Tzu-Wei LiuDownload PDFPatent Trials and Appeals BoardNov 8, 201914691725 - (D) (P.T.A.B. Nov. 8, 2019) 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. 14/691,725 04/21/2015 Tzu-Wei Liu 83242-US-PA 1042 31561 7590 11/08/2019 JCIPRNET P.O. Box 600 Taipei Guting Taipei City, 10099 TAIWAN EXAMINER LI, LIN ART UNIT PAPER NUMBER 2693 NOTIFICATION DATE DELIVERY MODE 11/08/2019 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): Belinda@JCIPGROUP.COM USA@JCIPGROUP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TZU-WEI LIU Appeal 2018-002206 Application 14/691,725 Technology Center 2600 Before JEAN R. HOMERE, BADLEY W. BAUMEISTER, and JAMES B. ARPIN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–12. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Specification, filed April 21, 2015 (“Spec.”); Final Office Action, mailed May 8, 2017 (“Final Act.”); Appeal Brief, filed August 9, 2017 (“Appeal Br.”); Examiner’s Answer, mailed October 25, 2017 (“Ans.”); and Reply Brief, filed December 22, 2017 (“Reply Br.”). 2 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 Mstar Semiconductor, Inc. Appeal Br. 2. Appeal 2018-002206 Application 14/691,725 2 II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to calibrating a coordinate value near an edge of a touch panel. Spec. ¶ 1. In particular, upon obtaining a calculated coordinate according to a capacitance change indicating an erroneous touch position as compared to the actual location of the touch on the panel, the processor selects a suitable linear function in a look-up table (LUT) to correct the calculated coordinate into a calibrated coordinate. Spec. ¶¶ 6, 32, 33, 37, 52. Of the rejected claims, claims 1 and 7 are independent. Claim 1, reproduced below with disputed limitations emphasized in italics, is illustrative of the claimed subject matter: 1. A method for calibrating a coordinate value near an edge of a touch panel, comprising: obtaining a calculated coordinate according to a capacitance change corresponding to a proximity event; selecting a first linear function from a plurality of first linear functions comprised in a look-up table (LUT) according to the calculated coordinate and the capacitance change; and correcting the calculated coordinate into a calibrated coordinate according to the first linear function and the calculated coordinate. III. REFERENCES3 The Examiner relies prior art upon the following references: Fedder US 2011/0316054 A1 Dec. 29, 2011 3 All citations herein to these references are by reference to the first named inventor only. Appeal 2018-002206 Application 14/691,725 3 Oh US 2014/0168171 A1 June 19, 2014 Oonishi US 2016/0070371 A1 Mar. 10, 2016 IV. REJECTIONS Claims 1 and 7 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2–3. Claims 1, 2, 7, and 8 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Oh and Oonishi. Final Act. 3– 10. Claims 3–6 and 9–12 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Oh, Oonishi, and Fedder. Final Act. 10–13. V. ANALYSIS 1. Written Description Rejection Appellant argues that the Examiner erred in determining that claims 1 and 7 do not comply with the written description requirement because the amended claim language of “correcting the calculated coordinate into a calibrated coordinate according to the first linear function and the calculated coordinate” allegedly is not supported by the original Specification. App. Br. 17. In particular, Appellant argues although the Specification does not recite, verbatim, the original claim recitation of “obtaining a calibrated coordinate according to the linear function and the calculated coordinate,” the original claim language necessarily implies the amended claim language of “correcting the calculated coordinate into a calibrated coordinate according to the first linear function and the calculated coordinate”. Id. Appeal 2018-002206 Application 14/691,725 4 According to Appellant, the ordinarily-skilled artisan would discern that relationship from the written description. Id. at 18 (citing Spec. ¶¶ 33). Further, Appellant argues that the Examiner’s interpretation of “correcting the calculated coordinate into a calibrated coordinate” as “inserting the calculated coordinate into a calibrated coordinate” is not supported by the record because the claim does not recite “inserting,” nor does the step of correcting the calculated coordinate require inserting the calculated coordinate into the calibrated coordinate. Reply Br. 5–6. These arguments are persuasive. To satisfy the written description requirement, a patent Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). An applicant may show possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). However, our reviewing court guides that “[a] description [that] renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood 107 F.3d at 1572 (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). “[I]t is ‘not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure.... Rather, it is a question whether the application necessarily discloses that particular device’” (Id., emphasis added). Appeal 2018-002206 Application 14/691,725 5 As a preliminary matter, we note it is indisputable that the original claim recitation of “obtaining a calibrated coordinate according to the linear function and the calculated coordinate” is supported by Appellant’s originally-filed