Hewlett-Packard Development Comphany, LP

Patent Trials and Appeals Board

Mar 31, 2021

2019006651 (P.T.A.B. Mar. 31, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/500,564 01/31/2017 David Bradley Short 84592958 6328
22879 7590 03/31/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
NOKHAM, JAMES S
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BRADLEY SHORT, JINMAN KANG, BEN WYNNE
and JANNIE ETCHESON

Appeal 2019-006651
Application 15/500,564
Technology Center 2600

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
PHILLIP A. BENNETT, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1, 2, 4, 6–11, 13–18, all of the claims
pending.2 Appeal Br. 5. Claims 3, 5, 12 are canceled. Claims App. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification filed Jan. 31, 2017 (“Spec.”); the Final
Office Action, mailed Nov. 26, 2018 (“Final Act.”); the Appeal Brief, filed
Apr. 9, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed July 23, 2019
(“Ans.”); and the Reply Brief, filed Sept. 9, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Hewlett-Packard Development Company, L.P., as the
real party in interest. Appeal Br. 2.
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We affirm.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to stylus
(100) equipped with control circuitry (120) to detect the magnitude of a
force applied to tip-switch (104) of the stylus as input to a computing device.
Spec. ¶¶ 14–16, Figs. 1, 2. Alternatively, upon a user actuating manual
switch (108), accelerometer (124) detects movement of stylus (100) in a
three dimensional (3D) space as input to the computer device thereby
overriding tip-switch (104) when no force is applied thereupon. Id.
Figures 1 and 2, reproduced and discussed below, are useful for
understanding the claimed subject matter:

Figure 1 above illustrates stylus (100) including tip-switch (104) coupled to
housing (102) encasing manual switch (108). Id. ¶ 14.

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Figure 2 above illustrates control circuit (120) to detect magnitude of force
applied to tip-switch (104), and accelerometer (124) to detect movement of
stylus (100) in 3D upon activation of manual switch (108). Id. ¶¶ 15–16.

Claims 1, 6, and 11 are independent. Claim 1, reproduced below with
disputed limitations emphasized, is illustrative:
1. A stylus for use with a computing device, comprising:
a tip-switch operatively coupled to the housing, wherein
the tip switch is responsive to an applied force;
control circuitry to detect the magnitude of a force
applied to the tip-switch and to produce a signal;
an accelerometer to detect movement of the stylus in
three dimensions;
a manual switch to override the tip-switch, wherein:
the stylus becomes operable when no force is applied to
the tip-switch, and movement of the stylus in three-dimensional
space during activation of the manual switch causes the
accelerometer to detect the movement of the stylus in three-
dimensional space and input to the computing device as writing
with the stylus; and
an antenna to transmit a signal representing the
magnitude of the force applied to the tip-switch to the
computing device.
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Appeal Br. 21 (Claims App.) (Emphasis added).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Clapper US 2004/0008189 A1 Jan. 15, 2004
Kim US 2004/0140963 A1 July 22, 2004
DeHaan US 2009/0273585 A1 Nov. 5, 2009
Zachut US 2010/0155153 A1 June 24, 2010
Stern US 2015/0116289 A1 Apr. 30, 2015
Stern (“WIPO”) WO 2013/160887 A1 Oct. 31, 2013
IV. REJECTIONS
The Examiner rejects claims 1–20 as follows:
Claims 1, 6, 11, and 14 are rejected as unpatentable under 35 U.S.C.
§ 103 over the combination of Zachut, Clapper, and DeHaan. Final Act. 2–9.
Claims 2, 7, 8, and 13 are rejected as unpatentable under 35 U.S.C
§ 103 over the combination of Zachut, Clapper, DeHaan, and Kim. Id. at 9–
11.
Claims 4, 10, 15–18 are rejected as unpatentable under 35 U.S.C
§ 103 over the combination of Zachut, Clapper, DeHaan, Stern, and WIPO.
Id. at 11–15.
Claim 9 is rejected as unpatentable under 35 U.S.C § 103 over the
combination of Zachut, Clapper, DeHaan, Kim, and Stern. Id. at 15–16.

