Ex Parte Monson

Patent Trial and Appeal Board

Apr 4, 2017

13458639 (P.T.A.B. Apr. 4, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/458,639 04/27/2012 Brian Monson 4981.CIRQ.NP 6400
26986 7590 04/06/2017
MORRISS OBRYANT COMPAGNI, P.C.
4505 S WASATCH BLVD, SUITE 270
SALT LAKE CITY, UT 84124
EXAMINER
ROSARIO, NELSON M
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
04/06/2017 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):
docket@utiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MONSON
Appeal 2016-004199
Application 13/458,639
Technology Center 2600
Before JOSEPH L. DIXON, KAMRAN JIVANI, and JOYCE CRAIG,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004199
Application 13/458,639
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to compensating for an antenna that is close
enough to a touchpad to cause interference with touch sensor operation.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for operating a touch sensor that is in proximity
of an antenna that can interfere with operation of the touch
sensor, said method comprising the steps of:
1) providing a touch sensor having no moving parts
including an electrode grid disposed on a first substrate, and
touch sensor circuitry for receiving signals from the
electrode grid and detecting a pointing object that is touching a
surface of the touch sensor;
2) providing an antenna for communicating with a
contactless card reader;
3) disposing the antenna in a location that when used may
cause interference with operation of the touch sensor;
4) providing a first set of compensation data that is used
by the touch sensor circuitry when the antenna is on; and
5) accurately determining a location of the pointing object
on the surface of the touch sensor when the antenna is on by using
1 Appellant indicates that Cirque Corporation is the real party in interest.
(App. Br. 1).
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Application 13/458,639
the first set of compensation data, wherein the touch sensor may
be a touchpad or a touch screen.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moore US 7,306,144 B2 Dec. 11,2007
Lee et al. US 2008/0047764 Al Feb. 28, 2008
Mahowald et al. US 2010/0188362 Al July 29, 2010
Zhang et al. US 2012/0007829 Al Jan. 12, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1—13 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Claims 1 and 9
recite a touch sensor having no moving parts.2
Claims 1—7 and 9-13 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Mahowald in view of Moore in further view of Zhang.
Claim 8 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Mahowald, Moore, Zhang in further view of Lee.
2 Appellant responds to the rejection. (App. Br. 14—15). The Examiner does
not repeat the rejection under 35 U.S.C. § 112, but states that the rejection is
maintained. (Ans. 16). Consequently, we find the rejection is maintained
and properly before us. We note that the Appeal Brief does not include
pagination. Our citations begin with the cover page with the Real Party in
Interest as page 1.
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Application 13/458,639
ANALYSIS
35U.S.C. § 112, first paragraph
In rejecting claims 1—13 for lack of written description, the Examiner
maintains that:
Moore does not explicitly disclose a touchpad with or without
moving parts but if applicant interprets Moore as having a
touchpad with moving parts then such interpretation contradicts
that those skilled in the art of touch pads are familiar that Cirque
touchpads have no moving parts because reference 7306144 B2
to Moore, as interpreted by applicant, has moving parts and is
also assigned to the Cirque Corporation.
(Ans. 16). The Examiner’s position appears to be based upon the fact that
Appellant takes two inconsistent positions in prosecution regarding the
Moore reference.
With respect to the obviousness rejection, the Moore reference was
relied upon in the initial obviousness grounds of the rejection in the non-
final Action, dated Feb. 3, 2014. Appellant added the “no moving parts”
limitation into amended independent claim 1 to distinguish over the
combination of the Mahowald and Moore references. (Amendment, dated
Aug. 4, 2014, 2; see also id. at 10 “Mahowald and Moore teach away from
the claimed invention by requiring two sets of sensing hardware, a movable
touch sensor to obtain compensation data, and hardware that may not
function as a touchscreen.”)With respect to the written description rejection,
Appellant argues that “[t]he Cirque touchpads have no moving parts” (App.
Br. 15). But, if the Moore reference, from the same assignee/real party in
interest (Cirque Corporation), was known to have no moving parts, then the
limitation would not necessarily distinguish from the initial two-reference
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combination in the obviousness rejection in the Non-final Action. Thus, we
agree with the Examiner that Appellant’s arguments are contradictory.
Furthermore, Appellant’s argument (App. Br. 14—15) does not show
error in the Examiner’s finding that the originally filed Specification lacked
written description support for claimed “no moving parts” limitation.
Negative claim limitations are adequately supported when the specification
describes a reason to exclude the relevant limitation. Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Here,
Appellant merely argues with regard to claims 1 and 9 that “[njowhere in the
specification is there any indication that the touch sensor has any moving
parts.” App. Br. 14—15. Consequently, we sustain the Examiner’s rejection
of claims 1 and 9, as well as the rejection of claims 2—8, and 10-13, not
argued separately.
35U.S.C. § 103
Regarding the Examiner’s obviousness rejection, Appellant’s
arguments address the primary reference (Mahowald), but do not address the
merits of the Moore reference in the grounds of rejection. Appellant merely
contends:
However, Moore is cited as evidence of a contactless smart card
antenna being disposed adjacent to a touch sensor. However, the
system of Moore is not capable of operating the touch sensor at
the same time as the contactless smart card antenna. The antenna
must be off for the touch sensor to operate. Therefore, Moore
actually teaches away from the present invention because it
cannot simultaneously operate the touch sensor and the antenna.
In fact, the present invention was designed to overcome the
problem suffered by Moore.
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Application 13/458,639
(App. Br. 12). Appellant, however, identifies no persuasive evidence or
citation to support those contentions. Consequently, Appellant’s arguments
are unpersuasive of error in the Examiner’s factual findings or conclusion of
obviousness. In particular, Appellant provides no persuasive support for the
contention that the Moore reference “cannot simultaneously operate the
touch sensor and the antenna.”
Appellant further contends:
Applicant respectfully traverses the combination of
Mahowald, Moore and Zhang making obvious the invention in
claims 1 and 9. Mahowald teaches filtering. The present
invention does not. Mahowald teaches adding duplicative
hardware in order to create a differential signal. The present
invention does not. Mahowald is combined with Moore because
Moore teaches the combination of a contactless smart card
antenna and a touch sensor, but Moore teaches that they do not
operate at the same time. The present invention teaches a claims
simultaneous operation of both by using a compensation system.
Zhang adds a touch sensor with no moving parts to a system of
Moore with moving parts, and thus they teach away from each
other because they conflict.
(App. Br. 13). Again, Appellant identifies no persuasive evidence or citation
to support those contentions. Consequently, Appellant’s argument is
unpersuasive of error in the Examiner’s factual findings or conclusion of
obviousness.
We agree with the Examiner’s findings and adopt them as our own
with respect to these disputed limitations. Appellant has not established that
Mahowald teaches away from the claimed invention and has not
demonstrated that “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
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applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). See Medichem,
S.A. v. Rolabo, S.L.t 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“Where the prior
art contains ‘apparently conflicting’ teachings ... each reference must be
considered ‘for its power to suggest solutions to an artisan of ordinary skill.
. . considering] the degree to which one reference might accurately discredit
another.’”) citing In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
Furthermore, we find Appellant’s arguments to be unpersuasive of
error because the arguments are unsupported by the express language of
independent claim 1 regarding “filtering,” “duplicate” hardware/sensor,
“added cost,” and “same time”. (App. Br. 11—12). Appellant argues the
scope of claim 1 by improperly importing limitations into the claim from the
Specification. (App. Br. 9). Specifically, Appellant argues that “[t]he
antenna of the invention is a very short range antenna” (App. Br. 9); “The
present invention teaches and claims a method of COMPENSATING for the
large signals that are going to be present on the electrodes of a touch sensor”
(App. Br. 9); “Calibration is the process of preparing the touch sensor for
use by adjusting for the operating environment of the touch sensor so that
the readings are essentially ‘zeroed out’ when there is no signal present”
(App. Br. 10). We see no reason to import these elements of the written
description into the claims. “Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim.”
Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875, (Fed. Cir.
2004).
Additionally, we find the language of independent claim 1 merely sets
forth a single set of compensation data (“a first set of compensation data that
is used by the touch sensor circuitry when the antenna is on . . . using the
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first set of compensation data”) which is used when the antenna is on, but
the same single set of compensation data may be used when the antenna is
off. (Claim 1). Consequently, the one set of compensation data does not
distinguish from the prior art operation.
Because Appellant’s arguments do not show error in the Examiner’s
factual findings or conclusion of obviousness, we sustain the rejection of
representative independent claim 1 and independent claim 9 not separately
argued.
Dependent Claims
With regard to dependent claims 2—8 and 10-13, Appellant relies
upon the arguments advanced with respect to independent claims 1 and 9.
(App. Br. 13—14). Because we found Appellant’s arguments unpersuasive of
error in the Examiner’s conclusion of obviousness of the independent
claims, we similarly find Appellant’s arguments unpersuasive with respect
to the dependent claims.
CONCLUSIONS
The Examiner did not err in rejecting claims 1—13 under 35 U.S.C.
§112, first paragraph, and the Examiner did not err in rejecting claims 1—13
under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s lack of written
description rejection of claims 1—13 under 35 U.S.C. § 112, and we sustain
the Examiner’s obviousness rejection of claims 1—13 under 35 U.S.C. § 103.
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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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