Ex Parte Hunt et al

Patent Trial and Appeal Board

Aug 23, 2016

13311420 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/311,420 12/05/2011
109808 7590 08/25/2016
LENOVO/P ANGRLE
Pangrle Patent, Brand & Design Law, P.C.
3500 W Olive Ave
3rd Floor
Burbank, CA 91505
FIRST NAMED INVENTOR
John Miles Hunt
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.
RPS9201l0050-US-NP 7089
EXAMINER
GUO,XILIN
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
brian@ppbdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MILES HUNT and JOHN WELDON
NICHOLSON
Appeal2014-009655
Application 13/311,420
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2014-009655
Application 13/311,420
l. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (hereinafter "Request") on July 31, 2016 for reconsideration of our
affirmance of the Examiner's rejection of claims 1-3, 5-8, 11 and 16---20 in a
Decision mailed June 1, 2016 (hereinafter "Decision") ..
The Decision affirmed the Examiner's 35 U.S.C. § 102(b) rejection of
claims 1-3, 5-8, 11 and 16---20 over Nasiri and also affirmed the Examiner's
35 U.S.C. § 103(a) rejections of: 1) claims 9 and 10 over Nasiri and
MacGougan; and 2) claims 4, and 12-15 over Nasiri and Cumming.
We have reconsidered our Decision regarding claims 1-3, 5-8, 11
and 16---20 in light of Appellants' comments in the Request (Request 2---6).
We grant the Rehearing Request to the extent that we consider the
Appellants' arguments infra, but DENY the request to modify our Decision.
As noted infra, we are still of the view that the invention set forth in claims
1-3, 5-8, 11 and 16-20 is anticipated in view of the teachings ofNasiri
under 35 U.S.C. § 102(b). We incorporate our earlier Decision herein by
reference. See 37 C.F.R. § 41.52(a)(l).
II. ISSUE
The issue we address in this Request is whether Appellants have
persuasively identified that the Board misapplied the relevant law or
misapprehended Appellants' arguments set forth in the Appeal Brief in
finding no error with the Examiner's finding that Nasiri discloses
"comparing the acceleration values for the two axes that define the plane to
a threshold that depends on the acceleration value for the axis
perpendicular to the plane," as recited in claim 1 (emphasis added).
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Application 13/311,420
Ill. ANALYSIS
Appellants state five reasons for their Request:
1. The language of independent claims 1 and 16 was
misinterpreted;
2. The principle of operation of gyroscope ofNasiri et al. was
misinterpreted;
3. The NPL Freescale Semiconductor MMA8450Q sensor was not
given weight;
4. The original dependent claim 2 was not properly considered;
and
5. The original dependent claim 3 was not properly considered.
(Request 2).
As for claim 1, Appellants contend:
The method of claim 1 includes operating a 3-axis accelerometer
to provide acceleration values where a threshold then depends on
one of those values, i.e., the threshold is a function of that
acceleration value. Such an approach can be effectuated in an
instant in contrast to Nasiri et al., which must occur over some
amount of time.
(Request 2, emphasis added).
In particular, Appellants argue:
In essence, the method of claim 1 can be effectuated in an instant,
i.e., it does not rely on integrating gyroscope signals over time to
see if an integrated value thereof passes a fixed threshold as set
forth in Nasiri et al. Clearly, the gyroscope approach of Nasiri et
al. cannot operate in an instant.
(Request 3, emphasis added).
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Application 13/311,420
Appellants further argue that the "linear relationship" limitation in
dependent claim 3 can be used "to arrive at a reasonable interpretation of
claim 1." (Request 3, 4).
We note Appellants present new arguments in the Request such as
distinguishing claim 1 as being "effectuated in an instant" whereas Nasiri
"cannot operate in an instant." However, it is inappropriate for Appellants
to discuss for the first time in a Reply Brief, Request for Rehearing, or
during Oral Hearing, matters that could have been raised in the Appeal
Brief. As the Board has found, "[t]he failure to raise all issues and
arguments diligently, in a timely fashion, has consequences," and thus, such
newly-raised arguments are technically waived. Ex parte Borden, 93
USPQ2d 1473, 1475 (BPAI 2010) (informative decision). Cf with Kaufman
Company v. Lantech, Inc., 807 F.2d 970, 973 (Fed. Cir. 1986), and McBride
v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986).
See also 37 C.F.R. §41.52 (a)(l): Rehearing ... "Arguments not raised, and
Evidence not previously relied upon, pursuant to§§ 41.37, 41.41, or 41.47
are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section ... ,"which Appellants do
not show to be the case here.
As set forth in our Decision, we were unpersuaded by Appellants'
arguments on an unclaimed distinction of claim term "threshold," i.e., static
versus dynamic thresholds, because we found no support in the claim
language for any such distinctions. (App. Br. 6). We also set forth in our
Decision that Appellants presented no evidence to preclude us from broadly
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Appeal2014-009655
Application 13/311,420
but reasonably interpreting the claim term "a threshold" to encompass
Nasiri's threshold. (Decision 7). 1
In their Request, Appellants similarly continue to argue further
unclaimed distinctions, i.e. operating in an "instant" versus over time.
(Request 2-3). Although such arguments are new and, therefore,
inappropriate, they are also independently unpersuasive as these arguments
are not commensurate with the scope of claim 1.
Appellants' suggested use of a limitation in dependent claim 3 to
interpret independent claim 1 (Request 3, 4) is also unpersuasive as an
independent claim may not be narrowed by a limitation in a dependent
claim. That is, such arguments are similarly not commensurate with the
scope of claim 1, since the limitation in claim 3 is not recited in claim 1.2
We find Appellants' alternate basis for the Request, i.e., that the
"principle of operation of gyroscope ofNasiri is misinterpreted" (Request 2)
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See also Spec. i173 ("Although various
examples of methods, devices, systems, etc., have been described in
language specific to structural features and/or methodological acts, it is to be
understood that the subject matter defined in the appended claims is not
necessarily limited to the specific features or acts described. Rather, the
specific features and acts are disclosed as examples of forms of
implementing the claimed methods, devices, systems, etc."). (Emphasis
added).
2 The doctrine of claim differentiation informs us "the presence of a
dependent claim that adds a particular limitation raises a presumption that
the limitation in question is not found in the independent claim." Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004). "When
different words or phrases are used in separate claims, a difference in
meaning is presumed." Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143
(Fed. Cir. 2005).
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Appeal2014-009655
Application 13/311,420
is unpersuasive because the Board interprets the Appellants' claims, not the
prior art. Nevertheless, Appellants' arguments regarding Nasiri are directed
to unclaimed distinctions, i.e., "over some period of time ... " (Request 6),
that are not commensurate with the scope of the claim.
Similarly, we also find Appellants' further alternate basis of a reason
for rehearing, namely that the "NPL Freescale Semiconductor MMA8450Q
sensor was not given weight," to be unpersuasive because the argued claims
are silent as to any such sensor.
Based on this record, Appellants have not identified that the Board has
misapplied the relevant law or misapprehended the Appellants' arguments.
We, therefore, maintain our affirmance of the Examiner's rejection of
claim 1under35 U.S.C. § 102(b) over Nasiri.
Regarding claims 2 and 3, Appellants contend the Board did not
properly consider these claims. (Request 2). Appellants further contend:
In contrast to Nasiri; NPL 1; and NPL 2; the claimed subject
matter adjusts a threshold. Per claim 2, that threshold increases
with respect to acceleration along the axis perpendicular to the
plane. Again, appreciating the actual physics, if the threshold
increases too much, it may possibly be that transitions may be
"hard" to make. Still, this differs from a "lockout" mechanism as
described in NPL 1 and NPL 2 and certainly differs from the
approach ofNasiri.
(Request 5).
However, the Board did consider dependent claims 2 and 3, and found
the Examiner had rebutted the Appellants' arguments in the Answer by a
preponderance of the evidence and, further, the Board adopted and
incorporated the Examiner's findings and underlying reasoning.
(Decision 7).
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Application 13/311,420
Furthermore, the Appellants' specific arguments regarding claim 2
(Request 5) are again not commensurate with the scope of the claim. We are
not persuaded that the plain language of the limitation "threshold" in claim 2
precludes Nasiri's disclosure of a threshold increase. (Final Act. 15-16).
Accordingly, Appellants have not identified that the Board has
misapplied the relevant law or misapprehended Appellants' arguments. We
therefore maintain our affirmance of the Examiner's rejection under 35 USC
§ 103(a) of claims 1-3, 5-8, 11 and 16-20 over Nasiri.
IV. CONCLUSION AND DECISION
We have considered the arguments raised by Appellants in the
Request for Rehearing. Although we have considered out prior Decision in
light of the Request for Rehearing, we decline to modify our prior Decision
in any respect.
REHEARING DENIED
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