Ex Parte Abileah et al

Patent Trial and Appeal Board

Apr 14, 2016

11978031 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111978,031 10/25/2007
67673 7590 04/18/2016
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.
106842030505
(P7817USC6)
CONFIRMATION NO.
4531
EXAMINER
CRAWLEY, KEITH L
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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
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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
Appeal2014-006458 1
Application 11/978,031
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. § 134(a) of the
Examiner's Final Rejection of claims 6-10, 12-23, and 25, which consist all
of the claims pending in this appeal. App. Br. 8. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm, and designate our affirmance as a new ground of rejection.
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.
Appeal2014-006458
Application 11/978,031
Appellants ; Invention
Appellants' invention is directed to an optical pen containing a light
source (LED) for emitting light throughout a moveable tip portion thereof in
an extended state, as well as in a retracted state. In particular, the intensity
of the emitted light is increased when pressure is exerted upon the tip of the
optical pen to thereby place it in the retracted state. Conversely, the
intensity of the emitted light is decreased when pressure is exerted upon the
tip of the optical pen to place it in the extended state from the retracted state.
Spec. i-fi-f 110-112; Fig. 28-30.
Illustrative Claim
Independent claim 6 is illustrative, and reads as follows:
6. An optical pointing device comprising:
a light source configured to emit light; and
a movable tip portion,
wherein the tip portion is configured to move relative to
the optical pointing device from an extended state to a retracted
state and from the retracted state to the extended state based
upon pressure exerted on the tip portion from a surface in
contact therewith,
wherein the light source is configured to emit the light
throughout movement of the tip portion between the extended
state and the retracted state,
wherein the optical pointing device is configured to
increase an intensity of the light emitted by the light source
throughout movement of the tip portion from the extended state
to the retracted state relative to an area of a surface in contact
with the tip portion and through which the light is emitted
throughout the movement of the tip portion from the extended
state to the retracted state, and
wherein the optical pointing device is configured to
decrease an intensity of the light emitted by the light source
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Application 11/978,031
throughout movement of the tip portion from the retracted state
to the extended state relative to an area of a surface in contact
with the tip portion and through which the light is emitted
throughout the movement of the tip portion from the retracted
state to the extended state.
Prior Art Relied Upon
GRANCHUKOFF US 6,265,792 Bl July 24, 2001
BARON US 6,357,939 Bl Mar. 19, 2002
OGAWA US 6,441,362 Bl Aug. 27, 2002
ISHIL EP 0 572 182 Bl May 20, 1993
Rejections on Appeal
Appellants request review of the following Examiner's rejections:
Claims 6, 7, 9, 10, 12, 17-21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ogawa and Ishii.
Claims 8 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ogawa, Ishii, and Baron.
Claims 13-16 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ogawa, Ishii, and Granchukoff.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 4--7, and the Reply Brief, pages 2-9. 2
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed October 3, 2013), the Reply Brief (filed May
12, 2014), and the Answer (mailed March 12, 2014) for their respective
details. We have considered in this Decision only those arguments
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Application 11/978,031
Appellants argue although Ogawa and Ishii are both directed to "touch
sensitive devices utilizing optical pointing devices in which the light output
from the pointing device is dependent upon applied pressure," there is no
apparent reason, absent impermissible hindsight reconstruction, to combine
the references as proposed by the Examiner because they are wholly
incompatible with each other. App. Br. 5; Reply Br. 2-7. In particular,
Appellants submit Ishii 's disclosure of an optical pen emitting downward a
light of a single wavelength inside a display device would render inoperable
Ogawa' s optical pen emitting sideways a light of multiple wavelengths
outside the display device. App. Br. 5---6 (citing Ogawa, Fig. 17, and Ishii,
Fig. 5). However, as discussed below, the Examiner's findings show that
Ogawa alone teaches or suggests the disputed recitation. Thus, we do not
find persuasive Appellants' argument that Ishii would render Ogawa
inoperable for its intended purpose.
At the outset, we note the Examiner misconstrues the claim recitation
of increasing or decreasing the light intensity relative to an area of a surface
in contact with the tip portion as somehow requiring the light emitted from
the tip of the pen to be directed to the surface in contact therewith. Ans. 4.
That is, although the claim requires the tip of the pen to be in contact with
the surface, it does not require that the light emitted from the pen be in
contact with the surface. Consequently, we do not agree with the
Examiner's finding that because light is emitted sideways (and not to the
surface) from the tip of Ogawa's pen, it does not teach the light intensity
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 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 11/978,031
being increased or decreased relative to the surface. Id. Instead, as correctly
noted by the Examiner, the tip of the optical pen disclosed by Ogawa is in
contact with the surface such that the intensity of the light is increased or
decreased depending on whether the pen is in a retracted state or in an
extended state. Id. at 3 (citing Ogawa, Figs. 16, 18, 19, col. 14:18---col.
15: 5.) That is, even though the light is emitted sideways from the tip of the
pen, it suffices that the tip of the pen is in contact with the surface to cause
the change in the light intensity corresponding to the state of the pen being
extended or retracted. We are therefore satisfied that the cited Ogawa's
disclosure amply satisfies the claim recitation in question. Accordingly, we
find cumulative the Examiner's reliance upon Ishii to cure a misconstrued
deficiency.
In view of the above discussion, we find that Ishii is not actually
necessary for a proper rejection under 35 U.S.C. § 103 of independent claim
6, as Ogawa teaches or suggests all that is claimed. 3 Accordingly, we
conclude that the subject matter of claim 6 would have been obvious to one
of ordinary skill in the art given the teachings of Ogawa.
Because we have significantly modified the Examiner's rationale in
the rejection of claim 6, we designate this modified rationale as a new
ground of rejection.
Regarding the rejection of claims 7, 9, 10, 12, 17-21, and 23, because
Appellants have either not presented separate patentability arguments or
3 The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer,
363 F.2d 455, 458 n.2 (CCPA 1966). See also Ex Parte Righi, Appeal No.
2007-0590 (09/872,416), informative decision, BP AI (July 2007).
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have reiterated substantially the same arguments as those previously
discussed for patentability of claim 6 above, claims 7, 9, 10, 12, 17-21, and
23 fall therewith for the reasons set forth by the Examiner as modified
herein. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Regarding the rejection of claims 8, 13-16, 22, and 25, Appellants
argue that the additional references relied upon by the Examiner do not cure
the deficiencies in Ogawa as discussed with respect to claim 6 above. App.
Br. 6-8; Reply Br. 4. This argument is not persuasive because we find no
such deficiencies in Ogawa for the additional references to cure.
Likewise, we find unavailing Appellants' argument that one of
ordinary skill in the art would not look to incorporate into Ogawa's pen
Baron's teaching of optical fiber strands due to their ability to terminate at
an angle. App. Br. 6-7 (citing Baron Fig. 1, col. 5: 10-16.) We find
irrelevant to the scope of claim 8 the issue of whether the light emitted from
the pen is at an angle or not. It suffices that the light is emitted from the pen
throughout movement of the tip thereof from an extended state to a retracted
state, and vice-versa. Accordingly, claims 8, 13-16, 22, and 25 are not
patentable over the combination of Ogawa and Baron.
Additionally, we find unpersuasive Appellants' argument that because
Granchukoff' s variable resistors are sensible to atmospheric changes, one of
ordinary skill would not have looked to use them in Ogawa's optical device
as they would be subject to changes in the light emitted by the pen. App. Br.
7 (citing Granchukoff2:21-23). We find inconsequential to the scope of
claim 13 whether the variable resistive element is sensitive to temperature or
not, as the claim does not require the use of resistive elements that are
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temperature proof. Accordingly, claims 13-16 and 25 are not patentable
over the combination of Ogawa and Granchukoff.
DECISION
We affirm the Examiner's rejections of claims 6-10, 12-23, and 25 as
set forth in our discussion above. Because we have significantly modified
the Examiner's rejections in this decision, we designate our affirmance as a
new ground of rejection.
37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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