Ex Parte DePue et al

Patent Trial and Appeal Board

Jan 30, 2018

14064796 (P.T.A.B. Jan. 30, 2018)

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.
14/064,796 10/28/2013 Marshall T. DePue 32451 l-US-CNT 6671
69316 7590 02/01/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
THOMAS, LUCY M
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARSHALL T. DEPUE, DAVID M. LANE,
STEPHEN C. KLEIN, BRIAN L. HASTINGS,
and DAVID D. BOHN
Appeal 2017-004747
Application 14/064,796
Technology Center 2800
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON,
and MERRELL C. CASHION JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134(a) from a Non-Final Action,
dated December 18, 2015, of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appeal 2017-004747
Application 14/064,796
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A system comprising:
one or more processors;
one or more computer-readable storage media storing
computer-executable instructions being executable by the one
or more processors to implement a user interface including:
a first selectable control displayed as part of the user
interface and configured to receive user input specifying an
adjustable occlusion level for an aperture of a device to control
an amount of light sensed by the device; and
a second selectable control displayed as part of the user
interface and configured to receive user input selecting an
adjustable clutch height threshold for the device.
Appellant1 requests review of the following rejections maintained by
the Examiner:
I. Claims 1-7, 10-4, and 17-19 rejected under 35 U.S.C. § 102(b)
as anticipated by Bathiche (US 7,161,582 B2, issued January 9, 2007).
II. Claims 8, 9, 15, and 16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bathiche.
III. Claim 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Bathiche and Forstall (US 2008/0167071 Al, published July 10, 2008).
1 Microsoft Technology Licensing, LLC is the Applicant and is also
identified as the real party in interest. App. Br. 3.
2
Appeal 2017-004747
Application 14/064,796
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we reverse the Examiner’s prior art rejections of claims 1-20
under 35 U.S.C. §§ 102(b) and 103(a), essentially for the reasons presented
by Appellant in the Appeal and Reply Briefs. We add the following for
emphasis.
Independent claim 1 is directed to a system comprising a second
selectable control displayed as part of the user interface and configured to
receive user input selecting an adjustable clutch height threshold for the
device.2 Independent claims 11 and 19 are both directed to a computer
implemented method comprising the use of a selectable control that enables
a clutch height setting of an optical tracking device to be configured by a
user. Accordingly, we limit our discussion to claim 1 because all
independent claims require a selectable control where the user inputs the
desired clutch height threshold and Appellant relies on essentially the same
line of arguments in addressing the rejection of the independent claims. See
generally App. Br.
The Examiner finds Bathiche anticipates the claimed invention
because the reference discloses a system comprising a second selectable
control displayed as part of the user interface configured to receive user
input selecting an adjustable clutch height threshold for the device. Non-
Final Act. 3—4; Bathiche vol. 7,11. 21-51, col. 11,11. 9-20 and Figure 3B.
Appellant argues there is no discussion in the reference of any type of
selectable control, much less the second selectable control recited in claim 1.
App. Br. 15. According to Appellant, the portion of Bathiche relied upon by
2 We interpret the system claims as directed to an apparatus or device.
3
Appeal 2017-004747
Application 14/064,796
the Examiner states that the lift-off detection distances (clutch height
threshold) represent estimates determined by a controller. App. Br. 15; see
Bathiche col. 7,11. 21-23, 42^45. That is, Bathiche does not disclose that a
user can input the lift-off detection distances (clutch height threshold)
through a user interface in Bathiche’s system.
We agree with Appellant.
In order for the Examiner to carry the burden of establishing a prima
facie case of anticipation, the Examiner must establish where each and every
element of the claimed invention, arranged as required by the claim, is found
in a single prior art reference, either expressly or under the principles of
inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
While the Examiner asserts that Bathiche’s lift-off detection distances
(clutch height threshold) is the second selectable control which is selectable,
via user interface 184 in Figure 5, by user commands (Ans. 6; Bathiche col.
7,11. 21-51, col. 9,11. 54-57, col. 11,11. 12-14 and Figure 5), the Examiner
does not direct us to any portion of Bathiche that supports this assertion.
The Examiner does not point to where Bathiche describes a selectable
control feature where the user inputs the desired lift-off detection distances
(clutch height threshold). At best, the Examiner’s reasoning appears based,
in part, on a proposed modification of Figure 5 of Bathiche by adding a user
interface component for selecting the clutch height threshold. Ans. 6. This
reasoning, however, is better suited obviousness analysis and not
anticipation. The Examiner does not adequately explain why or how the
cited portions of Bathiche describe the claimed second selectable control
feature within the meaning of 35 U.S.C. § 102.
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Appeal 2017-004747
Application 14/064,796
Accordingly, we reverse the Examiner’s prior art rejection under 35
U.S.C. § 102(b) for the reasons presented by Appellant and given above.
Because the separate rejections of claims 8, 9, 15, 16, and 20 under 35
U.S.C. § 103(a) are based on Bathiche anticipating the subject matter of the
independent claims, we reverse these rejections as well for the reasons
presented by Appellant and given above.
ORDER
The Examiner’s prior art rejections of claims 1-20 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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