Ex Parte Mitchell et al

Patent Trial and Appeal Board

May 27, 2016

13223130 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/223, 130 08/31/2011
22879 7590 06/01/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
April Slayden Mitchell
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.
82830717 6730
EXAMINER
DUONG, HIEN LUONGV AN
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte APRIL SLAYDEN MITCHELL, IAN N. ROBINSON,
and MARK C. SOLOMON
Appeal2014-008897
Application 13/223,130
Technology Center 2100
Before LARRY J. HUME, NORMAN H. BEAMER,
and JAMES W. DEJMEK, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) the Examiner's final
rejection of claims 1-20. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. (App. Br. 3.)
Appeal2014-008897
Application 13/223,130
THE INVENTION
Appellants' disclosed and claimed invention is directed to a display
system including a screen configured to operate in a transparent display
mode, in which physical user interactions are sensed, resulting in
modification of content on the display screen. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A display system comprising:
a display including a display screen configured to operate
in at least a transparent display mode;
an interaction sensing component to sense an object other
than a user viewable through the display screen and to receive
sensed data regarding physical user interactions; and
an interaction display control component, wherein
responsive to the sensed object and responsive to the sensed
data meeting predefined interaction criteria, content associated
with the object and displayed on the display screen is modified.
REJECTIONS
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Final Act. 2--4.)
The Examiner rejected claims 1-7, 9-16, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Charlier et al. (US 2010/0277439 Al,
pub. Nov. 4, 2010) and Sinclair (US 2005/0108642 Al, pub. May 19, 2005).
(Final Act. 4--7.)
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Application 13/223,130
The Examiner rejected claims 8 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Charlier, Sinclair, and Tsurumi (US 2009/0135135
Al, pub. May 28, 2009). (Final Act. 8.)
The Examiner rejected claims 18 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Charlier, Sinclair, and Whitlow et al. (US
2010/0287500 Al, pub. Nov. 11, 2010). (Final Act. 9.)
ISSUE ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issues: 2
Issue One: Whether claims 1-20 fail to comply with the written
description requirement. (App. Br. 8-9.)
Issue Two: Whether, under § 103, the combination of Charlier and
Sinclair teaches or suggests the independent claim 1 limitations, "an
interaction sensing component to sense an object other than a user viewable
through the display screen ... wherein ... content associated with the object
and displayed on the display screen is modified," and the commensurate
limitations recited in independent claims 9 and 19. (App. Br. 10-13.)
Issue Three: Whether the combination of Charlier and Sinclair
teaches or suggests the additional limitations of dependent claims 4, 5, 7, 13,
14, and 16. (App. Br. 14--15.)
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 27, 2014); the Reply Brief
(filed Aug. 11, 2014), the Final Office Action (mailed Aug. 30, 2013); and
the Examiner's Answer (mailed June 9, 2014) for the respective details.
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Application 13/223,130
Issue Four: Whether the combination of Charlier, Sinclair, and
Tsurumi teaches or suggests the additional limitations of dependent claims 8
and 17. (App. Br. 15-17.)
Issue Five: Whether the combination of Charlier, Sinclair, and
Whitlow teaches or suggests the additional limitations of dependent claims
18 and 20. (App. Br. 17-18.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants' arguments
and we adopt as our own: ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2-9); and
(2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 2-17). We concur with the
conclusions reached by the Examiner, and emphasize the following.
Issue One
The Examiner rejects the pending claims for failure to comply with
the written description requirement, finding "there is no mention in the
specification [of] the description of what object being characterized as an
'object other than a user viewable through the display screen."' (Final Act.
3.) As Appellants point out, this is incorrect - Appellants cite descriptions
in the Specification of "keyboard 120" and "camera 120/120a/120b," and
argue these "are examples of 'objects' which are not the user (i.e., 'other
than', 'non-user')." (App. Br. 9; see Spec. Figs. 2A, 3A, i-fi-127-29, 40.)
