Ex Parte Abileah et al

Patent Trial and Appeal BoardApr 12, 2016

11977864 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111977,864 10/26/2007 67673 7590 04/14/2016 APPLE c/o MORRISON & FOERSTER LLP NOV A 1650 TYSONS BLVD. SUITE 300 MCLEAN, VA 22102 Adie! Abileah 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 106842030502 (P7817USC3) 3787 EXAMINER SHAPIRO, LEONID ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 04/14/2016 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): EOfficeVA@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADIEL ABILEAH and WILLEM DEN BOER Appeal2014-005463 1 Application 11/977 ,864 Technology Center 2600 Before JEAN R. HOMERE, KEN B. BARRETT, and JASON V. MORGAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 2-12 and 14--21, which consist all of the rejected claims pending in this appeal. App. Br. 2. The Examiner lists claim 13 on the Final Action cover sheet as being rejected, but the Examiner does not set forth a rejection of claim 13. Consequently, claim 13 is not on 1 Appellants identify the real party in interest as Apple Inc. App. Br. 2. This Appeal relates to Appeal no. 2012-004350 (11/901,649) decided October 22, 2014, Appeal No. 2013-009226 (11/568,302) decided October 16, 2015, and Appeal No. 2014-006458 (11/978,031) being decided herewith. We leave it to the Examiner to decide whether possible issues of double patenting should be raised. Appeal2014-005463 Application 11/977 ,864 appeal before us. Final Act. 1-6. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appellants' Invention Appellants' invention is directed to a light sensitive display device with multiple data set object detection to enable using the display device in both low and high ambient lighting conditions. Spec. i-fi-12, 67, Fig. 1. In particular, the surface of the display device (20) includes a stack of layers ( 52---60) containing a first set of light sensitive elements optimizable at a low ambient condition corresponding to a first dataset for locating an object on or near the display surface. Likewise, the stack of layers includes a second set of light sensitive elements optimizable at a high ambient condition corresponding to a second dataset for locating the object on or near the display surface. Id. i-fi-169-74. Thus, upon selecting any one of the two datasets (but not both), the corresponding location of the object on or near the display surface is readily detected. Id. i1 59. Illustrative Claim Independent claim 2 is illustrative, and reads as follows: 2. A display device including a surface for viewing an image compnsmg: a stack of layers configured to display the image; and a plurality of selectable sets of light sensitive elements included in the stack, each set configured to detect an object on or near the surface based on a sensitivity to light distinct from that any other of the sets, wherein, a location of the object on the surface is determined based on a selected one set of the selectable sets of light sensitive elements. 2 Appeal2014-005463 Application 11/977 ,864 Prior Art Relied Upon TOGASHI us 4,655,552 COYER US 2001/0003711 Al WU US 2002/0030768 Al RAU US 6,679,702 Bl Rejections on Appeal Apr. 7, 1987 June 14, 2001 Mar. 14,2002 Jan. 20, 2004 Appellants request review of the following Examiner's rejections: Claims 2---6, 11, 12, 14--17, 19, and 21 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Togashi. 2 Claims 7, 8, and 18 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Togashi and Coyer. Claims 18 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Togashi and Wu. 3 Claims 9, 10, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Togashi and Rau. 4 ANALYSIS We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 3-8, and the Reply Brief, pages 2-5. 5 2 This statement of the rejection inadvertently includes claim 8, which is discussed in the subsequent obviousness rejection. Fin. Act. 2 and 3. 3 This statement of the rejection inadvertently includes claim 10, which is discussed in the subsequent obviousness rejection. Fin. Act. 3 and 4. 4 The Final Rejection does not contain an outstanding rejection against claim 13. 3 Appeal2014-005463 Application 11/977 ,864 Dispositive Issue: Under 35 U.S.C. Â§ 102, did the Examiner err in finding Togashi describes sets of light sensitive elements in a stack of layers configured to display an image, each set configured to detect an object on or near the surface based on a distinct sensitivity to light, as recited in independent claim 2? Appellants argue Togashi does not describe the disputed limitations emphasized above. App. Br. 3-7; Reply Br. 2--4. First, Appellants argue Togashi discloses photo-sensing elements disposed outside the liquid crystal display (LCD) element matrix of a display panel, whereas the claim requires such elements be disposed in the stack of layers. App Br. 4; Reply Br. 2 (citing Togashi 7:57-59, Fig. 10). This argument is not persuasive. At the outset, we note Appellants' argument is not directed to the embodiment of Togashi upon which the Examiner relies to reject the claim. In particular, the Examiner relies upon Togashi's disclosure of a first and second photo-sensors formed on a same substrate of the display panel. Fin. Act. 2; Ans. 3 (citing Togashi 8:50-65, Fig. 12). Because the cited Examiner's finding is unrebutted, Appellants' argument is unavailing. Second, Appellants argue Togashi's photo-sensing elements have the same sensitivity to light as opposed to distinct sensitivity. App. Br. 5---6, Reply Br. 3--4 (citing Togashi 10:23-38, Fig. 12.) According to Appellants, although Togashi discloses photo sensing elements A and B having different 5 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Nov. 1, 2013), the Reply Brief (filed March 21, 2014), and the Answer (mailed Jan. 21, 2014) for their respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 3 7 C.F.R. Â§ 41.37(c)(l)(iv) (2013). 4 Appeal2014-005463 Application 11/977 ,864 ratio areas, they are both equally affected by the change in light level when a user's finger shields the photo-sensing element from ambient light. Id. at 6 (citing Togashi 10: 10-11 ). Appellants submit that just because two distinct sensors can sense different inputs (shadow/light) does not mean that they have different sensitivities. Reply Br. 3. This argument is not persuasive. We note the claim does not require that the photo sensing elements have different sensitivities. Rather, the claim requires that each set of sensitive elements detect an object based on a sensitivity to light distinct from the sensitivity to light of another set. In other words, one set of photo sensitive element may detect an object on or near the display surface based on a first sensitivity to light (e.g., sensed input light), whereas another set may detect the object based on a distinct sensitivity to light (e.g., shadow input). Accordingly, we agree with the Examiner that Togashi's disclosure of detecting a first dataset and a second dataset corresponding to a light input and a shadow input, respectively, describes detecting a first selectable dataset based sensitivity to light distinct from that of another set. Ans. 4 (citing Togashi 9:35--44, 10: 30-38). It follows Appellants have not shown error in the Examiner's anticipation rejection of claim 1. Regarding the rejection of claims 2---6, 11, 12, 14--17, 19, and 21, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claims 2---6, 11, 12, 14--17, and 19 fall therewith. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). 5 Appeal2014-005463 Application 11/977 ,864 Obviousness Rejections Regarding the rejection of claims 7-10, 18, and 20, Appellants argue that the additional references relied upon by the Examiner do not cure the deficiencies in Togashi as discussed with respect to claim 1 above. App. Br. 7-8; Reply Br. 4. As discussed above, we find no such deficiencies in Togashi for the additional references to cure. Appellants also restate certain claim language and assert that particular references each fail to teach the respective feature. App. Br. 7-8. However, Appellants do not address the Examiner's findings regarding these features (see Fin. Act. 3--4). Similarly, Appellants assert that Coyer relates to light-sensitive detectors on gaming tables rather than display devices, but fail to address the Examiner's explanation as to why the references' combined teaching renders obvious the claimed subject matter. App. Br. 7; see Fin. Act. 3. Accordingly, Appellants have not shown error in the Examiner's rejection of claims 7-10, 18, and 20. DECISION We affirm the Examiner's rejections of claims 2-12 and 14-21 as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6