Semiconductor Energy Laboratory Co., Ltd.Download PDFPatent Trials and Appeals BoardAug 30, 20212021001702 (P.T.A.B. Aug. 30, 2021) Copy Citation 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. 15/874,452 01/18/2018 Isamu SHIGEMORI 0756-11572 7743 31780 7590 08/30/2021 Robinson Intellectual Property Law Office, P.C. 3975 Fair Ridge Drive Suite 20 North Fairfax, VA 22033 EXAMINER EDWARDS, CAROLYN R ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 08/30/2021 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): ptomail@riplo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ISAMU SHIGEMORI and SATORU OKAMOTO ____________ Appeal 2021-001702 Application 15/874,452 Technology Center 2600 ____________ Before ROBERT E. NAPPI, CAROLYN D. THOMAS, and SCOTT E. BAIN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–16. See Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). A telephonic Oral Hearing was held on August 17, 2021. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Semiconductor Energy Laboratory Co., Ltd. Appeal Br. 3. Appeal 2021-001702 Application 15/874,452 2 The present invention relates generally to an input method for an information terminal. See Spec., Abst. Claims 1, 9, and 16, reproduced below with disputed limitations emphasized, are representative: 1. An input unit for an information terminal comprising: a support; a movable portion provided on the support; a laser device provided on the support with the movable portion provided therebetween; and a switch connected to the laser device, wherein the movable portion for adjusting the output direction of a laser light is provided so that the output direction of the laser light from the laser device coincides with a user’s line of sight. 9. An input method for an information terminal comprising an input unit for performing input to the information terminal, wherein the input unit includes a laser device and a switch connected to the laser device, wherein the information terminal includes a display portion, wherein the display portion includes a sensor, wherein a region in the display portion is irradiated with a first laser light output from the laser device, wherein the first laser light is switched from the first laser light to a second laser light, wherein the region is irradiated with the second laser light, wherein the sensor included in the region detects the second laser light, and wherein the first laser light is switched to the second laser light with the switch. Appeal 2021-001702 Application 15/874,452 3 16. An input support system for an information terminal including an input unit for performing input to the information terminal, and artificial intelligence, wherein the input unit includes a laser device and a switch connected to the laser device, wherein the information terminal includes a display portion, wherein the display portion includes a sensor, wherein a region in the display portion is irradiated with a first laser light output from the laser device, wherein the sensor detects the first laser light, wherein information is input to the information terminal with the switch, and wherein the artificial intelligence extracts and holds a movement pattern of the first laser light detected by the sensor. Appellant appeals the following rejections: R1. Claims 1–3 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Diaz (US 2015/0339855 A1, published Nov. 26, 2015) and Stone (US 6,672,972 B1, published Jan. 6, 2004). Final Act. 9–11. R2. Claims 4 and 6–8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Diaz, Stone, and Narita (US 2015/0009138 A1, published Jan 8, 2015). Final Act. 11–13. R3. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Horiuchi (US 2009/0073116 A1, published Mar. 19, 2009) and Narita. Final Act. 13–15. R4. Claims 10–15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Horiuchi, Narita, and Fukumitsu (US 2012/0061356 A1, published Mar. 15, 2012). Final Act. 15–16. R5. Claim 16 is rejected under 35 U.S.C. § 103(a) as being Appeal 2021-001702 Application 15/874,452 4 unpatentable over the combination of Horiuchi, Narita, Fukumitsu, and Lau (US 2006/0192090 A1, published Aug. 31, 2006). Final Act. 16–17. 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). ANALYSIS Claims 1–8 First, Appellant contends that “the Examiner’s alleged motivation for looking to Stone appears nonsensical.” Appeal Br. 9. For example, Appellant contends that “as Diaz’s input device is not a ‘skills’ training tool, such as Stone’s training device for improving golf skills, there is no plausible reason to have the alleged motivation to ‘improve the user skills.’” Id. We disagree with Appellant. The Examiner’s motivation for combining Diaz’s teachings with Stone’s teachings is “in order to improve the user skills when using the device wherein the device is unobtrusive to the user and does not interfere with the user’s activity.” Final Act. 10. The Examiner clarifies that “the user would be able to do much more in terms of positioning [] the laser . . . [and] [t]he user would [] be able to position the pointer that is least unobtrusive to the user so that it does not interfere with activities the user might be performing.” Ans. 4. We find that the Examiner’s motivation is sufficient for modifying Diaz’s structure with a movable portion as taught in Stone. A benefit gained from a combination is a motivation to make such a combination. See Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1262 (Fed. Cir. 2012); cf. Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) Appeal 2021-001702 Application 15/874,452 5 (explaining that a Court can examine the benefits gained and lost by making the combination in finding a motivation to combine). Here, the Examiner highlights that Stone discusses the benefit of having an unobtrusive device which allows the user to do much more in terms of positioning. See Stone 1:60–61. “As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (citations omitted). Accordingly, we find unavailing Appellant’s argument that the Examiner’s motivation to combine is nonsensical. Second, Appellant contends that the combination of Diaz and Stone fails to teach the claimed “movable portion” because “in Diaz the laser device is purposely unmovably ‘affixed’ to the glasses . . . to be moved by head movement” (Appeal Br. 9 (citing Diaz ¶¶ 29, 39)) and “Stone’s device has not been shown to teach this feature either.” Id. citing Stone 3:53–4:13. We disagree with Appellant. Here, the Examiner specifically relies upon Stone, not Diaz, to teach the movable portion. See Final Act. 9. Appellant fails to sufficiently rebut Stone’s proffered teachings. For example, the Examiner finds that Stone discloses a movable portion for adjusting the output direction of a laser light Final Act. 9–10. Specifically, Stone discloses that the “connection member 18 is thus rendered free-swinging and is therefore configured so that the one end of the pointer 12 from which the light beam is emitted is free to rotate in a circular 360° movement in a horizontal plane. . . . [which] enables the laser pointer 12 to move in any number of horizontal planes.” Stone 4:1–10. Appellant fails to persuasively distinguish Stone’s free-swinging connection Appeal 2021-001702 Application 15/874,452 6 from the claimed movable portion. Thus, contrary to Appellant’s contention, Stone clearly teaches a movable portion for adjusting the output of a laser light in numerous horizontal planes, which reasonably could include a user’s line of sight. Accordingly, we find unavailing Appellant’s contention that the combination of Diaz and Stone fails to teach the claimed “movable portion” given the aforementioned teachings in Stone. Third, Appellant contends that “the invention of Diaz would become compromised by the incorporation of Stone” (Appeal Br. 10) because Stone’s “switch is simply an on/off switch . . . [and] the claimed switch is provided in an input device, and serves the disclosed purpose of selecting input.” Id. We disagree with Appellant. Claim 1 recites, inter alia, “a switch connected to the laser device.” See Claim 1. However, claim 1 fails to recite any specific switch functions, particularly, a selecting input function as argued by Appellant (although the switch selecting function is disclosed in dependent claims 4 and 6–8). While we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). As such, because Appellant’s aforementioned arguments are not commensurate with the scope of claim 1 (nor dependent claims 2, 3, and 5), we find such arguments unavailing. On the other hand, dependent claims 4 and 6–8 recite “wherein the first laser light and the second laser light are switched by the switch.” See claims 4, 6–8. However, for claims 4 and 6–8, the Examiner relies upon Narita, not Stone, to teach switching from a first to a second laser. See Final Appeal 2021-001702 Application 15/874,452 7 Act. 11 (citing Narita ¶ 65). Thus, Appellant’s aforementioned contention regarding Stone fails to rebut the Examiner’s specific findings regarding Narita. Stated differently, Appellant’s argument against Stone separately from Narita does not persuasively rebut the combination made by the Examiner. One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). Finally, Appellant contends that “Diaz is a laser input device while Stone is directed to the non-analogous art of a golf training tool . . . [that] provides no input functionality for an input device.” Appeal Br. 9; see also Id. at 10. There are two separate tests for determining whether a prior art reference is analogous as follows: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the inventors’ endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventors are involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, the Examiner finds that “the Stone reference is reasonably pertinent to the particular problem of having as adjustable portion for a laser . . . so that the user have increased freedom in adjusting the laser camera to their comfort and use.” Ans. 5. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In Appeal 2021-001702 Application 15/874,452 8 re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007) (citations and quotations omitted). Appellant’s Specification discloses that it is difficult to use “a touch operation on a touch panel for users who cannot freely move parts of the body . . . there is a possibility of an operating error or an input error.” Spec. ¶ 6. Therefore, an object of Appellant’s invention is “an information terminal [allowing] for easy input work and avoiding an operating error.” Id. at ¶ 7. Thus, the particular problem pertinent to which the inventors are involved includes providing easy input means that avoids operating error, particularly when users cannot freely move parts of the body, i.e., a hands free device. Similarly, Stone discloses that objects of their present invention includes “the device is unobtrusive to the user” 1:60; “alerts the user to undesirable head movement without diverting the user’s attention . . . and without requiring extensive pre-location of the device” 1:64–67. Specifically, Stone’s invention allows a golfer to use a device that is unobtrusive and does not interfere with the user’s normal stroke, i.e., in essence a hands free device. As such, we find the Examiner has sufficiently shown that Stone is reasonably pertinent to the particular problem with which the inventors are involved. Accordingly, we sustain the Examiner’s rejection of claims 1–8 under 35 U.S.C. § 103. Claims 9–15 Appellant contends that in Horiuchi “the alleged laser detection part (sensor module 12) is provided behind display part 11 (separate). It thus fails to teach ‘wherein the display portion includes a sensor.’” Appeal Br. Appeal 2021-001702 Application 15/874,452 9 11. Appellant also contends that “Narita’s alleged sensor (12, 15) is also not in the display portion and in the region of the display.” Id. In response, the Examiner finds, and we agree, “that Horiuchi shows clearly in FIG 2 and Paragraph [0061] . . . that ‘the display device 1 includes a laser detection part 12 in addition to the display part 11 that displays information.’” Ans. 7. Here, the claimed “sensor” reads on Horiuchi’s laser detection part. Additionally, the Examiner points out that Horiuchi “explicitly teach that ‘[w]hen the display part 11 is a screen, the sensor module 12 is provided on the screen surface.’” Id. citing Horiuchi ¶ 65. As a result, we find unavailing Appellant’s aforementioned contention that Horiuchi’s sensor is not included in the display given Horiuchi’s explicit teachings to the contrary. Accordingly, we sustain the Examiner’s rejection of claims 9–15 under 35 U.S.C. § 103. Claim 16 Appellant contends that in addition to the arguments made above regarding claim 9, Lau “does not appear to support extraction and holding of a movement pattern. Instead, for example, . . . pattern 182 appears to be a shape pattern, e.g., a triangle[, which is] not a movement pattern . . . and not a pattern shown to be detected by the sensor.” Appeal Br. 12. In response, the Examiner finds, and we agree, that “Lau teaches in Paragraph [0033] that the Laser light sensor [] is connected to an AI unit . . . configured to perform various operations . . . [and] contains image processing algorithm 142 . . . designed to calculate a centroid position of a laser beam pattern.” Ans. 9. Additionally, Lau discloses that “[r]etro- reflector 162 and laser light sensor 180 are configured to measure the pitch Appeal 2021-001702 Application 15/874,452 10 and yaw orientations or movements of target 160.” Lau ¶34. In other words, Lau teaches artificial intelligence (AI) that calculates a centroid position of a laser beam pattern, including when the pattern is necessarily moving with a target. Thus, we find that Lau sufficiently teaches a movement pattern of the laser light detected by a sensor. Accordingly, we sustain the Examiner’s rejection of claim 16 under 35 U.S.C. § 103. CONCLUSION The Examiner’s rejections of claims 1–16 as being unpatentable under 35 U.S.C. § 103 is affirmed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5 103 Diaz, Stone 1–3, 5 4, 6–8 103 Diaz, Stone, Narita 4, 6–8 9 103 Horiuchi, Narita 9 10–15 103 Horiuchi, Narita, Fukumitsu 10–15 16 103 Horiuchi, Narita, Fukumitsu, Lau 16 Overall Outcome 1–16 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation