Microsoft Technology Licensing, LLC

Patent Trials and Appeals BoardMay 13, 2021

2020000475 (P.T.A.B. May. 13, 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. 14/922,033 10/23/2015 Kenneth P. Hinckley 358652-US-NP (1777.327US1 8089 144365 7590 05/13/2021 Schwegman Lundberg & Woessner, P.A. P.O. Box 2938 Minneapolis, MN 55402 EXAMINER TESHOME, KEBEDE T ART UNIT PAPER NUMBER 2622 NOTIFICATION DATE DELIVERY MODE 05/13/2021 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): SLW@blackhillsip.com usdocket@microsoft.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENNETH P. HINCKLEY, HRVOJE BENKO, MICHEL PAHUD, and DONGWOOK YOON _____________ Appeal 2020-000475 Application 14/922,033 Technology Center 2600 ____________ Before JOHNNY A. KUMAR, JASON J. CHUNG, and JAMES W. DEJMEK, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 4–10, 12–19, and 21.2 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse and additionally exercise our discretion under 37 C.F.R. § 41.50(b), and enter a NEW GROUND OF REJECTION under 35 U.S.C. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest is Microsoft Technology Licensing, LLC. See Appeal Br. 2. 2 Our reference to page numbers is based upon the cover page of the Appeal Brief being page 1, as the Appeal Brief does not contain any page numbers. Appeal 2020-000475 Application 14/922,033 2 § 103, for claims 1, 10, and 18, which we conclude are obvious over the cited reference. STATEMENT OF THE CASE3 Introduction Appellant’s claimed invention relates generally to “techniques for correlating user grip events with micro-mobility events to support a broad range of interactions and contextually-dependent functionalities.” Spec. ¶ 2. Independent Claim 1 1. A computing system, comprising: [a] at least one processing unit; and [b]memory configured to be in communication with the at least one processing unit, the memory storing instructions that based on execution by the at least one processing unit, cause the at least one processing unit to: [c] receive sensor data from an electronic device, the electronic device including a touch screen; [d] determine, based at least partly on the sensor data, a hand grip placement on the electronic device; [e]determine, based at least partly on the sensor data, a motion of the electronic device; [f] determine, based on the hand grip placement and the motion, a correlation between the hand grip placement and the motion; 3 We herein refer to the Final Office Action, mailed November 15, 2018 (“Final Act.”); Appeal Brief, filed May 6, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed August 28, 2019 (“Ans.”), and the Reply Brief, filed October 28, 2019 (“Reply Br.”). Appeal 2020-000475 Application 14/922,033 3 [g] determine, based on the correlation, a manner in which the electronic device that includes the touch screen is being operated; and [h] cause an action to be performed based on the manner in which the electronic device that includes the touch screen is being operated. Appeal Br. 14, “CLAIMS APPENDIX” (Bracketed lettering added, emphases added). References and Rejections on Appeal Claims 1, 6, 7, 9, 10, 15, 16 and 18 are rejected under 35 U.S.C. § 102(a)(1)/102(a)(2) as being anticipated by Churikov (US 2013/0300668 A1; Nov. 14, 2013). Final Act. 6. Claims 4, 5, 13, 17 and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Churikov (U.S. 2013/0300668) in view of Baker (US 2008/0317292 A1; Dec. 25, 2008). Final Act. 14. Claims 8, 12 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Churikov (U.S. 2013/0300668) in view of Ebey (US 2011/0006971 A1; Jan. 13, 2011). Final Act. 21. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Churikov in view of Baker as applied to claim 13 above, and further in view of Song (WO 2015/016524 A1; Feb. 5, 2015). Final Act. 24. Analysis Appellant contends that the Examiner erred in rejecting claims 1, 6, 7, 9, 10, 15, 16 and 18 under 35 U.S.C. § 102(a) because Churikov fails to disclose parts f, g, and h of independent claim 1, and similarly recited in independent claims 10, 18, and 21. Appeal Br. 7. In particular, Appellant contends that Churikov does not disclose to “determine, based on the hand Appeal 2020-000475 Application 14/922,033 4 grip placement and the motion, a correlation between the hand grip placement and the motion,” “determine, based on the correlation, a manner in which the electronic device that includes the touch screen is being operated,” and “cause an action to be performed based on the manner in which the electronic device that includes the touch screen is being operated.” Id. (hereinafter the disputed correlation features). Regarding the anticipation rejection of claim 1, only paragraphs 41, 52 and 53 of Churikov are cited by the Examiner for disclosing the disputed correlation feature recited in parts f, g, and h of independent claim 1.4 Final Act. 6–8. Appellant contends: that in the particular example described in paragraph [0053] of Churikov, the sensors 120 on the exterior of the electronic device are used to detect motion of the device against a surface without 4 As to the disputed correlation features, paragraph 46 of Appellant’s Specification discloses: For example, the correlation module 216 may determine from capacitance sensor data paired with accelerometer data that a bimanual (two handed) grip of an electronic device 102 correlated with a flip motion and/or a rapid shake movement corresponds to a device usage context where the user is trying to proceed to different content (similar to the process of flipping through content using a traditional