Ex Parte Westerman et al

Patent Trial and Appeal Board

Jan 25, 2018

13072623 (P.T.A.B. Jan. 25, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/072,623 03/25/2011 Wayne Carl WESTERMAN 106842007302
(P5258USC2)
6379
69753 7590 01/29/2018
APPT F cln MORRTSON Rr FOFRSTFR T T P T A
EXAMINER
707 Wilshire Boulevard
Los Angeles, CA 90017
BOYD, JONATHAN A
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE CARL WESTERMAN and JOSHUA A. STRICKON
Appeal 2016-005338
Application 13/072,623
Technology Center 2600
Before CARL W. WHITEHEAD JR., JASON V. MORGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 on November 22, 2017 (“Request”) from our Decision on Appeal
mailed September 27, 2017 (“Decision”), wherein we affirmed the
obviousness rejection of claims 1-16. See Decision 6.
Appellants contend the Board misapprehended] the arguments
directed at Fujimoto because:
The Decision states that “Appellants’ arguments fail to
address the Examiner’s findings that Westerman discloses
combining disparate touches into single entities,” and then on the
Appeal 2016-005338
Application 13/072,623
basis of this misapprehension goes to allege that “Appellant’s
arguments are directed to Fujimoto alone.”
Appellant was responding directly to an assertion made by the
Examiner in forming a prima facie case of obviousness. By
rebutting the Examiner’s assertion, Appellant was necessarily
arguing that the combination as a whole did not teach or suggest
each and every element of the independent claims.
Request 3.
Appellants further contend:
Fujimoto does not disclose merging touches when at least one
of the touches is greater than a predetermined size (i.e., the
merging condition). Rather, Fujimoto discloses eliminating
touches that are greater than (or less than) a predetermined size-
eliminating is not merging. Whereas eliminating touches results
in the areas of the eliminated touches being ignored or removed
from the touch image of interest, with the resulting touch image
being analyzed without those touch areas, merging touches
retains and combines the areas of the touches being merged, and
the resulting touch image is analyzed with those touch areas.
Request 3—4.
Eliminating touches might not be the same as merging touches as
Appellants argue, however, the Examiner relied upon Fujimoto to modify
the combination of Bisset and Westerman wherein the noted combination
taught merging and further taught “a number of touch pixels in at least one
of the two touch patches.” See Final Action 5-7. We disagree with
Appellants’ contention that arguing Fujimoto alone responds directly to the
Examiner’s reliance upon a combination of references. See Request 3.
Further, we do not find Appellants’ recognition in the Reply Brief that
Westerman allegedly taught merging persuasive because mere recognition is
not sufficient to rebut the Examiner’s findings. See Request 2-3. Further,
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Appeal 2016-005338
Application 13/072,623
the issue was not addressed in the Appeal Brief. See Optivus Tech., Inc. v.
Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir 2006) (“[A]n issue not
raised by an appellant in its opening brief... is waived.”) (citations and
quotation marks omitted).
Appellants contend the Board overlooked the argument that “the
Examiner had improperly dissected the claims in formulating [the] prima
facie case of obviousness.” Request 4; see Appeal Brief 8-9. Appellants
argue, “In mapping this feature to Fujimoto, the Examiner explicitly rewrites
the limitations to dissect and extract out the claimed ‘merging’ from the
remainder of the limitations.” Appeal Brief 9. It is respectfully noted that
the argument was not overlooked; we did not find the argument persuasive
because it was conclusory. See Answer 13-14. Attorney “argument. . .
cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(attorney arguments or conclusory statements are insufficient to rebut a
prima facie case).
Appellants further contend Appellants “argued in its Reply Brief that
the Examiner's combination of Westerman and Fujimoto would render
Westerman inoperable for its intended purpose.” Request 4. The argument
was not timely addressed in the Appeal Brief. See Optivus Tech, 469 F.3d at
989.
Appellants’ Request for Rehearing has been granted to the extent that
our decision has been reconsidered, but such request is denied with respect
to making any modifications to the decision.
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Appeal 2016-005338
Application 13/072,623
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).
REHEARING
DENIED
4