Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardDec 13, 201613603337 (P.T.A.B. Dec. 13, 2016) Copy Citation 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. 13/603,337 09/04/2012 Hsin-Chia Chen 92000-080CONCIP(PA-1032CO 1781 61157 7590 12/13/2016 TUNG & ASSOCIATES / RANDY W. TUNG, ESQ. 3349 South Shore Circle West Bloomfield, MI 48323 ART UNIT PAPER NUMBER 2696 MAIL DATE DELIVERY MODE 12/13/2016 PAPER EXAMINER LUBIT, RYAN A 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 HSIN-CHIA CHEN, YU-HAO HUANG, and YEN-MIN CHANG Appeal 2015-006105 Application 13/603,337 Technology Center 2600 Before NATHAN A. ENGELS, SCOTT B. HOWARD, and JOHN D. HAMANN, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2015-006105 Application 13/603,337 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An input device, comprising: an image acquiring device for acquire sequence of images when an object moves in front of the field of view of the image acquiring device; and a processor for generating a rotation signal by: generating a direction state indicating a positive or negative movement along a first direction or a positive or negative movement along a second direction according to a difference between a first difference between two input signals in the first direction and a second difference between the two input signals in the second direction, and after the direction state is generated, generating the rotation signal according to a change of the direction state from movement along a first direction to movement along a second direction, or from movement along a second direction to movement along a first direction, wherein the control information is generated according to the change of the direction state without directly referring to absolute positions of the input signals, wherein the processor generates the rotational signal by determining whether there is any rotation according to a change of the direction state. THE REJECTIONS Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Chen et al. (US 2011/0134077 Al; June 9, 2011) and Ishigaki et al. (US 2008/0141181 Al; June 12, 2008). Claims 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Chen, Ishigaki, and Kommann et al. (US 2010/0045666 Al; Feb. 25, 2010). 2 Appeal 2015-006105 Application 13/603,337 ISSUES AND ANALYSIS Under 35 U.S.C. § 120, a patent application may be entitled to claim the priority date of an earlier-filed parent application when the claimed invention is disclosed in the parent application in a matter that satisfies the requirements of 35 U.S.C. § 112, first paragraph. See 35 U.S.C. § 120 (2012). To satisfy those requirements, the invention must be disclosed in the parent application in a way that clearly allows a person of ordinary skill to recognize that the inventor invented what is claimed and possessed the claimed subject matter at the date of filing. Ariad Pharmaceuticals, Inc. v. EliLilly & Co., 598 F.3d 1336, 1351-52 (Fed. Cir. 2010) (enbanc). “[A] description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352. “[Entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” X2YAttenuators, LLC v. Inti Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014). Claims that include matter not adequately disclosed in the parent application cannot claim priority to the parent application, and the parent application may be used as prior art to those claims. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1352 (Fed. Cir. 2012). The present application is a continuation-in-part of Chen, and Appellants bear the burden of establishing for each claim in the present application is entitled to the benefit of Chen’s priority date. See In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“The applicant for a United States patent bears the burden of establishing its entitlement to the filing date of a previously filed application.”) (citation omitted). Appellants argue Chen provides adequate support for each element of claim 1 (Br. 9). 3 Appeal 2015-006105 Application 13/603,337 The Examiner finds Chen does not adequately support the limitation “an image acquiring device for acquire [sic] sequence of images when an object moves in front of the field of view of the image acquiring device,” as recited in independent claim 1 (See Ans. 2—5). Specifically, the Examiner concludes “[t]he term ‘image acquiring device’ has been defined by Appellants’] [Specification as element ‘810’ of FIG. 8” and finds Chen does not support that limitation because Chen does not include Figure 8 and its related disclosures. We agree with Appellants (see Br. 9-10 (citing Chen 122)) that Chen adequately discloses the claimed “an image acquiring device for acquire [sic] sequence of images when an object moves in front of the field of view of the image acquiring device” with its disclosures of an “optical input device” that receives input from movement of a user in front of the device at two points in time (e.g., a sequence) (Chen || 21—22). Further, we agree with Appellants that a person of ordinary skill would have understood such disclosures in Chen to evidence Appellants had invented and possessed the subject matter of claim 1 as of Chen’s filing date. Contrary to the Examiner’s interpretation of claim 1 {see Ans. 3^4 (citing Spec. Fig. 8,147)), we find nothing in Appellants’ Figure 8 or related paragraph 47 of the Specification that requires an interpretation of the claimed “optical input device” to include claim scope beyond the disclosures of Chen. Accordingly, we disagree with the Examiner’s finding that Chen constitutes prior art to claim 1 and, therefore, we do not sustain the rejection of claim 1.1 'The Examiner’s Answer states that Appellants’ abandonment of earlier applications related to the present application further evidences that claim 1 4 Appeal 2015-006105 Application 13/603,337 Appellants have not established that claims 2—6 are entitled to claim the priority date of Chen. See Ziegler 992 F.2d at 1200. Further, while Appellants argue modification of Chen in view of Ishigaki and Kommann “would not provide the elements of Appellants’ independent or dependent claims” (Br. 18), the only limitations Appellants identify as allegedly missing from Ishigaki and Kommann are limitations of claim 1 for which the Examiner cites Chen (see Br. 15—18). Because Appellants acknowledge Chen discloses each limitation of claim 1 and Appellants have not established claims 2—6 are entitled to claim priority to Chen, Appellants have not identified any deficiencies in the Examiner’s rejections of claims 2—6. Accordingly, we sustain the Examiner’s rejections of claims 2—6. DECISION For the above reasons: We reverse the Examiner’s rejection of claim 1. We affirm the Examiner’s rejections of claims 2—6. No time period for taking any subsequent action in connection with this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART would have been obvious in view of the references cited against the claims at issue in the earlier applications. Ans. 5—6. Those references and rejections, however, are not before us in this Appeal and have not been considered in this Decision. 5 Copy with citationCopy as parenthetical citation