Ex Parte Westerman et al

Patent Trial and Appeal Board

Feb 2, 2016

11830815 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111830,815 07/30/2007
69753 7590 02/04/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
WAYNE WESTERMAN
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.
106842508605
(P3950USC14)
CONFIRMATION NO.
3426
EXAMINER
ABEBE, SOSINA
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
02/04/2016 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE WESTERMAN and JOHN G. ELIAS
Appeal2013-009956
Application 11/83 0,815
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 21-68. App. Br. 8-20. Claims 1-20
have been cancelled. Id. at 8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2013-009956
Application 11/83 0,815
STATEMENT OF THE CASE
Introduction
Appellants' disclosure relates to an apparatus and methods "for
simultaneously tracking multiple finger and palm contacts as hands
approach, touch, and slide across a proximity-sensing, multi-touch surface."
Abstract. Claim 21 is reproduced below for reference (with emphases
added):
21. A method of selecting an input activity of a computing
system including a touch sensing surface, the method
compnsmg:
obtaining tracking information of contacts, each contact
corresponding to a hand part contacting the touch sensing
surface, the tracking information including first tracking
information of a first contact, the first tracking information
including touchdown information of the touchdown of the first
contact, liftoff information of the liftoff of the first contact, and
lateral motion information of lateral motion of the first contact
between the touchdown and liftoff of the first contact;
determining \'l1hether the first contact is a resting contact,
a resting contact not used to select input activity, wherein the
determination is based on the touchdown information of the
first contact;
periodically processing the tracking information, the
processing including selection of input activities of the
computing system, the selection of each input activity being
based on the tracking information of a set of one or more
contacts, wherein
the periodic processing selects a first input activity based
on at least one of the touchdown information, the lateral motion
information, and the liftoff information of the first contact,
unless the first contact is determined to be a resting contact,
and
if the first contact is determined to be a resting contact,
the periodic processing excludes the first tracking information
from the tracking information of the set such that the first
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Application 11/83 0,815
tracking information is excluded from the selection of input
activities.
The Examiner's Rejections
Claims 21, 22, 28-32, 37, 38, 44--48, 53, 54, and 60----64 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Ballare (US 6,208,329
Bl; Mar. 27, 2001) and D'Amico (US 5,956,020; Sept. 21, 1999). Final
Act. 2.
Claims 23-26, 36, 39--42, 52, 55-58, and 68 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ballare, D' Amico, and Greanias
(US 4,686,332; Aug. 11, 1987). Final Act. 8.
Claims 27, 33-35, 43, 49-51, 59, and 65----67 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ballare, D' Amico, Greanias, and
Yasutake (US 5,483,261; Jan. 9, 1996). Final Act. 10.
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. Any arguments Appellants could
have made but chose not to make in the briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv)(2012). We adopt the Examiner's findings and
conclusions (see Final Act. 2-14; Ans. 2----6) as our own, and we add the
following primarily for emphasis.
Appellants argue the Examiner erred in rejecting independent claim
21, because the cited references fail to teach the claimed steps relating to
"the first contact is determined to be a resting contact." App. Br. 4.
Particularly, Appellants contend "D' Amico's system relies on the difference
between a finger contact and a pen contact in order to discriminate between
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Application 11/83 0,815
pen and finger inputs" whereas "claim 21 specifies that each contact
corresponds to a hand part." App. Br. 5. Appellants contend, therefore, that
"D' Amico is incapable of detecting a resting hand contact." App. Br. 6.
The Examiner first finds that Ballare "teaches the selection of input
activities" based on a contact of a finger. Ans. 4--5 (citing Ballare Figs. 2-3;
5:4--50). The Examiner additionally finds that D' Amico discloses the first
contact can "be a resting contact (For instance, as seen in fig. 4, when the
user['s] hand [is] resting on the touchscreen while writing)," and "if the first
contact is determined to be a resting contact, excluding tracking information
of the first contact (fig. 4; user hand resting) from the tracking information
of the set of contacts (e.g., pen, finger contact) on which selection of input
activity is based (col. 5; lines 9-27)." Ans. 4. 1
We are not persuaded the Examiner erred. Appellants' arguments are
directed to the pen input of D' Amico, and fail to consider the combined
teaching of Ballare and D' Amico with respect to finger input. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art."). Here, Appellants have not provided persuasive
reasoning or evidence to refute the Examiner's determination that the
1 Appellants contend in the Reply Brief that "[t]he Examiner appears to
agree that D 'Amico is incapable of detecting a resting contact, and that it
actually teaches away from a hand-contact-only-system." Reply Br. 3. We
find no support in the record for this interpretation of the Examiner's
statements.
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Application 11/83 0,815
combination of the references2 discloses selecting an activity based on the
first contact, unless the first contact is determined to be a resting contact,
each contact corresponding to a hand part.
Accordingly, we do not find the Examiner erred in rejecting
independent claim 21, or independent claims 3 7 and 5 3 and dependent
claims 22-36, 38-52, and 54---68 not argued separately. App. Br. 6.
CONCLUSION
Appellants have not persuaded us the Examiner erred in rejecting
claims 21---6 8.
DECISION
We affirm the Examiner's rejections of claims 21---68 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 Additionally, we agree with the Examiner that D' Amico teaches or
suggests each contact corresponding to a hand part, as D' Amico discloses
"the terms 'finger' and 'hand' are both intended to refer to inputs entered by
contacting of the touchscreen with a body part such as a finger or hand."
D'Amico 4:39--41; see also Ans. 4.
5