Keysight Technologies, Inc.

Patent Trials and Appeals Board

Jul 28, 2020

13750536 - (D) (P.T.A.B. Jul. 28, 2020)

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.
13/750,536 01/25/2013 Glenn R. Engel 20120310-01 9972
126187 7590 07/28/2020
Keysight Technologies, Inc.
In care of: CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
SUN, LI P
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GLENN R. ENGEL
____________________

Appeal 2019-002845
Application 13/750,536
Technology Center 2100
____________________

Before ELENI MANTIS MERCADER, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1–7, 9–17, and 18–20. Claims 8 and 18 were withdrawn by Appellant in the
Amendment filed August 18, 2015 (see pp. 3, 5), in response to the
Restriction Requirement mailed on February 5, 2015. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Keysight Technologies, Incorporated
(Appeal Br. 1).
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DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed invention, entitled “Method for Utilizing
Projected Gesture Completion to Improve Instrument Performance” (Title),
relates to touch screens used to control computer programs, and more
particularly to control measurement instruments (see Spec. ¶¶ 1, 2).
Appellant recognized that because the time to execute a gesture can be a
significant fraction of the total time to update a display, “the gesture
introduces a delay into the control of the instrument and/or display of
information on the screen” (Spec. ¶ 2). Accordingly, Appellant’s invention
pertains to estimating a direction and assuming an identity for a vector
gesture prior to the vector gesture being completed (see Spec. ¶ 4). Claims
1 and 9, reproduced below with bracketed lettering and emphases added, is
illustrative of the claimed subject matter:
1. A method of operating a first data processing system
having a screen for responding to a vector gesture performed on
that screen, said vector gesture being characterized by
making contact between an object and said screen at a starting
location on said screen and a movement of said object from said
starting location in a direction on said screen without breaking
said contact, said method comprising:

detecting said contact between said object and said screen
at said starting location on said screen;

[A] estimating said direction and assuming an identity for
said vector gesture prior to said vector gesture being completed,
but after detecting said contact between said object and
said screen at said starting location;

executing a command after detecting said contact between
said object and said screen at said starting location that depends
on said estimated direction and assumed identity, said command
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being required to update a current state of said first data
processing system if said assumed identity of said vector gesture
is correct, said command being executed prior to said vector
gesture being completed; and

updating said current state of said first data processing
system based on a result generated by said command.

Appeal Br. 11, Claims Appendix (bracketed lettering and emphases added).
9. The method of Claim 3 wherein estimating said direction and
assuming an identity for said vector gesture is repeated if said
vector gesture was not completed after detecting said contact
between said object and said screen at said starting location,
said estimating said direction and assuming an identity for said
vector gesture being repeated based on a current location of said
object and said screen.

Appeal Br. 12, Claims Appendix (emphasis added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1–7 and 11–17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Larsby et al. (US 2013/0222329 A1; published Aug.
29, 2013) (hereinafter, “Larsby”) and Kawalkar (US 9,052,819 B2; issued
June 9, 2015). Final Act. 3–10; Ans. 3–11.
(2) Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsby, Kawalkar, and Sunday et al. (US 2009/0100383
A1; published Apr. 16, 2009) (hereinafter, “Sunday”). Final Act. 10–12;
Ans. 11–13.
(3) Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsby, Kawalkar, Fagans (US 2005/0206658 A1;
published Sept. 22, 2005), and Zimmerman et al. (US 2003/0122787 A1;
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published July 3, 2003) (hereinafter, “Zimmerman”). Final Act. 12–17; Ans.
13–17.

ISSUES
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–9)
and the Reply Brief (Reply Br. 1–2),2 the following principal issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 1–7, 10–17, and 20 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of
Larsby and Kawalkar, because the base combination fails to teach or suggest
the estimation step recited in limitation A of representative claim 1; and/or
(b) there is not proper motivation to combine Larsby and Kawalkar?
(2) Did the Examiner err in rejecting dependent claims 9 and 19 under
35 U.S.C. § 103(a) as being unpatentable over the base combination
modified with Sunday, because Sunday fails to teach or suggest repeating
the estimation step “based on a current location of said object and said
screen,” as recited in claims 9 and 19?

