Ex parte Blish

Board of Patent Appeals and Interferences

Mar 11, 1998

08164854 (B.P.A.I. Mar. 11, 1998)

Application for patent filed December 10, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NELSON A. BLISH
_____________
Appeal No. 96-1904
Application 08/164,8541
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1904
Application 08/164,854

2
This is an appeal from the final rejection of claims
1 and 3 through 22. These claims constitute all of the claims
remaining in the application.
Appellant’s invention pertains to a computer
keyboard. An understanding of the invention can be derived
from a reading of exemplary claims 1, 8, 11, 14, 17, 20, and
22, copies of which appear in the appendix to appellant’s
revised brief (Paper No. 13).
As evidence of obviousness, the examiner has applied
the documents listed below:
Hagelstein et al. 3,093,911 Jun. 18,
1963
(Hagelstein)
McCall 4,378,553 Mar. 29, 1983
Lahr 4,661,005 Apr. 28, 1987
Rader 5,122,786 Jun. 16, 1992
Louis 5,212,473 May 18, 1993
Goldstein WO 92/00851 Jan. 23,
1992
(Published PCT Application)
Grosel 65,573 Feb. 20, 1969
Appeal No. 96-1904
Application 08/164,854

Our understanding of this document is derived from a2
reading of a translation thereof prepared in the United States
Patent and Trademark Office. A copy of the translation was
appended to the examiner’s answer (Paper No. 14).
We will refer to this reference as the Leipzig document3
for consistency with the usage by both the examiner and
appellant.
3
(Germany) (Leipzig)2 3
IBM Technical Disclosure Bulletin, “KEYBOARD FOR HANDHELD
COMPUTER,” Vol. 27, No. 10A, pages 5643 through 5645, March,
1985 (IBM reference)
The following rejections are before us for review.
Claims 1 and 3 through 8 stand rejected under 35
U.S.C. § 112, first paragraph, for the reason that the
specification, as originally filed, does not provide support
for the recitation that the keyboard may be operated
“independently of supporting surfaces” (claim 1).
Claims 20 and 21 stand rejected under 35 U.S.C. §
112, second paragraph, as being broad to the extent that they
Appeal No. 96-1904
Application 08/164,854

4
fail to particularly point out and distinctly claim any
structure.
Claims 1 and 20 stand rejected under 35 U.S.C. §
102(b) as being anticipated by each of McCall, Lahr, Rader,
and Goldstein.
Claims 3 through 9, 11, 12, 14, 15, 17, 18, 21, and
22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over McCall, Lahr, Rader, and Goldstein in view
of the IBM reference and Leipzig.
Claims 10, 13, 16, and 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over McCall, Lahr,
Rader,
and Goldstein in view of the IBM reference and Leipzig, as
applied immediately above, further in view of Louis and
Hagelstein.
Appeal No. 96-1904
Application 08/164,854

All subsequent references to the brief refer to the4
revised brief. Additionally, we note appellant’s commentary
regarding the lack of a translation of the Leipzig reference
(brief, pages 14, 15, 18, and 19). A copy of the translation
of this reference was provided by the examiner as an
attachment to the answer (Paper No. 14). No reply brief was
submitted by appellant.
While certain claims include obvious informalities5
there- in, we nevertheless comprehend the metes and bounds
thereof which enables us to address the content thereof
relative to the applied prior art. For example, we understand
claim 3 as including keys which serve an alphabetic function
and additionally a numeric function. In claim 7 (and
similarly in claim 17), we understand “Numeric function” to
denote --Numeric, function--. In claim 12, line 2; claim 15,
line 2; and claim 18, line 2, we understand “said alphabetical
keys” to correspond to the “alphabetic keys” earlier recited
(continued...)
5
The full text of the examiner's rejections and
response to the argument presented by appellant appears in the
answer (Paper No. 14), while the complete statement of
appellant’s argument can be found in the revised brief (Paper
No. 13).4
OPINION
In reaching our conclusion on the issues raised
in this appeal, this panel of the board has carefully con-
sidered appellant’s specification and claims, the applied5
Appeal No. 96-1904
Application 08/164,854

