Apple Inc.Download PDFPatent Trials and Appeals BoardNov 25, 20202020003116 (P.T.A.B. Nov. 25, 2020) Copy Citation 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. 14/743,115 06/18/2015 Duncan Kerr P15185USC1 1021 62579 7590 11/25/2020 APPLE INC./BROWNSTEIN c/o Brownstein Hyatt Farber Schreck, LLP 410 Seventeenth Street Suite 2200 Denver, CO 80202 EXAMINER WIEDER, KENNETH A ART UNIT PAPER NUMBER 2600 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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): patentdocket@bhfs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DUNCAN KERR and STEVEN P. HOTELLING Appeal 2020-003116 Application 14/743,115 Technology Center 2600 Before ST. JOHN COURTENAY III, CARL L. SILVERMAN, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal Br. 3. Appeal 2020-003116 Application 14/743,115 2 CLAIMED SUBJECT MATTER The claims are directed to a fingerprint-assisted force estimation. Spec. 1 (Title). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system comprising: a user input device; a first sensor coupled to the user input device, wherein the first sensor is configured to sense a contact area of a touch on a surface of the user input device; a second sensor configured to sense ridges and valleys of a fingerprint associated with the touch; and a processor coupled to the first and second sensors and configured to estimate an amount of force applied to the surface by the touch based at least in part upon an evaluation of the ridges and the valleys of the fingerprint within the contact area. Appeal Br. i (Appendix of Claims). REJECTIONS Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 9. Claims 5 and 14–20 stand rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Final Act. 8. Claims 1–6 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Hotelling et al. (US 7,538,760 B2, issued May 26, 2009) (“Hotelling”) and Small et al. (US 2012/011119 A1, published May 10, 2012) (“Small”). Final Act. 20. Appeal 2020-003116 Application 14/743,115 3 Claims 7–9, 11, and 12 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Hotelling, Small, and Usey (US 8,791,899 B1, issued July 29, 2014). Final Act. 25. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Hotelling, Small, Usey, and Gifford (US 6,400,285 B1, issued June 4, 2002). Final Act. 27. Claims 7–9 and 12–19 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Hotelling, Small, and Tout (US 2011/0163991 Al, published July 7, 2011). Final Act. 28. Claims 10 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Hotelling, Small, Tout, and Gifford. Final Act. 34. ANALYSIS Rejection of Claims 1–20 Under 35 U.S.C. § 112(a) Claim 1 recites, in part, “a first sensor coupled to the user input device, wherein the first sensor is configured to sense a contact area of a touch on a surface of the user input device.” Appeal Br. i. Claim 14 recites, in part, “detecting, with a capacitive sensor, a contact area of a finger on a fingerprint sensor.” Id. at ii. The Examiner found the Specification describes that touch sensor 3008, depicted in Figures 4, 5A, and 6, senses a touch, but not “a contact area of a touch on a surface of the user input device,” as claim 1 requires, or “a contact area of a finger on a fingerprint sensor,” as claim 14 requires. See Final Act. 9, 14. Thus, the Examiner found that the limitations of claim 1 and 14 were not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at Appeal 2020-003116 Application 14/743,115 4 the time the application was filed, had possession of the claimed invention. Id. Appellant argues that these limitations have support in at least paragraphs 21, 33, 55, 62, 64, 70, and 76 of the Specification. Appeal Br. 5. Appellant points out that paragraph 76 of the Specification describes that “a capacitive touch sensor may be used to determine the total area of a fingerprint and/or a variance in the size of the area and force may be estimated based on the area or change in area.” Appeal Br. 5. “The test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Vasudevan Software, Inc, v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (citing Ariad Pharms., Inc, v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Appellant has persuaded us of Examiner error. Rather than explain why the cited paragraphs and, in particular, the description in paragraph 76 of the Specification, are insufficient to reasonably convey that the inventor had possession of the claimed subject matter, the Examiner responded that a review of the cited paragraphs “has not found the claimed user input device and the above underlined limitations associated with the user input device.” Ans. 3. The original rejection, however, was not based on the recitation of a “user input device,” but rather relied on paragraph 55 of the Specification as describing that touch sensor 3008 senses “touch” but not “a contact area of a touch on a surface of the user input device,” as recited in claim 1 and similarly recited in claim 14. Final Act. 9. Appellant has persuasively Appeal 2020-003116 Application 14/743,115 5 rebutted the Examiner’s findings, as set forth in the Final Action. See Final Act. 9. For these reasons, we are persuaded that the Examiner