Ex Parte StoppDownload PDFPatent Trial and Appeal BoardDec 15, 201713818474 (P.T.A.B. Dec. 15, 2017) Copy Citation 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. 2 Appeal 2017-007620 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 3 Appeal 2017-007620 Application 13/818,474 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. 4 Appeal 2017-007620 Application 13/818,474 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. 5 Appeal 2017-007620 Application 13/818,474 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 reviewâ€). 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 6 Appeal 2017-007620 Application 13/818,474 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 . . . .â€). 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 28â€), 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. 7 Appeal 2017-007620 Application 13/818,474 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. 8 Appeal 2017-007620 Application 13/818,474 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 9 Copy with citationCopy as parenthetical citation