Ex Parte Benchenaa et al

Patent Trial and Appeal Board

Jan 9, 2019

13729379 (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/729,379 12/28/2012 Hayat Benchenaa
73486 7590 01/11/2019
Barnes & Thornburg LLP (Intel)
11 S. Meridian Steet
Indianapolis, IN 46204
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.
P42439/4563 l-220209 6437
EXAMINER
REED, STEPHEN T
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
01/11/2019 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):
Inteldocs _ docketing@cpaglobal.com
INdocket@btlaw.com
inteldocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAY AT BENCHENAA, DAREN P. WILSON, ARAS BILGEN,
and DIRK HOHNDEL
Appeal 2018-005158
Application 13/729,379
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-005158
Application 13/729,379
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7-19, 24, 26-28, and 30-32. Claims 6, 20-23, 25, and 29 were
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claims
Exemplary claims 1, 8, and 30 under appeal read as follows ( emphasis
added):
1. A mobile computing device for adapting a user
interface displayed on a touchscreen display of the mobile
computing device, the mobile computing device comprising:
at least one sensor to generate one or more sensor signals
indicative of the presence of a hand of the user on the mobile
computing device;
a handedness detection module to determine a
handedness of use of the mobile computing device by the user
as a function of the one or more sensor signals; and
a user interface adaption module to:
(i) receive an input gesture from the user via the
touchscreen display, wherein the input gesture comprises
at least one line;
(ii) modify an orientation of the received input
gesture based on the determined handedness of use of
the mobile computing device and independent of the
orientation of the mobile computing device; and
(iii) compare the modified input gesture to an
action gesture associated with a predefined action
performed by the mobile computing device.
8. The mobile computing device of claim 1, wherein the
input gesture lacks reflection symmetry and wherein to modify
the orientation of the input gesture comprises to flip the input
gesture.
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30. The mobile computing device of claim 11, wherein
the user interface is to receive, from the touchscreen display,
multiple contemporaneous tactile inputs located in an outer
edge of the touchscreen display, and ignore the multiple
contemporaneous tactile inputs as a/unction of the
handedness of use of the mobile computing device, the location
of the tactile inputs being located on the outer edge of the
touchscreen display, and the contemporaneousness of the
tactile inputs.
Amended App. Br. 2-3, 6 (Claims Appendix).
Rejections on Appeal
1. The Examiner rejected claims 8 and 27 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. 1
2. The Examiner rejected claims 8 and 27 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
3. The Examiner rejected claims 1-5, 7-10, and 12-14 under
35 U.S.C. § I03(a) as being unpatentable over Park et al.
(US 2010/0085317 Al; published Apr. 8, 2010) ("Park"), Brisebois et al.
(US 2010/0134423 Al; published June 3, 2010) ("Brisebois"), Ouyang et al.
(US 8,196,066 Bl; issued June 5, 2012) ("Ouyang"), Nelson et al.
1 In arguing the patentability of claim 27, Appellants rely upon the
arguments for the patentability of claim 8. See App. Br. 15. Thus, with
respect to the rejections under 35 U.S.C. § 112, except for our ultimate
decision, claim 2 7 is not discussed further herein.
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Application 13/729,379
(US 2010/0045611 Al; published Feb. 25, 2010) ("Nelson"), and Sleeman et
al. (US 2010/0289754 Al; published Nov. 18, 2010) ("Sleeman"). 2
4. The Examiner rejected claims 11 and 30 under 35 U.S.C. § I03(a)
as being unpatentable over Park, Brisebois, Ouyang, Nelson, Sleeman, and
Hinckley et al. (US 2012/0158629 Al; published June 21, 2012)
("Hinckley").
5. The Examiner rejected claims 15-19, 24, 26, and 28 under
35 U.S.C. § I03(a) as being unpatentable over Park, Brisebois, Ouyang, and
Nelson. 3
6. The Examiner rejected claims 27, 31, and 32 under
35 U.S.C. § I03(a) as being unpatentable over Park, Brisebois, Ouyang,
Nelson, and Sleeman.
Issues on Appeal
Did the Examiner err in rejecting claim 8 as failing to comply with the
written description requirement?
Did the Examiner err in rejecting claim 8 as being indefinite?
Did the Examiner err in rejecting claims 1, 8, and 30 as being obvious?
2 In arguing the patentability of claims 15, 24, 27, 31, and 32, Appellants
reply upon the arguments for the patentability of claims 1 and 8. See App.
Br. 11, 15, and 18-19. Further, Appellants do not separately argue the
patentability of claims 2-5, 7, 9-14, 16-19, 26, and 28. See App. Br. 11.
Thus, with respect to the rejections under 35 U.S.C. § I03(a), except for our
ultimate decision, claims 2-5, 7, 9-19, 24, 26-28, 31, and 32 are not
discussed further herein.
3 The Final Office Action indicates that claim 25 was also rejected under
35 U.S.C. § 103(a) (see Final Act. 13, 18), but claim 25 was cancelled.
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Application 13/729,379
PRINCIPLES OF LAW
Written Description
The Federal Circuit has consistently held that 35 U.S.C. § 112, first
paragraph, contains a written description requirement separate from
enablement. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d.
1336, 1351 (Fed. Cir. 2010) (en bane). To satisfy the written description
requirement, an applicant must convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention, and that the invention, in that context is whatever is now
claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64
(Fed. Cir. 1991).
Indefiniteness
A claim is indefinite when it contains words or phrases whose
meaning is unclear. In re Packard, 751 F.3d 1307, 1304 (Fed. Cir. 2014).
Breadth of a claim is not to be equated with indefiniteness. In re Miller, 441
F.2d 689, 693 (CCPA 1971).
Obviousness
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
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obviousness, "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." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413,425 (CCPA 1981).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
A
The Examiner finds claim 8 fails to satisfy the written description
requirement because:
Applicant[s'] amended limitation recites "wherein the input
gesture lacks reflection symmetry." The Applicant states in
[0036] of the published Application the input may be modified
or flipped but there is no positive limitation within the entirety
of the original disclosure referencing wherein the input gesture
lacks reflection symmetry. Similarly, Figs. 6A and 6B of the
Applicant's original disclosure provides for mirror symmetry
between the gestures depending on the handedness, which may
be considered reflection symmetry. Thus, this is a negative
limitation unsupported by the Applicant's original disclosure.
Final Act. 5(emphasis added).
Appellants contend the Examiner erred in rejecting claim 8 under
35 U.S.C. § 112, first paragraph because:
FIGS. 6A & 6B show one embodiment of the invention, which
clearly shows flipping a gesture which lacks reflection
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symmetry. As such, the property of lacking reflection symmetry
is clearly and explicitly shown in at least FIGS. 6A & 6B, so the
feature in question has support in the original specification.
. . . Appellant respectfully submits that the Examiner described
mirror symmetry and reflection symmetry incorrectly. While
FIGS. 6B shows the mirror image of a gesture in FIG. 6A, that
does not mean that the gesture in FIG. 6A has reflection (or
mirror) symmetry. Rather, an image has reflection symmetry ( or
mirror symmetry) if the image does not change upon reflection.
The gesture in FIG. 6A, when reflected to generate the gesture in
FIG. 6B, does change, because the gesture in FIG. 6A cannot be
rotated or translated to be identical to the gesture in FIG. 6B.
As such, the gesture of FIG. 6A lacks reflection symmetry, and,
therefore, the specification includes support for the feature in
claim 8 of flipping an input gesture that lacks reflection
symmetry.
App. Br. 12 (emphasis added).
In response to Appellants' contention, the Examiner further finds:
The comparison between Figs. 6A and 6B by the Appellant is
inconsequential as only the input gesture itself should be
considered. The Examiner has provided an annotated Fig. 6A to
show the input gesture does have reflection symmetry.
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This annotated Fig. 6A, shows the input gesture has reflection
or mirror symmetry along the dashed line. If the input gesture
is folded along the dashed line, the lines of the gesture would
overlap as mirror images.
Ans. 10-11 (emphasis added).
