Ex Parte Dassanayake et al

Patent Trial and Appeal Board

Dec 15, 2015

12605705 (P.T.A.B. Dec. 15, 2015)

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.
12/605,705 10/26/2009 Mahendra S. Dassanayake 81193297 1354
28866 7590 12/16/2015
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
KIYABU, KARIN A
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
12/16/2015 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 MAHENDRA S. DASSANAYAKE and
DONALD P. BILGER1
____________________

Appeal 2013-011026
Application 12/605,705
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.

HAGY, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify Ford Global Technologies, LLC, as the real party in
interest. (App. Br. 1.)
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Application 12/605,705

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Introduction
According to Appellants, “[t]he present invention relates in general to
touchscreen display panels, and, more specifically, to providing touchscreen
controls for a rear projection display especially for motor vehicles.”
(Spec. 1, ll. 16–18.)

Exemplary Claim
Claim 1, reproduced below with disputed limitation italicized, is
exemplary of the claimed subject matter:
1. A control panel system comprising:
a rear projection screen having an inside surface for
being illuminated to produce a graphical display and having an
outside surface accessible to a user;
an illumination source for projecting radiation to
illuminate the projection screen, wherein the radiation includes
visible radiation and infrared radiation;
an optical distribution system for distributing the visible
radiation according to an image for the graphical display and
for distributing the infrared radiation according to a
predetermined pattern coincident with the image, wherein the
projection screen transmits the infrared radiation out from the
outside surface where it can be reflected back toward the optical
distribution system by a manually-controlled object that is
placed by the user in relation to the image; and
an infrared sensor receiving the reflected infrared
radiation from the optical distribution system and generating a
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detection signal identifying the location of the manually-
controlled object in response to the predetermined pattern.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McLintic
Yasujima
Orbach
Highfill
de Groot
Knox
Pryor
US 3,665,179
US 4,243,882
US 4,732,438
US 4,953,971
US 5,631,459
US 6,525,750 B1
US 7,489,303 B1
May 23, 1972
Jan. 6, 1981
Mar. 22, 1988
Sept. 4, 1990
May 20, 1997
Feb. 25, 2003
Feb. 10, 2009
Eliasson
Simmons
US 2007/0034783 A1
US 2010/0097329 A1
Feb. 15, 2007
Apr. 22, 2010

REJECTIONS
Claims 1 and 7 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Knox, Pryor, and Eliasson. (Final Act. 7–11.)
Claim 2 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Knox, Pryor, Eliasson, Yasujima, and Simmons.
(Final Act. 11–12.)
Claim 3 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Knox, Pryor, Eliasson, and Yasujima. (Final
Act. 12–13.)
Claim 4 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Knox, Pryor, Eliasson, Yasujima, and de Groot.
(Final Act. 13–14.)
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Claim 5 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Knox, Pryor, Eliasson, Yasujima, de Groot, and
McLintic. (Final Act. 14–16.)
Claim 6 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Knox, Pryor, Eliasson, Yasujima, de Groot, and
Orbach. (Final Act. 16–17.)
Claim 8 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Pryor, and Eliasson. (Final Act. 17–18.)
Claim 9 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Pryor, Eliasson, de Groot, Yasujima, and
Simmons. (Final Act. 18–19.)
Claim 10 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Highfill, Pryor, Eliasson, and Yasujima. (Final Act. 19–
20.)