erred in rejecting claim 1 under § 112(a) based on the limitation “a first sensor coupled to the user input device, wherein the first sensor is configured to sense a contact area of a touch on a surface of the user input device.” We are also persuaded that the Examiner erred in rejecting claim 14 based on the limitation “detecting, with a capacitive sensor, a contact area of a finger on a fingerprint sensor.” Claim 1 further recites “a processor coupled to the first and second sensors and configured to estimate an amount of force applied to the surface by the touch based at least in part upon an evaluation of the ridges and the valleys of the fingerprint within the contact area.” Appeal Br. i. The Examiner found that the Specification does not explicitly disclose or provide adequate support [for] how an amount of force applied to the surface by the touch is estimated based at least in part upon an evaluation of the ridges and the valleys of the fingerprint within the contact area, specifically a relationship between an amount of applied force and an evaluation of the ridges and the valleys of the fingerprint within the contact area or a formula in terms of an amount of applied force and an evaluation of the ridges and the valleys of the fingerprint within the contact area, in order to estimate an amount of force applied to the surface by the touch based at least in part upon an evaluation of the ridges and the valleys of the fingerprint within the contact area. See Final Act. 10. Appellant argues that this limitation has sufficient support in at least paragraphs 39, 62, 70, 73, and 76 of the Specification. Appeal Br. 5. Appellant argues that the Specification describes estimating an amount of Appeal 2020-003116 Application 14/743,115 6 force applied to the surface of the cover by the touch using the total area (e.g., by using the size-to-force curves) and the ratio of the ridges to the valleys (e.g., by using the ratio to select which size-to-force curve to use). Appeal Br. 5–6 (citing Spec. ¶¶ 62, 70, Fig. 9). The Examiner responded that the above indicated paragraphs describe a processor coupled to the first and second sensors and configured to estimate an amount of force applied to the coverglass (but not the surface of the user input device, as claimed) by the touch based on a ratio of the ridges and the valleys of the fingerprint within the contact area (but not based at least in part upon an evaluation of the ridges and the valleys of the fingerprint within the contact area, as claimed.) Moreover, the original disclosure does not explicitly disclose which part of an evaluation of the ridges and the valleys of the fingerprint within the contact area is based on for estimating an amount of force. Ans. 4. Appellant has persuaded us of Examiner error. The Examiner did not explain with specificity why the description in the Specification of “an evaluation of the ratio of the ridges and the valleys of the fingerprint within the contact area” (see Spec. ¶ 62) is insufficient to reasonably convey that the inventor had possession of “an evaluation of the ridges and the valleys of the fingerprint within the contact area,” as claimed. For these reasons, we are persuaded that the Examiner erred in rejecting claim 1 under § 112(a) based on the limitation “a processor coupled to the first and second sensors and configured to estimate an amount of force applied to the surface by the touch based at least in part upon an evaluation of the ridges and the valleys of the fingerprint within the contact area,” as recited in claim 1. Appeal 2020-003116 Application 14/743,115 7 Claim 4 recites “wherein the user input device comprises a cover disposed over a display device” (Appeal Br. i), which the Examiner found was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Final Act. 11. The Examiner found that “the original disclosure does not explicitly disclose or provide adequate support for ‘the user input device comprises a cover disposed over a display device.’” Id. at 12. Appellant explains that electronic device 1000 in Figure 1 includes a display 1002, which may take the form of a touch screen device, such as a capacitive touch screen, or any other suitable display device. Appeal Br. 6 (citing Spec. ¶ 27). Appellant points out that Figure 6 is a cross-section view taken along line IV-IV of Figure 1, and includes coverglass 3000. Id. (citing Spec. ¶ 60). In addition, Appellant points out that paragraph 60 describes a display, and a finger touching the coverglass. Id. The Examiner responded that “the above indicated disclosure does not explicitly disclose the user input device and the user input device comprising a cover disposed over a display device.” Ans. 4. The Examiner explained that “the capacitive touch screen can’t be construed as the ‘claimed’ user input device.” Id. The Examiner further found that, because the coverglass 3000 shown in Figures 4–6 “is merely used as a cover of the electronic device 1000 and does not provide any signal, the coverglass itself can’t be considered as a user input device.” Id. Appellant has persuaded us that the Examiner erred. The Examiner has not clearly explained why the “the capacitive touch screen can’t be Appeal 2020-003116 Application 14/743,115 8 construed as the ‘claimed’ user input device.” See Ans. 4. The Examiner explained that the capacitive touch screen “is construed as the ‘claimed’ first sensor (of independent claim 1),” and therefore cannot also be construed as the “user input device.” Id. The Examiner, however, provided no further details. Moreover, we note that Appellant’s argument here is consistent with the “Summary of Claimed Subject Matter” section of the Appeal Brief, in which Appellant cites paragraph 27 as support for the recited “user input device.” Appeal Br. 4. Paragraph 27 describes an electronic device 1000 that “may implement fingerprint assisted force measurements” and “includes a display 1002.” Spec. ¶ 27. As Appellant points out, paragraph 60 describes a display, and a finger touching the coverglass. Appeal Br. 4. For these reasons, we are persuaded that the Examiner erred in rejecting claim 4 under § 112(a) based on the limitation “wherein the user input device comprises a cover disposed over a display device,” as recited in claim 4. Claim 6 recites “wherein the user input device comprises one of a trackpad, a mouse, or a touch screen.” Appeal Br. i. The Examiner interpreted this limitation to include (i) “wherein the user input device comprises a trackpad” and (ii) “wherein the user input device comprises a mouse,” which the Examiner found were not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Final Act. 12. Appellant argues that paragraph 30 of the Specification describes that the touch I/O device may be used in combination with a mouse, while Appeal 2020-003116 Application 14/743,115 9 paragraph 27 describes that a trackpad may implement assisted force measurement techniques. Appeal Br. 7. The Examiner first responded that the indicated paragraphs 27 and 30 “do not explicitly disclose” the user input device and the user input device comprising a trackpad, a mouse, or a touch screen. Ans. 5. To satisfy the written description requirement, the disclosure need only reasonably convey to a person of skill in the art that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. See 35 U.S.C. § 112(a). The Examiner next explained that [s]ince the electronic device or a system (1000, as shown in Fig. 1) has a capacitive touch screen construed as the claimed first sensor (see the above response to claim 4), there is no reason (disclosed in the original disclosure) why a trackpad, a mouse, or an additional touch screen is included in the electronic device/system. Ans. 5. As explained in the context of claim 4, above, the Examiner has not clearly explained why the capacitive touch screen is construed as the claimed first sensor of independent claim 1. Id. For these reasons, we are persuaded that the Examiner erred in rejecting claim 6 under § 112(a) based on the limitation “wherein the user input device comprises one of a trackpad, a mouse, or a touch screen,” as recited in claim 6. Because the Examiner’s § 112(a) rejections of claims 13, 15, 17, 18, and 19 are based on the lack of an explicit disclosure in the Specification, we Appeal 2020-003116 Application 14/743,115 10 are persuaded that the Examiner erred in rejecting those claims under § 112(a). See Final Act. 13, 15, 17, 18. Claim 16 recites “wherein the detecting ridges of the fingerprint and valleys of the fingerprint comprises operating at least one of: a frustrated total internal reflectance sensor; or an ultrasonic sensor.” Appeal Br. ii–iii (emphasis added). The Examiner found that the Specification describes only a method 8000, as shown in Figure 11, which does not comprise a step of “operating at least one of a frustrated total internal reflectance sensor; or an ultrasonic sensor,” as recited in claim 16. Final Act. 16; Ans. 9. The Examiner also found that the Specification does not describe “wherein the detecting ridges of the fingerprint and valleys of the fingerprint comprises operating two or more of a frustrated total internal reflectance sensor and an ultrasonic sensor,” in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Final Act. 16; Ans. 8–9 (emphasis added). The Examiner specifically found that Figures 5, 6, and 8 illustrate operating one of a frustrated total internal reflectance sensor, an ultrasonic sensor, or a capacitive touch sensor. Id. Appellant argues that paragraphs 24 and 62 of the Specification sufficiently describe the limitation recited in claim 16. Appeal Br. 7–8. Appellant has persuaded us that the Examiner error. Paragraph 24 describes that “capacitive sensing, frustrated total internal reflectance (FTIR), ultrasonic sensing and/or other sensing technologies may be utilized.” Spec. ¶ 24 (emphasis added). Paragraph 24 further describes “ultrasonic and/or FTIR sensing techniques.” Id.; see also Spec. ¶ 62. Appeal 2020-003116 Application 14/743,115 11 For these reasons, we are persuaded that the Examiner erred in rejecting claim 16 under § 112(a). Accordingly, we reverse the Examiner’s § 112(a) rejections of claims 1–20. Rejection of Claims 5 and 14–20 Under 35 U.S.C. § 112(b) The Examiner concluded that claim 5 is indefinite because it lacks sufficient antecedent basis for the limitation “the touch screen display device.” Final Act. 8. Claim 5, however, has been amended to no longer recite “the touch screen display device.” See Amendment filed March 28, 2018. Accordingly, we reverse the Examiner’s rejection of claim 5 under § 112(b). Claim 14 recites “storing a calibration value in a nontransitory storage medium.” The Examiner concluded “it is not clear whether ‘a calibration value’ is ‘a value of a calibrated contact area,’ ‘a value of a calibrated force data,’ ‘a value of a calibrated ratio of ridges to valleys in the contact area,’ ‘a value of a calibrated position of a force’, or something else. Final Act. 8. Thus, the Examiner concluded that the limitation is not clearly defined. Id. Appellant argues that paragraphs 62, 66, and 76 of the Specification “provide ample detail regarding this limitation, rendering the phrase ‘calibration value’ properly and clearly defined.” Appeal Br. 8. In particular, Appellant points to the description in paragraph 76 that “the calibration may simply be a multiplier obtained from an initial wetting determination step.” Id. The Examiner responds in a conclusory manner that paragraphs 62, 66, and 76 of the Specification “do not explicitly define what ‘a calibration value’” is. Ans. 11. Appeal 2020-003116 Application 14/743,115 12 Because the Examiner has not clearly demonstrated that claim 14 is amenable to two or more plausible claim constructions, we are not persuaded that “a calibration value” in claim 14 is indefinite in light of the description in paragraphs 62, 66, and 76 of the Specification. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); accord Ex parte McAward, APPEAL 2015-006416, 2017 WL 3669566 at *4 (PTAB 2017) (precedential). Accordingly, on the record before us, we reverse the Examiner’s § 112(b) rejection of claim 14. We also reverse the Examiner’s § 112(b) rejection of claims 15–20, which depend from, and stand with, claim 14. Rejection of Claims 1–20 Under 35 U.S.C. § 103 We have reviewed the § 103 rejections of claims 1–20 in light of Appellant’s arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made, but chose not to make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). With respect to independent claim 1, Appellant contends the cited portions of Small do not teach or suggest “sensing and evaluating ridges and valleys of a fingerprint to determine a force applied to a contact area as recited in claim 1.” Appeal Br. 9. Appellant further argues that the Examiner erred in concluding that a person having skill in the art would have obviously recognized that, a finger contact area is measured by a ratio of the ridges to the valleys, as the size of the ration determine [sic] the amount of force or pressure applied on the contact surface. In other words, a ratio of the ridges and the valleys of a fingerprint may serve as a proxy for a finger contact area and a Appeal 2020-003116 Application 14/743,115 13 force exerted by the user, as a higher ratio of the ridges and the valleys may equate to a larger finger contact area and a higher exerted force, all other things being equal, and thus a higher ratio of the ridges and the valleys generally indicates a larger contact area and a higher force. Id. at 10; Final Act. 23. Appellant particularly argues that “the Examiner has deemed an element of the claim obvious without providing any evidence.” Appeal Br. 10. On the record before us, we agree with Appellant that the Examiner has not shown that the combination of Hotelling and Small teaches or suggests the disputed limitation. The Examiner’s findings regarding what “a person having skill in the art would have obviously recognized” are a bridge too far. Although “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007), there may be limits in a particular case as to how much gap-filling may be based on such creativity. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361–63 (Fed. Cir. 2016). Here, although Appellant does not argue that the Examiner’s findings are inaccurate or unsupported in the art, Appellant requested supporting evidence (Appeal Br. 19), and the Examiner failed to provide it (Ans. 11–12). Accordingly, we reverse the Examiner’s § 103 rejection of independent claim 1, as well as the Examiner’s § 103 rejection of independent claim 14, which recites similar limitations and for which Appellant makes similar arguments. See Appeal Br. 11. We also reverse the Examiner’s § 103 rejections of dependent claims 2–13 and 15–20 because Usey, Gifford, and Tout are not relied on to teach what is missing from combinations of Hotelling and Small, as discussed in the context of the rejections of claims 1 and 14. See id. at 11–12. Appeal 2020-003116 Application 14/743,115 14 DECISION We reverse the Examiner’s decision rejecting claims 1–20. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 112(a) Written Description 1–20 5, 14–20 112(b) Definiteness 5, 14–20 1–6 103 Hotelling, Small 1–6 7–9, 11, 12 103 Hotelling, Small, Usey 7–9, 11, 12 10 103 Hotelling, Small, Usey, Gifford 10 7–9, 12–19 103 Hotelling, Small, Tout 7–9, 12–19 10, 20 103 Hotelling, Small, Tout, Gifford 10, 20 Overall Outcome: 1–20 REVERSED Copy with citationCopy as parenthetical citation