Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Sep 2, 2021

2020003715 (P.T.A.B. Sep. 2, 2021)

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.
14/159,109 01/20/2014 Xin Feng RPS920130223USNP(710.318) 9211
58127 7590 09/02/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
BAUTISTA, XIOMARA L
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
09/02/2021 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 XIN FENG and PAUL HILBURGER
Appeal 2020-003715
Application 14/159,109
Technology Center 2100

Before ERIC B. CHEN, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20, all of the claims under
consideration. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers 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 Brief filed November 25, 2019 (“Appeal Br.”) at 3.
Appeal 2020-003715
Application 14/159,109

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CLAIMED SUBJECT MATTER
Summary
Appellant’s claimed subject matter relates to recognizing input
gestures that “mimic mouse inputs.” Spec. ¶ 2.2 According to Appellant,
“an embodiment provides a user with the ability to perform gestures, e.g.,
table top gestures, captured by an image sensor such as a camera, which are
mapped to controlling inputs and/or content inputs, e.g., as may be provided
by a mouse.” Id. ¶ 17. In this context, the Specification describes
“determin[ing] if an activating gesture has been performed, e.g., a
predetermined gesture that signals to the system that the user desires to
provide gesture inputs for mimicking mouse controls and/or provide content
input using gestures.” Id. ¶ 28. In one example, “a user may provide an
activating gesture input by forming his or her hand into a specific,
predetermined shape, for example as if holding a physical mouse.” Id.
Exemplary Claims
Claims 1, 11, and 20 are independent. Claims 1 and 20, reproduced
below with limitations at issue italicized, exemplify the claimed subject
matter:
1. A method, comprising:
capturing, using an image sensor of an information
handling device, a user gesture input;

2 In addition to the Appeal Brief noted above, we refer to: (1) the
Specification filed April 20, 2014 (“Spec.”); (2) the Non-Final Office Action
mailed June 24, 2019 (“Non-Final Act.”); (3) the Examiner’s Answer mailed
February 28, 2020 (“Ans.”); and (4) the Reply Brief filed April 16, 2020
(“Reply Br.”).
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Application 14/159,109

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determining, using a processor, that the user gesture
input comprises an activating gesture input that is separate
from and provided before a controlling gesture input, wherein
the activating gesture input provides an indication to monitor
for subsequent controlling gesture input;
capturing, using the image sensor of the information
handling device, controlling gesture input of the user;
detecting, within the captured controlling gesturing
input, gestures provided on a physical surface and mimicking
use of a mouse; and
controlling an application running on the information
handling device based on the controlling gesture input of the
user;
wherein the activating gesture input is a non-contact
input with respect to the information handling device.

20. A product, comprising:
a storage device having code stored therewith, the code
being executable by a processor and comprising:
code that captures, using an image sensor of an
information handling device, a user gesture input;
code that determines, using a processor, that the user
gesture input comprises an activating gesture input that is
separate from and provided before a controlling gesture input,
wherein the activating gesture input provides an indication to
monitor for subsequent controlling gesture input;
code that captures, using the image sensor of the
information handling device, controlling gesture input of the
user;
code that detects, within the captured controlling
gesturing input, gestures provided on a physical surface and
mimicking use of a mouse; and
code that controls an application running on the
information handling device based on the controlling gesture
input of the user;
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wherein the activating gesture input is a non-contact
input with respect to the information handling device.
Appeal Br. 22, 26–27 (Claims App.).
REFERENCES
The Examiner relies on the following prior art references:3
Name Reference Date
Hsieh US 2009/0284469 A1 Nov. 19, 2009
Hildreth US 2009/0315740 A1 Dec. 24, 2009
Plagemann US 2012/0212413 A1 Aug. 23, 2012
Alameh US 2014/0078318 A1 Mar. 20, 2014
Huang US 2014/0223381 A1 Aug. 7, 2014
REJECTIONS
The Examiner makes the following rejections:

