Ex Parte Chen

Patent Trial and Appeal Board

Oct 28, 2014

11058294 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES CHEN
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Appeal 2012-004165
Application 11/058,294
Technology Center 2600
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11–25. Claims 1–10 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the invention “relates to an electricity saving
device for a user interface terminal device . . . by pressing a retractable
keyboard of a cellular phone back to touch a switch” (Spec. 1, ll. 5–8).

B. ILLUSTRATIVE CLAIM
Claim 11 is exemplary:
11. A cellular phone, comprising:
a body;
a net communicator component carried by the body, wherein the net
communicator component is configured to communicate with a cellular
phone base station; and
a user interface component carried by the body, wherein the user
interface component includes (a) a wireless module configured to
communicate with the net communicator component, and (b) a keyboard
moveable between a first position on the body and a second position on the
body to change the wireless module from a standby mode to an active mode.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kishida et al. US 2002/0045465 A1 Apr. 18, 2002
Roberts US 6,490,351 B1 Dec. 3, 2002

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Dowling et al. US 2003/0050019 A1 Mar. 13, 2003
Karidis et al. US 6,741,455 B2 May 25, 2004
Zanzi WO 01/22694 A1 Mar. 29, 2001
Claims 11–14, 17, and 21–23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kishida, Zanzi, Dowling, and Karidis.
Claims 15, 16, 18–20, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kishida, Zanzi, Dowling, Karidis, and
Roberts.
II. ISSUES
The main issues before us are whether the Examiner has erred in
finding that the combination of Kishida, Zanzi, Dowling, and Karidis
teaches or would have suggested a “cellular phone” comprising a “body” and
a “user interface” that includes a “keyboard moveable between a first
position on the body and a second position on the body to change the
wireless module from a standby mode to an active mode” (claim 11,
emphases added). In particular, the issues turn on whether Kishida’s cellular
telephone in view of the other references teaches or would have suggested a
“body,” and whether Karidis’s folding keyboard directing a transition
between a wake mode and a sleep mode comprises a “moveable” keyboard
that changes the wireless module “from a standby mode to an active mode”
as required in claim 11.
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Kishida
1. Kishida discloses a mobile telephone, wherein Figure 1 is
reproduced below:

Figure 1 shows a mobile telephone 100 which comprises means for
transmission of data and sound signals 101 and a data exchange interface
112 provided on a circuit board (p. 2, ¶ [0024]).
Karidis
2. Karidis discloses a folding keyboard and a keyboard housing
for receiving the keyboard section, wherein the keyboard transmits in
response to a change in the extension state, a state signal to the data
processing system for directing the data processing system to transition
between a wake mode and a sleep mode (Abst.).

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IV. ANALYSIS
Appellant contends “Kishida appears to be silent as to a housing or
body” (App. Br. 10). Appellant merely contends Zanzi and Dowling fail to
cure the deficiencies of Kishida because they fail to disclose “the net
communicator and user interface components” that are “carried by the same
body when the wireless module is in an active mode” (App. Br. 10–11).
Although Appellant concedes “Karidis’s transition between the wake
and sleep modes is in response to the folded or open state of the keyboard,”
Appellant contends “Karidis fails to disclose the features for which it was
cited” (App. Br. 12). In particular, Appellant contends “Karidis’s transition
signal is in response to the relative positions of the folded portions of the
keyboard itself, and not whether the keyboard is extended or retraced from
another structure” (Reply Br. 4).
However, the Examiner finds Kishida’s “referenced circuit board . . .
could be considered to be a housing” and that “there is no substantial
difference between applicant’s ‘housing’ as depicted in figures 3 and 4 and
Kishida’s fig. 1 box 100” (Ans. 8). Nevertheless, the Examiner points out
“mobile telephones have been around since the 1970’s and the examiner is
unaware of any commercially sold mobile telephone that has not included
some form of a housing” (id.). Thus, the Examiner finds “[o]ne of ordinary
skill in the art understand that a mobile telephone requires a housing to be
useable” (id.).
The Examiner also finds “Kishida discloses a net communicator and a
user interface carried by a housing” and points out that Zanzi and Dowling
are not relied upon for such teaching (Ans. 9). The Examiner then finds
“[t]he keyboard of Karidis being . . . extended is clearly analogous to a
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retractable keyboard being in an extended state” wherein the retractable
keyboard “extended out is moved from a first position to a second position”
(Ans. 10). Thus, the Examiner concludes it would have been obvious to
combine Karidis’s teachings “with Kishida as modified by having the
keypad state direct the sleep state of the entire mobile phone including the
wireless modules . . . to save power” (Ans. 6).
We find no error with the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness.
Although Appellant contends Kishida, Zanzi, Dowling, and Karidis
do not disclose the claimed invention (App. Br. 10–12), the rejection was
made under § 103 as being obvious over combination of the references. The
test for obviousness is not what each figure of the references individually
shows but what the combined teachings would have suggested to one of
ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
To determine whether the combination of Kishida, Zanzi, Dowling,
and Karidis discloses or would have suggested the claimed invention, we
give the claims their broadest reasonable interpretation consistent with the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
As an initial matter, we note that claim 11 does not define a “body”
other than the net communicator component and the user interface
component are carried thereon. Although Appellant contends “Kishida
appears to be silent as to a housing or body” (App. Br. 10), claim 11 does
not require that a “body” be a “housing.” In fact, the Specification as
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originally filed is silent as to any mention of “body.”1 Thus, we give “body”
its broadest reasonable interpretation as any material or physical structure
carrying a net communicator component and a user interface component
thereon.
Kishida discloses a mobile telephone comprising transmission means
and a data exchange interface provided on a circuit board (FF 1). In view of
our broad claim interpretation, we find no error with the Examiner’s finding
Kishida’s circuit board with transmission means and a data exchange
interface carried thereon as depicted in Fig. 1 box 100 comprises a “body”
(Ans. 8).
Furthermore, even assuming, arguendo, our reviewing court were to
interpret a “body” as not including Kishida’s circuit board, since the
rejection was made under § 103 as being obvious over Kishida in view of
the other references, we find that Kishida in combination with the other
teachings would at least have suggested to one of ordinary skill in the art
that a cellular phone having a circuit board with transmission component and
a data exchange interface component carried thereon (FF 1) would comprise
a material or physical structure for carrying the components. We agree with
the Examiner’s finding “[o]ne of ordinary skill in the art understand that a
mobile telephone requires a housing to be useable” (Ans. 8). In fact, Karidis
discloses that a housing for receiving the keyboard/user interface component
is well-known (FF 2).

1 In the event of further prosecution, we leave it to the Examiner to
determine whether at least independent claim 1 is unpatentable under 35
U.S.C. § 112, first paragraph, for lack of an enabling disclosure
commensurate with the scope of the claim.
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Thus, we agree with the Examiner that the combined teachings would
at least have suggested the claimed “body” to one of ordinary skill in the art.
Merck, 800 F.2d at 1097. We conclude that it would have been well within
the skill of one skilled in the art to provide a cellular phone comprising such
components with a “body” to carry the components thereon.
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled
artisan is “a person of ordinary creativity, not an automaton.” Id. at 421.
We are not persuaded, and Appellant has presented no persuasive
evidence that providing the components on a “body” was “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Accordingly, we agree with the Examiner’s
finding the combination of Kishida, Zanzi, Dowling, and Karidis teaches or
would have suggested a “cellular phone” comprising a “body” and a “net
communicator component” and “user interface component carried by the
body” as required by claim 11.
Furthermore, Karidis discloses a folding keyboard that transmits in
response to a change in the extension state, a state signal for directing the
data processing system to transition between a wake mode and a sleep mode
(FF 2). Although Appellant contends “Karidis’s transition signal is in
response to the relative positions of the folded portions of the keyboard
itself, and not whether the keyboard is extended or retraced [sic] from
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another structure” (Reply Br. 4), such contention is not commensurate in
scope with the recited language of claim 11. That is, claim 11 does not
recite any such “extended or retracted from another structure” but merely
requires a “first position” and a “second position,” and in fact, the claim
does not even require that the first and second position be different from
each other.
We agree with the Examiner’s finding “[t]he keyboard of Karidis
being . . . extended is clearly analogous to a retractable keyboard being in an
extended state” wherein the retractable keyboard “extended out is moved
from a first position to a second position” (Ans. 10). That is, as Appellant
concedes, Karidis discloses that the keyboard is moveable between folded
positions (Reply Br. 4, FF 2). Thus, we find Karidis in view of the other
references would at least have suggested a “keyboard moveable between a
first position on the body and a second position on the body to change the
wireless module from a standby mode to an active mode” as required by
claim 11.
As to Appellant’s contention that there is no apparent rational reason
to combine the references (App. Br. 14), we are of the view that the
Examiner has provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550
U.S. at 418. In particular, we find no error with the Examiner’s finding that
it would have been obvious to combine the teachings “to save power”
(Ans. 6). We find the articulated rationales to be sufficient to justify the
Examiner’s proffered combinations.
Thus, we find no error in the Examiner’s conclusion that it would
have been obvious to the ordinary skilled artisan to combine the cited
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teachings in the same field of endeavor. The skilled artisan would “be able
to fit the teachings of multiple patents together like pieces of a puzzle” since
the skilled artisan is “a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 420–21.
Again, we are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellant’s invention. Leapfrog, 485 F.3d at 1162.
Although Appellant also contends the applied references teach away
from the claimed features (App. Br. 13), our reviewing court has held “[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)).
Appellant has not identified persuasive support for a direction
divergent from the claimed invention since we do not find that the disclosure
in the combined references that would discourage one skilled in the art from
providing a body to a cellular phone with a net communicator component
and a user interface component carried thereon.
Accordingly, we find Appellant has not shown the Examiner erred in
rejecting claim 11 over Kishida, Zanzi, Dowling, and Karidis.
Appellant does not provide substantive arguments for claims 12–14,
17, and 21–23 separate from those of claim 11 other than repeating the
language of independent claims 17 and 23 (App. Br. 16–17). However, a
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statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. 37 C.F.R.
§ 41.37(c)(vii). Thus, claims 12–14, 17, and 21–23 fall with claim 11.
As for claims 15, 16, 18–20, 24, and 25, Appellant merely contends,
“Roberts nevertheless fails to cure the above-noted deficiencies of Kishida,
Zanzi, Dowling, and Karidis” (App. Br. 17). However, as discussed above,
we find no deficiencies in the Examiner’s reliance of Kishida, Zanzi,
Dowling, and Karidis. Thus, we also affirm the Examiner’s rejection of
claims 15, 16, 18–20, 24, and 25 over Kishida, Zanzi, Dowling, and Karidis
in further view of Robert.
V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 11–25 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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