Ex Parte Philipp et al

Patent Trial and Appeal Board

Aug 16, 2016

12671501 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/671,501 04/08/2010
12323 7590 08/18/2016
Baker Botts L.L.P.
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Harald Philipp
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.
080900.0205 1435
EXAMINER
MIDKIFF, AARON
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARALD PHILIPP and ESAT YILMAZ
Appeal2015-003812
Application 12/671,501
Technology Center 2600
Before CATHERINE SHIANG, MATTHEW R. CLEMENTS, and
JAMES W. DEJMEK, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-6, 8-15, and 17-22. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants' invention generally relates to a sensor for determining the
presence of an object based on a change in capacitance of a sensing element
and, specifically, where the sensor is arranged to detect a repeating pattern
1 Appellants identify Atmel Corporation as the real party in interest. App.
Br. 2.
Appeal2015-003812
Application 12/671,501
of noise, and to synchronize the measurement cycles to reduce the effects of
the noise signal. See generally Abstract; Spec. 5: 15-19. Claim 1 is
illustrative:
1. A sensor comprising:
a capacitance measurement circuit operable to perform
measurement cycles to measure a capacitance of a sensing element,
and
a controller circuit operable to:
analyze a signal used to measure the capacitance of the
sensing element to identify a periodic noise signal induced on
the sensing element, the periodic noise signal associated with
an interference;
determine a first part of the periodic noise signal as being
capable of affecting the measurement of the capacitance of the
sensing element by the capacitance measurement circuit more
than a second part of the periodic noise signal, the interference
present during both the first part and the second part of the
periodic noise signal; and
control the capacitance measurement circuit to perform
the measurement cycles during the second part of the periodic
noise signal.
THE REJECTIONS
1. Claims 1, 2, 6, 8-11, 15, and 17-22 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Tagawa et al. (US 5,410,329; issued Apr. 25,
1995) ("Tagawa '329"). Final Act. 3-10.
2. Claims 3-5 and 12-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tagawa '329 and Tagawa (US 5,357,266; issued Oct. 18,
1994) ("Tagawa '266"). Final Act. 11-13.
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Appeal2015-003812
Application 12/671,501
THE ANTICIPATION REJECTION
The Examiner finds that Tagawa '329 discloses every recited element
of claim 1. Final Act. 3--4. For the "determine" limitation, the Examiner
finds that Tagawa '329's depiction, in Figure 2, of "low-to-high and high-to-
low transitions in waveform on fro," discloses the recited "first part of the
periodic noise signal," and Tagawa '329's depiction of "fro held at either
low or high constant values" discloses the recited "second part of the
periodic noise signal." Id. at 4. For the "control" limitation, however, the
Examiner finds that Tagawa '3 29' s depiction of "inversion signal fro being
held at a constant value" during "x- and y-coordinate detection periods"
discloses the recited "second part of the periodic noise signal." Id.
Appellants argue that Tagawa '266 [sic] does not disclose that, "to the
extent that ... the constant low fro is the second part of the [periodic noise]
signal, there is no disclosure that the spike in voltage occurs in ... the
subsequent constant portion." App. Br. 13.
The Examiner responds that Appellants' argument is directed to the
wrong reference because the rejection is based upon Tagawa '329 not upon
Tagawa '266. Ans. 2-3. The Examiner also reiterates the finding that the
recited "second part of the periodic noise signal" is disclosed by Tagawa
'3 29' s depiction in Figure 2 of "the inversion signal line fro having constant
(either of high or low) values," during which the detection signal "e"
gradually declines or inclines. Id. 4.
In Reply, Appellants address for the first time Tagawa '329, but have
not shown good cause for the belated presentation. Reply Br. 4--5. These
arguments are entitled to no consideration because they were not
necessitated by a new point in the Answer and thus should have been made
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Application 12/671,501
in the opening Brief See Optivus Technology, Inc. v. Ion Beam Applications
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time
in the reply brief that could have been raised in the opening brief is waived);
37 C.F.R. § 41.41(b)(2) (2012).
Nevertheless, Appellants have persuaded us that the Examiner has
erred. In particular, the part of the "fro" signal relied upon to teach the
"second part of the periodic noise signal" in the "determine" limitation is
inconsistent with the part of the "fro" signal relied upon to teach the "second
part of the periodic noise signal" in the "control" limitation. In the
"determine" limitation, the Examiner relies on the portion of the "fro" signal
during the image display period as the "second part." Final Act. 4; Ans. 4.
For the "control" limitation, however, the Examiner relies on the portion of
the "fro" signal during they-coordinate and x-coordinate detection periods
as the "second part." Final Act. 4. Thus, the Examiner's findings are
inconsistent. To the extent the first finding is correct, Tagawa '329 does not
disclose the recited "perform[ing] the measurement cycles during the second
part" because the measurement cycles-i.e., Tagawa '329's x- and y-
coordinate detection pulses---do not occur during the image display period.
Tagawa '329 Fig. 2. To the extent the second finding is correct, Tagawa
'329 does not disclose the recited "interference present during ... the second
part of the periodic noise signal" because the interference-i.e., the square
wave portion of "fro"-is not present during the y-coordinate and x-
coordinate detection periods. Id.
We therefore do not sustain the Examiner's rejection of (I)
independent claim 1; (2) independent claims 10, 19, and 21, which recite
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Appeal2015-003812
Application 12/671,501
commensurate limitations; and (3) dependent claims 2, 6, 8, 9, 11, 15, 17,
18, 20, and 22.
THE OBVIOUSNESS REJECTION
Because the Examiner relies on Tagawa '329 in the same manner
discussed above in the context of claim 1, and has not shown that Tagawa
'266 cures the deficiencies noted above, we will not sustain the Examiner's
obviousness rejection of dependent claims 3-5 and 12-14. Final Act. 11-
13.
CONCLUSION
The Examiner erred in rejecting claims 1, 2, 6, 8-11, 15, and 17-22
under§ 102, and in rejecting claims 3-5 and 12-14 under§ 103.
DECISION
The Examiner's decision rejecting claims 1---6, 8-15, and 17-22 is
REVERSED.
REVERSED
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