Ex Parte Luttrell et al

Patent Trial and Appeal Board

Feb 28, 2018

14547734 (P.T.A.B. Feb. 28, 2018)

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.
14/547,734 11/19/2014 Wesley Abram Luttrell RPS920140029USNP(710.352) 3264
58127 7590 02/28/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
BERARDESCA, PAUL M
ART UNIT PAPER NUMBER
2661
MAIL DATE DELIVERY MODE
02/28/2018 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 WESLEY ABRAM LUTTRELL,
CHRISTOPHER MILES OSBORNE, DANIEL JORDAN SCHANTZ, and
VINCENT CHARLES CONZOLA
Appeal 2017-009631
Application 14/547,7341
Technology Center 2600
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—22. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Lenovo (Singapore) PTE. LTD. as the real party in
interest. App. Br. 3.
Appeal 2017-009631
Application 14/547,734
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is directed to an
information handling device (e.g., a smart phone) comprising a camera, a
cover, and a communication mechanism. Spec. 12. A button may be
provided on the cover such that the user may take a picture and otherwise
control the camera software. Spec. H 19, 34. The cover may also include a
movable area (e.g., a folding flap) that obscures and exposes the camera.
Spec. 131. In a disclosed embodiment, when the moveable area is operated
to expose the camera, the device may be caused to activate the camera
software, and optionally, start taking pictures. Spec. 1 32. Further, the
moveable area may include a removable area attached to the rest of the cover
using a connection device (e.g., magnets, VELCRO, mechanical
connectors). Spec. 131. In addition, the cover may have a communication
mechanism (e.g., RFID, NFC, or an electrical connector) that facilitates
communication between the cover and the device. Spec. 135.
Claims 1 and 21 are representative of the subject matter on appeal and
are reproduced below with the disputed limitations emphasized in italics'.
1. A system, comprising:
an information handling device comprising a camera; and
a removable cover for the information handling device,
comprising:
a movable area obscuring and exposing the
camera;
at least one button controlling activation of the
camera', and
a communication mechanism facilitating
communication between the removable cover and the
information handling device.
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21. A device, comprising:
a processor;
a communication mechanism operatively coupled to the
processor;
a camera operatively coupled to the processor;
a memory device that stores instructions executable by
the processor to:
receive, through the communication mechanism, a user
input comprising exposing the camera;
activate software of the camera on the device after the
exposing; and
receive the image captured by the camera.
The Examiner’s Rejections2
1. Claim 21 stands rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Misawa (US 2005/0280732 Al; Dec. 22, 2005).
Final Act. 11—12.
2. Claims 1—4, 6—8, 12, 15—17, and 22 stand rejected under
35 U.S.C. § 103 as being unpatentable over Misawa; Cheng et al.
(US 2012/0262617 Al; Oct. 18, 2012) (“Cheng”); and Matsuki
(US 2014/0359438 Al; Dec. 4, 2014). Final Act. 13-20.
3. Claims 5 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Misawa, Cheng, Matsuki, and Harris et al.
(US 2015/0350551 Al; Dec. 3, 2015) (“Harris”). Final Act. 20-21.
4. Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Misawa, Cheng, Matsuki, and Han (US 8,363,157 Bl;
Jan. 29, 2013). Final Act. 21—22.
2 The Examiner also rejected claims 13, 14, and 21 on the ground of
nonstatutory double patenting, and claims 1—20 and 22 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement, but
the Examiner has withdrawn these rejections. Ans. 17.
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5. Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Misawa, Cheng, Matsuki, and Okabe et al.
(US 2015/0049204 Al; Feb. 19, 2015) (“Okabe”). Final Act. 22-23.