Claim(s)
Rejected 35 U.S.C. § References/Basis
Non-Final Act.
20 101 Eligibility 3
1, 2, 4, 5, 6, 11,
12, 14, 15, 16,
20
103 Alameh, Huang,
Plagemann
4–9
3, 13 103 Alameh, Huang,
Plagemann, Hsieh
9–10
7–10, 17–19 103 Alameh, Huang,
Plagemann, Hildreth
10–12
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

3 All citations to the references use the first-named inventor only.
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Application 14/159,109

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Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
We disagree with Appellant that the Examiner errs in rejecting claims 1–20,
and we adopt as our own the findings and conclusions set forth by the
Examiner for these claims to the extent consistent with our analysis herein.
Non-Final Act. 3–12; Ans. 3–8.
Rejection of Claim 20 under 35 U.S.C. § 101
The Examiner rejects claim 20 under 35 U.S.C. § 101 as directed to
patent ineligible subject matter because the broadest reasonable
interpretation of the claim in view of Appellant’s Specification would
include transitory signals. Non-Final Act. 3; Ans. 3–4.
We agree with the Examiner’s conclusion. Claim 20 recites “[a]
product, comprising: a storage device having code stored therewith, the code
being executable by a processor.”4 Appeal Br. 26–27 (Claims App.). We
first note that the recited “product, comprising: a storage device having code
stored therewith,” is not claimed as non-transitory. Id. Second, the
Specification does not specifically define the product having code stored
therewith to exclude signal propagation media or transitory media. See
Spec. ¶ 37–39.