(...continued)5
in parent claims 11, 14, and 17, respectively.
In our evaluation of the applied teachings, we have6
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
6
teachings, and the respective viewpoints of appellant and the6
examiner. As a consequence of our review, we make the
determinations which follow.
The rejection under 35 U.S.C. § 112, first paragraph
We affirm the rejection of claims 1 and 3 through 8.
This rejection, focusing upon the lack of support in
the original disclosure for language added to claim 1 (Paper
No. 3), clearly addresses the description requirement of
35 U.S.C. § 112, first paragraph.
Appeal No. 96-1904
Application 08/164,854

7
The description requirement is separate and distinct
from the enablement requirement. That one skilled in the art
might realize from reading a disclosure that something is
possible is not a sufficient indication to that person that
the something is part of an appellant's invention. See In re
Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977),
cert. denied, 434 U.S. 1064 (1978). The test for determining
compliance with the written description requirement is whether
the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language.
Further, the content of the drawings may also be considered in
determining compliance with the written description
requirement.
Appeal No. 96-1904
Application 08/164,854

8
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
Appellant’s specification (page 2) indicates that an
embodiment of the invention
has palm and wrist restraints so that left
and right keyboards can be used without
resting the keyboard on a flat surface
(lines 7 and 8).
At page 6 of the specification, a right hand rest 70 and a
left hand rest 74 are described. The spacing between the
upper and lower halves 72, 73 of the rests may be adjusted
to hold the wrist and palm of the user
snugly so that right hand keyboard need not
rest on a hard surface (lines 14 and 15).
Page 6 further explains that
[r]ight hand and left hand keyboards with
hand rests as described may be used with
the operator’s hands and keyboards in her
pocket (lines 18 and 19).
Initially, we note that it is clear to us that the
reference to a “hard” or “flat” surface in the specification
Appeal No. 96-1904
Application 08/164,854

9
denotes a surface of a structural entity, i.e., a surface
other than a surface on the body of a user. Accordingly,
based upon
the underlying disclosure, it is apparent to this panel of the
board that an artisan would understand that, in use, the
disclosed keyboard need not rest upon a flat or hard surface,
but may be used with the keyboard in a pocket, i.e., the
keyboard rests on the bottom of a pocket (neither a flat nor
hard surface).
In our opinion, an artisan would not fairly
appreciate from the overall original underlying disclosure any
inference at all that a user’s body alone (hand, wrist, or
arm) was, in fact, intended to be the sole support for the
appellant’s keyboard in use. Thus, we believe it fair to say
that the recitation in claim 1 that the right and left hand
keyboard may be operated “independently of supporting
Appeal No. 96-1904
Application 08/164,854

We note that appellant understands (brief, page 10) 7
claim 1 as addressing keyboard segments which may be operated
“independently of supporting surfaces,” as compared to prior
art keyboards that require supporting surfaces (McCall, Lahr,
Rader, and Goldstein).
10
surfaces” lacks descriptive support in the original
disclosure. 7
The argument advanced by appellant (brief, pages 6
and 7) that the disclosure is clearly enabling simply does not
convince us that the subject matter at issue in independent
claim 1 and claims 3 through 8 dependent thereon is
descriptively supported by the original disclosure.
The rejection under 35 U.S.C. § 112, second paragraph
We reverse the rejection of claims 20 and 21.
We certainly comprehend the examiner’s perception of
these claims as being quite broad. However, the circumstance
that a claim is broad does not automatically render the claim
indefinite. See In re Miller, 441 F.2d 689, 693, 169 USPQ
Appeal No. 96-1904
Application 08/164,854

11
597, 600 (CCPA 1971). In the present case, we conclude that
the content of claims 20 and 21 can be reasonably understood,
not- withstanding the breadth thereof. Since the metes and
bounds of
the claimed subject matter are ascertainable, the claims are
not indefinite.
The rejection under 35 U.S.C. § 102(b)
We reverse the rejection of claim 1, but affirm the
rejection of claim 20.
The segmented computer keyboard of claim 1 requires,
inter alia, a left and right hand keyboard that may be
operated “independently of supporting surfaces.” Following
our analysis of claim 1, supra, this quoted recitation is
taken to mean that the operation of the keyboard is carried
out independent of
supporting structural surfaces. In other words, the language
clearly infers operation of the keyboard while only being
supported by a user.
Appeal No. 96-1904
Application 08/164,854

