YUAN, Kaining

Patent Trials and Appeals Board

Feb 28, 2020

13977028 - (D) (P.T.A.B. Feb. 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.
13/977,028 07/21/2014 Kaining YUAN P44326US 4957
88032 7590 02/28/2020
Jordan IP Law, LLC
12501 Prosperity Drive, Suite 401
Silver Spring, MD 20904
EXAMINER
JOSEPH, DENNIS P
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
admin@jordaniplaw.com
info@jordaniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KAINING YUAN
____________________

Appeal 2019-001606
Application 13/977,028
Technology Center 2600
____________________
Before JEREMY J. CURCURI, JAMES B. ARPIN, and
IFTIKHAR AHMED, Administrative Patent Judges.
AHMED, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 28, 30–37, 39–46, and 48–54, all of the pending claims. Claims 1–
27, 29, 38, and 47 are cancelled. Appeal Br. 22–26. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
Technology
The application relates to “the handling of mobile devices,” and
particularly to “a hardware based approach to identifying user grasps of
touch screen mobile devices.” Spec. ¶ 1.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is Intel
Corporation. App. Br. 3.
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Illustrative Claim
Claim 28 is illustrative and reproduced below with certain limitations
at issue emphasized:
1. A mobile device comprising:
a back touch sensor disposed on a back of the device;
a front touch screen disposed on a front of the device;
an enclosure including a frame having edges to expose the
front touch screen;
a back logic module to use the back touch sensor to
identify a back touch event with respect to the back of the device;
a front logic module to use the front touch screen to
identify a front touch event with which one or more applications
are to be controlled and with respect to the front of the device;
a classification logic module to associate the front touch
event with either a user grasp or
a user request based at least in part on the back touch
event; and
a prompt logic module to display on the front touch
screen a target grasp area located on the back of the device in
response to the back touch event on the back of the device if the
back touch event corresponds to a single hand, wherein the
target grasp area is to be displayed on the front touch screen as
an outline of the back touch event, and wherein the front touch
event is to be associated with the user grasp and withheld from
the one or more applications on the device if the front touch
event lies within the displayed target grasp area and the front
touch event is an initial touch event relative to the back touch
event, wherein the back touch event is to be withheld from the
one or more applications.

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REJECTIONS
Claims 28, 30, 31, 34, 37, 39, 40, 43, 46, 48, 49, and 52 stand rejected
under 35 U.S.C. § 103(a) as obvious over the combined teachings of
Escobedo (US 2013/0076644 A1; Mar. 28, 2013) and Luo (US
2011/0261058 A1; Oct. 27, 2011). Final Act. 2.
Claims 32, 33, 41, 42, 50, and 51 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Escobedo, Luo, and
Libin (US 2013/0234929 A1; Sept. 12, 2013). Final Act. 13.
Claims 35, 44, and 53 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Escobedo, Luo, and Suzuki (US
2012/0256963 A1; Oct. 11, 2012). Final Act. 17.
Claims 36, 45, and 54 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Escobedo, Luo, and Moradian (US
2012/0086658 A1; April 12, 2012). Final Act. 20.
ISSUE
Did the Examiner err in finding that the combined teachings of
Escobedo and Luo teach or suggest “display[ing] on the front touch screen a
target grasp area located on the back of the device in response to the back
touch event on the back of the device if the back touch event corresponds to
a single hand, wherein the target grasp area is to be displayed on the front
touch screen as an outline of the back touch event, and wherein the front
touch event is to be associated with the user grasp and withheld from the one
or more applications on the device if the front touch event lies within the
displayed target grasp area,” as recited in claim 28?
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ANALYSIS
Independent claim 28 recites a prompt logic module to “display on the
front touch screen a target grasp area located on the back of the device in
response to the back touch event on the back of the device if the back touch
event corresponds to a single hand, wherein the target grasp area is to be
displayed on the front touch screen as an outline of the back touch event,
and wherein the front touch event is to be associated with the user grasp and
withheld from the one or more applications on the device if the front touch
event lies within the displayed target grasp area.” Appeal Br. 22 (Claims
App.) (emphasis added). Independent claims 37 and 46, the only other
independent claims, recite similar limitations.2
The Examiner finds that the combined teachings of Escobedo and Luo
teach or suggest this limitation. According to the Examiner, Escobedo
discloses detecting inputs within two areas 208a and 208b on the front and
the back of the device respectively, such that “a first input area 208a . . . is
the detected input of the thumb (read as a target grasp area as this indicates
the position of the thumb)” and “can follow the input from the rest of the
hand” to area 208b. Final Act. 3–4 (citing Escobedo ¶¶ 32, 33, 34, 37,
Fig. 2d). The Examiner further finds that Escobedo discloses “whether to
consider an input as spurious or not depending on if the inputs, as shown in
Figure 2D, are in those particular locations and/or within a certain time
period.” Id. at 4 (citing Escobedo ¶¶ 33, 34, 42) (explaining that “if the
input is detected in the area 208a, in conjunction with the inputs made to

