Motorola Mobility LLC

Patent Trials and Appeals Board

May 4, 2020

2019002166 (P.T.A.B. May. 4, 2020)

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.
14/711,833 05/14/2015 Rachid M. Alameh MM01283 1065
138908 7590 05/04/2020
Burrus Intellectual Property Law Group
(MM Files)
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
RETALLICK, KAITLIN A
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
BIPLaw_docketing@burrusiplaw.com
pburrus@burrusiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RACHID M. ALAMEH and PAUL STEUER
Appeal 2019-002166
Application 14/711,833
Technology Center 2400
Before CARL W. WHITEHEAD JR., GREGG I. ANDERSON, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Motorola
Mobility LLC. Appeal Br. 2.
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Application 14/711,833

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CLAIMED SUBJECT MATTER
The claims relate to a finger print sensor with passive proximity
detection for power savings in an electronic device. Spec., Title. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An electronic device, comprising:
a housing;
a user interface; and
one or more processors operable with the user interface;
the user interface comprising a fingerprint sensor
proximately located with at least one proximity sensor
component comprising an infrared signal receiver receiving an
infrared emission from an object external to the housing;
the at least one proximity sensor component actuating the
fingerprint sensor when the infrared signal receiver receives the
infrared emission from the object;
the at least one proximity sensor component disposed
about a perimeter of the fingerprint sensor.
REFERENCES
The prior art relied upon by the Examiner is:
Zhao
Mullins
Setlak
Vieta
Pi
US 2011/0050643 A1
US 2013/0076485 A1
US 2013/0314105 A1
US 2014/0003683 A1
US 2015/0146944 A1
Mar. 3, 2011
Mar. 28, 2013
Nov. 28, 2013
Jan. 2, 2014
May 28, 2015
REJECTIONS
Claims 1–5, 7–11, and 13–20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Mullins, Zhao, and Pi. Final Act. 17.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Mullins, Zhao, Pi, and Vieta. Id. at 33.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Mullins, Zhao, Pi, and Setlak. Id. at 35.
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ANALYSIS
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).
Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv).

Independent Claim 1
Issue 1: Did the Examiner err in finding that the combination of
Mullins, Zhao, and Pi teaches or suggests “the at least one proximity sensor
component disposed about a perimeter of the fingerprint sensor,” as recited
in claim 1? Appeal Br. 12–17; Reply Br. 8–11.
Appellant initially contends Mullins and Zhao do not teach or suggest
this limitation. Appeal Br. 12–15. These arguments are irrelevant because
the Examiner applies Pi, not Mullins or Zhao, to this limitation. Final
Act. 19–20. With respect to Pi, Appellant contends it would not be obvious
to modify Mullins and Zhao with Pi’s teachings “because a fingerprint
sensor physically separated from an infrared sensing pad, both of which are
surrounded by a conductive metal touch sensor ring is simply not what is
claimed.” Appeal Br. 16.
Appellant asserts the following Appellant-generated figure represents
the Examiner’s proposed combination:
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Id. The above figure appears to include an amalgamation of features from
Mullins, Zhao, and Pi. Appellant then contends,
The problem with this is that the resulting device is
simply not what is claimed. . . . Appellant does not claim a
fingerprint sensor, next to, but physically separated from, an
infrared sensing pad, surrounded by a conductive metal touch
ring. To the contrary, claim 1 recites a proximity sensor
disposed about a perimeter of a fingerprint sensor. Moreover,
the proximity sensor is not a metal touch ring. It is instead an
infrared signal receiver.
Id. at 17. Appellant continues, “there is no infrared signal receiver disposed
about a perimeter of the fingerprint sensor” in the above diagram. Id.
The Examiner finds that Pi discloses a proximity sensor component
disposed about a perimeter of the fingerprint sensor. Final Act. 20 (citing Pi
¶ 70). The Examiner further finds,
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It would have been obvious . . . to modify the teachings
of Mullins’ proximity sensor using light emission and detection
to determine the detection of a finger with the passive IR sensor
that uses the thermal radiation (IR radiation) from a user’s
finger to detect the user's finger as taught by Zhao. . . . It would
have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to modify the teachings of
Mullins and Zhao with the locating of a touch sensor around
the fingerprint detection module (sensor) as taught by Pi . . .
[See Pi, 0070].
Id. (emphasis added).
Appellant’s argument is unpersuasive. The Examiner is not proposing
a bodily incorporation of Pi and Zhao into Mullins. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“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.”). Instead, the Examiner proposes using, in Mullins’s proximity
sensor, detection of a finger with Zhao’s passive IR sensors and locating
those passive IR sensors around the fingerprint detection module as taught
by Pi. See Final Act. 20; Ans. 21–49.
Thus, Appellant’s arguments that “the proximity sensor is not a metal
touch ring [but] an infrared signal receiver” and that “there is no infrared
signal receiver disposed about a perimeter of the fingerprint sensor”
overlook that the Examiner is not bodily incorporating Pi’s touch ring into
Mullins, but rather finds, as we also find, that one of ordinary skill in the art
would have used Pi’s touch ring to show that Zhao’s IR sensors could go
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around Mullin’s fingerprint sensor. Appeal Br. 17. As Appellant has not
persuaded us of error2, we sustain the Examiner’s rejection of claim 1.
Independent Claim 9
Issue 2: Did the Examiner err in finding that the combination of
Mullins, Zhao, and Pi teaches or suggests “an infrared signal receiver,
proximately located with the fingerprint sensor with sides of the infrared
receiver and the fingerprint sensor abutting,” as recited in claim 9? Appeal
Br. 22–23; Reply Br. 15–16.
As with claim 1, Appellant reproduces the above figure and asserts it
represents the Examiner’s combination, arguing that the Final Action “fails
to provide a teaching of an infrared signal receiver abutting a fingerprint
sensor.” Appeal Br. 22–23. Appellant similarly contends, “the claim does
not recite a metal touch ring abutting a sensor chip.” Id. at 23. Moreover,
Appellant contends “the alleged motivation is suspect, as it does not appear

