Ex Parte Cepulis

Board of Patent Appeals and Interferences

Jan 19, 2010

10374011 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DARREN J. CEPULIS
____________

Appeal 2009-004157
Application 10/374,011
Technology Center 2100
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Decided: January 19, 2010
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Before JAMES D. THOMAS, JEAN R. HOMERE,
and STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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INVENTION
A system and method provide the ability to receive an input signal
from one of multiple interface devices and, based upon determining from
which user interface device the signal was received, select one of a plurality
of user interfaces. (Spec. 11, Abstract.)

REPRESENTATIVE CLAIM
Below is reproduced independent claim 1:
1. A method usable in a system being controllable by a text terminal
and a graphics display, comprising:
receiving an input signal at a first system interface from said text
terminal or at a second system interface from a keyboard associated with
said graphics display, said system comprising both the first and second
system interfaces;
determining from which of said first or second system interfaces said
input signal was received; and
selecting a command line interface or a graphics interface based on
determining from which of said first or second system interfaces the
input signal was received.

PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
unpatentability:
Edwards US 4,737,906 Apr. 12, 1988
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Sun US 6,643,721 B1 Nov. 4, 2003
(filed Mar. 22, 2000)

All claims on appeal, claims 1-15, stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness in a first stated rejection, the Examiner
relies upon Edwards in view of Sun as to claims 1-4, 6, 7, and 9-15. To
reach dependent claims 5 and 8 in a second stated rejection, the Examiner
more particularly relies upon the admitted prior art of Edwards in addition to
the initial combination of Edwards and Sun.

Claim Groupings
Based upon Appellant’s arguments in the principal Brief on appeal,
Appellant argues only features of independent claim 1 as representative of
the subject matter of independent claims 1, 6, 12, and 14 in the first stated
rejection. As to the second stated rejection, the Appellant relies for
patentability upon the arguments with respect to claim 1. No dependent
claim is argued.

ISSUE
Has Appellant shown that the Examiner erred in concluding that
Edwards’ and Sun’s collective teachings would have rendered obvious to
one of ordinary skilled in the art the subject matter of representative
independent claim 1 on appeal?

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FINDINGS OF FACT (FF)
1. Prior art Figure 1 of Edwards illustrates two separate terminals
or devices (one focusing on graphics presentation and the other focusing on
alphanumeric data presentation) along with separate control units for each of
them that are commonly fed by an I/O channel. Figure 2 shows further
developments from a historical perspective in the art and Figure 3 illustrates
Edwards’ contribution in the art in a conceptualized manner. Consistent
with the showing in prior art Figure 1, Edwards discusses the prior art
approaches at columns 1 and 2. The associated discussion at these locations
emphasize that a non illustrated channel controller controls both display
devices’ control units illustrated in Figure 1. For our purposes as well as for
the actual contribution of Edwards in the art, the teachings are silent with
respect to receiving as control inputs any inputs derived from the respective
attached input output devices themselves.
2. Although Sun’s teachings focus on the ability of a common
user interface, the significance of the teachings in this reference is illustrated
in both admitted prior art Figures 1 and Sun’s contribution to the art
generalized in Figure 2. Both Figures show plural input devices which have
selective inputs to respective device drivers in Figure 1 and separate
mapping functions 54, 56, and 58 in Figure 2. Both Figures illustrate
common output control functionalities within the GUI 34 in Figure 1 and the
adaptable user interface 62 that is further illustrated in Figure 4, both to
perform a functionality of determining which of the user input devices is
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actually inputting information and to thereby select their respective control
functionality. In a generalized manner, Figure 8 illustrates a logical flow
chart approach to determining and selecting. The overall functionality of
Sun is to provide a common type of display presentation to a user using
translatable input signals from disparate input devices.

PRINCIPLES OF LAW
Obviousness
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. KSR, 550 U.S. at 415 (citing Graham v. John Deere Co., 383 U.S.
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1, 12 (1966)). The Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 416.
We must determine whether or not the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
See KSR, 550 U.S. at 406. Obviousness determination is not the result of a
rigid formula, and we will consider the facts of a case and the common sense
of those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is
rather what the combined teachings of the references would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

Teaching Away
“[T]he prior art’s mere disclosure of more than one alternative does
not constitute a teaching away from any of these alternative because such
disclosure does not criticize, discredit, or otherwise discourage the solution
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claimed …” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Thus, we
do not find Appellant’s arguments to be persuasive.

ANALYSIS
In considering the issue before us, it appears that both the Examiner
and Appellant have given an incomplete consideration to the actual
teachings of Edwards and Sun. Additionally, a significant claimed feature
common among independent claims 1, 6, 12, and 14 is that methods and
system elements receive input signals at their respective interfaces from
disparate input devices, from which a determination is made to select one or
the other, thereupon yielding a selection functionality.
Finding of fact 1 illustrates the pertinent teachings in Edwards, the
limit of which is that the substance of the reference as well as the noted
admitted prior art teachings consider controlling inputs to controlling
structures only from the input/output channel (controller) itself and are
substantially silent to considering any inputs from the respectively different
input devices/functionalities. From an ordinarily skilled artisan’s
perspective, and consistent with the above noted case law, the deficiencies
the artisan would have understood from Edwards’ noted teachings are met
and overcome by the noted teachings in Sun. The substance of the teachings
in this reference is to focus upon selectability based upon the input signals
from the respective devices themselves, which approach is consistent with
the disclosed and claimed invention. Therefore, we find that it would have
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been obvious for an artisan to have combined the respective teachings of
Edwards and Sun to yield an enhanced, combined system that is not only
responsive to control signals from an input channel but equally responsive to
control signals from the respective input devices themselves as well, so as to
select their appropriate functionality from either source.
With this background in mind, we disagree with Appellant’s
characterization in the Brief and Reply Brief that Edwards teaches away
from Sun and that Sun, when combined with Edwards. Similarly, we
disagree with Appellant’s argument that the proffered combination would
have rendered unsatisfactory the intended purposes of Edwards as well as
changed Edwards’ principles of operation. Although it is true that using
Sun’s teachings would have changed the principles of operation of Edwards,
it would have been done in an obvious, expanding manner, as noted in the
last paragraph in this Opinion, and therefore would not have rendered
Edwards unsatisfactory for its own intended purposes. Moreover, the above-
noted case law does indicate that alternative teachings in a given reference
do not constitute a teaching away from following any of the alternatives. It
also appears to us that an artisan may well have considered Sun to have
rendered obvious the subject matter of representative independent claim 1 on
appeal without the additional teachings of Edwards.

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CONCLUSON AND DECISION
Appellant has not shown that the Examiner erred in concluding that
the combination of teachings of Edwards and Sun would have rendered
obvious to one of ordinary skilled in the art the subject matter of
representative independent claim 1 on appeal. Therefore, the Examiner’s
separately stated rejections under 35 U.S.C. § 103 of all claims on appeal,
claims 1-15, are affirmed. All claims on appeal are unpatentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv).

AFFIRMED

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