Ex Parte Mitchell et al

Patent Trial and Appeal BoardMay 27, 2016

13223130 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/223, 130 08/31/2011 22879 7590 06/01/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR April Slayden Mitchell 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. 82830717 6730 EXAMINER DUONG, HIEN LUONGV AN ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte APRIL SLAYDEN MITCHELL, IAN N. ROBINSON, and MARK C. SOLOMON Appeal2014-008897 Application 13/223,130 Technology Center 2100 Before LARRY J. HUME, NORMAN H. BEAMER, and JAMES W. DEJMEK, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) the Examiner's final rejection of claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify Hewlett-Packard Development Company, LP as the real party in interest. (App. Br. 3.) Appeal2014-008897 Application 13/223,130 THE INVENTION Appellants' disclosed and claimed invention is directed to a display system including a screen configured to operate in a transparent display mode, in which physical user interactions are sensed, resulting in modification of content on the display screen. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A display system comprising: a display including a display screen configured to operate in at least a transparent display mode; an interaction sensing component to sense an object other than a user viewable through the display screen and to receive sensed data regarding physical user interactions; and an interaction display control component, wherein responsive to the sensed object and responsive to the sensed data meeting predefined interaction criteria, content associated with the object and displayed on the display screen is modified. REJECTIONS The Examiner rejected claims 1-20 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. (Final Act. 2--4.) The Examiner rejected claims 1-7, 9-16, and 19 under 35 U.S.C. Â§ 103(a) as being unpatentable over Charlier et al. (US 2010/0277439 Al, pub. Nov. 4, 2010) and Sinclair (US 2005/0108642 Al, pub. May 19, 2005). (Final Act. 4--7.) 2 Appeal2014-008897 Application 13/223,130 The Examiner rejected claims 8 and 17 under 35 U.S.C. Â§ 103(a) as being unpatentable over Charlier, Sinclair, and Tsurumi (US 2009/0135135 Al, pub. May 28, 2009). (Final Act. 8.) The Examiner rejected claims 18 and 20 under 35 U.S.C. Â§ 103(a) as being unpatentable over Charlier, Sinclair, and Whitlow et al. (US 2010/0287500 Al, pub. Nov. 11, 2010). (Final Act. 9.) ISSUE ON APPEAL Appellants' arguments in the Appeal Brief present the following issues: 2 Issue One: Whether claims 1-20 fail to comply with the written description requirement. (App. Br. 8-9.) Issue Two: Whether, under Â§ 103, the combination of Charlier and Sinclair teaches or suggests the independent claim 1 limitations, "an interaction sensing component to sense an object other than a user viewable through the display screen ... wherein ... content associated with the object and displayed on the display screen is modified," and the commensurate limitations recited in independent claims 9 and 19. (App. Br. 10-13.) Issue Three: Whether the combination of Charlier and Sinclair teaches or suggests the additional limitations of dependent claims 4, 5, 7, 13, 14, and 16. (App. Br. 14--15.) 2 Rather than reiterate the arguments of Appellants and the positions of the Examiner, we refer to the Appeal Brief (filed Feb. 27, 2014); the Reply Brief (filed Aug. 11, 2014), the Final Office Action (mailed Aug. 30, 2013); and the Examiner's Answer (mailed June 9, 2014) for the respective details. 3 Appeal2014-008897 Application 13/223,130 Issue Four: Whether the combination of Charlier, Sinclair, and Tsurumi teaches or suggests the additional limitations of dependent claims 8 and 17. (App. Br. 15-17.) Issue Five: Whether the combination of Charlier, Sinclair, and Whitlow teaches or suggests the additional limitations of dependent claims 18 and 20. (App. Br. 17-18.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred. We disagree with Appellants' arguments and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-9); and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 2-17). We concur with the conclusions reached by the Examiner, and emphasize the following. Issue One The Examiner rejects the pending claims for failure to comply with the written description requirement, finding "there is no mention in the specification [of] the description of what object being characterized as an 'object other than a user viewable through the display screen."' (Final Act. 3.) As Appellants point out, this is incorrect - Appellants cite descriptions in the Specification of "keyboard 120" and "camera 120/120a/120b," and argue these "are examples of 'objects' which are not the user (i.e., 'other than', 'non-user')." (App. Br. 9; see Spec. Figs. 2A, 3A, i-fi-127-29, 40.) The Examiner finds these descriptions insufficient because "the specification does not provide any details [sic] written description with 4 Appeal2014-008897 Application 13/223,130 respect to how an object and a user are being recognized differently such that when an object is being recognized is not a user, it senses (and responses [sic] to) but ignores if it is the user." (Ans. 3.) We are persuaded the Examiner erred. The issue of whether the Specification provides sufficient explanation of how user versus non-user objects are differentiated is relevant, at most, to an enablement inquiry under 35 U.S.C. Â§ 112, an issue that is not before us on appeal. Moreover, the Specification does disclose how to detect specific non-user objects through the display screen that would not similarly detect a user - e.g., "hardware- based sensing (including hinge closure sensors, base/monitor position, and keyboard docking) ... [or] a gyroscope for determining the position or change in position of ... an object or device within the sensor range." (Spec. i-f 24, see also Spec. i-fi-128, 29.) Accordingly, we cannot sustain theÂ§ 112, first paragraph, written description rejection of claims 1-20. Issue Two In rejecting the independent claims as obvious underÂ§ 103, the Examiner relies on the disclosure in Charlier of a device with a dual sided transparent display screen, with one side "touch sensitive" in response, for example, to a user's finger, enabling the user to interact with display elements and trigger functions. (Final Act. 4; Ans. 5---6; Charlier Fig. 2, i-fi-128, 30.) The Examiner also relies on the disclosure in Sinclair of a computing device with an adaptive computing environment including sensors that sense the environment - such as a camera to detect movement or a sensor to detect a new input or output device such as a keyboard - to "adjust input and output modes and/or the way applications interact with a 5 Appeal2014-008897 Application 13/223,130 user." (Final Act. 5; Ans. 7-9; Sinclair Abstract, Fig. 2, iii! 29, 36, 38, 43, 67, 68.) Appellants argue Charlier "does not disclose modifying content which is associated with or denoting an object other than a user (viewable through the display screen) and displayed on the display screen." (App. Br. 11.) Appellants further argue Sinclair also fails to disclose these elements. (App. Br. 12.) Appellants' arguments are not persuasive because they address each reference individually, whereas the Examiner's rejection is based on the combination of Charlier and Sinclair. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants are correct to the extent that Charlier does not disclose a non-user object as claimed, and Sinclair does not disclose a transparent screen as claimed, but we are not persuaded the Examiner erred in finding the combination of Charlier and Sinclair teaches or suggests the claimed subject matter. As discussed above, Charlier teaches the use of a system with transparent display and the ability to sense a user object (i.e., a finger) modify content on the screen associated with the object (i.e., elements on the display touched by the finger.) (Charlier iii! 28, 30.) Although the pending claims differentiate between a user and non-user object, the Specification and original claims do not - undercutting the patentable significance of the non-user object limitation. (See, e.g., Spec. if 19, original claim 1.) Moreover, Sinclair teaches detecting the presence or absence of non-user objects such as a keyboard, and adjusting output modes, such as display output, as a result. Likewise, one example of sensing "an object other than a 6 Appeal2014-008897 Application 13/223,130 user" described in the Specification is "the removal of the Keyboard," with a resulting change in display output. (Spec. i-f 27.) In sum, we are not persuaded by Appellants that the Examiner's rationale for combining these references is insufficient, or that the Examiner erred in finding the combination teaches or suggests the claimed subject matter. (Final Act. 5.) Additionally, Appellants do not point to any evidence of record that the resulting arrangements were "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., 485F.3d1157, 1162 (Fed. Cir. 