Ex Parte Santhiveeran et al

Patent Trial and Appeal Board

Apr 10, 2017

12953885 (P.T.A.B. Apr. 10, 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.
12/953,885 11/24/2010 Soma Sundaram Santhiveeran QLXX.P0864US/11403473 4314
15757 7590 04/12/2017
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross Avenue
Suite 3600
Dallas, TX 75201-7932
EXAMINER
TAYLOR JR, DUANE N
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOMA SUNDARAM SANTHIVEERAN,
JULIANO GODINHO VARASCHIN DE MORAES,
and MARK C. SOLOMON
Appeal 2016-001226
Application 12/953,885
Technology Center 2600
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Req. Reh’g”) under
37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal,
mailed January 25, 2017 (“Decision”). Our Decision affirmed the
Examiner’s rejections of claims 1—12, 14—17, 19, and 21—31 under pre-AIA
35U.S.C. § 103(a).
We have reconsidered our Decision, in light of Appellants’ comments
and arguments in the request. In the Req. Reh’g 2, Appellants contend:
Appeal 2016-001226
Application 12/953,885
Appellants] contested the Examiner’s assertion that the
combination of Tribble, Saitoh, and Tachibana renders obvious
that “the at least one location on the display device on which
the input panel is rendered is selected from at least one of a left
center location of the display device and a right center
location of the display device based on the identity of the
user,'” as recited in claim 1 (emphasis added). The identified
representative “contested limitation” addressed by the Board in
the Decision is therefore not the same feature Appellant
disputed and raised on appeal for the Board's review.
In our Decision 3, we adopted the Examiner’s findings and legal
conclusion of obviousness. To the extent an incorrect portion of claim 1 was
emphasized in italics regarding the contested limitations, we modify our
reproduction of claim 1, on page 2 of our Decision, as follows:
Representative Claim
1. A device comprising:
a sensor to detect a holding position of a user of the device;
an orientation sensor to detect an orientation of the device;
a display device to display an input panel for the user to
interact with; and
a controller to determine an identity of the user and, [L]
after determining the identity of the user, render the input panel
on at least one location of the display device based on the holding
position of the user, the orientation of the device, and the identity
of the user,
wherein the at least one location on the display device on
which the input panel is rendered is selected from at least one of
a left center location of the display device and a right center
location of the display device based on the identity of the user.
(Contested limitations L emphasized in italics — see App. Br. 5—6).
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Application 12/953,885
Regarding the contested limitations L of claim 1 (and including the
argued function of “selected from at least one of a left center location of the
display device and a right center location of the display device based on the
identity of the user”), we disagree with Appellants’ contentions (Req. Reh’g
4—5) regarding Tachibana.1 As we found in our Decision 6, “the Examiner’s
responsive explanation (Ans. 23) regarding what Tachibana teaches is
supported by a preponderance of the evidence:”
Tachibana explicitly discloses in | [0023] that “When the players
A, B press areas where the icons 4, 5 are displayed with their
fingers, fingerprints of the players A, B are scanned in by the
touch panel 1 and identified by the gaming machine 10 (see FIG.
1). As will hereinafter be described in detail, an input operation
process for the icons 4,5 is valid, only when the fingerprints of
fingers touching the icon 4,5 are identical to fingerprints
previously registered in the gaming machine 10.” Furthermore,
1 [0025] reads on to state "the players A, B can freely locate the
icons 4,5 at their desired positions by the operations A and drop
bombs from their desired positions by the operations B.” To be
clear, the moving operation to freely move icons 4, 5 disclosed
in | [0024] [0025] is clearly stated with fingerprint
correspondence in figure 4.
(Ans. 23).
Regarding the first portion of the contested limitations (i.e., the timing
of rendering the input panel, after determining the identity of the user), as
we found in our Decision 5, “Saitoh teaches an embodiment where a
registered fingerprint is obtained first (to determine the identity of the user),
before the user’s finger is enabled to be used as a touch screen input to
change the direction of the displayed screen contents (e.g., to render a
portrait orientation):”
1 Tachibana, US 2007/0092118 Al, published Apr. 26, 2007.
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Application 12/953,885
[0054] Image processing portion 19 determines whether the
fingerprint sensed by fmgerprint-sensor-equipped key 32
matches with a fingerprint of the user that is registered in
advance, or not. When there is a match, finger direction
determining portion 18 determines the direction of the finger
from the direction of the fingerprint, and notifies main controller
24 of the finger direction. Nonvolatile memory 17 has stored the
user's fingerprints that are registered in advance.
(Saitoh21 54; see also Fig. 5).
As also noted in our Decision 4—5, 7, the Examiner’s legal conclusion
of obviousness is based on the combined teachings and suggestions of the
cited references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).3
Nevertheless, Appellants maintain in the Req. Reh’g 4:
For example, according to the teachings of Tachibana, the
locations of the icons are determined before the user is ever
identified, and the user presses the areas of the screen where the
icons are located. See Tachibana at paragraphs [0023]. In other
words, Tachibana discloses that the locations of the icons are
selected before the user is identified.
(Emphasis in italics added, bold and underline in original).
Even if the locations of icons 4 and 5 in the embodiment described in
(Tachibana 123, Fig. 1) are initially determined before the user is ever
identified, as argued by Appellants (Req. Reh’g 4), we note that subsequent
2 Saitoh et al. US 2009/0201257 Al, published Aug. 13, 2009 (“Saitoh”).
3 “‘[T]he question under 35 [U.S.C. §] 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.’” Merck & Co. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807—808 (Fed. Cir. 1989), cert, denied,
493 U.S. 975 (1989); see also MPEP § 2123(E).
4
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Application 12/953,885
fingerprint-identified 4 user entry (Tachibana 124) in a moving operation
results in selecting a destination (moved) location of icon 4 or 5 (Fig. 1),
based on the (fingerprint) identity of either player A or player B: “The
operation A is carried out by freely moving one finger of the player A (or B)
on the touch panel 1 as the player A (or B) touches the icon 4 (or 5) with
his/her finger.” (Tachibana 124). Tachibana further describes the finger
movements of the icons by players A and B (| 24): “The one finger with
which the operation A is carried out and the another finger with which the
operation B is carried out are previously registered in the gaming machine
10.'” (See Tachibana, Fig. 1) (emphasis added).
We find the destination locations of icons 4 and 5 (Fig. 1 — after finger
moving operations by players A and/or B) are based on the identity of the
user (as identified by the players’ fingerprints, 123), regardless of whether
the resultant (moved) destination icon locations are on the left or right side
of the display. To the extent that claim 1 further requires the at least one
location of the rendered “input panel” to be “at least one of a left center
location of the display device and a right center location of the display
device,” we note that the Examiner (Final Act. 3) relied on Tribble to teach
or suggest this portion of the contested limitations (See Tribble, ]Hf 165, 166,
Fig. 5A, virtual keyboards 506 and 507). The Examiner’s rejection is based
on the combined teachings and suggestions of the cited references.
Regarding the Examiner’s proffered combination of references, the
4 Tachibana 123 expressly describes: “When the players A, B press areas
where the icons 4, 5 are displayed with their fingers, fingerprints of the
players A, B are scan[n]ed in by the touch panel 1 and identified by the
gaming machine 10 (see FIG. 1).” (Emphasis added).
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Application 12/953,885
Supreme Court provides clear guidance that “when a patent ‘simply arranges
old elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSRInt’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. AgPro, Inc., 425 U.S. 273,
282 (1976)). The Supreme Court further guides:
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent. . . unless more
ingenuity and skill were required in making or applying the said
improvement than are possessed by an ordinary mechanic
acquainted with the business, there is an absence of that degree
of skill and ingenuity which constitute the essential elements of
every invention.
Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)). We note that Hotchkiss was cited multiple times
with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, and 427.
This reasoning is applicable here. Further buttressing the Examiner’s
legal conclusion of obviousness, we note Appellants attempt to distinguish
representative apparatus claim 1 (“A device comprising:”) over the cited
prior art not in terms of structure, but rather in terms of intended use
functional claim language: “a sensor to detect... an orientation sensor to
detect... a display device to display . . . and a controller to
determine . . . .” (Claim l).5 See Req. Reh’g 3—5. We conclude the
5 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch
statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d
6
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contested functional statements of intended use in claim 1 are not
positively recited as actually being performed, under a broad but reasonable
interpretation. * * 6
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int 7., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also
Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir.
2009). “[AJpparatus claims cover what a device is, not what a device does.'”
Hewlett-Packard Co. v. Bausch &Lomb, Inc., 909 F.2d 1464, 1468
(Fed.Cir. 1990). Regarding the contested functional limitation recited in the
“wherein” clause of claim 1, MPEP §2111.04 provides specific guidance
regarding the patentable weight to be given to “wherein” clauses. 7
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
6 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).
7 Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples
of claim language, although not exhaustive, that may raise a question as to
the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Ninth Edition, Rev. 7, Nov. 2015, emphasis added).
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Nor have Appellants incorporated “adapted to” or “configured to”
language into claim 1 that would arguably require specific structures
arranged or designed to be capable of performing the contested intended
functional limitations. 8 Further, the “user” recited in claim 1, and any
associated user-performed steps or acts (e.g., “a holding position of a user”
— requiring a user to hold the device), are outside the scope of the apparatus
of claim 1. A human user cannot constitute a ‘means.’” Default Proof
Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1300 (Fed. Cir. 2005) (citing In re Prater, 415 F.2d 1393, 1398 (CCPA
1969)).
For the reasons discussed in our Decision 3—9, and further discussed
above, on this record, we decline to modify our Decision 9, in which we
found a preponderance of the evidence supports the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness for all claims
on appeal.
CONCLUSION
Following the guidance of our reviewing courts, and for the reasons
detailed above, we decline to change our prior Decision that affirmed the
Examiner’s legal conclusion of obviousness for claims 1—12, 14—17, 19, and
21—31. However, we have modified our Decision on page 2, as per
Appellants’ comments (Req. Reh’g 2—3), to the extent that we have
corrected the emphasized portion of claim 1, in the manner described above.
8 See In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir.
2016) (“We have noted that the phrase ‘adapted to’ generally means ‘made
to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more
broadly to mean ‘capable of’ or ‘suitable for.’”) (internal citations omitted).
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DECISION
We have GRANTED Appellants’ request to the extent that we have
made a correction and modified the emphasized portion of claim 1 in our
original Decision on page 2.
However, we DENY Appellants’ request with respect to changing our
affirmance of the Examiner’s ultimate legal conclusion of obviousness for
all claims 1—12, 14—17, 19, and 21—31 on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See also 37 C.F.R.
§ 41.52(b).
GRANTED-IN-PART/DENIED-IN-PART
9