Ex Parte Sullivan et al

Patent Trial and Appeal Board

Dec 28, 2012

11132504 (P.T.A.B. Dec. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DARIUS M. SULLIVAN, NICHOLAS P.R. HILL,
VLADIMIR P. GONTCHAROV, and ROGER G. GEERE
____________________

Appeal 2010-008268
Application 11/132,504
Technology Center 2600
____________________

Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and MICHAEL
J. STRAUSS, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008268
Application 11/132,504

2
STATEMENT OF CASE
1

The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-25, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellants invented devices that utilize vibrations propagating
through a plate due to a contact to obtain information related to the contact,
for example a vibration sensing touch input device. Specification 1:10-12.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. For use with a vibration-sensing touch panel including a
touch plate for propagating contact-induced vibrations
representative of a touch input contacting the touch plate, a
method for distinguishing contact-induced plate vibrations from
acoustic noise-induced plate vibrations, the method comprising:
[1] detecting vibrations propagating in the touch plate;
[2] developing a signal representative of the vibrations;
[3] generating an energy spectrum for the developed signal;
and
[4] analyzing the energy spectrum for the presence of one or
more features characteristic of frequency-dependent efficiency
of ambient noise coupling into the touch plate.

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 8, 2009) and Reply Brief (“Reply Br.,” filed March 1,
2010), and the Examiner’s Answer (“Ans.,” mailed December 28, 2009),
and Final Rejection (“Final Rej.,” mailed April 3, 2009).
Appeal 2010-008268
Application 11/132,504

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REFERENCES
The Examiner relies on the following prior art:
Paradiso US 2003/0217873 A1 Nov. 27, 2003

Boll, Steven F., “Suppression of Acoustic Noise in Speech Using Spectral
Subtraction”, IEEE Transactions on Acoustic, Speech, and Signal
Processing, Vol. ASSP-27, No. 2, April 1979, pp. 113-120 (“Boll”)

REJECTIONS
Claims 21 and 25 stand rejected under 35 U.S.C. § 112 first paragraph
as failing to comply with the written description requirement.
Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paradiso and Boll.

ISSUES
The issue of whether the Examiner erred in rejecting claims 21 and 25
under 35 U.S.C. § 112 first paragraph as failing to comply with the written
description requirement turns on whether the disclosure conveys that
Appellants were in possession of the invention, with respect to claims 21 and
25.
The issue of whether the Examiner erred in rejecting claims 1-25
under 35 U.S.C. § 103(a) as being unpatentable over Paradiso and Boll turns
on whether the Examiner provided a clearly-articulated reason to combine
Paradiso and Bolls and whether Paradiso teaches away from Bolls.

Appeal 2010-008268
Application 11/132,504

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ANALYSIS
Claims 21 and 25 rejected under 35 U.S.C. § 112 first paragraph as failing
to comply with the written description requirement
The Examiner found that the Specification, as originally filed, fails to
provide support for the terms “pre-determining” and a “local maximum
energy peak” in such a way to convey to a person with ordinary skill in the
art that Appellants were in possession of the claimed invention. Ans. 3-4.
Appellants contend that claims 21 and 25 are fully supported by the
disclosure and specifically point to Specification 9:3-6 to support the “pre-
determining” step of claim 21 and Specification 8:9-12 to support the “local
maximum energy peak” of claim 25. App. Br. 7-8 and Reply Br. 7-9.
We agree with Appellants. To satisfy the written description
requirement the disclosure of the prior application must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
[the inventor] was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Claim 21 recites “pre-determining the one or more characteristic
features independently of the step of detecting vibrations representative of
ambient noise.” The Specification discloses discerning between common
noise events from valid contacts and then determining the type of noise
event based on spectral characteristics. Specification 8:30 – 9:6. Claim 25
recites “the one or more characteristic features further include a local
maximum energy peak close to the coincidence frequency.” The
Specification discloses “the coupled vibrations would be expected to show a
maximum for frequencies close to the panel coincidence frequency.”
Specification 8:11-12.
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A person with ordinary skill in the art would have understood that
Appellants were in possession of the claimed invention based on these
descriptions. That is, a person with ordinary skill in the art would have
understood that based on the disclosure of determining a type of noise event
independent of common noise events, Appellants were in possession of the
features recited in claim 21. A person with ordinary skill in the art would
have further understood that based on the disclosed maximum of frequencies
close to a panel coincidence frequency, Appellants were in possession of the
features of claim 25. As such, we do not sustain the Examiner’s rejection of
claims 21 and 25 under 35 U.S.C. § 112, first paragraph.

Claims 1-25 rejected under 35 U.S.C. § 103(a) as being unpatentable over
Paradiso and Boll
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusion reached by the Examiner. We highlight the following
arguments for emphasis.
Appellants contend that the Examiner failed to provide a clearly-
articulated reason to combine Paradiso and Boll. App. Br. 5-6 and Reply Br.
2-4 and 6-7. Appellants specifically argue that the Examiner has not
provided any explanation as to how Boll’s frame by frame residual noise
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reduction is applied to the dispersion effected noise signals of Paradiso.
App. Br. 6.
We disagree with Appellants. The Examiner found that a person with
ordinary skill in the art would have been motivated to combine Boll’s noise
suppression with Paradiso’s method for tracking impact in order to enhance
the accuracy of touch location determinations. Ans. 11-12. Appellants
merely argue that the Examiner has failed to provide an explanation as to
how a person with ordinary skill in the art would have arrived at a workable
combination, but fail to provide any evidence or rationale to rebut the
Examiner’s finding as to why a person with ordinary skill in the art would
have been motivated to combine the cited prior art or why the combination
of Paradiso and Boll would have rendered anything more than predictable
results. We agree with the Examiner that a person with ordinary skill in the
art would have understood to look to Boll in order to enhance the features of
Paradiso and absent any persuasive rationale or evidence from Appellants
we do not find error in the Examiner’s finding.
Appellants further contend that the Examiner’s proposed modification
undermines the purpose of Paradiso and Paradiso teaches away from being
modified by Boll. App. Br. 6-7 and Reply Br. 4-6. Appellants argue that
Boll’s frame by frame effectively assumes there is no frame overlapping or
dispersion. App. Br. 7. We disagree with Appellants. “A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.’ Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d
1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not teach
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away if it merely expresses a general preference for an alternative invention
from amongst options available to the ordinarily skilled artisan, and the
reference does not discredit or discourage investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
Appellants have not provided any evidence that Boll teaches away from the
techniques used by Paradiso. While Appellants argue that the techniques
used by Boll would render Paradiso inoperable, Appellants have not
provided any evidence to support such a statement. Absent any evidence to
support Appellants’ argument, we do not find error in the Examiner’s
rejection.

CONCLUSIONS
The Examiner erred in rejecting claims 21 and 25 under 35 U.S.C. § 112
first paragraph as failing to comply with the written description requirement.
The Examiner did not err in rejecting claims 1-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Paradiso and Boll.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 21 and 25 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description
requirement is reversed.
 The rejection of claims 1-25 under 35 U.S.C. § 103(a) as being
unpatentable over Paradiso and Boll is sustained.

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Application 11/132,504

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

ELD