Ex Parte Alameh et alDownload PDFPatent Trial and Appeal BoardNov 20, 201814629895 (P.T.A.B. Nov. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/629,895 02/24/2015 138858 7590 11/23/2018 Motorola/ Miller, Matthias & Hull LLP 1 North Franklin Street Suite 2350 Chicago, IL 60606 FIRST NAMED INVENTOR Rachid M Alameh 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. MM01038 1019 EXAMINER KETEMA, BENY AM ART UNIT PAPER NUMBER 2696 NOTIFICATION DATE DELIVERY MODE 11/23/2018 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): ppippenger@millermatthiashull.com docketing.mobility@motorola.com ynunez@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RACHID M. ALAMEH and JIRI SLABY Appeal 2018-005531 Application 14/629,895 1 Technology Center 2600 Before JOSEPH L. DIXON, ERIC S. FRAHM, and JOYCE CRAIG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Motorola Mobility, LLC (App. Br. 2). Appeal 2018-005331 Application 14/629,895 Disclosed Field of Invention Appellants disclose a method and device for securing a mobile device (e.g., cellular telephone) using iris authentication (Title, Abstract, Spec. ,r,r 1, 5, and generally Fig. 5). More specifically, infrared (IR) light emitting devices (LEDs) are used to illuminate the iris for authentication (Spec. ,r 6), and may be directed toward the eye using mirrors (Abstract (see claims 1, 13, 20)). Exemplary Claims Exemplary claims 1 and 20, with bracketed lettering and emphases added to disputed portions of the claims, read as follows: 1. A method of IR illumination in an electronic device having a gesture recognition system comprising a plurality of IR LEDs and an IR receiver, the method including: detecting a presence of a user; sensing device operational parameters; determining a device operational mode based on the sensed device operational parameters; driving the plurality of IR LEDs to provide IR illumination from each IR LED; and while driving the plurality of IR LEDs, [A] directing the IR illumination of each IR LED in a direction selected 2 Appeal 2018-005331 Application 14/629,895 based at least partly on the determined device operational mode. 20. A portable electronic device comprising: a device housing and a plurality of IR LEDs mounted and configured to emit IR illumination outward from the device housing; one or more light-steering elements associated with each IR LED; a device state sensor system configured to sense device parameters reflective of a device state; and [BJ a controller configured to: determine a device mode based on the sensed device parameters, wherein the device mode is one of an approach mode wherein the device is lying still horizontally and locked, an iris mode wherein the device is handheld and tilted within an inclination range, and a gesture mode wherein the device is in neither the approach mode nor the iris mode; and drive the IR LEDs and the light-steering elements associated with each IR LED to direct IR illumination angularly away from a vertical device axis centered on the device when the device mode is the approach mode, to direct IR illumination in one of a direction parallel to the vertical device axis and angularly inward toward the vertical device axis when the device mode is the gesture mode, and to direct IR illumination to a point that is within one foot of the device when the device mode is the iris mode. The Examiner's Rejection The Examiner rejected claims 1-20 under 35 U.S.C. § 103 over the combination of Alameh et al. (US 2015/0069249 Al; published Mar. 12, 2015, hereinafter "Alameh") and Neumann (US 2016/0006914 Al; published Jan. 7, 2016). Final Act. 5-21. 3 Appeal 2018-005331 Application 14/629,895 Issues on Appeal Appellants: (i) present arguments as to claims 1-12 as a group with independent claim 1 as representative of the group (App. Br. 8-9; Reply Br. 1-3); (ii) argue claims 13-19 on the same basis as claim 1 (App. Br. 9); and (iii) argue independent claim 20 separately (App. Br. 9-11). We select claim 1 as representative of the group of claims consisting of claims 1-19, and we will only address independent claim 1 and 20 in our analysis herein. Based on Appellants' arguments in the Briefs (App. Br. 8-12; Reply Br. 1-3), the following issues are presented on appeal: ( 1) Did the Examiner err in rejecting claims 1-19 under 35 U.S.C. § 103(a) over the combination of Alameh and Neumann because the combination fails to teach or suggest the directing limitation [A] as recited in claim 1? (2) Did the Examiner err in rejecting claim 20 under 35 U.S.C. § 103(a) over the combination of Alameh and Neumann because the combination fails to teach or suggest limitation [BJ recited in independent claim 20? ANALYSIS We have reviewed the Examiner's rejections (Final Act. 5-21) in light of Appellants' arguments in the Appeal Brief (App. Br. 8-12) and the Reply Brief (Reply Br. 1-3) that the Examiner has erred, as well as the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 2-7). Claims 1-19 With regard to claim 1, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is 4 Appeal 2018-005331 Application 14/629,895 