Ex Parte Stopp

Patent Trial and Appeal Board

Dec 15, 2017

13818474 (P.T.A.B. Dec. 15, 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.
13/818,474 02/22/2013 Sebastian Stopp 013658/000273 3520
108549 7590 12/19/2017 EXAMINER
Tnoker F,11i<; T T P
Brainlab AG FLORES, ROBERTO W
950 Main Avenue
Suite 1100 ART UNIT PAPER NUMBER
Cleveland, Uli 44114-/714 2621
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
patents @ tuckerellis. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN STOPP1
Appeal 2017-007620
Application 13/818,474
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTAII, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—13, 15, and 16, which are all of the claims pending in the
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Brainlab AG. See App.
Br. 2.
2 Claim 14 is cancelled.
Appeal 2017-007620
Application 13/818,474
STATEMENT OF THE CASE
According to Appellant, the claims are directed to system which
determines the location a pointer points to on a display based on the
pointer’s intersection with first and second position-determining layers.
Abstract.3 Claim 1, reproduced below with line breaks added for clarity, is
illustrative of the claimed subject matter:
1. A medical display comprising a position determination
system for ascertaining an orientation of at least one pointer
which is pointing onto a display surface of the display,
wherein the position determination system has a first
position-determining layer and a second position-determining
layer, the first position-determining layer and the second
position-determining layer having a limited width, the position-
determination system using multi-layered pointing position
determination,
wherein the first and the second position-determining
layers comprise at least one first sensor that monitors the first
position-determining layer and at least one second sensor that
monitors the second position-determining layer, the at least one
sensor of the first position-determining layer being different
from the at least one sensor of the second position-determining
layer,
wherein the first and the second sensors concurrently
ascertain a two-dimensional pointing intersection of the first and
the second layers, respectively, which are spaced from each other
and arranged one above the other in relation to the display
surface,
the medical display further comprising a data processing
unit configured to process data concurrently provided by the first
3 This Decision refers to: (1) Appellant’s Specification filed February 22,
2013 (Spec.); (2) the Final Office Action (Final Act.) mailed August 3,
2016; (3) the Appeal Brief (App. Br.) filed January 3, 2017; (4) the
Examiner’s Answer (Ans.) mailed February 24, 2017; and (5) the Reply
Brief (Reply Br.) filed April 21, 2017.
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Application 13/818,474
and the second sensors, the data containing information as to the
two-dimensional pointing intersection of the first layer and as to
the two-dimensional pointing intersection of the second layer,
the data being representative of the orientation of the at least one
pointer pointing onto the display, the data processing unit
controlling content which is displayed three-dimensionally on
the display in accordance with the orientation of the at least one
pointer.
REFERENCES AND REJECTIONS
Claims 1—6, 11—13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shimauchi (US 4,812,833; issued Mar.
14, 1989) and Lipman (US 2007/0176908 Al; published Aug. 2, 2007).
Final Act. 5—14.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimauchi, Lipman, and Morrison (US 2008/0129700 Al;
published June 5, 2008). Final Act. 14—15.
Claim 9 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Shimauchi, Lipman, Morrison, and Takekawa (US 2002/0050985 Al;
published May 2, 2002). Final Act. 15—16.
Claim 10 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Shimauchi, Lipman, and Takekawa. Id. at 16.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(1).
ISSUES
1. Does the Examiner err in finding the combination of Shimauchi
and Lipman teaches “the first and the second sensors concurrently ascertain
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a two-dimensional pointing intersection of the first and the second layers,
respectively” as recited in claim 1 and similarly recited in claims 11 and 15?
2. Does the Examiner improperly combine Shimauchi and Lipman?
ANALYSIS
Issue 1
Appellant contends the Examiner erred in finding the combination of
Shimauchi and Lipman teaches “the first and the second sensors
concurrently ascertain a two-dimensional pointing intersection of the first
and the second layers, respectively,” as recited in claim 1 and similarly
recited in claims 11 and 15. App. Br. 8—9. Specifically, Appellant argues
“the combination would not arrive at the [claimed] subject matter” because
“Shimauchi does not disclose two different layers that concurrently provide
data . . . and because Lipman only discloses a calculation relating to one
layer.” Id.
We are not persuaded. The Examiner finds, and we agree,
“Shimauchi teaches sensors 33 and 31 ascertain a two-dimensional pointing
intersection,” respectively, final Act. 3, 5—6 (citing Shimauchi figs. 1,3,6,
7); see Shimauchi 2:31—39. The Examiner further finds, and we agree,
Lipman teaches “a plurality of sensors 104 in [FJigure 1 for sensing
concurrently.” Ans. 4 (emphasis omitted); Final Act. 3—4, 7—8 (citing
Lipman 1100; Figs. 1, 8). The Examiner concludes “it would have been
obvious to one of the ordinary skill in the art at the time of the invention at
the time of the invention was made to have a plurality of sensors detecting
concurrently.” Ans. 5; see Final Act. 4, 8.
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Appellant’s arguments that Shimauchi’s two sensor layers do not
“concurrently provide data” and that Lipman only teaches “one layer” (App.
Br. 8—9) inappropriately attack Shimauchi and Lipman individually when
the rejection is based on the combination of Shimauchi and Lipman. In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). Specifically,
