Ex Parte Eliezer et al

Patent Trial and Appeal Board

Feb 27, 2013

11015562 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte OREN EYTAN ELIEZER,
CARL M. PANASIK, JOHN LEONARD WALLBERG,
and ROBERT BOGDAN STASZEWSKI
____________________

Appeal 2010-003172
Application 11/015,562
Technology Center 2600
____________________

Before ROBERT E. NAPPI, DAVID M. KOHUT, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellants request rehearing on the November 29, 2012, Decision on
Appeal (“Decision”), wherein we affirmed the rejection of claims 23, 24, 27-
49, 56 and 57 under 35 U.S.C. §102(b) as being anticipated by Horiki (US
2002/014667 A1, Oct. 3, 2002); claims 25 and 26 under 35 U.S.C §103(a) as
being unpatentable over Horiki and Lee (US 7,066,623 B2, Jun. 27, 2006);
and claims 50-55 and 58 under 35 U.S.C. § 103(a) over Horiki and
Vertaschitsch (US 6,976,217 B1, Dec. 13, 2005). We have reconsidered the
Decision in light of Appellants’ arguments, but are not persuaded of error for
the reasons provided below.
Appellants contend that the Board erred by not considering all of the
words of claims 23, 38 and 56, with respect to capturing movement
information of the multifunction device by effectively ignoring the phrase
“of the multifunction device” recited in each claim. Req. Reh’g 2-4. In
sum, the Board failed to consider all words in independent claims 23, 38 and
56, when “judging the patentability of [the] claim[s] against prior art.” Req.
Reh’g 2 (quoting In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)).
We disagree with Appellants’ argument. The Board considered each
word of claim 23 that recites “a two-dimensional optical sensor to capture
information related to movement of said multi-function device.” We agreed
with the Examiner, however, that movement of the device 600 shown in Fig.
8 of Horiki is detectable by the phone. See Ans. 17-18. Thus, we found that
Horiki teaches or suggests that movement of the phone (or multifunction
device of claim 23) could be detected relative to the position of the user’s
hand. See Horiki, Fig. 8.
Appellants contend that the Board erred because Horiki teaches
detection of movement of the user’s fingertips and states that the multi-
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function device is held stable while the user’s hand or fingertips move and
the phone remains stable. Req. Reh’g 5-6. Appellants repeatedly rely on
this argument stating that the Board erred in finding that Horiki discloses
“determining the movement of the cellular telephone” as applied to claims
23, 38, and 56. Req. Reh’g 6-7. Appellants’ arguments essentially require
Horiki to teach that the user’s hand is fixed and the phone device moves to
meet the limitations of claims 23, 38 and 56. Req. Reh’g 7 (stating that
“nowhere does Horiki teach or suggest that the hand is fixed and the CCD
camera moves relative to the user’s hand”).
We are not persuaded by Appellants’ contentions. First, the portions
of Horiki cited by Appellants state that the phone “can be stably held in
position” and that the phone can be “held in substantially the same position”
not that the phone is fixed in position relative to the user’s hand. See Req.
Reh’g 5 (citing Horiki, ¶¶[0099], [0100]). Appellants’ argument treats the
human hand holding the phone in Horiki as immovably fixed which is not
supported by the reference. Instead, Horiki teaches that the portable phone
is stably held, even when the user is walking about. See Horki, ¶[0099].
Furthermore, Appellant admits that “[a]ll of Horiki's examples (Figures 9,
10, 13, 15) present relative movement between the hand and the image
extent (frame).” Req. Reh’g 7. The movement of the image or frame in
Horiki, however, is determined by the phone device held in the user’s hand
as shown in Fig. 8. See Horiki, ¶ [0099]. It is this relative movement of the
telephone versus the user’s hand that is captured in Horiki. Since Horiki
also teaches that the phone may be in motion and we agree with Appellants
that it is the relative movement between the hand and the frame produced by
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the phone that is captured, we are not persuaded that the phone remains
fixed in position as Appellants assert.
Second, Appellants’ arguments are not commensurate in the scope
with the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants’ claims do not only require movement of the phone device
relative to a fixed point as Appellants contend. Req. Reh’g 7. Instead, claim
23, which Appellants argued as representative of claim 56 (Br. 8-10), recites
“capture information related to movement of the multi-function device …
used to determine direction and distance of the movement.” Horiki discloses
that the phone or device could be in motion or vibrate relative to the user’s
hand. See Horiki ¶¶[0099], [0100], Fig. 8. In addition, Horiki does not rule
out movement of the phone, and expressly captures the relative motion
between the frame controlled by the user’s hand holding the phone and
user’s hand used for input. See Horiki ¶[0099], [0100], Fig. 8. Although
Horiki’s disclosure teaches the express movement of the user’s hand for
input, it does not teach that the phone is fixed nor does it undermine the
further teaching that that phone’s movement (controlling the image or
frame) relative to the user’s hand is captured. See Horiki ¶¶[0099], [0100],
[0125]Fig. 8.
Appellants also argue that the Board’s decision is improper and
technically flawed because the Board describes Horiki’s invention as
capturing three points of interaction (Decision 5) when Horiki teaches that
the position relationship between the eye and screen is fixed. Req. Reh’g 6
(citing Horiki, ¶[0108]). We do not agree with Appellants’ argument. The
fixed position between the user’s eye and the phone and the user’s hand
constitutes three positions that are aligned to capture positional information.
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In addition, Horiki’s invention describes the movement of the phone relative
to the user’s hand, either when the user is walking or when the user’s phone,
however stable, vibrates. See Horiki ¶¶[0099], [0100]. We do not agree that
the technical description of Horiki renders the Board’s decision erroneous.
Finally, to the extent that Appellants argue that Horiki teaches away
from capturing information relative to the movement of the phone, Req.
Reh’g 7, this argument was not presented in the Appeal Brief. It is
inappropriate for Appellants to discuss for the first time in a Request for
Rehearing matters that could have been raised in the Appeal Brief. “The
failure to raise all issues and arguments diligently, in a timely fashion, has
consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision). However, even if timely presented, we do not agree
with Appellants’ argument. As discussed above, Horiki does not teach that
the user’s phone as shown in Fig. 8 is immovably fixed, but instead suggests
that the phone is not fixed and may be in motion. See Horiki ¶¶[0099],
[0100], Fig. 8. Under the broadest reasonable interpretation, “captur[ing]
information related to movement of the multifunction device” as recited in
claim 23 and similarly in claims 38 and 56, includes the relative movements
of the movements of the phone against the user’s head and the user’s hand as
shown in Horiki, Fig. 8.

DECISION
Appellants’ request for rehearing has been granted to the extent that
our decision has been reconsidered, but such request is denied with respect
to making any modifications to the decision.

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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).

DENIED

msc