Shih-Hsien Hu

Patent Trials and Appeals BoardMar 4, 2020

14516948 - (D) (P.T.A.B. Mar. 4, 2020)

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. 14/516,948 10/17/2014 SHIH-HSIEN HU 68507-034 3637 65358 7590 03/04/2020 WPAT, PC INTELLECTUAL PROPERTY ATTORNEYS 8230 BOONE BLVD. SUITE 405 VIENNA, VA 22182 EXAMINER PATEL, NITIN ART UNIT PAPER NUMBER 2628 MAIL DATE DELIVERY MODE 03/04/2020 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 SHIH-HSIEN HU ____________________ Appeal 2018-0029701 Application 14/516,948 Technology Center 2600 ____________________ Before DAVID M. KOHUT, BARBARA A. BENOIT, and LYNNE E. PETTIGREW, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Touchplus Information Corp. Appeal Br. 3. Appeal 2018-002970 Application 14/516,948 2 CLAIMED SUBJECT MATTER2 The claims are directed to a touch display including a touch panel 10, display module 11, and a control module 12 to control or operate external electronic devices such as a personal computer, notebook computer, tablet computer, smart phone, TV signal source, or a portable storage device. Spec. ¶ 27. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A touch display in communication with a first external electronic device and a second external electronic device through an external signal cable or a wireless transmission channel, the touch display comprising: a display module; a touch panel formed on the display module; and a control module, in communication with the touch panel, the display module and the external electronic devices, configured to generate first touch information in response to first touch operation on a first area of the touch panel, generate second touch information in response to second touch operation on a second area of the touch panel, and convert the second touch information into a first control instruction, the first touch information being transmitted to the first external electronic device through the external signal cable or the wireless transmission channel to operate the first external electronic device, the first control instruction being transmitted to the second external electronic device through the external signal cable or the wireless transmission channel to operate the second external electronic device. 2 Our Decision makes reference to Appellant’s Appeal Brief (“Appeal Br.,” filed June 9, 2017), and the Examiner’s Answer (“Ans.,” mailed October 30, 2017) and the Final Office Action (“Final Act.,” mailed January 11, 2017). Appeal 2018-002970 Application 14/516,948 3 REFERENCE Name Reference Date Shin US 2013/0076675 A1 Mar. 28, 2013 REJECTION Claims 1–15 are rejected under 35 U.S.C. § 102(a)(2) as anticipated by Shin. Final Act. 2–17. ANALYSIS Claim 1 requires a control module that generates first touch information in response to a first touch operation on a first area of the touch panel and second touch information in response to a second touch operation on a second area of the touch panel. Appeal Br. 20. Claim 1 further requires the control module to transmit the first touch information to a first external device and to convert the second touch information to a first control instruction and transmit the first control instruction to a second external device. Id. In this way, Appellant’s touch panel and control module “can issue proper output, i.e. touch information or control instruction to operate various kinds of external electronic devices.” Id. at 21. The Examiner finds that Shin teaches a touch panel that generates touch information in response to a touch operation in first and second areas of the touch panel. Final Act. 3 (citing Shin ¶¶ 38, 58); Ans. 6 (citing Shin, Fig. 2). The Examiner further finds Shin teaches a control module by disclosing a touch controller 30, Tx driving circuit 32, and Rx driving circuit 34, and a system-on-chip (SoC). Id. (citing Shin ¶ 59). The Examiner finds Shin discloses the touch controller transmits touch information to the external host system which is in communication with external devices that Appeal 2018-002970 Application 14/516,948 4 may include a navigation system, set-top box, DVD player, and Blu-ray player. Id. (citing Shin ¶¶ 58–59); Ans. 4. The Examiner further finds Shin discloses the host system runs an application to convert coordinate values of the touch raw data received from the touch controller. Id. (citing Shin ¶ 59); Ans. 4. Appellant contends that Shin fails to teach the claimed control module of claim 1. Appeal Br. 20–21. Specifically, Appellant argues that the Examiner errs by improperly mapping Shin’s touch controller 30, Tx driving circuit 32, and Rx driving circuit 34, and SoC as the claimed control module because the SoC is part of an external host system, separate from the display device. Id. at 20. Appellant argues “[s]ince the external host system is considered as an external electronic device which is not an element of the display device, the function of the SoC of the external electronic device should not be viewed as the function of the Shin's display device.” Id. at 20–21. Further, Appellant argues that Shin’s touch controller 30 . . . only generates and outputs touch coordinate data HIDxy and cannot generate the control instruction to directly control a specific external electronic device such as a DVD player. The touch coordinate data should be processed by the external host system to generate a corresponding control instruction to operate the specific external electronic device. Id. at 21. In response, the Examiner submits an annotated version of Shin’s Figure 1, shown below, that depicts Shin’s device in relation to the external host system. Appeal 2018-002970 Application 14/516,948 5 Ans. 5. The Examiner explains that “Shin teaches a display device having a display panel DIS and a microcontroller 30 that is configured to send a touch information to an external host device connected to various control Appeal 2018-002970 Application 14/516,948 6 electronic devices such as DVD, Blu rays, navigation system, etc.” Ans. 4. The Examiner contends [T]he host system (SoC) taught by Shin is external to the touch area TSP but it is part of Shin’s display DIS and its components illustrated in FIG. 1 . . . According to Shin, SoC does not belong to the listed external video source, i.e., DVD player, Blu-ray, etc.. It is indeed part of the overall system shown in FIG. 1, especially in the DIS panel. Final Act. 18–19. We agree with Appellant. In an anticipation rejection, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Instead, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (alteration in original) (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Applying this principle, it is clear that Shin does not anticipate claim 1 because it does not disclose a touch display with a control module in the manner claimed. Claim 1 recites a “touch display . . . comprising . . . a control module.” Claim 1 further recites that the control module is configured to generate first touch information that is “transmitted to the first external electronic device,” and a first control instruction that is “transmitted to the second external electronic device.” In other words, claim 1 requires a touch display with a control module that can transmit first touch information and a first control instruction to external devices. However, as is apparent from the Appeal 2018-002970 Application 14/516,948 7 Examiner’s annotated Figure 1 above, Shin’s SoC, relied upon by the Examiner to teach transmitting a first control instruction to an external device, is not part of Shin’s display device. Rather, the SoC is part of the external host system that is connected to video source equipment. See Shin ¶ 58 (“The touch coordinate data HIDxy output from the touch controller 30 is transmitted to the external host system.”). Hence, although Shin discloses a touch display comprising a control module (touch controller 30) to transmit first touch information in response to a first touch operation, Shin does not disclose the touch display’s control module also capable of transmitting a first control instruction to an external electronic device because Shin’s SoC is external to Shin’s touch display. Appeal Br. 20–21. For the reasons discussed, we do not sustain the Examiner’s rejection of claim 1, nor do we sustain the rejection of independent claims 11 and 14, which recite similar limitations, and dependent claims 2–10, 12, 13, and 15, which depend therefrom. CONCLUSION The Examiner’s rejections of claims 1–15 are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–15 102(a)(2) Shin 1–15 REVERSED