Specification, drawings, or claims. Ans. 22; Appeal Br. 18 (citing Spec. ¶ 33, Fig. 6, S640). Although the written description requirement does not impose an “in haec verba” recitation of the disputed claim language in the original Specification, it nonetheless requires a sufficient description of the claim subject matter so as to enable one of ordinary skills in the art to make and use the invention. In re Wright, 866 F. 2d 422 (Fed. Cir 1989); see Agilent Techs., Inc. v. Affymetrix, Inc., 567 F. 3d 1366 (Fed. Cir. 2009). While the Examiner correctly notes that the originally-filed Specification supports the original claim language, the Examiner disagrees with Appellant’s argument that the original claim limitation necessarily implies the amended claim limitation. Ans. 23–26. We do not agree with the Examiner that the amended claim language of “correcting the calculated coordinate into the calibrated coordinate” somehow implies inserting the calculated coordinate into the calibrated coordinate. Id. Instead, the cited amended claim language must be given its broadest reasonable interpretation consistent with Appellant’s disclosure, as explained in In re Morris: [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted as Appeal 2018-002206 Application 14/691,725 6 broadly as their terms reasonably allow.”). Our reviewing court further states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc). Appellant’s originally-filed Figure 6 sets forth a flowchart that recites the following steps of: “providing LUT” (S610); “Calculating coordinate and projection area corresponding to proximity event to obtain square root of total capacitance change” (S620); “Selecting first linear function from LUT according to calculated coordinate of square root of total capacitance change” (S630); and “Obtaining calibrated coordinate according to first linear function and calculated coordinate” (S640). We note that the step S640 of “obtaining the calibrated coordinate” is the result of the earlier steps of S610–630 wherein the calculated coordinate (S620) is revised (S630) according to a linear function selected from LUT (S610). In other words, the ordinarily-skilled artisan would readily appreciate that Figure 6 does support that the calibrated coordinate is obtained by correcting the calculated coordinate according to the first linear function and the calculated coordinate. Accordingly, we agree with Appellant that the originally-filed step of “obtaining a calibrated coordinate according to first linear function and calculated coordinate” necessarily implies the amended step of “correcting a calibrated coordinate into a calibrated coordinate according to the first linear function and the calculated coordinate.” Because Appellant has demonstrated possession of the amended claim recitation, we are persuaded of error in the Examiner’s written description rejection of claim 1. Accordingly, we do not sustain the written Appeal 2018-002206 Application 14/691,725 7 description rejection of claim 1, or of claim 7, which recites commensurate limitations. 2. Obviousness Rejection 1. Claims 1, 2, 7, and 8 Appellant argues that the Examiner erred in finding that the combination of Oh and Oonishi teaches or suggests “selecting a first linear function from first linear functions comprised in the LUT ... and correcting the calculated coordinate into a calibrated coordinate according to the first linear function and the calculated coordinate, as recited independent claim 1. Appeal Br. 11. In particular, Appellant argues that Oh discloses correcting positional determination error with a simple multiplication factor, which does not use the complex edge proximity correction curves, as shown in Appellant’s Figures 4A and 4B. Id. at 10–11. Further, Appellant argues that Oonishi discloses using a multiplier LUT to boost the capacitance in intra- electrode points (i.e. capacitance correction), as opposed to coordinate correction. Id. at 12–13. Therefore, Appellant submits that the proposed combination teaches or suggests a capacitance correction table for smoothing out capacitance values, as opposed to correcting coordinates. Id. at 14. Additionally, Appellant argues that because Oonishi’s system for improving touchscreen calligraphy has no utility in Oh’s system of correcting in touch screen positional calculation error, the Examiner has not provided sufficient rationale to combine the teachings of Oh and Oonishi. Id. at 14–15. Appellant’s arguments are unpersuasive of reversible Examiner error. As a preliminary matter, we note that the claim does not recite selecting a Appeal 2018-002206 Application 14/691,725 8 complex edge proximity for coordinate correction. Instead, the claim merely recites selecting a linear function from a set of linear functions in a LUT for correcting a calculated coordinate. Accordingly, we agree with the Examiner that Oh’s disclosure of using before and after correction functions to correct position coordinates teaches the limitation of selecting a linear function to correct position coordinates. Ans. 4–5 (citing Oh ¶¶ 54–60). Further, while Oonishi discloses selecting values to correct capacitance values, we agree with the Examiner that these values represent position coordinates on the input touchscreen. Id. (citing Oonishi ¶ 10, Fig. 23). Oonishi particularly discloses a coordinate correction section for correcting coordinate values. Id. One cannot show non-obviousness by attacking the references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner relies upon Oh for its teaching of a first linear function for correcting coordinate values. Ans. 8–9 (citing Oh ¶ 61, Figs. 23 (a), (b)). Further, the Examiner relies upon Oonishi’s disclosure of selecting capacitance values from look- up table (LUT) to correct position coordinates. Id. at 9. We agree with the Examiner that the proposed combination of the teachings of Oh and Oonishi would predictably result in Oh’s linear functions being stored in Oonishi’s LUT to facilitate the selection of linear functions to correct position coordinates, thereby calibrating the coordinates. Id. at 10. We find the Examiner’s proposed combination of the cited teachings of Oh and Oonishi is no more than a simple arrangement of old elements with each performing the same function it had been known to Appeal 2018-002206 Application 14/691,725 9 perform, yielding no more than one would expect from such an arrangement. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The ordinarily skilled artisan, being “a person of ordinary creativity, not an automaton,” would have had reason to fit the teachings of the cited references together to predictably result in correcting position coordinates into calibration coordinates using the selected linear function and the position coordinates. 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. 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 the record before us, the Examiner has established by a preponderance of the evidence that the combination of Oh and Oonishi renders claims 1 and 7 unpatentable. Accordingly, we are not persuaded of error in the Examiner’s obviousness rejection of claims 1 and 7. Regarding claims 2 and 8, Appellant argues that Oonishi’s capacitance value corrections into “pen pressure data,” even if construed as a correction of a third dimensional “z-coordinate,” do not apply in the context of claim 2. Appeal Br. 15. This argument is not persuasive. Although Appellant makes a nominal discussion of textual portions relied upon by the Examiner to reject those claims, Appellant has not provided a meaningful analysis of those textual portions sufficient to distinguish the disputed claim limitations therefrom. Appellant is reminded that a general allegation as to the purported benefits of the claimed Appeal 2018-002206 Application 14/691,725 10 invention, coupled with a general discussion of the prior art relied upon by the Examiner in the rejection, are not tantamount to a responsive argument. Such a response to the Examiner’s findings is insufficient to persuade us of Examiner error, as mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip op. at 7–8 (BPAI Aug. 10, 2009) (informative); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Accordingly, we are not persuaded of error in the Examiner’s obviousness rejection of claims 2 and 8. 2. Claims 3–6, and 9–12 Regarding the rejection of claims 4 and 10, Appellant argues that the combined teachings of Oh, Oonishi, and Fedder do not teach the two-step look-up process of “selecting a second linear function from the second linear functions comprised in the LUT according to the calculated coordinate and the capacitance change; and obtaining the square root of the total capacitance change according to the second linear function and the calculated coordinate”. Appeal Br. 15–16. In particular, Appellant argues that Oonishi’s disclosure of converting capacity values to pen pressure Appeal 2018-002206 Application 14/691,725 11 irrespective of position does not teach the LUT containing second linear function for obtaining the square root of the total capacitance change. Id. at 16. Further, Appellant argues because Fedder’s disclosure of an Allan derivation equation is not obtained from the LUT, it does not remedy the noted deficiencies of Oh and Oonishi. Id. These arguments are not persuasive. We agree with the Examiner that Fedder’s disclosure of detecting the capacitance change by taking the square root of the capacitance change taken in combination with Oh-Oonishi’s disclosure of selecting linear functions from a LUT to correct position coordinates teaches the disputed limitations of claims 4 and 10. Ans. 19–20. Accordingly, we are not persuaded of error in the Examiner’s obviousness rejection of claims 4 and 10. Regarding the rejection of claims 3, 5, 6, 9, 11, and 12, because Appellant either has not presented separate patentability arguments or has reiterated substantially the same arguments as those previously discussed for patentability of claims 4, 7, 8, and 10 above, claims 3, 5, 6, 9, 11, and 12 fall respectively therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). VI. CONCLUSION We affirm the Examiner’s rejections of claims 1–12 under 35 U.S.C. § 103. We reverse the Examiner’s rejection of claims 1 and 7 under 35 U.S.C. § 112, first paragraph. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). Appeal 2018-002206 Application 14/691,725 12 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7, 8 103 Oh, Oonishi 1, 2, 7, 8 3–6, 9–12 103 Oh, Oonishi, Fedder 3–6, 9–12 1, 7 112 1 st paragraph Written Description 1, 7 Overall Outcome 1–12 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 Copy with citationCopy as parenthetical citation