Jeffrey KoziolDownload PDFPatent Trials and Appeals BoardMar 16, 20222022000326 (P.T.A.B. Mar. 16, 2022) Copy Citation 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. 15/900,020 02/20/2018 Jeffrey E. Koziol 68311-13 2935 35161 7590 03/16/2022 DICKINSON WRIGHT PLLC - WASHINGTON, DC 1825 EYE ST., NW SUITE 900 WASHINGTON, DC 20006 EXAMINER CHOW, VAN NGUYEN ART UNIT PAPER NUMBER 2623 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): dwpatents@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY E. KOZIOL ____________ Appeal 2022-000326 Application 15/900,020 Technology Center 2600 ____________ Before ALLEN R. MACDONALD, CAROLYN D. THOMAS, and JASON V. MORGAN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-14, 19, and 20. Claims 15-18 are withdrawn from consideration, but not canceled. See Appeal Br. 3. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on March 10, 2022. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventor Dr. Jeffrey Koziol. Appeal Br. 1. Appeal 2022-000326 Application 15/900,020 2 The present invention relates generally to a detachable passive or interactive display that interfaces with a fixed size portable communication or display device. See Spec., Abstr. Claim 1, reproduced below with disputed limitations emphasized, is representative: 1. A system comprising: a portable device including a first body and a first display screen providing a visual output of said portable device; and a host device including a second body and a second display screen and a compartment within said second body removably accommodating said portable device, wherein said second display screen interfaces with said portable device via at least one of a wired and a wireless communication when said portable device is placed in said compartment, such that said second display screen mimics at least one functional feature of said first display screen. REFERENCES The references relied upon by the Examiner are: Name Reference Date Sirpal US 2012/0081317 A1 Apr. 5, 2012 Stotler US 2015/0133193 A1 May 14, 2015 REJECTION Claims 1-14, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stotler and Sirpal. Final Act. 4- 6. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appeal 2022-000326 Application 15/900,020 3 ANALYSIS Firstly, Appellant contends: Indeed, whether or not Sirpal’s screens 104 and 108 can provide visual output, does not in any way explain how, or why one of ordinary skill in the art would have been motivated, to modify a thumb-sized touch pad of Stotler to include a display screen . . . “in order to receive input from the user” (as stated by the Examiner), since Stotler’s touch pad already does exactly that.” Appeal Br. 9. In essence, Appellant’s contentions are disputing the Examiner’s motivation for combining Stotler with Sirpal. However, we find that Appellant is mischaracterizing the Examiner’s latest motivation for combining the references. For example, although the Examiner concludes in the Non-Final Office Action, dated November 8, 2019, that the motivation is “in order to receive input from the user” (see Non-Final Act. 3), the Examiner’s motivation is modified in the Final Action dated June 23, 2020, and this modified motivation is advanced in the Answer dated August 23, 2021. Specifically, in the Final Office Action, the Examiner concludes that the motivation is “in order to receive visual output from said portable device.” See Final Act. 5; see also Ans. 3 (“[T]his will allow the user to easily view an image on Stotler’s display”). As such, we remind Appellant that the appeal before this panel is an appeal from the most recent Final Rejection (37 C.F.R. § 41.31(a)) and any subsequent communication is relevant only to the extent that it explicitly changes that Final Rejection. The Non-Final Office Action by its very nature does not change the Final Rejection it precedes. Should Appellant have concerns with the Examiner’s handling of a Non-Final Office Action Appeal 2022-000326 Application 15/900,020 4 before any claims have been twice rejected, such matters are petitionable to the Director prior to an appeal, rather than appealable to this Board. 37 C.F.R. § 1.181. Additionally, if Appellant believes that the new reasoning changed the basis of the rejection so as to make, in effect, a new ground of rejection, Appellant could have filed a timely petition under § 1.181 to reopen the prosecution of the subject application. See MPEP § 1207.03(IV). Whether a rejection on appeal constitutes a new ground of rejection is reviewed by way of petition, not appeal. With respect to the Examiner’s motivation advanced in the Final Action, and maintained in the Answer (see Final Act. 5; Ans. 3), we find Appellant’s aforementioned contentions unavailing given that Appellant is not addressing the latest findings/conclusion made by the Examiner. Secondly, Appellant contends that the Examiner does not “explain how, or why one of ordinary skill in the art would be motivated[] to modify a thumb-sized touch pad of Stotler to include a display screen.” Appeal Br. 9. For reasons noted below, we not only find that Stotler teaches using two displays, but we also view Appellant’s argument as a “bodily incorporation” argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but rather “what the combined teachings of those references would have suggested.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, “[t]he [E]xaminer is just taking the teachings of ‘visual output’ of Sirpal’s combining [that] with the ‘display device’ of Stotler, in order to provide a viewable image on the display for the user.” Ans. 4. The test for Appeal 2022-000326 Application 15/900,020 5 obviousness is not whether the features of Sirpal’s system could be bodily incorporated into Stotler’s system, but rather what the combined teachings of Sirpal and Stotler would have suggested to one of ordinary skill in the art. In any case, while it is not clear if Stotler’s Figure 1A illustrates two display devices, i.e., 120 and 100, we find that Stotler discloses various embodiments, at least one of which does illustrate a display screen that also functions as a touch track pad. See Fig. 5, ¶¶ 115, 123-24. Specifically, Stotler discloses that “500 - Display screen with direct response marker point tracking sensors for thumb control over command response actions of screen command movements of the thumb action.” Stotler ¶ 115; see also Fig. 5. Stotler clearly discloses that “[i]n another embodiment a Track Pad, and or designated track pad area can be on touch screen display predominantly operated by users thumb(s).” Stotler ¶ 207. As such, we find unavailing Appellant’s aforementioned contention that there is no reason “why one of ordinary skill in the art would be motivated[] to modify a thumb-sized touch pad of Stotler to include a display screen,” given that Stotler discloses a thumb-size touch pad including a display screen. Similarly, the other cited reference, i.e., Sirpal, discloses using two displays whereby the “touch sensitive screens 104 and 108 comprise liquid crystal display devices . . . [are] capable of providing visual output to a user.” See Sirpal ¶ 103. It is the combined teachings of Stotler and Sirpal that the Examiner is relying on to teach and/or suggest the claimed a first display screen providing a visual output of said portable device. See Final Act. 4-5. Appellant has not demonstrated error in the Examiner’s combination of the references to suggest the claimed invention. Appeal 2022-000326 Application 15/900,020 6 Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Stotler in view of Sirpal, likewise with the rejection of claims 2-14, 19, and 20, which are not argued separately with particularity. CONCLUSION The Examiner’s rejections of claims 1-14, 19, and 20 as being unpatentable under 35 U.S.C. § 103 is affirmed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-14, 19, 20 103 Stotler, Sirpal 1-14, 19, 20 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation