Ex Parte Shepelev et al

Patent Trial and Appeal Board

Oct 16, 2017

13009606 (P.T.A.B. Oct. 16, 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.
13/009,606 01/19/2011 Petr Shepelev 38018/141001 1027
111408 7590 10/18/2017
Osiha T iana T T P/S»vnar>tirsi
EXAMINER
909 Fannin Street, Suite 3500
Houston, TX 77010
DAVIS, TONY O
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
10/18/2017 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):
hathaway@oshaliang.com
docketing@oshaliang.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETR SHEPELEV, ADAM SCHWARTZ, and
TRACY SCOTT DATTALO
Appeal 2017-001307
Application 13/009,6061
Technology Center 2600
Before ERIC S. FRAHM, TERRENCE W. McMILLIN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1,3, 5—8, 11—14, and 17—20, which constitute all of the claims
pending in this application. Claims 2, 4, 9, 10, 15, and 16 have been
cancelled. Amended Claims App. 1—3,5. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 Appellants identify Synaptics Inc. as the real party in interest. App. Br. 3.
Appeal 2017-001307
Application 13/009,606
THE INVENTION
The disclosed and claimed invention is directed to a device and
method for interference avoidance. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An input device comprising:
a plurality of sensor electrodes; and
a processing system coupled to the plurality of sensor
electrodes, the processing system configured to:
determine a relative ranking for transmitting a
plurality of transmitter signals based on an amount of
background interference for each transmitter signal of the
plurality of transmitter signals, wherein each transmitter
signal of the plurality of transmitter signals comprises a
waveform having a set of waveform characteristics that
differ from the set of waveform characteristics of any
other transmitter signal of the plurality of transmitter
signals;
transmit, over a sensor electrode from the plurality
of sensor electrodes, a first transmitter signal of the
plurality of transmitter signals using the relative ranking;
determine an amount of input object coupled
interference in the first transmitter signal;
select, using the amount of the input object
coupled interference, a second transmitter signal from the
relative ranking; and
transmit, over the sensor electrode, the second
transmitter signal.
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Application 13/009,606
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Hotelling US 2007/0257890 A1 Nov. 8, 2007
(Hotelling ’890)
Hotelling US 2009/0009483 A1 Jan. 8, 2009
(Hotelling ’483)
Wilson US 2011/0063993 A1 Mar. 17, 2011
REJECTIONS
Claims 1, 3, 5, 6, 8, 11—14, and 17—20 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wilson in view of Hotelling
’890. Final Act. 2—14.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Wilson in view of Hotelling ’890 and Hotelling ’483.
Final Act. 15—16.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are persuaded by Appellants’ arguments that, on the current record, the
Examiner erred in rejecting the pending claims.
Appellants argue the Examiner erred in finding Wilson teaches both
“background interference” and “input object coupled interference,” as
recited in claim 1. App. Br. 11—14; Reply Br. 5—6. More specifically,
Appellants argue “Wilson merely discloses a noise magnitude calculator 221
that ‘calculate[s] the noise magnitude from the in-phase and quadrature
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Application 13/009,606
noise components’ for any type of noise that happens to be measured during
the spectral scan” and does not teach or suggest “interference detected with
respect to an input object” or “using interference associated with the input
object to select a stimulation signal from the lookup table.” App. Br. 13
(emphasis omitted) (citing Wilson || 40, 50-54). Appellants further argue
that the disputed limitations are not directed to an intended use and should
be given patentable weight. Reply Br. 3—5.
The Examiner finds Wilson teaches determining the “amount of input
object coupled interference” as recited in claim 1. Final Act. 4 (citing
Wilson H 52, 54). The Examiner further concludes that the limitation is
directed to an intended operation of the device and patentability cannot be
based on an intended use when the prior art teaches all of the structural
limitations. Ans. 7.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
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Application 13/009,606
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see also In re
Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997) (claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function). Although “[s]uch statements often . . . appear in the
claim’s preamble . . .,” a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
We agree with Appellants that the disputed limitation is not directed
to an intended use. Instead, claim 1 recites a number of steps a processing
system must be configured to perform, including “determin[ing] an amount
of input object coupled interference in the first transmitter signal.” See
Amended Claim App. 1. As the Federal Circuit held in Typhoon Touch
Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011),
“apparatus claims may appropriately use functional language” and that such
claims require “that the apparatus as provided must be ‘capable’ of
performing the recited function, not that it might later be modified to
perform that function.” (citing Microprocessor Enhancement Corp. v. Texas
Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)); see also Ex Parte
Tsutsumi, No. 2010-005520, 2012 WL 6107993, *2 (PTAB Nov. 6, 2012)
(recognizing that prior art only anticipates a processor configured to
limitation “the prior art apparatus as provided [must] be capable of
performing the recited function, not merely one that might later be modified
to include such capability, for example, by altering its programming.” (citing
Typhoon, 659 F.3d at 1380)). According, claim 1 does not merely recite an
intended use which is given no patentable weight.
Furthermore, we are persuaded by Appellants’ argument as the
Examiner has not identified sufficient evidence or provided sufficient
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Application 13/009,606
explanation as to how Wilson teaches determining the “amount of input
object coupled interference” as recited in claim 1. Claim 1 recites two
different types of interferences, background interference and input object
coupled interference. Because claim 1 recites the two different types of
interference, they measure two different types of interference.
Although not definitional, the Specification discusses the two
different types of interference. According to the Specification, background
interference may be “interference that affects input device 100 when no
input object (e.g., input object 140) is proximate to input device 100.” Spec.
158. On the other hand, input object coupled interference may be
“interference that may substantially only affect input device 100 when an
input object (e.g., input object 140) is in sensing region 120 of input device
100.” Id. 1 59. Although the examples discussed above are not definitional
and do not define the scope of the limitations recited in claim 1, “the
protocol of giving claims their broadest reasonable interpretation . . . does
not include giving claims a legally incorrect interpretation” “divorced from
the specification and the record evidence.” Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Skvorecz, 580 F.3d
1262, 1267 (Fed. Cir. 2009) and In reNTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011)). Based on the words of the claims and how a person of ordinary
skill in the art would understand the claims based on the Specification, we
conclude that “input object coupled interference” is not so broad as to
encompass background interference that exists when an input device is not
present. Cf. In re Smith Int’l, Inc., No. 2016-2303, 2017 WL 4247407, *5
(Fed. Cir. Sept. 26, 2017) (“The correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is not whether
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Application 13/009,606
the specification proscribes or precludes some broad reading of the claim
term adopted by the examiner. And it is not simply an interpretation that is
not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” (quoting Morris, 127 F.3d at 1054)).
Paragraphs 52 and 54 of Wilson, which are relied on by the Examiner
to teach input object coupled interference, describe two different methods of
performing a spectral scan to identity low noise frequencies. Wilson
explains elsewhere that the spectral scan determines the interference when
no input devices are present, i.e., background interference: “The spectral
scan can generally be performed to detect the amount of noise introduced by
the computing system 100 and/or external noise sources. . . During a
spectral scan, no stimulation signal 116 can be applied to the touch sensor
panel 124.” Wilson 127 (emphasis omitted). Accordingly, because no
input devices are present, a spectral scan does not determine input object
coupled interference.
Accordingly, we agree with Appellant the Examiner’s finding that
Wilson teaches the disputed limitation is in error because it is not supported
by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674
(Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence); In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is
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Application 13/009,606
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.”).2
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 1, along with the rejections of claims 8 and
14, which recite limitations commensurate in scope to the disputed
limitations discussed above, and dependent claims 3, 5, 6, 11—13, and 17—20.
Moreover, because the Examiner has not shown that Hotelling ’483
cures the foregoing deficiencies regarding the rejection of the independent
claims, we will not sustain the obviousness rejection of dependent claim 7,
for similar reasons.
DECISION
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 1, 3, 5—8, 11—14, and 17—20.
REVERSED
2 Appellants raise additional issues in the Appeal Brief. Because we are
persuaded of error with regard to the dispositive issue discussed supra, we
do not reach the additional issues.
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