Ex Parte Sullivan et al

Patent Trial and Appeal BoardDec 28, 2012

11132504 (P.T.A.B. Dec. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DARIUS M. SULLIVAN, NICHOLAS P.R. HILL, VLADIMIR P. GONTCHAROV, and ROGER G. GEERE ____________________ Appeal 2010-008268 Application 11/132,504 Technology Center 2600 ____________________ Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and MICHAEL J. STRAUSS, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008268 Application 11/132,504 2 STATEMENT OF CASE 1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-25, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. The Appellants invented devices that utilize vibrations propagating through a plate due to a contact to obtain information related to the contact, for example a vibration sensing touch input device. Specification 1:10-12. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]: 1. For use with a vibration-sensing touch panel including a touch plate for propagating contact-induced vibrations representative of a touch input contacting the touch plate, a method for distinguishing contact-induced plate vibrations from acoustic noise-induced plate vibrations, the method comprising: [1] detecting vibrations propagating in the touch plate; [2] developing a signal representative of the vibrations; [3] generating an energy spectrum for the developed signal; and [4] analyzing the energy spectrum for the presence of one or more features characteristic of frequency-dependent efficiency of ambient noise coupling into the touch plate. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed September 8, 2009) and Reply Brief (“Reply Br.,” filed March 1, 2010), and the Examiner’s Answer (“Ans.,” mailed December 28, 2009), and Final Rejection (“Final Rej.,” mailed April 3, 2009). Appeal 2010-008268 Application 11/132,504 3 REFERENCES The Examiner relies on the following prior art: Paradiso US 2003/0217873 A1 Nov. 27, 2003 Boll, Steven F., “Suppression of Acoustic Noise in Speech Using Spectral Subtraction”, IEEE Transactions on Acoustic, Speech, and Signal Processing, Vol. ASSP-27, No. 2, April 1979, pp. 113-120 (“Boll”) REJECTIONS Claims 21 and 25 stand rejected under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement. Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Paradiso and Boll. ISSUES The issue of whether the Examiner erred in rejecting claims 21 and 25 under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement turns on whether the disclosure conveys that Appellants were in possession of the invention, with respect to claims 21 and 25. The issue of whether the Examiner erred in rejecting claims 1-25 under 35 U.S.C. § 103(a) as being unpatentable over Paradiso and Boll turns on whether the Examiner provided a clearly-articulated reason to combine Paradiso and Bolls and whether Paradiso teaches away from Bolls. Appeal 2010-008268 Application 11/132,504 4 ANALYSIS Claims 21 and 25 rejected under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement The Examiner found that the Specification, as originally filed, fails to provide support for the terms “pre-determining” and a “local maximum energy peak” in such a way to convey to a person with ordinary skill in the art that Appellants were in possession of the claimed invention. Ans. 3-4. Appellants contend that claims 21 and 25 are fully supported by the disclosure and specifically point to Specification 9:3-6 to support the “pre- determining” step of claim 21 and Specification 8:9-12 to support the “local maximum energy peak” of claim 25. App. Br. 7-8 and Reply Br. 7-9. We agree with Appellants. To satisfy the written description requirement the disclosure of the prior application must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Claim 21 recites “pre-determining the one or more characteristic features independently of the step of detecting vibrations representative of ambient noise.” The Specification discloses discerning between common noise events from valid contacts and then determining the type of noise event based on spectral characteristics. Specification 8:30 – 9:6. Claim 25 recites “the one or more characteristic features further include a local maximum energy peak close to the coincidence frequency.” The Specification discloses “the coupled vibrations would be expected to show a maximum for frequencies close to the panel coincidence frequency.” Specification 8:11-12. Appeal 2010-008268 Application 11/132,504 5 A person with ordinary skill in the art would have understood that Appellants were in possession of the claimed invention based on these descriptions. That is, a person with ordinary skill in the art would have understood that based on the disclosure of determining a type of noise event independent of common noise events, Appellants were in possession of the features recited in claim 21. A person with ordinary skill in the art would have further understood that based on the disclosed maximum of frequencies close to a panel coincidence frequency, Appellants were in possession of the features of claim 25. As such, we do not sustain the Examiner’s rejection of claims 21 and 25 under 35 U.S.C. § 112, first paragraph. Claims 1-25 rejected under 35 U.S.C. § 103(a) as being unpatentable over Paradiso and Boll We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. We highlight the following arguments for emphasis. Appellants contend that the Examiner failed to provide a clearly- articulated reason to combine Paradiso and Boll. App. Br. 5-6 and Reply Br. 2-4 and 6-7. Appellants specifically argue that the Examiner has not provided any explanation as to how Boll’s frame by frame residual noise Appeal 2010-008268 Application 11/132,504 6 reduction is applied to the dispersion effected noise signals of Paradiso. App. Br. 6. We disagree with Appellants. The Examiner found that a person with ordinary skill in the art would have been motivated to combine Boll’s noise suppression with Paradiso’s method for tracking impact in order to enhance the accuracy of touch location determinations. Ans. 11-12. Appellants merely argue that the Examiner has failed to provide an explanation as to how a person with ordinary skill in the art would have arrived at a workable combination, but fail to provide any evidence or rationale to rebut the Examiner’s finding as to why a person with ordinary skill in the art would have been motivated to combine the cited prior art or why the combination of Paradiso and Boll would have rendered anything more than predictable results. We agree with the Examiner that a person with ordinary skill in the art would have understood to look to Boll in order to enhance the features of Paradiso and absent any persuasive rationale or evidence from Appellants we do not find error in the Examiner’s finding. Appellants further contend that the Examiner’s proposed modification undermines the purpose of Paradiso and Paradiso teaches away from being modified by Boll. App. Br. 6-7 and Reply Br. 4-6. Appellants argue that Boll’s frame by frame effectively assumes there is no frame overlapping or dispersion. App. Br. 7. We disagree with Appellants. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’ Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not teach Appeal 2010-008268 Application 11/132,504 7 away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellants have not provided any evidence that Boll teaches away from the techniques used by Paradiso. While Appellants argue that the techniques used by Boll would render Paradiso inoperable, Appellants have not provided any evidence to support such a statement. Absent any evidence to support Appellants’ argument, we do not find error in the Examiner’s rejection. CONCLUSIONS The Examiner erred in rejecting claims 21 and 25 under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement. The Examiner did not err in rejecting claims 1-25 under 35 U.S.C. § 103(a) as being unpatentable over Paradiso and Boll. DECISION To summarize, our decision is as follows.  The rejection of claims 21 and 25 under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement is reversed.  The rejection of claims 1-25 under 35 U.S.C. § 103(a) as being unpatentable over Paradiso and Boll is sustained. Appeal 2010-008268 Application 11/132,504 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED ELD