2 Appellant presents arguments as to claims 1 and 11, and relies on those
arguments as to the patentability of claims 2–7 and 12–17 depending
respectively therefrom (see Appeal Br. 5–7; Reply Br. 1–2). Claims 1 and
11 are coextensive and recite commensurate limitations, including the
estimating step of limitation A of claim 1. We select claim 1 as
representative of the group of claims rejected over the combination of
Larsby and Kawalkar (i.e., claims 1–7 and 11–17). Appellant relies on the
arguments presented as to claims 1 and 11 as to the patentability of claims
10 and 20 (Appeal Br. 8). Therefore, we decide the outcome of the rejection
of claims 10 and 20 on the same basis as provided for claim 1.
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ANALYSIS
Obviousness Rejection of Representative Claim 1
We have reviewed the Examiner’s rejection of claim 1 (Final Act. 3–
7; Ans. 3–8) in light of Appellant’s arguments (Appeal Br. 5–7; Reply Br.
1–2) that the Examiner has erred, as well as the Examiner’s response to
Appellant’s arguments in the Appeal Brief (Ans. 17–20). Appellant’s
arguments are not persuasive of error. With regard to representative claim 1,
we agree with and adopt as our own the Examiner’s findings of facts and
conclusions as set forth in the Final Rejection (Final Act. 3–7) and Answer
(Ans. 3–8, 17–20). We provide the following explanation for emphasis.
Appellant has not shown the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) as being unpatentable over the base combination of
Larsby and Kawalkar, because the combination teaches or suggests the
method recited in claim 1, including estimating as set forth in limitation A.
We agree with the Examiner that “Appellant does not argue that the
combination of Larsby and Kawalkar does not teach the limitations of
Claims 1 and 11, but merely argues that Kawalkar cannot be combined with
Larsby” (Ans. 18).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); see Para-Ordinance Mfg., Inc. v. SGS Importers Int’l., Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995). Furthermore, it is irrelevant that the
prior art and the present invention allegedly have different purposes. See
Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed.
Cir. 2004) (“A finding that two inventions were designed to resolve different
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problems . . . is insufficient to demonstrate that one invention teaches away
from another.”). A prior-art reference that discloses alternatives does not,
simply by preferring some alternatives, “teach away” from the non-preferred
alternatives, In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004), and a
particular reference’s mere silence about a particular feature does not tend to
teach away from it, especially if it is disclosed elsewhere in the prior art,
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
In other words, “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .” In re Fulton, 391 F.3d at 1201.
Here, Larsby teaches predicting a gesture “before and after the finger
is in contact with the screen” (Larsby ¶ 32) (emphases added). Thus, Larsby
is not limited to predicting gestures prior to screen contact, but also teaches
predicting gestures after contact. Because Kawalkar teaches or suggests the
subject matter of limitation A, the combination of Larsby and Kawalkar
teach every claim limitation recited in claim 1, and one of ordinary skill in
the art would not be led in a direction divergent from the path taken by
Appellant (e.g., estimating after contact and prior to gesture completion).
We agree with the Examiner’s response to Appellant’s arguments
(Ans. 17–20) that Larsby and Kawalkar merely set forth different types of
gesture prediction, and do not discourage or prevent the use of doing so at
the relative times set forth in claim 1 (i.e., after contact and prior to gesture
completion), and as taught by Kawalkar. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away . . . if it merely expresses a general preference
for an alternative invention but does not ‘criticize, discredit, or otherwise
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discourage’ investigation into the invention claimed.”); In re Fulton, 391
F.3d at 1201 (a prior-art reference that discloses alternatives does not,
simply by preferring some alternatives, “teach away” from the non-preferred
alternatives); see also Syntex, 407 F.3d at 1380 (a particular reference’s
mere silence about a particular feature does not tend to teach away from it,
especially if it is disclosed elsewhere in the prior art); In re Gurley, 27 F.3d
at 553; Para-Ordinance, 73 F.3d at 1090. We also agree with the Examiner
that (i) “modifying Larsby with Kawalkar will not result in a device/system
that operates in a manner that is contrary to the fundamental mode of
operation of Larsby” (Ans. 20); and (ii) Larsby and Kawalkar “address the
same issue of predicting an intended gesture using data from incomplete
gesture (proximity information for Larsby, and partial gesture performed on
the screen for Kawalkar)” (Ans. 19–20) (emphasis added).
With regard to the motivation to combine Larsby and Kawalkar, we
agree with the Examiner’s rationale for making the combination set forth at
page 7 of the Final Rejection:
Because both Larsby and Kawalkar address the same issue
of predicting a touch gesture, accordingly, it would have been
obviously to one of ordinary skill in the art at the time the
invention was made to modify the method, disclosed in Larsby,
to perform: estimating said direction and assuming an identity
for said vector gesture prior to said vector gesture being
completed, but after detecting said contact between said object
and said screen at said starting location; executing a command
after detecting said contact between said object and said screen
at said starting location, for the purpose of providing a gestural
touch screen display user interface that does not rely on
mandatory complete and long gestural interactions for
implementing a control function, as taught in Kawalkar.

