Ex Parte Santhiveeran et al

Patent Trial and Appeal Board

Jan 23, 2017

12953885 (P.T.A.B. Jan. 23, 2017)

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.
12/953,885 11/24/2010 Soma Sundaram Santhiveeran QLXX.P0864US/11403473 4314
15757 7590 01/25/2017
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross Avenue
Suite 3600
Dallas, TX 75201-7932
EXAMINER
TAYLOR JR, DUANE N
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOMA SUNDARAM SANTHIVEERAN,
JULIANO GODINHO VARASCHIN DE MORAES,
and MARK C. SOLOMON
Appeal 2016-001226
Application 12/953,885
Technology Center 2600
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—12, 14—17, 19, and 21—31. Claims 13, 18, and 20 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The disclosed and claimed invention on appeal relates to “[a] device
including a sensor to detect a holding position of a user of the device, an
orientation sensor to detect an orientation of the device, and a controller to
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Application 12/953,885
render an input panel on at least one location of a display device based on
the holding position of the user and the orientation of the device.”
(Abstract).
Representative Claim
1. A device comprising:
a sensor to detect a holding position of a user of the device;
an orientation sensor to detect an orientation of the device;
a display device to display an input panel for the user to
interact with; and
a controller to determine an identity of the user and, [L]
after determining the identity of the user, render the input panel
on at least one location of the display device based on the holding
position of the user, the orientation of the device, and the identity
of the user,
wherein the at least one location on the display device on
which the input panel is rendered is selected from at least one of
a left center location of the display device and a right center
location of the display device based on the identity of the user.
(Contested limitation L emphasized).
Rejections
A. Claims 1—12, 14—17, 19, and 21—28 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over the combined teachings
and suggestions of Tribble (US 2011/0242138 Al; pub. Oct. 5, 2011)
in view of Saitoh et al, (US 2009/0201257 Al; pub. Aug. 13, 2009)
and in further view of Tachibana (US 2007/0092118 Al; pub. Apr.
26, 2007).
B. Claims 29—31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Tribble,
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Saitoh, Tachibana and Krahenbuhl et al (US 2011/0050575 Al; pub.
Mar. 3,2011).
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of rejection
A of claims 1—12, 14—16, 22, and 24—28 on the basis of representative claim
1. We address rejection A of claims 17, 19, 21, and 23 separately, infra.
We decide the appeal of rejection B of claims 29—31 on the basis of
representative claim 29. To the extent Appellants have not advanced
separate, substantive arguments for particular claims or issues, such
arguments are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken, and (2) the findings, legal
conclusions, and explanations set forth in the Answer in response to
Appellants’ arguments. (Ans. 22—25). However, we highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection A of Independent Claim 1 under 35 U.S.C. § 103(a)
Contested Limitation L
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Tribble, Saitoh, and Tachibana would have taught or
suggested contested limitation L (“after determining the identity of the user,
render the input panel on at least one location of the display device based on
the holding position of the user, the orientation of the device, and the
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Application 12/953,885
identity of the us erf), within the meaning of independent claim 1, under a
broad but reasonable interpretation? 1 (emphasis added).
Appellants do not contest the combinability of the references.
However, Appellants focus on the Tachibana reference and contend:
... Tachibana fails to disclose that the locations at which
the icons in Tachibana are displayed are “based on the identity
of the user.” In fact, Tachibana appears to explicitly disclose the
opposite: that the icons are already on the screen and that the
players “press areas where icons 4, 5 are [already] displayed.”
See Tachibana at paragraph [0023]. For example, according to
the teachings of Tachibana, the locations of the icons are
determined before the user is ever identified, and the user presses
the areas of the screen where the icons are located. See
Tachibana at paragraphs [0023]. In other words, Tachibana
discloses that the locations of the icons are selected before the
user is identified. As a result, Tachibana cannot be read to
disclose or render obvious that the input panel is rendered “after
determining the identity of the user” and “based on the identity
of the user,” as recited in claim 1. Additionally, one of skill in
the art would readily recognize that pressing an area on which an
icon is already displayed does not disclose or render obvious
“rendering] the input panel on at least one location of the
display device based on ... the identity of the user,” as recited
in claim 1 (emphasis added).
(App. Br. 6).
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Regarding descriptions in the Specification
that are not definitions or clear and unambiguous disclaimers, our reviewing
“court has repeatedly ‘cautioned against limiting the claimed invention to
preferred embodiments or specific examples in the specification.’”
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015)
(iquoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed.
Cir. 2002)).
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Application 12/953,885
However, we find Appellants fail to address the Examiner’s specific
findings, which are based on the combined teachings and suggestions of
Tribble, Saitoh, and Tachibana. In particular, the Examiner relies on Saitoh
regarding the temporal “after” limitation recited in contested limitation L.
See Final Act. 4—5:
However, Saitoh discloses a controller to determine an
identity of the user and, after determining the identity of the user,
render the image on at least one location of the display device
