Ex Parte Meiby

Patent Trial and Appeal Board

Sep 23, 2015

12334865 (P.T.A.B. Sep. 23, 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.
12/334,865 12/15/2008 Linda Meiby 9342-455 9034
54414 7590 09/24/2015
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
EDWARDS, CAROLYN R
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
09/24/2015 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 LINDA MEIBY
____________________

Appeal 2013-008031
Application 12/334,865
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and
JOHN D. HAMANN, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–8, 10–15, and 17–19. We have jurisdiction under
35 U.S.C. § 6(b).
THE CLAIMED INVENTION
Appellant’s claimed invention relates to user input displays, including
displays that utilize touch-sensitive data and optical data to identify selected
input keys. Spec. paras. 6 and 7. Of the claims on appeal, claim 1 is
illustrative of the subject matter of the appeal, and is reproduced below, with
emphasis added.
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Application 12/334,865

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1. An electronic device comprising:
a user input display having a plurality of input keys on the input
display, each of the plurality of input keys corresponding to an input
function for the input display;
an optical detector configured to detect optical data comprising
in a field of view comprising a user input device, wherein the user
input device has an optical marker thereon; and
a user input management system coupled to the user input
display and the optical detector, wherein the user input management
system is configured to receive optical data from the optical detector
and to identify a location of the optical marker of the user input device
with respect to the user input display based on the optical data;
wherein the user input display further comprises a touch-
sensitive display configured to detect touch-sensitive data
comprising positional information when the user input device
contacts the user input display, and wherein the user input
management system is further configured to receive touch-sensitive
data comprising positional information from the touchsensitive
display unit, to correlate the optical data and the touch-sensitive
data comprising positional information and to identify a selected
one of the plurality of input keys on the display responsive to the
touch-sensitive data comprising positional information and the
location of the optical marker.
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Application 12/334,865

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REJECTIONS ON APPEAL
1. The Examiner rejected claims 15, and 17–19 under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter.1
2. The Examiner rejected claims 1, 3–5, 7, 8, 10–12, 14, 15, 17,
and 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Radivojevic et al. (WO 2007/144014 A1; Dec. 21, 2007) (hereinafter
“Radivojevic”) and Gudensen et al. (WO 2006/036069 A1; Apr. 6, 2006)
(hereinafter Gudensen).2
3. The Examiner rejected dependent claims 6, 13, and 18 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Radivojevic, Gudensen, and Case Jr. (US 2009/0213081 A1; Aug. 27,
2009) (hereinafter Case).
ISSUES
Each of the § 103(a) rejections on appeal involves whether
Radivojevic discloses “touch-sensitive data comprising positional
information” in the context of claim 1.
Appellant asserts that “Radivojevic discusses touch sensitive data that
does not include positional information, but rather is received by a

1 Contemporaneously with the filing of this Appeal, Appellant filed an
Amendment After Final to address this § 101 rejection, in lieu of presenting
arguments here on appeal. The Examiner, however, did not enter this
Amendment. Thus, corresponding § 101 arguments have been waived. See
Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may
treat arguments the appellant fails to make for a given ground of rejection as
waived). We summarily affirm the Examiner’s § 101 rejection.
2 Separate patentability is not argued for claims 3–5, 7, 8, 10–12, 14, 15, 17
and 19 (all are grouped with claim 1). Except for our ultimate decision,
these claims are not discussed further herein.
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microphone or an accelerometer and is used to trigger or accept a function or
command. See, e.g., page 2, line 30 - page 3, line 5.” Br. 5. Appellant
further argues that “the touch sensitive data . . . is apparently limited to an
indication that the screen has been touched based on a noise detected by a
microphone or movement of an accelerometer.” Id.
As to the “positional information,” Appellant asserts that it is “clearly
limited to the optical sensor.” Br. 5; see also Br. 6 (“Radivojevic clearly
proposes that the positional information is generated by an optical sensor
and not the acoustic or vibrational sensor or other touch sensor.”).
The Examiner responds
that the “microphone 6 can be used to register the
sound of the impact as it travels through the solid
materials between the position of impact and the
microphone 6 and/or to register the sound as it
travels through the air between the position of
impact and the microphone 6. The accelerometer
57 can be used to register the vibrations traveling
through the solid materials between the position of
impact and the accelerometer 57. Therefore this
clearly states and shows that the acoustic or
vibration sensor includes positional information.”
Answer 3.
As to the § 103(a) rejection for dependent claims 6, 13, and 18,
Appellant asserts the alleged failings of Radivojevic provided above, and
that Case does not disclose an optical marker or optical data. Br. 7. The
Examiner, however, cited Gudensen in addition to Radivojevic for such
disclosure rather than Case. Final Action 5.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred.
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As to Appellant’s contention that the Examiner erred with respect to
claim 1, we disagree. Radivojevic teaches that a microphone or
accelerometer can register sound or vibration, respectively, as it travels in air
or solid material between the position of impact and the microphone or
accelerometer. Radivojevic p. 13 ll. 23–30; Final Action 5 (citing same).
We agree with the Examiner that such disclosure teaches positional
information for the touch-sensitive data, even if embodiments of
Radivojevic do not rely on such positional information. In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012)(“A reference may be read for all that it
teaches, including uses beyond its primary purpose.”) (citing KSR Int’l. v.
Teleflex Inc., 550 U.S. 398, 418–21 (2007)); EWP Corp. v. Reliance
Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect.”).
Furthermore, Radivojevic teaches that “[t]he optimal position for the
microphone 6 and the accelerometer 57 are is [sic] at the bottom of the
chassis of the mobile phone 1.” Radivojevic p. 13 ll. 20–22. Thus,
Radivojevic also teaches positional information concerning the microphone
or accelerometer, in addition to the positional information of the impact and
the travel of sound or vibrations there between.
The preponderance of evidence supports the Examiner’s factual
finding that Radivojevic teaches touch-sensitive data comprising positional
information.
As to Appellant’s contention that the Examiner erred with respect to
claims 6, 13, and 18, we disagree. Appellant’s argument that Case does not
disclose an optical marker or optical data is not relevant in light of the
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Examiner’s citation of Gudensen for these limitations. Further, Appellant
fails to explain Case’s alleged deficiency. See 37 C.F.R. § 41.37(c)(1)(iv)
(2013) (“A statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim.”).
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 15 and 17–19 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(2) The Examiner did not err in rejecting claims 1, 3–8, 10–15, and
17–19 as being unpatentable under 35 U.S.C. § 103(a).
(3) The Examiner did not err in rejecting claims 6, 13, and 18 as
being unpatentable under 35 U.S.C. § 103(a).
(4) Claims 1, 3–8, 10–15, and 17–19 are not patentable.
DECISION
The Examiner’s rejection of claims 15 and 17–19 under
35 U.S.C. § 101, as being directed to non-statutory subject matter, is
affirmed.
The Examiner’s rejections of claims 1, 3–8, 10–15, and 17–19 as
being unpatentable under 35 U.S.C. § 103(a) 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