Ex Parte Westerman et al

Patent Trial and Appeal Board

Apr 26, 2016

12422225 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/422,225 04/10/2009
69753 7590 04/28/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
Wayne WESTERMAN
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.
106842608609
(P3950USC27)
CONFIRMATION NO.
6194
EXAMINER
SIM, MATTHEW Y
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
EOfficeLA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
TJJ\.HTED STi\TES Pi\TENT i\.ND TR .. A.DElVLA.RK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE WESTERMAN and JOHN G. ELIAS
Appeal2014-000022
Application 12/422,225
Technology Center 2600
Before ELENI MANTIS MERCADER, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(l) on February 17, 2016 (hereinafter "Request"), requesting that
we reconsider our Decision on Appeal of December 17, 2015 (hereinafter
"Decision"), in which we affirmed (1) the rejection of claims 1, 2, 6, 7, 15,
19, 25, 26, 30, 32, 33, 35-39, 43, 45, 46, 48-52, 56, 58, 59, and 61-63 under
35 U.S.C. § 103(a) as being unpatentable over Ure (US 5,982,302; issued
Nov. 9, 1999) in view of Miller (US 5,374,787; Dec. 20, 1994) and (2) the
rejection of claims 27-29, 40-42, and 53-55 under 35 U.S.C. § 103(a) as
being unpatentable over Ure in view of Miller and Matzke (US 4,736,191;
Appeal2014-000022
Application 12/422,225
issued Apr. 5, 1988). We reconsider our Decision in light of Appellants'
Request for Rehearing, but we decline to change the Decision.
ISSUES AND ANALYSIS
Appellants argue our decision misapprehended and overlooked points
raised in the Appeal Brief. Request 2. Specifically, Appellants contend the
arguments in the Appeal Brief were "directed to the combined teachings of
the references Ure and Miller and not, as misapprehended by the Decision,
directed to Miller alone." Id.
We are not persuaded by Appellants' argument. The Examiner's
rejection on appeal focused on the combined teachings of Ure and Miller:
Therefore, taking the combined teachings of Ure and Miller, as
a whole, it would have been obvious to a person having
ordinary skill in the art to incorporate the idea of having a
proximity determining system for detecting touch position and
pressure as taught by Miller into the method of determining a
first and second contact images as taught by Ure to obtain a
method of teach determining a first proximity of each contact
based on a first proximity image of the sequence of proximity
images; determining a second proximity of each contact based
on a second proximity image of the sequence of proximity
images, the second proximity image occurring after the first
proximity image; calculating, based on the first and second
proximities, a proximity change of each of one or more of the
contacts; and providing, based on the one or more proximity
changes, input to the computing system to allow touch pressure
detection for increased inputting options.
Final Act. 4 (emphasis added); see also Ans. 4--5.
In the Appeal Brief, Appellants' framed argument is directed solely to
Miller with no mention of Ure:
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Application 12/422,225
Applicants respectfully submit that the rejection is erroneous
because the Office Action dated June 8, 2012 has failed to set
forth a prima facie case of obviousness based on the cited
references. Furthermore, Miller fails to disclose, teach, or
suggest at least "calculating, based on the first and second
proximities, a proximity change of each of one or more of the
contacts" as required by claim 1. As will be discussed below,
because every rejection is based on this alleged and erroneous
teaching/conclusion, it is respectfully submitted that the claims
as presently pending are in condition for allowance.
App. Br. 4 (emphasis added).
The Appeal Brief continues by focusing the argument solely on Miller
and ignoring the Examiner's findings on the combined teachings of Ure and
Miller: "However, the Office Action never explains where and how Miller
discloses determining a first proximity, determining a second proximity, and
calculating, based on the first and second proximities, a proximity change of
each of one or more contacts." App. Br. 4 (emphasis added). Similarly,
Appellants argue:
The cited portions of Miller, at best, teach calculating position
based on capacitance changes. The Office Action also points to
Figs. 6A-C, which merely illustrate subtracting a background
level of capacitance from the signal of each sensor. See Miller,
col. 16, lines 4-13. Without more, Miller fails to teach,
disclose, or suggest, as required by claim 1, "calculating, based
on the first and second proximities, a proximity change of each
of one or more of the contacts" (emphasis added).
App. Br. 5 (italics in original, bold/italics added).
Appellants make only a single, conclusory reference to Ure in arguing
the Examiner erred in rejecting claim 1:
In rejecting claim 1, the Office Action concedes that Ure fails to
teach determining a first proximity, determining a second
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Appeal2014-000022
Application 12/422,225
proximity, and calculating, based on the first and second
proximities, a proximity change of each of one or more
contacts. See Office Action, at page 3. The Office Action
makes a conclusory statement regarding the teachings of
Miller, and then asserts that the combined teachings of Ure
and Miller render the claim obvious.
App. Br. 4 (emphasis added). And other than being listed in the grounds of
rejections reviewed on appeal, the Reply Brief does not mention Ure. Reply
Br. 1--4.
Moreover, to the extent Appellants' arguments regarding Miller alone
were relevant, we considered and rejected them for the reasons set forth in
the Final Action and the Examiner's Answer when we adopted the
Examiner's findings as our own. See Decision 4.
Accordingly, contrary to Appellants' contentions, we did not
misapprehend or overlook any arguments directed to either Ure or the
combination or Ure and Miller in the Appeal Brief.
Appellants further argue in the Request that "the combination of Ure
and Miller does not make up for Ure' s deficiencies" and "[ e ]ven if Ure
teaches a sequence of images and Miller teaches determining proximity,
neither reference, read alone or in combination, provides even a hint of
calculating a change of any kind, let alone a proximity change over time, as
required by the claims." Request 3 (footnote omitted) (emphasis omitted).
As discussed above, Appellants did not make any argument
concerning Ure or the combined teachings of Ure and Miller in the Appeal
Brief. Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the Request for
Rehearing. 37 C.F.R. § 41.52(a)(l). Appellants have not shown good cause
as to why this new argument is entitled to consideration under 37 C.F.R.
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Appeal2014-000022
Application 12/422,225
§ 41.52(a)(2), and 37 C.F.R. § 41.52(a)(3), directed to new grounds of
rejection, does not apply. Accordingly, we will not consider the new
argument at this time.
CONCLUSION
For the above reasons, Appellants' contentions have not persuaded us
of error in our Decision.
Accordingly, while we have granted Appellants' Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
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).
DENIED
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