Ex Parte YEE

Patent Trial and Appeal Board

Feb 25, 2016

12276959 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/276,959 11124/2008
23696 7590 02/29/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Mong Suan YEE
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.
080912 5134
EXAMINER
PARDO, THUYN
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONG SUAN YEE
Appeal2013-009663 1
Application 12/276,959
Technology Center 2600
Before JEAN R. HOMERE, JOHN A. EV ANS,
and DANIEL J. GALLIGAN, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-51. Br. 26. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellant identifies the real party in interest as Qualcomm Incorporated.
Br. 4.
Appeal2013-009663
Application 12/276,959
Illustrative Claim
Independent claim 1 is illustrative of Appellant's invention and reads
as follows:
1. A method for initiating an action on a computing device,
compnsmg:
receiving on a touchsurface a series of movements and
touches defining a received shape;
comparing the received shape to a code shape stored in
memory; and
implementing an action linked to the stored code shape
when the received shape correlates to the code shape.
Tonouchi
Kennedy
Prior Art Relied Upon
US 2009/0090567 Al Apr. 9, 2009
(filed Sept. 18, 2008)
US 2010/0045627 Al Feb. 25, 2010
(claiming priority to
application filed Feb. 27,
2004)
Rejection on Appeal
Appellant requests review of the Examiner's rejection of claims 1-51
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Kennedy and Tonouchi. Final Act. 2---6.
ANALYSIS
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 26-33. 2
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed January 11, 2013) ("Br."), the Answer
(mailed March 19, 2013) ("Ans."), the Final Office Action (mailed July 11,
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Appeal2013-009663
Application 12/276,959
Issue: Under 35 U.S.C. § 103, did the Examiner err in finding
Kennedy and T onouchi are properly combined to teach or suggest "receiving
on a touchsurface a series of movements and touches defining a received
shape," as recited in claim 1? (Emphasis added).
First, Appellant argues the proposed modification of Kennedy with
Tonouchi is improper because it would render the operation of Kennedy's
system unsatisfactory for its intended purpose. Br. 26. In particular,
Appellant argues "the sole intended purpose of the invention in Kennedy is
use [of] a physical object having a fixed shape (i.e., 'signet') to provide the
security of a physical key to initiate actions (such as an authorization) on a
touch screen computer." Br. 27 (emphasis omitted) (citing Kennedy i-f 6).
Appellant further asserts that combining Kennedy with the abstract gesture
of Tonouchi frustrates this alleged purpose because "a user could no longer
know when the 'key' is stolen." Br. 27-28.
At the outset, we note Kennedy is equivocal about Appellant's
identified purpose. Contrary to Appellant's assertion, Kennedy states
"physical keys are expensive and the terminals must be equipped with a
locking mechanism that serve[s] no function other than security." Kennedy
i-f 6. This teaching suggests securing terminals with an authentication tool
that is less expensive than physical keys. We, therefore, agree with the
Examiner's finding that Tonouchi's disclosure of drawing a shape on a
2012), and the original Specification (filed November 24, 2008) ("Spec.")
for the respective details. We have considered in this Decision only those
arguments Appellant actually raised in the Brief. Any other arguments
Appellant could have made but chose not to make in the Brief are deemed to
be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Appeal2013-009663
Application 12/276,959
touchsurface by detecting a gesture input by a user using a pen or a finger
satisfies the purposes aspired in Kennedy of cost and versatility. Ans. 3--4
( citing Tonouchi i-fi-127-28).
Second, Appellant contends the proposed modification of Kennedy
would change the principle of operation thereof. Br. 28. Kennedy teaches
the use of objects on the touchscreen including a finger or stylus. Kennedy i1
4 7. Kennedy additionally teaches a signet roller 120F which is pressed and
rolled along the surface of the touch screen to form lines on the touch screen.
Kennedy i163, Fig. 7F. We agree with the Examiner that Tonouchi teaches
a stroke or handwriting of a gesture input by a user using a pen or a finger in
accordance with the same principle of operation of Kennedy. Ans. 3--4
(citing Tonouchi i-fi-127-28). Therefore, Appellant has failed to show that a
pen used for a stroke or handwriting of a gesture input would change
Kennedy's principle of operation.
Third, Appellant asserts Kennedy teaches against manual entry
because of the reliance on the tangible nature of the signet. Br. 29.
Specifically, Appellant argues Kennedy is motivated to use a physical key
such that the owner of the physical key would know when it was stolen
whereas a stolen login code leaves no indication of its misappropriation. Br.
29 (citing Kennedy i16). Appellant concludes Kennedy teaches against the
use of an intangible gesture, as taught by Tonouchi. Br. 29. This argument
is not persuasive. The Examiner correctly finds Tonouchi teaches using a
tangible object such as a pen for making the gesture input. Ans. 3--4 (citing
Tonouchi i-fi-127-28). Therefore, we concur with the Examiner's finding that
both Kennedy and Tonouchi use tangible objects for entry.
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Appeal2013-009663
Application 12/276,959
Appellant argues Tonouchi does not teach receiving a "series of
movements and touches defining a received shape on the touchsurface," as
recited in the independent claims. Br. 33. In particular, Appellant contends
Tonouchi teaches a single input stroke rather than multiple strokes required
for the claimed "series of movements and touches." Br. 33 (citing Tonouchi
i-fi-1 84, 88). This argument is unavailing. We agree with the Examiner that
Tonouchi's disclosure of detecting time-series coordinate data representing
handwriting of a gesture input teaches the recited "series of movements and
touches," because handwriting involves multiple movements and touches.
Ans. 3--4 (citing Tonouchi i-fi-127-28). It follows Appellant has not shown
error in the Examiner's rejection of claim 1.
Regarding rejection of claims 12, 24, 36, and 47, Appellant argues the
Examiner erred by not addressing receiving in a first computing device a
message from a second computing device including shape parameters of a
shape drawing received on a touchsurface of the second computing device as
a "series of movements and touches," and "implementing an action linked to
the stored code shape when the received shape correlates to the code shape,"
as recited in claim 12. Br. 31. This argument is persuasive. We agree with
Appellant that the Examiner has not shown where in the relied upon
references the disputed limitations are taught. Final Act. 6. Therefore, we
will not sustain this rejection.
Regarding the rejection of claims 2-11, 13-23, 25-35, 37--46, and 48-
51, because Appellant has either not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above, claims 2-11, 13-23,
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Appeal2013-009663
Application 12/276,959
25-35, 37--46, and 48-51 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
DECISION
We affirm the Examiner's rejection of claims 1-11, 13-23, 25-35,
37--46, and 48- 51 as set forth above. However, we reverse the rejection of
claims 12, 24, 36, and 47.
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-IN-PART
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