Parade Technologies, Ltd.

Patent Trials and Appeals Board

Oct 6, 2021

2020001070 (P.T.A.B. Oct. 6, 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.
15/289,091 10/07/2016 Jeffrey Tucker 105700-5129-US 7645
24341 7590 10/06/2021
Morgan, Lewis & Bockius LLP (PA)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
NGUYEN, JIMMY H
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte JEFFREY TUCKER, TOM BENTSON, MARCIN LOBROW,
and GARY STERLING
_______________

Appeal 2020-001070
Application 15/289,091
Technology Center 2600
_______________

Before JAMES R. HUGHES, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals from a Non-Final Rejection of claims 1–20. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b). See Ex
parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Parade Technologies, Ltd as the real party in interest. Appeal Br. 4.
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Application 15/289,091

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
integrating touch detection and force sensing in a touch detection device.
Spec. ¶ 4. According to the Specification, touch screens using capacitive
sense arrays are widely used in myriad products incorporating a touchscreen
display. Spec. ¶ 5. It is known that when an object touches the touchscreen
display, the capacitance of capacitive sense elements of the capacitive sense
array changes. Spec. ¶ 5. A change in capacitance may be measured as a
change in mutual capacitance or self capacitance. See Spec. ¶ 74. A
processing device may therefore detect a change in capacitance and
determine the location and presence of a touch. Spec. ¶ 5. However,
Appellant identifies instances in which a false or invalid touch is detected,
but needs to be suppressed, such as “when a user holds a touch sensing
surface with a grip on or near an edge of the touch sensing surface.” Spec.
¶¶ 6, 256.
In a disclosed embodiment, Appellant describes detecting a touch,
comparing a capacitance variation measured by force sensors located near
the edge of the touch sensing surface to a capacitance variation measured by
force sensors not located in the edge area, and associating the detected touch
with a grip on the edge of the touch sensing surface. Spec. ¶¶ 256–265,
Figs. 19, 21.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method of detecting touch events on a touch sensing
surface coupled to a capacitive sense array, comprising:
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at a processing device coupled to a capacitive sense array
and a plurality of force electrodes, wherein the capacitive sense
array includes a plurality of sense electrodes, and the plurality of
force electrodes includes a first subset of force electrodes that
are located at an edge area and a second subset of force
electrode that are not located at the edge area:
obtaining a plurality of capacitive sense signals
from the plurality of sense electrodes of the capacitive
sense array;
in accordance with the plurality of capacitive sense
signals, detecting one or more candidate touches on the
touch sensing surface, the one or more candidate touches
including a first candidate touch;
obtaining a plurality of force signals from the
plurality of force electrodes;
determining a capacitance variation of each force
electrode; and
in accordance with a determination that the
capacitance variations of the first subset of force
electrodes that are located at the edge area are greater
than the capacitance variations of the second subset of
force electrodes that are not located at the edge area:
associating the first candidate touch with a grip on
the edge area of the touch sensing surface; and
designating the first candidate touch as an invalid
touch.

The Examiner’s Rejections
1. Claims 1–20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Non-Final Act. 3.
2. Claims 1–20 stand rejected under 35 U.S.C. § 112(a) for failing
to comply with the written description requirements. Non-Final Act. 3–4.
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3. Claims 1, 4–13, and 15–20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Pirogov et al. (US 9,164,605 B1; Oct. 20,
2015) (“Pirogov”); Kim et al. (US 2016/0085336 A1; Mar. 24, 2016)
(“Kim”); and Tanimoto et al. (US 2014/0300559 A1; Oct. 9, 2014)
(“Tanimoto”). Non-Final Act. 5–14.
4. Claims 2, 3, and 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Pirogov, Kim, Tanimoto, and Bulea et al. (US
2011/0141053 A1; June 16, 2011) (“Bulea”). Non-Final Act. 14–16.
5. Claims 1, 4–13, and 15–20 stand (cumulatively) rejected under
35 U.S.C. § 103 as being unpatentable over Pirogov, Richards et al. (US
2016/0034088 A1; Feb. 4, 2016) (“Richards”), and Tanimoto. Non-Final
Act. 17–25.
6. Claims 2, 3, and 14 stand (cumulatively) rejected under
35 U.S.C. § 103 as being unpatentable over Pirogov, Richards, Tanimoto,
and Bulea. Non-Final Act. 25–27.

ANALYSIS2
Rejection under 35 U.S.C. § 112(b)
The Examiner concludes that the claimed “edge area” (i.e., “wherein
the plurality of force electrodes includes a first subset of force electrodes
that are located at an edge area and a second subset of force electrode[s] that
are not located at the edge area”) is not clearly defined and is, therefore,

2 Throughout this Decision, we have considered the Appeal Brief, filed
June 12, 2019 (“Appeal Br.”); the Reply Brief, filed November 18, 2019
(“Reply Br.”); the Examiner’s Answer, mailed September 16, 2019 (“Ans.”);
and the Non-Final Office Action, mailed December 31, 2018 (“Non-Final
Act.”), from which this Appeal is taken.
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indefinite. Non-Final Act. 3; Ans. 3. Moreover, the Examiner determines
the claims require the location of a first set of force electrodes to be within
the edge area, but not the capacitive sense electrodes. Ans. 3–4
(distinguishing the claim language from the disclosure in paragraph 261 of
the Specification).
As an initial matter, contrary to the Examiner’s statement (see Ans. 3–
4), we do not find the claim language precludes capacitive sense electrodes
from also being located in the edge area. Moreover, a force electrode merely
refers to an electrode that is used to detect force applied on the touch sensing
surface. Spec. ¶ 67. As disclosed in the Specification, force signals may be
measured as a capacitance variation among the force electrodes. Spec. ¶ 67.
The test for definiteness under 35 U.S.C. § 112(b) is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986). “A claim is not ‘indefinite’ simply
because it is hard to understand when viewed without benefit of the
specification.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed.
Cir. 2001).
Thus, the issue is whether one of skill in the art would understand
what the “edge area,” as recited in the claims, means when read in the
context of the Specification.
Here, we agree with Appellant (see Appeal Br. 15; Reply Br. 7) that in
light of the Specification, one of ordinary skill in the art would understand
what is meant by the claimed edge area. In particular, Appellant describes
the capacitive sense electrodes associated with the capacitive sense signal
and force signal are located “within a predetermined distance from an edge
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of the touch sensing surface.” Spec. ¶ 261. Figure 19 of the Specification
also illustrates a grip (1902A) that would be within the edge area of the
touch sensing surface. See Spec. ¶ 259, Fig. 19. One of ordinary skill in the
art would understand that, in light of the Specification and in the context of
the claimed invention, the “edge area” is the area near the edge of the touch
sensing surface where a grip may be anticipated to occur.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
20 under 35 U.S.C. § 112(b).

Rejection under 35 U.S.C. § 112(a)
The Examiner finds there is insufficient written description support
for how to identify a first candidate touch as a grip on the edge area of the
touch sensing surface, as generally recited in claim 1. Non-Final Act. 3–4.
Specifically, the Examiner finds there is no disclosure as to how to identify a
first candidate touch as a grip on the edge area rather than a physical
press/touch on the edge area, a weighted conductive object laying on the
edge area, or other occurrences that may indicate a force on the edge area.
Non-Final Act. 4; Ans. 4–5.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in
the art. Based on that inquiry, the specification must describe an
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invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations
omitted).
We agree with Appellant (see Appeal Br. 16; Reply Br. 8) that the
claims recite the steps for determining whether a candidate touch is a grip,
i.e., by comparing capacitance variations between force electrodes located
within the edge area to capacitance variations of force electrodes not located
within the edge area. See, e.g., claim 1. In addition, we find the
Specification provides the requisite support for the claim limitations. For
example, the Specification describes “a grip-induced touch applies force
near or at the edge of the touch sensing surface.” Spec. ¶ 256. The
Specification further describes using force electrodes to measure an applied
force to the touch sensing surface. Spec. ¶ 257. More specifically, the
Specification describes using the measured capacitance variations from the
force electrodes to determine whether a grip has been applied. Spec. ¶ 257.
The Specification describes identifying a grip based on factors such as a
detected touch from the capacitive sense array, capacitance variations
measured from force electrodes, and a time duration of the detected touch.
Spec. ¶¶ 261–262. In addition, Figure 21 provides a flowchart for
identifying a candidate touch as a grip and suppressing the grip as an invalid
touch. See Spec. ¶¶ 264–265, Fig. 21.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
20 under 35 U.S.C. § 112(a).
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Rejections under 35 U.S.C. § 103
a. Rejections over the combined teachings of Pirogov, Kim, and
Tanimoto
The Examiner rejects claim 1, inter alia, over the combined teachings
of Pirogov, Kim, and Tanimoto. Non-Final Act. 5–11. In relevant part, the
Examiner finds Pirogov teaches a plurality of force electrodes including a
first subset of force electrodes located with an edge area of a touch sensing
surface, and a second subset of force electrodes not located within the edge
area. Non-Final Act. 6 (citing Pirogov, col. 4, ll. 58–65, Figs. 1, 3). The
Examiner further finds Pirogov teaches the force electrodes provide a force
signal used to determine a measured force. Non-Final Act. 7 (citing
Pirogov, col. 8, ll. 14–58, Figs. 1, 3). The Examiner notes that Pirogov does
not explicitly disclose (i) determining a capacitance variation of each force
electrode; (ii) the capacitance variations of the first subset of force electrodes
located within the edge area being greater than the capacitance variations of
the second subset of force electrodes not located within the edge area of the
touch sensing surface; and (iii) designating the first candidate touch as a
grip, and therefore, an invalid touch. Non-Final Act. 8.
The Examiner finds Kim also teaches a plurality of force electrodes
including a first subset of force electrodes located within an edge area of a
touch sensing surface, and a second subset of force electrodes not located
within the edge area. Non-Final Act. 8 (citing Kim, Figs. 6a, 6b, 11). The
Examiner further finds Kim teaches determining the capacitance variation of
each of the force electrodes. Non-Final Act. 9 (citing Kim ¶¶ 87–88, Figs.
6a, 6b, 11). The Examiner reasons:
To a certain extent, a person of ordinary skill in the art at the time
before the effective filing date of invention of the pending
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application would have obviously recognized that a pressure
touch/grip, e.g., at a bottom edge of the touch sensing surface
(shown in Fig. 11 of Kim) causes the capacitance variations of
the first subset of force electrodes that are located at the bottom
edge area being greater than the capacitance variations of the
second subset of force electrodes that are not located at the
bottom edge area, e.g., the force electrodes located in the central
area of the touch sensing surface.
Non-Final Act. 9. The Examiner notes that Kim does not explicitly disclose
designating a touch or grip on the edge area of the touch sensing surface as
an invalid touch. Non-Final Act. 10.
The Examiner finds Tanimoto teaches determining that force signals
are associated with a grip on an edge area of a touch sensing surface and that
the accompanying touch is an invalid touch. Non-Final Act. 10–11 (citing
Tanimoto ¶¶ 41–52, Figs. 3A–4B, 7–9).
Appellant asserts “none of the references compares force electrode
capacitance variation between different regions.” Appeal Br. 17; Reply
Br. 9. Specifically, Appellant argues that Kim—relied on by the Examiner
to teach the capacitance variation of force electrodes located within an edge
area are greater than the capacitance variation of force electrodes not located
within an edge area of the touch sensing surface (see Non-Final Act. 8–9)—
merely describes calculating a magnitude of a touch pressure using a mutual
capacitance determination, but “[t]here is no comparison of capacitance
variation between regions.” Appeal Br. 18.
As discussed above, we are mindful that the Examiner relies on the
combined teachings of Pirogov, Kim, and Tanimoto. In particular, the
Examiner relies on Pirogov to teach, inter alia, a plurality of force electrodes
in which a first subset of the force electrodes are located within an edge area
of the touch sensing surface and a second subset of force electrodes are not
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located within the edge area. See Non-Final Act. 6. Pirogov generally
describes a plurality of force electrodes that may be interspersed throughout
the touch sensing surface. See Pirogov, col. 4, ll. 58–65. However, Pirogov
does not expressly define specific subsets of the force electrodes (i.e., those
force electrodes located within an edge area of the touch sensing surface and
those force electrodes not located within an edge area). As shown in Figure
3 of Pirogov, four force electrodes are located at the corners of a touch
sensing surface and a force centroid is calculated for a detected touch using
the determined force magnitudes of each of the force electrodes. See
Pirogov, col. 11, l. 61–col. 12, l. 31, Fig. 8.
The Examiner relies on Kim to teach, inter alia, using an indication of
capacitance variation to determine a force from each force electrode. See
Non-Final Act. 8–9. Although Kim discloses a plurality of force electrodes,
the Examiner has not identified an express teaching in Kim that the force
electrodes are arranged in a first subset located within an edge area of the
touch sensing device and a second subset of force electrodes not located
within the edge area. Kim describes determining a magnitude of a touch
force by measuring a change in mutual capacitance due to the displacement
caused by a touch. See Kim ¶¶ 87–88. Kim does not describe comparing
capacitance variations between two different regions of force electrodes.
Further, although Tanimoto describes different regions of a touch sensing
surface, including a control region, that may correspond to the claimed edge
area (see, e.g., Tanimoto ¶ 44), Tanimoto describes comparing detected
touch information to a “prescribed threshold” rather than to the detected
touch information from a different region (i.e., defined by a second subset of
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force electrodes) to associated the touch with a grip. See Tanimoto ¶¶ 44–
45.
Thus, as discussed above, we do not find that the references, alone or
in combination as articulated by the Examiner, teach defining a plurality of
force electrodes into two subsets, the first subset of force electrodes located
within an edge area of a touch sensing surface, and the second subset of
force electrodes not located within the edge area, and determining that the
capacitance variation of the force electrodes in the first subset is greater than
the capacitance variation of the force electrodes in the second subset.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that prior art teaches or reasonably suggests
determining that the capacitance variation of the force electrodes in the first
subset is greater than the capacitance variation of the force electrodes in the
second subset, we do not address other issues raised by Appellant’s
arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claim 1 over the combined teachings of Pirogov, Kim,
and Tanimoto. For similar reasons, we do not sustain the Examiner’s
rejection of independent claims 11 and 16, which recite commensurate
limitations. In addition, we do not sustain the Examiner’s rejections of
claims 4–10, 12, 13, 15, and 17–20, which depend directly or indirectly
therefrom.
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In rejecting dependent claims 2, 3, and 14, the Examiner relies on
Bulea to teach, inter alia, determining a force value matrix, but does not
otherwise rely on Bulea to teach determining a capacitance variation of a
first subset of force electrodes is greater than a capacitance variation of a
second subset of force electrodes, as set forth in the independent claims. See
Non-Final Act. 14–16. Accordingly, we do not sustain the Examiner’s
rejection of dependent claims 2, 3, and 14.

b. Rejections over the combined teachings of Pirogov, Richards,
and Tanimoto
The Examiner cumulatively rejects claim 1, inter alia, over the
combined teachings of Pirogov, Richards, and Tanimoto. See Non-Final
Act. 17–22. Regarding Pirogov and Tanimoto, the Examiner relies on the
same findings as those discussed above. The Examiner relies on Richards to
teach (i) determining a capacitance variation of each force electrode, and (ii)
the capacitance variations of the first set of force electrodes associated with
the edge area are greater than the capacitance variations of the second set of
force electrodes that are not located at the edge area. See Non-Final
Act. 19–21 (citing Richards ¶¶ 49–58, Figs, 2A–3B).
Appellant asserts that Richards (alone or in combination with Pirogov
and Tanimoto) does not teach “a comparison of corresponding capacitance
variations with ‘capacitance variations of the second subset of force
electrodes that are not located at the edge area’ as claimed.” Appeal Br. 19–
20; Reply Br. 11–12.
As identified by the Examiner, Richards describes using
force/deflection data to determine “force magnitudes, centroids, and
moments.” Richards ¶ 49. Although Richards contemplates using other
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sensors, including capacitive sensors (see, e.g., Richards ¶¶ 52, 54), the
Examiner has not shown that Richards (alone or in combination with
Pirogov and Tanimoto) teaches comparing capacitance variations associated
with a first subset of force electrodes to the capacitance variations associated
with a second subset of force electrodes.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that prior art teaches or reasonably suggests
determining that the capacitance variation of the force electrodes in the first
subset is greater than the capacitance variation of the force electrodes in the
second subset, we do not address other issues raised by Appellant’s
arguments. See Beloit, 742 F.2d at 1423 (finding an administrative agency is
at liberty to reach a decision based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claim 1 over the combined teachings of Pirogov,
Richards, and Tanimoto. For similar reasons, we do not sustain the
Examiner’s rejection of independent claims 11 and 16, which recite
commensurate limitations. In addition, we do not sustain the Examiner’s
rejections of claims 4–10, 12, 13, 15, and 17–20, which depend directly or
indirectly therefrom.
In rejecting dependent claims 2, 3, and 14, the Examiner relies on
Bulea to teach, inter alia, determining a force value matrix, but does not
otherwise rely on Bulea to teach determining a capacitance variation of a
first subset of force electrodes is greater than a capacitance variation of a
second subset of force electrodes, as set forth in the independent claims. See
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Non-Final Act. 25–27. Accordingly, we do not sustain the Examiner’s
rejection of dependent claims 2, 3, and 14.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 112(a), (b).
We reverse the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112 Indefiniteness 1–20
1–20 112 Written description 1–20
1, 4–13,
15–20
103 Pirogov, Kim,
Tanimoto
1, 4–13,
15–20
2, 3, 14 103 Pirogov, Kim,
Tanimoto, Bulea
2, 3, 14
1, 4–13,
15–20
103 Pirogov, Richards,
Tanimoto
1, 4–13,
15–20
2, 3, 14 103 Pirogov, Richards,
Tanimoto, Bulea
2, 3, 14
Overall
Outcome
1–20

REVERSED