The Examiner finds these descriptions insufficient because "the
specification does not provide any details [sic] written description with
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Application 13/223,130
respect to how an object and a user are being recognized differently such
that when an object is being recognized is not a user, it senses (and
responses [sic] to) but ignores if it is the user." (Ans. 3.)
We are persuaded the Examiner erred. The issue of whether the
Specification provides sufficient explanation of how user versus non-user
objects are differentiated is relevant, at most, to an enablement inquiry under
35 U.S.C. § 112, an issue that is not before us on appeal. Moreover, the
Specification does disclose how to detect specific non-user objects through
the display screen that would not similarly detect a user - e.g., "hardware-
based sensing (including hinge closure sensors, base/monitor position, and
keyboard docking) ... [or] a gyroscope for determining the position or
change in position of ... an object or device within the sensor range."
(Spec. i-f 24, see also Spec. i-fi-128, 29.)
Accordingly, we cannot sustain the§ 112, first paragraph, written
description rejection of claims 1-20.
Issue Two
In rejecting the independent claims as obvious under§ 103, the
Examiner relies on the disclosure in Charlier of a device with a dual sided
transparent display screen, with one side "touch sensitive" in response, for
example, to a user's finger, enabling the user to interact with display
elements and trigger functions. (Final Act. 4; Ans. 5---6; Charlier Fig. 2,
i-fi-128, 30.) The Examiner also relies on the disclosure in Sinclair of a
computing device with an adaptive computing environment including
sensors that sense the environment - such as a camera to detect movement
or a sensor to detect a new input or output device such as a keyboard - to
"adjust input and output modes and/or the way applications interact with a
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Application 13/223,130
user." (Final Act. 5; Ans. 7-9; Sinclair Abstract, Fig. 2, iii! 29, 36, 38, 43,
67, 68.)
Appellants argue Charlier "does not disclose modifying content which
is associated with or denoting an object other than a user (viewable through
the display screen) and displayed on the display screen." (App. Br. 11.)
Appellants further argue Sinclair also fails to disclose these elements. (App.
Br. 12.) Appellants' arguments are not persuasive because they address each
reference individually, whereas the Examiner's rejection is based on the
combination of Charlier and Sinclair. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Appellants are correct to the extent that Charlier does not disclose a
non-user object as claimed, and Sinclair does not disclose a transparent
screen as claimed, but we are not persuaded the Examiner erred in finding
the combination of Charlier and Sinclair teaches or suggests the claimed
subject matter.
As discussed above, Charlier teaches the use of a system with
transparent display and the ability to sense a user object (i.e., a finger)
modify content on the screen associated with the object (i.e., elements on the
display touched by the finger.) (Charlier iii! 28, 30.) Although the pending
claims differentiate between a user and non-user object, the Specification
and original claims do not - undercutting the patentable significance of the
non-user object limitation. (See, e.g., Spec. if 19, original claim 1.)
Moreover, Sinclair teaches detecting the presence or absence of non-user
objects such as a keyboard, and adjusting output modes, such as display
output, as a result. Likewise, one example of sensing "an object other than a
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Application 13/223,130
user" described in the Specification is "the removal of the Keyboard," with a
resulting change in display output. (Spec. i-f 27.)
In sum, we are not persuaded by Appellants that the Examiner's
rationale for combining these references is insufficient, or that the Examiner
erred in finding the combination teaches or suggests the claimed subject
matter. (Final Act. 5.) Additionally, Appellants do not point to any
evidence of record that the resulting arrangements were "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485F.3d1157, 1162 (Fed. Cir. 2007) (citingKSRint'l Co. v. Teleflex,
Inc., 550 U.S. 398, 418-19 (2007).
Issue Three
Appellants separately argue the Examiner erred in rejecting dependent
claims 4, 5, 7, 13, 14, and 16 as obvious over Charlier and Sinclair. (App.
