Ex Parte 6765788 et al

Patent Trial and Appeal Board

May 16, 2013

95000254 (P.T.A.B. May. 16, 2013)

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.
95/000,254 05/30/2007 6765788 9870
22852 7590 05/17/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/17/2013 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
____________

CYBERLINK CORP.
Requester and Appellant

v.

GETAC TECHNOLOGY CORPORATION
Patent Owner and Appellant
____________

Appeal 2012-012565
Reexamination Control No. 95/000,254
Patent 6,765,788 B2
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, MAHSHID D. SAADAT, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2012-012565
Reexamination Control No. 95/000,254
Patent No. 6,765,788 B2

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Patent Owner Getac Technology Corporation appeals under 35 U.S.C.
§§ 134 and 315 (2002) the Examiner’s decision to reject claims 1-19 under
certain grounds as discussed below. Requester Cyberlink Corp. appeals
under U.S.C. §§ 134 and 315 (2002) the Examiner’s decision not to reject
claims 1-19 under certain other grounds as discussed below. We have
jurisdiction under 35 U.S.C. §§ 134(c) and 315(b) (2002). An oral hearing
was conducted on February 6, 2013.

STATEMENT OF THE CASE
This proceeding arose from a request by Cyberlink Corp. for an inter
partes reexamination of U.S. Patent 6,765,788 B2, titled “Method and
Apparatus for Integrating Personal Computer and Electronic Device
Functions,” and issued to Chia-Chuan Wu on July 20, 2004 (the ’788
patent).
The ’788 patent describes integrating personal computer and
electronic device functions (col. 1, ll. 10-12).
Claim 1 on appeal reads as follows:
1. An apparatus for integrating personal computer
and electronic device functions, comprising:
an integrated keyboard, comprising a personal computer
function hot key and a plurality of electronic device function
hot keys, the personal computer function hot key enabling
personal computer mode and providing personal computer
functions and electronic device function hot keys enabling
electronic device mode and providing electronic device
function, wherein the electronic device function is a multimedia
function;
a personal computer host, comprising a single operating
system, a customized BIOS, and
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a plurality of electronic device application programs, the
customized BIOS executing power-up procedures when in
electronic device mode, and electronic device application
programs for executing electronic device function when in
electronic device mode, at least one aspect of the power-up
procedures in the electronic device mode being distinct from
power-up procedures associated with the personal computer
mode and enabling execution of the electronic device function
in response to selection of at least one of the electronic device
function hot keys from an off mode; and
a keyboard encoder, coupled with the personal computer
host and the integrated keyboard, producing a corresponding
code according to the hot key used and sending the
corresponding code to the personal computer host.

Requester proposes rejections of the claims over the following prior
art references:
Sakai et al. US 5,613,135 Mar. 18, 1997
Jacobs et al. US 6,006,285 Dec. 21, 1999
Chan et al. US 6,226,237 B1 May 1, 2001
Tung US 6,948,058 B2 Sept. 20, 2005
Junichiro (“JP20285”) JP 2000-20285 Jan. 21, 2000

Lindy Electronics Limited & Lindy-Elektronix GMBH, “Multimedia
Keyboard User Manual Hotkey Driver Installation,” 2001 (“Lindy”).

Brian Livingston and Davis Straub, “More Windows 98 Secrets,” IDG
Books, Chapter 22, 1999 (“Livingston”).

Patent Owner appeals the Examiner’s rejection of the following
claims:
Claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over
Lindy and JP20285.
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Claims 16-19 under 35 U.S.C. § 103(a) as being unpatentable over
Lindy, Livingston, and JP20285.
Claims 1-10 under 35 U.S.C. § 103(a) as being unpatentable over
Sakai and JP20285.
Claims 2-5 and 7-9 under 35 U.S.C. § 103(a) as being unpatentable
over Sakai, JP20285, and Lindy.
Claims 1-19 under 35 U.S.C. § 103(a) as being unpatentable over
Lindy and any one of Jacobs, Chan, or Tung.

Requester appeals the Examiner’s confirmation of claims 1-19 under
35 U.S.C. § 102(b) as being anticipated by JP20285 or under 35 U.S.C. §
103(a) as being unpatentable over JP20285.

ISSUE
Did the Examiner err in rejecting claims 1-19?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
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(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claims 1-15 – Lindy and JP20285

Claim 1 recites a personal computer function hot key providing
personal computer functions. Patent Owner argues that Lindy discloses a
“SLEEP function hot key [that] is not the same as a personal computer
function hot key as recited in claim 1” (Patent Owner’s Appeal Brief, filed
Sept. 17, 2010 (“PO App. Br.”) at 12). While Patent Owner indicates that
the “SLEEP function hot key” of Lindy starts “a screen saver program or
power[s] down the computer” (id.), Patent Owner does not adequately
demonstrate that such functions (e.g., launching a screen saver program or
powering down a computer) differ from “personal computer functions” as
recited in claim 1. Indeed, either launching a screen saver program or
powering down a computer constitute the performance of a function of a
personal computer and would therefore be considered by one of ordinary
skill in the art to be personal computer functions.
Claim 1 recites a customized BIOS executing power-up procedures
when in electronic device mode. Patent Owner also argues that the
combination of Lindy and JP20285 fails to disclose or suggest such a
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customized BIOS (PO App. Br. 12). According to Patent Owner, Lindy
discloses a SLEEP function hot key that is “related to a personal computer
function” that does not execute “power up procedures when in electronic
device mode, as recited in claim 1” (id.).
As the Examiner states, Lindy discloses a BIOS that executes power-
up procedures via a power management system (col. 3, ll. 11-14) and
operating an electronic device including “start[ing] the music CD player or
Microsoft Media Player program” (RAN 23:11-12 citing Lindy, cols. 2-3).
We agree with the Examiner that one of ordinary skill in the art would have
considered a system operating an electronic device such as a CD player to be
operating in an electronic device mode because the system would be
functioning in a manner or “mode” that operates an electronic device. As
such, Lindy discloses operating in “electronic device mode” as recited in
claim 1. We also agree with the Examiner that it would have been obvious
to one of ordinary skill in the art to have provided a BIOS to execute power-
up procedures as disclosed by Lindy during an electronic device mode at
least because power-up procedures would have been necessary to power the
desired electronic device in order to operate in the electronic device mode.
As the Examiner also points out (see, e.g., RAN 23), JP20285
confirms that one of ordinary skill in the art would have understood that a
computer system is powered up via the BIOS (“BIOS-ROM 13 . . . stored
the . . . system boot routine . . .” ¶ [0025]) and that the BIOS executes
power-up procedures during an electronic device mode. For example,
JP20285 discloses that “the operating system boot routine” (¶ [0025]) is
stored in the BIOS-ROM 13 to start “one of the operating systems” that may
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correspond to, for example, a CD or DVD player (see, e.g., ¶ [0022]). One
of ordinary skill in the art would have understood that executing a system
boot routine to operate the system as an electronic device (e.g., a CD or
DVD player) would be powering up the system in an electronic device mode
at least because the system is being powered up to operate an electronic
device. Patent Owner has not sufficiently identified a difference between
the BIOS powering up a computer system by executing power management
functions and an operating system to function as an electronic device, such
as a CD or DVD player of Lindy and JP20285, and a BIOS executing
power-up procedures when in electronic device mode, as recited in claim 1.
Patent Owner argues that the combination of Lindy and JP20285 fails
to disclose or suggest power-up procedures as recited in claim 1 (PO App.
Br. 15). Claim 1 recites power-up procedures in an electronic device mode
being distinct from power-up procedures associated with the personal
computer mode. As the Examiner points out, JP20285 discloses that during
power-up procedures, “CPU 11 . . . determines the operating system
expected to be started [based on which of] selection switch 141 [was
selected]” and loads the corresponding operating system into system
memory for execution (¶ [0029]). The selection switches 141 correspond to
different operations of the computer system such as a CD player, a DVD
player, a magnetic disc device (HDD) or a personal computer (see, e.g., ¶
[0022]). Hence, JP20285 discloses that a different power-up procedure is
performed during power-up based on whether operating in electronic device
mode or personal computer mode (i.e., which selection switch 141 is
selected). Patent Owner does not adequately demonstrate a difference
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between the power-up procedures as disclosed by Lindy and JP20285 and
the power-up procedure as recited in claim 1.
Patent Owner argues that JP20285 fails to disclose or suggest a BIOS
performing power-up procedures when in electronic device mode “because
the BIOS ROM 13 in the JP20285 patent does not even determine what
selection switch 141 is depressed until after its start up procedures are
completed” (PO App. Br. 16). Even assuming Patent Owner’s contention to
be correct that JP20285 discloses determining which switch is selected after
start up procedures are completed, Patent Owner still has not demonstrated
that JP20285 also fails to disclose or suggest executing power-up procedures
when in electronic device mode for at least the reasons set forth above.
In any event, even assuming that claim 1 requires determining which
switch is selected prior to completing start up procedures, we still disagree
with Patent Owner that JP20285 fails to disclose or suggest this feature at
least because JP20285 discloses determining “which selection switch 141
was depressed” followed by loading a corresponding operating system into
memory and starting the operating system (see, e.g., ¶¶ [0028]-[0029]).
Hence, contrary to Patent Owner’s assertion, JP20285 discloses completing
power-up procedures (including starting an operating system) after
determining which selection switch is depressed.
Patent Owner also argues that while JP20285 discloses selecting and
loading an operating system, JP20285 fails to disclose or suggest a power-up
procedure as recited in claim 1 (PO App. Br. 16-17, citing Declaration of
Robert Gezelter, filed September 8, 2008 (“Declaration”), ¶¶ 16-21). As
described above, claim 1 recites a BIOS executing power-up procedures
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when in electronic device mode. For example, JP20285 discloses a BIOS
executing an operating system boot routine (¶ [0029]) during which time an
operating system corresponding to a selected selection switch is loaded into
memory and executed. Patent Owner does not indicate a difference between
the BIOS of JP20285 executing an operating a system boot routine to load
and execute an operating system to start a device and the claim limitation of
a BIOS that performs power-up procedures. While Patent Owner’s expert
witness Mr. Gezelter states his opinion that one of ordinary skill in the art
would not have considered loading and executing an operating system to
start a device to be part of “power-up procedures” (see, e.g., Declaration , ¶
21), Mr. Gezelter does not provide a rationale as to why one of ordinary skill
in the art would not have considered starting an operating system to start a
device a power-up procedure. In fact, starting an operating system to start a
device appears to be a logical step in powering up the device because if a
device is not started, the device would not be “powered up.” In the absence
of specific reasons from Patent Owner and Mr. Gezelter why one of ordinary
skill in the art would consider starting a device to be different from and not a
part of powering up a device, we cannot agree with Patent Owner.
Patent Owner also argues that JP20285 discloses “minimal functions”
(i.e., starting an operating system having “minimal functions” – ¶ [0022])
that are not power-up procedures as recited in claim 1 (PO App. Br. 18-19).
JP20285 discloses switches that start an operating system “for starting the
computer system as a personal computer” or “controlling operation of an
application program for operating the computer system as a CD player” (¶
[0022]). In other words, JP20285 disclose power-up procedures (i.e.,
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starting an operating system) in electronic device mode (i.e., starting a CD
player) that is distinct from power-up procedures associated with the
personal computer mode (i.e., distinct from starting an operating system for
starting the computer system as a personal computer). While Patent Owner
argues that (minimal) functions for starting an operating system are not part
of power-up of a computer, Patent Owner does not adequately demonstrate
how starting a computer (or starting an operating system for the computer)
differs from powering up a computer.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Lindy and
JP20285 (PO App. Br. 19-20). As described above, Lindy discloses a
multimedia keyboard with hot keys for controlling electronic devices (e.g.,
CD player) and managing personal computer power management functions
(e.g., SLEEP function) via a BIOS. Also as described above, JP20285
discloses switches for controlling electronic devices (e.g., CD or DVD
player) and managing personal computer functions via a BIOS. We agree
with the Requester and Examiner that it would have been obvious to one of
ordinary skill in to have combined Lindy and JP20285. Both Lindy and
JP20285 disclose systems for starting up a personal computer or electronic
devices. The combination of known elements of Lindy with known
elements of JP20285, both of which disclose similar systems for selecting
hot keys or switches for starting up and controlling electronic devices or a
personal computer system via a BIOS would have resulted in no more than
the predictable result of a system for selecting switches or hot keys for
starting up and controlling devices or a computer system via a BIOS. “The
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.,
550 U.S. at 416.
Patent Owner argues that JP20285 teaches away from the combination
with Lindy (PO App. Br. 20-21). “A reference may be said to teach away
when a person of ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090
(Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
In the present case, Patent Owner fails to indicate how one of ordinary skill
in the art, upon examining the Lindy reference, which discloses hot keys for
selecting and starting up and controlling selected electronic devices or a
personal computer system would be discouraged from following the path set
out in JP20285, which also discloses switches for selecting and starting up
and controlling selected electronic devices or a personal computer system.
While Patent Owner points out various alternatives to accomplish a
system for selecting, starting up , and controlling selected electronic devices
or a personal computer system via a BIOS, Patent Owner does not
adequately indicate how one of ordinary skill in the art would be
discouraged from performing specific features of either system. “[T]he prior
art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed …” In
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re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Thus, we do not find
Patent Owner’s arguments to be persuasive.
Patent Owner does not provide additional arguments in support of
claim 6 over the combination of Lindy and JP20285 (PO App. Br. 24-25).
Regarding claims 4 and 8, Patent Owner argues that the combination
of Lindy and JP20285 fails to disclose or suggest assigning functionality on
a standard keyboard (PO App. Br. 25). As the Examiner points out, however,
Lindy discloses a keyboard (see col. 1, figure of keyboard that appears to be
a standard keyboard) and defining (and re-defining) hot key functions to
keys on the keyboard (see, e.g., col. 3). We agree with the Examiner and the
Requester that it would have been obvious to one of ordinary skill in the art
given assigning hot key functions to keys on a keyboard (Lindy) to have also
assigned hot key functions to keys on a “standard” keyboard at least because
doing so would have entailed no more than the combination of known
elements (e.g., a standard keyboard with standard keys and assigning
functions to keys on a keyboard – as disclosed, for example, by Lindy and
JP20285) to achieve the predictable result of having keys (or switches) on a
keyboard for starting, controlling, and managing functions of an electronic
device or a personal computer, as disclosed by both Lindy and JP20285.

Claims 16-19 – Lindy, Livingston, and JP20285

Regarding claims 16-19, Patent Owner provides similar arguments
pertaining to the claim feature of a BIOS executing power-up procedures
when in electronic device mode. This argument was addressed previously.

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Claims 1-19 – Additional rejections

Affirmance of the rejection for the above-referenced claims based on
the combination of Lindy and JP20285 or the combination of Lindy,
Livingston, and JP20285 renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the rejection of those claims over JP20285 alone
(Requester’s appeal) or over Sakai, Jacobs, Chan, or Tung.

CONCLUSION
The Examiner did not err in rejecting claims 1-19.
DECISION
We affirm the Examiner’s decision to maintain the rejection of claims
1-15 under 35 U.S.C. § 103(a) as being unpatentable over Lindy and
JP20285 and claims 16-19 under 35 U.S.C. § 103(a) as being unpatentable
over Lindy, Livingston, and JP20285.

AFFIRMED

alw

Appeal 2012-012565
Reexamination Control No. 95/000,254
Patent No. 6,765,788 B2

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Patent Owner
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413

Third Party Requester

THOMAS, KAYDEN, HORSTEMEYER & R. RISLEY, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339