Final Act. 7; and at page 20 of the Answer:
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Modifying Larsby with Kawalkar would provide a gestural touch
screen display user interface that does not rely on mandatory
complete and long gestural interactions for implementing a
control function, as expressly disclosed by Kawalkar (see
Kawalkar, Col. 1, line 53-56). In addition to the motivation
expressly provided by Kawalkar, one of ordinary skill in the art
would also be motivated to make such modification so an identity
of a touch gesture can still be predicted/verified before the touch
gesture completes when proximity information of the touch
gesture is not available, e.g., finger is now touching the screen
instead of approaching or hovering the screen, and to improve
the accuracy of the predicated user touch gesture and its
associated action of Larsby by also verify the predicated gesture
once user's finger touches the screen, as taught by Kawalkar.
Such improvement of prediction accuracy actually compliments
the principle of operation of Larsby, because, as expressly
disclosed by Larsby, the initiated action is cancelled if the
prediction is not correct/accurate (see 910 and 912 in Fig. 9 and
[0037] of Larsby).

Ans. 20.
Appellant’s arguments (App. Br. 5–7; Reply Br. 1–2) that (i) there is
no motivation for combining Larsby and Kawalkar; (ii) the Examiner’s
proposed modification of Larsby with Kawalkar would result in a device that
operates contrary to the fundamental mode of operation of Larsby, are
unpersuasive. And, Appellant’s contentions (Appeal Br. 7; Reply Br. 1)
regarding the fundamental/primary mode of Larsby being operation and
gesture prediction prior to contact are also unpersuasive inasmuch as
Appellant has not presented argument or evidence sufficiently showing
Larsby is limited to only performing gesture prediction prior to contact, and
not after contact (as taught by both Larsby and Kawalkar). Finally,
Appellant’s reliance on counsel’s arguments made during the prosecution of
Larsby are misplaced, as attorney argument is not evidence. In re Pearson,
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494 F.2d 1399, 1405 (CCPA 1974); Icon Health & Fitness, Inc. v. Strava,
Inc., 2017 WL 744548 *5 (Fed. Cir. Feb. 27, 2017). And, it is well settled
that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are of little probative value. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 1. We are
not persuaded the Examiner erred in rejecting claim 1. Accordingly, we
sustain (i) the Examiner’s rejection of claim 1, as well as corresponding
dependent claims 2–7 and 11–17 grouped therewith; and (ii) the Examiner’s
rejection of claims 10 and 20 argued on the same basis as claims 1 and 11.

Obviousness Rejection of Dependent Claims 9 and 19
Claim 9 depends from claim 3, which in turn depends from claim 1,
and recites, in pertinent part:
wherein estimating said direction and assuming an identity for
said vector gesture is repeated if said vector gesture was not
completed after detecting said contact between said object and
said screen at said starting location, said estimating
said direction and assuming an identity for said vector gesture
being repeated based on a current location of said object and
said screen.

Appeal Br. 12, Claims Appendix (emphases added). Appellant describes the
process for determining gestures shown in Figure 7 at paragraphs 33 through
38 of the Specification. In particular, as recognized by the Examiner at
pages 22 through 23 of the Examiner’s Answer, after possible gestures are
determined at step 73, and a set of vector touch gestures that are possibly
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being implemented is determined in step 73 (see Fig. 7; Spec. ¶ 33), it is
determined if the gesture has been completed in step 76 (see Fig. 7; Spec. ¶
37). “If the gesture has not been completed, the current state of the gesture
is determined as shown in [step] 77. The state is determined from the
current locations of the user’s fingers” (Spec. ¶ 37).
The Examiner relies upon paragraph 20 and Figure 2 and the Abstract
of Sunday as teaching or suggesting the limitations of claims 9 and 19 (see
Final Act. 11–12; Ans. 12). Paragraph 20 of Sunday describes that “the
gesture-predicting engine predicts which gestures a user may be attempting,
or which gestures are possible, based on the beginning portion of a particular
user gesture, then “predicts the possible commands that are associated with
the gestures that could be completed from the beginning of the analyzed user
gesture” (Sunday ¶ 20). “As a user gesture continues, the gesture-predicting
engine may progressively eliminate commands associated with gestures that
do not match the analyzed user gesture” (Sunday ¶ 20).
The Examiner also notes (see Ans. 22) that Sunday predicts gestures
by predicting all possible gestures based on a starting location and
movement of a user’s finger (see Sunday ¶ 21; Fig. 2, “Analyze Beginning
of Gesture” at step 210, and “Identify Possible Gestures”), and then
progressively eliminating those that are not consistent with the analyzed user
gesture (see Sunday ¶¶ 27–29; Fig. 3, “Remove Gestures That Are No
Longer Valid” at step 306). As the gesture prediction method of Sunday
progresses, possibilities are eliminated “as the user gesture continues”
(Sunday ¶ 27). Thus, Sunday’s gesture prediction method is consistent with
Appellant’s method.
Appellant argues that “[t]he issue is not whether the reference is
consistent, but rather whether the reference teaches the limitation in
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11
question” (Appeal Br. 8). Appellant contends “Sunday does not teach
repeating the determination of a gesture and the direction if the previous
guess for a gesture is not completed” (Appeal Br. 8). Appellant further
contends:
Sunday teaches predicting all possible gestures that could be
started from the starting location and movement of the object and
then eliminating those that are not consistent with the
information obtained from the further movement of the object
until only one remains or the user provides input as to which one
of the possible actions is actually being implemented.

Appeal Br. 8.
However, Sunday teaches checking the continued gesture of an S-
shaped motion against a gesture database at step 302 in Figure 3 (see Sunday
¶ 28). One of ordinary skill in the art would understand that in order to
“check[] the continued gesture” (Sunday ¶ 28), the gesture-predicting engine
would have to be aware of the continued position/location of the finger
providing the input, as well as the screen being used for the input (i.e., the
relationship of the finger and screen locations throughout the evolving
gesture input).
In this light, Appellant’s assertions (see Appeal Br. 8) that neither
Sunday, nor the combination of Sunday with Larsby and Kawalkar, shows or
describes repeating the estimation step “based on a current location of said
object and said screen,” as recited in claims 9 and 19, are unpersuasive.
We find that the Examiner has properly established factual
determinations and articulated reasoning with a rational underpinning to
support the legal conclusion of obviousness for dependent claims 9 and 19,
resulting in a failure to establish a prima facie case of obviousness.
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Appellant has not sufficiently shown the prima facie case to be in error,
either with evidence or argument.

CONCLUSION
Under 35 U.S.C. § 103(a), Appellant has not shown the Examiner
erred in rejecting (i) claims 1–7 and 11–17 over the base combination of
Larsby and Kawalkar; and/or (ii) claims 9 and 19 over the combination of
Larsby, Kawalkar, and Sunday. For the above reasons, we affirm the
Examiner’s decision to reject claims 1–7, 9–17, 19, and 20.
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–7, 11–
17
103(a) Larsby,
Kawalkar
1–7, 11–17
9, 19 103(a) Larsby,
Kawalkar,
Sunday
9, 19
10, 20 103(a) Larsby,
Kawalkar,
Fagan,
Zimmerman
10, 20
Overall
Outcome
1–7, 9–17,
19, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED