Ex Parte Adams

Patent Trial and Appeal Board

Aug 30, 2016

12483475 (P.T.A.B. Aug. 30, 2016)

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.
12/483,475 06/12/2009 Brian Adams 876.002 9316
122546 7590 08/31/2016
FERENCE & ASSOCIATES LLC
409 Broad Street
PITTSBURGH, PA 15143
EXAMINER
CRAWLEY, KEITH L
ART UNIT PAPER NUMBER
2696
MAIL DATE DELIVERY MODE
08/31/2016 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 BRIAN ADAMS
____________

Appeal 2014-004877
Application 12/483,4751
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3–6, and 8–21. (Appeal Br. 9.) Claims 2 and 7 have
been cancelled. (Id. 14–15.) We have jurisdiction under 35 U.S.C.
§ 6(b)(1).
We affirm.
Invention
Appellant’s invention relates to a laser pointer which allows
interaction with a computer display without physical contact. The user
directs a laser beam onto the monitor. A camera and software are used to

1 Appellant identifies SMARTROOM, LLC as the real party in interest.
(Appeal Br. 3.)
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detect the presence of the laser pointer output (such as a dot) on the monitor,
including the laser pointer output’s position relative to the image displayed
on the monitor. (Spec. 2:12–3:4, Abstract.) In order to allow the laser
pointer output to be detected by the camera and software, the monitor is
covered with a translucent material to provide diffuse reflection of the laser
pointer output. (Spec. 3:18–4:5.)
Representative Claims
Claims 1, 8, and 15, reproduced below with key limitations
emphasized, are representative:
1. An apparatus comprising:
a non-projection display monitor having a
translucent material positioned adjacent thereto which
provides diffuse reflection in a broad range of directions
of a laser beam directed onto the monitor;
a camera separate from, and positioned
substantially opposite to, the non-projection display
monitor for sensing an image on the monitor;
a processor for receiving the sensed image from
the camera, determining a location of a laser spot
resulting from the laser beam with respect to the sensed
image, and controlling an aspect of the monitor in
response to the location of the spot.

8. A method comprising:
displaying an image on a non-projection monitor;
producing an optical spot on a translucent
material adjacent to the monitor which provides diffuse
reflection in a broad range of directions;
sensing the image and optical spot utilizing a
camera separate from, and positioned substantially
opposite to, the non-projection display monitor; and
controlling an aspect of the image in response to
the position of the optical spot.

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15. An apparatus comprising:
a non-projection display monitor located within a
health care facility;
a camera for sensing an image on the monitor;
a translucent material which provides diffuse
reflection in a broad range of directions positioned
between the monitor and the camera; and
a processor for receiving the sensed image from
the camera, determining a location of a laser spot with
respect to the sensed image, and controlling an aspect of
the monitor in response to the location of the spot.

Rejections
The Examiner rejects claims 15–20 under 35 U.S.C. § 103(a) as
unpatentable over Arita et al. (US 6,188,388 B1; Feb. 13, 2001) (“Arita”)
and Koestner et al. (US 2005/0106377 A1; May 19, 2005) (“Koestner”).
(Final Action 2–4).
The Examiner rejects claims 1, 3–6, 8–14, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Arita, Koestner, and Hasegawa et al. (US
6,847,356 B1; Jan. 25, 2005) (“Hasegawa”). (Final Action 5–10.)
Issues
A: Does Koestner’s antiglare film teach or suggest the claimed
“translucent material positioned adjacent thereto which provides diffuse
reflection in a broad range of directions of a laser beam directed onto the
monitor,” as recited in claim 1, and the translucent material “which provides
diffuse reflection in a broad range of directions,” as recited in claims 8 and
15?
B: Did the examiner err in combining Hasegawa with Arita and
Koestner in the rejections of claims 1 and 8?
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ANALYSIS
A: translucent material providing diffuse reflection
in a broad range of directions
The Examiner finds that Koestner’s teaching of an antiglare film “for
diffusing external light and suppressing specular reflection” teaches or
suggests “translucent material positioned adjacent thereto which provides
diffuse reflection in a broad range of directions of a laser beam directed onto
the monitor,” as claimed in claim 1. (Final Action 3; Answer 11–13.)
Koestner discloses an optical film layer with specific characteristics which
“provides an improved antiglare film with a minimal transmission haze
penalty.” (Koestner, Abstract.) Koestner discloses that “an antiglare film”
is particularly useful for a portable terminal which may be used outdoors,
and the film is “for diffusing external light and suppressing specular
reflection.” (Id. ¶ 4.) The Examiner finds that the diffuse reflection from a
laser beam directed onto a monitor is taught or suggested in the combination
of Koestner and Hasegawa, citing Hasegawa’s disclosure of light beam
emitted by a pointing tool being diffused by a screen displaying image
information. (Final Action 5–6; Answer 12–13.)
Appellant argues that the Specification notes that, “[a] laser pointed at
a screen with anti-glare features will be redirected at roughly the angle of
incidence (i.e., specular reflection of the laser beam.)” (Appeal Br. 11.)
However, Koestner, while directed to an anti-glare film, specifically
discloses a film “suppressing specular reflection.” (Koestner ¶ 4).
Additionally, Koestner teaches a film “diffusing external light.” (Id.) Thus,
we find that Koestner describes a film with anti-glare characteristics
different from those described by Appellant in the Specification.
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Appellant also argues that Koestner’s discussion of the use of
antiglare film is directed towards “ambient, external light reflection, not a
laser beam.” (Appeal Br. 10.) Appellant further argues that, as claim 1
specifies that diffuse reflection by the translucent material adjacent to a
monitor is “of a laser beam directed onto the monitor,” and as Koestner does
not discuss a laser beam, Koestner does not teach or suggest the claim
limitation. Id.
Appellant argues the references individually whereas the rejection is
based on the combination of the references. In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[O]ne cannot show nonobviousness by attacking references
individually where, as here, the rejections are based on combinations of
references” (citations omitted)); In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. See Keller, 642 F.2d at 425.
Here, as discussed supra, the Examiner finds that the diffuse
reflection from a laser beam directed onto a monitor is taught or suggested in
the combination of Koestner and Hasegawa. The Examiner's findings are
reasonable because the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” since the skilled artisan is
“a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420–21 (2007). On this record, Appellant does
not present sufficient evidence that the combination of the cited references
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was “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19).
Appellant addresses claim 8 as if it included the same or similar
limitation of “translucent material positioned adjacent thereto which
provides diffuse reflection in a broad range of directions of a laser beam
directed onto the monitor” as claim 1, however, claim 8 does not include a
laser beam, nor is the optical spot of claim 8 specifically discussed as being
diffusely reflected by the translucent material of claim 8. Thus we address it
with claim 15.
Appellant further argues that similar arguments apply to claim 15,
which does not disclose that the diffuse reflection of a film is specifically of
a laser beam, but that “when read in context of the whole claim” the argued
deficiencies still apply. (Appeal Br. 11). As we find, with respect to the
translucent film limitation, no error with respect to claim 1, we also find no
error with respect to the corresponding translucent film limitations in claims
8 and 15.
Thus we sustain the 35 U.S.C. § 103(a) rejection of claim 15, and of
its dependent claims 16–21, not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(iv).

B: Hasegawa, Arita, and Koestner
Appellant additionally argues, with respect to claims 1 and 8, that the
Examiner erred in combining Arita and Koestner, which concern non-
projection displays, with that of Hasegawa, which concerns a projection
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display. (Appeal Br. 11–12.) Appellant specifically argues that in light of
the “non-projection display monitor,” recited in claims 1 and 8 and the
teaching in Appellant’s Specification regarding anti-glare films, the
combination is unreasonable.
We disagree. The Examiner has noted that the combination allows for
light components at a beam spot to be diffused and detected irrespective of
the position of a screen or direction of a light beam. (Final Action 6;
Answer 14–15.) While Hasegawa may indeed concern a projection display,
that in itself is not a bar to the use of certain teachings not specific to
projection displays from Hasegawa with those of Arita and Koestner, and we
are not convinced by Appellant’s argument that the Examiner has not
provided a reasonable rationale for the combination. In view of the above,
we sustain the 35 U.S.C. § 103(a) rejection of independent claims 1 and 8,
and of dependent claims 3–6 and 9–14, and 21 not argued separately. See 37
C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–6, 8–14, and
21 under 35 U.S.C. § 103(a) as obvious over Arita, Koestner, and Hasegawa.
We affirm the Examiner’s decision rejecting claims 15–20 under 35
U.S.C. § 103(a) as obvious over Arita and Koestner.
Pursuant to 37 C.F.R. § 1.136(a)(1)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.

AFFIRMED