Ex Parte Pasquero et al

Patent Trial and Appeal Board

Mar 10, 2016

12715278 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121715,278 03/01/2010
89107 7590 03/14/2016
Borden Ladner Gervais LLP (Vancouver/BB)
1200 Waterfront Centre
200 Burrard Street, P.O. Box 48600
Vancouver, BC V7X 1 T2
CANADA
FIRST NAMED INVENTOR
Jerome PASQUERO
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.
PAT 101158-2 8437
EXAMINER
LEE, BENJAMIN C
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
IPMailVancouver@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME PASQUERO and DAVID RYAN WALKER
Appeal2014-004840
Application 12/715,278
Technology Center 2600
Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004840
Application 12/715,278
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
THE INVENTION
The application is directed to "[a] method and a portable electronic
device ... for non-visually communicating information in response to
detection of a query gesture on a touch-sensitive display of the portable
electronic device." (Spec. i-f 15.) Claim 1, reproduced below, is illustrative:
1. A holster comprising:
a body having a guide and having a pocket for receiving a
portable electronic device;
wherein the guide is aligned with an area of a touch-sensitive
display of the portable electronic device that is disposed in the
holster;
wherein the guide is tactilely locatable and has a shape
associated with information;
wherein the guide receives a query gesture that requests the
information from the portable electronic device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shin
Ukita et al.
us 6, 130,945
US 2003/0095110 Al
Oct. 10, 2000
May 22, 2003
1 Appellants identify Research In Motion Limited as the real party in
interest. (See App. Br. 1.)
2
Appeal2014-004840
Application 12/715,278
Wong et al.
Mak-Fan et al.
Sadler et al.
US 6,636,203 Bl
US 2008/0012706 Al
US 7,667,371 B2
THE REJECTIONS
Oct. 21, 2003
Jan. 17,2008
Feb.23, 2010
1. Claims 12-13 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. 2 (Final Act. 2.)
2. Claims 1-3, 5, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wong and Shin. (Final Act. 3.)
3. Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wong and Ukita. (Final Act. 6.)
4. Claims 7-14 and 16-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wong, Ukita, and Shin. (Final Act. 8.)
5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ukita and Sadler. (Final Act. 12.)
6. Claims 23-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wong, Mak-Fan, and Shin. (Final Act. 12.)
APPELLANTS' CONTENTIONS
Appellants argue that the rejections were improper for the following
reasons:
A. "Wong fails to teach or suggest wherein the guide is tactilely
locatable and has a shape associated with information and wherein the guide
2 Claims 1-7 were also rejected under 35 U.S.C. § 112, second paragraph
(see Final Act. 2), but those rejections have since been overcome by
Amendment. (See Ans. 2-3.)
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Application 12/715,278
receives a query gesture that requests the information from the portable
electronic device, as set forth in claim 1." (App. Br. 6 (emphasis omitted).)
B. Wong does not teach that "the guide is an opening that extends
through the body," as recited in claim 2. (App. Br. 9.)
C. With respect to claim 4, "Ukita does not teach or suggest that
the PDA provides tactile feedback." (App. Br. 10 (emphasis omitted).)
D. "The combination ofUkita, Wong, Shin, and Sadler fails to
teach or suggest monitoring, by the portable electronic device, an area of the
touch-sensitive display for a query gesture that requests information and
when the query gesture is detected on the touch-sensitive display and is
associated with the area, communicating the information via tactile feedback
provided by the portable electronic device, as set forth in independent claim
7." (App. Br. 12 (emphasis omitted).)
E. Ukita does not teach "entering a reduced power mode in
response to the detecting," as recited in claim 12. (App. Br. 13.)
F. Ukita does not teach "turning off illumination of the touch-
sensitive display in response to the detecting," as recited in claim 13. (App.
Br. 13.)
G. "The combination of Wong, Shin, and Ukita fails to teach or
suggest when a portable electronic device having a touch-sensitive display is
disposed in a holster: turning off illumination of the touch-sensitive display;
monitoring, by the portable electronic device, an area of the touch-sensitive
display for a gesture; when the gesture is detected in association with the
area, performing, by the portable electronic device, a function associated
with the gesture, as set forth in claim 22." (App. Br. 15 (emphasis omitted).)
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Application 12/715,278
In addition, with respect to the rejection of claims 12 and 13 under 35
U.S.C. § 112, second paragraph, Appellants "respectfully request[] entry of
the amendments to claims 12 and 13 as set forth in the amendment filed
March 13, 2013 under 37 C.F.R. § 41.33(a)." (App. Br. 15.)
ANALYSIS
Claims 1, 3, 5, 6, 23, and 24
"wherein the guide is tactilely locatable and has a shape associated
with information" and "wherein the guide receives a query gesture that
requests the information from the portable electronic device"
In the Final Office Action, the Examiner found that "where the guide
is an overlay over the number 7, pressure received by a query gesture on the
guide is transmitted to the portable electronic device where a request to
display the number 7 on the display is implemented (for example in the
dialing of a telephone number)." (Final Act. 4--5.) Appellants argue that "a
person of skill in the art would not reasonably consider pressing on a button
or 'simply touching the touch panel' to be the same as a query gesture that
requests information," that "[b ]uttons, particularly numeric keypad buttons
of the type disclosed in Wong, are pressed to enter information, not to
request information," and that "[p ]res sing one of the buttons of Wong does
not request information, but rather inputs information." (App. Br. 6.)
We agree with the Examiner that pushing a button on Wong's touch
pad would, in addition to entering the information (e.g., a number such as
"7"), also request the information, namely the conformation of the number
being entered (i.e., the display of"7" on the screen). (See Ans. 13-14.) We
