Ex Parte HOTELLING

Patent Trial and Appeal Board

Dec 28, 2015

13236255 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/236,255 09/19/2011 Steven P. HOTELLING
67673 7590 12/30/2015
APPLE c/o MORRISON & FOERSTER LLP NOV A
1650 TYSONS BLVD.
SUITE 300
MCLEAN, VA 22102
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.
106842005702
(P4108USC2)
CONFIRMATION NO.
9903
EXAMINER
PHAM, VIET DAVID
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
12/30/2015 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEVENP. HOTELLING
Appeal2013-009895
Application 13/236,255
Technology Center 2600
Before JOHN G. NEW, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 35-70, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Apple Inc. (App. Br. 2.)
Appeal2013-009895
Application 13/236,255
Claimed Subject Matter
The invention generally relates to capacitance sensing electrodes with
integrated I/O devices. (Spec. i-f 3.) Claim 35, reproduced below, is
illustrative:
35. A device, comprising:
a controller,
an I/O mechanism,
a touch sensor,
a first communication line connecting the touch sensor to
the controller, and
a second communication line connecting the I/O
mechanism to the controller,
wherein the controller is configured to switch between a
first mode of operation and a second mode of operation,
wherein
in the first mode of operation, the controller is configured
to operate the touch sensor using the first and second
. . 1. ,..1 commumcat10n imes, anu
in the second mode of operation, the controller is
configured to operate the I/O mechanism using the first and
second communication lines.
Rejections
Claims 35, 36, 38, 40-44, 50, 55, 56, 58, 59, and 61---65 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Zadesky (US 2005/0052425 Al,
published Mar. 10, 2005). (Final Act. 3-8.)
Claims 37, 45--48, 60, and 66---68 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Zadesky and Ng (US 2007/0152977 Al,
published July 5, 2007). (Final Act. 8-12.)
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Application 13/236,255
Claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zadesky. (Final Act. 12.)
Claim 49 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zadesky, Ng, and Rosenberg (US 6,429,846 B2, issued Aug. 6, 2002).
(Final Act. 12-13.)
Claim 69 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zadesky and Rosenberg. (Final Act. 13-14.)
Claims 51-54 and 70 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zadesky and Sample (US 6,285,211 Bl, issued Sept. 4,
2001). (Final Act. 14--18.)
Claim 57 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zadesky and Taylor (US 2003/0025679 Al, published Feb. 6, 2003).
(Final Act. 18-19.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner erred (App. Br. 5-9; Reply Br. 2--4). We are not
persuaded by Appellant's contentions, and we adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and in the Answer (see Ans. 2--4). We highlight and address specific
arguments and findings for emphasis as follows.
Rejection under 35 US.C. § 102(b)
Appellant argues as a group claims 35, 36, 38, 40--44, 50, 55, 56, 58,
59, and 61---65, and we select claim 35 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/236,255
Appellant contends Zadesky does not disclose a controller configured
to operate a touch sensor and an I/O mechanism in different operation modes
using the same communication lines that connect the touch sensor and the
I/O mechanism to the controller. (App. Br. 5---6.) Appellant does not dispute
Zadesky discloses a first communication line connecting the touch sensor to
the controller, and a second communication line connecting the 110
mechanism to the controller, as recited in claim 35. (See App. Br. 6-7.)
Appellant also does not dispute Zadesky discloses a portion of the first
communication line is shared with the second communication line, and that
this shared portion is used: (1) in a first mode of operation that operates the
touch sensor, and (2) in a second mode of operation that operates the I/O
mechanism. (See App. Br. 8.) Appellant argues, however, that interpreting
claim 35 to cover the configuration disclosed in Zadesky reads out of the
claim the limitations requiring that the lines connect the touch sensor to the
controller and connect the I/O mechanism to the controller. (App. Br. 8-9.)
In other words, Appellant argues that the portion of each communication
line that is shared and used in both modes of operation in Zadesky does not
extend to the touch sensor and controller, which is required of the first
communication line, and does not extend to the I/O mechanism and
controller, which is required of the second communication line. (See also
Reply Br. 3.)
We are not persuaded by Appellant's arguments. We agree with the
Examiner, and as noted Appellant does not dispute, that Zadesky discloses a
first communication line connecting the touch sensor to the controller, and a
second communication line connecting the 110 mechanism to the controller,
as recited in claim 35. (See Ans. 3--4 (citing Zadesky Fig. 4).) We also
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Appeal2013-009895
Application 13/236,255
agree with the Examiner that using the shared portion of the first and second
communication lines in operating both the touch pad and the switch in
Zadesky constitutes using the first and second communication lines, as
recited in claim 35. (See Ans. 2-3.) Appellant does not explain why using a
portion of a communication line is not using the communication line, as
claimed. As an example of similar usage of the term "using," a car is
"using" Road X, which stretches from point A to point C through point B,
even if the car only travels on Road X from point A to point B. We are not
persuaded the term "using" has a different meaning in claim 35, e.g., to
specify that electrical signals are sent along the entirety of each
communication line during both modes of operation.
In light of the foregoing, we sustain the rejection of claims 35, 36, 38,
40-44, 50, 55, 56, 58, 59, and 61-65 under 35 U.S.C. § 102(b) as anticipated
by Zadesky.
Rejections under 35 USC§ 103(a)
Appellant presents no additional arguments regarding claims 37, 39,
45--49, 51-54, 57, 60, and 66-70. Thus, for the same reasons as claim 35,
we sustain the following rejections under 35 U.S.C. § 103(a): claims 37, 45-
48, 60, and 66-68 as unpatentable over Zadesky and Ng; claim 39 as
unpatentable over Zadesky; claim 49 as unpatentable over Zadesky, Ng, and
Rosenberg; claim 69 as unpatentable over Zadesky and Rosenberg; claims
51-54 and 70 as unpatentable over Zadesky and Sample; claim 57 as
unpatentable over Zadesky and Taylor.
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Application 13/236,255
DECISION
We affirm the Examiner's decision to reject claims 35-70.
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 )(iv).
AFFIRMED
hh
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