Ex Parte Wong et al

Patent Trial and Appeal Board

Feb 17, 2016

11611746 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111611,746 12/15/2006 Yoon Kean Wong
12811 7590 02/19/2016
Mahamedi Paradice LLP (QCA)
1901 S. Bascom Ave.
Suite 600
Campbell, CA 95008
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. CONFIRMATION NO.
QCP142867Cl 4894
EXAMINER
THERIAULT, STEVENB
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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):
ocpat_uspto@qualcomm.com
wparadice@mppatentlaw.com
uspto@mppatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOON KEAN WONG, WILLIAM ROBERT HANSON, and
SHAWN R. GETTEMY
Appeal2014-003277
Application 11/611,746
Technology Center 2100
Before JEAN R. HOMERE, JESSICA C. KAISER, and
SHARON PENICK, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 5-7, 10-17, and 21-23, all of the claims pending
in the application.2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, L.P. (App. Br. 3.)
2 Claims 2--4, 8, 9, and 18-20 have been canceled. (App. Br. 18-20.)
Appeal2014-003277
Application 11/611,746
EXEMPLARY CLAIMS
Claims 1 and 14 are illustrative of the invention and are reproduced
below:
1. An electronic device configurable to operate in either a
proximity-dependent mode or a proximity-independent mode,
compnsmg:
a housing having a plurality of user-interface features
that are responsive to user contact;
one or more sensors to determine a proximity of the
electronic device to a user; and
a selection mechanism operable based on whether the
electronic device is operating in the proximity-dependent mode
or in the proximity-independent mode, configured to
automatically select at least one, but not all, of the plurality of
user-interface features to be inactive, based at least in part on
the determined proximity of the electronic device, so that user
contact with the selected inactive user-interface feature does not
interfere with operations of the electronic device when the
electronic device is operating in the proximity-dependent mode.
14. A method for configuring an electronic device for
use, the method comprising:
detecting an orientation of the electronic device based at
least in part on a proximity of the electronic device to a user;
selectively enabling an orientation-dependent mode or an
orientation-independent mode; and
based on the enabled mode of the electronic device,
selecting one or more user-interface features from a plurality of
user-interface features to be inactive, based at least in part on
the detected orientation of the electronic device, wherein the
one or more user-interface features are responsive to user
contact, so that when the one or more user-interface features are
selected to be inactive, user contact with the selected inactive
user-interface feature does not interfere with operations of the
electronic device.
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Application 11/611,746
REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 5-7, 10-13, 15, and 22 under 35
U.S.C. § 103(a) as being unpatentable over Hinckley (US 7,289,102 B2;
issued Oct. 30, 2007), Grivas (US 6,246,862 Bl; issued June 12, 2001), and
Briffett (US 6,154,665; issued Nov. 28, 2000). (Final Act. 6-9.)
The Examiner has rejected claims 14, 16, 17, 21, and 23 under 35
U.S.C. § 103(a) as being unpatentable over Hinckley, Grivas, and Kielsnia
(US 6,449,363 Bl; issued Sept. 10, 2002). (Final Act. 9-12.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions. In so far as they relate to issues raised in this appeal, we adopt
as our own the findings and reasons set forth by the Examiner in the Final
Action from which the appeal is taken and the reasons set forth in the
Examiner's Answer in response to Appellants' Appeal Brief (see Ans. 9-
27). We highlight and address specific findings and arguments for emphasis
as follows.
Claims 1, 5-7, 10--13, 22, and 23
Appellants argue none of the references cited by the Examiner teaches
or suggests an "electronic device configurable to operate in either a
proximity-dependent mode or a proximity-independent mode" or "a
selection mechanism operable based on whether the electronic device is
operating in the proximity-dependent mode or in the proximity-independent
mode," as recited in claim 1. (App. Br. 6-10; Reply Br. 4--9.) Specifically,
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Application 11/611,746
Appellants argue Briffett does not teach a proximity-independent mode.
(App. Br. 7 .) Appellants further argue Hinckley does not teach that its
selection mechanism is "operable based on whether the electronic device is
operating in the proximity-dependent mode or in the proximity-independent
mode" and Briffett does not teach a "selection mechanism." (Id. at 9-10.)