further agree that Wong's buttons have a circular shape that is, in at least
some sense, "associated" with the information, as the shapes correspond to
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the numbers and the purpose of the buttons is to allow a user to more easily
enter the number and request that it be displayed. (See id. at 14.)
For these reasons, we sustain the rejections of claims 1, 3, and 5, as
well as the rejections of claims 6, 23, and 24, which are not separately
argued.
Claim 2
"the guide is an opening that extends through the body"
For this claim, the Examiner finds that Wong's "buttons are tactility
raised films that are attached to the holes on the overlay in which [the]
buttons are to be disposed," and that "[t]he combination of the guide having
an opening which is then covered by a film overlay ... clearly suggests the
embodiment wherein the guide has no overlay being a known and previous
embodiment before Wong et al.' s improvement of the magnifying film."
(Ans. 14--15 (emphasis added).) The Examiner's analysis is not supported
by any citations to Wong. Appellants assert that "Wong does not teach that
the buttons of the overlay are 'attached to the holes."' (App. Br. 9.)
Because the Examiner does not point us to a teaching in Wong of
holes in the transparent overlay 500, and as we do not find any such teaching
ourselves, we decline to sustain the rejection of claim 2.
Claim 4
"wherein the information is provided by the portable electronic
device via tactile feedback that communicates the information"
The Examiner found that "Ukita et al. teaches the buttons having the
function of providing a tactile response as a function of pressing each button,
therefore while the actuation of one button may perform a variety of
functions associated with that specific button, each of the buttons still has
the function to provide tactile feedback, here the information is knowledge
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that that button had been pressed." (Final Act. 6-7 (emphasis omitted).)
Appellants respond that "Ukita teaches simple mechanical provision of
tactile feedback only in the form a click, which is incapable of
communicating requested information." (App. Br. 10.)
We agree with Appellants. In the rejection of claim 1, from which
claim 4 depends, the Examiner found that "the information" was, for
example, the numbers displayed on the screen. (See Ans. 4.) The
mechanical feedback in Ukita simply confirms that a button was physically
depressed, it does not communicate "the information" to the user. (See
Ukita i-f 69 ("The user can get a feeling of stroke or a feeling of click through
the elastic deformation of the button.").) We accordingly decline to sustain
the rejection of claim 4.
Claims 7-11and14-21
"monitoring, by the portable electronic device, an area of the
touch-sensitive display for a query gesture that requests information" and
"vvhen the qitel}' gestitre is detected on the toitch-sensitfve displa}'
and is associated with the area, communicating the information via tactile
feedback provided by the portable electronic device"
The Examiner's analysis for claim 7 is similar to that for claim 4,
finding "communicating the information via tactile feedback" to be taught
by Ukita's mechanical feedback. For the reasons explained above, however,
we find that the art of record does not teach or suggest "monitoring ... an
area of the touch-sensitive display for a query gesture that requests
information" and "when the query gesture is detected ... communicating the
information via tactile feedback provided by the portable electronic device."
In our view, Ukita's button is simply a mechanical structure overlying the
touch-sensitive display and is not "monitored." The "tactile feedback"
would be provided even ifthe device was turned off. For this reason, we do
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not sustain the rejection of claim 7, or the rejections of claims 8-11 and 14--
21, all of which depend from claim 7.
Claims 12 and 13
Appellants state that they "attempted to clarify claims 12 and 13 in the
amendment filed March 13, 2013 ... by including language deleted from
independent claim 7 on which claims 12 and 13 depend," that "[c]laims 12
and 13 were not amended at the time claim 7 was amended due to clerical
error," and that "Appellants' amendment filed March 13, 2013 under 37
C.F.R. § 41.33(a) was refused entry by the Examiner." (App. Br. 15.) They
then "request[] entry of the amendments to claims 12 and 13 as set forth in
the amendment filed March 13, 2013 under 37 C.F.R. §41.33(a)." (Id.)
As it is the province of the Examiner, not the Board, to enter
amendments, and as Appellants offer no argument on the merits, we
summarily sustain the rejections of claims 12 and 13 under 35 U.S.C § 112,
second paragraph. See 37 C.F.R. § 41.37(c)(iv).
Claim 22
For claim 22, the Examiner found that "[ o ]ne having ordinary skill in
the art at the time of the claimed invention would recognize at some point in
the life of Wong et al.' s device that while in the holster a person would first
tum the device off, then tum the device on (see use of 'method comprising'
allowing other method steps) and then performing the exact steps as taught
by Wong et al. regarding basic touch screen implementation." (Final Act.
6.) Appellants respond that "[c]laim 22 does not set forth that the device is
turned off' but rather "sets forth turning off illumination of the touch-
sensitive display," and that "[i]f the device were turned off as suggested in
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Application 12/715,278
the Final Office Action, the device could not perform any functions and
could not perform any part of claim 22." (App. Br. 14 (emphasis omitted).)
We agree with the Examiner. Turning the device off would
necessarily tum off the display, and the claim does not require that the
"monitoring" occur while the display is turned off. As the Examiner points
out, the claim would cover turning the device off (thereby turning off the
illumination), then turning the device back on, then monitoring. We thus
sustain the rejection of claim 22.
DECISION
We affirm the rejections of claims 1, 3, 5, 6, 12, 13, and 22-24, and
reverse the rejections of claims 2, 4, 7-11, and 14--21.
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-IN-PART
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