Ex Parte KRAH et al

Patent Trial and Appeal Board

Oct 13, 2016

12022572 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/022,572 01/30/2008
69753 7590 10/17/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Christoph Horst KRAH
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.
106842008500(P5551US1) 5895
EXAMINER
LEIBY, CHRISTOPHER E
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH HORST KRAH and
STEVE PORTER HOTELLING
Appeal2015-007014
Application 12/022,572 1
Technology Center 2600
Before LARRY J. HUME, LINZY T. MCCARTNEY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Apple, Inc. App.
Br. 2.
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Application 12/022,572
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates to touch sensor
panels that utilize multiple stimulation frequencies and phases to detect and
localize touch events, and more particularly, to a low power auto-scan mode
capable of detecting touch events during periods of touch inactivity." Spec.
iT 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A method for detecting whether a touch event has
occurred on a touch sensor panel, comprising:
while maintaining a panel processor in a reduced power
state,
generating one or more stimulation signals, the
stimulation signals representing AC waveforms having one or
more frequencies and one or more phases;
simultaneously driving a first group of rows of the touch
sensor panel with the one or more stimulation signals in a single
scan of sense nodes on the touch sensor panel, each of the first
group of rows receiving a plurality of periods of a particular
stimulation signal during each scan, and coupling charge from
the first group of rows into one or more columns of the touch
sensor panel,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 20, 2015); Reply Brief ("Reply Br.," filed July 20, 2015); Examiner's
Answer ("Ans.," mailed May 22, 2015); Final Office Action ("Final Act.,"
mailed June 3, 2014); and the original Specification ("Spec.," filed
Jan. 30, 2008).
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Application 12/022,572
determining whether an output of one or more sense
channels coupled to the one or more columns of the touch
sensor panel exceeds a predetermined threshold indicative of a
change in the charge coupled into one of the columns and the
occurrence of a touch event, and
if the output exceeds the threshold, triggering a
subsequent capture of touch data for determining a location of
the touch event.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Reynolds US 2007 /0109274 Al
Kwan et al. ("Kwan") US 2009/0027360 Al
Gray US 7,714,846 Bl
Lee et al. ("Lee") US 7,737,957 B2
Rejections on Appeal
May 17, 2007
Jan.29,2009
May 11, 2010
June 15, 2010
RI. Claims 1, 8-13, and 20-28 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Reynolds and Lee. Final
Act. 2.
R2. Claims 2-5, 7, 14--17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Reynolds, Lee, and Gray.
Id. at 24.
R3. Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Reynolds, Lee, Gray, and Kwan. Id.
at 29.
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Application 12/022,572
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5-11), we decide the
appeal of obviousness Rejection RI of claims 1, 8-13, and 20-28 on the
basis of representative claim 1.
Remaining claims 2-7 and 14--19 in rejections R2 and R3, not argued
separately, stand or fall with the respective independent claim from which
they depend. 3
ISSUES
Appellants argue (App. Br. 7-10; Reply Br. 2-3) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Reynolds and Lee is in error. These contentions present us
with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests a "method for detecting whether a touch event has
occurred on a touch sensor panel ... while maintaining a panel processor in a
reduced power state," that includes, inter alia, the steps of "determining
whether an output of one or more sense channels coupled to the one or more
columns of the touch sensor panel exceeds a predetermined threshold" and,
conditionally, "if the output exceeds the threshold, triggering a subsequent
capture of touch data for determining a location of the touch event," as
recited in claim 1? (Emphasis added).
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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(b) Did the Examiner err in rejecting claim 1 under § 103 because,
allegedly, there is improper motivation to combine Reynolds with Lee in the
manner suggested by the Examiner?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, 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 in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Issue (a)- Conditional "Triggering" Limitation
Appellants contend, " [ t ]he final Office Action fails to appreciate the
'if-then' nature of the 'subsequent capture of touch data' limitation," allegedly
because "Reynolds detects a touch and its location; there is no need for a
subsequent capture of touch data to determine the location of the touch if the
output exceeds the threshold." App. Br. 7 (emphasis omitted).
[B]ecause Reynolds teaches both the detection of a touch and
its location, it is not surprising that Reynolds would not contain
any disclosure at all related to the subsequent capture of touch
data to determine a location of the touch if the output exceeds
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Id.
the threshold. With the location already determined from the
captured touch data, no subsequent capture would be needed.
Reynolds may teach subsequent data captures, but they are not
triggered if the output exceeds a threshold, as required by the
claims.
"In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
We note the claim specifically recites "if the output exceeds the
threshold, triggering a subsequent capture of touch data for determining a
location of the touch event." App. Br. 13 (claim 1 ). "While Reynolds was
cited to teach that a touch is determined after a threshold was met and
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subsequently the location of touch was determined," Lee was cited to teach
"while maintaining a processor in a reduced power state." Ans. 3.
In agreement with the Examiner, we find, under the broadest
reasonable interpretation of the recited conditional "triggering" limitation,
Reynolds teaches "triggering a ... capture of touch data for determining a
location of the touch event," after, i.e., "subsequent" to an output of one or
more sense channels exceeding the threshold. See Final Act. 3. Simply
stated, after the touch threshold is exceeded, touch data is captured. As
noted by the Examiner, there is "no point of determining the location of [a]
non-existent touch." Ans. 3.
Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted). For patent application claims before the
USPTO; "[g]iving claims their broadest reasonable construction 'serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.'" In re Am. A cad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984)).
We, therefore, agree with the Examiner's finding that the combination
of Reynolds and Lee teaches or at least suggests the contested conditional
limitation of claim 1, and commensurate limitations in independent claims
13, 27, and 28, which are not separately argued by Appellants.
In further support of the Examiner's legal conclusion of obviousness
of claim 1, and purely as a matter of claim construction under the broadest
reasonable interpretation, we conclude the step of "triggering a subsequent
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capture of touch data for determining a location of the touch event," may
never occur. See Ex parte Schulhauser, Appeal No. 2013-007847, at *9
(PT AB, April 28, 2016) (precedential) (holding "The Examiner did not need
to present evidence of the obviousness of the remaining method steps of
claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim (e.g., instances in which the electrocardiac signal
data is not within the threshold electrocardiac criteria such that the condition
precedent for the determining step and the remaining steps of claim 1 has not
been met."); see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL
514314, at *4--5 (BPAI Jan. 27, 2011).
Here, in further support of the Examiner's legal conclusion of
obviousness, we apply the precedential guidance of Schulhauser. Therefore,
the Examiner need not present evidence establishing the obviousness of the
conditional triggering step of claim 1, because it is not required to be
performed under a broadest reasonable interpretation of the claim (e.g.;
instances when the output does not exceed the threshold, such that the
condition precedent for the "triggering" step of claim 1 is not met).
Therefore, we consider Appellants' argument that Reynolds fails to
teach or suggest the conditional triggering step of claim 1 unavailing,
because it is not commensurate with the broadest reasonable interpretation
of claim 1. See Schulhauser, Appeal No. 2013-007847, at *9. Accordingly,
we also sustain the Examiner's rejection of claim 1 on the basis of claim
construction.
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Issue (b) - Motivation to Combine
Appellants contend the combination of Reynolds and Lee is improper
because:
Reynolds teaches a complete solution for determining a touch
and its location. In other words, after detecting that a change in
the charge coupling into one of the columns has exceeded a
threshold, a touch location is recognized. As such, there is no
motivation or need, after detecting that a change in the charge
coupling into one of the columns has exceeded a threshold, to
trigger a subsequent capture of touch data for determining a
location of the touch event, as taught by Lee.
App. Br. 9.
In KSR, the Court stated " [ t ]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
"some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness." Jn re Kahn, 441 F .3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR, 550 U.S. at 418).
The Examiner's stated basis for combining Reynolds and Lee is that it
"would have been obvious to one skilled in the art at the time the invention
was made to enable Reynolds' touch detecting system with the known
technique of a reduced power state of the processor to yield the predictable
results of a power saving mode as described by Lee." Final Act. 5---6 (citing
Lee, col. 14, 1. 50-col. 15, 1. 25).
Appellants do not dispute the known motivation in the art as pointed
out by the Examiner, i.e., to save power in devices by utilizing power saving
mode( s ), but instead argue:
[T]he final Office Action fails to explain why one of ordinary
skill in the art would be motivated to add a reduced power state
and wake-up command to a complete full-power touch/location
detection solution. Applicants contend that a two-step, reduced
power touch detection followed by a full power touch location
detection may replace a single-step full power touch/location
detection solution, but cannot be reasonably combined with it.
In other words, the teaching of Reynolds and Lee are mutually
exclusive, and their combination is improper.
App. Br. 10. Appellants' assertions amount to unsupported attorney
argument and, therefore, we give them little weight. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-
40 (Fed. Cir. 1996).
Moreover, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
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U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which, according to our reviewing court, "operates as a
beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed conditional limitation of claim 1, nor do we find error in the
Examiner's resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner's obviousness rejection of independent claim 1, and grouped
claims 8-13, and 20-28 which fall therewith. See Claim Grouping, supra.
§ 103 (a) Rejections R2 and R3 of Claims 2-7 and 14-19
In view of the lack of any substantive or separate arguments directed
to the obviousness rejection of claims 2-7 and 14--19 under§ 103 (see App.
Br. 10-11 ), we sustain the Examiner's rejection of these claims. Arguments
not made are waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R3 of claims 1-28 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-28.
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
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