In response to these findings, Appellants continue to contend the
Examiner erred because:
[T]he Examiner is confusing the question of whether a single
image has the property of reflection (or mirror) symmetry with
the question of whether two images are mirror images of each
other. FIGS. 6A & 6B show gestures that are mirror images of
each other. However, the gesture shown in each image does not
have the property of mirror symmetry. This can be seen by
looking at annotated FIG. 6A on p. 11 of the Answer. The
Examiner has drawn a dashed line showing the supposed line of
symmetry. If the input gesture is folded along the dashed lines,
the upper-left portion of the gesture would partially overlap with
the bottom-right portion of the gesture. The two portions would
not completely overlap because the upper-left portion is longer
than the lower-right portion. However, the dashed line would
only be a line showing mirror symmetry if the two portions
overlapped exactly. Since they would not, annotated FIG. 6A
shows that the gesture does not have reflection symmetry.
Reply Br. 3--4 ( emphasis added).
We agree with Appellants that the disclosure satisfies the written
description requirement with respect to claim 8. More specifically, we agree
with Appellants that the respective gestures illustrated in Fig. 6A and 6B
lack reflection symmetry for the reasons provided in Appellants' Appeal
Brief and Reply Brief. Therefore, we do not sustain the Examiner's
rejection of claim 8 under 35 U.S.C. § 112, first paragraph, for lack of
written description.
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B
The Examiner finds claim 8 is also indefinite because:
Applicant[s] provide[] the amended limitation "wherein the input
gesture lacks reflection symmetry[.]" However, the independent
claims states the input gesture may comprise of a single line. If
a single line were used as an input gesture, then the input gesture
would include reflection symmetry. Thus, it is unclear how the
input gesture may encompass a single line having reflection
symmetry but also encompass a single line lacking reflection
symmetry.
Final Act. 6 ( emphasis added).
Appellants contend the Examiner also erred in rejecting claim 8 under
35 U.S.C. § 112, second paragraph, because:
Appellant[ s] respectfully submit[] that an input gesture that
"comprises at least one line" and "lacks reflection symmetry" is
perfectly consistent. First, the input gesture could include more
than one line-such a gesture is not excluded by the statement
that the gesture "comprises at least one line." In other words, a
gesture that comprises "at least one line" could include two lines,
such as the gesture shown in FIGS. 6A and 6B of the present
specification. Second, the input gesture could comprise a single
curved line that may not have reflection symmetry.
App. Br. 13 (emphasis added).
In response to Appellants' contention, the Examiner further finds:
Claims 1 and 24 state that the input gesture may be a single line
but Claims 8 and 2 7 state the single line lacks reflection
symmetry. While the Appellant is correct in stating the input
gesture may be more than one line, the fact is the input gesture
may also be a single line. A single straight line has reflection
symmetry. The Appellant[ s] appear[] to try to argue to have it
both ways, that the gesture can be a single line with reflection
symmetry but also multiple lines that do not have reflection
symmetry. This was the basis of the indefiniteness rejection
because there was some confusion how both could exist.
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Ans. 12 ( emphasis added).
In response to these findings, Appellants continue to contend the
Examiner erred because:
There is nothing indefinite about imposing two features on a
claim where one feature only narrows another. For example,
the second feature could be that the gesture must comprise at
least two lines. The fact that there are embodiments of gestures
that have only one line does not mean that the requirement that
gestures covered by such a claim must have two lines is
indefinite.
Reply Br. 4 ( emphasis added).
We agree with Appellants that the Examiner has failed to establish
that claim 8 is indefinite. More specifically, we agree with Appellants that
there is nothing indefinite about imposing two features on a claim (via an
independent claim and a dependent claim that further narrows the
independent claim), where one feature narrows another. Therefore, we do
not sustain the Examiner's rejection of claim 8 under 35 U.S.C. § 112,
second paragraph, for indefiniteness.
C
The Examiner finds the combination of cited prior art references
teaches or suggests all the elements of claim 1, finding in relevant part:
Nelson teaches modify an orientation of the received input
gesture based on the determined handedness of the use of the
mobile computing device (Nelson: [0025], describing how the
device determines the handedness of the user and configures
the orientation of the input; Nelson, in [0025], teaches the
interface of the device is altered based on the rotation of the user,
which Nelson states is typically performed based on the hand
the user holds the device in. Nelson further states "[b ]y
configuring the input orientation of the mobile device to match
the user's preferences, the graphics tablet application can
properly translate, rotate, and scale the received input prior to
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sending it to the user computer." Thus, the user's preference is
considered to be the preferred handedness of the user, as there is
no other mention of preferences within [0025], and the graphics
tablet application modifies the orientation of the input based on
the user's preference, which again is considered the handedness
of the user).