6. Claims 13, 14, 19, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Misawa and Cheng. Final Act. 23—25.
ANALYSIS3
Rejection under 35 U.S.C. § 102(a)(1)
Appellants argue Misawa does not disclose “receiv[ing], through the
communication mechanism, a user input comprising exposing the camera,”
as recited in claim 21. App. Br. 19-20. In particular, Appellants assert even
if Misawa’s bus were a communication mechanism, it is not used to
determine that the camera has been exposed. App. Br. 19 (citing Misawa
8, 81, 90). Instead, Appellants assert Misawa’s bus is a data bus used to
communicate between the image signal processor and SDRAM. App. Br. 19
(citing Misawa H 8, 81, 90).
Misawa is generally directed to a portable digital camera. Misawa,
Abstract, Title. Figure 10 of Misawa is illustrative and is reproduced below:
3 Throughout this Decision, we have considered the Appeal Brief, filed
February 15, 2017 (“App. Br.”); the Reply Brief, filed June 30, 2017
(“Reply Br.”); the Examiner’s Answer, mailed May 3, 2017 (“Ans.”); and
the Final Office Action, mailed September 23, 2016 (“Final Act.”), from
which this Appeal is taken.
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FIG. 10
Figure 10 of Misawa illustrates the rear side of a digital still camera in an
open position. The camera includes an imaging unit (3), camera body (4)
(having a grip portion), and display unit (5), each rotationally aligned along
a central axis and connected by rotational support mechanism (6). Misawa
11 65, 75, Fig. 10. Camera body (4) can be in a closed position—when
imaging unit 3 is positioned directly on top of it—or an open position—
when it is offset from imaging unit (3). Compare Misawa, Fig. 10, with
Misawa, Fig. 11. When camera body (4) is moved from a closed to open
position, pressure on rotational detection switch (17) is discontinued, and the
switch is turned off. Misawa 171, Fig. 10. In addition, display unit (5) is
flexible—it may be extended away from the rotational support mechanism,
as shown in Figure 10, or bent/curved around imaging unit (3) and camera
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body (4). Compare Misawa, Fig. 10, with Misawa, Fig. 11; Misawa 65,
75. When display unit (5) is bent or curved, retention slot (60a) may be
engaged with retention claw (61) of camera body (4), thereby depressing
power pushbutton switch (62) and powering off the camera. Misawa 197,
Fig. 11.
The Examiner finds that “the connection between the CPU and the
rotating detection sw[itch] 17 or . . . pushbutton 62 read on the
communication mechanism since this is what is used to determine that the
camera has been exposed.” Ans. 18. The Examiner explains “the rotation
detection sw[itch] 17 or the pushbutton 62 both send a signal indicating the
state of the display.” Ans. 18 (citing Misawa H 71, 97).
We agree with the Examiner that Misawa discloses the disputed claim
language because Misawa’s rotational detection switch and pushbutton are
used to receive and communicate user input that exposes the camera. For
example, when a user spreads the display unit by disengaging the retention
slot from the retention claw, the imaging unit and camera body are exposed
and the pushbutton is released, causing the power supply to turn on. Misawa
197. Additionally, when a user offsets the camera body from the imaging
unit, thereby moving the camera body from a closed to an open or exposed
position, the rotation detection switch is released and the camera’s CPU is
sent a signal that the rotation detection switch is off. Misawa Tflf 28, 71, 87,
90; see also Misawa, Fig. 7 (depicting an arrow pointing directly from
rotation detecting switch (17) to CPU (30)).
Appellants further argue Misawa does not disclose “activating]
software of the camera on the device after the exposing,” as recited in claim
21. App. Br. 19-20. Instead, Appellants assert that, in Misawa, after the
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user has disengaged the display unit from the camera body and rotated the
rotatable mechanism to expose the lens, the user must take additional steps
in order to activate the software of the camera. App. Br. 19—20.
We disagree with Appellants. As the Examiner finds, Misawa’s
“digital still camera 2 is set in the image pickup mode upon receiving an off
signal of the rotation detection switch 17.” Ans. 19 (citing Misawa 190). In
other words, after the camera has been exposed by offsetting the imaging
unit from the camera body, the camera software is activated. As the
Examiner explains, “[although] the user may be required to provide more
input to the device to further specify which type of image pickup mode is to
be used and then again to actually take a picture, no further user action is
required to switch the camera into the image pickup mode.” Ans. 19.
Appellants do not persuasively rebut this finding or explanation in the Reply
Brief.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 21 under
35U.S.C. § 102(a)(1).
Rejections under 35 U.S.C. § 103
As an initial matter, Appellants dispute the Examiner’s interpretation
of “a communication mechanism,” as recited in claims 1—10 and 22, as
invoking 35 U.S.C. § 112(f). App. Br. 18; Reply Br. 17. Appellants submit
that “the claim recites sufficiently definite structure.” App. Br. 18.
The Federal Circuit has established that use of the term “means” is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112(f): use of the word “means” creates a
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rebuttable presumption that the inventor intended to invoke § 112(f),
whereas failure to use the word “means” creates a rebuttable presumption
that the inventor did not intend the claims to be governed by § 112(f).
Personalized Media Commc’ns., LLCv. Int’l Trade Comm’n, 161 F.3d 696,
703-04 (Fed. Cir. 1998).
However, the presumption that a limitation that does not recite a
“means for” or a “step for” and, therefore, is not subject to § 112(f) is not a
strong one. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
Cir. 2015) (concluding “that such a heightened burden is unjustified and that
we should abandon characterizing as ‘strong’ the presumption that a
limitation lacking the word ‘means’ is not subject to § 112, para. 6 [now
§ 112(f)]”). Rather, the Williamson Court explained:
The standard is whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure. When a claim term
lacks the word “means,” the presumption can be overcome and
§ 112 [(f)] will apply if the challenger demonstrates that the claim
term fails to “recite sufficiently definite structure” or else recites
“function without reciting sufficient structure for performing that
function.”
Williamson, 792 F.3d at 1349 (internal citations omitted). Further, the Court
stated:
“Module” is a well-known nonce word that can operate as a
substitute for “means” in the context of § 112 [(f)]. . . . Generic
terms such as “mechanism,” “element,” “device,” and other
nonce words that reflect nothing more than verbal constructs
may be used in a claim in a manner that is tantamount to using
the word “means” because they “typically do not connote
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sufficiently definite structure” and therefore may invoke
§ H2[(f)].
Williamson, 792 F.3d at 1350.
Here, the Examiner determines the claimed “communication
mechanism” is a generic placeholder coupled with the functional language
of “facilitating communication” without reciting sufficient structure. Final
Act. 10. The Examiner does, however, find corresponding structure in the
Specification and, accordingly, construes the communication mechanism as
a “short range communication protocol chip or device or electrical
connectors that are coupled to the information handling device using a
connection port.” Final Act. 10; Ans. 18 (citing Spec. 137). Appellants do
not persuasively rebut the Examiner’s findings or otherwise provide a
proposed construction for a “communication mechanism.” Accordingly, we
are unpersuaded of Examiner error.4
Claim 1 recites, in relevant part, “a removable cover for the
information handling device, comprising ... at least one button controlling
activation of the camera; and a communication mechanism facilitating
communication between the removable cover and the information handling
device.”
In rejecting claim 1, the Examiner finds Misawa’s disclosure of a
flexible display unit for a digital still camera teaches “a . . . cover for the
information handling device.” Final Act. 13 (citing Misawa item 5); see,
4 We note because, as discussed herein, we find Misawa discloses a
communication mechanism using the Examiner’s construction, even if 35
U.S.C. § 112(f) were not applicable, Misawa would also disclose a
communication mechanism under a broad but reasonable interpretation
consistent with the Specification.
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e.g., Misawa, Figs. 6, 11. Further, the Examiner finds it was well known in
the art to provide a cover with “at least one button controlling activation of
the camera,” as evidenced by Matsuki’s disclosure of a display screen
having touch-sensitive icons for capturing images and adjusting camera
settings. Final Act. 13 (citing Matsuki, Fig. 1(A) (items 1, 105, 106, 107,
108)); see, e.g., Matsuki, Fig. 1(A). The Examiner concludes “it would have
been obvious ... to improve Misawa by applying the technique of using a
touchscreen display with a GUI capable of controlling the camera to achieve
the predictable result of improving the usability of the device.” Final
Act. 13.
In addition, the Examiner finds it was well known in the art to provide
a cover that is removable, as evidenced by Cheng’s disclosure of a
removable display module. Final Act. 14 (citing Cheng, item 2); see, e.g.,
Cheng, Fig. 1. The Examiner concludes, and we agree, “it would have been
obvious ... to improve the combination by applying the technique of
allowing the display to be removed from the body to achieve the predictable
result of controlling the camera from a distance.” Final Act. 14.
Appellants argue Misawa’s bus does not teach “a communication
mechanism” as claimed because “this data bus is specifically used ... to
communicate the image data between the image signal processor and
SDRAM,. . . [and] cannot additionally or instead be used for ‘facilitating
communication between the removable cover and the information handling
device.’” App. Br. 21.
We disagree with Appellants. Contrary to Appellants’ assertions,
Misawa’s data bus can be used to communicate not only with SDRAM, but
also with numerous other system elements, including the display unit’s
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organic electroluminescence display (“ELD”) panel.
Figure 7 of Misawa, as the Examiner finds, is illustrative and is
reproduced below:
OBJECT
LIGHT
11
u__
Figure 7 of Misawa illustrates circuitry in a digital still camera. In Misawa,
once the imaging unit has been exposed and the shutter release button (16)
has been depressed, object light is focused on image pickup device (7d),
which picks up an image by converting a pickup signal of a frame to image
data. Misawa 19, 65, 70, Fig. 7. After the image data has been sampled
(33), amplified (34), digitized (35), and further processed (36), it may be
communicated via data bus (37) to a display driver (39) and then to the
display unit’s organic ELD panel (18) for display. Misawa 80, 81, Fig. 7;
see also Misawa H 72, 74, Fig. 5 (items 18, 19).
Thus, we agree with the Examiner that Misawa teaches “a
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communication mechanism” as claimed because bus 37 comprises electrical
circuitry that serves as a conduit for communicating image data between the
imaging unit, the camera body, and the display unit’s organic ELD panel 18.
As the Examiner explains, “Misawa explicitly states that a live image is
displayed on the display 18 from the image pickup device via the bus 37
. . . . Bus 37 of Misawa clearly facilitates communication between the
[camera body’s circuit board] 11 and organic ELD panel 18 as shown in
[Figure] 7.” Ans. 20-21 (citing Misawa, Fig. 7,1 81).
Appellants further argue the Examiner erred because neither Cheng
nor Misawa individually teaches “a removable cover for the information
handling device.” App. Br. 21—22. Non-obviousness cannot be established,
however, by attacking references individually where, as here, the ground of
unpatentability is based upon the teachings of a combination of references.
In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for
obviousness is whether the combination of references, taken as a whole,
would have suggested the patentee’s invention to a person having ordinary
skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are unpersuaded of error because Appellants’ arguments are not
responsive to the Examiner’s rejection and attack the references
individually, whereas the Examiner’s rejection relies on, inter alia, the
combined teachings of Misawa and Cheng. Final Act. 13—14. In particular,
the Examiner finds, and we agree, Misawa’s flexible display unit for a
digital still camera teaches “a . . . cover for the information handling
device,” and it was well known in the art to make a cover “removable,” as
evidenced by Cheng’s removable display module. Final Act. 13—14.
Appellants do not persuasively rebut these findings of the Examiner.
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Next, Appellants argue the Examiner erred because Matsuki discloses
a user providing input to the screen of a device to activate the camera,
whereas claim 1 requires the removable cover to comprise “at least one
button controlling activation of the camera.” App. Br. 24.
We are unpersuaded of error because Appellants’ argument is not
responsive to the Examiner’s rejection and attacks Matsuki individually,
whereas the Examiner’s rejection relies on, inter alia, the combined
teachings of Misawa, Cheng, and Matsuki. As discussed above, the
Examiner relies on the combination of Misawa and Cheng to teach a
removable cover. The Examiner relies on Matsuki as teaching “at least one
button controlling activation of the camera.” Final Act. 13. In particular,
the Examiner finds Matsuki discloses a display screen for an image
capturing device including an icon displaying region that has Zoom, Image
Capture, Four-Way Arrow, and Mode Selection icons. Final Act. 13 (citing
Matsuki, Fig. 1 (items 1, 105, 106, 107, 108)); see, e.g., Matsuki, Fig. 1(A).
Matsuki further discloses a touch panel laid over the display screen for
detecting a user’s touch. Matsuki | 51. Thus, the icons on Matsuki’s
display screen are soft buttons that can be actuated by the user to adjust
camera settings or take pictures. Similarly, Appellants’ Specification
describes a “button” not only as a mechanical button, but alternatively as a
“capacitive sensor[] or some other type of actuation device.” Spec. 134.
Appellants do not persuasively rebut these findings of the Examiner.
Appellants additionally argue one of ordinary skill in the art would
not combine the teachings of Cheng and Misawa. App. Br. 21—23. In
particular, Appellants assert it is unclear what and how the Examiner is
proposing to replace certain elements of Misawa with certain elements of
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Cheng to arrive at the claimed invention. App. Br. 22—23 (citing Misawa
18).
We are unpersuaded of error. Contrary to Appellants’ assertions,
“[t]he test for obviousness is not whether the features of one reference may
be bodily incorporated into the other to produce the claimed subject matter
but simply what the combination of references makes obvious to one of
ordinary skill in the pertinent art.” In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969); In re Mapelsden, 329 F.2d 321, 322 (CCPA 1964). “Under the
correct analysis, any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Here, the Examiner provided specific
reasons for combining the teachings of Misawa, Cheng, and Matsuki—i.e.,
applying a known technique to a known device ready for improvement—
which Appellants do not persuasively rebut. Final Act. 13—14; see KSR, 550
U.S. at 417 (concluding “the mere application of a known technique to a
piece of prior art ready for the improvement” would have been obvious). In
addition, combining familiar elements of Misawa, Cheng, and Matsuki
according to known methods would have been obvious to an ordinarily
skilled artisan, yielding no more than predictable results. See KSR, 550 U.S.
at 416. We find these reasons more than adequate to support the Examiner’s
proposed combination.
Lastly, Appellants argue that even if there were a reason to combine
Misawa and Cheng, the purpose of both Misawa and Cheng would be
frustrated. App. Br. 23. As an initial matter, it is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
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factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). We are unpersuaded of Examiner error
because, at least, Appellants do not provide sufficient persuasive evidence or
explanation as to how the purposes of Misawa and Cheng would be
frustrated if combined. See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Moreover, contrary to Appellants’ arguments, one of ordinary skill
in the art would understand that combining Misawa’s flexible display unit
with Cheng’s removability technique would not frustrate the references’
purposes, but instead would provide complementary functionality. See, e.g.,
Misawa 1 8; Cheng 14.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 1. For
similar reasons, we sustain the Examiner’s rejections of independent claims
13 and 22, which recite similar limitations and were not argued separately.
See App. Br. 20-24; Reply Br. 19—23. For similar reasons, we also sustain
dependent claims 2—12 and 14—20, which depend therefrom and were not
argued separately. See App. Br. 20-24; Reply Br. 19-23.
DECISION
We affirm the Examiner’s decision rejecting claim 21 under 35 U.S.C.
§ 102(a)(1).
We affirm the Examiner’s decision rejecting claims 1—20 and 22
under 35 U.S.C. § 103.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f)(2016).
AFFIRMED
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