Ex Parte YAN et al

Patent Trial and Appeal Board

Apr 20, 2016

12550128 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/550, 128 08/28/2009
10800 7590 04/20/2016
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
BAOSHIYAN
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.
1576-1575 1308
EXAMINER
FISCHER, MARK L
ART UNIT PAPER NUMBER
2688
MAILDATE DELIVERY MODE
04/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAOSHI YAN, FULIANG WENG, LIU REN,
YOU-CHI CHENG, and ZHONGNAN SHEN
Appeal2014-003232
Application 12/550, 128 1
Technology Center 2600
Before ALAN R. MACDONALD, CARLL. SILVERMAN, and
NABEEL U. KHAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, 5, 6, 8, 10, 13, 15, 16, 18, 19, 21, 23-28, 30
and 31. Claims 2, 4, 7, 9, 11, 12, 14, 17, 20, 22, and29 are cancelled. Final
Act. l; Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The real party in interest is identified as Robert Bosch GmbH. Br. 3.
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Application 12/550, 128
STATEMENT OF THE CASE
Appellants' invention relates to receiving input from a user and
includes providing a touching surface within reach of a hand of the user.
Abstract. Claim 1 is exemplary of the matter on appeal:
1. A method of receiving input into a vehicle from a user,
said method comprising the steps of:
providing a surface within reach of a hand of the user;
sensing a plurality of locations on the surface that are
touched by the user;
determining an alphanumeric character having a shape
most similar to the plurality of touched locations on the surface;
transmitting an input to an electronic system of the
vehicle, the input being dependent upon the determined
alphanumeric character;
informing the user of the alphanumeric character and/or a
word in which the alphanumeric character is included; and
receiving feedback from the user regarding whether the
alphanumeric character and/or word is an alphanumeric
character and/ or word that the user intended to be determined in
the determining step.
Br. 20 (Claims Appendix).
REJECTIONS
Claims 30 and 31 stand rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement. Final Act. 2--4.
Claims 1, 3, 5, 6, 21, 23-28, 30, and 31 stand rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph. Final Act. 4---6.
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Claim 15 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Ilan et al. (US 2006/0085115 Al; Apr. 20, 2006) (hereinafter
"Ilan"). Final Act. 7-8.
Claims 1, 5, 6, 8, 10, 13, 16, 18, 21, 23, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ilan in view of Kanevsky (US
2006/0047386 Al; Mar. 2, 2006) (hereinafter "Kanevsky"). Final Act 8-15.
Claims 3 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ilan, Kanevsky, and Han (US 2006/0086896 Al; published
Apr. 2 7, 2 00 6) (hereinafter "Han"). Final Act. 15-1 7.
Claims 24, 30 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ilan, Kanevsky, and Griffin, Jr. et al. (US 6,434,450 Bl;
issued Aug. 13, 2002) (hereinafter "Griffin"). Final Act. 17-19.
Claims 26-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ilan, Kanevsky, and Katayose (US 2005/0168449 Al;
published Aug. 4, 2005) (hereinafter "Katayose"). Final Act. 19-22.
ANALYSIS
The 35 U.S.C. § 112, first paragraph rejection
The Examiner finds claims 30 and 31 contain subject matter which
fails to comply with the enablement requirement. Final Act 2; see also Ans.
21-22. Regarding claim 30 "the user is temporarily less likely to be asked
for the confirmation," the Examiner finds "[t]he specification does not
describe how to determine set an amount of likeliness to be 'less likely' and
how long to set an amount of temporariness to be 'temporarily' without
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undue experimentation by one of ordinary skill the art." Final Act 3.
Further, the Examiner finds the Specification does not describe how to
determine "if the driving task is placing a high level of demand on the user."
Id.
Regarding claim 31, the Examiner finds the Specification does not
describe how to determine, without undue experimentation, "wherein the
user is temporarily less likely to be asked for the confirmation if the vehicle
is traveling at high speed or is making frequent turns." Id. at 3--4.
Appellants argue "making a user temporarily less likely to be asked
for the confirmation may be done within software and is well within the
ordinary skill in the art." App. Br. 10. We are not persuaded by this
argument as it is conclusory and does not address the other enablement
issues identified by the Examiner.
In view of the above, we sustain the rejection of claims 30 and 31
under 35 U.S.C. 112, first paragraph.
