11890355 (P.T.A.B. Sep. 26, 2014)

Ex Parte Forest

Patent Trial and Appeal BoardSep 26, 2014

11890355 (P.T.A.B. Sep. 26, 2014)

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. 11/890,355 08/06/2007 Donald K. Forest SELECT-04 7979 33875 7590 09/29/2014 DONALD K. FOREST 27 S. WARNER AVE. BRYN MAWR, PA 19010 EXAMINER LIANG, REGINA ART UNIT PAPER NUMBER 2625 MAIL DATE DELIVERY MODE 09/29/2014 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 DONALD K. FOREST ____________ Appeal 2011-003338 Application 11/890,355 Technology Center 2600 ____________ Before ROBERT E. NAPPI, BRUCE R. WINSOR, and MINN CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1–145, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellant’s invention relates to “data entry and menu selection.” (Abstract.) Claim 1, which is illustrative, reads as follows: Appeal 2011-003338 Application 11/890,355 2 1. For use with a display area, an apparatus for selecting a selectable region from a plurality of selectable regions, the apparatus comprising: (a) a receiver for receiving a first image of a first body member of a user, the first image indicating a first location on the display area; and (b) a processor, coupled to the display area and the receiver, for: (1) simultaneously displaying a plurality of first selectable regions on the display area, the plurality of first selectable regions together at least partially circumscribing a first region on the display area; and (2) selecting a particular one of the first selectable regions in response to an intersection of the first location and the particular first selectable region and not in response to either one or both of: (i) a first dwell event; and (ii) an operation of a first switch by the user at or near the time of the intersection of the first location and the particular first selectable region. The Examiner relies on the following prior art in rejecting the claims: Atkinson US Re. 32,632 Mar. 29, 1988 Mikan US 5,376,946 Dec. 27, 1994 Collas US 5,473,347 Dec. 5, 1995 Lee US 5,767,919 June 16, 1998 Anderson US 5,828,360 Oct. 27, 1998 Forest ’549 US 6,005,549 Dec. 21, 1999 Forest ’536 US 6,160,536 Dec. 12, 2000 Forest ’723 US 6,903,723 B1 June 7, 2005 Golding, Audio Response Terminal, IBM Technical Disclosure Bulletin, Vol. 26, No. 10B, 5633–5636 (1984). Appeal 2011-003338 Application 11/890,355 3 Claims 1–145 stand rejected for non-statutory obviousness-type double patenting as being unpatentable over claims 1–466 of U.S. Patent 6,903,723. (Ans. 4–6.) Claims 1–145 stand rejected for non-statutory obviousness-type double patenting as being unpatentable over claims 1–83 of U.S. Patent 6,160,536. (Ans. 6–8.) Claims 1–145 stand rejected for non-statutory obviousness-type double patenting as being unpatentable over claims 1–128 of U.S. Patent 6,005,549. (Ans. 8–11.) 1 Claims 1–145 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (Ans. 12–13.) Claims 21, 22, 43, 44, 46–51, 65, 71, 74, and 85 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. (Ans. 13–14.) Claims 53, 55, and 96 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Ans. 11.) Claims 1, 3–6, 9, 12–25, 30–34, 37–46, 52–67, 69, 70, 71, 77, 78, 81, 82, 84, 85, and 96 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Lee. (Ans. 15–21.) Claims 97, 99, 100, 102, 105, 108–115, 122, 123, 126–138, 140, 142, 143, and 145 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Atkinson. (Ans. 21–25.) 1 The Examiner and Appellant do not dispute the reference to U.S. Patent No. 6,160,549 in the Examiner’s Answer should read “U.S. Patent No. 6,005,549.” Appeal 2011-003338 Application 11/890,355 4 Claims 26, 27, 35, 36, 47–51, and 83 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee. (Ans. 25–26.) Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and Anderson. (Ans. 26–27.) Claims 28, 29, 72, 73, 79, 80, 88, 89, 92, and 93 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and Golding. (Ans. 27.) Claims 7, 8, 10, 11, and 68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and Mikan. (Ans. 28.) Claims 124 and 125 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atkinson. (Id.) Claims 98 and 121 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atkinson and Anderson. (Ans. 29.) Claims 101 and 139 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atkinson and Lee. (Id.) Claims 103, 104, 106, 107, 141, and 144 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atkinson and Mikan. (Ans. 30.) Claims 116 and 117 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atkinson and Collas. (Ans. 31.) Rather than repeat the arguments here, we refer to the Appeal Brief (“App. Br.” filed June 27, 2010), the Reply Brief (“Reply Br.” filed Nov. 8, 2010), and the Answer (“Ans.” mailed Sept. 8, 2010) for the respective positions of Appellant and the Examiner. Appeal 2011-003338 Application 11/890,355 5 ISSUE The dispositive issue 2 presented by Appellant’s contentions is as follows: Did the Examiner err in rejecting claims 1–145 as failing to comply with the written description requirement? ANALYSIS In rejecting the claims, the Examiner finds Appellant’s Specification as originally filed does not reasonably convey to one skilled