13300418 (P.T.A.B. Oct. 21, 2016)

Ex Parte Smoot et al

Patent Trial and Appeal BoardOct 21, 2016

13300418 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/300,418 11/18/2011 63649 7590 10/25/2016 DISNEY ENTERPRISES, INC. C/O FARJAMI & FARJAMI LLP 26522 LA ALAMEDA A VENUE, SUITE 360 MISSION VIEJO, CA 92691 FIRST NAMED INVENTOR Lanny Starkes Smoot 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. 0260283 4400 EXAMINER STEINBERG, JEFFREYS ART UNIT PAPER NUMBER 2622 NOTIFICATION DATE DELIVERY MODE 10/25/2016 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): docketing@farj ami. com farjamidocketing@yahoo.com ffarj ami @farj ami. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LANNY STARKES SMOOT and KATHERINE M. BASSETT Appeal2015-007462 Application 13/300,418 Technology Center 2600 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Final Office Action rejecting claims 1-20. We affirm. Appeal2015-007462 Application 13/300,418 STATEMENT OF THE CASE1 Claims 1-3, 9, 16, and 17 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lee (US 2012/0098798 Al; published Apr. 26, 2012) ("Lee '798") and Sharp (US 2004/0178998 Al; published Sept. 16, 2004). Claims 4--8 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lee '798, Sharp and Jiang (US 2009/0160796 Al; published June 25, 2009). Claims 10-12, 14, 15,2 and 18-20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lee '798, Sharp and Sze (US 2012/0162077 Al; published June 28, 2012). 1 In the section "Grounds of Rejection to be Reviewed on Appeal," the Examiner also cites Mead (US 5,488,204; issued Jan. 30, 1996), Norton (US 2012/0274604 Al; published Nov. 1, 2012), Sanders (WO 2012/094633 Al; published July 12, 2012), and an undated version of http://\~1\~1\~1.nomadbr11sh.com. 1A1ns. 2-3; see also Final 1A1ct. 2. It is unclear whether the Examiner intends for these references to constitute additional evidence that supports the rejections of record, or if the Examiner alternatively intends for these references to serve as a basis for some separate or alternative rejections under 35 U.S.C. Â§Â§ 102 or 103. Regardless of the Examiner's intent for citing these references, we need not address these references or the rationales asserted in relation to these references. Our affirming the Examiner's obviousness rejections of claims 1-20 that are listed in this section is dispositive of this appeal. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (indicating an agency (e.g., the ITC) can decide a single dispositive issue of numerous issues resolved by the presiding officer and that there is no need for the Commission to decide all issues decided by the presiding officer). See also In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection). 2 The Examiner further cites St. Regis Paper Company v. Bemis Company, Inc., 549 F.2d 833 (7th Cir. 1977) in the heading of the rejection of claim 15. Ans. 12. We understand the Examiner to be rejecting claim 15 as 2 Appeal2015-007462 Application 13/300,418 Claim 13 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lee (WO 2012/058230 Al; published May 3, 2012) ("Lee '230"),3 Sharp, and Willis (US 2008/0062158 Al; published Mar. 13, 2008). Ans. 4-13. We have jurisdiction under 3 5 U.S. C. Â§ 6(b ). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). SUMMARY OF THE INVENTION Appellants' invention is a system and method for producing art electronically. Abstract. 4 One embodiment produces an image from an electrical pattern formed by an art brush's moistened bristles interacting with an electrically sensitive art surface. Id. unpatentable over the references Lee '798, Sharp, and Sze, with the legal decision of St. Regis being relied upon as supporting authority for the legal proposition that the mere duplication of a device's essential working parts involves only routine skill in the art. Id.; See also Manual of Patent Examining Procedure (MPEP) Â§ 2144.04 Rev. 07.2015, 9th ed. (Nov. 2015) (discussing using case law as a source of a supporting rationale). 3 Neither the Examiner nor Appellants point to any substantive differences between Lee '230 and Lee '798, which documents both claim common priority to U.S. Provisional Patent Application 61/406,576 (filed October 26, 2010). Nor does either explain why the rejection of claim 13 is based upon Lee '230, while the rejections of all of the other claims are based upon Lee '278. 4 Throughout this opinion, we refer to (1) the Final Rejection mailed November 11, 2014 ("Final Act."); (2) the Appeal Brief filed March 6, 2015 ("App. Br."); (4) the Examiner's Answer mailed June 3, 2015 ("Ans."); and (5) the Reply Brief filed August 3, 2015 ("Reply Br."). 3 Appeal2015-007462 Application 13/300,418 Independent claim 1, reproduced below with our emphasis, is illustrative: 1. An electronic art system comprising: an electrically sensitive art surface; an art brush having bristles; a voltage reference coupled to the bristles of the art brush; and an at least lightly conductive liquid moistening the bristles; an electrical pattern formed by an interaction between a plurality of the moistened bristles of the art brush executing a brushstroke and the electrically sensitive art surface resulting m production of an image of the brushstroke. THE OBVIOUSNESS REJECTION OVER LEE '798 AND SHARP Contentions The Examiner finds that Lee '798 discloses every recited element of claim 1 except for a lightly conductive liquid for moistening the bristles. Ans. 4. In concluding that claim 1 would have been obvious, the Examiner cites Sharp as teaching this feature. Id. (citing Sharp if 16). Appellants contend that the combination of Lee '798 and Sharp lacks the recited lightly conductive liquid moistening a plurality of bristles. App. Br. 6-9. In Appellants' view, Sharp determines valid touches on a touch screen in the presence of liquid contaminants. Id. at 7; Reply Br. 2-3 (citing Sharp if 16). But according to Appellants, Sharp teaches away from using liquids on touchscreens. App. Br. 8; Reply Br. 3--4. Appellants argue that Sharp does not moisten a brush's bristles, as claimed. Reply Br. 2-3. So in 4 Appeal2015-007462 Application 13/300,418 Appellants' view, Sharp cannot be combined with Lee '798 to arrive at the claimed invention. Id. at 4. Analysis Claim 1 recites, in part, "an at least lightly conductive liquid moistening the bristles."5 Notably, claim 1 is not limited to intentionally applying liquids to touch screens, as Appellants argue (App. Br. 8; Reply Br. 3--4). Rather, claim 1 additionally reads on systems wherein the bristles are moistened with a conductive liquid through unintentional contamination. That is, claim 1 does not specify the intent by which the system's bristles came to be moistened with the recited liquid. Given this interpretation, we are unpersuaded that the combination of Lee '798 and Sharp lacks the recited lightly conductive liquid moistening a plurality of bristles, as argued (App. Br. 6-9). To be sure, Sharp explains that liquid contaminants create problems for touch screens. Sharp ,-r 10, cited in App. Br. 7. For example, a user;s wet touch can leave water residue on a touch screen. Sharp ,-r 10. A touch- screen system may mistake this residue for a finger contacting the screen. Id. Consequently, the water residue creates a spurious input and prevents 5 We read the limitation "an at least lightly conductive liquid moistening the bristles" as intending to recite a liquid that is for, or that serves the purpose of, moistening the recited bristles. We leave to the Examiner to determine whether this limitation reasonably can be alternatively interpreted as setting forth a method step of moistening the bristles with a liquid. That is, we leave to the Examiner to determine whether claim 1 reasonably can be interpreted as constituting a hybrid apparatus-method claim, which has been held indefinite underÂ§ 112, second paragraph. See Rembrandt Data Techs., LP v. AOL, LLC, 641F.3d1331, 1339 (Fed. Cir. 2011) (holding an apparatus claim reciting an active transmitting step to be indefinite). 5 Appeal2015-007462 Application 13/300,418 the system from detecting the next valid touch. Id. To solve this problem, Sharp distinguishes valid touches from liquid contaminants by analyzing acoustic wave forms transmitted across the touch-sensor substrate. See id. iii! 15-16. That is, although Sharp identifies a problem with using liquids that renders a touch screen inferior, Sharp nevertheless proposes a solution when this problem cannot be avoided. On this record, we agree with the Examiner's conclusion that it would have been obvious to use Sharp's solution to make the touch screen of Lee '798 liquid tolerant (Final Act. 2). That is, we agree that one of ordinary skill in the art would use Sharp's method with Lee '798's bristles moistened-intentionally or not-by a liquid, producing a system that meets Appellants' claims. See id. As discussed above, the claim does not preclude the recited brush from becoming moistened by liquid unintentionally. Accordingly, Appellants' argument that the teachings cannot be combined to arrive at the recited moistened bristles (see Reply Br. 2--'3) is unpersuasive. We also are unconvinced that one of ordinary skill, upon reading Sharp, would have been discouraged from using touch-detection methods with liquids. See App. Br. 6-9; Reply Br. 2-3. Appellants have not shown, for example, that using liquids with Lee '798's touch screen, as modified by Sharp, would have rendered Lee '798 inoperable or unsuitable for its intended purpose. Rather, Sharp's invention allows Lee '798's touch screen to be used in presence of liquid. See Final Act. 4--5. That is, one of ordinary skill would not have been discouraged from operating the touch pad in the presence of liquids because Sharp proposes a solution to mitigate the associated negative 6 Appeal2015-007462 Application 13/300,418 effects of doing so. Accordingly, Appellants' teaching-away argument (App. Br. 6-9; Reply Br. 2-3) is unpersuasive. For the foregoing reasons, Appellants have not persuaded us of error in the Examiner's obviousness rejection of representative claim 1. Accordingly, we sustain the Examiner's rejection of that claim as well as independent claim 166 and dependent claims 2, 3, 9, and 17, not argued separately (see App. Br. 10-11; Reply Br. 5). THE OTHER OBVIOUSNESS REJECTIONS We also sustain the Examiner's obviousness rejections of claims 4--8, 10-12, 14, 15, 18-20 over Lee '798, Sharp, and at least one of the additional references of Jiang, and Sze, as well as the obviousness rejection of claim 13 over Lee '230, Sharp, and Willis. Appellants have not pointed out particular errors in the Examiner's reasoning, but merely reiterate the same arguments about Lee ;798 and Sharp. See App. Br. 11-14; Reply Br. 5. We are not persuaded by these arguments for the reasons discussed previously. DECISION The Examiner's decision rejecting claims 1-20 is affirmed. 6 Method claim 16 recites, in part, "an electrical pattern formed by [a specified interaction]." An electrical pattern, however, is not an act or method step. We leave to the Examiner to determine, then, whether claim 16 is a hybrid apparatus-method claim, which has been held indefinite underÂ§ 112, second paragraph. See Rembrandt, 641 F.3d at 1339. 7 Appeal2015-007462 Application 13/300,418 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8