11826645 (P.T.A.B. Sep. 28, 2016)

Ex Parte Rothkopf et al

Patent Trial and Appeal BoardSep 28, 2016

11826645 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111826,645 07/17/2007 69753 7590 09/30/2016 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 Fletcher R. Rothkopf 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. 106842007800 (P5336US1) 3680 EXAMINER JOSEPH, DENNIS P ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): EOfficeLA@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FLETCHER R. ROTHKOPF and STEPHEN ZADESKY1 Appeal2015-002148 Application 11/826,645 Technology Center 2600 Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and JOYCE CRAIG, Administrative Patent Judges. McMILLIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision2 on appeal under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1-5, 14--21, and 29-34, which are all the pending claims. 3 Final Act. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 2. 2 Our decision refers to the Final Office Action mailed November 22, 2013 ("Final Act."); Appellants' Appeal Brief filed June 24, 2014 ("App. Br."); the Examiner's Answer mailed October 1, 2014 ("Ans."); Appellants' Reply Brief filed November 21, 2014 ("Reply Br."); and the Specification filed July 17, 2007 ("Spec."). 3 Claims 6-13 and 22-28 are withdrawn from consideration. Final Act. 2; App. Br. 11-12, 14. Appeal2015-002148 Application 11/826,645 THE CLAHvIED TI'-JVENTION According to the Specification, "the present application relates to input mechanisms, and more particularly, to sensing input through the use of force and proximity sensors." Spec. i-f 1. Independent claims 1, 14, 30, and 31 are directed to methods and independent claim 29 is directed to a device. App. Br. 10, 12, 15-16 (Claims Appendix). Claim 1 recites: A method comprising: switching operation of a sensor between a first operation mode and a second operation mode, wherein when operating in the first operation mode, the sensor provides a first output responsive to a force applied by an object, and when operating in the second operation mode, the sensor provides a second output responsive to a proximity of the object; using a combination of the first and second outputs and corresponding force and proximity activation thresholds to determine whether the object has pressed an input area of a device; and using the second output to determine whether to adjust a force baseline in accordance with the first output, wherein the force baseline is different from the activation thresholds and represents the level of force detected in the sensor when no force is being applied to the sensor. App. Br. 10 (disputed limitation emphasized). REJECTION ON APPEAL Claims 1-5, 14--21, and 29-34 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Geaghan (US 2006/0279548 Al, published Dec. 14, 2006) ("Geaghan") and Bokma et al. (US 8,040, 142 B 1, issued Oct. 18, 2011) ("Bokma"). Final Act. 2-3. 2 Appeal2015-002148 Application 11/826,645 ANALYSIS Appellants argue all the claims as a single group. 4 App. Br. 4--8; Reply Br. 2-5. All the claims are subject to the same rejection. Final Act. 2-3. 37 C.F.R. Â§ 41.37(c)(l)(iv) provides: When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. See also In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) ("Since the claims are not separately argued, they all stand or fall together."). We shall decide this appeal based on consideration of claim 1. Appellants argue the cited art fails to teach or suggest, "using the second output to determine whether to adjust a force baseline in accordance with the first output, wherein the force baseline is different from the activation thresholds and represents the level of force detected in the sensor when no force is being applied to the sensor," as recited in claim 1. App. Br. 4--8; Reply Br. 2-5. Specifically, Appellants argue, "the combination of Geaghan and Bokma fails to teach using a proximity output to adjust a force baseline, as required by the claims." Reply Br. 4. According to claim 1, the "force baseline ... represents the level of force detected in the sensor when no force is being applied to the sensor." App. Br. 10. See also Ans. 3 ("Applicant defines 'force baseline' as a level of force detected in the sensor when no force is being applied to the sensor (Claim 1 ). "). In the Final Office Action, the Examiner acknowledges that Geaghan does not 4 Each of the independent claims contain the disputed limitation or an analogous limitation. See App. Br. 6, 10, 12, 15-16. 3 Appeal2015-002148 Application 11/826,645 "explicitly teach" the disputed limitation. Final Act. 4. With regard to Bokma, we agree with the Appellants that, "Bokma also only teaches changing a baseline no-touch capacitance value by monitoring the current capacitance values and updating the baseline capacitance values on a regular basis (see col. 6, lines 30-40)" and "[n]owhere does Bokma teach adjusting a force baseline based on a proximity output, as required by the claims." App. Br. 8. However, the Examiner emphasizes the rejection is based upon a combination of the teachings of the cited references, Geaghan and Bokma. Final Act. 4--5. See also Ans. 3-5. The Examiner's Answer states: Geaghan clearly suggests of adjusting the base levels based on the inputs of the sensors (including the capacitive sensor) and Bokma clearly teaches of a baseline drift (akin to a force baseline) to reinforce this notion and respectfully, one of ordinary skill in the art would realize that as modified, a base threshold (different from the activation threshold) could be modified in light of the input from the sensors. Ans. 5. After reviewing all the cited portions of the references referred to by the Examiner in the Final Office Action and the Examiner's Answer, we are unable to find any teaching of using the output from a proximity sensor to adjust the "force baseline" of a force sensor. And, we do not agree with the Examiner that the cited combination of references suggests the input or output from one type of sensor (i.e., a proximity sensor) could be used to determine whether to adjust the baseline of a different type of sensor (i.e., a force sensor). Accordingly, the disputed limitation is not taught or suggested by the cited art. On this record, we reverse the rejection of the claims as the cited art fails to teach or suggest all the limitations of the claimed invention. 4 Appeal2015-002148 Application 11/826,645 DECISION The rejection of claims 1-5, 14--21, and 29-34 is reversed. REVERSED 5