Sleeman teaches wherein to modify the orientation of the
received input gesture independent of the orientation of the
mobile computing device (Sleeman: [O 151 ], noting the device
does not need to be provided in a different orientation in order
for the device to flip or modify the user input based on the
determine handedness of the user).
Final Act. 8-9 ( emphasis added); see also Ans. 3-8.
Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[Nelson] does not disclose the feature of "modify[ing] an
orientation of the received input gesture based on the determined
handedness of use of the mobile computing device" as recited in
claim 1 because Nelson does not disclose, explicitly, implicitly,
or inherently, how the configuration of the input orientation is
done.
While ,r [0025] of Nelson may disclose configuring an input
orientation of the mobile device, Appellant[ s] find[] nothing in
,r [0025] that discloses, explicitly, implicitly, or inherently, how
the configuration of the input orientation is made, and, in
particular, finds nothing that discloses that the configuration is
done based on the mobile device determining a handedness of
use of the mobile device.
[T]he orientation of the input is configured based on a user
configuration, not on a determined handedness of use.
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Paragraph [0025] may describe a reason why a user may prefer
a particular orientation, but it does not disclose that the mobile
device has any way of detecting such a preference.
Even if, arguendo, Nelson disclosed that the orientation of the
input was modified based on a user setting that reflected a user's
preferred handedness, that would still not disclose modifying the
orientation of an input based on a determined handedness of use,
since a setting indicating a general preferred handedness is not
the same as a determined handedness of use based on the
presence of a hand on the mobile computing device.
[Sleeman] fails to disclose "modify[ing] the orientation of the
received input gesture ... independent of the orientation of the
mobile computing device" as recited by claim 1 because
Sleeman's disclosure relating to a gesture for scrolling up and
down a document is not the same as modifying an orientation of
an input gesture.
Paragraph [O 151] does not state that the input is flipped or even
that the input is modified in any way. Rather, ,r [O 151] merely
teaches that a right-handed gesture is interpreted differently
from a left-handed gesture.
App. Br. 6-9, 11 (emphasis added); see also Reply Br. 2-3.
Appellants' arguments do not persuade us of reversible error in any of
the Examiner's findings. More specifically, regarding Nelson, Nelson
discloses configuring an input orientation of a mobile device based on a
user's preference (e.g., handedness of a user) where the configuring involves
translating, rotating, and scaling the received input. See Nelson ,r 25. Thus,
we agree with the Examiner that Nelson (in combination with the other cited
references) teaches or suggests "modify[ing] an orientation of the received
input gesture based on the determined handedness of use of the mobile
computing device." See Final Act. 8. We disagree with Appellants'
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argument that Nelson does not teach or suggest the aforementioned
limitation because Nelson does not disclose how the system translates,
rotates, or scales the received input. Instead, we agree with Examiner that
the aforementioned limitation does not recite how the modification of the
orientation of the gesture is done, and, thus, Nelson is not required to
disclose how the system performs the translation, rotation, or scaling of the
received input. See Ans. 5. We further disagree with Appellants' argument
that Nelson only teaches modifying an input orientation based on a user
setting configured in advance of operation of a mobile device. Instead, we
agree with the Examiner that paragraph 4 of Nelson discloses that a user
may configure the behavior of a feature of the mobile device when a
graphics tablet application is active. See Ans. 6 (citing Nelson ,r 4). We
further agree with the Examiner that Appellants' argument that Nelson does
not teach or suggest a determination of a handedness of a use of the mobile
device does not address the combination of references, as the Examiner
relied upon Brisebois, not Nelson, for teaching a handedness detection
module to determine a handedness of a use of a mobile computing device.
See Ans. 6; see also Final Act. 7 ( citing Brisebois ,r 73).
