12788469 (P.T.A.B. Feb. 23, 2016)

Ex Parte Adams et al

Patent Trial and Appeal BoardFeb 23, 2016

12788469 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121788,469 05/27/2010 22879 7590 02/25/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Guy Adams 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. 82262006 6705 EXAMINER WILSON, DOUGLAS M ART UNIT PAPER NUMBER 2694 NOTIFICATION DATE DELIVERY MODE 02/25/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUY ADAMS and ANDREW MACKENZIE Appeal2014-003363 Application 12/788,469 Technology Center 2600 Before KRISTEN L. DROESCH, LINZY T. McCARTNEY, and MONICA S. ULLAGADDI, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 2-17, 20, and 21. Appellants have canceled claims 1, 18, and 19. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2014-003363 Application 12/788,469 STATEMENT OF THE CASE The present application relates to a method for calibrating a digital stylus. Abstract. Claims 6 and 11 are independent. Claim 6 illustrates the claimed subject matter: 6. A method for calibrating a digital stylus comprising: imaging a portion of a calibration pattern area of a data encoding pattern using an imaging module of the stylus in order to generate calibration data representing an error in physical alignment of the stylus, wherein imaging a portion of the calibration pattern area further comprises: engaging at least a writing tip of the stylus with a corresponding receptacle of a dock in order to releasably fix the stylus in a calibration position; and using the calibration data to adjust subsequent measurements from the stylus in order to compensate for the error. REJECTIONS Claims 11, 13, 16, and 17 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Hartwell (US 7,342,575 Bl; March 11, 2008). Claims 2-9 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over Hartwell and Maruyama (US 5,529,501; June 25, 1996). Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over Hartwell, Maruyama, and Clapper (US 2004/0008189 Al; Jan. 15, 2004). Claims 14 and 15 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over Hartwell and Maruyama. Claims 12 and 21 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over Hartwell and Haanpaa (US 2001/0002098 Al; May 31, 2001). 2 Appeal2014-003363 Application 12/788,469 Claim 20 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over Hartwell, Maruyama, and Haanpaa. ANALYSIS Claim 6 recites "[a] method for calibrating a digital stylus" that includes "imaging a portion of a calibration pattern ... wherein imaging ... comprises: engaging at least a writing tip of the stylus with a corresponding receptacle of a dock in order to releasably fix the stylus in a calibration position." Claims App'x 2. The Examiner found Hartwell discloses a dock and a method for calibrating an electronic pen that teaches "imaging a portion of a calibration pattern" by "engaging a stylus with a corresponding receptacle of a dock." See Final Act. 9--10. The Examiner found Hartwell does not disclose "at least a writing tip of the stylus is engaged in order to releasably fix the stylus in a calibration position" but found Maruyama's charging device for an electronic pen suggests this limitation. See id. at 11- 12. Appellants argue Hartwell does not teach or suggest an imaging process that includes "engaging ... the stylus with a corresponding receptacle of a dock in order to releasably fix the stylus in a calibration position." See App. Br. 5--6. In particular, Appellants contend Hartwell discloses moving an electronic writing device along a path to detect calibration marks but says nothing about using a dock during this process. See id. at 5-8. Appellants contend Maruyama does not fill this gap, as Maruyama merely discloses a charging device for an electronic pen. Id. at 8-9. Finally, Appellants argue "no reason existed that would have prompted a person of ordinary skill in the art to achieve the claimed subject matter" and "combining the calibration mechanism of Hartwell with the charging 3 Appeal2014-003363 Application 12/788,469 device 17 of Maruyama would render the system of Hartwell inoperable for its intended purpose." Id. at 9 (emphasis omitted). We have reviewed the Examiner's rejection and the evidence of record in light of Appellants' arguments, and we agree with Appellants that the Examiner erred. The Examiner has not established the cited portions of Hartwell and Maruyama, alone or in combination, teach or suggest that "imaging a portion of a calibration pattern area further comprises: engaging ... the stylus with a ... dock." The cited portions of Hartwell make passing reference to a "docking station," but these portions do not mention the docking station when describing Hartwell's calibration process, much less teach engaging Hartwell's electronic pen with the docking station during the calibration process. See Final Act. 9--12 (citing Hartwell Figs. 1, 2; 3:1-19, 5:46-54, 6:18-32); see also Ans. 22-28. Appellants' contentions that ( 1) Hartwell does not mention engaging the docking station during the calibration process and (2) Hartwell's calibration process involves moving an electronic writing device along a path to detect calibration marks beneath the electronic writing device persuade us that the docking station is not part of the calibration process. See App. Br. 5-8. The Examiner's related findings and conclusions do not remedy this deficiency. The Examiner found Maruyama "teaches the concept of engaging at least a writing tip of a stylus ... in order to releasably fix the stylus in an operating-initiating position." Final Act. 11. The Examiner then concluded "it would have been obvious to ... modify Hartwell's dock to receive a tip of a stylus per Maruyama because such a modification is the result of simple substitution of one known element for another producing a predictable result." Id. (emphasis omitted); see also Ans. 22-28. Even if 4 Appeal2014-003363 Application 12/788,469 were to agree with this conclusion and its supporting findings, modifying Hartwell's dock to receive a tip of a stylus does not suggest an imaging process that includes the dock as required by claim 6. At bottom, the Examiner has not provided adequate supporting evidence or reasoning to support the conclusion it would have been obvious to combine Hartwell's and Maruyama's teachings in the claimed manner. See Final Act. 5-10; Ans. 22-28; see also App. Br. 5-10; Reply Br. 2-7. Accordingly, based on this record, we do not sustain the Examiner's rejection of claim 6. For similar reasons, we also do not sustain the Examiner's rejection of independent claim 11. Finally, we do not sustain the Examiner's rejections of claims 2-5, 7-10, 12-17, 20, and 21 because these claims depend from either claim 6 or claim 11. DECISION For the above reasons, we reverse the rejections of claims 2-17, 20, and 21. REVERSED 5