Ex Parte Wong et al

Patent Trial and Appeal Board

Aug 12, 2016

13028989 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/028,989 02/16/2011
22879 7590 08/16/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Glenn WONG
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.
82265279 9807
EXAMINER
ZIMMERMAN, MARK K
ART UNIT PAPER NUMBER
2619
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN WONG, KEVIN MASSARO, and MARK C. SOLOMON
Appeal2015-003940
Application 13/028,989
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part, and we newly reject independent claims 1, 11, and 16.
Appeal2015-003940
Application 13/028,989
STATEMENT OF THE CASE
Appellants' invention detects a change in a display device's
orientation and reorients the displayed information. Spec. i-f 1. In one
embodiment, an orientation change causes a graphic feature to tum on or off.
See id. i-fi-110-11. Claim 1 is illustrative:
1. An electronic device comprising:
a display device; and
a graphic feature which is separate from the display device
and configured to be activated in response to a change in
orientation of the electronic device and then deactivated after a
period of time from the change in orientation of the electronic
device.
THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Laine (US 2009/0207184 Al; published Aug. 20, 2009)
and Drader (US 2007 /0091060 i\.l; published i\.pr. 26, 2007). i\.ns. 3-21. 1
CONTENTIONS
The Examiner finds that Laine discloses every recited element of
claim 1 except for deactivating a graphic feature after a period of time from
an input, but relies on Drader as teaching this feature in concluding that the
claim would have been obvious. Ans. 3--6. In particular, the Examiner finds
that Laine's displayed data is the recited graphic feature. Id. at 3--4.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed March
21, 2014 ("Final Act."); (2) the Appeal Brief filed August 12, 2014 ("App.
Br."); (3) the Examiner's Answer mailed December 10, 2014 ("Ans."); and
(4) the Reply Brief filed February 5, 2015 ("Reply Br.").
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According to the Examiner, Laine' s displayed data is separate from the
display, as recited, because the data is transmitted wirelessly to the
electronic device. Id. at 4. Alternatively, the Examiner finds that the
surrounding portions of Laine' s display correspond to the recited graphic
feature. Id. at 24.
In rejecting claim 16, the Examiner relies on the same two references,
but finds that the effect on displayed data resulting from Laine' s change in
orientation corresponds to the graphic feature. See id. at 1 7.
The Examiner further finds that Drader deactivates a graphic feature
by turning off or minimizing a backlight's intensity. Id. at 5. In concluding
that claim 1 would have been obvious, the Examiner reasons that adding
Drader's power-saving features would improve Laine's battery life. Id. at 6.
Appellants argue that Laine' s graphic features are not separate from a
display device, as claimed. App. Br. 6-7; Reply Br. 2--4. According to
Appellants, the plain meaning of "separate from" excludes data shown
within the display device. App. Br. 6-7; Reply Br. 4. In Appellants' view,
the Examiner's interpretation is inconsistent with the Specification.
Reply Br. 2--4 (citing Spec. i-f 10).
Appellants further contend that Drader does not deactivate a graphic
feature, as recited. App. Br. 7-8; Reply Br. 4---6. According to Appellants,
Drader dims a phone's screen after a predetermined period from a user's key
press, which is different from a deactivation. App. Br. 7 (citing Drader
i-f 39). Furthermore, Appellants argue that the Examiner's reasoning is based
on the device having a battery, which is not claimed. Reply Br. 4---6. In
further relation to the Examiner's reliance on the battery, Appellants contend
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that an electronic device would shut down, not deactivate, when the battery
is dead. Id. at 6.
Appellants further contend that the Examiner's interpretation renders
claim language superfluous. Id. Specifically, Appellants argue that shutting
down a device after a long period ignores the requirement that the period
begins when the device's orientation changes. Id.
Appellants also argue that the Examiner's alternative interpretation
that the surrounding portions of Laine' s display correspond to the recited
graphic feature is flawed. Id. at 2-3, 5---6. In particular, Appellants contend
that Laine' s surrounding portions are neither separate from the display
device, as required (id. at 2-3), nor configured to deactivate (id. at 5---6).
Lastly, Appellants argue that the Examiner has not presented a
sufficient rationale to combine the references. App. Br. 8-9. According to
Appellants, the Examiner's analysis relies only on the reasoning that the
teachings are intended to be used on similar devices. Id.
ISSUES
I. Under § 103, has the Examiner erred by finding that Laine and
Drader collectively would have taught or suggested:
A. a graphic feature separate from the display device, as recited in
claims 1 and 11?
B. a graphic feature of the electronic device separate from the
displayed information, as recited in claim 16?
II. Is the Examiner's combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
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Application 13/028,989
ANALYSIS
Claims 1-15
We begin by construing the key disputed limitation of claim 1, which
recites, in pertinent part, a graphic feature separate from the display device.
According to the Specification, a graphic feature can be any electronic
component capable of activating and deactivating. Spec. i-f 10. In some
embodiments, the graphic feature illuminates when activated and is turned
off when deactivated. Id. A graphic feature can also be an illuminated
electronic display. Id. Such a display can show an icon, logo, badge,
symbol, or characters. Id.
Claim 1, however, is not limited to this example (id.). Unlike claim 2,
claim 1 does not recite an illuminated electronic device. Under claim
differentiation principles, then, the graphic feature in claim 1 must
encompass something other than an illuminated electronic device. See Free
Motion Fitness, Inc. v. Cybex Int'!, Inc., 423 F.3d 1343, 1351 (Fed. Cir.
2005).
Although claim 1 is not limited to this example (Spec. i-f 10), the
example nevertheless informs our construction of the claim. Interpreting the
claim consistently with the above-discussed description (id.), the recited
"graphic feature" must at least be visible to the user. In other words, for a
feature to be "graphic" by the term's plain meaning consistent with the
Specification, the feature must convey information graphically. Moreover,
claim 1 explicitly requires that the feature be separate from the display
device.
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Based on this interpretation, the Examiner fails to identify a feature in
Laine that is both (1) graphic, and (2) separate from the display device. To
address the recited feature, the Examiner proposes two alternative mappings.
First, the Examiner finds that Laine's electronic-program-guide (EPG)
data is the recited graphic feature because the data is transmitted wirelessly
to the electronic device. Ans. 3--4. But the transmitted data, itself, is not
visible to the user-i.e., the data is not a graphic feature until it is rendered
graphically by the recipient electronic device. That Laine formats EPG data
before the data becomes an on-screen graphic feature only further
undermines the Examiner's position in this regard. See Laine i-fi-133-34.
Nor is this transformed EPG data separate from the display device, as
required by claim 1, because the data requires the display to be visible. See
id., Fig. 3A. And we agree with Appellants that graphic features shown
within the display are excluded from the claim. See App. Br. 6-7;
Reply Br. 4. In other words, once displayed, Laine's data is inseparable
from the display itself. Accordingly, Laine' s EPG data is neither a graphic
feature nor separate from the display, as required by claim 1.
Second, the Examiner finds that the surrounding portions of Laine' s
display correspond to the recited graphic feature. Ans. 24. Specifically,
Laine's Figures 3A and 3B are reproduced below, annotated with dashed
lines and arrows.
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236
Ill
N
M
I
•
!
Laine's Figure 3A annotated with dashed lines and arrows.
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364a 364b
Laine's Figure 3B annotated with dashed lines.
As best understood, the Examiner finds that the recited graphic feature
reads on the area displayed above the highest dashed line and below the
lowest dashed line. See Ans. 24. The Examiner finds that Laine activates
"[t]he data in those regions." Id. We, however, agree with Appellants (see
Reply Br. 2-3) that, like Laine's EPG data, this data is also within the
boundaries of Laine's display. See Laine Figs. 3A-B. That is, Laine does
not partition the display into separate physical areas, let alone reasonably
contemplate separate "display devices" corresponding to such areas. See
Laine i-f 21. Rather, Laine refers to "display screen 236"-in the singular-
as having dimensions M by N. Id. And Laine's Figures 3A and 3B show
the alleged graphic feature in this M-by-N area. Accordingly, we agree that
Laine's surrounding area (Ans. 24) is not "separate from the display device,"
as required. See Reply Br. 2-3.
Therefore, we do not sustain the rejection of (1) independent claim 1;
(2) independent claim 11, which also requires a graphic feature separate
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from the display device; or (3) dependent claims 2-10 and 12-15 for similar
reasons.
Because this issue is dispositive regarding the Examiner's error in
rejecting claims 1-15, we need not address Appellants' other arguments.
Claims 16-20
We, however, sustain the Examiner's rejection of claim 16.
Unlike claim 1, claim 16 does not recite a graphic feature separate
from the display device. Instead, claim 16 recites, in part, "a graphic feature
of the electronic device separate from the displayed information." That is,
claim 16' s separation is from the displayed information, not the display
device.
Accordingly, Appellants' arguments directed to the feature's
separation from the display device are unpersuasive (App. Br. 6-7;
Reply Br. 2--4) because they are not commensurate with the scope of claim
16.
Moreover, the Examiner's interpretation of "graphic feature" in claim
16's rejection (Ans. 17-19) differs from the Examiner's two interpretations
of this limitation in claim 1 's rejection (id. at 3--4, 24). In rejecting claim 16,
the Examiner finds that an orientation change creates a visual effect on
Laine's displayed data. Id. at 17. Notably, the Examiner finds that this
visual effect on the data is independent of the displayed information. Id.
Because claim 16 requires a graphic feature to be separate from the
displayed information, we understand the Examiner's statement (id.) to
mean that the resulting visual effect on the displayed data corresponds to the
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recited graphic feature because this effect is independent of-· -and therefore
separate from-the displayed information.
Under this rationale (id.), Laine's orientation-based effects on the
displayed data-i.e., how it looks on the screen-is a "graphic feature"
separate from the displayed information, namely EPG information conveyed
to the user, including start times and program names. See, e.g., Laine Fig. 4
(showing the effect of an orientation change and the EPG information). On
this record, the Examiner provides at least a rational basis for how Laine' s
features meet claim 16's graphic feature. Nor have Appellants squarely
addressed-let alone persuasively rebutted-these particular findings in
connection with the alternative rationale articulated for claim 16.
Furthermore, we are unpersuaded by Appellants' arguments regarding
Drader and regarding the Examiner's rationale for combining Drader with
Laine. See App. Br. 7-8; Reply Br. 4--6. Appellants have not shown, for
example, that incorporating Drader's method in Laine would have been
uniquely challenging or otherwise beyond the level of ordinarily skilled
artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F .3d 1157,
1162 (Fed. Cir. 2007). Nor have Appellants shown that the Examiner's
proposed combination would render the prior art unsuitable for its intended
purpose to teach away from such an approach. See In re Gordon, 733 F .2d
900, 902 (Fed. Cir. 1984).
Rather, Drader dims a screen's backlight after a predetermined period
from the user's last action. Drader i-f 40 (cited in Ans. 17). In the rejection,
the Examiner relies on Drader for the limited purpose of showing that it
would have been obvious to dim a screen in this way to save power.
Ans. 17-19.
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Although a battery is not claimed, as noted by Appellants
(Reply Br. 4---6), the Examiner's rationale (Ans. 18-19) is nonetheless
applicable to Laine's device, which has a battery (see Laine Fig. 2, numeral
250). That is, the Examiner does not rely solely on the references' similarity
in combining the references. See App. Br. 8-9. Nor does the Examiner
improperly import a battery into the claim. Reply Br. 5. Here, the Examiner
proposes applying Drader's power-saving strategy for battery-powered
devices to Laine' s battery-powered device. See Ans. 6. The similarities
between the references here only serve to bolster the Examiner's conclusion
(Ans. 18-19) because Drader's method would perform the same function in
the combination as it does separately. In this way, the Examiner combines
prior art elements according to known methods to yield predictable results-
an obvious combination. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
Accordingly, the Examiner's combination is supported by articulated
reasoning with some rational underpinning.
Likewise, we are unpersuaded by Appellants' contention that
deactivation does not encompass shutting down a device when the battery is
dead. Reply Br. 5--6. Notably, claim 16's instructions only cause the device
to deactivate. For example, executing instructions consume power and
deplete the battery. And the Specification states that deactivation includes
turning off an activated feature. Spec. i-f 10. On this record, we see no
reason why deactivation would include turning off, but not shutting down or
powering off. So the Examiner's interpretation that deactivation
encompasses shutting down (Ans. 26) is reasonable.
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Furthermore, whether a device is guaranteed to shut down (Reply
Br. 5) does not squarely address the Examiner's findings. Here, the
Examiner finds that battery-powered devices eventually lose power and
deactivate. Ans. 26. Implicit in this statement is the Examiner's reliance on
a configuration where the device is not plugged in. See id. So at most,
Appellants have only identified another configuration when a battery-power
device would not lose power-i.e., when the device is plugged into an
external power source. Reply Br. 5. But Appellants fail to present
persuasive arguments against the configuration relied upon by the Examiner.
Id.
Nor are we persuaded that the Examiner's interpretation renders the
claim language superfluous. See Reply Br. 6. Specifically, Appellants argue
that the Examiner ignores the requirement that the recited period begins
when the device's orientation changes. Id. But claim 16 only requires that
the feature is deactivated after some unspecified period. The claim does not
require calculating or otherwise determining that period. It is sufficient for
the Examiner to show that deactivation occurs at some time after the recited
period. Accordingly, we agree that turning off the device's screen (Ans. 17-
18) or shutting off the device (Ans. 26) after activation satisfies this
limitation.
Therefore, we are unpersuaded that the Examiner erred in rejecting
independent claim 16 or dependent claims 17-20, not separately argued with
particularity. See App. Br. 9; Reply Br. 1-7.
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Application 13/028,989
NEW GROU-ND OF REJECTION
Pursuant to our discretionary authority under 37 C.F.R.§ 41.50(b), we
enter a new ground of rejection for claims 1, 11, and 16 under 35 U.S.C.
§ 103 over Centaur II user Manual (1984 ), THE INTERNET PINBALL
DATABASE,
http://mirror2.ipdb.org/files/477/Bally_1983_Centaur_II_Manual.pdf
("Manual"), Centaur II A5 Lamp Driver Schematic (1981 ), THE INTERNET
PINBALL DAT ABASE,
http ://mirror2 .ipdb .org/files/ 4 77 /Bally _19 83 _ Centaur_II_Schematics. pdf
("Schematic") and the Description added on November 29, 2007, Change
Log for Game ID 477, THE INTERNET PINBALL DATABASE,
http://www.ipdb.org/changes.pl ("Change Log").
"An electronic device"
Centaur II is an electronic pinball machine corresponding to the
recited electronic device. See Manual 10, Fig. III. Play begins when a
player "shoots" the ball into the playfield. Id. at 2. In-play balls exit play
through the play area's "outhole." See id. The machine allocates a number
of balls to the player. Id. New balls are played when the previous ball exits
play. Id. Play ends under several conditions. Id. One such condition is
playing the allowable number of balls. Id.
The electronic pinball machine is shown below.
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Application 13/028,989
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