Appellants contend that modifying Hinckley's selection mechanism with
Briffett would not teach the "selection mechanism" of claim 1 and that "no
reasonable expectation of success could be expected" from doing so. (Id. at
10.)
We are not persuaded the Examiner errs in finding the combination of
references teaches or suggests the argued limitations. As an initial matter,
Appellants argue that none of the cited prior art discloses an electronic
device operable in two modes: proximity-dependent and proximity-
independent. (App. Br. 6-8; Reply Br. 7-8.) We observe that claim 1
recites its two modes using alternative language (i.e., an "electronic device
configurable to operate in either a proximity-dependent mode or a
proximity-independent mode" (emphasis added)). Thus, under a broadest
reasonable interpretation, the recited device need only be configurable to
operate in one of these modes (not both).
We find, and Appellants do not appear to dispute, that each of the
cited references teaches or suggests devices that operate in a proximity-
dependent mode (i.e., a mode that depends on proximity (see Spec. i-f 72
(suggesting that orientation-dependent is a state in which orientation is
relevant), i-f 35 (suggesting that orientation can be determined from
proximity))). Specifically, the references cited by the Examiner teach
electronic devices that include proximity sensors and perform actions based
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Application 11/611,746
on determined proximity (i.e., operate in a proximity-dependent mode). (See
Hinckley 5: 13-14, 8:27-31 (teaching an electronic device with a proximity
sensor and activating an audio receiver if conditions, including proximity,
are met); Grivas 3: 17-20 (teaching an electronic device with a proximity
sensor that disables the touch sensitive input device when in close proximity
to a user); Briffett 1:37--41 (teaching first and second proximity units, one of
which is associated with an electronic device, and preventing normal use of
the device if the proximity between the units is too great). Because claim 1
does not require both modes, Appellants' argument regarding an absence of
the proximity-independent mode are unpersuasive of error.
Even if claim 1 required both modes, we would nevertheless be
unpersuaded of Examiner error. As the Examiner finds (Ans. 9-10 (citing
Spec. i-f 71 )), Appellants' Specification suggests that a proximity-
independent mode is one in which the proximity of the device is irrelevant.
Under a broadest reasonable interpretation, a proximity-independent mode
encompasses a mode in which the proximity sensors recited in claim 1 are
disabled (i.e., not sensing proximity). As the Examiner notes, Briffett
teaches entering a sleep mode when the device is in a clip; in that sleep
mode, Briffett's proximity sensors are powered down. (Ans. 12; see also
Briffett 4:27-39.)
Appellants argue this mode in Briffett is proximity-dependent because
the device constantly detects whether it is still in the clip. (Reply Br. 7 .)
Nevertheless, Briff ett teaches a mode in which the proximity sensors are
irrelevant (when the device is in the clip, Briffett merely checks for an
electrical contact and the proximity units enter sleep mode). (See Briffett
4:27-39.) Appellants have not persuasively explained why applying this
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teaching to another proximity-independent mode (e.g., allowing a user to
disable the proximity sensors) would have been "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007). Thus, even if claim 1 required a device
configured to operate in both modes, we are not persuaded the Examiner errs
in finding Briffett teaches, or at least suggests, a proximity-independent
mode.
We are also unpersuaded that the Examiner errs in finding the cited
references teach or suggest "a selection mechanism operable based on
whether the electronic device is operating in the proximity-dependent mode
or in the proximity-independent mode," as recited in claim 1. As discussed
above, the cited references teach or suggest the recited modes, and as
Appellants acknowledge, at least Hinckley teaches or suggests a selection
mechanism (App. Br. 9-10). Although Appellants correctly contend that
"[ e ]vidence showing there was no reasonable expectation of success [in
modifying the cited references] may support a conclusion of
nonobviousness" (id. at 10), we observe that Appellants rely only on
attorney argument regarding expectation of success, which is not evidence.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence.").
Appellants further argue the cited references do not teach or suggest:
a selection mechanism ... configured to automatically select at
least one, but not all, of the plurality of user-interface features
to be inactive, based at least in part on the determined
proximity of the electronic device, so that user contact with the
selected inactive user-interface feature does not interfere with
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Application 11/611,746
operations of the electronic device when the electronic device is
operating in the proximity-dependent mode,
as recited in claim 1. (App. Br. 11.) In particular, Appellants argue Grivas
teaches "the entire 'touch-sensitive input device' is disabled" and that Grivas
does not teach a "selection mechanism," "as no selection occurs." (Id. at
11-12.)
We are not persuaded of Examiner error. As the Examiner finds (Ans.
22), Appellants' Specification broadly defines "user-interface feature" to
include "any component that provides output to a user, and/or enables users
to enter input." (Spec. i-f 30.) The Specification includes "speakers and
microphones" as examples of "user-interface features." (Id.) Accordingly,
the Examiner finds, and we agree, Grivas teaches the argued limitation
because when the device is close to a user's face, the touchscreen is inactive
but other user-interface features, such as the speaker, are not. (Ans. 22-23;
Grivas 3:3-8, 17-20.)
Appellants also argue the Examiner provided insufficient rationale for
combining the references in rejecting claim 1. (App. Br. 12-14; Reply Br.
9-10.) Specifically, Appellants argue the references "are dedicated to
different fields" and "are not analogous." (Id. at 12, 14.) Appellants also
argue the Examiner erred in applying a "piecemeal approach" to the
elements of claim 1 and the teachings of the references. (Id. at 13.)
Appellants further argue the references "could not be combined, based on
their established functions," that their combination "would not be
predictable," and that the Examiner's motivation is deficient because
"Briffett is not directed towards user interface features." (Id. at 13-14; see
also Reply Br. 9-10.)
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Application 11/611,746
None of these arguments is persuasive of error. First, we are
persuaded that all three references cited by the Examiner are analogous art.
To qualify as prior art for an obviousness analysis, a reference must qualify
as "analogous art," i.e., it must satisfy one of the following conditions: (1)
the reference must be from the same field of endeavor, or (2) the reference
must be reasonably pertinent to the particular problem with which the
inventor is involved. Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011). Here, as discussed above, Hinckley, Grivas,
and Briffett all relate to electronic devices that are controlled in part by
proximity and other sensors, and thus are all in the same field of endeavor.
We further discern no error in the Examiner's analytical approach,
which evaluated the teachings of the references to determine the differences
between them and the subject matter of claim 1. KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007) ("Section 103(a) forbids issuance of a patent
when 'the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made ... "'). In addition, Appellants
have not persuasively explained why the references "could not be combined,
based on their established functions," or why their combination "would not
be predictable" (App. Br. 13-14), particularly when considering that "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton," KSR, 550 U.S. at 421. Finally, we disagree with Appellants'
argument that "Briffett is not directed towards user interface features."
(App. Br. 14.) Briffett teaches changing an electronic device, such as a
telephone with a user interface, into a mode in which its normal use is
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Application 11/611,746
prevented. (Briffett 1:37--41, 2:53-55.) Thus, Briffett at least suggests that
user interface features would be affected in such a mode.
For the reasons discussed above, we sustain the Examiner's decision
to reject claim 1 and claims 5-7, 10-13, 22, and 23, not argued separately
(App. Br. 15).
Claims 14-17 and 21
Appellants argue none of the cited references teaches or suggests
"selectively enabling an orientation-dependent mode or an orientation-
independent mode; and based on the enabled mode of the electronic device,
selecting one or more user-interface features from a plurality of user-
interface features to be inactive," as recited in claim 14. (App. Br. 15-16;
Reply Br. 10-11.) We agree with the Examiner (Ans. 26-27) that Kielsnia
teaches selectively enabling the recited modes of a device. For example,
Kielsnia teaches a "tilt sensor 108 detects the position of orientation of the
phone," and checking the tilt sensor depending on whether or not a
speakerphone mode is selected. (Kielsnia 1:50-51, 65---66.) The Examiner
relies on the combination of Hinckley, Grivas, and Kielsnia as teaching or
suggesting the selecting step. (Final Act. 10-11; see also Ans. 26-27.)
Appellants have not persuasively addressed this combination of teachings.
For the reasons discussed above, we sustain the Examiner's decision
to reject claim 14 and claims 15-17 and 21, not argued separately (App. Br.
16).
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DECISION
The Examiner's decision to reject claims 1, 5-7, 10-17, and 21-23 is
affirmed.
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
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