ISSUES
(1) Whether the Examiner erred in finding the combination of
Highfill, Knox, Pryor, and Eliasson teaches or suggests “an optical
distribution system for distributing the visible radiation according to an
image for the graphical display and for distributing the infrared radiation
according to a predetermined pattern coincident with the image,” as recited
in claim 1?
(2) Whether the Examiner erred in finding the combination of
Highfill, Knox, Pryor, Eliasson, Yasujima, and Simmons teaches or suggests
“wherein the detection signal has a scalar value uniquely correlated to a
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particular region where the manually-controlled object is placed,” as recited
in claim 2?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) the Examiner has erred. We
disagree with Appellants’ conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the Final Office Action
from which this appeal is taken (Final Act. 2–20), and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief. (Ans. 4–24.) We concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
A. Claim 1
Although the Examiner relies on a combination of the Highfill, Knox,
Pryor, and Eliasson references in rejecting claim 1, Appellants address only
the Examiner’s findings regarding the Highfill reference. (App. Br. 3.) In
particular, Appellants argue:
The rejection errs in arguing that there is more than one way to
combine the teachings of Highfill. It is respectfully submitted that it
is not proper to combine elements of Highfill in a manner contrary to
the clear functioning of Highfill. The Examiner erred by revising the
teaching of Highfill in an attemtp [sic] to imply functionality not
actually present in Highfill.
(App. Br. 3.)
As an initial matter, we note that Appellants’ piecemeal challenge
regarding the Highfill reference is inherently flawed. The test for
obviousness is not whether the claimed invention must be expressly
suggested in any one or all of the references. “Rather, the test is what the
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combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citations omitted) (emphasis added). Thus, where, as here, the rejection is
based upon the teachings of a combination of references, “[n]on-obviousness
cannot be established by attacking references individually.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425).
In addition, a reference “must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole.” Id. Appellants’
failure to address the Examiner’s combination of references is unpersuasive
of Examiner error.
In addition, Appellants’ individual challenges are conclusory and/or
not well-founded factually, and hence are not persuasive of Examiner error.
In support of their contention the Examiner’s findings are contrary to the
“clear functioning of Highfill,” Appellants argue “[i]n Highfill, the IR beam
is sent over the monitor surface above a graphic overlay. The only portion
of touchscreen 30 that can include any graphic overlay is in dedicated
section 74 which is outside of projected beam 23.” (App. Br. 3 (citing
Highfill col. 5 ll. 41–56).) This contention is contrary to the teachings of
Highfill. As the Examiner correctly notes, the “beam is not limited to the
graphic overlay in dedicated section 74.” (Ans. 19.) Rather, as Highfill
teaches, “[t]he touch screen 30 may further include a dedicated section 74
which may be located outside of the beam 23 projected onto the projection
surface 16.” (Highfill col. 5 ll. 41–43 (emphasis added).) Not only does
Highfill describe the dedicated section as optional (“may further include”),
but it teaches that the touchscreen surface otherwise covers the entirety of
the display device 20. (See Highfill Fig. 1 and cols. 3–4.)
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From their factually incorrect premise, Appellants further argue “it is
impossible for the visible projected image from an optical distribution
system and any infrared radiation in Highfill could be coincident.” (App.
Br. 3.) This argument fails for at least two reasons. First, it is based on a
misreading of the Highfill reference, as noted above. Second, it also
improperly relies on wholesale incorporation of systems rather than what the
combination would suggest:
[T]he 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.
In re Keller, 642 F.2d at 425. The artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). We are further mindful that the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because 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).
Here, Appellants have not demonstrated that the Examiner’s proffered
combination would have been “uniquely challenging or difficult for one of
ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Appellants further argue the Examiner “fails to show any suggestion
of coincidence” in “both the visible radiation and the infrared radiation.”
(Reply Br. 1 (emphasis added).) We disagree, for at least two reasons. First,
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even considering just the Highfill reference, the Examiner correctly finds
“Highfill discloses an infrared signal that is beamed across a touch screen
surface.” (Ans. 18 (citing Highfill col. 4 ll. 1–8).) As shown in Figure 1 of
Highfill, touch screen surface 30 is transparent, allowing the visible
projected image from display device 20 to be transmitted through that
surface in beam 23 to objective 22, where it is then reflected to be displayed
on surface 16. (Highfill Fig. 1 and cols. 3–4.) Thus, as the Examiner also
correctly finds, “the infrared radiation is coincident with the visible
projected image” on touch screen 30. (Ans. 18 (citing Highfill col. 4 ll. 1–