2 Appellant also implicitly makes a teaching away argument based on Zhao’s
film to protect “from hazardous elements such as dust and moisture.”
Appeal Br. 14, 17. Zhao, however, does not teach away from applying the
film in a different configuration, such as in an annulus to cover IR sensors
disposed around a fingerprint sensor as suggested by Pi. Zhao merely
discloses that “IR sensing pad 40 includes a film . . . covering IR detectors,”
which does not disparage alternative film configurations. Zhao ¶ 22
(emphasis added); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach
away . . . if it merely expresses a general preference for an alternative
invention.”). Appellant also implies a teaching away argument based on
Mullins, contending “there is a required physical separation between
Mullins’s fingerprint sensor, element 38, and the proximity sensor, element
40.” Appeal Br. 12–13, 17. But Appellant’s argument is based only on
Appellant’s own interpretation of Figure 3 of Mullins, which we do not
adopt, and not on any explicit disparagement in Mullins.
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relevant given the context of the primary reference” because “it is not clear
under the disclosed circumstances how reducing the distance required
between the sensor lines of Mullins in the combination and the infrared
sensing pad of Zhao in the combination would be beneficial.” Id.
The Examiner finds, and we agree, that Pi discloses a “receiver,
proximately located with the fingerprint sensor with sides of the . . . receiver
and the fingerprint sensor abutting.” Final Act. 26. The Examiner
specifically finds Pi teaches that the fingerprint sensor and IR receiver abut
each other. Id. (citing Pi ¶ 70 (touch sensor and detection module “border at
. . . the outline of the fingerprint detection module”)). The Examiner further,
finds, and we agree,
It would have been obvious . . . to modify the teachings of
Mullins’ sensor and Zhao’s IR sensor which are used to
determine the proximity and/or presence of an object (finger)
with the touch sensor for determining contact of an object
touching the fingerprint detection module as taught by Pi in
order to activate fingerprint detection module and main
processor out of standby mode in response to a light contact,
without additional user input through a mechanical switch, such
as actuating a physical button [See Pi, 0070].
Id. (emphasis added).
As with claim 1, Appellant makes a bodily incorporation argument,
which is unpersuasive.
We agree with the Examiner and find motivation for modifying
Mullins and Zhao with Pi’s fingerprint detection module “would have been
to improve the detection of the portion of the human body using the thermal
radiation from the body received by the passive IR sensor” of Zhao. Id.
Appellant’s argument against the combination does not mention Pi and
simply denies that “the combination would be beneficial.” Appeal Br. 23.
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This argument does not address the Examiner’s rationale to combine, and is
hence, unpersuasive.
In any event, Appellant does not point to any evidence of record that
the combination would be “uniquely challenging or difficult for one of
ordinary skill in the art” or “represent[] an unobvious step over the prior
art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19
(2007)). Nor has Appellant provided objective evidence of secondary
considerations, which our reviewing court states “operate[] as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). The Examiner’s findings are
reasonable because the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” because the skilled artisan
is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
420–21. The claimed subject matter exemplifies the principle that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416; see also Ans. 67–68 (modifications made would “yield predictable
results”).
We, therefore, sustain the Examiner’s rejection of claim 9.

