Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Mar 4, 2021

2019004838 (P.T.A.B. Mar. 4, 2021)

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.
14/964,286 12/09/2015 John Weldon Nicholson RPS920150042USNP(710.468) 1066
58127 7590 03/04/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
JAVED, MAHEEN I
ART UNIT PAPER NUMBER
2621
MAIL DATE DELIVERY MODE
03/04/2021 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 JOHN WELDON NICHOLSON and
SCOTT EDWARDS KELSO

Appeal 2019-004838
Application 14/964,286
Technology Center 2600
____________

Before JOHN A. EVANS, JOYCE CRAIG, and
SCOTT E. BAIN, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final decision to reject Claims 1–20, which constitute all the claims pending
in this application. Appeal Br. 15. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Lenovo (Singapore) PTE. LTD., as
the real party in interest. Appeal Br. 3.
2 Throughout this Decision, we refer to the Appeal Brief filed December 11,
2018 (“Appeal Br.”); the Reply Brief filed June 3, 2019 (“Reply Br.”); the
Final Office Action mailed July 11, 2018 (“Final Act.”); the Examiner’s
Answer mailed April 2, 2019 (“Ans.”); and the Specification filed December
9, 2015 (“Spec.”).
Appeal 2019-004838
Application 14/964,286

2
STATEMENT OF THE CASE
CLAIMED SUBJECT MATTER
The claims relate to a method for location of a user input device
relative to an input surface. See Abstract.
CLAIMS
Claims 1, 11, and 20 are independent. Appeal Br. 5. Claim 1 is
illustrative and reproduced below:
1. A method, comprising:
determining, using a processor, a distance between a user
input device and an input surface;
identifying, responsive to determining that the distance is
less than a predetermined distance and using the input surface, a
cursor location on the input surface, wherein the cursor location
corresponds to a tip of the user input device when the distance is
less than the predetermined distance;
detecting, using a sensor, that the user input device has
moved a predetermined distance from the input surface;
automatically switching, responsive to the detecting and
without an additional user command, to another input mode, the
another input mode using at least one other sensor to identify the
cursor location when the distance is greater than the
predetermined distance; and
identifying, using the another input mode, the cursor
location.
REFERENCES

Name3 Reference Date
Cook US 2008/0030486 Feb. 7, 2008
Mercea US 2016/0002482 A1 Jan. 1, 2015
Chang US 2016/0139690 A1 May 19, 2016

3 All citations herein to the references are by reference to the first named
inventor/author only.
Appeal 2019-004838
Application 14/964,286

3

REJECTIONS4 AT ISSUE
1. Claims 1–6, 8, and 10–20 stand rejected under 35 U.S.C. § 103
as obvious over Mercea et al. (“Mercea”) and Chang. Final Act.
3–10.
2. Claim 7 stands rejected under 35 U.S.C. § 103 as obvious over
Mercea, Chang, and Official Notice. Final Act. 10–11.
3. Claim 9 stands rejected under 35 U.S.C. § 103 as obvious over
Mercea, Chang, and Cook. Final Act. 11.
ANALYSIS
We have reviewed the rejections of Claims 1–23 in light of
Appellant’s arguments that the Examiner erred. We review the appealed
rejections for error based upon the issues identified by Appellant and in light
of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellant
has not advanced separate, substantive arguments for particular claims, or
other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We
are not persuaded of error. We provide the following explanation to
highlight and address specific arguments and findings primarily for
emphasis. We consider Appellant’s arguments as they are presented in the
Appeal Brief and the Reply Brief.

4 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
Appeal 2019-004838
Application 14/964,286

