Ex Parte Tenuta

Patent Trial and Appeal Board

Jun 29, 2017

13909724 (P.T.A.B. Jun. 29, 2017)

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.
13/909,724 06/04/2013 Matthew D. Tenuta 0058-599001 5490
79318 7590 07/03/2017
BRAKE HUGHES BELLERMANN LLP
c/o CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
SHAH, SUJIT
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
07/03/2017 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):
uspto@brakehughes.com
docketing@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW D. TENUTA
Appeal 2016-008407
Application 13/909,7241
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 4, 6—13, and 15—28. Claims 1—3, 5, and 14 have been canceled. App.
Br. 14, 16. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Google Inc. as the real party in interest. App. Br. 1.
Appeal 2016-008407
Application 13/909,724
STATEMENT OF THE CASE
Introduction
Appellant’s claimed invention is directed to an input device on a
portable computing device wherein the input device (e.g., touch pad) is
comprised of both a touch scanner and a wireless scanner. Spec. Tflf 2, 4—6.
In a disclosed embodiment, the device may alternate between scanning for
tactile input and wireless input. Spec. 14.
If tactile input is received, the portable computing device may
stop scanning for wireless input while the portable computing
device continues to receive the tactile input. When the portable
computing device stops receiving the tactile input, the portable
computing device may return to alternating between scanning for
tactile input and scanning for wireless input. If wireless input is
received, the portable computing device may stop scanning for
tactile input while wirelessly communicating with the device
from which the wireless input was received. When the portable
computing device is finished wirelessly communicating with the
device, the portable computing device may return to alternating
between scanning for tactile input and scanning for wireless
input.
Spec., Abstract.
Claim 8 is illustrative of the subject matter under appeal and is
reproduced below with the disputed limitation emphasized in italics'.
8. A portable computing device comprising:
a base comprising a housing, the housing including a top portion,
a bottom portion, and sides adjacent to both the top portion and the
bottom portion, the housing being made of a conductive material, the
top portion defining an aperture;
a tactile input device located within the aperture defined by the
top portion of the base, the tactile input device including a top surface
made of a non-conductive material, a touch sensor configured to scan
for tactile input, and a wireless scanner configured to scan for wireless
signals',
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Application 13/909,724
at least one processor enclosed by the base;
at least one memory device enclosed by the base, the at least one
memory device comprising instructions stored thereon that, when
executed by the at least one processor, are configured to cause the
portable computing device to at least:
when the portable computing system determines that input is
received via the touch sensor, pause scanning in the wireless scanner;
and
when the portable computing system determines that input is
received via the wireless scanner, pause scanning in the touch sensor;
and
a lid rotatably attached to the base, the lid including a display.
The Examiner’s Rejections2
1. Claims 4, 8, 9, 11—13, and 24—26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Brooks et al. (US
2013/0328785 Al; Dec. 12, 2013) (“Brooks”) and Chen et al. (US
2013/0241864 Al; Sept. 19, 2013) (“Chen”). Final Act. 2-7.
2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brooks, Chen, Fu et al. (US 2008/0165157 Al; July 10,
2008) (“Fu”), and Wu et al. (US 2011/0109568 Al; May 12, 2011) (“Wu”).
Final Act. 8—9.
2 The Examiner fails to address claims 6 and 7 in the Final Office Action.
Appellant notes claim 7 was not addressed. App. Br. 12. In response, the
Examiner explains the rejection statement for claim 7 was inadvertently
omitted, but indicates claim 7, stands rejected for similar reasons to those set
forth for claim 27. Ans. 13. In the event of further prosecution, we invite
the Examiner to address claim 6.
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Application 13/909,724
3. Claims 15—23, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brooks, Chen, and Paulsen et al. (US
2013/0162594 Al; June 27, 2013) (“Paulsen”). Final Act. 9-18.
Issue on Appeal3
Did the Examiner rely on impermissible hindsight in combining the
teachings and suggestions of Brooks and Chen in rejecting, inter alia, claim
8?
ANALYSIS4
Appellant contends the Examiner erred in rejecting, inter alia, claim 8
by relying on hindsight reconstruction of the identified prior art references.
App. Br. 6-9; Reply Br. 2—3. In particular, Appellant asserts that Brooks
discloses a portable computing device with an antenna array disposed in or
near a clutch assembly pivotably connecting an upper portion (e.g., display)
of a portable computing device with a base portion. App. Br. 6; Reply Br. 2.
Appellant argues, but for Appellant’s own Specification, the Examiner has
not articulated reasoning with rational underpinnings as to why an
ordinarily-skilled artisan would add an antenna—in addition to the already-
3 We only address this issue, which is dispositive. We do not address
additional issues raised by Appellant’s arguments.
4 Throughout this Decision, we have considered the Appeal Brief, filed
December 16, 2015 (“App. Br.”); the Reply Brief, filed August 30, 2016
(“Reply Br.”); the Examiner’s Answer, mailed June 30, 2016 (“Ans.”); and
the Final Office Action, mailed July 16, 2015 (“Final Act.”), from which this
Appeal is taken.
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Application 13/909,724
present antenna array—to the touch pad of Brooks. App. Br. 6—9; Reply
Br. 2-3.
Brooks is generally directed to a keyboard backlight for a portable
computer. Brooks 11. In a disclosed embodiment, the portable computing
device can have an upper portion (or lid) and a base portion. Brooks 139.
Brooks discloses the lid and the base portion may be pivotally connected to
each other using a “clutch assembly.” Brooks 140. Brooks describes a
portable computing device including a base comprising a housing made of a
conductive material and forming a top portion, bottom portion and sides
adjacent to the top and bottom portions. Brooks H 41, 48, Fig. 1. Further,
Brooks discloses the top portion of the base may have an aperture into which
a touch sensitive device (i.e., a touchpad) may be included. Brooks H 39,
43. Additionally, to connect the portable computing device with wireless
access points, Brooks discloses one or more antennas (or an antenna array)
may be housed within or near the clutch assembly. Brooks H 80, 93—94.
Chen discloses a touch-controlled electronic device further
comprising a wireless communication function. Chen, Abstract. Chen is
directed to reducing signal interference from the wireless communication
circuitry to the touch sensing function. Chen H 2, 7—13. In a disclosed
embodiment, Chen teaches “[w]hen the wireless communication module
receives or transmits the wireless signal, the touch sensing module stops
sensing the touch.” Chen 19. Similarly, “[w]hen the touch sensing module
senses the touch, the wireless communication module stops receiving or
stops transmitting the wireless signal.” Chen 110.
In rejecting independent claim 8, the Examiner finds, inter alia, it
would have been obvious to one of ordinary skill in the art to modify the
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Application 13/909,724
portable computing device of Brooks to include a wireless scanner in the
device and perform alternating scans of the wireless and touch scanners, as
taught by Chen. Final Act. 5. The Examiner further finds “[t]he
suggestion/motivation would be to make the device wirelessly
communicable to other external devices.” Final Act. 5. Additionally, the
Examiner responds it would have been obvious to include a second antenna
in the portable computing device of Brooks to communicate with another
device and that the placement of the antenna is a matter of design choice.
Ans. 6—7.
“Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). It is improper to base a conclusion of obviousness
upon facts gleaned only through hindsight. To draw on hindsight knowledge
of the patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore & Assoc, v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)). The invention must be viewed not after the blueprint has been
drawn by the inventor, but as it would have been perceived in the state of the
art that existed at the time the invention was made. Sensonics, 81 F.3d at
1570 (citing Interconnect Planning Corp. v. Feil, 11A F.2d 1132, 1138 (Fed.
Cir. 1985)). Obviousness requires the additional showing that a person of
ordinary skill at the time of the invention would have selected and combined
those prior art elements in the normal course of research and development to
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Application 13/909,724
yield the claimed invention. KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (describing that a person of ordinary skill possesses “ordinary
creativity, [and is] not an automaton”).
Additionally, to support a conclusion that a claim is directed to
obvious subject matter, i.e., that a feature is an obvious matter of design
choice, an Examiner must present a “convincing line of reasoning” as to why
one of ordinary skill in the art would have found the claimed feature to have
been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When
determining whether a rejection based on design choice is appropriate, the
Examiner must review the Specification and ascertain if the limitation in
question is disclosed as serving any advantage or particular purpose, or
whether it solves a stated problem. The Examiner also should explain the
reasoning used to determine that the prior art would have performed equally
as well as the claimed invention.
Here, we find the Examiner has not provided sufficient persuasive
evidence or reasoning that an ordinarily-skilled artisan would have modified
the touch pad of Brooks with a wireless scanner. Rather, Brooks already
discloses an antenna array disposed near the clutch assembly of the portable
computing device. Brooks ^fl[ 80, 93—94. Brooks further discloses that
additional antennas may be included as part of the antenna array and that
such antennas may be used to connect with wireless access points or
communicate with other wireless devices. See Brooks ^fl[ 93—94 cf. Final
Act. 5 (“to make the device wirelessly communicable to other external
devices”).
Additionally, we are not persuaded by the Examiner’s explanation that
it would be an obvious design choice to modify or place an additional
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Application 13/909,724
antenna to the touch pad of the portable computing device of Brooks. In
particular, the Examiner has not provided sufficient persuasive evidence or
technical reasoning that the proposed modification would have performed at
least equally as well as the claimed invention (e.g., reducing electromagnetic
interference and radiation from the chassis of the portable computing device
of Brooks (see, e.g., Brooks 141) while providing near-field communication
functionality via a wireless scanner as part of a touch pad cf. Spec H 35, 42).
Thus, the Examiner has not provided a “convincing line of reasoning” that
the proposed modification would have been an obvious design choice. See
Clapp, 227 USPQ at 973.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 8. For
similar reasons, we do not sustain the Examiner’s rejection of independent
claim 18, which recites a similar limitation (i.e., a trackpad module
comprising a touch sensor and first and second near field communication
coils). Further, we do not sustain the Examiner’s rejections of claims 4, 6, 7,
9—13, 15—17, and 19-28, which depend therefrom.
DECISION
We reverse the Examiner’s decision rejecting claims 4, 6—13, and 15—
28.
REVERSED
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