Dieter Maier

Patent Trials and Appeals Board

Jan 20, 2022

2021003999 (P.T.A.B. Jan. 20, 2022)

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. 13/580,314 08/21/2012 Dieter Johann Maier 2010P00320WOUS 1312 24737 7590 01/20/2022 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 1600 Summer Street 5th Floor Stamford, CT 06905 EXAMINER NGUYEN, HUONG Q ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIETER JOHANN MAIER Appeal 2021-003999 Application 13/580,314 Technology Center 3700 Before BRETT C. MARTIN, BRANDON J. WARNER, and PHILLIP A. BENNETT, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-7 and 9-21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Koninklijke Philips Electronics N.V. Appeal Br. 3. Appeal 2021-003999 Application 13/580,314 2 CLAIMED SUBJECT MATTER The claims are directed to a skin contact detector. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A skin contact detector for detecting contact of a probe with skin, the skin contact detector comprising: a signal generator configured to generate an electric trigger signal; a reference circuit including a capacitance (CREF) and a resistance (RPREF) configured to represent a model capacitance and resistance properties of the skin to be contacted by the probe, said reference circuit being adapted to produce a reference signal at a reference output of the reference circuit in response to the trigger signal being applied by the signal generator to a reference input of the reference circuit; a skin contact circuit adapted to produce a skin response signal at a skin contact output of the skin contact circuit in response to the trigger signal being applied by the signal generator to a skin contact input of the contact circuit, said skin response signal being representative of any variations of a skin capacitance and a skin resistance electrically applied by the probe to the skin contact circuit; and a comparator adapted to compare the skin response signal at the skin contact output of the skin contact circuit with the reference signal at the reference output of the reference circuit and to generate a predetermined output signal indicating skin contact by the probe when at least one of: (i) the skin response signal simultaneously indicates the skin capacitance of the skin contact circuit is larger than the capacitance (CREF) of the reference circuit and the skin resistance of the skin contact circuit is smaller than the resistance (RPREF) of the reference circuit, or (ii) the skin response signal simultaneously indicates the skin capacitance is smaller than the capacitance (CREF) of the reference circuit and the skin resistance of the skin contact circuit is larger than the resistance (RPREF) of the reference circuit. Appeal 2021-003999 Application 13/580,314 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Gu et al. US 4,940,060 July 10, 1990 Smigelski US 5,796,355 Aug. 18, 1998 Uchiyama et al. US 5,943,516 Aug. 24, 1999 Morita et al. US 6,647,133 B1 Nov. 11, 2003 Riionheimo US 2009/0028395 A1 Jan. 29, 2009 Fukumoto et al. US 2009/0312666 A1 Dec. 17, 2009 REJECTIONS Claims 1-4, 7, 9-15, 17, 18, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morita, Fukumoto, and Uchiyama. Final Act. 2. Claims 5, 6, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morita, Fukumoto, Smigelski, Gu, and Uchiyama. Final Act. 8. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Morita, Fukumoto, Riionheimo, and Uchiyama. Final Act. 12. OPINION Appellant’s argument, generally, is that the Examiner’s rejection is improper because it “would improperly change the operating principle of Morita in the context of an obviousness analysis.” Reply Br. 9. More Specifically, Appellant argues that: Morita teaches transformer 26 having a primary winding constituting a primary side of electrode unit 22 that is electrically connected to detector unit 23. Morita further teaches transformer 26 having a secondary winding electrically Appeal 2021-003999 Application 13/580,314 4 connected to electrodes 21a and 21b to constitute a secondary side of electrode unit 22. The operating principle of Morita is premised on measuring a contact impedance on the secondary side of electrode unit 22 and comparing the measured contact impedance on the secondary side of electrode unit 22 to a reference impedance on the primary side of electrode unit 22 as the criterion for setting an amplitude of a detection signal generated by the detector unit 23. The measured contact impedance on the secondary side of electrode unit 22 is delineated by a degree of reflection by the secondary side of electrode unit 22 of a high-frequency signal applied by oscillator unit 20 to the primary side of electrode unit 22. More particularly, the contact impedance on the secondary side of electrode unit 22 DOES NOT MATCH the reference impedance on the primary side of electrode unit 22 when (a) nothing is touching electrodes 21a and 21b, (b) an object other than a human finger is touching electrodes 21a and 21b, or (c) a finger is insufficiently touching electrodes 21a and 21b. Consequently, an impedance mismatching reflection by the secondary side of electrode unit 22 of the high-frequency signal applied by oscillator unit 20 to the primary side of electrode unit 22 will have an amplitude representative of (a) nothing is touching electrodes 21a and 21b, (b) an object other than a human finger is touching electrodes 21a and 21b, or (c) a finger is insufficiently touching electrodes 21a and 21b. Reply Br. 9-10. Appellant further argues that “Morita requires an impedance comparison at a front end of a touch sensor 30 that is performed by a transformer 26 of electrode unit 22 and detected by detection circuit 30 in response to a high-frequency signal applied by oscillating circuit 20 to detector unit 23 and electrode unit 22.” Reply Br. 16. Appellant also argues that, in order for Morita to be modified as proposed by the Examiner, “the impedance comparison for detecting when a finger is sufficiently touching electrodes 21a and 21b would have to be eliminated from the touch sensor 13” and “electrode unit 22 excluding transformer 26 would have to be Appeal 2021-003999 Application 13/580,314 5 electrically connected between oscillator circuit 20 and an input terminal of discriminator unit 24.” Reply Br. 17-18. As such, the proposed modification of Morita “would improperly change the principle operation of Morita.” Reply Br. 18. In response to similar arguments in Appellant’s Appeal Brief, the Examiner asserts that “appellant’s main argument centers around bodily incorporation - Morita et al cannot be modified to result in the claimed invention.” Ans. 4. In response to Appellant’s assertion that the proposed modification of Morita would require removal of transformer 26, detection unit 23, oscillator 20, discriminator 24, and reference value setting unit 25, the Examiner asserts that such “is not commensurate with the claimed invention” and that “[t]he claims and rejection set forth do not require the modifications” suggested by Appellant. Ans. 6. We do not agree that Appellant’s arguments amount to improper bodily incorporation arguments. Appellant’s argument is properly characterized as an assertion that the Examiner’s rejection changes the principle of operation in Morita. The Examiner attempts to tie Appellant’s argument to the claims, but the proper analysis here is not what the claims state, but whether the Examiner has taken into account the teachings of Morita, explicitly its principle of operation, in making the proposed combination. Appellant’s argument is not that the claims require the aforementioned additional modifications of Morita, it is that the Examiner’s proposed combination, in order to operate, would require the proposed changes. Put another way, the Examiner characterizes the combination as merely requiring substitution of the reference setting unit of Morita to comprise a capacitance and resistance as in Fukumoto. Final Act. 5. Appeal 2021-003999 Application 13/580,314 6 Appellant’s argument is that the combination is not such a simple substitution in order to actually operate. Appellant has made a persuasive argument that the Examiner’s combination requires more than just a simple substitution to the point where the changes that would be necessary to Morita to make it function as suggested by the Examiner would go so far as to change the principle of operation of Morita. The Examiner has not provided a sufficient explanation as to why one of ordinary skill in the art would have omitted transformer 26, etc. as Appellant has argued would be necessary in order for the Examiner’s proposed combination to operate. Nor has the Examiner sufficiently explained why such a removal would have been unnecessary. In sum, the Examiner has provided no rebuttal regarding Appellant’s central claim that the proposed combination would change the principle of operation of Morita. The Examiner simply dismisses the suggestion as not commensurate with the claims. As noted above, principle of operation is not a claim-driven analysis. Rather, it is an assessment of the teachings of the prior art and whether the Examiner’s proposed combination changes the principle of operation of the cited references. Here, Appellant has made a cogent argument that the Examiner’s proposed rejection would change the principle of operation of Morita and the Examiner has not satisfactorily addressed this argument. Accordingly, we do not sustain any of the Examiner’s rejections, as they all rely on the challenged changes to the principle of operation of Morita. CONCLUSION The Examiner’s rejections are reversed. Appeal 2021-003999 Application 13/580,314 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7, 9- 15, 17, 18, 20, 21 103(a) Morita, Fukumoto, Uchiyama 1-4, 7, 9- 15, 17, 18, 20, 21 5, 6, 19 103(a) Morita, Fukumoto, Smigelski, Gu, Uchiyama 5, 6, 19 16 103(a) Morita, Fukumoto, Riionheimo, Uchiyama 16 Overall Outcome 1-7, 9-21 REVERSED