Appellant does not address the Examiner’s combination of Shimauchi,
teaching two layers of sensors, with Lipman, teaching concurrent sensor
detection, to teach “the first and the second sensors concurrently ascertain a
two-dimensional pointing intersection of the first and the second layers,
respectively.” Ans. 5; see Final Act. 4, 8.
Accordingly, we are not persuaded the Examiner fails to show the
combination of Shimauchi and Lipman teaches or suggests the limitations as
recited in claim 1 and similarly recited in claims 11 and 15.
Issue 2
Appellant contends the Examiner improperly combined Shimauchi
and Lipman. App. Br. 8—9; Reply Br. 2—3. Specifically, Appellant argues
the combination “would render Shimauchi inoperable because the light pen
of Lipman emits electromagnetic radiation that cannot be detected by
Shimauchi.” App. Br. 8; Reply Br. 3. Appellant further argues that
combining “concurrent sensing from Lipman with Shimauchi. . . would
make Shimauchi inoperable for its intended purpose” because Shimauchi’s
“sensor information must be sequential.” Reply Br. 2—3. Additionally,
Appellant argues “[tjhere is simply no reasonable basis” to combine
Shimauchi and Lipman. App. Br. 8.
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We are not persuaded. As discussed supra, we agree with the
Examiner’s finding that the combination of Shimauchi’s teaching two layers
of sensors, each of which detects a pointer, and Lipman’s teaching of
concurrent sensor detection, teaches or suggests concurrently sensing sensor
layers. Ans. 5; see Final Act. 4, 8. The Examiner combines Shimauchi and
Lipman to teach “provid[ing] information to distinguish between spots
having different locations, orientation, shapes and sizes.” Final Act. 4, 8;
Ans. 5.
Appellant argues the combination of Shimauchi and Lipman is
inoperable because Shimauchi’s sensors are “unable to detect the light spot
of the light pen taught by Lipman” (Reply Br. 3; App. Br. 8). We are
unpersuaded because this argument is premised on a “physical” or “bodily”
incorporation of limitations of one reference into the other. This, however,
is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review”). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. See Keller, 642 F.2d at 425. “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather than express
obviousness as the physical incorporation of a structure from one reference
into the structure of another reference, the prior art should be viewed as a
combination of teachings from different sources and the use of those
teachings by one of ordinary skill in the art. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (the conclusion of obviousness can be based
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on the interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art.) Here, Appellant’s argument inappropriately requires the bodily
incorporation of Lipman into Shimauchi. The Examiner’s combination does
not use Lipman’s light pen with Shimauchi’s sensors; rather, the Examiner’s
combination relies on Lipman to teach concurrent sensor detection. Ans. 5
(“the main purpose of Lipman is to show that sensing concurrently . . .
would be obvious to one of the ordinary skill in the art. Lipman was not
used for detecting a finger instead of a light-beam or for blocking light-
beams . . . .”).
further, we disagree with Appellant that Shimauchi’s “sensor
information must be sequential in nature and not concurrent” in order for
Shimauchi to “display[] an initial [cursor] position to a user allowing the
user to make corrections before” providing key input. Reply Br. 2
(emphasis added), first, Shimauchi displays a cursor which indicates a
desired key selection based on pointer information determined by sensor 33.
Shimauchi 2:44-48 (“sensor 33 controls a cursor 20 for indicating this input
portion is displayed on the display screen 28”), figs. 2B-4; see Shimauchi
fig. 6. Second, Shimauchi inputs that selected key, i.e., detects a key press,
based on pointer information determined by sensor 31. Shimauchi 2:31—34,
3:15-18, fig. 5 ; see Shimauchi fig. 7.
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Although Shimauchi teaches an initial key selection and subsequent
key press/input, concurrently determining pointer information from sensors
31 and 33 does not require that the key selection and key press/input occur
concurrently. In the first step of displaying a cursor to select a key, sensor
33 positions the key selection cursor while sensor 31 determines that no key
press/input has occurred. Shimauchi Fig. 3; see Shimauchi Figs. 4—5.
Because no key is pressed/inputted in the first step, the concurrent pointer
determination of sensor 31 and sensor 33 does not prevent, i.e., render
inoperable, moving the cursor from key selection to key selection. And,
when the key is pressed/inputted in the second step, the cursor selection has
already been made, so the concurrent pointer determination of sensor 31 and
sensor 33 in the second step does not prevent the cursor from being moved
in the first step.
Additionally, Appellant’s argument that “[tjhere is simply no
reasonable basis” to combine Shimauchi and Lipman (App. Br. 8) does not
address the Examiner’s proffered rationale for the combination. In
particular, Appellant has provided no persuasive evidence, argument, or
elaboration as to why “providing] information to distinguish between spots
having different locations, orientation, shapes and sizes” (Final Act. 4, 8;
Ans. 5) would not have motivated the skilled artisan to combine Shimauchi
and Lipman.
Accordingly, we are not persuaded the Examiner improperly
combined Shimauchi and Lipman. We, therefore, sustain the 35 U.S.C.
§ 103(a) rejection of independent claims 1,11, and 15, as well as the 35
U.S.C. § 103(a) rejections of dependent claims 2—10, 12, 13, and 16, which
are not argued separately. See App. Br. 9—12.
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DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—13, 15 and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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