Apple Inc.

Patent Trials and Appeals Board

Dec 31, 2020

2020000963 (P.T.A.B. Dec. 31, 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.
15/239,455 08/17/2016 Mohammad Yeke Yazandoost P26409US1 2389
62579 7590 12/31/2020
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
BAGHDASARYAN, HOVHANNES
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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 MOHAMMAD YEKE YAZANDOOST,
GIOVANNI GOZZINI, BRIAN MICHAEL KING,
MARCUS YIP, MARDUKE YOUSEFPOR,
EHSAN KHAJEH, AARON TUCKER, and
HENRY H. YANG
____________

Appeal 2019-000963
Application 15/239,455
Technology Center 3600
____________

Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s
decision, as set forth in the Final Office Action dated December 21, 2018,
and as further explained in the Advisory Action dated March 14, 2019,
rejecting claims 1–12. 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 Apple Inc. of Cupertino, California as
the real party in interest. Appeal Br. 3.
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Application 15/239,455
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BACKGROUND
The disclosed subject matter “relates generally to imaging systems,
and more particularly, to systems and methods for operating an acoustic
imaging system as a biometric sensor associated with a display of an
electronic device.” Spec. ¶ 2. Claim 1, the sole independent claim on
appeal, is reproduced below, with emphasis added:
1. An acoustic imaging sensor, the acoustic
imaging sensor comprising:
a master controller;
a distribution of transducers disposed to
circumscribe a portion of a substrate, each
transducer of the distribution of transducers
operable to:
operate in a drive mode in which the
transducer mechanically deforms in response
to a drive signal; and
operate in a sense mode in which the
transducer produces an electronic signal
when a section of the substrate adjacent the
transducer mechanically deforms as a result
of a mechanical wave propagating over or
through the section;
a set of subgroup controllers, each
communicably coupled to the master controller and
conductively coupled each transducer of a
respective subgroup of the distribution of
transducers, each subgroup controller configured
to:
generate at least one drive signal to
cause a mechanical wave to be generated by
the respective subgroup of the distribution of
transducers, the mechanical wave directed
across a top surface of and/or within the
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Application 15/239,455
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substrate toward the circumscribed portion of
the substrate; and
communicate to the master controller
an electrical signal received from at least one
transducer of the respective subgroup of the
distribution of transducers; and
an image resolver in communication with the
master controller, the image resolver configured to
construct an image of at least a portion of an object
engaging the top surface of the substrate based on
one or more electronic signals received by the
master controller.

REJECTION
Claims 1–12 stand rejected under 35 U.S.C. § 103 as unpatentable
over Chung (US 2015/0189136 A1, published July 2, 2015), Toda (US
5,886,452, issued Mar. 23, 1999), and Bernstein (US 8,743,091 B2, issued
June 3, 2014).

DISCUSSION
Independent claim 1 recites, among other limitations: “a set of
subgroup controllers,” with “each subgroup controller configured to:
generate at least one drive signal to cause a mechanical wave to be generated
by the respective subgroup of the distribution of transducers.” Appeal Br. i
(Claims App.). In the Rejection, the Examiner relied on switches 5 in Figure
5 of Toda as the “set of subgroup controllers.” See Final Act. 4 (citing Toda,
Fig. 5).
Appeal 2019-000963
Application 15/239,455
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Figure 5 of Toda is reproduced below:

Figure 5 of Toda shows a diagram of a driving circuit of a shear horizontal
wave position-sensing device. See Toda, 4:40–41.
Appellant argues that each “switch 5 of Toda is not a subgroup
controller” as claimed because “switch 5 is not configured to generate at
least one drive signal” as required. Appeal Br. 7. According to Appellant,
“instead[,] an electrical signal is supplied to the switch and then passed or
not passed to the transducers, depending on whether the switch is open or
closed.” Id. at 8; see also id. at 6 (arguing that switches 5 in Toda “are
merely simple switches that pass an electrical signal, or alternatively stop an
electrical signal, from reaching the interdigital transducers” shown within
nonpiezoelectric plate 1 in Figure 5). For the reasons below, we agree with
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Application 15/239,455
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Appellant that the record does not support the finding that switches 5 in
Toda are “configured to generate at least one drive signal” as required.
We first construe the phrase “configured to generate at least one drive
signal.” As an initial matter, the Examiner states that the claim language
“generate at least one drive signal to cause a mechanical wave to be
generated by the respective subgroup of the distribution of transducers” is
“functional.” Ans. 3–4. According to the Examiner, “[t]he functional
language only requires to generate [a] ‘drive signal[,]’ which causes [a]
mechanical wave to be generated by [the] transducer.” Id. at 4. We agree.
The claim language at issue requires that each “subgroup controller” is
“configured to” perform the function recited—i.e., “generate at least one
drive signal to cause a mechanical wave to be generated by the respective
subgroup of the distribution of transducers.” In other words, each “subgroup
controller” must be designed or constructed to “generate at least one drive
signal” of the type specified. See, e.g., In re Giannelli, 739 F.3d 1375,
1379–80 (Fed. Cir. 2014) (distinguishing terms such as “made to,”
“designed to,” and “configured to” from terms such as “capable of” and
“suitable for”). To the extent the Examiner notes the “functional” nature of
the claim language at issue to contend that each “subgroup controller” must
merely be capable of such functionality, we disagree. See Giannelli, 739
F.3d at 1379–80; see also Reply Br. 3 (“The Examiner further appears to
interpret the term ‘generate’ as having no patentable significance.”).
After discussing the meaning of “generate,” the Examiner states:
“Nothing in the claim specifies ‘Where the drive signal is generated or how
[it is] generated.” Ans. 4. We do not agree with this position. As noted by
Appellant, the claim language at issue clearly requires that “each subgroup
controller” is configured to generate at least one drive signal of the type
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Application 15/239,455
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specified. See Reply Br. 3 (arguing that the claim language at issue
“precisely specifies that the drive signal is generated by a subgroup
controller—detailing how the drive signal is generated”).
Turning to the substance of the construction, the Examiner contends
that the term “generate” essentially means to allow to be present. For
example, the Examiner states that “[i]f switch [5] is ‘ON’ the input signal is
delivered to the output,” which then “generates the signal in the circuit”
downstream of switch 5. Ans. 4 (also stating, “[w]ithout the switch nothing
would be generated at the transducer”). Appellant responds that the term
“generate” means to “bring into existence.” Reply Br. 3–4 (citing Merriam-
Webster, https://www.merriam-webster.com/dictionary/generate (See
definition 1)).2
The Examiner has not provided adequate evidentiary support for the
asserted construction. In contrast, the Specification supports the dictionary
definition highlighted by Appellant. See, e.g., Spec. ¶ 8 (discussing
“electrical signals generated by the transducers”), ¶ 52 (“A transducer
operated in a drive mode generates a mechanical wave in the substrate in
response to an electrical signal from the controller 204. The same transducer
operated in a sense mode generates an electrical signal in response to a
mechanical wave within the substrate.”), ¶ 66 (discussing how “image
resolver 206 employs a spatial filtering technique to generate approximated
image of the object in contact with the substrate”).
We now apply the construction above to the disclosures in Toda.
Here, the record supports Appellant’s understanding of the operation of
switches 5 in Toda—i.e., as merely permitting (or not permitting) the

2 This dictionary entry is attached to this Decision as an appendix.
Appeal 2019-000963
Application 15/239,455
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passage of a signal previously generated. See Reply Br. 4 (“A closed switch
5 merely blocks a pre-existing signal and an open switch 5 merely allows a
pre-existing signal to pass through. There is no generation involved in this
process, with respect to switch 5.”). For example, as noted by Appellant,
Toda describes the transducers shown within nonpiezoelectric plate 1 in
Figure 5 as being “supplied with the electrical signal via switch 5.” Toda,
8:26–29 (emphasis added), cited at Appeal Br. 5, 6, 9; Reply Br. 3. Toda
also discloses that an “amplified electric signal . . . is applied to interdigital
transducer T0 and switch 5.” Toda, 6:65–66 (emphasis added), cited at
Appeal Br. 8; Reply Br. 3, 4.
We agree with Appellant that these aspects of Toda support the
understanding that switches 5 merely allow the passage of a previously
generated signal to the interdigital transducers. See, e.g., Appeal Br. 9 (“The
switch 5 is merely a gate keeper for the electrical signal to pass to the
interdigital transducers, and the switch 5 is never discussed in Toda as
generating an electrical signal.”), 8 (“Clearly, in Toda, an electrical signal is
provided to switch 5 and that switch 5 is not configured to generate a driving
signal.”); Reply Br. 5 (“Toda’s switch 5 is merely modulating, or otherwise
affecting, an already existing signal. There is no generation of a signal
involved in this process.”). For these reasons, we do not sustain the
rejection of claim 1, or the rejection of claims 2–12, which depend from
claim 1.
CONCLUSION
We reverse the Examiner’s rejection of claims 1–12 under 35 U.S.C.
§ 103.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 103 Chung, Toda, Bernstein 1–12

REVERSED