Ex Parte Heatherly et al

Patent Trial and Appeal Board

Nov 28, 2016

12806986 (P.T.A.B. Nov. 28, 2016)

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.
12/806,986 08/24/2010 Christopher W. Heatherly 0260286 5635
63649 7590 11/30/2016
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
PHAM LU, NGAN T
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
docketing @ farj ami. com
farj amidocketing @ yahoo, com
ITarj ami @ farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER W. HEATHERLY, KENLIP ONG,
ARMEN MKRTCHYAN, JONATHAN BACKER,
and BRIAN WHITE1
Appeal 2015-004723
Application 12/806,986
Technology Center 2600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 35, 37, 38, 41, 43—45, 47, and 48, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Disney Enterprises, Inc., a
wholly owned subsidiary of The Walt Disney Corporation. App. Br. 2.
Appeal 2015-004723
Application 12/806,986
Introduction
Appellants state “[t]he present invention relates generally to the field
of gaming, and more particularly, to gaming using touch-sensitive surfaces.”
(Spec 1.) Claim 35 is representative:
35. A peripheral device for use with a touch-sensitive system
having a touch surface, the peripheral device comprising:
a plurality of touch points configured to contact the touch
surface of the touch-sensitive system, wherein the plurality of
touch points are further configured to provide information to
the touch-sensitive system for identifying the peripheral device;
a contact region configured to be grounded when touched
by a person;
a first touch lead connected to the contact region,
wherein when the contact region is grounded when touched by
the person, the first touch lead is configured to provide a first
grounding path from the contact region to at least two of the
plurality of touch points for identifying the peripheral device,
wherein the identifying distinguishes between the plurality of
touch points of the peripheral device and a plurality of touch
points of another peripheral device;
a touch switch configured to be grounded when touched
by the person; and
a second touch lead connected to the touch switch,
wherein when the touch switch is grounded when touched by
the person, the second touch lead is configured to provide a
second grounding path from the touch switch to at least one of
the plurality of touch points different than the at least two of the
plurality of touch points.
App. Br. 14 (Claims App’x).
Rejections
All pending claims stand rejected under 35 U.S.C. § 103(a) as obvious
over Deere et al. (US 2008/0161086 Al; published July 3, 2008) and Zachut
et al. (US 2009/0322352 Al; published Dec. 31, 2009). Final Act. 3—6.
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Application 12/806,986
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions of Examiner error. We disagree with Appellants’ conclusions.
We adopt as our own the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and as set forth in the Answer.
We concur with the Examiner’s conclusions. We highlight the following for
emphasis.
The Examiner relies on Deere for teaching all requirements of claim
35 except for the limitation of “the first touch lead is configured to provide a
first grounding path from the contact region to at least two of the plurality of
touch points for identifying the peripheral device.” Final Act. 3^4 (also
citing Deere Figs, la—b, 2, || 12, 13, 34—36). For that limitation, the
Examiner maps one of the claimed “at least two of the plurality of touch
points for identifying the peripheral device” to Deere’s embodiment of Figs,
la—b. Id. at 4 (identifying “triggerable sub-part 11” and citing 134). The
Examiner finds Zachut, which relates to “detecting information about
objects [including for example] detecting] position, identification and/or
orientation” (Zachut 12), teaches a “touch lead [that] is coupled to at least
two touch points,” thus teaching the remainder of that limitation. Final Act.
4 (citing Zachut Figs. 6A, 6D, 6E, 194).
Appellants argue the Examiner errs in finding that Deere teaches the
recited requirement for a “second touch lead . . . ‘configured to provide a
second grounding path . . . to at least one of the plurality of touch points
different than the at least two of the plurality of touch points.’” App. Br. 10.
Appellants further argue the Examiner’s mapping of Deere’s sub-part 11 to
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Application 12/806,986
the claimed first touch lead and sub-part 12 to the claimed second touch lead
renders Deere’s device inoperable, and that:
The Office Action completely ignores the fact that both
sub-parts 11 and 12 in Deere are for identifying the pawn, and
separates the two sub-parts, so that sub-part 12 can be used to
satisfy the touch switch of claim 35. Then the Office Action
introduces a non-existing touch point in Deere, from Zachut, for
the purpose of combining it with electrode contact 11a for
identifying the pawn. However, Deere already includes two
sub-parts 11 and 12 with respective electrode contacts 11a and
12a for identifying the pawn. One of ordinary skill in the art
would not be motivated by either Deere or Zachut to arrive at
the Office Action’s suggested combination, so as to use subpart
12 of Deere that is used for identifying the pawn as a touch
switch, and then use an element from Zachut to perform the
same function that subpart 12 is already performing in Deere.
App. Br. 11.
We disagree with Appellants. While certainly Deere describes an
embodiment that uses sub-parts 11 and 12 together for device identification,
Deere provides broad alternative teachings as well. For example, Deere
states other embodiments of the example in Figures la—b “may comprise any
number of triggerable sub parts” (135). Deere teaches that each sub-part
can provide a “trigger signal” to provide various information, including
device identification, in which case “only one electrode [touch point, in the
vernacular of the claim] is required for communicating the trigger signal to
the board” (136). Deere further describes a game piece that includes three
touch points on the bottom of a game piece to enable determining the
orientation of a game piece (Figs. 5a—c, 144). We note this described
“orientation determination” functionality teaches or at least suggests a
grounding path from a single contact region to all three touch points.
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Application 12/806,986
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). The teachings
of Deere described above fully support the Examiner’s finding that “Deere
in view of Zachut disclose[s] a second touch lead . . . configured to provide a
second grounding path ... to at least one of the plurality of touch points” as
recited. See Ans. 5—6, Final Act. 3^4. We agree with the Examiner that it in
the combination of Deere with Zachut, “Deere performs the same function
as it does separately of having two electrodes for the sub-parts” and “Zachut
performs the same function as it does separately.” Ans. 6. Appellants have
not provided persuasive evidence or argument to show combining Zachut’s
multiple touch points for identifying devices with Deere’s embodiment of
Figs, la—b was “uniquely challenging or difficult for one of ordinary skill in
the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398,
419 (2007)); see also id. at 421 (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”).
Appellants further argue the Examiner errs because “there is no
suggestion, motivation or desire expressed or implied in the cited references
to modify the function of subpart 12 in Deere, and then import elements
from Zachut to perform the original function of subpart 12 in Deere.” Reply
Br. 3. We find this unpersuasive. A reason to combine teachings from the
prior art “may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
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Application 12/806,986
the nature of the problem to be solved.” WMS Gaming Inc. v. Int 7 Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In reRouffet, 149 F.3d
1350, 1357 (Fed. Cir. 1998)). “[A]n analysis of obviousness . . . may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill in the art that do not necessarily require explication
in any reference or expert opinion.” Perfect Web Technologies, Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). We agree with the
Examiner that “[t]he results of the combination would have been predictable
and resulted in modifying the invention of Deere to include more than one
electrodes (tokens), as disclosed by Zachut, thereby [to] provide a broad
range of identification possibilities for the object (peripheral device), as
Zachut discusses at paragraph [0012].” Ans. 6.
We accordingly sustain the Examiner’s rejection of claim 35, and
along with it the rejection of claims 37, 38, 41, 43—45, 47, and 48, for which
Appellants provide no separate substantive arguments. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014) and In reLovin, 652 F.3d 1349, 1351 (Fed. Cir.
2011) (sustaining the requirement for appellants to articulate substantive
arguments for individual claims to be treated separately).
DECISION
We affirm the Examiner’s rejection of claims 35, 37, 38, 41, 43—45,
47, and 48.
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
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