Ex Parte Young et al

Patent Trial and Appeal BoardApr 27, 2016

11278898 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111278,898 0410612006 124176 7590 04/29/2016 Shumaker & Sieffert, P,A,/Motorola 1625 Radio Drive Suite 300 Woodbury, MN 55125 FIRST NAMED INVENTOR Hoi L. Young 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. 1142-281US01 7169 EXAMINER YANG, KWANG-SU ART UNIT PAPER NUMBER 2691 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOI L. YOUNG, MICHAEL BOHAN, STEVEN M. HERBST, CONOR P. O'SULLIVAN, CHAD A. PHIPPS, and ELISA S. VARGAS Appeal2014-006576 Application 11/278,898 Technology Center 2600 Before BRUCE R. WINSOR, MICHAEL M. BARRY, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-006576 Application 11/278,898 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 4, 5, 7-9, and 11-13, which constitute all of the claims now pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. THE INVENTION The application is directed to a method and apparatus "for user interface adaptation." (Abstract.) Claim 4, reproduced below, is illustrative: 4. A method used in a handheld device, comprising: determining a current handedness of a user who is operating the handheld device from target area entry errors detected following a touch entry associated with at least one visible target on a front screen of the handheld device; and changing physical aspects of at least one target area of a user touch interface of the handheld device to adapt to the handedness of the user when the current handedness of the user is different than a previous handedness of the user. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Harrison Rekimoto et al. US 6,538,636B1 US 2003/0234768 Al Mar. 25, 2003 Dec. 25, 2003 1 Appellants identify Motorola Mobility, LLC as the real party in interest. (See App. Br. 3.) 2 Appeal2014-006576 Application 11/278,898 Mixon Shim et al. US 2007/0010211 Al Jan. 11, 2007 US 8,103,263 B2 Jan. 24, 2012 THE REJECTIONS 1. Claim 12 stands rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite because the Examiner finds insufficient antecedent basis for the limitation "the target areas" in line 2. (Final Act. 2.) 2. Claims 4, 7, and 11-13 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Shim and Harrison. (Final Act. 3---6.) 3. Claim 5 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Shim, Harrison, and Rekimoto. (Final Act. 6-7.) 4. Claims 8 and 9 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Shim, Harrison, and Mixon. (Final Act. 7-8.) APPELLANTS' CONTENTIONS Appellants argue that the rejections are improper for the following reasons: 1. Shim does not disclose a "target area" that has entry errors. (See App. Br. 7-13.) 2. Shim does not disclose "entry errors." (See App. Br. 13-16.) 3. "[C]laim 12 is clear and definite to one of ordinary skill in the art because the element of 'at least some of the target areas' clearly refers to the previously introduced 'at least one target area' recited in independent claim 4." (See App. Br. 16-17.) 3 Appeal2014-006576 Application 11/278,898 ANALYSIS Section 103 "target area entry errors detected following a touch entry associated with at least one visible target on a front screen of the handheld device" The Examiner finds the claimed "entry errors" in Shim's determination of whether to use a left-hand or right-hand call mode through the use of contact sensors on the surface on a portable terminal: Shim teaches "determining the handedness of the user from target area entry errors." For example, when a current mode is left-hand call mode, the standard signal output from the contact sensing unit 110 is [0001001100110011] so that the contact sensors 3 and 4 on the front surface have bit values 0 and 1 (see Fig. 1 OC), a user contacts the surface of the portable terminal using a right hand and the generated standard signal is [0010001100110011] so that the contact sensors 3 and 4 on the front surface have bit values 1and0 (see Fig. lOD), the bit values are reversed. The error is reversed bit values for the contact sensors 3 and 4 so that the call mode is changed from left-hand one to the right-hand one based on the error (Figs. 5A, 5B, 9(C), 9(D), lOC and lOD). The mode change from right-hand call mode to left-hand call mode is determined in a similar way. Shim also teaches that once the user holds the portable terminal to use the portable terminal in a desired function mode, the portable terminal can be automatically changed to the desired function mode based on the holding information (col. 6, lines 36- 39). (Ans. 11-12.) We find that the broadest reasonable interpretation of "entry error" consistent with the Specification does not encompass the "reversed bit values for the contact sensors 3 and 4," because how the user is holding the device is not an "entry" and changing the manner of holding the device is 4 Appeal2014-006576 Application 11/278,898 not an "error." For this reason, we decline to sustain the Section 103 rejections of claims 4, 5, 7-9, and 11-13. Section 112 "at least some of the target areas" Claim 4 recites "at least one target area." Claim 12, which depends from claim 4, recites "wherein graphics on at least some of the target areas are not mirror imaged." The Examiner finds claim 12 indefinite because claim 4 would cover a method with just one target area, while "'the target areas' presented in claim 12 excludes one target area." (See Ans. 12-13.) The failure to provide verbatim antecedent basis for a claim element does not render the claim indefinite if its scope would be reasonably ascertainable by those skilled in the art. See MPEP Â§ 2173.05(e); Energizer Holdings, Inc. v. Int'! Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (holding that "anode gel" provided a proper antecedent basis for "zinc anode"). The question is whether "a person experienced in the field of the invention would understand the scope of the claim when read in light of the specification." Energizer, 435 F.3d at 1369. In this instance, we conclude that a skilled artisan would understand that "at least some of the target areas" in claim 12 finds its antecedent in "at least one target area" of claim 4, such that claim 12 covers not mirror imaging the graphics on one or more of the target areas of claim 4. We therefore decline to sustain the Section 112 rejection. 5 Appeal2014-006576 Application 11/278,898 DECISION The rejections of claims 4, 5, 7-9, and 11-13 are reversed. 2 REVERSED 2 Claims 7-9 and 11-12 are objected to on the grounds that "changing physical aspects" should be replaced with "the changing the physical aspects." (See Final Act. 2.) It appears that Appellants are willing to amend to overcome the objection. (See Reply Br. 10.) If not, the issue should be addressed with a petition to the Commissioner, as the Board does not review objections. We express no opinion as to whether these claims are objectionable, but observe, in response to Appellants' assertion that these are "claim rejections disguised as objections" (App. Br. 17), that an antecedent basis problem does not necessarily make a claim subject to rejection. See, e.g., Energizer, 435 F.3d at 1370-71 (finding the claim valid under Section 112 even though the antecedent basis for "zinc anode" was "anode gel," a situation that could have given rise to an objection). 6