4 Claim 20 recites both a product and a device. In the event of further
prosecution, the Examiner should consider whether to reject claim 20 as
indefinite under 35 U.S.C. § 112(b) for reciting two statutory classes, i.e., a
manufacture and a machine, in a single claim. Cf. IPXL Holdings v
Amazon.com, 430 F.3d 1377, 1384 (Fed. Cir. 2005) (Finding single claim
covering both an apparatus and a method indefinite.). Congress has
indicated that inventions may be patentable only if they fall within one of the
statutory classes of subject matter specified in 35 USC 101, e.g., “process,
machine, manufacture or composition of matter.” See Kewanee Oil Co. v.
Bicron Corp., 416 U.S. 470, 483 (1974).
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Appellant argues “the claim is explicitly drawn to a storage medium,
which per Applicants’ [S]pecification cannot be interpreted as a signal.”
Appeal Br. 17 (citing Spec. ¶ 38).
We are not persuaded. Claim 20’s “product” is embodied in the form
of a device readable medium. See Spec. ¶ 37 (“[A]spects [of the claimed
invention] may take the form of a device program product embodied in one
or more device readable medium(s) having device readable program code
embodied therewith.”). The Specification provides “a non-signal storage
device” as a non-limiting example of a device readable medium, rather than
as a definition. Spec. ¶ 38. The Specification further provides several other
non-limiting examples of a device readable medium, which include an
optical storage device and a magnetic storage device, and concludes by
disclosing “[i]n the context of this document, a storage device is not a signal
and ‘non-transitory’ includes all media except signal media.” Id. (emphasis
added). Although the Specification provides a non-limiting example in
which a storage device is not a signal, it does not limit the “product” recited
in claim 1 to exclude transitory media such as signals. Appeal Br. 22;
Spec.¶¶ 37–38. Accordingly, we agree with the Examiner that the
Specification does not limit a product in the form of a device readable
storage medium to exclude transitory media such as signals, carrier waves,
etc. Ans. 3–4. That is, we find the broadest reasonable interpretation of the
claimed product, in view of Appellant’s Specification, includes transitory
propagating signals. See Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential) (holding that where a specification does not
limit a machine readable storage medium expressly to exclude signals,
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carrier waves, and other transitory media, the term encompasses transitory
propagating signals).
Appellant is not precluded from amending claim 20 to overcome this
rejection. Guidance on this point is provided in U.S. Patent & Trademark
Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such a computer
readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation ‘non-transitory’ to the claim.”); see also U.S. Patent & Trademark
Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August
2012 Update) (pp. 11–14), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting
that adding the claim to include the recitation “non-transitory,” is a viable
option for overcoming the presumption that those media encompass signals
or carrier waves).
Accordingly, because we are not persuaded the product, as recited, is
limited to statutory subject matter, we sustain the rejection of claim 20 under
35 U.S.C. § 101.
Rejection of Exemplary Claim 1 under 35 U.S.C. § 103
Independent claim 1 recites “determining, using a processor, that the
user gesture input comprises an activating gesture input that is separate from
and provided before a controlling gesture input, wherein the activating
gesture input provides an indication to monitor for subsequent controlling
gesture input.” Appeal Br. 22.
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The Examiner finds Huang’s discussion of a user gesture for
activating an invisible control teaches or suggests the limitation at issue.
Non-Final Act. 4–5 (citing Huang ¶¶ 5, 6, 20–22, 50, and 70).
Appellant argues “the user-provided gesture in Huang does not
‘provid[e] an indication to monitor for subsequent controlling gesture
input’” because “the activation gesture input described in the current claims
does not affect any change in the operation of an application whereas Huang
conversely recites that ‘in response to receiving the user gesture, a
predetermined action associated with the invisible control may be
activated.’” Appeal Br. 19 (citing Huang Abstract); Reply Br. 21–22.
Appellant fails to show reversible error in the Examiner’s factual
findings. Huang relates to a user interface that provides for altering an
operating mode of a device using an invisible control. Huang ¶ 19. The
control is invisible in that it is not explicitly present or displayed as a control
such as a button or icon. Id. Huang explains that “the invisible control may
function similar to a control, alt, or function key on a keyboard to change an
operation of an input from a first mode to another mode.” Id. ¶ 21. Thus,
using an activating gesture to activate the invisible control may change an
operating mode, such as by changing from a browsing mode to a search
mode. Id. ¶ 6. A subsequent control gesture received after the activating
gesture will result in performance of different functions depending on the
mode selected with the activating gesture. Id. “For example, activation of
the invisible control may change from a browsing operation mode in which a
particular gesture causes displayed content to pan or scroll, to a search
operation mode in which the same or similar gesture is used to identify
subject matter for which to search.” Id. ¶ 20. Thus, Huang’s first activating
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gesture provides an indication to monitor for a subsequent controlling
gesture input in that the first activating gesture provides an indication of
whether the second controlling gesture relates, for example, to a browsing
mode or a search mode.
Appellant first argues that “the activation gesture input described in
the current claims does not affect any change in the operation of an
application whereas Huang conversely recites that ‘in response to receiving
the user gesture, a predetermined action associated with the invisible control
may be activated.’” Appeal Br. 19; Reply Br. 21.
Appellant argues an aspect that is not recited in the claim. Claim 1
does not recite that the activating gesture “does not affect any change in the
operation of an application.” Appeal Br. 19. Thus, Appellant’s argument
fails because it is not commensurate with the scope of the claim. See In re
Self 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from
the outset because . . . they are not based on limitations appearing in the
claims.”).
Appellant next argues that “[a]t best, Huang discloses two separate
equivalents of a ‘controlling gesture input’ rather than an ‘activating gesture
input [that] provides an indication to monitor for subsequent controlling
gesture input.’” Appeal Br. 19.
We are unpersuaded because, as discussed above, Huang’s first
activating gesture of an invisible control provides an indication to monitor
for a subsequent controlling gesture input, in that the first activating gesture
provides an indication of whether the second controlling gesture relates to a
browsing mode or a search mode. Huang ¶¶ 20–22, 50. Moreover, as the
Examiner points out, Huang specifically discloses “[t]he invisible system
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106 may further include a determination module 212” that “notifies an
activation module to activate a predetermined action and/or prepare for
further input or gesture from a user.” Ans. 6 (citing Huang ¶ 50) (emphasis
added). Here also, Huang teaches that the first activating gesture of an
invisible control notifies the module to “prepare for further input or gesture
from a user” in the form of the subsequent selection gesture, i.e., controlling
gesture input. Huang ¶¶ 20–22, and 50.
Accordingly, Appellant fails to show reversible error in the
Examiner’s finding that Huang’s discussion of activating an invisible control
teaches or suggests the limitation at issue.
Independent claim 1 further recites “wherein the activating gesture
input is a non-contact input with respect to the information handling device.”
Appeal Br. 22.
The Examiner finds Huang’s discussion of activating an invisible
control teaches or suggests an activating gesture input. Non-Final Act. 4–5
(citing Huang ¶¶ 5, 6, 20–22, 50, 70); Ans. 7–8. The Examiner appears to
note that Huang does not teach the activating gesture input is a non-contact
input, but finds that Alameh’s hover gesture teaches a non-contact input.
Non-Final Act. 6–7 (citing Alameh ¶¶ 144, 146). The Examiner also relies
on Plagemann to teach a non-contact input, finding “Plagemann teaches a
method and system for touch-free control of devices.” Id. at 7 (citing
Plagemann ¶ 7). The Examiner determines that motivation existed to apply
the teachings of Alameh and Plagemann to Huang. Id. at 5–7.

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Appellant argues that Huang does not teach the limitation at issue
because “a variety of different portions of Huang emphasize that the gesture
used to activate this invisible control is a contact gesture facilitated by
physical contact.” Appeal Br. 19; Reply Br. 21.
The Examiner responds that at least the combined teachings of
Alameh and Huang, rather than Huang alone, teaches the limitation at issue
because “Alameh teaches the gestures can be performed in a touchless
manner” and Huang “discloses activation of a control may be activated by
detection of a gesture.” Ans. 7.
Appellant’s argument based on Huang is unpersuasive because the
Examiner relies on the combined teachings of Huang, Alameh, and
Plagemann, rather than Huang alone, to teach the limitation at issue and
therefore the argument is not responsive to the rejection. See Nat’l Steel
Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1336–37 (Fed. Cir.
2004) (rejecting argument directed to the wrong reference).
Independent claim 1 further recites “detecting, within the captured
controlling gesturing input, gestures provided on a physical surface and
mimicking use of a mouse.” Appeal Br. 22.
The Examiner notes that “Alameh/Huang does not disclose” this
limitation but finds “Plagemann discloses a method and system for touch-
free control of devices, wherein actions can be interpreted from
predetermined gestures, which provide input to a computer, for example,
gestures that mimic computerized touchscreen operation, also mouse
operations can be mimicked.” Non-Final Act. 6 (citing Plagemann ¶ 7).
The Examiner determines that motivation existed to apply the teachings of
Plagemann to Huang and Alameh. Id. at 7.
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Appellant argues the combination cited by the Examiner does not
teach the limitation at issue because “nothing in Plagemann accounts for the
deficiencies of Alameh and Huang.” Appeal Br. 20; Reply Br. 22–23.
Such a conclusory statement amounting to little more than a
paraphrasing of the limitation and a general denial regarding Plagemann, is
unpersuasive to rebut the Examiner’s findings. Cf. 37 C.F.R. § 41.37(c)(iv)
(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”)
In view of the above analysis, we sustain the Examiner’s rejection of
claim 1 as obvious over the combined teachings of Huang, Alameh, and
Plagemann, as well as the rejections of independent claim 11 and 20, and
dependent claims 2–10 and 12–19, which Appellant does not argue
separately with particularity with respect to the obviousness rejection.
Appeal Br. 17.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
20 101 Eligibility 20
1, 2, 4, 5,
6, 11, 12,
14, 15, 16,
20
103 Alameh, Huang,
Plagemann
1, 2, 4, 5,
6, 11, 12,
14, 15, 16,
20

3, 13 103 Alameh, Huang,
Plagemann, Hsieh
3, 13
7–10, 17–
19
103 Alameh, Huang,
Plagemann,
Hildreth
7–10,
17–19

Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
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