Ex Parte Van Veghel

Patent Trial and Appeal BoardMar 29, 2017

12532647 (P.T.A.B. Mar. 29, 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. 12/532,647 09/23/2009 Marinus Johannes Gerdina Antonius Van Veghel 2007P00577WOUS 9526 24737 7590 03/31/2017 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue MCCORMACK, THOMAS S Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): marianne. fox @ philips, com debbie.henn @philips .com patti. demichele @ Philips, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARINUS JOHANNES GERDINA ANTONIUS VAN VEGHEL1 Appeal 2016-004865 Application 12/532,647 Technology Center 2600 Before JEAN R. HOMERE, JON M. JURGOVAN, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 3, and 5—13. Claims 2 and 4 have been canceled. App. Br. 2. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 According to Appellant, the real party in interest is Koninklijke Philips Electronics N.V. App. Br. 2. Appeal 2016-004865 Application 12/532,647 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention generally relates to “devices used by humans to control machines and in particular to passive communication devices.” Spec. 1:2—3. Claim 1, which is illustrative, reads as follows (with some paragraphing added): 1. A communication device for controlling a system, the communication device comprising: a reflecting element for composing a system control command, wherein the composed system control command is comprised of light reflected by the reflecting element determined by the changing shape of the reflecting element, wherein the control command is determined by determining geometric parameter(s) of the shape of the light reflected and comparing the parameter(s) to a threshold value. Rejection Claims 1,3, and 5—13 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Pryor (US 2005/0276448 Al; published Dec. 15, 2005). Final Act. 2—8. Dispositive Issue on Appeal Did the Examiner err by finding that Pryor discloses “wherein the control command is determined by determining geometric parameter(s) of the shape of the light reflected and comparing the parameter(s) to a threshold value,” as recited in claim 1? 2 Appeal 2016-004865 Application 12/532,647 ANALYSIS Appellant argues Pryor fails to disclose “wherein the control command is determined by determining geometric parameter(s) of the shape of the light reflected and comparing the parameter(s) to a threshold value,” as recited in claim 1. App. Br. 5—10; Reply Br. 2—8. In particular, Appellant argues Pryor fails to disclose comparing a geometric parameter of the shape of the reflected light to a threshold value, as required by claim 1. App. Br. 7—8. According to Appellant: Pryor teaches to use a camera to determine the location of a finger from one end to the other of the strip to indicate a control of value one to 10. Further Pryor teaches that a circular control be used again to determine the location/position of a finger on the circle, which position (e.g. 30 degrees) indicates a corresponding value to a volume of a radio, for example. The Final Office Action further indicates on page 8 that an angle is a geometric parameter. Appellants agree. However, nothing in Pryor teaches or suggests determining geometric parameters of a shape AND comparing the parameter(s) to a threshold value. App. Br. 7 (Emphasis omitted). Appellant further argues “Pryor does not compare the parameter values to a threshold value, but only compares two images to each other. Id. We find Appellant’s argument persuasive. The Examiner finds Pryor discloses the claimed comparison because “Pryor uses the image of light reflected off of reflective material when it is unblocked and compares it to an image of the light reflected when blocked in some area of the reflective material to determine control commands” and, therefore, that “Pryor uses a comparison to a threshold to determine a control command.” Ans. 8—9 (citing Pryor 1161). However, we agree with Appellant that Pryor fails to disclose that the comparison includes comparing a parameter of a shape to a 3 Appeal 2016-004865 Application 12/532,647 threshold parameter, as required by claim 1. Regarding the comparison, Pryor merely discloses “with ease one can use the camera to sense a control of value one to 10 from one end to the other of the strip in this way;” “which angular position [of a block angular section of a circular control] the camera is easily able to tell within 30 degrees or better;” and “[t]he one [of digital retro-reflective squares 2070 shown in Figure 20B] covered up by the users [sic] finger is the value desired.” Pryor 1161; see also Pryor, Fig. 20B. As such, we are constrained by the record to not sustain the Examiner’s rejection of claim 1; and claims 3 and 5—13 which recite corresponding limitations.2 We do not reach Appellant’s further allegations of error because we find the issue discussed above to be dispositive of the rejection of claim 1 and of claims 3 and 5—13. DECISION We reverse the Examiner’s rejection of claims 1, 3, and 5—13. REVERSED 2 The Examiner’s findings regarding how the comparison could be made (Ans. 9-11) are relevant to the question of obviousness under 35 U.S.C. § 103. We decline to exercise our authority under 37 C.F.R. § 41.50(b) (2006) and enter a new ground of rejection of the appealed claims on the above basis. We leave it to the Examiner to consider whether the claims are unpatentable under 35 U.S.C. § 103 in view of the disclosure of Pryor and enter any new ground(s) of rejection based thereon and any other reference(s) as deemed appropriate. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board does not do so. See MPEP § 1213.03. 4