Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Aug 30, 2021

2021001702 (P.T.A.B. Aug. 30, 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.
15/874,452 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.
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Application 15/874,452

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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.
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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
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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)
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(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
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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
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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
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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.
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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
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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