Ex Parte Libin

Patent Trial and Appeal Board

Jan 26, 2017

13777272 (P.T.A.B. Jan. 26, 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.
13/777,272 02/26/2013 Phil LIB IN EVM-111US 1442
54004 7590 01/26/2017
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
FLORES, ROBERTO W
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
01/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHIL LIBIN
Appeal 2016-004881
Application 13/777,272
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—12, 14—16 and 18—22. Claims 13 and 17 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
The claimed invention relates to a haptic-acoustic pen. (Title).
Appeal 2016-004881
Application 13/777,272
Illustrative Claim
Claim 1 is illustrative of the subject matter on appeal:
1. A pen for annotating an electronic screen, comprising:
a shell;
an embedded processing unit that receives
incoming signals and determines feedback characteristics;
a tip provided at one end of the shell; and
a haptic generator, provided in the shell, that
receives instructions from the embedded processing unit to
generate vibration of the tip and the shell to emulate resistance
of different simulated writing surfaces.
(contested limitation emphasized).
Rejections
Rl. Claims 1, 3, 4, 14, 15, 19, and 21 stand rejected under 35 U.S.C.
§102 (e) as being anticipated over Westerinen et al., (US Application Pub.
No. 2011/0267182 Al; published Nov. 3, 2011).
R2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Westerinen and Berkson et al.,
(US Patent No. 5,627,348, iss. May 6, 1997).
R3. Claims 5—7, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Westerinen and Russell
(US Patent No. 5,239,489, iss. Aug. 24, 1993).
R4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Westerinen and Zloter (US
Application Pub. No. 2009/0115746 Al, published May 7, 2009).
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Application 13/777,272
R5. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Westerinen, Zloter and Russell.
R6. Claims 11, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Westerinen and Locker
et al., (U.S. Application Pub. No. 2011 /0320204 Al, published Dec. 29,
2011).
R7. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Westerinen, Locker and
Berkson.
ANALYSIS
In reaching this decision, we consider all the evidence presented and
all arguments actually made by Appellant. We focus our analysis on the
contested limitation “an embedded processing unit that receives incoming
signals and determines feedback characteristics’ '' (claim 1, emphasis added).
Appellant contests the recited “an embedded processing unit,” in the
Appeal Brief (8—10), and also in the Reply Brief (4—10), pointing out that the
cited sections of the Westerinen reference do not disclose this element of
apparatus claim 1.1 Independent method claim 15 similarly requires “an
embedded processor on the pen [that] determines the dynamic
characteristics of handwriting trajectory.” Independent claim 19 similarly
recites: “A non-transitory computer-readable medium containing software
1 Claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). “[AJpparatus claims cover what a device is, not
what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1469 (Fed. Cir. 1990).
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Application 13/777,272
running on an embedded processor of a pen that provides feedback to a
user actuating the pen on an electronic screen . . . (emphasis added).
Claim Construction
We give the contested claim limitations the broadest reasonable
interpretation consistent with the specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). We broadly, but reasonably, interpret the
disputed claim term “embedded” (i.e., “an embedded processing unit”) as
being limited to a processing unit, processor, CPU, or equivalent electronic
component(s) that must be at least partially contained inside, or attached
on, the recited “pen” or its “shell.” (Claim l)(emphasis added). Our
interpretation is fully consistent with Appellant’s Specification. See e.g.,
Appellant’s Figure 3, depicting embedded processing unit 360 contained
within shell 310 of digital pen 300.
Although the Specification further describes “[i]n different
embodiments, the processing module 460 may run either on the tablet or on
an embedded processing system 465 of the pen 415” (p. 12,11. 21—22), we
broadly but reasonably interpret the claim term “embedded” (“embedded
processing unit” (claim 1) or “embedded processor” — claims 15 and 19) as
a limiting term that precludes a processing unit (or processor) from being
located outside the pen or pen shell. Cf. Appellant’s Figure 4, depicting
embedded processing system 465 located inside the shell of pen 415, or in
an alternative embodiment, depicting an external processing module 460 that
is not described (Spec. 12,11. 21—22) using the limiting claim term
“embedded.” (Claims 1,15, 19)(emphasis added).
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Application 13/777,272
In rejecting claim 1 under 35 U.S.C. § 102 (e), the Examiner cites to
Westerinen, without providing a clear mapping of the contested limitation
“an embedded processing unit” to a corresponding feature found in or on
Westerinen’s stylus 110, or housing 206 (Fig. 2). (Final Act. 4—5).
In the Answer (3), the Examiner further points to Westerinen’s
“module” in paragraph 29, as purportedly including an embedded processor.
However, we do not find paragraph 29 expressly or inherently describes a
processing unit or processor element embedded in or on Westerinen’s
stylus.
Although we agree it is possible a module, representing processing
software and hardware, could be placed in or on Westerinen’s stylus, our
reviewing court guides: “[ijnherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745, (Fed. Cir. 1999) (internal citations omitted). “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). Anticipation additionally requires a single prior art reference to
disclose the elements arranged as in the claim. See Net Moneyln, Inc. v.
Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
Here, on the record before us, we do not find the Examiner has
identified an express or inherent description of a processing unit, processor,
CPU, or equivalent electronic component(s) embedded in or on
Westerinen’s stylus, or corresponding shell, as required by the language of
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Application 13/777,272
each independent claim on appeal, Westerinen’s paragraph 22, in
referencing Figures 1 and 2, describes a computing device 102 as a
“traditional computer (e.g., a desktop personal computer, laptop computer,
and so on),” and a variety of other devices, none of which are described as
being embedded in or on Westerinen’s stylus 110. (Westerinen, par. 22;
Figs. 1, 2).
Therefore, we find a preponderance of the evidence supports
Appellant’s contention (App. Br. 8) the Examiner has failed to establish a
prima facie case of anticipation for independent claim l.2
Because Appellant has persuaded us the Examiner erred, we reverse
Rejection R1 under § 102(e) of claim 1. For the same reasons, we also
reverse the rejection of independent method claim 15, and independent
computer-readable medium claim 19, which both recite the contested
limitation in commensurate form, and are also rejected under anticipation
Rejection Rl.
Because we have reversed anticipation rejection Rl of each
independent claim on appeal, we also reverse rejection Rl of dependent
claims 3,4, 14, and 21. Regarding the remaining dependent claims rejected
2 Because a rejection under §103 of independent claims 1,15, and 19 is not
before us on appeal, we do not reach and express no opinion as to whether at
least these independent claims might be obvious over the teachings and
suggestions of the Westerinen reference, considered alone, or considered in
combination with one or more additional references. (See e.g., Berkson, col.
13,11. 38—42; describing Fig. 12, depicting electronic circuitry 74 within
active electronic stylus body 70). In the event of further prosecution of this
application, we leave such consideration to the Examiner. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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Application 13/777,272
under § 103 rejections R2—R7, the Examiner has not shown how the
additionally cited secondary references overcome the aforementioned
deficiencies with Westerinen. Therefore, we reverse § 103 rejections R2—R7
of the remaining dependent claims.
DECISION
We reverse the Examiner's decision rejecting claims 1—12, 14—16,
and 18—22.
REVERSED
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