Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Sep 8, 2020

2019002157 (P.T.A.B. Sep. 8, 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.
14/573,743 12/17/2014 Douglas Warren Robinson RPS920140039USNP(710.362) 3738
58127 7590 09/08/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
TSUI, WILSON W
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
09/08/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS WARREN ROBINSON and
AARON MICHAEL STEWART
Appeal 2019-002157
Application 14/573,743
Technology Center 2100
Before ERIC B. CHEN, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 6–25. 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(a). Appellant identifies the real party in interest as Lenovo
(Singapore) PTE. LTD. Appeal Br. 3.
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Application 14/573,743

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CLAIMED SUBJECT MATTER
The claims relate to identification of a user for personalized media
content presentation. Spec., Title. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method, comprising:
detecting, using a sensor, one or more user characteristics
associated with a user holding a remote control device;
identifying, using the one or more user characteristics,
the user currently holding the remote control device;
associating, using a processor, a media device setting on
another device with the user currently holding the remote
control device;
implementing, on the another device, the media device
setting responsive to determining that the one or more user
characteristics associated with the user holding the remote
control device have been detected for a predetermined length of
time; and
not implementing the media device setting responsive to
determining that the remote control device is moving above a
predetermined threshold speed.
REFERENCES
The prior art relied upon by the Examiner is:
Braun US 8,194,036 B1 June 5, 2012
Hilton
Rigazio
Sahu
US 2010/0052853 A1
US 2011/0043475 A1
US 2015/0324564 A1
Mar. 4, 2010
Feb. 24, 2011
Nov. 12, 2015

REJECTIONS
Claims 1, 10, 15, and 25 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Non-Final
Act. 3.
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Claims 1–4 and 6–25 stand rejected under 35 U.S.C. § 103 as obvious
over Rigazio, Sahu, Hilton, and Braun. Id. at 4.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv).
ANALYSIS
Rejection under § 112
The Examiner finds claims 1, 10, 15, and 25 fail to comply with the
written description requirement because each of these claims “recite that the
remote control device is moving above a predetermined threshold speed.”
Non-Final Act. 3. The Examiner finds “the specification only provides
support for the device to be moving above a threshold (paragraphs 0043 and
0044), and does not specifically recite the type of movement (such as
speed).” Id.
Appellant contends “the claimed limitation is at least implied (and
arguably expressly described)” because the Specification discloses “other
sensed data (e.g., remote control is moving above a predetermined threshold)
may be used to cancel a user identification event.” Appeal Br. 22–23 (citing
Spec. ¶ 43). Appellant also relies on the Specification’s disclosure that
“[s]imilarly, if one individual is passing a controller to another person, the
controller, although it may capture user identification data associated with
the passing individual, it may not act on this because . . . of the way in which
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the remote control device is moving or oriented.” Id. at 23 (citing Spec.
¶ 44). Appellant contends,
From at least the two foregoing cited portions, it can be
reasonably deduced that “predetermined threshold” clearly
corresponds to a speed at which the remote control is moving.
This is evidenced by not only the surrounding contextual words
in the cited portions but also the practical understanding of a
predetermined threshold movement of remote controllers (i.e.,
the passing of a remote controller between individuals).
Id.
Appellant does not persuade us of Examiner error. “[T]he test for
sufficiency of support . . . is whether the disclosure of the application relied
upon reasonably conveys to the artisan that the inventor had possession at
that time of the . . . claimed subject matter.” Ralston Purina Co. v.
Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (internal quotation
omitted). Our reviewing court further instructs,
The question is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification. . . . [And]
it is “not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the
disclosure . . . . Rather, it is a question whether the application
necessarily discloses that particular device.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). Further,
“one cannot disclose a forest in the original application, and then later pick a
tree out of the forest and say here is my invention.” Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000). Rather, the
Specification must provide some guides or “blaze marks” that disclose the
claimed invention “specifically, as something appellants actually invented.”
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Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010);
Purdue, 230 F.3d at 1326.
Here, the Specification does not “necessarily disclose” the claimed
threshold speed. See Lockwood, 107 F.3d at 1572. We agree with the
Examiner’s finding that the Specification’s “moving above a predetermined
threshold” could refer to any movement, such as position, height, distance,
orientation, vector, or angle. Ans. 3. There are doubtless other types of
movements that could be compared to a threshold, although the
Specification describes none. See, e.g., Spec. ¶¶ 43–44. Given the
numerous possible types of movement that can be compared with a threshold
and the Specification’s lack of examples of any type of movement to
compare with a threshold, we determine the Specification does not disclose a
threshold speed.2
We therefore sustain the Examiner’s § 112 rejection.

Rejection under § 103
Appellant contends,
the Office has not articulated a reason why a person skilled in
the art would combine the prior art references, does not have
adequate evidentiary basis for such a finding, and has not
provided a satisfactory explanation for the motivation to