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CLAIMS 1–6, 8, AND 10–20: OBVIOUSNESS OVER MERCEA AND CHANG.
Appellant argues these claims as a group specifically over the
recitations of Claim 1. App. Br. 15 (“For the purposes of this Appeal,
independent claims 1, 11, and 20 are argued together.”). Therefore, we
decide the appeal of the § 103 rejections on the basis of Claim 1 and refer to
the rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Without reference to specific claim language, Appellant contends “the
teachings in the cited portions are readily distinguishable from the concepts
recited in the currently claimed limitations.” Appeal Br. 16. Appellant
explains Mercea teaches that where a stylus exceeds a threshold proximity
distance from an input surface, the stylus’ scribing function is disabled and a
non-stylus, non-scribing function, e.g., a camera, is enabled. Id. Appellant
argues:
this is different than what is claimed. Specifically, the currently
claimed limitations preserve the stylus scribing functionality but
just utilize one or more other sensors, different than a sensor used
on the input surface, to identify a cursor location of the stylus
when the stylus has moved a predetermined distance away from
the input surface.
Appeal Br. 17.
The Examiner finds: “[t]he most recent claimed limitations recite:
‘automatically switching, responsive to the detection and without an
additional user command, to another input mode.’ Switching to another
input mode would not have the plain meaning of preserving the previous
stylus functionality.” Ans. 3. In view of the claim language, the Examiner
finds:
Appeal 2019-004838
Application 14/964,286

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Mercea meets this claim construction with a drawing input mode
when the stylus physically contacts a scribing surface as a
scribing stylus-modality signal and a remote control device input
mode as a non-stylus or non-scribing stylus modality signal when
the stylus is not contacting a scribing surface when the stylus
exceeds a threshold proximity distance.
Ans. 4.
Appellant contends: “the currently claimed limitations preserve the
stylus scribing functionality but just utilize one or more other sensors,
different than a sensor used on the input surface, to identify a cursor location
of the stylus when the stylus has moved a predetermined distance away from
the input surface.” Reply Br. 21.
Appellant’s argument is not commensurate in scope with the claims
which do not recite “preserv[ing] the stylus scribing functionality.” See In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims.”); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(“[The] proffered facts . . . are not commensurate with the claim scope and
are therefore unpersuasive.”).
Appellant contends the Examiner’s statement of motivation to
combine the art as in the prima facie case is lacking. Specifically, Appellant
argues the:
requisite explanation is not whether the prior art references could
be or can be combined but rather why one of ordinary skill in the
art would have been motivated to combine the references and
also how the combination of the references was supposed to
work. Also, even if the references could be combined, there must
be a reasonable expectation that the combination would be
successful.
Appeal Br. 16.
Appeal 2019-004838
Application 14/964,286

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The Examiner’s statement of motivation relies upon Chang’s
disclosure that an inertial sensor may allow a user to:
control the position of stylus 10 while holding stylus 10 in free
space and/or while pressing tip 18 against a touch sensor, table
top, or other surface, inertial sensor 28 may gather information
on the movement of stylus 10 in real time. This information may
be used to control the movement of objects on display 46 or to
take other actions in equipment 44. For example, a user may
move end 16 of stylus 10 in direction 50. Wireless signals may
be transmitted from stylus 10 to equipment 44 over link 48 that
inform equipment 44 of the movement of stylus 10.
Final Act. 5 (citing Chang, ¶ 32).
Appellant’s general arguments do not address the Examiner’s finding.

CLAIM 7: OBVIOUSNESS OVER MERCEA, CHANG, AND OFFICIAL NOTICE.
Appellant contends the Examiner takes Official Notice, but not in
compliance with Office procedures. Appeal Br. 18. Appellant argues the
Office has failed to satisfy its obligations under MPEP § 2144.03. Id.
Appellant argues the Examiner fails to provide specific factual findings
predicated on sound technical and scientific reasoning to support taking
Office Notice. Id. (citing MPEP § 2133.03(B)).
The Examiner finds, however, in the previous three Remarks Made in
an Amendment, Appellant did not challenge the factual assertion as not
properly officially noticed or not properly based on common knowledge.
Therefore, the Examiner was not given the opportunity to “provide
documentary evidence in the next Office action if the rejection is to be
maintained,” as specified in MPEP 2144.03 C. Ans. 6–7.
We are not persuaded the Examiner errs.

Appeal 2019-004838
Application 14/964,286

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CLAIM 9: OBVIOUSNESS OVER MERCEA, CHANG, AND COOK.
Appellant does not separately argue the patentability of dependent
Claim 9. See Appeal Br. 15; Reply Br. 17 (“Unless a claim is separately
argued via listing in a grouping of claims, for the purposes of this Appeal
only, a claim may be considered to stand or fall with the claim from which it
depends.”).

CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–20 103 Mercea, Chang 1–6, 8, 10–20
7 103 Mercea, Chang, Official Notice 7
9 103 Mercea, Chang, Cook 9
Overall
Outcome 1–20

AFFIRMED