Ex Parte Ashcraft et al

Patent Trial and Appeal Board

Sep 15, 2016

13403175 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/403,175 02/23/2012
22879 7590 09/19/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Britt C. Ashcraft
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82899443 7528
EXAMINER
LEE, NICHOLAS J
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUSTA VO DE LOS REYES and SANJA Y MACW AN
Appeal2015-003789
Application 13/403, 175
Technology Center 2600
Before ALLEN R. MacDONALD, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/403, 175
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
bracketing added):
1. A computing device comprising:
[(A)] an input component including alphanumeric keys with a
first set of commands for the computing device;
[(B)] a controller to, in response to detecting a user access of a
modifier key:
[(i)] determine whether the user access of the modifier
key is maintained continuously for a predetermined amount
of time, and
[(ii)] in response to a determination that the user access
of the modifier key is maintained continuously for the
predetermined period of time, transition and lock a subset of
the alphanumeric keys to a second set of commands for the
computing device; and
[ ( C)] an illumination component included within a chassis of
the input component to illuminate the modifier key in response to the
subset of alphanumeric keys locking to the second set of commands.
Rejection on Appeal
1. The Examiner rejected claims 1-15 and 17-20 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Ono et al.
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Application 13/403, 175
(US 2003/0067446 Al; Apr. 10, 2003), Pfanstiehl (US 8,330,584 Bl; Dec.
11, 2012), and Lazaridis et al. (US 2005/0073446 Al; Apr. 7, 2005). 1
2. The Examiner rejected claim 16 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Ono, Pfanstiehl, Lazaridis, and
Pance et al. (US 2010/0302169 Al; Dec. 2, 2010).2
Appellants' Contention
1. Appellants contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
Pfanstiehl describes a technique in which: (1) a key press
lasting less than a defined time triggers the normal function of
the key, and (2) a key press lasting at least the defined time
"locks" the key, meaning that its function is disabled to prevent
unintended key commands .... [I]t is respectfully submitted
that modifying the "function key" of Ono to include the time-
based locking of Pfanstiehl would not disclose or suggest the
aforementioned subject matter of claim 1. Rather, such a
modification would result in a "function key" which can be
pressed for a defined time to lock the "function key" itself, such
that the "function key" does not respond to accidental key
presses.
App. Br. 7.
1 As to this rejection, claims 1 and 13 are argued separately. Claims 9 and
15 are argued only by reference to claim 1. Separate patentability is not
argued for claims 2-8, 10-12, 14, and 17-20. Except for our ultimate
decision, the Examiner's rejection of these claims is not discussed further
herein.
2 As to this rejection, claim 16 is argued only by reference to claim 15.
Therefore, our decision as to the underlying § 103 rejection of claim 15 is
determinative and, except for our ultimate decision, the Examiner's rejection
of claim 16 is not discussed further herein.
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Application 13/403, 175
2. Appellants also contend that the Examiner erred in
rejecting claim 1under35 U.S.C. § 103(a) because:
[I]t is submitted that the provided rationale merely asserts that it
would have been obvious to modify Ono to include the
technique of Pfanstiehl (i.e., locking a key after holding it for a
time period) because this would allow Ono to use the technique
of Pfanstiehl (i.e., to "allow[] a user to control the
locked/unlocked state of a key in response to a predetermined
time period"). Appellant respectfully submits that such circular
reasoning is not a valid rationale to explain why it would have
been obvious to a person of ordinary skill in the art at the time
of the invention to combine Ono and Pfanstiehl in this
particular manner. See, e.g., In re Chaganti, 2014 WL 274514,
*4 (Fed. Cir. 2014) ("circular reasoning is not sufficient-more is
needed to sustain an obviousness rejection." (citation omited
[sic])). Therefore, the provided rationale is a mere conclusory
statement that does not provide articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness. See KSR. Accordingly, the provided rationale is
insufficient to establish a prima facie case of obviousness for
claim 1.
App. Br. 8-9.
3. Appellants also contend that the Examiner erred in
rejecting claim 13 under 35 U.S.C. § 103(a) because:
[A] person of ordinary skill in the art will readily appreciate
that using different illumination levels, as discussed in
Lazaridis with reference to Figs. 3 and 4, clearly does not
disclose or suggest different colors.
App. Br. 12.
Issue on Appeal
Did the Examiner err in rejecting claims 1 and 13 as being obvious
because the cited references fail to describe the argued limitations?
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Application 13/403, 175
ANALYSIS
As to Appellants' above contention 3, we disagree. We do not find
where Appellants provide a definition of the argued term. Therefore, we
provide several relevant definitions of "color."
( 1) The quality of an object or substance with respect to light reflected
by the object, usually determined visually by measurement of hue,
saturation, and brightness of the reflected light; saturation or
chroma; hue. (Dictionary.com Unabridged; Based on the Random
House Dictionary,© 2016 Random House, Inc.)
(2) That aspect of the appearance of objects and light sources that may
be specified in terms of hue, lightness, and saturation. (The
American Heritage® Stedman's Medical Dictionary,© 2002,
2001, 1995 Houghton Mifflin Company.)
Appellants overlook that an artisan would recognize that a "color" possesses
plural characteristics. Included among the characteristics of "color" is
brightness (or lightness). The Examiner is correct that using different
illumination levels (i.e., brightness) as in Lazaridis would be understood by
an artisan as using a second color different from a first color.
As to Appellants' above contention 1, we agree that "modifying the
'function key' of Ono to include the time-based locking of Pfanstiehl would
not disclose or suggest the aforementioned subject matter of claim 1" (App.
Br. 7). Further, as to contention 2, we agree this lack of teaching in
Pfanstiehl in tum results in circular reasoning which "is not a valid rationale
to explain why it would have been obvious to a person of ordinary skill in
the art at the time of the invention to combine Ono and Pfanstiehl in this
particular manner" (App. Br. 9). The Examiner's reasoning of the Final
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Application 13/403, 175
Rejection and Answer are not sufficient to show that the combination of
Ono, Pfanstiehl, and Lazaridis render obvious claim 1.
However, we find that all the claim limitations (both argued and
unargued) that the Examiner alleges are taught in Pfanstiehl, are taught at
paragraph 207 of Lemay et al. (US 2008/0055269 Al; Mar. 6, 2008), now
U.S. Patent No. 9,304,675 B2 (issued Apr. 5, 2016) assigned to Apple, Inc.:
If the user wants to enter another uppercase letter in the same
sentence, he can tap on the shift key 628. As a result, the shift
key 628 is displayed in a visually different manner (e.g., with a
different color or shading) after the finger gesture. In some
embodiments, the shift key 628 returns to the lowercase mode
after the user enters the next letter in uppercase. If the user
wants to enter a sequence of uppercase letters, he can maintain
the finger contact with the shift key 628 for a predefined
extended period of time (e.g., 1-3 seconds) until the shift key
628 has a new appearance. In some other embodiments, the
shift key 628 stays in the uppercase mode for all subsequent
user-entered letters until another finger gesture is detected on
the shift key 628.
We modify the Examiner's rejections by substituting Lemay for Pfanstiehl.
Our review finds nothing more than the application of an admittedly known
technique to the improvement of a similar known device in the same way.
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
Sakraida and Anderson's-Black Rock are illustrative-a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We designate
our analysis in combination with the Examiner's analysis to be a new ground
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Application 13/403, 175
of rejection of claim 1 under 35 U.S.C. § 103 over Ono, Lemay, and
Lazaridis.
We also reject claims 2-15 and 17-20 under 35 U.S.C. § 103 over
Ono, Lemay, and Lazaridis for the reasons above and the reasons set forth
by the Examiner in the rejection of claims 2-15 and 17-20.
We also reject claim 16 under 35 U.S.C. § 103 over Ono, Lemay,
Lazaridis, and Pance for the reasons above and the reasons set forth by the
Examiner in the rejection of claim 16.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-20 as being unpatentable under 35 U.S.C. § 103(a).
(2) In a new grounds, we reject claims 1-20 as being unpatentable
under 35 U.S.C. § 103(a).
(3) Claims 1-20 are not patentable.
DECISION
The Examiner's rejections of claims 1-20 are reversed.
Claims 1-20 are newly rejected.
REVERSED
37 C.F.R. § 41.50(b)
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