2 Though not directly tied to a “threshold,” the Specification does disclose
“accelerometer data indicates the remote is being repositioned.” Spec. ¶ 44
(emphasis added). Appellant did not refer to the accelerometer as
supporting its claim limitation, and thus any argument that it does is waived.
Nevertheless, absent further detail regarding the accelerometer output, we
find that one of ordinary skill in the art would have considered an
accelerometer to measure acceleration, not speed.
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combine finding that includes an express and rational
connection with the evidence presented.
Appeal Br. 23–24 (citing In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed.
Cir. 2016)). Appellant further contends that the Examiner’s motivation to
combine “amount[s] to nothing more than a series of conclusory
statements.” Id. at 24.
The Examiner finds one of ordinary skill in the art would have
modified Rigazio with Sahu because “[t]he combination would have allowed
Rigazio et al[.] to have ‘avoided ping-ponging of user’s profiles each time a
different user touches the user device . . . by implementing a hysteresis
timer.’” Non-Final Act. 6–7. The Examiner then finds one of ordinary skill
in the art would have modified Rigazio and Sahu with Hilton because “[t]he
combination would have allowed Rigazio et al[.] and Sahu et al[.] to have
allowed a user of [a device] to gain access to programming/settings of an
electronic device/set-top box . . . without having to remember different
passwords using biometric data.” Id. at 7–8. Finally, the Examiner finds
one of ordinary skill in the art would have modified these three references
with Braun because “[t]he combination would have allowed Rigazio et al[.],
Sahu et al[.] and Hilton to have helped control the sensitivity usage of a
device (Braun et al[.], column 1, lines 452-45) such that unintentional
movements [can be ignored].” Id. at 8.
Appellant does not persuade us of Examiner error. Appellant’s
citation to In re NuVasive is inapposite because that case dealt with an
appeal from an inter partes review proceeding. NuVasive, 842 F.3d at 1379.
Inter partes review and ex parte appeals involve different burdens. In inter
partes review, a petitioner must prove unpatentability by a preponderance of
the evidence. 35 U.S.C. § 316(e). In ex parte appeals, if the Examiner
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establishes a prima facie case, the burden shifts to Appellant to rebut the
Examiner’s prima facie case. See Manual of Patent Examining Procedure
(“MPEP”) § 2142. We find the Examiner here established a prima facie
case by articulating rationales to combine each reference. See Non-Final
Act. 6–8. Appellant’s argument that the Examiner failed to articulate a
rationale to combine does not rebut this prima facie case.
Appellant also contends one of ordinary skill in the art would not have
looked to Braun to arrive at the claimed embodiments. Appeal Br. 25.
Appellant argues:
the subject matter in Braun is primarily focused on controlling
the movement of a cursor on a display screen. . . . Applicant
respectfully submits that identifying a speed at which a user’s
finger or a stylus is moving across a trackpad and thereafter
determining whether or not to ignore that motion depending on
the speed is completely unrelated to the physical movement of a
remote controller (e.g., the passing of a remote controller
between two or more individuals, etc.).
Id. (emphasis added). This appears to be a non-analogous art argument.
Appellant contends that Braun’s trackpad sensor “is completely unrelated to
the physical movement of a remote controller,” which presumably refers to
teachings of one of the other references in the combination. This argument
is unpersuasive because it does not analyze the tests for analogous art:
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (internal citation omitted).
As Appellant does not address either of these tests, Appellant’s argument is
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unpersuasive. Even if Braun was in a different field of endeavor, Appellant
has not sufficiently explained why its teachings regarding “filtering out
movements above a frequency threshold” would not have been reasonably
pertinent to the particular problem of identifying a user for personalized
media content presentation, with which the inventors were involved. See
Braun 15:4.
Appellant also contends the combined references fail to teach or
suggest all the claim limitations, specifically, “not implementing the media
device setting responsive to determining that the remote control device is
moving above a predetermined threshold speed.” Appeal Br. 25. Appellant
contends this limitation is “readily distinguishable from the teachings of
Braun that . . . relate to the gathering and utilization of motion data with
respect to movement of a user’s finger or stylus on a trackpad input device.”
Id. at 26 (citing Braun, Abstr., Fig. 2). Appellant further contends,
“determining whether a remote control device is moving above a
predetermined threshold speed is very different from determining how fast
an input device is moving on a trackpad.” Id. Appellant also contends,
the cited portions of Braun do not disclose that responsive to
determining that the remote control device is moving above a
predetermined threshold speed, media device settings are not
implemented on another device. Rather, Braun appears to
disclose filtering out unintentional movements on a display
screen operatively coupled to the trackpad device (e.g., a
laptop, etc.).
Id.
The Examiner finds that Sahu discloses “not implementing the media
device setting respons[ive] to determining that the remote control device
[has been sensed as used] above a predetermined threshold.” Non-Final
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Act. 6 (emphasis omitted) (citing Sahu ¶ 28). The Examiner finds Braun
“teaches the device is sensed to be moving above a predetermined threshold
speed.” Id. at 8 (citing Braun 15:2–6). In other words, the Examiner relies
on Sahu for the disputed limitation except for the terms “moving” and
“speed,” for which the Examiner relies on Braun.
Appellant only addresses the teachings of Braun but concedes that
Braun teaches “identifying a speed at which a user’s finger or a stylus is
moving across a trackpad.” Appeal Br. 25 (emphasis added). This is
precisely what the Examiner relies on Braun for. Non-Final Act. 8. But
Appellant ignores the Examiner’s findings that Sahu teaches the remainder
of the disputed limitation. Appellant’s arguments attacking the references in
isolation do not persuasively rebut the underlying factual findings made by
the Examiner, which are based upon the combined teachings and suggestions
of the cited references. One cannot show non-obviousness by attacking
references individually, where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For these reasons, we sustain the Examiner’s § 103 rejection.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 10, 15, 25 112(a) Written Description 1, 10, 15,
25

1–4, 6–25 103 Rigazio, Sahu, Hilton,
Braun
1–4, 6–25
Overall
Outcome
1–4, 6–25
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Application 14/573,743

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