Ex Parte Abileah et al

Patent Trial and Appeal Board

Apr 12, 2016

11977864 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111977,864 10/26/2007
67673 7590 04/14/2016
APPLE c/o MORRISON & FOERSTER LLP NOV A
1650 TYSONS BLVD.
SUITE 300
MCLEAN, VA 22102
Adie! Abileah
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106842030502
(P7817USC3)
3787
EXAMINER
SHAPIRO, LEONID
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
04/14/2016 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADIEL ABILEAH and WILLEM DEN BOER
Appeal2014-005463 1
Application 11/977 ,864
Technology Center 2600
Before JEAN R. HOMERE, KEN B. BARRETT, and
JASON V. MORGAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 2-12 and 14--21, which consist all of
the rejected claims pending in this appeal. App. Br. 2. The Examiner lists
claim 13 on the Final Action cover sheet as being rejected, but the Examiner
does not set forth a rejection of claim 13. Consequently, claim 13 is not on
1 Appellants identify the real party in interest as Apple Inc. App. Br. 2. This
Appeal relates to Appeal no. 2012-004350 (11/901,649) decided October 22,
2014, Appeal No. 2013-009226 (11/568,302) decided October 16, 2015, and
Appeal No. 2014-006458 (11/978,031) being decided herewith. We leave it
to the Examiner to decide whether possible issues of double patenting should
be raised.
Appeal2014-005463
Application 11/977 ,864
appeal before us. Final Act. 1-6. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appellants' Invention
Appellants' invention is directed to a light sensitive display device
with multiple data set object detection to enable using the display device in
both low and high ambient lighting conditions. Spec. i-fi-12, 67, Fig. 1. In
particular, the surface of the display device (20) includes a stack of layers
( 52---60) containing a first set of light sensitive elements optimizable at a low
ambient condition corresponding to a first dataset for locating an object on
or near the display surface. Likewise, the stack of layers includes a second
set of light sensitive elements optimizable at a high ambient condition
corresponding to a second dataset for locating the object on or near the
display surface. Id. i-fi-169-74. Thus, upon selecting any one of the two
datasets (but not both), the corresponding location of the object on or near
the display surface is readily detected. Id. i1 59.
Illustrative Claim
Independent claim 2 is illustrative, and reads as follows:
2. A display device including a surface for viewing an
image compnsmg:
a stack of layers configured to display the image; and
a plurality of selectable sets of light sensitive elements
included in the stack, each set configured to detect an object on
or near the surface based on a sensitivity to light distinct from
that any other of the sets,
wherein, a location of the object on the surface is
determined based on a selected one set of the selectable sets of
light sensitive elements.
2
Appeal2014-005463
Application 11/977 ,864
Prior Art Relied Upon
TOGASHI us 4,655,552
COYER US 2001/0003711 Al
WU US 2002/0030768 Al
RAU US 6,679,702 Bl
Rejections on Appeal
Apr. 7, 1987
June 14, 2001
Mar. 14,2002
Jan. 20, 2004
Appellants request review of the following Examiner's rejections:
Claims 2---6, 11, 12, 14--17, 19, and 21 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Togashi. 2
Claims 7, 8, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Togashi and Coyer.
Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Togashi and Wu. 3
Claims 9, 10, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Togashi and Rau. 4
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 3-8, and the Reply Brief, pages 2-5. 5
2 This statement of the rejection inadvertently includes claim 8, which is
discussed in the subsequent obviousness rejection. Fin. Act. 2 and 3.
3 This statement of the rejection inadvertently includes claim 10, which is
discussed in the subsequent obviousness rejection. Fin. Act. 3 and 4.
4 The Final Rejection does not contain an outstanding rejection against claim
13.
3
Appeal2014-005463
Application 11/977 ,864
Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding Togashi describes sets of light sensitive elements in a stack of layers
configured to display an image, each set configured to detect an object on or
near the surface based on a distinct sensitivity to light, as recited in
independent claim 2?
Appellants argue Togashi does not describe the disputed limitations
emphasized above. App. Br. 3-7; Reply Br. 2--4. First, Appellants argue
Togashi discloses photo-sensing elements disposed outside the liquid crystal
display (LCD) element matrix of a display panel, whereas the claim requires
such elements be disposed in the stack of layers. App Br. 4; Reply Br. 2
(citing Togashi 7:57-59, Fig. 10). This argument is not persuasive.
At the outset, we note Appellants' argument is not directed to the
embodiment of Togashi upon which the Examiner relies to reject the claim.
In particular, the Examiner relies upon Togashi's disclosure of a first and
second photo-sensors formed on a same substrate of the display panel. Fin.
Act. 2; Ans. 3 (citing Togashi 8:50-65, Fig. 12). Because the cited
Examiner's finding is unrebutted, Appellants' argument is unavailing.
Second, Appellants argue Togashi's photo-sensing elements have the
same sensitivity to light as opposed to distinct sensitivity. App. Br. 5---6,
Reply Br. 3--4 (citing Togashi 10:23-38, Fig. 12.) According to Appellants,
although Togashi discloses photo sensing elements A and B having different
5 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Nov. 1, 2013), the Reply Brief (filed March
21, 2014), and the Answer (mailed Jan. 21, 2014) for their respective details.
We have considered in this Decision only those arguments Appellants
actually raised in the Briefs. Any other arguments Appellants could have
made but chose not to make in the Briefs are deemed to be waived. See 3 7
C.F.R. § 41.37(c)(l)(iv) (2013).
4
Appeal2014-005463
Application 11/977 ,864
ratio areas, they are both equally affected by the change in light level when a
user's finger shields the photo-sensing element from ambient light. Id. at 6
(citing Togashi 10: 10-11 ). Appellants submit that just because two distinct
sensors can sense different inputs (shadow/light) does not mean that they
have different sensitivities. Reply Br. 3. This argument is not persuasive.
We note the claim does not require that the photo sensing elements
have different sensitivities. Rather, the claim requires that each set of
sensitive elements detect an object based on a sensitivity to light distinct
from the sensitivity to light of another set. In other words, one set of photo
sensitive element may detect an object on or near the display surface based
on a first sensitivity to light (e.g., sensed input light), whereas another set
may detect the object based on a distinct sensitivity to light (e.g., shadow
input). Accordingly, we agree with the Examiner that Togashi's disclosure
of detecting a first dataset and a second dataset corresponding to a light input
and a shadow input, respectively, describes detecting a first selectable
dataset based sensitivity to light distinct from that of another set. Ans. 4
(citing Togashi 9:35--44, 10: 30-38). It follows Appellants have not shown
error in the Examiner's anticipation rejection of claim 1.
Regarding the rejection of claims 2---6, 11, 12, 14--17, 19, and 21,
because Appellants have either not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, claims 2---6, 11, 12,
14--17, and 19 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
5
Appeal2014-005463
Application 11/977 ,864
Obviousness Rejections
Regarding the rejection of claims 7-10, 18, and 20, Appellants argue
that the additional references relied upon by the Examiner do not cure the
deficiencies in Togashi as discussed with respect to claim 1 above. App. Br.
7-8; Reply Br. 4. As discussed above, we find no such deficiencies in
Togashi for the additional references to cure. Appellants also restate certain
claim language and assert that particular references each fail to teach the
respective feature. App. Br. 7-8. However, Appellants do not address the
Examiner's findings regarding these features (see Fin. Act. 3--4). Similarly,
Appellants assert that Coyer relates to light-sensitive detectors on gaming
tables rather than display devices, but fail to address the Examiner's
explanation as to why the references' combined teaching renders obvious the
claimed subject matter. App. Br. 7; see Fin. Act. 3. Accordingly,
Appellants have not shown error in the Examiner's rejection of claims 7-10,
18, and 20.
DECISION
We affirm the Examiner's rejections of claims 2-12 and 14-21 as set
forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6