taken (Final Act. 6-7), and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (see Ans. 2-5). We concur with the conclusions reached by the Examiner with regard to the obviousness of claim 1 in view of the combination of Alameh and Neumann. We disagree with Appellants' contentions (App. Br. 8-9; Reply Br. 1-3) that the Examiner erred in rejecting claim 1 (and claims 2-19 grouped therewith) because the combination of Alameh and Neumann fails to teach or suggest limitation [A] recited in claim 1. Specifically, Appellants have failed to show that the Examiner erred because the arguments (App. Br. 8-9; Reply Br. 1-3) are not commensurate in scope with the claims. Independent claim 1 does not include a limitation requiring "each LED of a multiple LED array may be individually directed" as Appellants' argue (Reply Br. 2). Instead, limitation [A] recited in claim 1 merely requires "directing the IR illumination of each IR LED in a direction selected based at least partly on the determined device operational mode" (App. Br. 13, Claims App. (see claim 20)) ( emphasis added). In other words, each (and every) IR LED only need be directed in one and the same direction to meet the claim language. This, Neumann, and thus, the combination, teaches. And, Appellants even admit "Neumann directs every IR light it has [Jin the same direction" (Reply Br. 2). In short, we agree with the Examiner (Final Act. 6-7; Ans. 2-5) that (i) the combination of Alameh and Neumann teaches or suggests the limitations recited in independent claim 1, and conversely, (ii) the subject matter recited in claim 1 encompasses the combined teachings and suggestions of Alameh and Neumann. 5 Appeal 2018-005331 Application 14/629,895 Accordingly, we sustain the Examiner's rejection of representative claim 1, as well as claims 2-19 grouped therewith. Claim 20 We concur with Appellants' contention (App. Br. 9-11) that the combination of Alameh and Neumann fails to teach or suggest limitation [BJ recited in independent claim 20. Specifically, we agree with Appellants that the Examiner has failed to show the combination teaches or suggests all three operational modes, especially the iris mode. Although Alameh teaches operational modes, they are portrait and landscape modes, and have not been shown to be encompassed by the three modes recited in claim 20, including modes that operate to direct IR illumination: (i) "angularly away from a vertical device axis centered on the device when the device mode is in the approach mode"; (ii) "in one of a direction parallel to the vertical device axis and angularly inward toward the vertical device axis when the device mode is in the gesture mode"; and (iii) "to a point that is within one foot of the device when the device mode is the iris mode" (App. Br. 16, Claims App. (see claim 20)). Alameh and Neumann are silent as to the specifics of these three recited modes. Neither the Examiner's findings and reasoning in the Final Rejection as to claim 20 (Final Act. 19-21 ), nor the response in the Answer (Ans. 5- 7), provide an adequately articulated rationale as to how/why "using a particular discretion (i.e. approach mode, iris mode and gesture mode) to describe the orientation of a portable electronic device in view of the absence of what said mode does would be obvious" (Ans. 6). And, although Neumann may teach directing IR illumination using microelectromechanical systems (MEMS) mirrors, the Examiner has not adequately explained 6 Appeal 2018-005331 Application 14/629,895 how/why the many details of limitation [BJ recited in claim 20 would have been obvious to one of ordinary skill in the art at the time of Appellants' claimed invention. At best, the Examiner leaves us to speculate as to how/why one of ordinary skill in the art would modify the combination of Alameh and Neumann to meet the three operational mode limitations recited in limitation [BJ. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner's fact finding and/or reasoning. See Application of Warner, 379 F.2d 1011, 1017 (CCPA 1967); Ex parte Braeken, 54 USPQ2d 1110, 1112 (BP AI 1999) ( unpublished) ("The review authorized by 35 U.S.C. [§J 134 is not a process whereby the examiner ... invite[ s J the [BJoard to examine the application and resolve patentability in the first instance."). Accordingly, we do not sustain the Examiner's obviousness rejection of claim 20. CONCLUSIONS (1) The Examiner did not err in rejecting claims 1-19 under 35 U.S.C. § 103(a) over the combination of Alameh and Neumann because the combination teaches or suggests the directing limitation [ A J as recited in claim 1. (2) The Examiner erred in rejecting claim 20 under 35 U.S.C. § 103(a) over the combination of Alameh and Neumann because the combination fails to teach or suggest limitation [BJ recited in independent claim 20. 7 Appeal 2018-005331 Application 14/629,895 DECISION The Examiner's obviousness rejection of (i) claims 1-19 is affirmed, and (ii) claim 20 is reversed. 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-IN-PART 8 Copy with citationCopy as parenthetical citation