in the art that, at the time of filing, Appellant had possession of the claimed invention, specifically, the subject matter of receiving an image of a body member of a user, or receiving a movement related signal including an image of a body member of a user, where the images indicate a location on a display or display area. (See Ans. 12.) Each of independent claims 1, 23, 45, 53, 59, 60, 63, 64, 67, 70, 96, 97, 122, 135, 140, and 143 recites “receiving [an] image of a [] body member of a user, the [] image indicating a [] location on [a] display area,” “receiving a movement related signal including an image of a body member of a user, the image indicating a [] location on [a] display area,” or a similar recitation. Appellant contends the Specification contains a written description of “an image of a body member” because: The Specification identifies two types of pointers, active and passive. “Conventional pointing devices include a mouse, trackball, joystick (which may be integrated into a keyboard, 2 Appellant’s contentions raise additional issues. Because the identified issue is dispositive of the appeal, we do not consider the additional issues. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009); see also 37 C.F.R. § 41.77(a) (2011) (“The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.”). Appeal 2011-003338 Application 11/890,355 6 e.g. TrackPoint II®), stylus and graphics tablet, lightpen, thumb wheel, touch screen, touch panel, head pointer, occulometer [sic], intraoral pointer and eye tracker. They may be active, e.g. a lightpen that emits an infrared beam, or passive, e.g. an eye tracker that uses images of an individual’s eyes to determine where his eyes are focusing.” (Specification, p.5, lines 7-11; Priority Specification p.4, lines 30-34, emphasis added.) In other words, the term “pointer”, as used in the present and priority specifications, includes each of an active pointer and a passive pointer. (Reply Br. 49, citing App. Br. 93.) Appellant also asserts the same written description inherently or implicitly discloses “a first image of a first body member of a user” because “the example of a passive pointer, ‘e.g. an eye tracker that uses images of an individual’s eyes to determine where his eyes are focusing’ inherently [or implicitly] discloses using a single image [since] a single image is an essential constituent of ‘images’.” (App. Br. 95.) Appellant further contends the Specification contains a written description of “a receiver for receiving a first image of a first body member of a user, the first image indicating a first location on the display area” because: The Specification describes a selection event and links it to each of the movement related signal and a location indicated by a body member of the operator. “Selection may also be in response to a selection event. A selection event includes, but is not limited to: ... (c) an intersection of a location indicated by a movement related signal, a body member or a cursor and a selectable region; ... Associated with each type of selection event is an intersected selectable region. This is the selectable region intersected by the location indicated by the movement related signal, body member or cursor.... The received movement related signal includes, but is not limited to, a signal indicative of movement or from which movement can be derived, such as a plurality of relative or absolute positions or a difference between two relative or absolute positions. Movement related signal receiving means includes, but is not Appeal 2011-003338 Application 11/890,355 7 limited to, each of the following: (a) pointer interface circuitry found in a general purpose computer system; (b) one or more detectors operative to detect movement of a pointer; and (c) one or more detectors operative to detect movement of a body member of an operator.” (Specification, p.43, line 21 - p.44, line 15; Priority Specification, p.42, line 18 - p.43, line 11, emphasis added.) “Pointer interface circuitry” is not limited to interface circuitry for just an active pointer or just a passive pointer. . . . “[Pointing devices] may be active ... or passive, e.g. an eye tracker that uses images of an individual’s eyes to determine where his eyes are focusing”. (Specification, p.5, lines 9-11; Priority Specification, p.4, lines 32-34.) (Reply Br. 49–50, citing App. Br. 94 (italicized emphases added).) In response, the Examiner explains that, although Appellant’s Specification in the Background Art section mentions an eye tracker as a conventional pointing device that “uses images of an individual’s eyes to determine where his eyes are focusing,” Appellant did not provide any support for the disclosure of “receiving other ‘images of body member of the user’.” (Ans. 33 (second emphasis added).) The Examiner further explains that the passages of the Specification relied upon by Appellant “broadly” disclose using the body members to control the pointer or cursor via the pointer interface circuitry found in a general purpose computer system but provide “no teachings of receiving images of these body members.” (Id. (emphasis added).) Thus, the Examiner finds the Appellant’s arguments to be unpersuasive. (Ans. 12, 32–33.) We concur. As our reviewing court has repeatedly stated, the purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d Appeal 2011-003338 Application 11/890,355 8 1336, 1353–54 (Fed. Cir. 2010) (en banc) (emphasis added). See also AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1298–1299 (Fed. Cir. 2014) (“The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.”). In general, “the specification must describe an invention understandable to [a] skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharmaceuticals, 598 F.3d at 1351. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (emphases added) (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). In particular, for “generic claims,” our reviewing court has set forth a number of factors for evaluating the adequacy of the disclosure, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (emphasis added) (citation omitted). Here, the claims at issue are broad generic claims reciting “a body member of a user,” which is any part of the body, such as a hand, a foot, an elbow, a leg, an ankle, a wrist, the hip, etc. In fact, Appellant’s Specification defines “body member” broadly as follows: “As used herein, body member means any part of the body including, but not limited to, each of the following: the shoulder, arm, elbow, wrist, hand, finger, thumb, leg, knee, ankle, foot, toe, hip, trunk, neck, tongue, lip, eye and head.” (Spec. 44:7–9 (emphases added).) With respect to the predictability of the claimed features Appeal 2011-003338 Application 11/890,355 9 at issue, Appellant concedes that using an image of a body member other than the eyes, e.g., a hand, to indicate a location on a display area provides “new results” that are “unexpected.” (App. Br. 105, 164.) Specifically, Appellant states that: The apparatus of claim 1 differs structurally from the apparatus disclosed by Lee because in the claimed apparatus the first image of the first body member of the use indicates a first location on the display area. The selection of the processor is responsive to an intersection of the first location and the particular first selectable region. No remote controller is required. This leads to new results. Operationally, the claimed apparatus provides a more intuitive user interface than Lee’s system because the user may operate the apparatus with a body member, e.g. his hand, without holding a remote controller. Functionally, the claimed apparatus offers significant advantages over Lee’s system. Since no remote controller is required, the disadvantages of having a remote controller may be avoided: potential loss, potential breakage, e.g. due to wear and tear, and the need to periodically replace batteries. (App. Br. 105 (italicized emphases added).) “Operating the apparatus using an image of the user’s hand, is an unexpected new result.” (App. Br. 164 (emphases added).) Appellant repeatedly emphasizes these “new results” throughout the Briefs to characterize the disputed limitations. (See, e.g., App. Br. 105, 109, 149, 152, 164, 168, 170, 171, 174, 176, 196, 200, 203, 206–07, 210, 215, 232, 233, 237, 246, 248, 253, 254, 263, 264, 269, 288–89, 291, 294, 296, 308; Reply Br. 52, 65, 67, 71, 73–75, 77, 78, 86, 89, 91, 93, 95, 97, 102, 110, 111, 114, 118, 119, 123, 124, 128–29, 130, 137–38, 140, 142, 143, 149.) Since the claimed features are “unexpected” “new results,” they necessarily implicate low predictability—that is, using images of body members, e.g., images of a hand, to indicate a location on a display was an area of technology of low predictability at the time of the original filing. Appeal 2011-003338 Application 11/890,355 10 As discussed above, however, the only specific example in the Specification provided by Appellant is the conventional eye tracker using images of an individual’s eyes that is mentioned in the Background Art section. (See App. Br. 93–94; Reply Br. 49–50.) Appellant provides no other examples, nor do we discern any other examples in Appellant’s Specification. In particular, Appellant does not explain where in the Specification receiving and using an image of a hand to indicate a location of a display area is described. Furthermore, Appellant’s arguments that the claimed features are inherently or implicitly disclosed in the Specification are unpersuasive because Appellant concedes the features are “unexpected” as discussed above (App. Br. 164). See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (“In order for a disclosure to be inherent . . . the missing descriptive matter must necessarily be present in the [original] application’s specification such that one skilled in the art would recognize such a disclosure.”) (emphases added); cf. Ariad Pharmaceuticals, 598 F.3d. at 1352 (“[W]hile the description requirement does not demand any particular form of disclosure . . . a description that merely renders the invention obvious does not satisfy the requirement.”). On this record, in view of the broad scope of the claims and the low predictability of the claimed features, we agree with the Examiner the sole example of a conventional eye tracker mentioned in the Background Art section of