notebook/notepad/rolodex etc.). In another example, the correlation module 216 may determine from capacitance sensor data paired with accelerometer data that a change of a bimanual grip event such that one of the two grip events changes location and becomes a partial grip event, when correlated with a prolonged stillness of the electronic device 102 corresponds to a device usage context where a user is identifying a portion of content that the user may wish to return to during a reading session. (emphases added). Appeal 2020-000475 Application 14/922,033 5 regard to hand placement on the electronic device. Appellant further notes that there is no description in Churikov as to how motion is detected using the sensors 120. A careful reading of paragraphs [0052] and [0053] makes it impossible to establish how the sensors 120 determine whether the electronic device is static (paragraph [0052] or in motion (paragraph [0053]), much less whether there is a correlation with any of the hand grip placement scenarios described in Churikov. Appeal Br. 8. See also Reply Br. 2–5. We agree with Appellant as our interpretation of paragraphs 52 and 53 of Churikov (Appeal Br. 7–12) coincides with that of Appellant. The Examiner has not shown sufficiently (Ans. 3–5), nor do we find, that paragraphs 52 and 53 of Churikov disclose the disputed correlation features of claim 1. As such, we cannot sustain the Examiner’s rejection of claim 1, and independent claims 10, 18, and 21, which recite commensurate limitations. Since we have reversed each independent claim on appeal, we also reverse the rejection of each associated dependent claim. However, we set forth a new ground of rejection, infra. Appeal 2020-000475 Application 14/922,033 6 NEW GROUND OF REJECTION under 35 U.S.C. § 103 Under our authority pursuant to 37 C.F.R. § 41.50(b), we set forth a new ground of rejection of claims 1, 10, and 18 under 35 U.S.C. § 103, as unpatentable over Churikov.5 We adopt the Examiner’s findings that Churikov discloses undisputed parts a through e of claim 1. Final Act. 6, 7 (citing Churikov, Figure 1, ¶¶ 3, 23, 24, 41, and 53).6 Regarding the disputed correlation features recited in parts f, g, and h of claim 1, paragraph 55 of Churikov discloses: It should be noted again that grip patterns ascertained from skin sensors 120 may be used in combination with other inputs such as touchscreen inputs, an accelerometer, motion sensors, multi- touch inputs, traditional gestures, and so forth. This may improve recognition of touches and provides mechanisms for various new kinds of gestures that rely at least in part upon grip patterns. For example, gestures that make used of both on-skin detection and touchscreen functionality may be enabled by incorporating a touch- aware skin as described herein with a device. (emphases added). Based upon our review of the evidence of record, we find that Churikov’s teaching of using grip patterns in combination with motion sensor input teaches the disputed correlation features of correlating grip 5 In the event of further prosecution, the Examiner should consider rejecting claim 21 over the combination of Churikov and Baker under 35 U.S.C. § 103. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 6 We adopt the Examiner’s findings for the undisputed claim features of independent claims 10 and 18. Final Act. 9–13. Appeal 2020-000475 Application 14/922,033 7 placement and motion, as recited in independent claims 1, 10, 18, and 21. Churikov ¶ 55. Accordingly, we set forth a new ground of rejection under 35 U.S.C. § 103, for claims 1, 10, and 18. The Patent Trial and Appeal Board is a review body rather than a place of initial examination. We have made a new rejection regarding independent claims 1, 10, and 18 under the provisions of 37 C.F.R. § 41.50(b). However, we have not reviewed dependent claims 4–9, 12–17, and 19 to the extent necessary to determine whether these claims are unpatentable over the combination of Churikov and Baker/Ebey/Song, or other prior art. We leave it to the Examiner to determine the appropriateness of any further rejections based on these or other references. Our decision not to enter a new ground of rejection for all claims should not be considered as an indication regarding the appropriateness of further rejection or allowance of the non-rejected claims. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C § Reference(s)/ Basis Affirmed Reversed New Ground 1, 6, 7, 9, 10, 15, 16, 18 102 Churikov 1, 6, 7, 9, 10, 15, 16, 18 1, 10, 18 4, 5, 13, 17, 21 103 Churikov, Baker 4, 5, 13, 17, 21 8, 12, 19 103 Churikov, Ebey 8, 12, 19 14 103 Churikov, Baker, Song 14 Appeal 2020-000475 Application 14/922,033 8 Overall Outcome 1, 4–10, 12–19, 21 1, 10, 18 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review” (emphasis added). Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.7 7 Regarding option (1), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note MPEP § 1214.01(I): “If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. 41.50(b)(2)” (emphasis added). If for any reason Appellant desires to reopen prosecution before the Examiner without submitting an amendment Appeal 2020-000475 Application 14/922,033 9 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. (Emphases added). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). REVERSED; 37 C.F.R. § 41.50(b) and/or new evidence, a Request for Continued Examination (RCE) that complies with 37 C.F.R. § 114 will remove the application from the jurisdiction of the Board under 37 C.F.R. § 41.35, and will reopen prosecution before the Examiner.