Ex Parte Hotelling et al

Patent Trial and Appeal Board

May 5, 2016

13351096 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/351,096 01/16/2012
69753 7590 05/09/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Steven P. Hotelling
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106842051502 5072
EXAMINER
NGUYEN, JIMMY H
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN P. HOTELLING, CHRIS LIGTENBERG, DUNCAN
KERR, BARTLEY K. ANDRE, JOSHUA A. STRICKON, BRIAN Q.
HUPPI, IMRAN CHAUDHRI, GREG CHRISTLE, and BAS ORDING
Appeal2014-005993
Application 13/351,0961
Technology Center 2600
Before ROBERT E. NAPPI, LARRY J. HUME, and
STACY B. MARGOLIES, Administrative Patent Judges.
MARGOLIES, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a) from the rejection of
claims 1-7 and 9-21. No other claims are pending. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Apple Inc. App. Br. 2.
Appeal2014-005993
Application 13/351,096
SUMMARY OF THE INVENTION
The invention is generally described as a portable computer with a
touchpad that is wider than that of conventional portable computers. See
Spec. iTiT 2, 3, 6.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below (with disputed limitations emphasized):
1. A portable computer, comprising:
a display assembly coupled to a base assembly;
a touchpad disposed on the base assembly, wherein the
touchpad has a width that is half or greater than half a width of
the base assembly and the touchpad includes a plurality of
predefined regions, wherein the touchpad can detect an object
in contact with a surface at any position on the touchpad within
a first predefined region of the plurality of predefined regions;
and
a processor coupled to the touchpad, wherein, in response
to the processor determining that the contact is unintentional,
the processor deactivates the first predefined region
independently of a second predefined region of the plurality of
predefined regions.
REJECTIONS2
The Examiner rejected claims 1-7 and 9-21under35 U.S.C. § 112,
first paragraph, as based on a disclosure which is not enabling. Non-Final
Act. 8-9.
2 We note that the Examiner withdrew the separate rejection (Non-Final
Act. 7-8) of claims 2, 3, 10, 11, 16, and 17 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Ans. 2.
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Appeal2014-005993
Application 13/351,096
The Examiner rejected claims 1-7 and 9-21under35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 6-7.
ISSUES
The dispositive issues in this appeal are:
(i) whether the Examiner erred in concluding that a sensor for
detecting a hand location is critical or essential to the practice of the
invention, and because such a sensor is not recited in the claims, the claims
are not enabled by the disclosure; and
(ii) whether the Examiner erred in finding that the rejected claims on
appeal---each of which recites "in response to the processor determining that
the contact is unintentional, the processor deactivates the first predefined
region independently of a second predefined region of the plurality of
predefined regions"-fail to meet the written description requirement.
ANALYSIS
Enablement
Appellants argue that their specification describes examples of the
present invention without a hand sensor, and therefore the Examiner's
enablement rejection for failure to recite the hand sensor in the claims is
erroneous. App. Br. 6, 7-8. Specifically, Appellants argue that paragraphs
7 and 25 of the specification describe examples "without the allegedly
critical hand sensor" and "make[] it clear that the invention can function as
intended without the need for the hand sensor .... " Id. at 8. Appellants
also cite paragraph 44 of the specification, which states that an embodiment
of the portable computer system "supports a wide touchpad and/or hand
sensor." Spec. i-f 44; see also App. Br. 8. Appellants assert that a skilled
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Appeal2014-005993
Application 13/351,096
artisan "would conduct the contact patch analysis techniques described in
the specification without utilizing an output" from the hand sensor. App.
Br. 8.
The Examiner responds that the cited embodiment of paragraphs 7
and 25 in which the touchpad possesses the ability to accept the intentional
contact and reject the unintentional contact is directed to a different
embodiment than the embodiment to which the claims are drawn. Ans. 6-7;
see also Non-Final Act. 3--4. Specifically, the Examiner concludes that the
claims require that the processor-but not the touchpad---determine that the
contact is unintentional. Ans. 6-7. The Examiner also observes that in
response to the written description rejection, Appellants rely on a description
of a different embodiment---one that that requires a hand sensor. Id. at 7.
We are persuaded that the Examiner erred. The Examiner's
enablement rejection is premised on a finding that a sensor that determines
the hand location is critical or essential to the practice of the inventions
recited in independent claims 1, 9, and 15. See Ans. 3--4, 6-7; Non-Final
Act. 8-9. We agree with Appellants, however, that the specification
discloses the touch pad can be used to determine unintentional contact, thus
showing that the device can function without a hand sensor. Spec. i-fi-17, 25.
We therefore do not sustain the Examiner's enablement rejection of
claims 1-7 and 9-21.
Written description
Appellants argue that the specification provides ample support for
"the processor deactivat[ing] the first predefined region independently of a
second predefined region of the plurality of predefined regions," as recited
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Appeal2014-005993
Application 13/351,096
in claims 1, 9, and 15. App. Br. 4-5. Specifically, Appellants argue that
paragraphs 4 7 and 50 of the specification disclose that the various contact
patch acceptance and rejection techniques may be carried out by a processor,
and that paragraphs 29 and 32 disclose that certain predefined regions of the
touchpad may be deactivated independently of other predefined regions of
the touchpad. Id. Appellants argue that these disclosures sufficiently
disclose the claim limitation. Id.
The Examiner responds that, because the specification discloses that
the touchpad itself or the sensor may deactivate regions of the touchpad, the
disclosure does not inherently provide support for the claim limitation of the
processor deactivating a region of the touchpad. Ans. 4-5. The Examiner
finds that the disclosure in the specification that the processor can reject a
contact patch does not disclose independently deactivating predefined
regions as claimed. Ans. 5---6. The Examiner also finds that paragraph 32 of
the specification does not explicitly disclose that the deactivation is executed
by the processor. Id. at 6.
We are persuaded that the Examiner erred. The specification as a
whole discloses to one of ordinary skill in the art a processor deactivating
one predefined region of a touchpad independently of another predefined
region. See, e.g., Spec. i-fi-132, 47, Fig. 11. Paragraph 47 discloses that
"aspects of ... either accepting or rejecting a contact patch on touchpad 224
may be embodied, at least in part, in software[;] [t]hat is, the techniques may
be carried out" by a "processor ... executing sequences of instructions
contained in a memory .... " Spec. i1 4 7. The same paragraph also states
that "[i]n various embodiments, hardwired circuitry may be used in
combination with software instructions to implement the present invention."
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Appeal2014-005993
Application 13/351,096
Id. Thus, to a skilled artisan, the disclosure in paragraph 4 7 that a processor
may execute aspects of rejecting a contact patch on the touchpad applies to
the functionality described in paragraph 32 of selectively deactivating one
touchpad region and not another.3 We therefore do not sustain the
Examiner's written description rejection of claims 1-7 and 9-21.
DECISION
We reverse the Examiner's rejection of claims 1-7 and 9-21.
REVERSED
3 Sufficiency of written description requires that the original disclosure
reasonably convey to a person of ordinary skill in the art that the inventor
had possession of the claimed subject matter at the time of filing. The exact
level of detail required depends upon "the nature and scope of the claims and
on the complexity and predictability of the relevant technology." See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). In this Appeal, we find the level of detail provided in Appellants'
specification, as discussed, infra, is sufficient for a person of ordinary skill
in the art to appreciate Appellants' possession of the claimed invention.
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