2 Claim 37 recites a non-transitory, computer-readable storage medium
comprising a set of instructions to be executed by a processor, and claim 46
recites a method. Appeal Br. 24, 26 (Claims App.).
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area 208b, it is determined that the user is holding the device with a single
hand and this spurious input is disregarded”).
The Examiner finds, “Escobedo does not explicitly teach to display on
a front touch screen of the device the target grasp area located on the back of
the device,” as an outline of the back touch event. Id. The Examiner finds
that this missing aspect of Escobedo is taught by Luo, which discloses “a
user holding a device with a front panel and the majority of the fingers
touching the back of the device,” in which the front panel “displays a
graphical representation of the user’s fingers 108 as well as regions where
the fingers are touching the back surface.” Id. (citing Luo ¶¶ 29, 39, Figs. 1,
4, 5).
The Examiner finds that when Luo is “combined with Escobedo, the
areas where the user is touching in the back . . . can be explicitly displayed
on the front display, i.e.[,] an outline of the back touch event.” Id. at 4–5.
The Examiner finds that “[o]ne of ordinary skill in the art would realize that
Escobedo’s functionality is the same as the current invention, and simply
displaying the grasp area, for input to be made there, is something that
combining Luo would cover.” Id. at 5. The Examiner reasons that “[i]t
would have been obvious to one of ordinary skill in the art, at the time of the
invention, to implement the display of the fingers on the back panel, as
taught by Luo, with Escobedo’s device, with the motivation that this can
facilitate data entry by helping the user properly position their fingers on the
touchpad to enter the correct keys.” Id. (citing Luo, ¶ 54).
Appellant agrees with the Examiner that “Escobedo is directed to
preventing ‘spurious’ touches, such as gripping motions, from being used as
input to an application,” and “teaches to establish configurations (i.e.,
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mappings) of front and rear inputs that are defined to correspond to spurious
front inputs.” Appeal Br. 16–17 (citing Escobedo ¶¶ 7, 34) (emphasis on
cited references omitted throughout). Appellant however argues that
“Escobedo has no use for visualizing on its front display any inputs to its
rear touch input surface” because “the principle of operation of Escobedo is
to leverage correspondence of front touch events to rear gripping events that
is established via known, pre-programmed configurations.” Id. at 17
(emphasis added). On the other hand, Appellant argues Luo “is directed to
enabling a user to enter touches made to a touchpad on a back panel so that
the touches may be used as input keystrokes to an application.” Id. (citing
Luo ¶ 3).
Appellant asserts that “one of ordinary skill in the art would not have
had a reason to combine Escobedo and Luo . . . at least since Escobedo does
not use its back panel for data entry at all, since Escobedo presents a
different principle of operation to determine spurious input, and since the
purported combination would be a fundamental reworking of Escobedo that
would change the principle of operation of Escobedo.” Id. Appellant
further contends that Luo’s teaching of entering keystrokes from the back
panel “teaches away from Appellant’s claimed approach.” Id. at 17–18.
The Examiner responds: “Appellant is not applying an ordinary skill
and not realizing what the combination of Escobedo and Luo would
reasonably teach, but rather, requests undue considerations when making
this combination.” Ans. 7. The Examiner explains that “Appellant’s
disclosure displays the target grasp area as a means for directing the user
where to make touch inputs and Luo also enables/assists in this regard.” Id.
Thus, the Examiner explains, “Escobedo, as modified by Luo, would not be
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destroyed in its functionality, but rather, it would be enhanced in being able
to visually assist the user in making inputs,” and “would not result in a
fundamental reworking of Escobedo that would change the principle of
operation.” Id.
We find the Examiner’s reason to combine the teachings of the
references lacks a rational underpinning. We agree with Appellant that the
Examiner has not sufficiently explained how the combined teachings of
Escobedo and Luo teach or suggest “the front touch event [being] associated
with the user grasp and withheld from the one or more applications on the
device if the front touch event lies within the displayed target grasp area”
which is “displayed on the front touch screen as an outline of the back touch
event.” See Appeal Br. 17–18. Although Escobedo teaches a “spurious
input detection engine 110 [that] may include a plurality of pre-programmed
and/or user provided spurious input configurations that include
combinations of first input on the touch input display 106 and the second
input on the touch input surface 108,” (which the Examiner determines
teaches a touch event within the target grasp area) (Escobedo ¶ 34 (emphasis
added), Fig. 2d), there is no indication that these configurations include a
target grasp area that is “an outline of the back touch event,” as recited in
claim 28. In contrast, Escobedo teaches:
[A] spurious input configuration may include the first input on
the touch input display 106 represented by the first input area
208a and the second input on the touch input surface 108
represented by the second input area 208b. Furthermore, the
spurious input configuration may include the first input on the
touch input display 106 represented by the first input area 208a
and the second input on the touch input surface 108 represented
by the second input areas 208b being located adjacent a common
edge of the touch input display 106 (e.g., the edge 102d of the
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tablet chassis in the illustrated embodiment) such that a spurious
input will be detected whenever the user holds and/or supports
the tablet computing device 100 with a single hand 204a.
Escobedo ¶ 34 (referring to Fig. 2d) (emphasis added). That is, Escobedo’s
spurious input detection engine disregards inputs to specific predefined
regions (e.g., 208a and 208b) located adjacent to a common edge. The
Examiner has not sufficiently explained how these configurations teach or
suggest a target grasp area corresponding to “an outline of the back touch
event” identified by the back touch sensor.
We agree with the Examiner that Luo teaches “being able to display
the outline of back touch inputs in a dual sided touch panel,” but we are not
persuaded by the Examiner that “one of ordinary skill in the art would
indeed be motivated to combine the teachings of Escobedo and Lou to arrive
at the claimed invention.” Ans. 7.
Although one of ordinary skill in the art may understand that two
references could be combined, this does not imply a reason to combine the
references. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987,
993-94 (Fed. Cir. 2017); see also Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”). “Obviousness requires more than a mere showing that the prior
art includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)).
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The Examiner has not explained adequately why a person of skill in
the art would have had reason to combine the spurious input detection
system of Escobedo with the real-time fingerprint image superimposed upon
a virtual keyboard layout as disclosed by Luo. Although both references
relate to handheld devices with dual touch displays, the references are
directed to different problems associated with different aspects of use of
such devices. Escobedo is directed at determining whether an input to the
touch display is spurious based on the location of the input, as well as factors
such as movement, acceleration, and orientation of the device, and thereby
disregarding such an unintended input. Escobedo ¶ 34, 42; see also Ans. 5.
Luo, on the other hand, seeks to use the back panel for user keyboard input,
freeing up the keyboard space on the front panel. See Luo ¶ 10, 29.
The Examiner’s reason to combine the two references to enhance
Escobedo’s invention “in being able to visually assist the user in making
inputs” is not persuasive. Ans. 7; see also Final Act. 5 (finding that the
combination “can facilitate data entry by helping the user properly position
their fingers on the touchpad to enter the correct keys”). The Examiner
reasons that such “visual assistance is similar to what Appellant defines [as]
the functionality of the target grasp area.” Ans. 6 (citing Spec. ¶ 16). The
suggestion to combine the applied references, however, must come from the
references, not from the application’s disclosure. See In re Dow Chemical
Co., 837 F.2d 469, 473 (Fed. Cir. 1988). Moreover, it is unclear to us how
adding visual assistance for the user of the device would enhance
Escobedo’s spurious input detection system which seeks to detect
unintentional inputs, such as those caused by a user holding the device with
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their hand. There is simply nothing in the applied references that bridges the
gap between their respective teachings.
Therefore, we are persuaded by Appellant’s arguments that the
Examiner fails to demonstrate that the ordinarily skilled artisan would have
had reason to combine the references in the manner proposed. Further, the
various other grounds of rejection do not cure the deficiency discussed
above. Accordingly, given the record before us, we do not sustain the
Examiner’s rejections of independent claims 28, 37, and 46, and their
dependent claims 30–36, 39–45, and 48–54.
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 28, 30–37, 39–46, and 48–54.
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
28, 30, 31,
34, 37, 39,
40, 43, 46,
48, 49, 52
103(a) Escobedo, Luo 28, 30, 31,
34, 37, 39,
40, 43, 46,
48, 49, 52
32, 33, 41,
42, 50, 51
103(a) Escobedo, Luo, Libin 32, 33, 41,
42, 50, 51
35, 44, 53 103(a) Escobedo, Luo, Suzuki 35, 44, 53
36, 45, 54 103(a) Escobedo, Luo,
Moradian
36, 45, 54
Overall
Outcome
28, 30–37,
39–46, 48–
54.
REVERSED