based on the identity of the user, wherein the at least one location
on the display device on which the image is rendered is based on
the identity of the user (Saitoh, figs. 3 A-B, disclosed in | [0057];
refer to 1 [0073], where they may be a plurality of fingerprint
sensors), (emphasis added).
As further explained by paragraph 54 (which precedes paragraph 57 in
the same column on page 3), Saitoh teaches an embodiment where a
registered fingerprint is obtained first (to determine the identity of the user),
before the user’s finger is enabled to be used as a touch screen input to
change the direction of the displayed screen contents (e.g., to render a
portrait orientation):
[0054] Image processing portion 19 determines whether the
fingerprint sensed by fingerprint-sensor-equipped key 32
matches with a fingerprint of the user that is registered in
advance, or not. When there is a match, finger direction
determining portion 18 determines the direction of the finger
from the direction of the fingerprint, and notifies main controller
24 of the finger direction. Nonvolatile memory 17 has stored the
user's fingerprints that are registered in advance.
(Saitoh | 54; see also Fig. 5).
Our reviewing court guides that one cannot show nonobviousness by
attacking references individually where the rejections are based on
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combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). This reasoning is applicable here, because Appellants
attack Tachibana in isolation. (App. Br. 6). We also find that the Examiner’s
responsive explanation regarding what Tachibana teaches is supported by a
preponderance of the evidence:
Tachibana explicitly discloses in | [0023] that “When the players
A, B press areas where the icons 4, 5 are displayed with their
fingers, fingerprints of the players A, B are scanned in by the
touch panel 1 and identified by the gaming machine 10 (see FIG.
1). As will hereinafter be described in detail, an input operation
process for the icons 4,5 is valid, only when the fingerprints of
fingers touching the icon 4,5 are identical to fingerprints
previously registered in the gaming machine 10.” Furthermore, |
[0025] reads on to state "the players A, B can freely locate the
icons 4,5 at their desired positions by the operations A and drop
bombs from their desired positions by the operations B.” To be
clear, the moving operation to freely move icons 4,5 disclosed in
1 [0024] [0025] is clearly stated with fingerprint
correspondence in figure 4.
(Ans. 23).
Further, and as relied upon by the Examiner (Final Act. 3), we find
Tribble (1 50) expressly teaches using, for example, accelerometer(s) to
obtain information concerning the orientation (e.g., portrait or landscape) of
a device:
Device 100 optionally includes, in addition to accelerometer(s)
168, a magnetometer (not shown) and a GPS (or GLONASS or
other global navigation system) receiver (not shown) for
obtaining information concerning the location and
orientation (e.g., portrait or landscape) of device 100.
Tribble (1 50) (emphasis added).
Cf. with Appellants’ Spec. 127:
As noted above and as illustrated in Figure 2B, the device 200
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Application 12/953,885
can further include an orientation sensor 240 configured to
detect an orientation of the device 200. The orientation
sensor 240 can be a hardware component of the device 200
configured to detect and/or identify an orientation of the device
200 relative to one or more axes. In one embodiment, the
orientation sensor 240 can include a gyroscope and/or an
accelerometer to detect a tilt, rotation, and/or movement of the
device 200 along or around one or more axes. One or more of
the axes can include an X axis, a Y axis, and/or a Z axis. When
detecting the orientation of the device 200, the orientation
sensor 240 can detect whether the device 200 is being held in
a portrait orientation or in a landscape orientation based on
the hand position 280 of the user 290.” (emphasis added).
We find the evidence of record relied on by the Examiner is
compelling and speaks for itself. (Id. ). Moreover, our reviewing court
guides, “the question under 35 U.S.C. § 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co.,
Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989),
cert, denied, 493 U.S. 975 (1989); see also MPEP § 2123(F).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain rejection A of independent representative claim 1. Associated
grouped claims 2—12, 14—16, 22, and 24—28 (not separately argued with
particularity) fall with claim 1. See Grouping of Claims supra.
Rejection A of Claims 17, 19, 21, and 23
Regarding these dependent claims, Appellants advance nominal
arguments in the principal Brief (9—11) which we find: (1) merely assert the
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recited claim language is not taught or suggested by the cited combination,
and, (2) essentially restate arguments previously advanced regarding claim
1, which we have fully addressed and found unpersuasive above. 2
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain rejection A of dependent claims 17, 19, 21, and 23.
Rejection B of Claims 29—31 under 35 U.S.C. § 103(a)
Appellants contend dependent claims 29-31 are non-obvious for the
same reasons previously argued with respect to independent claims 1, 9, and
16. (App. Br. 11).
However, we found Appellants’ arguments for claim 1 (and
independent claims 9 and 16) unpersuasive for the reasons discussed above.
Because Appellants do not advance separate, substantive arguments for
rejection B claims 29—31, we sustain rejection B of these claims for the same
reasons discussed above regarding claim 1.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner’s Answer
2 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”
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will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, we find a preponderance of
the evidence supports the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding all contested issues on
appeal.
DECISION
We affirm the Examiner’s rejections of claims 1—12, 14—17, 19, and
21-31 under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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