Ex Parte Shakespear

Patent Trial and Appeal Board

Nov 4, 2016

13413840 (P.T.A.B. Nov. 4, 2016)

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.
13/413,840 03/07/2012 Daniel SHAKESPEAR P018790-GMVE-CD 2858
80748 7590 11/08/2016
Cantor Colburn LLP-General Motors
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
SMALL, NAOMI J
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
11/08/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL SHAKESPEAR
Appeal 2016-002722
Application 13/413,840
Technology Center 2600
Before HUNG H. BUI, JON M. JURGOVAN, and
WILLIAM M. FINK, Administrative Patent Judges.
FINK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 10 and 11, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse. Pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter new grounds of rejection for claims 10 and 11.
1 The real party in interest is identified as GM Global Technology
Operations LLC. App. Br. 2.
Appeal 2016-002722
Application 13/413,840
STATEMENT OF THE CASE
Appellant’s invention relates to a scrolling control system including a
rotational control for scrolling through a plurality of user selections.
Abstract.2
Claim 10 is the only independent claim on appeal. Claim 10 is
illustrative of Appellant’s invention and is reproduced below with disputed
limitation emphasized:
10. A scrolling control system having tactile feedback
comprising:
a rotational control for scrolling through a plurality of user
selections of an audio system;
a first position of the rotational control, wherein rotation
away from the first position scrolls through the plurality of user
selections;
a second position of the rotational control that is disposed
at a first angle from the first position, wherein a first scrolling
frequency is a constant frequency and occurs at any position of
the rotational control between the first position and the second
position within the first angle;
a second angle defined by the second position of the
rotational control and a maximum angle of the rotational control,
wherein a constantly increasing scrolling frequency occurs over
an entire range of the second angle, wherein a torque required to
turn the rotational control increases as the rotational control is
rotated further from the second position; and
2 Our Decision refers to Appellant’s Appeal Brief filed June 17, 2015 (“App.
Br.”); the Examiner’s Answer mailed November 17, 2015 (“Ans.”);
Appellant’s Reply Brief filed January 6, 2016; the Final Office Action
mailed January 30, 2015 (“Final Act.”); and the original Specification filed
March 7, 2012 (“Spec.”).
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Application 13/413,840
a pulsating system for providing tactile feedback to a user.
App. Br. 12 (emphasis added).
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldenberg (US 6,636,197 Bl; October 21, 2003).
Based on Appellant’s arguments, the dispositive issue on appeal is
whether Goldenberg teaches or suggests the above emphasized limitation of
independent claim 10. See App. Br. 9-10; Reply Br. 2.
ANALYSIS
Appellant argues Goldenberg “is completely silent regarding an initial
zone of constant frequency scrolling. Appellant has determined that it is
exceedingly desirable to provide a constant scrolling frequency over an
initial rotational angle from the first position (i.e., ‘home’ position).” App.
Br. 9. In response, the Examiner states Goldberg teaches a scrolling rate
directly correlated to the amount of force feedback and that an initial period
of constant force feedback is depicted in Figure 5B. Ans. 2 (citing
Goldenberg, 22:3—6, 23:46-49, Fig. 5B).
Appellant disputes the Examiner’s interpretation of the cited portions
of Goldberg, stating:
the first cited passage states that “[t]he further that the user
moves the knob into the spring 318, the greater is the spring force
resistance, and the greater the speed of scrolling new items into
the visible list 313.” (See Goldenberg, col. 22, lines 3-6).
Therefore, any movement of the knob results in an increased
scrolling rate. The second cited passage states that “the greater
the amount of rotation away from the origin position, the greater
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Application 13/413,840
is the speed or rate of change of the controlled value or function.”
(See Goldenberg, col. 23, lines 46-49).
Reply. 2.
We are constrained to agree with Appellant that the cited passages do
not support the Examiner’s conclusion. While we agree that the cited
passages correlate feedback force and the frequency or rate of scrolling, both
passages state the feedback force increases with greater “movement” or
“rotation” of the knob. See Goldenberg, 22:3—6, 23:46-49. Moreover,
Figure 5B, reproduced below, does not appear to depict a region of constant
force:
As shown above, there is a region of zero feedback force (i.e., no scrolling)
up to an initial starting point and then an exponential “square” function
beyond that point. See id., Fig. 5B, 17:17—19 (describing the exponential
force profile in Fig. 5B). There is no depiction of a region of constant force
FIG. 5B
Figure 5B depicts an exponential force profile
opposing rotational knob movement
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Application 13/413,840
to support the Examiner’s conclusion that a constant scrolling frequency is
taught in Figure 5B. Accordingly, we cannot sustain the obviousness
rejection of claims 10 and 11 under the Examiner’s reasoning.
NEW GROUND OF REJECTION
1. 35 U.S.C.§ 103(a)
We do, however, find that an ordinarily skilled artisan would have
found the subject matter of claims 10 and 11 obvious nonetheless, in view of
uncited teachings of Goldenberg. As an initial matter, the Examiner
correctly notes Goldenberg’s teaching that scrolling frequency is correlated
with the feedback force. See Goldenberg, 22:3—6. Although we disagree