Br. 14--15.) Claim 4 adds the limitation, "wherein the predefined interaction
criteria is movement of the object behind the display screen"; claim 5 adds,
"wherein the predefined interaction criteria is sensing a presence of the
object behind the display screen"; and claim 7 adds, "wherein the
modification of the content associated with the object and displayed on the
display screen is an appearance of a user interface." Claims 13, 14, and 16
add similar limitations.
As to these additional limitations, the Examiner relies on the
disclosures in Sinclair discussed above, including detecting the presence or
absence of a keyboard, and adjusting display output as a result, as teaching
or suggesting these claim limitations. (Final Act. 6-7; Ans. 9-12.) In
arguing the Examiner erred, Appellants essentially repeat the arguments
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made with respect to the independent claims, which arguments are
unpersuasive for the reasons discussed above. Therefore, we sustain these
rejections.
Issue Four
Dependent claims 8 and 17 add the limitation, "wherein the user
interface is a virtual representation of the object as previously positioned
behind and removed from being behind the display screen." The Examiner's
rejections of these claims as obvious over Charlier, Sinclair, and Tsurumi,
specifically relies, for the additional limitation, on the disclosure in Tsurumi
of displaying an image of a hand as a user moves his/her hand over the
surface of a display. (Final Act. 8; Ans. 13-14; Tsurumi Figs. 5A, 5B,
iTiT 61, 63, 64.).
Appellants argue Tsurumi "does not overcome the shortcomings of
the Charlier and Sinclair references." (App. Br. 16.) This argument is
unavailing because, as discussed above, we are not persuaded the
Examiner's findings with respect to those references are in error. Appellants
also argue:
[W]ith the Tsurumi reference, once the hand 50 (of the user) is
moved out of the imaging area, the icon 51 on the display
screen 40 is deleted. Since the icon 51 is deleted when the hand
50 (of the user) is moved out of the imaging area, the icon 51 of
the Tsurumi reference cannot be considered to be a "virtual
representation" of an object "as previously positioned behind
and removed from being behind" the display screen.
(Id.) However, we agree with the Examiner's findings that, under a broad
but reasonable interpretation of the claim language, the combination of
Charlier, Sinclair, and Tsurumi teaches or at least suggests the claim
limitation at issue. (Ans. 14.)
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Issue Five
Dependent claim 18 adds the limitation, "wherein the user interface is
a menu spatially aligned with the object as positioned behind the display
screen," and claim 20 recites a similar limitation. The Examiner's rejections
of these claims as obvious over Charlier, Sinclair, and Whitlow, specifically
relies on the disclosure in Whitlow of a symbology menu aligned with a
real-world object viewed on a see-through display. (Final Act. 9;
Ans. 16-17; Whitlow Abstract, Fig. 2, i1i128-29.)
Appellants argue Whitlow does not remedy the alleged shortcomings
or the other references, which is unpersuasive for the reasons discussed
above. (App. Br. 18.) Appellants also pose a conclusory argument that
Whitlow does not disclose the additional limitations of claims 18 or 20.
Such conclusory arguments are unpersuasive, and, therefore, we sustain the
Examiner's rejections of these claims. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997).
CONCLUSION
For the reasons discussed above, we do not sustain the written
description rejections of claims 1-20.
Also for the reasons discussed above, we sustain the obviousness
rejections of claims 1, 4, 5, 7, 9, 13, 14, 16, and 19 over Charlier and
Sinclair, of claims 8 and 17 over Charlier, Sinclair, and Tsurumi, and of
claims 18 and 20 over Charlier, Sinclair, and Whitlow. We also sustain the
obviousness rejections of claims 2, 3, 6, 10-12, and 15 over Charlier and
Sinclair, which rejections are not argued separately with particularity. (App.
Br. 14.)
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Appeal2014-008897
Application 13/223,130
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 3 7
C.F.R. § 41.50(a)(l).
DECISION
We affirm the Examiner's rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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