NOKIA TECHNOLOGIES OY

Patent Trials and Appeals BoardDec 10, 2021

2020005776 (P.T.A.B. Dec. 10, 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. 15/022,256 03/16/2016 Kenton LYONS 042933/519472 8704 10949 7590 12/10/2021 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP One South at The Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER CALDERON IV, ALVARO R ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 12/10/2021 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): usptomail@alston.com PTOL-90A (Rev. 04/07) 081374UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENTON LYONS ____________ Appeal 2020-005776 Application 15/022,256 Technology Center 2100 ____________ Before KARL D. EASTHOM, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 35, 36, 38–41, 44–46, 48–51, and 54–62, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nokia Technologies Oy. Appeal Br. 2. Appeal 2020-005776 Application 15/022,256 2 THE INVENTION The disclosed and claimed relates “generally to receipt of input via a touch screen display.” Spec. ¶ 1.2 Claim 35, reproduced below, is illustrative of the claimed subject matter: 35. An apparatus comprising at least one processor and at least one memory including computer program code, the at least one memory and the computer program code configured to, with the processor, cause the apparatus to at least: provide for presentation of a selectable element in a main portion of a display; receive an indication of a touch input made with a touch object in an input region of the display, wherein the input region does not overlap with the main portion; determine an extrapolated touch input in the main portion of the display based on a location of the touch input in the input region of the display and an angle of the touch object relative to a plane defined by a surface of the display; and provide for selection of the selectable element in an instance in which a location of the extrapolated touch input coincides with a location of the selectable element. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Benko et al. (“Benko”) US 2007/0247435 A1 Oct. 25, 2007 Miyazawa et al. (“Miyazawa”) US 2011/0004821 A1 Jan. 6, 2011 Fujiwara US 2014/0181750 A1 June 26, 2014 2 We refer to the Specification filed Mar. 16, 2016 (“Spec.”); Final Office Action mailed Sept. 18, 2019 (“Final Act.”); Appeal Brief filed Mar. 9, 2020 (“Appeal Br.”); Examiner’s Answer mailed June 23, 2020 (“Ans.”); and the Reply Brief filed Aug. 7, 2020 (“Reply Br.”). Appeal 2020-005776 Application 15/022,256 3 REJECTIONS Claims 35, 36, 38–41, 44–46, 48–51, and 54–62 stand rejected under 35 U.S.C. § 103 as unpatentable over Fujiwara and Miyazawa. Final Act. 3. Claims 59 and 61 stand alternatively rejected under 35 U.S.C. § 103 as unpatentable over Fujiwara, Miyazawa, and Benko. Final Act. 11. ANALYSIS Section 103 Rejections Independent claim 35 recites “determin[ing] an extrapolated touch input in the main portion of the display based on a location of the touch input in the input region of the display and an angle of the touch object relative to a plane defined by a surface of the display.” Independent claims 45 and 54 include materially the same limitations for purposes of the Examiner’s obviousness rejection. See Final Act. 3–6. The Examiner relies on Miyazawa’s angle difference calculated between pointing direction, and selecting an “operation item on an extension of the pointing direction of the operating tool” to teach determining an extrapolated touch input based on an angle of the touch object relative to a plane defined by a surface of the display as claimed. Final Act. 5–6 (citing Miyazawa ¶¶ 11–13, 47–50, 55, 56, 59, 64, 72–77).3 Appellant argues that Miyazawa, in contrast with the claim, “discloses a pointing direction,” and “is not concerned with the angle of the touch object relative to a plane defined by a surface of the display.” Appeal Br. 9– 10; see also Reply Br. 2–3. Appellant also argues that even if Miyazawa considered the pointing direction to be an angle, “such an angle would be 3 The Examiner makes the same finding in both grounds of rejection. Appeal 2020-005776 Application 15/022,256 4 determined relative to an axis on the plane of the display, and not on the plane of the display, as claimed.” Appeal Br. at 10; see also id. at 13; Reply Br. 4–6. Appellant argues that when describing the angle, the claims do recite a baseline for a comparison, namely, the plane recited in the claim feature: ‘determine an extrapolated touch input in the main portion of the display based on a location of the touch input in the input region of the display and an angle of the touch object relative to a plane defined by a surface of the display. Reply Br. 7; see also id. at 6–8. Figures 3A to 3C of Miyazawa are presented below: These figures illustrate “detection results of the operating tool M and positions of the operating tool M on the display panel 101.” Miyazawa ¶ 48. Miyazawa recites that the controller “calculates an angle difference between pointing directions of the operating tool M before and after rotation Appeal 2020-005776 Application 15/022,256 5 thereby to calculate the rotational angle of the operating tool M.” Miyazawa ¶ 47. As shown in Figures 3A to 3C, Miyazawa teaches a “pointing direction of the operating tool M” (Fig. 3A), and a “pointing direction of the operating tool M after rotation” of the “finger end . . . from the state of FIG. 3A” (Fig. 3B). Id. ¶¶ 49–50. We find that, as correctly argued by Appellant, while Miyazawa teaches a determining an angle related to the touch object, Miyazawa’s determined angle is the difference in the pointing directions of the touch object before and after rotation and is not relative to a plane defined by a surface of the display as required by the claim. Consequently, Miyazawa does not teach “determin[ing] an extrapolated touch input in the main portion of the display based on . . . an angle of the touch object relative to a plane defined by a surface of the display.” Therefore, we do not sustain the Examiner’s obviousness rejections under 35 U.S.C. § 103 of independent claims 35, 45, and 54, and claims 36, 38–41, 44, 46, 48–51, and 55–62 dependent therefrom not separately argued. New Ground of Rejection Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claim 54 under 35 U.S.C. § 101 for being directed to patent- ineligible subject matter. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. “[T]he claim term ‘machine-readable storage medium’ would include signals per se,” and when “the broadest reasonable interpretations of all the claims each covers a signal per se, the claims must be rejected under 35 U.S.C. § 101 as Appeal 2020-005776 Application 15/022,256 6 covering non-statutory subject matter.” Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). Here, independent claim 54 is directed to a “computer program product comprising at least one computer-readable storage medium having computer-usable program code portions stored therein.” Appeal Br. 22 (Claims App’x) (emphasis added). The claimed “computer program product comprising at least one computer-readable storage medium” does not distinguish whether the computer-readable storage medium is non-transitory. “A transitory, propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter,” and “cannot be patentable subject matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Therefore, the claimed “computer program product comprising at least one computer-readable storage medium” does not fall under any of the four categories of patentable subject matter, and must be rejected under 35 U.S.C. § 101 for covering non-statutory subject matter. For the reasons above, and pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 54 under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. The Examiner did not rely on 35 U.S.C. § 101 to reject the claims. Accordingly, we designate a new ground of rejection under 37 C.F.R. § 41.50(b). DECISION We reverse the Examiner’s 35 U.S.C. § 103 rejections of claims 35, 36, 38–41, 44–46, 48–51, and 54–62. We enter a new ground of rejection for claim 54 under § 101. Appeal 2020-005776 Application 15/022,256 7 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 35, 36, 38–41, 44–46, 48–51, 54–62 103 Fujiwara and Miyazawa 35, 36, 38–41, 44–46, 48–51, 54–62 59, 61 103 Fujiwara, Miyazawa, Benko 59, 61 54 101 Eligibility 54 Overall Outcome 35, 36, 38–41, 44–46, 48–51, 54–62 54 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 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 Appeal 2020-005776 Application 15/022,256 8 designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (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. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R § 41.50(b)