Xin Feng et al.

Patent Trials and Appeals Board

Apr 30, 2020

14276518 - (D) (P.T.A.B. Apr. 30, 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.
14/276,518 05/13/2014 Xin Feng RPS920140006USNP(710.329) 5975
58127 7590 04/30/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
AHN, SEJOON
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
04/30/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN FENG, ROBERT JAMES KAPINOS,
CORINNA PAINE PROCTOR, VICKI WEST CHANON, and
PAUL HILBURGER

Appeal 2018-009231
Application 14/276,518
Technology Center 2600
Before ST. JOHN A. COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3 and 11–13, which are all the
claims pending in the application. Claims 4–10 have been withdrawn.
Appeal Br. 11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant(s)” as defined in 37
C.F.R. § 1.42(a). Appellants identify the real party in interest as Lenovo
(Singapore) PTE, LTD. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to detecting inadvertent gesture controls. See
Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed
invention relate to “a method, comprising: capturing, using an image capture
device, image data; analyzing, using a processor, the image data to identify a
gesture control; determining, using a processor, the gesture control was
inadvertent; and disregarding, using a processor, the gesture control.” Spec.
¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and formatting added to dispositive prior-art limitations):
1. A method, comprising:
capturing, using an image capture device, image data
provided within a gesture input field;
analyzing, using a processor, the image data to determine
that the image data corresponds to a gesture control associated
with a user movement;
determining from the user movement, using a processor,
the gesture control was inadvertent;
disregarding, based upon the gesture control being
inadvertent, the gesture control provided within the gesture
input field, wherein the disregarding comprises not activating a
gesture control system; and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
April 2, 2018); Reply Brief (“Reply Br.,” filed Sept. 26, 2018); Examiner’s
Answer (“Ans.,” mailed July 26, 2018); Final Office Action (“Final Act.,”
mailed Oct. 31, 2017); and the original Specification (“Spec.,” filed
May 13, 2014).
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thereafter disabling the gesture control system for a
predetermined time window following the determining the
gesture control was inadvertent.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hildreth et al. (“Hildreth”) US 2009/0315740 Dec. 24, 2009
Xiong US 2012/0062736 A1 Mar. 15, 2012
Park US 8,674,900 B2 Mar. 18, 2014
Rejections on Appeal
R1. Claims 1–3 and 11–13 stand rejected under 35 U.S.C. § 112(a),
for failing to comply with the written description requirement. Final Act. 2.
R2. Claims 1–3 and 11–13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Xiong and Park. Final Act. 4.
R3. Claims 1–3 and 11–13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Hildreth and Park. Final Act. 6.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 11–18) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejections R2 and R3 of claims 1–3 and 11–13 on the basis of
representative independent claim 1.3 We address separately argued written
description Rejection R1 of claims 1–3 and 11–13, infra.

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
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ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments the Examiner erred. We agree with particular arguments made by
Appellant with respect to written description Rejection R1 of claims 1–3 and
11–13. However, we disagree with Appellant’s conclusions with respect to
the obviousness rejections R2 and R3 of claims 1 and 11, and as to those
rejections, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. We highlight and address specific
findings and arguments regarding representative claim 1 for emphasis as
follows.
1. § 112 Rejection R1 of Claims 1–3 and 11–13
Issue 1
Appellant argues the Examiner’s rejection of claims 1–3 and 11–13
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is in error. These contentions present us with the
following issue:
Did the examiner err in determining the limitations “provided within a
gesture input field” and “disregarding . . . provided within the gesture input
field” lack written description support?

patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.
Analysis
The Examiner finds the limitations “provided within a gesture input
field” and “disregarding . . . provided within the gesture input field” of
claim 1 contain subject matter not described in the specification adequate to
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, has possession of the claimed invention.
Final Act. 2–3.
Appellant points to paragraphs 30 and 31 in the Specification as
providing written description support for these limitations. Paragraph 30
specifically describes the negative limitation, i.e., “an embodiment may then
analyze . . . the image data captured . . . in an attempt to determine if the user
movement should be accepted as a gesture input.” Spec. ¶ 30. Appellant
further points to the Specification describing “the analyzing at 302 may
include comparing the user’s feature location, e.g., eye location, nose
location, hand location, head location, etc., to a predetermined feature
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location, nose location, hand location, head location, etc., to a predetermined
feature location threshold.” Appeal Br. 12 (citing Spec. ¶ 31).
The Examiner does not address Appellant’s specific argument
regarding the written description support described in paragraph 31 of the
Specification. Ans. 6–8.
We are persuaded by Appellant’s arguments that the descriptions are
adequate in paragraphs 30 and 31 of the Specification, describing whether to
accept a gesture as a gesture input, and also describing a threshold range for
feature locations as a specified distance from the sensor or image capture
device, which may be changed by user definition or dynamic updates. The
Specification further provides an example that the location threshold from
the screen “may be three feet,” thus supplying sufficient detail to reasonably
convey to someone of skill in the art that the inventor had possession of the
claimed subject matter.
Regarding the amount of patentable weight to be given to the negative
limitation “disregarding” at issue, we find Appellant’s proffered support in
the Specification in paragraph 30 does provide a “descri[ption of] a reason to
exclude the relevant limitation.” Santarus, Inc. v. Par Pharmaceutical, Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation. Such written description support need not rise to the
level of disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material.”).
Therefore, based on the findings above, on this record, we are
persuaded of error in the Examiner’s finding that the limitations lack
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adequate written description support. Accordingly, we reverse the
Examiner’s rejection of claims 1–3 and 11–13 under 35 U.S.C. § 112(a).
2. § 103 Rejections R2 and R3 of Representative Claim 1
Issue 2
Appellant argues (Appeal Br. 13–18; Reply Br. 15–20) the
Examiner’s rejections of claim 1 under 35 U.S.C. § 103(a) as being obvious
over Xiong and Park, or in the alternative over Hildreth and Park, are in
error. These contentions present us with the following issues:
(a) Did the Examiner err in finding these two separate, alternate
prior art pairs combinations Park with Xiong, or
alternatively Park with Hildreth, teach or suggest
“disregarding, based upon the gesture control being
inadvertent, the gesture control provided within the gesture
input field,” as recited in claim 1?
(b) Did the Examiner by combining the two cited alternate pairs
of prior art in the stated manner err because of improper
motivation to combine, and because Park teaches away from
a combination with each of Xiong and Hildreth?
Analysis
(2a) — all limitations are taught or suggested
Appellant contends Park, the common reference in both § 103
Rejections R2 and R3:
[M]akes no mention of gesture inputs, disregarding gesture
inputs, or a gesture control system at all. Deactivation of a light
emitting element and/or touch sensor of a touch screen is not
the same as “disregarding, based upon the gesture control being
inadvertent, the gesture control provided within the gesture
input field, wherein the disregarding comprises not activating a
gesture control system.”
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Appeal Br. 18.
The Examiner responds by finding
Park was only relied upon to show the concept of disregarding
the gesture control provided within the gesture input field and
Park specifically teaches the concept of disregarding the gesture
control provided within the gesture input field (Park: col. 10,
line 53 - 61 and col. 22, line 62 - 67, while the portable device
detects rotation in the airspace, the portable device may
deactivate at least one of a light emitting element and . . . at
different times).
Ans. 8–9.
However, the Examiner does not rely on Park for teaching gesture
inputs or gesture control. Instead, the Examiner relies on the Xiong
reference in Rejection R2, and the Hildreth reference in Rejection R3, as
teaching or suggesting these features. Final Act. 4, 6.
We are unpersuaded by Appellant’s arguments and agree with the
Examiner’s findings because “one cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (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 those
references would have suggested to those of ordinary skill in the art.” Id. at
425. In KSR, the Court held “[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 Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
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2(b) — the Examiner provides proper motivation to combine
Appellant argues “the teachings of Park and Xiong and/or Hildreth are
directed to completely separate problems and therefore are directed to
completely separate solutions,” and further argues the Examiner has not
articulated a reason to combine the references. Appeal Br. 15.
We do not find Appellant’s contention persuasive because the
references need not recognize the same problem solved by the Appellants.
See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Moreover, “[a]
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from another.”
Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed.
Cir. 2004). Therefore, on this record, we do not find Appellant’s contention
that Park and Xiong and/or Hildreth are “directed to separate problems”
(Appeal Br. 15) sufficient to show the Examiner improperly combined the
cited references under § 103.
The Examiner finds all three of these references “are analogous art
because they deal with the same field of invention of a gesture system.”
Ans. 9. The Examiner also articulates motivations to combine the references
both in the Final Rejection and in the Answer. See Final Act. 5, 7. The
Examiner provides identical motivations in combining Park with Hildreth
and also Park with Xiong, which is to “effectively prevent a faulty operation
of the portable device by locking the device and to provide a more user-
friendly mobile functionality by deactivating the light emitting element
when the device is rotated by the user.” Final Act. 4, 6; Ans. 9.
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The relevant inquiry is whether the Examiner has set forth “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR, 550 U.S. at 418). On this record, we find the
Examiner has provided an articulated reasoning with a rational underpinning
to support the legal conclusion of obviousness.
Appellant also argues that Park teaches away from both Xiong and
Hildreth because both Hildreth and Xiong “require[s] that the gesture is
provided within the gesture input field and any gesture provided within the
field is not disregarded, rather it is processed,” whereas, in contrast, Park
teaches disregarding such gesture. Appeal Br. 17.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers Int’l., Inc., 73
F.3d 1085, 1090 (Fed. Cir. 1995).
Here, neither Hildreth nor Xiong discourages or otherwise disparages
disregarding a gesture provided within the gesture input field, and Park
likewise does not discourage processing a gesture within the gesture input
field either.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
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Accordingly, we sustain the Examiner’s obviousness Rejections R2
and R3 of independent claim 1, and grouped claims 2, 3, and 11–13. See
Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 13–20) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner erred with respect to the written description
rejection R1 of claims 1–3, and 11–13 under 35 U.S.C. § 112(a), and we do
not sustain the rejection.
(2) The Examiner did not err with respect to the two alternate
obviousness rejections R2 and R3 of claims 1– 3, and 11–13 under 35
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
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).

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DECISION SUMMARY
Claims
Rejected
35
U.S.C §
Basis/
References
Affirmed Reversed
1–3, 11–13 112(a) Written
description
1–3, 11–13
1–3, 11–13 103 Obviousness
Park, Xiong
1–3, 11–13
1–3, 11–13 103 Obviousness
Park, Hildreth
1–3, 11–13
Overall
Outcome
1–3, 11–13
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED