Answer,4 we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–14 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we sustain the rejection.

4 We note Appellants raise such an untimely new argument in the Reply
Brief with respect to the additional limitations in claim 1 of "means for
further detecting movements of said user's finger in a plane parallel to the
display screen; and means for using said detected further movements to
effect selections from the menu options." Reply Br. 3. We further note the
Examiner's position on these limitations and the teachings of the prior art of
record has not changed between the Final Action and the Answer. See Final
Act. 4; Ans. 9. Appellants did not argue these limitations in the Appeal
Brief, therefore, we find such new arguments are untimely.
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DECISION
We affirm the Examiner's decision rejecting claims 1–14.
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)(iv) (2011).
AFFIRMED

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