8).)
Secondly, Appellants’ argument also fails as, again, focusing on the
teachings of an individual reference (Highfill) in isolation, without
addressing the Examiner’s findings regarding the combination of that
reference with other references. In particular, the Examiner cites Pryor as
disclosing “an optical distribution system for distributing the infrared
radiation according to a predetermined pattern coincident with the image.”
(Final Act. 8 (citing Pryor Figs. 13c; col. 59 ll. 46–60; and col. 60 ll. 29–
31).) The Examiner concludes “it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the control
panel system disclosed by Highfill as modified by Knox to include an optical
distribution system for distributing the infrared radiation according to
a predetermined pattern coincident with the image as disclosed by Pryor
in order to obtain the benefit of sensing screen touch.” (Final Act. 9
(italicized emphasis added).) Appellants do not address the Examiner’s
findings regarding the combined teachings of the cited references, and thus
do not persuade us of error in those findings.
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For the foregoing reasons, we are not persuaded that the Examiner
erred in combining the teachings of the cited references in rejecting claim 1
under 35 U.S.C. § 103(a). We, therefore, sustain that rejection, along with
the rejection of claim 7, which Appellants argue collectively with claim 1.
(App. Br. 3–4.)
Appellants do not present separate substantive arguments for the
patentability of independent claim 8 or dependent claims 3–6, 9, and 10,
which stand rejected over at least Highfill, Pryor, and Eliasson, and different
combinations of one or more additional references. (App. Br. 4–6; see Final
Act. 12–20.) As to independent claim 8, Appellants merely repeat
arguments made regarding claim 1 (App. Br. 5–6), which we find
unpersuasive for the reasons discussed supra. Further, as to dependent
claims 3–6, 9, and 10, Appellants argue the Examiner’s citation of additional
references as to each such claim “fails to correct for the deficiencies in the
other references” as applied to claim 1 (and, commensurately, claim 8).
(App. Br. 4–6.) As stated above, however, we do not find the combination
of “other references” (e.g. Highfill, Pryor, and Eliasson and, as appropriate,
Knox) to be deficient with regard to claim 1 (or, commensurately, claim 8).
Also as to claims 3–6, 9, and 10, Appellants assert, in conclusory fashion,
“the rejection fails to provide adequate reasons why one skilled in the art
would have made any necessary substitutions or modifications.” (Id.) This
argument, which amounts to no more than a naked assertion, is not
persuasive for at least the reasons provided above regarding claim 1. In
short, for the reasons stated above regarding claim 1, we additionally sustain
the rejections of claims 3–10 under 35 U.S.C. § 103(a).
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B. Claim 2
Claim 2 depends from claim 1 and adds (inter alia) the limitation
“wherein the detection signal has a scalar value uniquely correlated to a
particular region where the manually-controlled object is placed.” (App. Br.
8). The Examiner finds this limitation is taught or suggested by the
combination of Highfill, Knox, Pryor, Eliasson, Yasujima, and Simmons
(Final Act. 11–12), and finds, in particular: “Simmons discloses wherein the
detection signal has a scalar value uniquely correlated to a particular region
where the manually-controlled object is placed.” (Final Act. 12 (citing
Simmons ¶¶ 44–45, 47).)
Appellants argue the Examiner’s findings are in error, however,
because the touch screen disclosed in Simmons is “a capacitive matrix,” and
“there is no scalar value that uniquely identifies any particular region.”
(App. Br. 4.) We are not persuaded of error, for at least two reasons. First,
Appellants’ argument is not commensurate with the claim language. As the
Examiner correctly notes, claim 2 recites “uniquely correlated to a particular
region,” whereas Appellants’ argument paraphrases that limitation as
requiring “uniquely identifies any particular region.” (Final Act. 3
(emphasis added).) Second, we concur with the Examiner’s reading of the
Simmons reference, which states in particular: “When sampled, the touch
screen is assumed to output a set of data comprising a scalar value for each
sensing node, the scalar value being indicative of a quantity of signal at that
node, and is referred to as a signal value.” (Simmons ¶ 45 (emphases
added).)
We are also not persuaded by Appellants’ argument “Simmons does
not detect infrared at all.” (App. Br. 4.) This argument is inherently flawed
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as a piecemeal challenge regarding a single reference from within a
combination of references on which the rejection was based. See In re
Keller, 642 F.2d at 425. Simmons was not cited, alone, as teaching or
suggesting the limitation of claim 2. Rather, the Examiner’s rejection of
claim 2 was based on the combination of Highfill, Knox, Pryor, Eliasson,
Yasujima, and Simmons. (Final Act. 11–12; see also Final Act. 8–11
(discussing rejection of independent claim 1, and finding teachings of
detection of infrared radiation by at least the Highfill, Pryor, and Eliasson
references).) Appellants present no arguments regarding the Examiner’s
cited combination of references. On this record, therefore, we sustain the
Examiner’s 35 U.S.C. §103(a) rejection of claim 2.

DECISION
For the above reasons, the Examiner’s rejections of claims 1–10 are
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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