Ex Parte Aurongzeb et al

Patent Trial and Appeal Board

Mar 20, 2018

15078676 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/078,676 03/23/2016
31625 7590 03/22/2018
BAKER BOTTS L.L.P.
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
DEED ERM. AURONGZEB
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.
016295.5282 1071
EXAMINER
CHOW, VAN NGUYEN
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
tracy .engberg@bakerbotts.com
juli. tran@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEEDER M. AURONGZEB, ABU SHARER
SANAULLAH, JASON TAIT FRANZ,
JUSTIN COLE LYLES, and CHARLES D. HOOD
Appeal2017-007655 1
Application 15/078,67 6
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Dell Products L.P.
App. Br. 3.
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Application 15/078,676
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to a
non-line-of-sight touch input device Spec. i-f 2.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis and formatting added to contested limitations):
1. A method for enabling non-line-of-sight operation
of a touch pad in a portable information handling system,
wherein the portable information handling system includes:
a first body comprising:
a solid-state keyboard on a first surface of
the first body; and
the touch pad on the first surface; and
a second body comprising:
a display device hingeably attached to rotate
about the first body,
the method comprising:
when the second body is rotated less than
about 180° about the first body:
activating the solid-state keyboard to
receive first user input from buttons
of the solid-state keyboard; and
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 4, 2016); Reply Brief ("Reply Br.," filed Apr. 21, 2017); Examiner's
Answer ("Ans.," mailed Feb. 24, 2017); Final Office Action ("Final Act.,"
mailed May 19, 2016); and the original Specification ("Spec.," filed
Mar. 23, 2016).
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Appeal2017-007655
Application 15/078,676
deactivating at least a portion of the
touch pad from receiving second user
input from touch activity on the touch
pad;
when the second body is rotated greater
than about 340° about the first body:
deactivating at least a portion of the
solid-state keyboard from receiving
the first user input; and
activating at least a portion of the
touch pad to receive the second user
input.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Applicant Admitted Prior Art (AAP A), Lenovo ThinkPad Yoga
12.5 inch Convertible Laptop, 2-in-1 PCs at http://2inlpcs.com/
category/360-hinge-2-in-1, 2 pages, Mar. 10, 2014 (hereinafter
"ThinkPad Yoga").
Rejections on Appeal
RI. Claims 1-5, 8, 9, 11-15, 18, and 19 stand rejected under 35
U.S.C. § 102(a)(l) as being anticipated by ThinkPad Yoga. Final Act. 2; see
also Ans. 2.
R2. Claims 6, 7, 10, 16, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over ThinkPad Yoga. Final Act. 5; see also
Ans. 5.
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Application 15/078,676
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 1-20 for the specific reasons discussed below. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
1. § 102(a)(l) Rejection RI of Claims 1-5, 8, 9, 11-15, 18, and 19
Issue 1
Appellants argue (App. Br. 7-9; Reply Br. 2--4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(a)(l) as being anticipated by
ThinkPad Yoga is in error. These contentions present us with the following
ISsue:
Did the Examiner err in finding the cited prior art discloses " [a]
method for enabling non-line-of-sight operation of a touch pad in a portable
information handling system, wherein the portable information handling
system includes ... a first body ... and a second body," in which the
method includes, inter alia, the conditional limitations: (1) "when the
second body is rotated less than about 180° about the first body ...
deactivating at least a portion of the touch pad from receiving second user
input from touch activity on the touch pad," and (2) "when the second body
is rotated greater than about 340° about the first body ... activating at least a
portion of the touch pad to receive the second user input," as recited in
claim 1?
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Application 15/078,676
Analysis
The Examiner cites to a single picture (with minimal description 3) of a
convertible laptop computer with a 360° hinge as evidence of anticipation of
the detailed conditional limitations of independent claim 1. We disagree
with the Examiner's factual findings. 4
Appellants contend, " [ t ]he mere disclosure in Think[ P]ad of 'tent
mode' and 'tablet mode' does not inherently or explicitly anticipate ... [the
deactivating functionality], as recited in claim 1." App. Br. 7. Appellants
further argue this is "because the reference does not make any inherent or
3 As seen in on the first page of the two page ThinkPad Yoga reference:
Lenovo ThinkPad Yoga 12.5-
Inch Convertible Laptop
Lenovo has a new ThinkPad Yoga ultrabook out
with your choice of i5 or i7 Intel Core (Haswell)
processor and 4 GB of RAM. ThinkPads are built
for business, and known for their durability.
Though the ThinkPad Yoga incorporates the
360° hinge design (introduced in the consumer-
grade IdeaPad Yoga) which allows the display to
fold back as a ...
3 60° Hinge, Windows 8
We find the reference to be silent regarding the contested limitations, i.e.,
the "deactivating" and "activating" functionality at specified rotation angles.
4 Although not before us on appeal, we leave it to the Examiner to consider
whether another reference or ThinkPad Yoga in combination with another
reference would render the claims obvious under 35 U.S.C. § 103(a).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Appeal2017-007655
Application 15/078,676
explicit disclosure of 'the touch pad', as recited in claim 1, which would be
required for anticipation of the claim." Id.
We disagree with the Examiner and agree with Appellants because, as
Appellants argue, anticipation of a claim under 35 U.S.C. § 102 occurs when
each claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim "if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference." Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). "Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient." Therasense, 593 F .3d at 1332 (citing Cont'! Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art to disclose the disputed limitations of claim 1, such that we do not sustain
the Examiner's finding of anticipation.
Accordingly, for essentially the same reasons argued by Appellants as
discussed above, we reverse the Examiner's rejection of independent
claim 1, and also the rejection of independent claim 11, which recites the
disputed limitations in commensurate form. For the same reasons, we also
reverse the rejections of all claims 2-5, 8, 9, 12-15, 18, and 19 rejected on
the same basis, and that depend from claims 1 and 11.
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2. § 103 Rejection R2 of Claims 6, 7, 10, 16, 17, and 20
In light of our reversal of the rejections of independent claims 1
and 11 under § 102, supra, we also reverse obviousness Rejection R2 under
§ 103 of claims 6, 7, 10, 16, 1 7, and 20, which variously and ultimately
depend from claims 1 and 11. On this record, the Examiner has not
overcome the aforementioned deficiencies of the ThinkPad Yoga reference.
Therefore, we do not sustain the Examiner's obviousness rejection of
dependent claims 6, 7, 10, 16, 17, and 20 over the same ThinkPad Yoga
reference.
CONCLUSIONS
(1) The Examiner erred with respect to anticipation Rejection RI of
claims 1-5, 8, 9, 11-15, 18, and 19 under 35 U.S.C. § 102(a)(l) over the
cited prior art of record, and we do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejection R2
of claims 6, 7, 10, 16, 17, and 20 under 35 U.S.C. § 103(a) over the cited
prior art of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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