Further, regarding Sleeman, Sleeman discloses recognizing gestures
(e.g., motions to the left and right) as commands (e.g., "up scroll" and
"down scroll") for a left-handed actuation and recognizing gestures in the
opposite directions as the same commands for a right-handed actuation. See
Sleeman ,r 151. Thus, we agree with the Examiner that Sleeman (in
combination with the other cited references) teaches or suggests "modify an
orientation of the received input gesture ... independent of the orientation of
the mobile computing device." We disagree with Appellants' argument that
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Sleeman does not disclose modifying the orientation of an input gesture, as
the recognition of opposite input gestures from respective left-handed and
right-handed actuations as the same command necessarily involves
modifying an orientation of at least one of the input gestures. Further, even
assuming arguendo that Sleeman fails to disclose modifying the orientation
of an input gesture, as previously discussed, the Examiner also found Nelson
discloses translating, rotating, and scaling received input, and Appellants'
argument does not address the Examiner's finding regarding Nelson.
Thus, we concur with the Examiner that the combination of Nelson
and Sleeman (in combination with the other cited prior art references)
teaches or suggests "modify an orientation of the received input gesture
based on the determined handedness of use of the mobile computing device
and independent of the orientation of the mobile computing device," as
recited in claim 1. Therefore, we sustain the rejection of claim 1 under
35 U.S.C. § 103(a).
D
The Examiner finds the combination of cited prior art references
teaches or suggests all the elements of claim 8, finding in relevant part:
Sleeman further teaches wherein the input gesture lacks
reflection symmetry and wherein modifying the orientation of
the input gesture comprises flipping the input gesture (Sleeman:
[O 151 ], noting the gesture recognition algorithm can determine
whether the same gesture is being input by either hand and flip
the gesture accordingly based on the handedness determined).
Final Act. 10 ( emphasis added); see also Ans. 13.
Appellants contend the Examiner erred in rejecting claim 8 under
35 U.S.C. § 103(a) because:
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Sleeman does not teach flipping an input gesture. As discussed
above in regard to independent claim 1, Appellant[ s] respectfully
submit[] that ,r [O 151] of Sleeman teaches nothing about
modifying an orientation of a gesture . ... Paragraph [0151]
does not state that the input is flipped or even that the input is
modified in any way. Rather, ,r [O 151] merely teaches that a
right-handed gesture is interpreted differently from a left-handed
gesture.
App. Br. 14--15 (emphasis added); see also Reply Br. 5.
We are not persuaded of Examiner error. As previously discussed
with respect to claim 1, we concur with the Examiner that Sleeman (in
combination with the other cited prior art references) teaches or suggests,
"modify an orientation of the received input gesture ... independent of the
orientation of the mobile computing device." Thus, we similarly concur
with the Examiner that Sleeman (in combination with the other cited prior
art references) also teaches or suggests, "wherein to modify the orientation
of the input gesture comprises to flip the input gesture," as recited in claim
8. Therefore, we sustain the rejection of claim 8 under 35 U.S.C. § 103(a).
E
The Examiner finds the combination of cited prior art references
teaches or suggests all the elements of claim 30, finding in relevant part:
Hinckley further teaches wherein the user interface is to receive,
from the touchscreen display, multiple contemporaneous tactile
inputs located in an outer edge of the touchscreen display, and
ignore the multiple contemporaneous tactile inputs as a function
of the handedness of use of the mobile computing device, the
location of the tactile inputs being located on the outer edge of
the touchscreen display, and the contemporaneousness of the
tactile inputs (Hinckley: Figs. 4-5; [0059]-[0062], describing
how the user interface determines which hand is being used and
compares the larger area touch recognized by the screen as an
accidental input, in this case, the handedness is determined, the
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location of the touches on the outer edge of the display are
determined and the timing of the touches are determine in
order to reject the touch inputs; Fig. 5, showing the inadvertent
hand touches in the lower right edge of the touchscreen display,
which are ignored; it should also be noted under the broadest
reasonable interpretation, the "outer edge of the touchscreen
display" may be any area within the touchscreen display as
there are no positive limitations restricting what may be
considered the outer edge of the touchscreen display; [0066]-
[0067]).
Final Act. 12-13 (emphasis added); see also Ans. 14--16.
Appellants contend the Examiner erred in rejecting claim 30 under
35 U.S.C. § 103(a) because:
Hinckley fails to disclose "ignore the multiple contemporaneous
tactile inputs as a function of ... the location of the tactile inputs
being located on the outer edge of the touchscreen display"
because the location of the tactile inputs relative to the outer
edge of the display is not used as a factor in any decision in
Hinckley.