The 35 U.S.C. § 112, second paragraph rejection
The Examiner identified specific issues of indefiniteness in the
rejected claims. Final Act. 4---6. Appellants argue an Amendment after Final
amended claims 1, 5, and 23 "keeping in mind the comments offered by the
Examiner, in order to place the claims in better form for appeal." App. Br.
10. However, this Amendment was not entered by the Examiner and
Appellants have not addressed the outstanding indefinite rejections. We
note that arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Therefore, we sustain the rejection of claims 1, 3, 5, 6, 21, 23-28, and
30-31.
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The 35 U.S.C. § 102(b) rejection
The Examiner and Appellants dispute whether Ilan discloses the claim
15 limitation:
interact with the user to thereby confirm that the determined
alphanumeric character or a word including the determined
alphanumeric character is an alphanumeric character or word that
the user intended to convey via the user touching the screen.
App. Br. 10-11; Final Act. 7-8; Ans. 24--25.
The Examiner finds Ilan' s feedback meets the disputed limitation and
"the user doesn't need to respond to the feedback in order for a confirmation
to be made." Final Act. 8, 23 (citing Ilan i-f 45); Ans. 24--25.
According to Appellants:
paragraph [0045] of Ilan merely discloses that feedback is
provided to the user. Ilan is completely silent as to confirming
that an alphanumeric character or word is an alphanumeric
character or word that the user intended to convey. That is, as
the Examiner asserts, Ilan discloses that feedback is provided to
the user. However, the Examiner's further assertion that the
feedback is provided "for the purpose of confirming with the user
that the recognized command is the command intended by the
user" is mere speculation on the part of the Examiner. Ilan is
completely silent as to the user responding to the feedback by
confirming to the system that the recognized command is the
command intended by the user.
App. Br. 10-11.
We are persuaded by Appellants' arguments because the Examiner
has not shown Ilan discloses "that the recognized command is the command
intended by the user" as required for anticipation. Moreover, the disputed
limitation recites "interact with the user to thereby confirm ... " and the
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Examiner has not shown why one of ordinary skill in the art would consider
Han's one way feedback to the user as an interaction (emphasis added). A
claim is anticipated only if each and every element as set forth in the claims
is found, either expressly or inherently described in a single prior art
reference, and arranged as required by the claim. Verdegaal Bros., Inc. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
Therefore, we do not sustain the rejection of claim 15.
The 35 U.S.C. § 103(a) rejections
The Examiner finds the combination of Ilan and Kanevsky teaches the
claim 1 limitations and relies on Kanevsky for the limitation "receiving
feedback from the user regarding whether the alphanumeric character and/ or
word is an alphanumeric character and/or word that the user intended to be
determined in the determining step." Final Act. 8-9 (citing Kanevsky i-f45;
Fig. 4; step 418). The Examiner finds one of ordinary skill in the art would
have been motivated to improve confidence that the system will correctly
understand a user's commands. Final Act 10 (citing Kanevsky i144).
Appellants argue neither Ilan nor Kanevsky, nor the combination
teaches the disputed limitation. App. Br. 11-13. According to Appellants,
Kanevsky teaches feedback from the user regarding whether the operator
intended to generate a command, not feedback from the user regarding
whether an alphanumeric character and/ or word is an alphanumeric character
and/or word that the user intended to be determined in the determining step.
App. Br. 12 (citing Kanevsky i-fi-141, 44; Fig. 4, step 418, functional blocks
406, 408).
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Appellants argue Kanevsky, but the rejection is based on the
combination of Han and Kanevsky. In re Keller, 642 F.2d 413, 426 (CCPA
1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references."); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants concede Han teaches the claim 1 limitations, except the
disputed limitation, and argues Kanevsky does not teach the limitation.
Han's feedback, as discussed above, is from the system to user (Han i-f 45);
Kanevsky's feedback is from the user to the system (Kanevsky i-fi-141, 44).
Thus, Han teaches the sensing, transmitting, and determining steps- and
Kanevsky teaches feedback from the user to confirm a command. To one of
ordinary skill in the art, combined with Han's teaching, Kanevsky's teaching
is not limited to "a" command, but would include the command set forth in
the sensing, transmitting, and determining steps. See also Kanevsky, i-f 37,
" ... interpretation module 308 is further configured as shown by Fig. 4, to
assess the level of certainty that signals received from communication
module 300 do, in fact, define an intended command." (Emphasis added).
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" ....
