Ex Parte Stonefield et al

Patent Trial and Appeal Board

May 2, 2016

11895346 (P.T.A.B. May. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111895,346 08/24/2007
45436 7590 05/04/2016
DEAN D, SMALL
THE SMALL PA TENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Andrew David Stonefield
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.
225928 (553-1353) 2579
EXAMINER
MEHTA, PARIKHA SOLANKI
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
05/04/2016 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):
Docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW DAVID STONEFIELD,
LIU LANPING, and AURELIE RONCAGLIONI
Appeal2014-005227
Application 11/895,346
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
diagnostic medical imaging device having a protective facade. The
Examiner rejected the claims on the grounds of indefiniteness and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as General Electric Company
(see App. Br. 3).
Appeal2014-005227
Application 11/895,346
Statement of the Case
Background
Appellants' invention "relates generally to diagnostic imaging
devices, and more particularly, to devices and apparatus that facilitate the
cleaning and disinfecting of diagnostic imaging devices" (Spec. i-f 1 ).
The Claims
Claims 22---60 are on appeal. Independent claim 22 is representative
and reads as follows (emphasis added):
1. A diagnostic medical imaging device comprising:
a display screen mounted in an enclosure and
configured for displaying medical images;
a user interface mounted in the enclosure adjacent the
display screen and including at least one user input that is
operable without moving parts; and
the enclosure including a one-piece non-flexible facade
covering the display screen and the user input, wherein the
facade is transparent over at least a portion of the display
screen and configured such that the at least one user input is
operable by a user.
The Issues
A. The Examiner rejected claims 25 and 40 under 35 U.S.C. § 112 as
being indefinite (Ans. 2).
B. The Examiner rejected claims 22---60 under 35 U.S.C. § 103(a) as
obvious over Poland2 and Richardson3 (Ans. 2--4).
2 Poland, US 2009/0043195 Al, published Feb. 12, 2009.
3 Richardson et al., US 7,907,394 B2, issued Mar. 15, 2011.
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Application 11/895,346
A. 35 U.S. C. § 112, second paragraph
Appellants do not argue this rejection (see Ans. 9).
We therefore summarily affirm the indefiniteness rejection based
upon the Examiner's explanation and reasoning (Ans. 2). See In re Berger,
279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an
uncontested rejection of claims under 35 U.S.C. § 112, second paragraph,
and on appeal the Federal Circuit affirmed the Board's decision and found
that the appellant had waived his right to contest the indefiniteness rejection
by not presenting arguments as to error in the rejection on appeal to the
Board).
B. 35 U.S.C. § 103(a) over Poland and Richardson
The Examiner finds that Poland teaches
a tablet (i-f 31, wireless portable display device) for viewing
ultrasound images, the tablet comprising a rectangular display
20 configured for displaying ultrasound images (i-f 33), and a
user interface 18 extending along at least two edges of the
display screen which is operable without moving parts, the
interface comprising a capacitive switch (i-f 31 ).
(Ans. 3).
The Examiner concludes that it would have been obvious "to modify
the system of Poland (' 195) to include the protective arrangement of
Richardson ('394), at least to protect the ultrasound tablet from liquid and
mechanical damage, which would thereby yield the present invention" (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Poland and Richardson render the
claims prima facie obvious?
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Application 11/895,346
Findings of Fact
1. Poland teaches a
[u]ser interface for providing user control over device
functions of an ultrasound imaging system (10) [that]
includes a touchscreen (18) and activation areas (22, 24, 26)
defined thereon simultaneous images. Each activation area
(22, 24, 26) has a unique assigned function relating to
processing of the ultrasound images with an indication of the
function being displayed on the activation area (22, 24, 26).
A processor (16) is coupled to the touchscreen (18) for
detecting a touch on the activation areas (22, 24, 26) and
performing the function associated with each activation area
(22, 24, 26) upon being touched. In this manner, all UI
controls can be implemented as virtual controls by assigning
the function of each control to an activation area (22, 24, 26)
so that the user can simply touch the activation area and effect
the desired control.
(Poland Abstract; see also Ans. 3.)
2. Figure 2 of Poland is reproduced below:
~::~
.. . JL.
~ ~ .... .,._ ......... _ ................ ., ................................................................................ ., ................ ~~~ .. ~:~::J.:lli~9--.............. ~J ~
l i 1~·~·~] r·~·~] r·~_::] i
I L:::::::::::::. _____________ ~:==-~~=--·J
FIG. 2
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Application 11/895,346
Figure 2 shows
a sample of the layout of virtual controls on the touchscreen
18 during operation of the ultrasound imaging system 10. The
touchscreen 18 displays in the available display area or visual
field 20 either the ultrasound images in their entirety or the
ultrasound images along with one or more superimposed
activation areas 22, 24, 26 in a portion of the visual field 20.
Activation areas 22, 24, 26 represent the usual controls of the
ultrasound imaging system 10 which are implemented as on-
screen virtual devices, including such hard UI controls as
keys, buttons, trackball, and TGC potentiometers.
(Poland i-f 33; see also Ans. 3.)
3. Figure 13A of Richardson is reproduced below:
t.}\TCJi
FIG.13A
Figure 13A shows
a protective enclosure for an electronic device having a touch
screen comprising: a shell that is capable of enclosing and
substantially surrounding the electronic device, the electronic
device being a separate unit from the protective enclosure, the
electronic device being insertable in and removable from the
protective enclosure by hand, the shell being substantially
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Appeal2014-005227
Application 11/895,346
watertight, substantially rigid and substantially crush-
resistant; a protective membrane attached to the shell so that
the protective membrane is disposed over the touch screen of
the electronic device when the electronic device is enclosed
in the shell, the protective membrane being sufficiently thin
to allow tactile inputs on a front side of the protective
membrane to be communicated to the touch screen through
the protective membrane, ...
(Richardson 2:67-3:14; see also Ans. 3.)
4. Richardson teaches
A protective enclosure for a personal electronic device
having a shell that is capable of enclosing and substantially
surrounding the electronic device disposed to make the shell
substantially watertight, substantially rigid and substantially
crush-resistant. The enclosure has a transparent protective
membrane that is attached to the shell so that the protective
membrane is positioned over the touch screen of the
electronic device when the electronic device is enclosed in the
shell.
(Richardson Abstract; see also Ans. 3.)
5. Richardson teaches that "[t]he membrane ... is constructed by
thermoforming a sheet of thin plastic," and that "[t]he plastic is selected to
be thin enough that the deformation of a stylus conducts the touch to the
touch screen, but thick enough to have enough rigidity that the stylus does
not catch and rip the membrane" (Richardson 5:45-50; see also Ans. 3).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
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Application 11/895,346
Analysis
We adopt the Examiner's findings and agree that claims 22, 44, and
58 are obvious over Poland and Richardson. We address Appellants'
arguments below.
Appellants contend that
Poland makes clear that element 20 is the visual field
of the touchscreen 18. The visual field 20 is the portion of the
touchscreen 18 wherein [the] display is provided.
Accordingly, there cannot be a user interface mounted in an
enclosure adjacent the display screen as the visual field 20 is
the display portion of the touchscreen 18. Accordingly, the
visual field 20 is not mounted in an enclosure adjacent to the
touchscreen 18.
(App. Br. 14; see also Reply Br. 2-5.)
We do not find this argument persuasive because we agree with the
Examiner that "Poland clearly delineates between the image display area 20
and the activation areas 22/24/26 ('user interface') (see at least paragraph
33); the reference display area 20 alone amounts to a 'display screen', such
that the prior art screen is 'adjacent' the interface areas (see Fig. 2)" (Ans. 4;
FF 1-2). We note that the claims do not require that the display screen be
mounted at a location that is separate and via a distinct mechanism and
distinct enclosure from that of the user interface. The requirement in claim
22 is that the user interface and display screen are "adjacent". In other
words, because Poland's display screen is adjacent to the user interface and
both are mounted in the same enclosure, Poland's device reads on "a display
screen mounted in an enclosure" and "a user interface mounted in the
enclosure adjacent the display screen" as claimed. "[L ]imitations are not to
be read into the claims from the specification." In re Van Geuns, 988 F.2d
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1181, 1184 (Fed. Cir. 1993). See also Jn re Selj; 671F.2d1344, 1348 (CCPA
1982) ("[A]ppellant's arguments fail from the outset because ... they are not
based on limitations appearing in the claims.").
Appellants contend that "Poland describes that an important aspect of
the invention is that the user input for controlling the ultrasound imaging
system 10 is not required from hard UI components, for example, buttons, a
trackball, function keys and TGC potentiometers and the like, nor from
separate soft UI components, such as an EL (electro-luminescent) display,"
and that "Poland goes on to describe that the all of the control functions
performed by such hard and soft UI components are now represented by
virtual controls that are displayed on the touchscreen along with the
ultrasound images" (App. Br. 16 (emphasis removed); see also Reply Br. 5-
6).