that Figure 5B explicitly discloses a constant non-zero force region, we
observe that, in connection with Figure 5B, Goldberg teaches using different
force profiles, such as a gradual force increase before point XI and a steeper
force increase after point XI. Id. at 17:19-21. Goldenberg also teaches that,
instead of a square function, two linear profiles could be used, “with the first
profile (to point XI) having a lower slope than the later profile (past point
XI).” Id. at 17:30-32. Goldenberg further teaches that the rate of increase
in scrolling speed in the initial region (i.e., prior to point XI) would be lower
than the rate of increase in the second region. Id. at 2:51—55.
Obviousness is a question of law based on underlying factual findings
including the scope and content of the prior art, the differences between the
claimed invention and the prior art, and the level of ordinary skill in the
pertinent art. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007);
Graham v. John Deere Co., 383 U.S. 1, 17—18 (1966). In an obviousness
analysis, precise teachings directed to the specific subject matter claimed
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Application 13/413,840
need not be identified because the inferences and creative steps that a person
of ordinary skill in the art would employ can be taken into account. See
KSR, 550 U.S. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”). In this regard, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
Here, as noted above, the only difference between the claimed subject
matter and Goldenberg is the claimed initial region of constant frequency
scrolling over that region as opposed to a region with a lower, linear rate of
increase in scrolling frequency. However, based on Goldenberg’s
suggestion to use force profiles with different slopes, including a lower,
linear initial slope, we determine that an ordinarily skilled artisan would
have appreciated that it is only a matter of degree to modify the lower slope
to one having zero slope force profile to obtain constant frequency scrolling.
See KSR, 550 U.S. at 416 (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”).
Accordingly using our authority under 37 C.F.R. § 41.50(b), we enter
a new ground of rejection for claim 10 as being directed to obvious subject
matter over Goldenberg, based on the foregoing teachings. Because claim
11 is directed to the scrolling system of claim 10, wherein the scrolling
control system is in a vehicle, and there is no dispute that Goldenberg
discloses this requirement (see Final Act. 4 (citing Goldenberg, 4:3—13), we
enter the new ground of rejection for claim 11 as well.
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Application 13/413,840
2. 35 U.S.C. § 112, first paragraph
We also exercise our authority under 37 C.F.R. § 41.50(b) to
enter a new ground of rejection for claim 10 under 35 U.S.C. § 112,
first paragraph, for failure to comply with a written description
requirement. Specifically, Appellant argues that claim 10 is patentable
over Goldenberg based on the “constant frequency” scrolling feature.
See App. Br. 9 (“Appellant has determined that it is exceedingly
desirable to provide a constant scrolling frequency over an initial
rotational angle from the first position (i.e., ‘home’ position).”).
However, Appellant provides no support from Appellant’s
Specification for this statement and we observe that constant frequency
scrolling was not recited in the original claims. Spec. 9—11.
Accordingly, to comply with § 112, first paragraph, support for
amended claim 10 of must come from the as-filed disclosure. See, e.g.,
In re Lukach, 442 F.2d 967 (CCPA 1971).
To satisfy the written description requirement, the disclosure must
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). We find the
term “constant frequency scrolling over an initial angle” is not contained in
the written description or shown in the drawings. As an initial matter, the
word “constant” does not appear in the application. Moreover, all of the
embodiments are described as having a scrolling frequency related to the
rotational angle, see Spec. 118 (“[T]he frequency is increased as the
rotational control is rotated away from the first position 16.”); 121 (“The
angle [between the first position and the rotated position] determines the
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Application 13/413,840
scrolling rate.”), or, in some cases, as permitting manual scrolling “one step
at a time” prior to rotation to a predetermined rotational angle, see id. 122.
In other words, scrolling frequency increases with angle. We can no discern
no suggestion that the rate of scrolling is ever constant over an initial angle.
Based on the foregoing, we find that the as-filed application does not
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter at the time of the application. We therefore
exercise our authority under 37 C.F.R. § 41.50(b) to enter a new ground of
rejection for claim 10 as failing to comply with the written description
requirement. Because dependent claim 11 incorporates the subject matter of
claim 10, we enter this new ground for claim 11 as well.
DECISION
On the record before us, we reverse the final rejection of claims 10
and 11. However, pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter a NEW GROUND of rejection for: (1) claims 10 and 11 under 35
U.S.C. § 103(a) as directed to obvious subject matter over Goldenberg; and
(2) claims 10 and 11 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement for new or amended claims.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Rule 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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Application 13/413,840
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).
REVERSED
37 C.F.R. $ 41.50(b)
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