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). The Examiner's
findings are reasonable because the skilled artisan would "be able to fit the
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teachings of multiple patents together like pieces of a puzzle" since the
skilled artisan is "a person of ordinary creativity, not an automaton." KSR,
550 U.S. at 420-21.
In view of the above, we sustain the rejection of claim 1. We also
sustain the rejection of "substantially similar" claim 8 and dependent claims
10 and 13 as these claims are not argued separately. App. Br. 15. Similarly,
we sustain the rejection of claims 5 and 21 as these claims are not argued
separately. App. Br. 13.
Regarding claim 6, Appellants argue Ilan does not specify "that words
are recognized by recognizing the individual letters of the word in
sequence." App. Br. 13. Appellants argue it is possible that Ilan recognizes
a word as a whole and does not break it down into individual letters or
recognizes all the letters of a word in parallel. Id. We are persuaded by
Appellants' arguments because they are reasonable and not addressed by the
Examiner. Ans. 26; Final Act. 10. We also do not sustain the rejection of
claim 10 as it is "substantially similar" to claim 6. App. Br. 15.
Regarding claim 23, Appellants argue the cited references do not
teach "the user is a driver of the vehicle and has a driving task, and a level of
demand that the driving task is placing on the user is a factor in whether the
user is asked for the confirmation." App. Br. 14. Appellants argue
Kanevsky "merely discloses that whether operator feedback is sought
depends on a confidence correlation score. Kanevsky is completely silent as
to operator feedback being sought dependent upon a level of demand that a
driving task is placing on the operator." Id. (citing Kanevsky i-fi-142--43; Fig.
4, step 418).
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The Examiner finds "it is understood that a driving task can influence
whether the driver gives a clear command" and the level of demand can be a
natural occurrence, such as stopping the vehicle. Ans. 27. The Examiner
refers to situation in which a sudden stop causes the user's hand to
involuntary motion on the handwriting pad and the system asks for
confirmation. Id. We are not persuaded by Appellants' arguments and
instead agree with the Examiner's findings. See also Kanevsky, paragraph
38 discussion of extreme situations and disregarding further commands.
Therefore, we sustain the rejection of claim 23.
Regarding claim 25, Appellants argue, and we agree, the cited
references do not teach "the user is in a passenger compartment of a motor
vehicle, and a likelihood that the user is asked for the confirmation is
inversely related to a sound level and/or a noise level in the passenger
compartment." App. Br. 14. According to Appellants, Kanevsky "merely
discloses that whether operator feedback is sought depends on a confidence
correlation score. Kanevsky is completely silent as to a likelihood of
operator feedback being sought being dependent upon a sound or noise level
within a passenger compartment." Id. Therefore, we do not sustain the
rejection of claim 25.
Regarding claim 16, Appellants rely on dependency from claim 15
and also argue the cited references do not teach "the gesture-capturing
module is associated with 'a surface disposed within a passenger
compartment of the vehicle', and that the gesture-capturing module is
"configured to identify a plurality of locations on the surface that are
touched by a user." App. Br. 15-16. According to Appellants, while
Kanevky' s camera is used to detect facial gestures, the camera does not
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identify locations on a surface within a vehicle passenger compartment that
are touched by a user." App. Br. 16.
As discussed above, we do not sustain the rejection of claim 15 for
anticipation over Ilan. The Examiner presents no additional basis for
obviousness of claim 15. Therefore, we also do not sustain the rejection of
claim 16.
Regarding claim 3, Appellants argue Han does not teach "the surface
includes a grid of cells, the sensing step including ascertaining which cells of
the surface are touched by the user, the determining step comprising using a
lookup table or algorithm relating the ascertained touched cells to the
determined alphanumeric character." App. Br. 16. According to Appellants,
while Han discloses an array of touch-sensitive LEDs, Han is completely
silent as to a lookup table or algorithm or relating the touched LEDs to an
alphanumeric character. Id.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings that Han teaches the limitation "wherein the surface
includes a grid of cells, the sensing step including ascertaining which cell of
the surface are touched by the user" and Ilan teaches the look up table,
algorithms and relating the touched coordinates to an alphanumeric
character. App. Br. 30. Therefore, we sustain the rejection of claim 3.
Regarding claims 18 and 19, Appellants rely on dependency from
claim 15 and presents no additional arguments of non-obviousness. App.
Br. 15-17. As discussed above, we do not sustain the rejection of claim 15
for anticipation over Ilan. However, in the rejection of claims 18 and 19, the
Examiner concludes "Han-Kanevsky discloses the arrangement of claim 15."