2007) (citingKSRint'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). Issue Three Appellants separately argue the Examiner erred in rejecting dependent claims 4, 5, 7, 13, 14, and 16 as obvious over Charlier and Sinclair. (App. Br. 14--15.) Claim 4 adds the limitation, "wherein the predefined interaction criteria is movement of the object behind the display screen"; claim 5 adds, "wherein the predefined interaction criteria is sensing a presence of the object behind the display screen"; and claim 7 adds, "wherein the modification of the content associated with the object and displayed on the display screen is an appearance of a user interface." Claims 13, 14, and 16 add similar limitations. As to these additional limitations, the Examiner relies on the disclosures in Sinclair discussed above, including detecting the presence or absence of a keyboard, and adjusting display output as a result, as teaching or suggesting these claim limitations. (Final Act. 6-7; Ans. 9-12.) In arguing the Examiner erred, Appellants essentially repeat the arguments 7 Appeal2014-008897 Application 13/223,130 made with respect to the independent claims, which arguments are unpersuasive for the reasons discussed above. Therefore, we sustain these rejections. Issue Four Dependent claims 8 and 17 add the limitation, "wherein the user interface is a virtual representation of the object as previously positioned behind and removed from being behind the display screen." The Examiner's rejections of these claims as obvious over Charlier, Sinclair, and Tsurumi, specifically relies, for the additional limitation, on the disclosure in Tsurumi of displaying an image of a hand as a user moves his/her hand over the surface of a display. (Final Act. 8; Ans. 13-14; Tsurumi Figs. 5A, 5B, iTiT 61, 63, 64.). Appellants argue Tsurumi "does not overcome the shortcomings of the Charlier and Sinclair references." (App. Br. 16.) This argument is unavailing because, as discussed above, we are not persuaded the Examiner's findings with respect to those references are in error. Appellants also argue: [W]ith the Tsurumi reference, once the hand 50 (of the user) is moved out of the imaging area, the icon 51 on the display screen 40 is deleted. Since the icon 51 is deleted when the hand 50 (of the user) is moved out of the imaging area, the icon 51 of the Tsurumi reference cannot be considered to be a "virtual representation" of an object "as previously positioned behind and removed from being behind" the display screen. (Id.) However, we agree with the Examiner's findings that, under a broad but reasonable interpretation of the claim language, the combination of Charlier, Sinclair, and Tsurumi teaches or at least suggests the claim limitation at issue. (Ans. 14.) 8 Appeal2014-008897 Application 13/223,130 Issue Five Dependent claim 18 adds the limitation, "wherein the user interface is a menu spatially aligned with the object as positioned behind the display screen," and claim 20 recites a similar limitation. The Examiner's rejections of these claims as obvious over Charlier, Sinclair, and Whitlow, specifically relies on the disclosure in Whitlow of a symbology menu aligned with a real-world object viewed on a see-through display. (Final Act. 9; Ans. 16-17; Whitlow Abstract, Fig. 2, i1i128-29.) Appellants argue Whitlow does not remedy the alleged shortcomings or the other references, which is unpersuasive for the reasons discussed above. (App. Br. 18.) Appellants also pose a conclusory argument that Whitlow does not disclose the additional limitations of claims 18 or 20. Such conclusory arguments are unpersuasive, and, therefore, we sustain the Examiner's rejections of these claims. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). CONCLUSION For the reasons discussed above, we do not sustain the written description rejections of claims 1-20. Also for the reasons discussed above, we sustain the obviousness rejections of claims 1, 4, 5, 7, 9, 13, 14, 16, and 19 over Charlier and Sinclair, of claims 8 and 17 over Charlier, Sinclair, and Tsurumi, and of claims 18 and 20 over Charlier, Sinclair, and Whitlow. We also sustain the obviousness rejections of claims 2, 3, 6, 10-12, and 15 over Charlier and Sinclair, which rejections are not argued separately with particularity. (App. Br. 14.) 9 Appeal2014-008897 Application 13/223,130 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision. See 3 7 C.F.R. Â§ 41.50(a)(l). DECISION We affirm the Examiner's rejections of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10