We are not persuaded. We agree with the Examiner that "the virtual
controls of Poland fall well within the broadest reasonable scope of the
presently claimed 'mode buttons', as they are well known types of GUI
radio buttons that affect a mode of the reference system operation" (Ans. 5;
FF 1-2). That is, Poland's virtual buttons reasonably satisfy the requirement
of claim 22 for "user input that is operable without moving parts" (FF 1-2).
Appellants contend that "Poland makes clear that the touchscreen is
the display element that includes a visual field (the entire field of which is
where the virtual buttons or image is displayed) having all of the UI
elements, thereby also defining the user interface" (App. Br. 16). Appellants
also contend that "Poland specifically teaches that none of the user inputs
should be separate from the display screen as discussed above. Accordingly,
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Application 11/895,346
it is submitted that Poland teaches away from the required user interface
recited in claim 22" (id. at 18).
We are not persuaded. We agree with the Examiner that Appellants
"fail[] to provide substantive evidence to show where Poland specifically
and explicitly discourages the display area as being anything but adjacent to
his user inputs (i.e., that he 'teaches away' from this arrangement)" (Ans. 5).
Like our appellate reviewing court, "[w]e will not read into a reference a
teaching away from a process where no such language exists." DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006).
Appellants contend that Poland does not teach "'a user interface
mounted in the enclosure adjacent the display screen and including at least
one user input that is operable without moving parts' as required by claim
22" (App. Br. 17). We disagree for the reasons given above. Accordingly,
we agree with the Examiner that "the broadest reasonable interpretation of
'mounted' includes both 'arranged or assembled for use or display' as well
as 'prepared for examination or display' (Merriam Webster), both of which
are reasonably met by the user input taught by Poland" (Ans. 5). To the
extent that Appellants are arguing that Poland does not teach "one user input
that is operable without moving parts," we disagree. Poland teaches "[a]
processor (16) is coupled to the touchscreen (18) for detecting a touch on the
activation areas (22, 24, 26) and performing the function associated with
each activation area (22, 24, 26) upon being touched" (FF 1) which reads on
this claimed limitation.
Appellants contend that "the enclosure of Richardson is configured
for use with a device having movable buttons, and as such, one would not
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look to Richardson or use the enclosure or Richardson with a device that
does not have movable buttons" (App. Br. 18). More particularly,
Appellants argue that "the enclosure of Richardson is configured such that
the raised portion and not the recessed portion (covering the screen) is
configured to allow the buttons thereunder to be operated by a user" (id. at
19 (emphasis removed); see also Reply Br. 6-7).
We do not find this argument persuasive because we agree with the
Examiner that
a skilled artisan would readily recognize that the raised
portions of Richardson would not be necessary with a virtual-
button arrangement such as Poland's, i.e. that the function
attributed to the raised portions of Richardson's cover would
not be required with the flat, virtual interface of Poland (see
also MPEP 2144.04 II). Removal of the raised portions of
Richardson's cover eliminates its function for use with
mechanical buttons to the extent that such removal cannot
reasonably be construed as an indicia ofunobviousness. The
skilled artisan would readily recognize that the general
teaching of Richardson to cover an electronic interface with a
protective yet interactive housing would have clearly
improved the device of Poland, to the extent that such
potential for obvious improvement amounts to sufficient
motivation to combine their teachings.
(Ans. 6 (emphasis removed)).
Appellants contend that
Richardson is directed to a case that allows a screen to be
covered with the sheet of thin plastic (that is deformable), but
the raised portion is for use with the user inputs. Thus, if user
inputs are provided as part of the user interface mounted in
the enclosure adjacent the display screen, the user input
would be covered by the flexible portion (to allow, for
example, a user to press the buttons thereunder) and not the
non-flexible portion defining the facade.
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(App. Br. 19-20).
We are not persuaded. We agree with the Examiner that "Richardson
explicitly describes the touch screen cover as being rigid in multiple
instances throughout the reference, such as 'the protective screen membrane
1306 may be ... rigid'" (Ans. 6; FF 5). Moreover, Richardson expressly
teaches that the cover functions with a touch screen similar to that relied
upon by Poland, supporting the Examiner's reasoning that the cover of
Richardson would not interfere with the touchscreen buttons of Poland (FF
1, 5).
Claim 25
Appellants contend that Poland does not teach "the user interface is
adjacent to at least one edge of the display screen and in the enclosure
separate from the display screen" (App. Br. 20-21; see also Reply Br. 7).
We agree. Claim 25 requires a separate enclosure, an element that the
Examiner does not establish is taught by either Poland or Richardson.
Claims 27 and 49
Appellants contend that "the sheet of thin plastic or membrane
(defined as the one-piece facade) of Richardson only extends over the
display and not to the edges thereof. As such, the membrane does not
extend over at least a portion of one of the side edges" (App. Br. 21; see also
Reply Br. 7).
We are not persuaded. We agree with the Examiner that "the edge
where the recessed portion of Richardson meets the raised outer portion of
Richardson would reasonably meet and at least partially cover such 'side
edge"' (Ans. 7; FF 4).
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Claim 29
Appellants argue that "there is no description or suggestion of such a
weight limitation in Poland" (App. Br. 21; see also Reply Br. 8).
We do not find this argument persuasive because we agree with the
Examiner that Appellants provide "no evidence to show a novel, unexpected
result achieved by such weight, and also provide[] no persuasive arguments
or evidence to effectively rebut Examiner's contention that handheld
computers were well known to be between 'about 3 oz and 10 lbs,'" and that
"the refinement of Poland and Richardson's general teaching of the system
being 'portable' to yield a system weight of 'about 3 oz to 10 lbs' amounts
to nothing more than an unpatentable optimization" (Ans. 8). See In re
Aller, 220 F .2d 454, 456 (CCPA 1955) ("where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation").
Claim 30
Appellants argue that Polland's "buttons [that are] displayed on a
screen are not the same as a soft key or any other type of physical button or
key" (App. Br. 21)
We do not find this argument persuasive. We agree with the
Examiner that
the virtual controls of Poland do, in fact, reasonably amount
to "mode keys" as claimed. Regarding the claimed "soft
key", the term "soft" covers, within its broadest reasonable
definition, "virtual" (i.e., "software" vs "hardware"), and for
at least that reason, the variable-function virtual controls 26
of Poland also amount to "soft keys" as claimed.
(Ans. 8).
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Claim 31
Appellants argue that Poland teaches that
an important aspect of the invention is that the user input for
controlling the ultrasound imaging system 10 is not required
from hard UI components, for example, buttons, a trackball,
function keys and TGC potentiometers and the like, nor from
separate soft UI components, such as an EL
(electroluminescent) display. Thus, Poland teaches away
from a soft UI component such as a soft key.
(App. Br. 22 (emphasis removed).) Appellants argue that "[t]hus, Poland
teaches away from a soft UI component such as a soft key" (id.).
We do not find these arguments persuasive because we agree with the
Examiner that the claims do not require the user input and the display screen
to be separate and that Poland does not teach away from a device having a
display adjacent to a user interface, as discussed above (see Ans. 8).
Claims 33-35 and 53
In regard to claims 33-35 and 53; Appellants make similar arguments
in which "buttons displayed on a screen are not the same as mode key,
which is a separate key, such as one of the mode buttons 13 6 shown in
Figure 3 of the present application" (App. Br. 22). Accordingly, we agree
with the Examiner and are not persuaded for the reasons set forth above (see
Ans. 8).
Claims 38 and 55
Appellants contend that "[ w ]hile Poland describes a stylus, there is
nothing in Poland that describes a stylus that uses radio frequency signals to
interact with the touchscreen" (App. Br. 22). We agree. The Examiner has
not provided sufficient evidence on this record to support the conclusion that
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it would have been obvious to use radio frequency signals for a stylus in
Poland's device.
Accordingly, we affirm the rejection of claims 22-24, 26-37, 39-54,
and 56-60, and reverse the rejection of claims 25, 38, and 55.
SUMMARY
In summary, we affirm the rejection of claims 25 and 40 under 35
U.S.C. § 112 as being indefinite.
We affirm the rejection of claims 22, 44, and 58 under 35 U.S.C.
§ 103(a) as obvious over Poland and Richardson. Claims 23, 24, 26-37, and
39--43 fall with claim 22, claims 45-54, 56, and 57 fall with claim 44, and
claims 59 and 60 fall with claim 58.
We reverse the rejection of claims 25, 38, and 55 under 35 U.S.C.
§ 103(a) as obvious over Poland and Richardson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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