Ex Parte Stewart et al

Patent Trial and Appeal Board

Jun 28, 2018

14517894 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/517,894 10/19/2014
55128 7590 07/02/2018
LENOVO-JVL
C/0 LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
FIRST NAMED INVENTOR
Aaron M. Stewart
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.
RPS920140190-US-NP 9828
EXAMINER
EDWARDS, CAROLYN R
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
LESLIE@VL-PATENTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON M. STEWART, JEFFREY E. SKINNER,
JONATHAN J. YU,
and
LANCE W. CASSIDY
Appeal2018-001960
Application 14/517,894 1
Technology Center 2600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART. 2
1 According to Appellants, the real party in interest is Lenovo (Singapore)
PTE. LTD. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed July
10, 2017; ReplyBrief("ReplyBr.") filed December 17, 2017; Examiner's
Answer ("Ans.") mailed October 18, 2017; Final Office Action ("Final
Act.") mailed February 10, 2017; and original Specification ("Spec.") filed
October 19, 2014.
Appeal2018-001960
Application 14/517,894
STATEMENT OF THE CASE
Appellants' invention relates to a method and system for "establishing
touch zones of soft keys of a soft keypad that is displayed on a touch-screen
device" by "identif-1ying] a fingertip size associated with a user of the touch-
screen device" and establishing "[t]ouch zones of one or more keys ... so
that the size of the touch zones is based on the fingertip size." Abstract.
Particularly, a "smaller fingertip size results in larger touch zones within the
soft keys displayed on [the] soft keypad while, conversely, [a] larger
fingertip size results in smaller touch zones within the same soft keys."
Spec. ,r 22.
Claims 1, 8, and 15 are independent. Representative claim 1 is
reproduced below:
1. A machine-implemented method comprising:
displaying, on a display of a touch-screen device, a soft
keypad that comprises a plurality of soft keys;
identifying a fingertip size associated with a user of the
touch-screen device; and
establishing one or more touch zones, wherein each of the
touch zones is within one of the soft keys, wherein a size of at
least one of the touch zones is based on the fingertip size, and
wherein the size of the touch zone reduces as the fingertip size
mcreases.
App. Br. 14--19 (Claims App'x).
Evidence Considered
Yee US 2011/0254865 Al Oct. 20, 2011
Ohta US 2007 /0008298 Al Jan. 11, 2007
Kobayashi US 2003/0222858 Al Dec. 4, 2003
2
Appeal2018-001960
Application 14/517,894
Examiner's Rejections
(1) Claims 15-20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2--4.
(2) Claims 1-3, 5-10, 12-17, 19, and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Yee and Ohta. Final Act. 7-11.
(3) Claims 4, 11, and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Yee, Ohta, and Kobayashi. Final Act. 11-12.
ANALYSIS
§ 101 Rejection of Claims 15-20
Independent claim 15 recites a "computer program product
comprising: a computer readable storage medium comprising a set of
computer instructions" that execute a number of steps.
The Examiner finds the term "computer readable storage medium"
recited in claims 15-20 can be broadly interpreted to cover both "non-
transitory media and transitory propagating signal per se" in light of
Appellants' Specification and, as such, is directed to cover non-statutory
subject matter under 35 U.S.C. § 101. Final Act. 2-3; Ans. 2-3 (citing Spec.
,r 20). 3 Appellants argue the broadest reasonable interpretation of "computer
readable storage medium" does not encompass transitory and propagated
signals. App. Br. 5. Particularly, Appellants argue "computer readable
storage medium" is defined by Appellants' Specification to be a tangible
"computer readable medium" that is not a "computer readable signal
3 The Examiner cites to paragraph 20 of the published version of
Appellants' Specification (US 2016/0110098 Al), which corresponds to
paragraph 8 in the Specification as filed.
3
Appeal2018-001960
Application 14/517,894
medium," where "computer readable signal medium" includes "all
nonstatutory (disallowed) subject matter." Reply Br. 2 (citing Spec. ,r,r 8-9);
see also Appeal Br. 6-7.
Appellants' arguments are not persuasive. Appellants' Specification
does not provide an explicit and exclusive definition of the claimed term
"computer readable storage medium," and merely provides discussion of
non-limiting examples of the term. Additionally, the Specification's
description of "computer readable storage medium" does not unambiguously
disclaim transitory forms, rather it encompasses media for transitorily
carrying a signal as follows:
The computer readable medium may be a computer
readable signal medium or a computer readable storage medium.
A computer readable storage medium may be, for example, but
not limited to, an electronic, magnetic, optical, electromagnetic,
infrared, or semiconductor system, apparatus, or device, or any
suitable combination of the foregoing. More specific examples
(a non-exhaustive list) of the computer readable storage medium
would include the following: an electrical connection having one
or more wires, a portable computer diskette, a hard disk, a
random access memory (RAM), a read-only memory (ROM), an
erasable programmable read-only memory (EPROM or Flash
memory), an optical fiber, a portable compact disc read-only
memory (CD-ROM), an optical storage device, a magnetic
storage device, or any suitable combination of the foregoing. In
the context of this document, a computer readable storage
medium may be any tangible medium that can contain, or store a
program for use by or in connection with an instruction execution
system, apparatus, or device.
A computer readable signal medium may include a
propagated data signal with computer readable program code
embodied therein, for example, in baseband or as part of a carrier
wave. Such a propagated signal may take any of a variety of
forms, including, but not limited to, electro-magnetic, optical, or
any suitable combination thereof. A computer readable signal
4
Appeal2018-001960
Application 14/517,894
medium may be any computer readable medium that is not a
computer readable storage medium and that can communicate,
propagate, or transport a program for use by or in connection
with an instruction execution system apparatus, or device. As
used herein, a computer readable storage medium does not
include a computer readable signal medium.
Spec. ,r,r 8-9 ( emphases added).
Because Appellants have not offered a persuasive reason to depart
from the usual presumptions regarding claims drawn to computer readable
storage media, we agree with the Examiner the phrase "computer readable
storage medium comprising a set of computer instructions," when given its
broadest reasonable interpretation in light of the Specification, includes
transitory signals, which are non-statutory subject matter. Ans. 3 ( citing
Spec. ,r 8); 4 Final Act. 2--4. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007) (transitory embodiments are not directed to statutory subject
matter); see also Ex parte Mewherter, I 07 USPQ2d 1857, 1862 (PTAB
2013) (precedential) (finding a machine readable storage medium non-
statutory under § 101 ).
Thus, for the reasons discussed above, we sustain the Examiner's
rejection of claim 15, as well as dependent claims 16-20 not separately
argued, under 35 U.S.C. § 101.5
4 As explained above, the Examiner cites to paragraph 20 of the published
version of Appellants' Specification (US 2016/0110098 Al), which
corresponds to paragraph 8 in the Specification as filed.
5 As Examiner indicates (Final Act. 4), amending claim 15 by adding "non-
transitory" to the claimed "computer readable storage medium" would
overcome the§ 101 rejection of claims 15-20.
5
Appeal2018-001960
Application 14/517,894
§ 103 Rejections of Claims 1-20
With respect to claim 1, the Examiner finds Yee' s method for
dynamically correlating virtual keyboard dimensions to user finger size
teaches "establishing one or more touch zones" wherein "each of the touch
zones is within one of the soft keys" and "a size of at least one of the touch
zones is based on the fingertip size." Final Act. 8 ( citing Yee ,r 20, Figs. 2,
5, and 10). The Examiner further finds "Yee fails to explicitly disclose ... if
the dimensions of the touch zones and icons would be made larger or smaller
based on the finger size," but Ohta cures the deficiencies of Yee. Ans. 4.
Particularly, the Examiner finds Ohta's Figures I2B-12C "teach[] that the
touch sensing area (shaded region) [is] based on the finger size, for the thin
finger [touch sensing area] would be larger in size (12B)" and "inversely the
touch sensing area/touch zone for the thick finger would be made smaller in
size (12C)." Ans. 5 (citing Ohta ,r 11, Figs. 10, 11, and 12A-I2C). We do
not agree.
We agree with Appellants that Yee and Ohta, alone or in combination,
fail to teach or suggest an inverse relationship between the size of a soft key
touch zone (i.e., a touch zone established within one of the soft keys, as
claimed) and the size of the user's fingertip, as required by claim 1 's "the
size of the touch zone reduces as the fingertip size increases." App. Br. 8,
1 O; Reply Br. 3. Rather, "Yee teaches a direct, rather than inverse
relationship, between the user's fingertip size and the size of the
corresponding touch zones." App. Br. 11 ( citing Yee ,r 3, Fig. 7); see Yee
,r,r 3 ("key icons in the vicinity of the user's gaze may be increased in size
commensurate with the dimensions of the user's finger tip"), 17 ("a user
6
Appeal2018-001960
Application 14/517,894
attempting to press the virtual key for the letter 'H' is presented with an icon
that is as large as the user's finger tip").
Ohta does not make up for the above-noted deficiencies of Yee.
Although Ohta illustrates an inverse relationship between finger size and
"operable ranges" on a touch pad of a game machine (see Ohta, Figs. 12B
and I2C), "that relationship deals with the size of the user's fingertip when
applied to an entire touchpad and has nothing to do whatsoever with any
soft keys displayed on the screen" as claimed. Reply Br. 3 ( emphasis
added). Appellants' "touch zone" (established within a soft key) is "the area
within the respective soft key that the user has to touch in order [to] have the
system detect that the key was pressed. " 6 See Spec. ,r 23 ( emphasis added).
In contrast, Ohta's entire touch pad is sensitive (i.e., touch-sensitive) to the
user's finger. See Ohta ,r 11 ("the whole operating range of the touch pad is
the one as shown in FIG. I2(A)"), Fig. 12A. In Ohta, the touch pad's
"frame[,] ... provided on an outer periphery of the touch pad," restricts the
finger's movement to smaller "operable range" (shaded regions I and II in
Figs. I2B-12C). See Ohta ,r,r 9-11, Figs. 11, I2B-12C. Thus, Ohta's
operable range "is nothing like the touch zone claimed by Appellants, and
does not include any soft keys" of a keypad displayed on a screen. App. Br.
IO; see also Reply Br. 3.
6 As Appellants' Specification explains, reducing the size of the touch zone
as the fingertip size increases "makes pressing of an unintended key less
likely" because "[t]he user with the smaller fingertips needs to touch the
larger touch zones 440 to press the respective soft keys, while the user with
the larger fingertips needs to touch the smaller touch zones 460 to press the
same respective keys." See Spec. ,r,r 23-24 ( emphasis added), Fig. 4.
7
Appeal2018-001960
Application 14/517,894
Ohta therefore also does not teach or suggest an inverse relationship
between fingertip size and the size of a touch zone established within a soft
key, as claimed. The Examiner also has not shown that the additional
teachings of Kobayashi make up for the above-noted deficiencies of Yee and
Ohta. Thus, for the reasons set forth above, we do not sustain the
Examiner's obviousness rejection of independent claim 1, independent
claims 8 and 15 reciting similar limitations, and claims 2-7, 9-14, and 16-
20 dependent therefrom.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 15-20 under
35 U.S.C. § 101, but have demonstrated the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 103.
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 15-20
under 35 U.S.C. § 101.
However, we REVERSE the Examiner's final rejection of claims 1-
20 under 35 U.S.C. § 103.
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-IN-PART
8