12
A review of the applied teachings indicates to us
that, in particular, the noted limitation in claim 1 is not
fairly readable thereon. McCall teaches a split keyboard
(Figure 1) supported in use on a stand S. The splittable
keyboard of Lahr (Figure 3) is supported in use upon a track
40. The left and right keypads of Rader (Figures 1 and 2) are
indicated to be supported in use on a desktop or on the
armrests of a chair. Goldstein reveals a keyboard divided into
segments that is
supported on a desk. These teachings simply do not teach a
handheld or user held computer keyboard that is operated
“independently of supporting surfaces,” as claimed. Thus,
claim 1 is not anticipated by these respective prior art
teachings.
We turn now to claim 20. This claim broadly recites
a keyboard having keys (at least two keys) that serve a
multiple purpose as “alphabetic keys” and “numeric keys.”
Appeal No. 96-1904
Application 08/164,854

13
The broad language of claim 20 is anticipated by
conventional keys of a typical keyboard, as represented by the
applied references. For example, the computer keyboard of
Rader (column 1, line 7, through column 2, line 29) has
conventional
keys, i.e., a number of keys, which serve a multiple purpose
as alphabetic keys and numeric keys. Thus, like appellant’s
multiple purpose keys, e.g., alphabetic key “P” for the
purpose of denoting a “P” and numeric key “ O” for the3
purpose of denoting a “3,” typical keyboards such as that of
Rader (Figure 3) like- wise include keys which serve a
multiple purpose, i.e., an alphabetic key “P” for the purpose
of denoting a “P” and a numeric key “3” for the purpose of
denoting a “3.” Accordingly, broad claim 20 is appropriately
rejected under 35 U.S.C. § 102(b).
The argument presented by appellant relative to
claim 20 (brief, pages 10 and 11) is not convincing. Simply
stated, it is apparent to us that appellant has not
Appeal No. 96-1904
Application 08/164,854

14
appreciated the breadth of claim 20 and the readability
thereof upon the applied prior art.
The obviousness rejections
At the outset we note that an obviousness question
cannot be approached on the basis that an artisan having
ordinary skill would have known only what they read in
references, because such artisan must be presumed to know
something about the art apart from what the references
disclose. See In re Jacoby,
309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962). Further, a
conclusion of obviousness may be made from common knowledge
and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular
reference. See In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969).
With the above in mind, we understand from the
“BACKGROUND OF THE INVENTION” section of appellant’s
Appeal No. 96-1904
Application 08/164,854

We recognize that known computer keyboards reflect the8
longstanding practice of using a single key for multi-
functions or multi-purposes, which practice effects a smaller
keyboard size as compared to the larger keyboard size that
would be required if the keyboard had one separate key for
each specific function. For example, it is well known in the
art that rather than includ- ing separate keys for upper and
lower case letters, a single key can represent both, with the
shift key selecting the caps letter form over the lower case
letter form. Further, it is well known to continuously switch
the entire group of lower case letters to the caps form by
including a caps lock key. Similarly, the NumLock key can
continuously and alternatively switch the group of multi-
purpose or multi-function numeric/arrow and
numeric/directional word function keys between their numeric
function and their directional function. Thus, the practice
of joining functions into multi-function or multi-purpose keys
is seen to be longstanding and well known to those having
ordinary skill in the keyboard art.
15
disclosure that, at the time of the present invention,
computer keyboards included a large number of additional keys
required to operate computers, e.g., function keys, which,
according to appellant, have made computer keyboards large and
bulky.8
The rejection of claims 3 through 9, 11, 12, 14, 15
17, 18, 21, and 22
We reverse the rejection of claims 3 through 7 under
35 U.S.C. § 103.
Appeal No. 96-1904
Application 08/164,854

16
These claims depend from claim 1, drawn to a
segmented computer keyboard, and thereby include the
recitation that the segmented keyboard may be operated
“independently of supporting surfaces.” Our review of the
applied references indicates to us
that the applied prior art would not have been suggestive of
such a segmented computer keyboard that operates
“independently of supporting surfaces.”
We affirm the rejection of claims 8, 9, 11, 12, 14,
15, 17, 18, and 21.
Prior to addressing the applied prior art, this
panel of the board notes that we have fully considered and
comprehend the content of each of these specified claims.
The respective patents to McCall, Lahr, Rader, and
Goldstein are viewed as reflecting keyboards with typical
keys.
Appeal No. 96-1904
Application 08/164,854

The applied prior art is seen to be akin to the known9
keyboards addressed by appellant in the “BACKGROUND OF THE
INVENTION” section of the specification as to typical keys and
functions.
17
For example, we focus upon the Rader teaching as
representative of a segmented computer keyboard (Figure 1 and
Figure 2) that includes the conventional QWERTY arrangement
with typical function keys, cursor control keys, etc. (column
1, lines 7 through 23).9
From our perspective, the IBM and Leipzig references
each clearly carry forward, in the computer keyboard art, the
earlier mentioned longstanding practice of relying upon
individual keys, each of which is multi-purpose or multi-
function.
In particular, the IBM reference addresses a
handheld computer keyboard that includes 12 keys (Figure 1),
inclusive of 2 mode selection keys, and a space-cursor bar
(Figure 3). Each of the keys, other than the mode keys,
encode three functions or
Appeal No. 96-1904
Application 08/164,854

18
characters for each of the modes in which the keyboard may be
operated. One mode selection key affords a choice between
upper
case and lower case modes for alphabetic characters, and the
other can select the edit/PF (programmable function) mode or
special/numeric character mode. As seen in Figure 1, a single
key performs alphabetic and numeric functions.
The Leipzig reference teaches a keyboard with 13
keys, as shown in the sole figure, wherein a single key
performs alphabetic and numeric functions. Three tables
reveal how each of nine keys incorporates a large number of
purposes and functions.
Appeal No. 96-1904
Application 08/164,854

The test for obviousness is what the combined teachings10
of references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
19
In applying the test for obviousness, we reach the10
conclusion that it would have been obvious to one having
ordinary skill in the art, from a combined assessment of the
applied prior art, to modify the keys of a typical computer
keyboard, e.g., the
keyboard of Rader, by combining the already known functions of
single keys, e.g., alphabet keys, with the known function of
other keys, e.g., arrow keys or function keys, to further
effect additional multi-purpose or multi-function keys. From
our standpoint, the incentive on the part of one having
ordinary
skill in the art for making this modification would have
simply been to gain the art-recognized and expected advantage
thereof, i.e., fewer keys on the keyboard, as clearly
disclosed by either the IBM reference or Leipzig. For this
reason, we determine that the subject matter of each of claims
Appeal No. 96-1904
Application 08/164,854

20
8, 9, 11, 12, 14, 15, 17, 18, and 21 is unpatentable under 35
U.S.C. § 103.
While we fully appreciate appellant’s point of view
as to the patentability of the claims 8, 9, 11, 12, 14, 15,
17, 18, and 21 as expressed in the brief (pages 11 through
15), this
panel of the board is not persuaded thereby. We are aware of
appellant’s assessment of the respective teachings of the IBM
reference and Leipzig as not exhibiting a standard arrangement
of keys and numbers. Notwithstanding appellant’s perception
of these latter teachings, the evidence as a whole clearly
informs
us that the content of appellant’s claims would have been
suggested to one having ordinary skill in the art.
We reverse the rejection of claim 22 under 35 U.S.C.
§ 103.
Appeal No. 96-1904
Application 08/164,854

21
Akin to the subject matter of claim 1, claim 22
addresses a segmented computer keyboard that “may be operated
without resting the keyboard on a surface.”
As was the case with our determination relative to
claims 1 and 3 through 7, supra, we conclude that the content
of claim 22 is not taught and would not have been suggested by
the applied teachings. The evidence relied upon simply does
not suggest a segmented computer keyboard that may be operated
without resting the keyboard on a surface.
The rejection of claims 10, 13, 16, and 19
We affirm this rejection of appellant’s claims under
35 U.S.C. § 103.
These dependent claims set forth the additional
feature of the generation of a tone to alert an operator when
any keys other than certain specified keys are operated.
Appeal No. 96-1904
Application 08/164,854

22
The examiner applies the respective teachings of
Louis and Hagelstein which reflect the use of audible sounds
and tones
relative to keyboard operation. In particular, Hagelstein
teaches the use of a sound (wrong musical note) when a wrong
letter is typed. This latter disclosure is somewhat akin to
the typical and common circumstance with known computers
whereby a sound is generated indicating to an operator that an
action cannot be taken while another action is pending and
therefore required to be taken.
Considering the overall knowledge and level of skill
in the art at the time of appellant’s invention, it is
apparent to us that generating an appropriate tone in the
modified keyboard as discussed in the affirmed rejection of
claims 8, 9, 11, 12, 14, 15, 17, 18, and 21 would have been
obvious to one having ordinary skill in the computer keyboard
art. As we see it, the incentive on the part of one having
ordinary skill in the art for including the feature of tone
Appeal No. 96-1904
Application 08/164,854

23
generation would have simply been to gain the expected and
known advantage of informing or alerting the operator.
As to the argument advanced by appellant in the
matter of the rejection of claims 10, 13, 16, and 19, we do
not find ourselves persuaded thereby. Appellant’s focus upon
the specific teachings of each of Louis and Hagelstein fails
to take into
account what the entirety of their teachings together would
have
suggested to one having ordinary skill in the keyboard. With
that perspective, we have concluded that the subject matter of
claims 10, 13, 16, and 19 would have been obvious.

NEW GROUND OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel
of the board introduces the following new ground of rejection.
Appeal No. 96-1904
Application 08/164,854

24
Claim 22 is rejected under 35 U.S.C. § 112, first
paragraph, as being based upon an underlying original
disclosure which lacks descriptive support for the invention
now claimed.
For purposes of brevity, we simply incorporate
herein, in its entirety, our earlier discussion, supra,
relating to the lack of descriptive support for claim 1 (35
U.S.C. § 112, first paragraph).
A review of appellant’s original disclosure reveals
to this panel of the board a lack of support therein for the
segmented computer keyboard of claim 22 which requires, inter
alia, that it “may be operated without resting the keyboard on
a surface.” Accordingly, claim 22 is appropriately rejected
under 35 U.S.C. § 112, first paragraph.
In summary, this panel of the board has:
Appeal No. 96-1904
Application 08/164,854

25
affirmed the rejection of claims 1 and 3 through 8
under 35 U.S.C. § 112, first paragraph;
reversed the rejection of claims 20 and 21 under
35 U.S.C. § 112, second paragraph;
reversed the rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by each of McCall, Lahr,
Rader, and Goldstein, but affirmed the rejection of claim 20
on the same ground;
reversed the rejection of claims 3 through 7 under
35 U.S.C. § 103 as being unpatentable over McCall, Lahr,
Rader,
and Goldstein in view of the IBM reference and Leipzig,
affirmed the rejection of claims 8, 9, 11, 12, 14, 15, 17, 18,
and 21 on
Appeal No. 96-1904
Application 08/164,854

26
the same ground, and reversed the rejection of claim 22 on the
same ground; and
affirmed the rejection of claims 10, 13, 16, and 19
under 35 U.S.C. § 103 as being unpatentable over McCall, Lahr,
Rader, and Goldstein in view of the IBM reference, Leipzig,
Louis, and Hagelstein.
Additionally, we have introduced a new rejection of
claim 22 pursuant to our authority under 37 CFR § 1.196(b).
The decision of the examiner is affirmed-in-part.
In addition to affirming the examiner’s rejection
of one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122
Appeal No. 96-1904
Application 08/164,854

27
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date
of the original decision. . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Appeal No. 96-1904
Application 08/164,854

28
Should the appellant elect to prosecute further
before the Primary Examiner pursuant to 37 CFR § 1.196(b)(1),
in order to preserve the right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the
exami-ner and this does not result in allowance of the
application, abandonment or a second appeal, this case should
be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any
timely request for rehearing thereof.
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a).
Appeal No. 96-1904
Application 08/164,854

29
AFFIRMED-IN-PART
37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Nelson A. Blish
3840 East Avenue
Rochester, NY 14618