Ex Parte BackesDownload PDFPatent Trial and Appeal BoardJan 31, 201713471499 (P.T.A.B. Jan. 31, 2017) Copy Citation 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). 2 Appeal 2016-003673 Application 13/471,499 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). 3 Appeal 2016-003673 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 4 Appeal 2016-003673 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. 5 Appeal 2016-003673 Application 13/471,499 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. 6 Appeal 2016-003673 Application 13/471,499 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. 7 Appeal 2016-003673 Application 13/471,499 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 8 Appeal 2016-003673 Application 13/471,499 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. 9 Appeal 2016-003673 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. 10 Appeal 2016-003673 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 11 Copy with citationCopy as parenthetical citation