3 All reference citations are to the first named inventor only.
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V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in the
Appeal Brief, pages 11–20 and the Reply Brief, pages 3–14.4 We are
unpersuaded by Appellant’s contentions. Except as otherwise indicated
herein below, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellant’s Appeal
Brief. Final Act. 2–18; Ans. 3–20. However, we highlight and address
specific arguments and findings for emphasis as follows.
Appellant argues that the combination of Zachut, Clapper, and DeHaan
does not teach or suggest
“a manual switch to override the tip-switch, wherein: the
stylus becomes operable when no force is applied to the tip-
switch, and movement of the stylus in three-dimensional space
during activation of the manual switch causes the accelerometer
to detect the movement of the stylus in three-dimensional space
and input to the computing device as writing with the stylus”

as recited in independent claim 1. Appeal Br. 11. In particular, Appellant
argues that Clapper’s disclosure of two buttons for controlling movement of
the stylus tip does not teach or suggest a manual switch overriding the tip-
switch thereby making the stylus operable when no force is applied thereto.
Id. at 12–13 (Clapper ¶ 21), Reply Br. 4–7. Further, Appellant argues that
DeHaan’s accelerometer detects movement of a stylus in a 2D space, and not

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Any other arguments Appellant could have
made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
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3D space, as required by the claim. Appeal Br. 13–15 (DeHaan ¶¶ 32, 45),
Reply Br. 7–9.
Appellant’s arguments are not persuasive of reversible Examiner error
because they are tantamount to an individual attack against Clapper and
DeHaan, as opposed to addressing the combined teachings of Zachut,
Clapper, and DeHaan, as relied upon by the Examiner in the rejection of
claim 1. One cannot show non-obviousness by attacking the references or
the embodiments thereof individually where the rejections are based on
combined teachings of the references and/or embodiments. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d
413, 425 (CCPA 1981).
As a preliminary matter, we note in applying the references, the
Examiner accounts for both a manual switch to override the tip-switch when
no force is applied thereto and the accelerometer to detect stylus movement
in 3D space, as required by the claim. In particular, the Examiner relies upon
Clapper’s manual switch controlling movement of Zachut’s stylus tip when
no force is applied thereon to teach the claim limitation of overriding the tip-
switch. Final Act. 3 (citing Clapper ¶¶ 21, 24); Ans. 18. We agree with the
Examiner, to the extent that overriding denotes controlling, Clapper’s
manual switch controlling the movement of tip switch when no force is
applied thereupon would be useful in overriding Zachut’s tip-switch. Id.
The Examiner further relies upon DeHaan’s disclosure of an
accelerometer detecting movement of a stylus in 3D (in an X-Y-Z plane, see
DeHaan ¶ 44) to complement the Zachut-Clapper combination thereby
providing an alternative input to the computing system. Ans 19 (citing
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DeHaan ¶¶ 32, 44, 45).5 We find the Examiner’s proposed combination of
the cited teachings Zachut, Clapper, and DeHaan is no more than a simple
arrangement of old elements with each performing the same function it had
been known to perform, yielding no more than what one would expect from
such an arrangement. See KSR, 550 U.S. at 416. Therefore, the ordinarily
skilled artisan, being “a person of ordinary creativity, not an automaton,”
would have been able to fit the teachings of the cited references together like
pieces of a puzzle to predictably result in a stylus that can alternatively use
the detected force applied to a tip-switch or the movement of the stylus in a
3D space as input to a computing device. Id. at 420–21.
Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we
are satisfied that, on this record, the Examiner has established by a
preponderance of the evidence that the combination of Zachut, Clapper, and
DeHaan teaches or suggests the disputed claim limitations. Because we are

5 “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.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “The obviousness analysis cannot
be confined by [the] formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of . . . the
explicit content of issued patents.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007).
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not persuaded of Examiner error, we sustain the Examiner’s rejection of
claim 1 as unpatentable over the combination of Zachut, Clapper, and
DeHaan.
Regarding the rejections of claims 2, 4, 6–11, 13–18, Appellant does
not present separate patentability arguments or reiterates substantially the
same arguments as those previously discussed for the patentability of claim
1 above. As such, claims 2, 4, 6–11, 13–18 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
For the above reasons, we affirm the Examiner’s rejections of claims
1, 2, 4, 6–11, 13–18.
VII. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 11, 14 103 Zachut, Clapper,
DeHaan
1, 6, 11, 14
2, 7, 8, 13 Zachut, Clapper,
DeHaan, Kim
2, 7, 8, 13
4, 10, 15–18 Zachut, Clapper,
DeHaan, Stern,
WIPO
4, 10, 15–18
9 103 Zachut, Clapper,
DeHaan, Kim,
Stern
9
Overall
Outcome
1, 2, 4, 6–
11, 13–18

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED