Nikhil M. Bhatt

Patent Trials and Appeals Board

Aug 22, 2019

14863099 - (D) (P.T.A.B. Aug. 22, 2019)

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.
14/863,099 09/23/2015 Nikhil M. Bhatt P14751USC1/7777000051720 1914
150004 7590 08/22/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
YANG, JIANXUN
ART UNIT PAPER NUMBER
2664
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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):
dentons_PAIR@firsttofile.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIKHIL M. BHATT1
____________

Appeal 2018-000017
Application 14/863,099
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JASON M. REPKO, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–10 and 13–22, all the pending
claims in the present Application. Claims 11 and 12 are canceled (see
Claims Appendix). We have jurisdiction over the Appeal under 35 U.S.C.
§ 6(b). Oral Hearing was waived.
We AFFIRM.

1Appellant names Apple Inc. as the real party in interest (App. Br. 4).
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The present invention relates generally to a wearable device that
communicates with a host device (see Spec., Abstract).
Claim 1 is illustrative:
1. A wearable device, comprising:
a memory configured to store computer-executable
instructions;
a touch-screen display; and
a processor configured to access the memory and
execute the computer-executable instructions to at least:
detect that the wearable device is being worn by a
user;
while the wearable device is in a first position with
respect to the user:
maintain a backlight of the touch-screen display in
an off-state; and
determine, based at least in part on sensor data
from one or more sensors of the wearable device, that the
wearable device has moved from the first position with respect
to the user to a second position that is viewable by the user;
in accordance with the determination that the
wearable device has moved from the first position to the second
position:
maintain the backlight of the touch-screen display
in the off-state; and
determine that the wearable device has been
rotated to a third position that is viewable by the user and is
substantially at a same height as the second position; and
in accordance with the determination that the
wearable device has been rotated from the second position to
the third position, transition the backlight of the touch-screen
display of the wearable device to an on-state.

Appellant appeals the following rejection:
Claims 1–10 and 13–22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Winkler (US 2013/0222270 A1, Aug. 29, 2013) and
Fitzgerald (US 2009/0195497 A1, Aug. 6, 2009).
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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).

ANALYSIS
Issue: Did the Examiner err in finding that Winkle and Fitzgerald
collectively teaches or suggests the wearable device has moved from the first
position with respect to the user to a second position that is viewable by the
user . . . [and] maintain the backlight of the touch-screen display in the off-
state, as set forth in claim 1?
Appellant contends that “as described by Fitzgerald, if the device is
within all of the noted viewable ranges (which are not physiologically
impossible), the display would be active” (App. Br. 17), and “Appellant’s
display is configured to be off in both the first position and the second
position, where (as claimed) the second position is ‘viewable by the user’”
(id. at 18). Appellant further contends that “the device in Fitzgerald would
be active in at least the second and third positions, which are both ‘viewable
by the user’ . . . as such, Fitzgerald would have no need to ‘transition the
backlight . . . to an on-state’ according to ‘the wearable device [being]
rotated . . . to [a] third position” (id.). We disagree with Appellant.
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
The Examiner finds that Fitzgerald “firstly, determine a reference
display orientation (Fig. 4, step 400, i.e., an angular position, read[s] on ‘first
position’)” (Ans. 26); Fitzgerald then discloses “the display is changed from
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the reference orientation (‘first position’) but is found (by tracking) not
within the above predetermined angular position, (i.e., in an angular position
that reads on ‘second position’)” (id. (emphasis added)); and finally
Fitzgerald teaches “[o]nly when the display orientation is changed to a
predetermined angular position within a range (‘rotational angle range in
each of x, y, and z axes,’ Fig. 4, step 404) viewable by a user (read[s] on
‘third position’)” (id.).
In other words, the Examiner’s findings associate the claimed “second
position” with a position in Fitzgerald that is removed from the reference
orientation position and very near the predetermined range of angular
positions. Also, the Examiner emphasizes that in Fitzgerald “[t]he device is
viewable by a user in the [aforementioned] ‘second position’ and . . . the
display of the device in the ‘third position’ is viewable by the user” (Ans.
27). Stated differently, the Examiner concedes that “the display in the
‘second position’ [of Fitzgerald] is not viewable by the user even though the
device (not the display) is viewable by the user in the ‘second position’”
(id.).
As such, the Examiner interprets claim 1 as merely requiring that the
device itself be viewable at the second position, not necessarily the display
of the device, and that the display needs to be in the off-state in this position,
which the Examiner finds is taught in Fitzgerald. We agree with the
Examiner.
We find that claim 1, as written, fails to clearly require that it is the
touch-screen display that is viewable, in the second position. The Examiner
interprets claim 1 as requiring the wearable device to be viewable in the
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second position, and Appellant appears to be arguing that the touch-screen
display of the wearable device must be viewable at the second position.
Appellant’s Specification discloses:
Certain embodiments relate to facilitating user operation
of a wearable device, e.g., by automatically activating a user
interface of the wearable device in response to an event
indicating that a user is likely to begin using the wearable
device. For example, the wearable device can have a motion
sensor that it can use to detect a motion characteristic of a user
moving the wearable device into a viewing position. In the
case of a wrist-worn device, for instance, the characteristic
motion can correspond to a motion that moves the user’s wrist
into the user’s line of sight.
Spec. ¶ 12. In other words, the present invention maintains the touch-screen
display of a wearable device in an off-state until the wearable device has
moved to and rotated from a viewable second position to a viewable third
position. Although Appellant’s Specification suggests having the “display”
in the line of sight of the user, and we interpret claims broadly but
reasonably in light of the Specification, we nonetheless must not import
limitations from the Specification into the claims. See Phillips v. AWH
Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc) (citations
omitted). The claims measure the invention. See SRI Int’l v. Matsushita
Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During
prosecution before the USPTO, claims are to be given their broadest
reasonable interpretation, and the scope of a claim cannot be narrowed by
reading disclosed limitations into the claim. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). We interpret claim 1 to merely require that the
wearable device has moved and is viewable by the user, not necessarily the
display on the device. Thus, we find that the Examiner’s interpretation of
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claim 1 is reasonable, i.e., the wearable device is viewable in the second
position.
With that in mind, the Examiner finds that Fitzgerald teaches “[a]
motion tracking process . . . that the (n-1)th display angular measurement
point (i.e., ‘second position’) is not within the above predetermined angular
position so that the display is determined to remain off” (Ans. 26), and “[a]s
long as the motion tracking or measurement is conducted reasonably fast,
the (n-1)th measurement point (i.e., ‘second position’) and the nth
measurement point (i.e., ‘third position’) can be substantially close in an
x/y/z coordinate system” (id. at 27). We agree with the Examiner that the
claimed “the wearable device has moved from the first position with respect
to the user to a second position that is viewable by the user” reads on the
aforementioned teachings of Fitzgerald. We also find sufficient the
Examiner’s aforementioned interpretation of the claimed “a third position
that is viewable by the user and is substantially at a same height as the
second position” (emphasis added).
Appellant further contends that “even if, arguendo, the angle ranges
where the same as Appellant’s first and second positions . . . Fitzgerald still
fails to describe the specific motion and rotation of Appellant’s claim 1 . . .
the Examiner appears to believe that Fitzgerald only teaches two positions”
(App. Br. 20), and Appellant contends that it “is unable to find any reference
in Fitzgerald to three different spatial locations” (id. at 20–21). For the same
reasons noted supra, we find Appellant’s contentions unavailing, given that
the Examiner has shown a first, a second, and a third position consistent with
the claimed invention.
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Appellant further contends that in the cited portion of Fitzgerald
“Appellant is unable to see how this discloses ‘transition[ing] the backlight
. . . to an on-state,’ according to ‘the wearable device [being] rotated . . . to
the third position’” (App. Br. 21). The Examiner finds, and we agree, that
the claimed “rotated from the second position to the third position, transition
the backlight of the touch-screen display of the wearable device to an on-
state” reads on Fitzgerald’s “nth display angular measurement point” (see
Ans. 27; see also Fig. 4). For example, Fitzgerald discloses that “[t]he
display 18 is enabled when the device 10 is within a viewable range . . . a
predefined rotational angle range . . . . Enabling the display 18 can take the
form of turning on the display 18” (see Fitzgerald ¶ 48). This portion of
Fitzgerald suggests that the display is turned on automatically. Thus, we
find unavailing Appellant’s further contention that “the device of Fitzgerald
requires the user to touch the screen in order to activate the display” (see
App. Br. 25), given that this feature is not explicitly required for each and
every embodiment, albeit for some embodiments, e.g., if the display is
facing the ground (see Fitzgerald ¶ 58).
Appellant also contends that “Winkler fails to remedy the deficiencies
noted above with respect to Fitzgerald” (App. Br. 26). We find this
contention unavailing given that there are no deficiencies found in
Fitzgerald.
For at least the reasons noted supra, we sustain the Examiner’s
rejection of independent claim 1. For similar reasons, we also sustain the
rejection of independent claims 9 and 15, as Appellant has not sufficiently
distinguish any limitations found therein (see App. Br. 27–48). As for
Appellant’s argument regarding the dependent claims (see id. at 48–51), we
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find that Appellant has not sufficiently distinguished the claimed features
from the teachings identified in Fitzgerald (combined with Winkler) as
presented by the Examiner.

DECISION
We affirm the Examiner’s § 103 rejection.
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)(iv).

AFFIRMED