Ex Parte YEEDownload PDFPatent Trial and Appeal BoardFeb 25, 201612276959 (P.T.A.B. Feb. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/276,959 11124/2008 23696 7590 02/29/2016 QUALCOMM INCORPORATED 5775 MOREHOUSE DR. SAN DIEGO, CA 92121 FIRST NAMED INVENTOR Mong Suan YEE 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. 080912 5134 EXAMINER PARDO, THUYN ART UNIT PAPER NUMBER 2626 NOTIFICATION DATE DELIVERY MODE 02/29/2016 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): us-docketing@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MONG SUAN YEE Appeal2013-009663 1 Application 12/276,959 Technology Center 2600 Before JEAN R. HOMERE, JOHN A. EV ANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-51. Br. 26. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm-in-part. 1 Appellant identifies the real party in interest as Qualcomm Incorporated. Br. 4. Appeal2013-009663 Application 12/276,959 Illustrative Claim Independent claim 1 is illustrative of Appellant's invention and reads as follows: 1. A method for initiating an action on a computing device, compnsmg: receiving on a touchsurface a series of movements and touches defining a received shape; comparing the received shape to a code shape stored in memory; and implementing an action linked to the stored code shape when the received shape correlates to the code shape. Tonouchi Kennedy Prior Art Relied Upon US 2009/0090567 Al Apr. 9, 2009 (filed Sept. 18, 2008) US 2010/0045627 Al Feb. 25, 2010 (claiming priority to application filed Feb. 27, 2004) Rejection on Appeal Appellant requests review of the Examiner's rejection of claims 1-51 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kennedy and Tonouchi. Final Act. 2---6. ANALYSIS We consider Appellant's arguments seriatim, as they are presented in the Appeal Brief, pages 26-33. 2 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed January 11, 2013) ("Br."), the Answer (mailed March 19, 2013) ("Ans."), the Final Office Action (mailed July 11, 2 Appeal2013-009663 Application 12/276,959 Issue: Under 35 U.S.C. § 103, did the Examiner err in finding Kennedy and T onouchi are properly combined to teach or suggest "receiving on a touchsurface a series of movements and touches defining a received shape," as recited in claim 1? (Emphasis added). First, Appellant argues the proposed modification of Kennedy with Tonouchi is improper because it would render the operation of Kennedy's system unsatisfactory for its intended purpose. Br. 26. In particular, Appellant argues "the sole intended purpose of the invention in Kennedy is use [of] a physical object having a fixed shape (i.e., 'signet') to provide the security of a physical key to initiate actions (such as an authorization) on a touch screen computer." Br. 27 (emphasis omitted) (citing Kennedy i-f 6). Appellant further asserts that combining Kennedy with the abstract gesture of Tonouchi frustrates this alleged purpose because "a user could no longer know when the 'key' is stolen." Br. 27-28. At the outset, we note Kennedy is equivocal about Appellant's identified purpose. Contrary to Appellant's assertion, Kennedy states "physical keys are expensive and the terminals must be equipped with a locking mechanism that serve[s] no function other than security." Kennedy i-f 6. This teaching suggests securing terminals with an authentication tool that is less expensive than physical keys. We, therefore, agree with the Examiner's finding that Tonouchi's disclosure of drawing a shape on a 2012), and the original Specification (filed November 24, 2008) ("Spec.") for the respective details. We have considered in this Decision only those arguments Appellant actually raised in the Brief. Any other arguments Appellant could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 3 Appeal2013-009663 Application 12/276,959 touchsurface by detecting a gesture input by a user using a pen or a finger satisfies the purposes aspired in Kennedy of cost and versatility. Ans. 3--4 ( citing Tonouchi i-fi-127-28). Second, Appellant contends the proposed modification of Kennedy would change the principle of operation thereof. Br. 28. Kennedy teaches the use of objects on the touchscreen including a finger or stylus. Kennedy i1 4 7. Kennedy additionally teaches a signet roller 120F which is pressed and rolled along the surface of the touch screen to form lines on the touch screen. Kennedy i163, Fig. 7F. We agree with the Examiner that Tonouchi teaches a stroke or handwriting of a gesture input by a user using a pen or a finger in accordance with the same principle of operation of Kennedy. Ans. 3--4 (citing Tonouchi i-fi-127-28). Therefore, Appellant has failed to show that a pen used for a stroke or handwriting of a gesture input would change Kennedy's principle of operation. Third, Appellant asserts Kennedy teaches against manual entry because of the reliance on the tangible nature of the signet. Br. 29. Specifically, Appellant argues Kennedy is motivated to use a physical key such that the owner of the physical key would know when it was stolen whereas a stolen login code leaves no indication of its misappropriation. Br. 29 (citing Kennedy i16). Appellant concludes Kennedy teaches against the use of an intangible gesture, as taught by Tonouchi. Br. 29. This argument is not persuasive. The Examiner correctly finds Tonouchi teaches using a tangible object such as a pen for making the gesture input. Ans. 3--4 (citing Tonouchi i-fi-127-28). Therefore, we concur with the Examiner's finding that both Kennedy and Tonouchi use tangible objects for entry. 4 Appeal2013-009663 Application 12/276,959 Appellant argues Tonouchi does not teach receiving a "series of movements and touches defining a received shape on the touchsurface," as recited in the independent claims. Br. 33. In particular, Appellant contends Tonouchi teaches a single input stroke rather than multiple strokes required for the claimed "series of movements and touches." Br. 33 (citing Tonouchi i-fi-1 84, 88). This argument is unavailing. We agree with the Examiner that Tonouchi's disclosure of detecting time-series coordinate data representing handwriting of a gesture input teaches the recited "series of movements and touches," because handwriting involves multiple movements and touches. Ans. 3--4 (citing Tonouchi i-fi-127-28). It follows Appellant has not shown error in the Examiner's rejection of claim 1. Regarding rejection of claims 12, 24, 36, and 47, Appellant argues the Examiner erred by not addressing receiving in a first computing device a message from a second computing device including shape parameters of a shape drawing received on a touchsurface of the second computing device as a "series of movements and touches," and "implementing an action linked to the stored code shape when the received shape correlates to the code shape," as recited in claim 12. Br. 31. This argument is persuasive. We agree with Appellant that the Examiner has not shown where in the relied upon references the disputed limitations are taught. Final Act. 6. Therefore, we will not sustain this rejection. Regarding the rejection of claims 2-11, 13-23, 25-35, 37--46, and 48- 51, because Appellant has either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 2-11, 13-23, 5 Appeal2013-009663 Application 12/276,959 25-35, 37--46, and 48-51 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). DECISION We affirm the Examiner's rejection of claims 1-11, 13-23, 25-35, 37--46, and 48- 51 as set forth above. However, we reverse the rejection of claims 12, 24, 36, and 47. 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 6 Copy with citationCopy as parenthetical citation