the Specification is insufficient to satisfy the written description requirement for the generic claims that broadly cover receiving an image of any part of the body, including “the shoulder, arm, elbow, wrist, hand, finger, thumb, leg, knee, ankle, foot, toe, hip, trunk, neck, tongue, lip, eye and head” (Spec. 44:7–9), and using the image to indicate a location on a display. (See Ans. Appeal 2011-003338 Application 11/890,355 11 33.) See Ariad Pharmaceuticals, 598 F.3d. at 1358 (finding that “the vast scope of [the] generic claims” encompassing the use of all substances that achieve the desired result of reducing certain gene transcription factor activity cannot be supported by the specification that at best describes an example of certain molecule structures and hypothesizes with no accompanying description that they could be used to reduce the gene transcription factor activity when the state of the art at the time of filing was “uncertain” or “unpredictable”); LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345–46 (Fed. Cir. 2005) (holding that the patent owner had failed to meet the written description requirement when the claim was “directed to creating a seamless array of DWT [discrete wavelet transformation] coefficients generically” but the specification described only “a particular method for creating a seamless DWT” because “[a]fter reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand [the patentee] to have invented a method for making a seamless DWT, except by ‘maintaining updating sums of DWT coefficients’” (emphases added)); Tronzo, 156 F.3d at 1159 (holding that the original specification failed to provide the written description necessary to support the later-filed claims when the claims recited “a body” of a cup implant in artificial hip sockets, which was generic as to the shape of the cup, but there was nothing in the specification “to suggest that shapes other than conical are necessarily a part of the disclosure”); Augustine Medical, Inc. v. Gaymar Industries, Inc., 181 F.3d 1291, 1303 (finding that claims issued on a CIP application were not adequately supported by the disclosure of the original application when the claims recited generically “a portion of a patient’s body” being covered by a Appeal 2011-003338 Application 11/890,355 12 convective warming blanket but, in the original specification, “the only discussion of care sites relates to those in the head and neck region” and “[n]owhere is there a suggestion, nor is it inherent, that similar blankets may be constructed for the treatment of other care sites”). Similarly, we also agree with the Examiner that the only example of a conventional eye tracker mentioned in the Background Art section of the Specification is insufficient to adequately support the generic claims that broadly recite “receiving a movement related signal including [an] image of a body member of a user, the image indicating a [] location on [a] display area.” (See Ans. 12, 32–33.) Accordingly, we are not persuaded that the Examiner erred in rejecting independent claims 1, 23, 45, 53, 59, 60, 63, 64, 67, 70, 96, 97, 122, 135, 140, and 143 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, and, therefore, sustain the Examiner’s rejection of these independent claims. Each of the dependent claims either recites a specific body member of a hand, a finger, a digit, a foot, a limb, or the head of a user (claims 16, 81, 82, 83, and 111), or recites or includes by virtue of its dependency a generic “body member” limitation. But Appellant does not explain, nor is it apparent to us, where in the Specification receiving and using images of a hand, a finger, a foot, a limb, or the head of a user to indicate a location on a display is described. Hence, we agree with the Examiner that all of the dependent claims are inadequately supported by the disclosure in the Specification for the same reasons discussed above with respect to the independent claims. (See Ans. 12, 32– 33.) Accordingly, we sustain the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, of all of the pending claims, i.e., claims 1–145. Appeal 2011-003338 Application 11/890,355 13 Because we affirm the Examiner’s rejection of all of the pending claims on the ground of the failure to comply with the written description requirement, 3 we decline to reach other grounds of rejection. DECISION The decision of the Examiner to reject claims 1–145 is 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 rk 3 In the event of further prosecution of this application, the Examiner may wish to determine whether the Specification complies with the enablement requirement of 35 U.S.C. §112, first paragraph, that is, whether, one skilled in the art, having read the specification, could practice the invention without “undue experimentation,” In re Wands, 858 F.2d 731, 736–37 (Fed. Cir. 1988), and, in particular, whether the novel aspects of the invention touted by Appellant, e.g., using images of any body part, such as images of a hand, to indicate a location on a display is enabled in the Specification. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) (“Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.”).