Final Act. 13, 16. In view of the discussion of claim 1 above, we agree with
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the Examiner's conclusion that Han-Kanevsky discloses (i.e., renders
obvious) the arrangement of claim 15 and, therefore, we sustain the rejection
of claims 18 and 19. 2
Regarding claim 24, we are persuaded by Appellants' argument
Griffin does not teach the "the user is more likely to be asked for the
confirmation if the confirmation is related to a safety-critical function of the
motor vehicle than if the confirmation is related to an entertainment function
of the motor vehicle." App. Br. 17 (citing Griffin col. 9, 11. 46-53).
According to Appellants, at best, Griffin teaches denying access to
applications on the basis of whether they are complex and distracting, not
safety critical or for entertainment. Id. Therefore, we do not sustain the
rejection of claim 24.
Regarding claim 30, Appellants argue Griffin does not teach "the user
is temporarily less likely to be asked for the confirmation if the driving task
is placing a high level of demand on the user." App. Br. 17. According to
Appellants, "Griffin is not directed to asking a user for a confirmation of the
interpretation of an alphanumeric character. Rather, Griffin is directed to
determining whether to provide a user with access to applications. Thus,
Griffin does not disclose or suggest that a user is temporarily less likely to
be asked for the confirmation if the driving task is placing a high level of
demand on the user." Id.
We are not persuaded and agree with the Examiner's finding one of
ordinary skill in the art would "set a trigger condition to prevent a driver
2 For reasons that escape us, the Examiner did not formally reject claim 15
separately under 35 U.S.C. § 103 over the combination of Ilan and
Kanevsky. We leave it to the Examiner to present any such rejection and
any other new rejections deemed appropriate in light of this Decision.
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from using an in-vehicle browser while driving, in which case, when the
user is driving the motor vehicle and makes a command related to an in-
vehicle browser (i.e. an entertainment function), the in-vehicle browser will
not work, thus meaning that the user is temporarily (i.e. while driving which
is temporary) less likely to be asked for the confirmation if the driving task
is placing a high level of demand on the user." Ans. 32; see also Final Act.
18 (citing Griffin trigger, col. 9, 11. 46-53). Therefore, we sustain the
rejection of claim 30.
Regarding claim 31, Appellants argue Griffin does not teach "the user
is temporarily less likely to be asked for the confirmation if the vehicle is
traveling at high speed or is making frequent turns." App. Br. 18.
According to Appellants, "Griffin is not directed to asking a user for a
confirmation of the interpretation of an alphanumeric character. Rather,
Griffin is directed to determining whether to provide a user with access to
applications." App. Br. 18.
We are not persuaded by Appellants' arguments and agree with the
Examiner findings:
it would have been obvious to one of ordinary skill in the art at
the time of the Appellant's invention to set a trigger condition to
prevent a driver from using an in-vehicle browser while driving,
in which case, when the user is driving the motor vehicle and
makes a command related to an in-vehicle browser (i.e. an
entertainment function), the in-vehicle browser will not work,
thus meaning that the user is temporarily (i.e. while driving
which is temporary) less likely to be asked for the confirmation
if the vehicle is traveling at high speed or is making frequent
turns.
Ans. 32-33.
Therefore, we sustain the rejection of claim 31.
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Regarding claim 26, Appellants argue, and we agree, Katayose does
not teach "compensating, when recognizing the alphanumeric character, for
a finger of the user dragging along with rotation of a steering wheel of the
motor vehicle." App. Br. 18. According to Appellants:
paragraph [0070] of Katayose is directed to merely deciding
whether a button has been pushed. Katayose is completely silent
as to compensating for a finger dragging along with rotation of a
steering wheel in recognizing an alphanumeric character.
Moreover, Katayose is directed to errors caused by mis-
touch due to movement of a car. In contrast, claim 26 recites
compensating for rotation of a steering wheel causing a user's
finger to drag.
App. Br. 18.
Therefore, we do not sustain the rejection of claim 26. Claims 27 and
28 depend from claim 26 and, therefore, we do not sustain the rejection of
these claims.
DECISION
We affirm the Examiner's decision rejecting claims 30 and 31 under
35 U.S.C. § 112, paragraph 1.
We affirm the Examiner's decision rejecting claims 1, 3, 5, 6, 21, and
23-28 under 35 U.S.C. § 112, paragraph 2.
We reverse the Examiner's decision rejecting claim 15 under 35
U.S.C. § 102(b).
We affirm the Examiner's decision rejecting claims 1, 3, 5, 8, 10, 13,
18, 1921, 23, 30, and 31under35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 6, 16, and 24--28
under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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