Independent Claim 14
Issue 3: Did the Examiner err in finding that the combination of
Mullins, Zhao, and Pi teaches or suggests “at least one proximity sensor
component concentrically aligned with a fingerprint sensor,” as recited in
claim 14? Appeal Br. 24–25.
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Appellant contends that Mullins and Zhao do not teach concentric
alignment, but these arguments are again irrelevant because the Examiner
relies on Pi for “concentrically aligned.” Appeal Br. 24; Final Act. 30.
Appellant then contends,
Even assuming arguendo that Pi’s metal ring and its fingerprint
sensor have a common center, in making the rejection, the
Examiner uses Mullins's fingerprint sensor and Zhao’s infrared
sensing pad, with the latter modified into the Mullins invention
in accordance with the teaching of Mullins. This requires the
fingerprint sensor and metal ring to have non-common centers
to accommodate the infrared sensing pad of Zhao.
Appeal Br. 25. Appellant also contends that “placing a fingerprint sensor at
a common center with a metal ring is simply not what is claimed.” Id.
Appellant’s arguments again argue for a bodily incorporation that the
Examiner does not make. Rather, the Examiner finds, and we agree, that in
the combination, “Pi discloses determining, with at least one proximity
sensor component concentrically aligned with a fingerprint sensor.” Final
Act. 30 (citing Pi ¶ 70). Accordingly, Appellant does not persuade us of
error.

Dependent Claims
Appellant argues the following dependent claims separately: 2–4, 6,
11, and 12. Of these, Appellant persuades us of Examiner error only with
respect to claim 3.
Claim 3 recites, “the at least one proximity sensor component
circumscribing the fingerprint sensor.” Appellant contends that while “Pi
teaches a metal ring that surrounds a fingerprint sensor,” none of the
references “make known or obvious circumscribing a fingerprint sensor with
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an infrared signal receiver.” Appeal Br. 20. Although the Examiner again
relies on Pi in the combination for this feature (Final Act. 21; Ans. 58–59),
Appellant persuades us of Examiner error. Below is an image of Zhao’s IR
sensors (Figure 2):

Figure 2 of Zhao depicts an IR sensor pad, including four sensors 42–48. Id.
¶ 22. The sensors are passive IR detectors positioned at four corners of a
square for detecting various user inputs. Id. ¶¶ 22–24.
Even if Mullins were modified with Zhao and Pi, at most, one of
ordinary skill in the art would have placed Zhao’s IR sensors around
Mullins’s fingerprint sensor, according to the teachings of Pi.
We agree with Appellant that Zhao’s sensors, however, would not
circumscribe (e.g., surround as a boundary) the fingerprint sensor. See
Appeal Br. 18. Rather, Zhao’s sensors would occupy specific points around
the fingerprint sensor.
Likewise, although Pi’s metal ring circumscribes a fingerprint sensor
(see Pi Fig. 3C, ¶ 70), in the combination, we do not agree with the
Examiner that in the combination Zhao’s four IR sensors would
circumscribe Mullins’s fingerprint sensor. We, therefore, reverse the
Examiner’s rejection of claim 3.
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Appellant does not persuade us of error in the remainder of the
Examiner’s rejections. Claim 2, for instance, requires the fingerprint sensor
to be “collocated with the at least one proximity sensor component.”
Appellant contends that Mullins does not teach collocation because “Mullins
requires physical separation between the sensor array and the sensor
structure.” Appeal Br. 18. Appellant also relies on its bodily incorporation
figure (reproduced above) to argue against collocation. Appellant’s latter
argument is unpersuasive for similar reasons as set forth above, while
Appellant’s former argument overlooks the teachings of Mullins. Figure 3
of Mullins is reproduced below:

Figure 3 of Mullins depicts a cross-sectional view of a fingerprint reader,
including fingerprint sensors 38 and the optional additional sensor(s) 40.
Mullins ¶ 50. We find one of ordinary skill in the art would readily
appreciate from the above figure that, under the broadest reasonable
interpretation, the sensors 38 and 40 are collocated (e.g., set or placed
together). A small space between the sensors 38 and 40 does not obviate
this fact.
Claim 4 requires the fingerprint sensor to be “concentrically aligned
with the at least one proximity sensor component.” Appellant’s arguments
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for claim 4 mirror those for claim 14, and we find them unpersuasive for
similar reasons. See Appeal Br. 20–22.
Appellant also contends claim 6, which recites “the at least one
proximity sensor component disposed about only a portion of the perimeter
of the fingerprint sensor,” is patentable over Mullins, Zhao, Pi, and Vieta.
Appeal Br. 25. Specifically, Appellant contends that “Vieta, like Mullins,
requires physical separation between its orientation detectors and its
fingerprint sensor.” Id. (citing Vieta Fig. 3A). The Examiner finds Vieta
discloses “orientation sensors . . . disposed in one or more optional locations
about the touch I/O device 2012.” Final Act. 34 (emphasis omitted).
Appellant’s argument does not address the Examiner’s finding that Vieta
discloses sensors in one or more optional locations—and hence suggests
disposing a proximity sensor component about only a portion of the
perimeter. Thus, Appellant does not persuade us of error.
Claim 11 differs significantly from the previous claims, reciting:
11. The electronic device of claim 9, further comprising a
timer, one of the infrared signal receiver or the one or more
processors to initiate the timer when the infrared signal receiver
receives the infrared emission, and, where the fingerprint sensor
fails to capture and store fingerprint data prior to expiration of
the timer, transition the fingerprint sensor from the active mode
to the low-power or sleep mode.
Appellant contends “Zhao never uses the word ‘timer’ in its disclosure.”
Appeal Br. 23–24. Appellant makes other arguments about Zhao’s
teachings, but these arguments are all irrelevant because the Examiner finds
Mullins teaches or suggests the entirety of claim 11 and only relies on Zhao
redundantly for a portion of claim 11. Final Act. 27–28. As Appellant did
not make any argument that Mullins fails to teach or suggest claim 11 (other
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than a mere conclusory statement that it does not), Appellant’s argument is
unpersuasive. See Appeal Br. 24 (“The addition of Mullins and Pi to Zhao
fail to correct this deficiency because none of the references teach this
limitation.”).
For claim 12, Appellant contends the combination of Mullins, Zhao,
Pi, and Setlak fails to teach or suggest a “fingerprint sensor comprising a
push button.” Appeal Br. 25–26. Specifically, Appellant contends “Setlak
uses the fingerprint sensor itself for any proximity detection, thereby leading
one of ordinary skill in the art further away from Appellant’s claim 9.” Id. at
25–26 (citing Setlak ¶ 61). The Examiner finds Setlak discloses “a
biometric finger sensor 30 is carried by the pushbutton switch 24 to sense a
user’s finger 40.” Final Act. 35 (citing Setlak ¶ 41, emphasis omitted).
Appellant appears to make a teaching away argument, but it is unpersuasive
because Appellant’s cursory argument fails to explain why one of ordinary
skill in the art would not have used additional input from a pushbutton
sensor to confirm the input of another sensor, to detect user touch. The
claimed subject matter exemplifies the principle that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416. We
remind Appellant that arguments not made are waived. Frye, 94 USPQ2d at
1075; 37 C.F.R. § 41.37(c)(1)(iv). Therefore, we sustain the Examiner’s
rejection.
Apart from claim 3, then, we sustain the Examiner’s rejections of all
the dependent claims. See 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 7–11,
13–20
103 Mullins, Zhao, Pi 1, 2, 4, 5,
7–11, 13–
20
3
6 103 Mullins, Zhao, Pi, Vieta 6
12 103 Mullins, Zhao, Pi,
Setlak
12
Overall
Outcome
1, 2, 4–20 3
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART