Ex Parte Backes

Patent Trial and Appeal Board

Jan 31, 2017

13471499 (P.T.A.B. Jan. 31, 2017)

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.
13/471,499 05/15/2012 Ulrich Backes TRW (AEC)021363-ORD 4023
26294 7590 02/02/2017
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
LAM, VINH TANG
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
rkline @ tarolli. com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH BACKES
Appeal 2016-003673
Application 13/471,499
Technology Center 2600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 10-14, 16, 19—23, and 25—27, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2016-003673
Application 13/471,499
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to an
optical display and control element. See generally Spec. 1. Claim 10 is
exemplary:
10. An optical display and control element (10) comprising an
at least partially transparent display screen (12), at least one
light source (14) for illuminating a rear side of the display
screen (12), and at least one light sensor (24, 26) for detecting a
temporal signal of the light (25, 28) of the light source scattered
on the display screen (12),
the light source (14) being designed so as to be able to
produce a time-variable light pattern while illuminating the rear
side of the display screen (12), and a control and processing
unit (30) is provided which is designed so as to be able to
evaluate the temporal signal, detected by the light sensor (24,
26), in combination with the time-variable light pattern and to
determine a position of at least one object (32) located on the
display screen (12) from this evaluation;
the at least one object including an actuating element (34)
being provided which is attached to the display screen (12) so
that the actuating element is rotatable about a rotary axis, the
actuating element having on its side facing the light source (14)
an optical coding (36) which codes a position of the actuating
element (34).
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References and Rejections
Claims 10, 12, 14, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over WO ’289 (Deuel et al. WO 2008/073289 A2,
published June 19, 2008) and Pryor (US 2010/0182137 Al, published July
22, 2010).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over WO ’289, Pryor, and Mackey (US 2008/0192026 Al,
published Aug. 14, 2008).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over WO ’289, Pryor, and Kiyose (US 2010/0225616 Al,
published Sept. 9, 2010).
Claims 16, 19—23, and 26—27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by WO ’289.
ANALYSIS
Claims 10^14 and 25 (Obviousness)
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer (regarding claims 10, 12—14, and 25) to
the extent they are consistent with our analysis below.1
On this record, the Examiner did not err in rejecting claim 10.
1 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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Application 13/471,499
Appellant contends WO ’289 and Pryor do not collectively teach “a
control and processing unit (30) is provided which is designed so as to be
able to evaluate the temporal signal, detected by the light sensor (24, 26), in
combination with the time-variable light pattern and to determine a position
of at least one object (32) located on the display screen (12) from this
evaluation; the at least one object including an actuating element (34) being
provided which is attached to the display screen (12) so that the actuating
element is rotatable about a rotary axis,” as recited in claim 1. See App. Br.
16—18; Reply Br. 5—6. In particular, Appellant asserts the proposed
combination does not teach the disputed claim limitation because in Pryor,
“[t]he position of the mark 118 is detected and relayed to the computer by a
camera 117. The camera 117 does not detect a temporal signal. ... the
computer 120 is not evaluating a temporal signal or a time variable light
pattern.” App. Br. 17; Reply Br. 27.
Appellant has not persuaded us of error, because Appellant’s
arguments are not directed to the combination proposed by the Examiner.
Further, because the Examiner relies on the combination of WO ’289 and
Pryor to teach the disputed claim limitations, Appellant cannot establish
nonobviousness by attacking Pryor individually. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner finds—and Appellant does not dispute—WO ’289
teaches “a control and processing unit (30) is provided which is designed so
as to be able to evaluate the temporal signal, detected by the light sensor (24,
26), in combination with the time-variable light pattern and to determine a
position of at least one object (32) located on the display screen (12) from
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Application 13/471,499
this evaluation; the at least one object. . . See Final Act. 6—7. As a result,
Pryor does not need to separately teach the above claim limitation.
The Examiner finds—and Appellant does not dispute—Pryor teaches
“including an actuating element (34) being provided which is attached to the
display screen (12) so that the actuating element is rotatable about a rotary
axis.” See Final Act. 7. Because Appellant does not contend the propriety
of combining the teachings of WO ’289 and Pryor, the Examiner correctly
finds WO ’289 and Pryor collectively teach “a control and processing unit
(30) is provided which is designed so as to be able to evaluate the temporal
signal, detected by the light sensor (24, 26), in combination with the time-
variable light pattern and to determine a position of at least one object (32)
located on the display screen (12) from this evaluation; the at least one
object including an actuating element (34) being provided which is attached
to the display screen (12) so that the actuating element is rotatable about a
rotary axis,” as required by the claim.
Contrary to Appellant’s argument (App. Br. 17; Reply Br. 6), the
proposed combination does not use Pryor’s computer 120 or Pryor’s
separate system.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 10.
We also sustain the Examiner’s rejection of corresponding dependent
claims 12, 14, and 25, which Appellant does not argue with separate
substantive contentions.
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Separately Argued Dependent Claims
Regarding dependent claim 11, we agree with Appellant that the
Examiner has not adequately mapped “wherein the actuating element (34)
comprises an integrated light conductor (38) which can be illuminated by
the light source (14)” (emphasis added). See App. Br. 21; 7—8.
The Examiner cites Mackey’s paragraph 19, but does not specifically
map the disputed claim limitation. See Final Act. 9. In response to
Appellant’s argument that Mackey’s paragraph 19 does not teach the
italicized claim element (App. Br. 21), the Examiner merely reproduces the
limitation and cites Mackey’s paragraph 19. See Ans. 9. We have examined
Mackey’s paragraph 19, and that paragraph does not offer sufficient details
about the italicized claim element. Absent further explanation from the
Examiner, we do not see how WO ’289, Pryor, and Mackey collective teach
the disputed limitation.2
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 11.
Regarding dependent claim 13, Appellant argues the cited references
do not collectively teach “wherein at least one light sensor (26) is arranged
to receive light (28) which has been reflected several times in the display
screen (12)” (emphasis added). See App. Br. 22—23; Reply Br. 8. In
particular, Appellant argues the light has been reflected only once off the
finger Ob. Appellant contends the Examiner fails to provide articulated
2 Appellant raises additional arguments with respect to dependent claim 11.
Because the identified issue is dispositive of the appeal with respect to claim
11, we do not reach the additional arguments.
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reasoning with some rational underpinning for the proposed combination.
See App. Br. 23; Reply Br. 8.
First, Appellant’s argument is not directed toward the Examiner’s
specific mapping, as the Examiner maps the claimed “display screen” to
Kiyose’s display device (100)—not finger Ob. See Ans. 8. Therefore,
Appellant fails to show error in the Examiner’s findings. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court [or this Board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).
Second, the U.S. Supreme Court has 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). “If the claim extends to what is obvious, it is
invalid under § 103” and “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418—19.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of WO ’289, Pryor, and Kiyose. See Final Act. 10.
Specifically, the Examiner determines “[i]t would have been obvious to a
person having ordinary skill in the art at the time the invention was made to
modify WO ’289’s teaching of a rear projected multi-touch screen, sensors
to capture pattern, intensity, and a scanning unit with Kiyose teaching of a
sensor receiving multiple reflected light in the display to accommodate
different designs, manufacturers, make[r]s, and models.'1'’ Final Act. 10.
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For example, we agree with the Examiner’s reasoning that it would have
been obvious for one skilled in the art to combine the teachings of WO ’289
and Kiyose to accommodate different designs, such as a design requiring a
light sensor arranged to receive light that has been reflected several times in
the display screen.
The Examiner’s findings and conclusion are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” since the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420-21. Appellant does not
present adequate evidence that the resulting arrangements would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418-19).
Accordingly, we agree with the Examiner that applying Kiyose’s
technique in the WO ’289 (and Pryor) system would have predictably used
prior art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. a 417.
Claims 16, 19—23, 26, and 27 (Anticipation)
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in finding WO ’289 discloses “[a]
method of optically determining the position of an object (32) which is
located on an at least partially transparent display screen (12) of an optical
display and control element (10), comprising the steps of: illuminating a
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constant area on a rear side of the display screen (12) successively with one
single predetermined sequence of different areal light patterns,” as recited in
independent claim 26.3 See App. Br. 6—10; Reply Br. 2-4.3 4
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an] artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must “clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection ... it
has no place in the making of a 102, anticipation rejection.” Arkley, 455
F.2d at 587-88.
Here, the Examiner cites multiple, distinct teachings of the WO ’289
for mapping the disputed claim limitations. The Examiner cites paragraph
3 It is undisputed the preamble of claim 26 is limiting. See Ans. 9—10;
App. Br 9; Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (“If the claim preamble, when read in the
context of the entire claim, recites limitations of the claim, or, if the
claim preamble is ‘necessary to give life, meaning, and vitality’ to the
claim, then the claim preamble should be construed as if in the
balance of the claim.”).
4 Appellant raises additional arguments with respect to the anticipation
rejection. Because the identified issue is dispositive of the appeal with
respect to the anticipation rejection, we do not reach the additional
arguments.
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Application 13/471,499
30 and Figure 1, which are described under the section “Detailed
Description of Exemplary Embodiments.” See Final Act. 3; WO ’289 p. 3.
The Examiner also cites paragraph 44 and Figures 3 and 4, which are
described under the subsection “Embodiment Using a Projector-Based
Display and Frequency Differentiation” (“Embodiment I”). See Final Act.
3; WO ’289 p. 6.
The Examiner further cites Figure 9 and paragraphs 106 and 106,
which are described under the subsection “Correction for Ambient
Lighting,” and many alternative embodiments are described following
Embodiment I and before the “Correction for Ambient Lighting” subsection.
See Final Act. 3; WO ’289 pp. 8, 9, 15, 21.
Therefore, the Examiner improperly supports an anticipation rejection
by combining multiple, distinct teachings of WO ’289.5
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner’s rejection of claim 26, and corresponding dependent claims 16,
19-23, and 27.
DECISION
We affirm the Examiner’s decision rejecting claims 10, 12—14, and
25.
5 We express no opinion regarding the rejection of claim 26 under 35 U.S.C.
§103, because such a rejection is not before us. We leave it to the Examiner
to determine whether claim 26 is obvious over WO ’289 alone or in
combination with additional references.
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Application 13/471,499
We reverse the Examiner’s decision rejecting claims 11, 16, 19—23,
26, and 27.
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-IN-PART
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