Hinckley may generally discloses ignoring several
contemporaneous inputs, such as a user may make when using a
pen on a touchscreen as shown in FIGS. 4 & 5. However,
Appellant[ s] do[] not find any disclosure in Hinckley that the
inputs are ignored "as a function of ... the location of the tactile
inputs being located on the outer edge of the touchscreen
display," as recited by claim 30. In Hinckley, the location of the
input relative to the outer edge of the display is not disclosed to
be relevant in any way.
Appellant[s] respectfully submit[] that the Examiner's
interpretation of the "outer edge of the touchscreen display" is
[unreasonably broad].
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As described in ,r [0040], the outer edge "may be defined as a
boundary of the touchscreen display 110 adjacent the outer
[ s ]urrounding edge of the touchscreen display 11 O" and may
have a predefined width such as "less than about 20% of the total
width of the touchscreen display." As described in ,r [0041] and
as shown in FIG. lOA, a user may accidentally touch an edge of
the screen, and those inputs may be ignored based on being the
in the "outer edge" of the display. Interpreting the "outer edge"
to be any area of the screen would clearly be inconsistent with
the specification [.]
Even if, arguendo, the construction of the Examiner of the "outer
edge" was correct and that Hinckley shows inputs received at an
"outer edge" that are ignored, Hinckley would still not teach the
feature as recited in claim 30. The claim does not merely recite
that the inputs are located at the outer edge of the display, but
rather the claim clearly recites that the inputs are ignored "as a
function of ... the location of the tactile inputs being located on
the outer edge of the touchscreen display."
App. Br. 16-18 (emphasis added); see also Reply Br. 5-10.
We are not persuaded of Examiner error. Hinckley discloses an
interpretation and behavior selection module (IBSM) that determines
whether an input action (e.g., touch) is inadvertent based on the following
factors: (a) position of a user's hand (or hands) above a display surface (or
other part of a computing device) over the course of the input action;
(b) orientation of a pen device upon approach of the display surface;
( c) manner ( or progression) in which a hand and the pen device approach the
display surface; ( d) behavior of the user (e.g., whether a user is left-handed
or right-handed); ( e) shape of actual contacts based on touch input actions
and pen input actions; (f) orientation of the computing device that occurs
while touch input actions are received; and (g) dynamic motion of the
computing device at the time touch input actions are received. See Hinckley
,r,r 59-70. In light of this disclosure, we agree with the Examiner that
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Hinckley (in combination with the other cited references) teaches or
suggests "ignore the multiple contemporaneous tactile inputs as a function of
... the location of the tactile inputs being located on the outer edge of the
touchscreen display." See Final Act. 12-13. 4
Thus, we concur with the Examiner that Hinckley (in combination
with the other cited prior art references) teaches or suggests "ignore the
multiple contemporaneous tactile inputs as a function of ... the location of
the tactile inputs being located on the outer edge of the touchscreen display,"
as recited in claim 30. Therefore, we sustain the rejection of claim 30 under
35 U.S.C. § 103(a).
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 8 and 27 as failing to comply with the written description
requirement under 35 U.S.C. § 112, first paragraph.
(2) Appellants have established that the Examiner erred in rejecting
claims 8 and 27 as being indefinite under 35 U.S.C. § 112, second
paragraph.
(3) The Examiner has not erred in rejecting claims 1-5, 7-19, 24, 26-
28, and 30-32 as being unpatentable under 35 U.S.C. § 103(a).
(4) Claims 1-5, 7-19, 24, 26-28, and 30-32 are not patentable.
4 We take no position on whether the Examiner's interpretations of "as a
function of," and "outer edge" are reasonable in light of Appellants'
Specification. Even assuming arguendo that Appellants are correct in their
contention that the Examiner's interpretations of the aforementioned terms
are unreasonable, we still concur with the Examiner that Hinckley (in
combination with the other cited prior art references) teaches or suggests the
aforementioned limitation of claim 30 for the reasons previously discussed.
18
Appeal 2018-005158
Application 13/729,379
DECISION
We reverse the Examiner's rejection of claims 8 and 27 as failing to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph.
We reverse the Examiner's rejection of claims 8 and 27 as being
indefinite under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner's rejection of claims 1-5, 7-19, 24, 26-28,
and 30-32 as being unpatentable under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed.
See 37 C.F.R. § 4I.50(a)(l).
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
19