Ex Parte Colley

Patent Trial and Appeal Board

Jan 23, 2017

12767367 (P.T.A.B. Jan. 23, 2017)

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.
12/767,367 04/26/2010 Ashley Colley 042933/388561 3523
10949 7590 01/25/2017
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEY COLLEY
Appeal 2016-002520
Application 12/767,367
Technology Center 2600
Before JOHN A. EVANS, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—8, 12—17, 25, and 32—36, i.e., all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Nokia Technologies
Oy. App. Br. 2.
Appeal 2016-002520
Application 12/767,367
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “an apparatus,
method, computer program and user interface configured to be responsive to
different types of user input.” Spec. 1:5—8, Abstract.2 An apparatus
according to the invention has a first active state and a second active state
and includes a “user selectable part.” Abstract. “[I]n the first active state
the user selectable part is actuated in response to a first mode of actuation
and in the second active state the user selectable part is not actuated in
response to the first mode of actuation.” Id-
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code;
the at least one memory and the computer program code
are configured to, with the at least one processor, cause the
apparatus to:
determine that the apparatus is in one of a first
active state or a second active state;
provide a user selectable part;
respond to actuation of the user selectable part in
response to a first mode of actuation when the apparatus
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed April 26, 2010; “Final Act.” for the Final Office Action,
mailed December 31, 2014; “App. Br.” for the Appeal Brief, filed August 3,
2015; “Ans.” for the Examiner’s Answer, mailed October 29, 2015; and
“Reply Br.” for the Reply Brief, filed December 29, 2015.
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Application 12/767,367
is in the first active state, and differently respond to
actuation of the user selectable part in response to a
second mode of actuation when the apparatus is in the
second active state; and
configure the apparatus to cause a tactile indication
to be provided with the user selectable part in response to
the first mode of actuation and not in response to the
second mode of actuation.
App. Br. 7 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
Fyke US 2008/0303796 A1 Dec. 11, 2008
Vartanian et al. US 2010/0238114 A1 Sept. 23,2010
(“Vartanian”) (filed Mar. 18,2009)
The Rejections on Appeal
Claims 1—5, 7, 8, 13—17, 25, and 33—36 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Fyke. Final Act. 2—9; Ans. 2.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Fyke and Vartanian. Final Act. 10; Ans. 2.
Claims 12 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fyke. Final Act. 10—11; Ans. 2.
ANALYSIS
We have reviewed the rejections of claims 1—8, 12—17, 25, and 32—36
in light of Appellant’s arguments that the Examiner erred. For the reasons
explained below, we concur with Appellant’s contention that the Examiner
erred in finding that Fyke discloses a “user selectable part” according to
independent claims 1,13, and 25.
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Application 12/767,367
The Rejection of Claims 1—5, 7, 8, 13—17, 25, and
33—36 Under 35 U.S.C. § 102(b) Based on Fyke
“User Selectable Part”
Appellant argues that the Examiner erred in rejecting independent
claims 1,13, and 25 because Fyke “does not teach or suggest that the same
user selectable part is used in both first and second modes of operation with
different functions performed in response to actuation of the same user
selectable part in the first and second modes of operation” according to the
independent claims. App. Br. 5. In particular, Appellant contends that Fyke
differs from the independent claims because a user in Fyke employs
“different combinations of virtual keypads and/or physical keys” for
different modes of operation and “the virtual keypad and the physical keys
[in Fyke] are alternative types of user selectable parts” rather than the same
user selectable part. Id. at 5—6.
Appellant also argues that because Fyke fails to “teach or suggest that
the same user selectable part is used in both first and second modes of
operation with different functions performed in response to actuation of the
same user selectable part in the first and second modes of operation,” Fyke
also fails to “teach or suggest causing a tactile indication to be provided with
the user selectable part in response to the first mode of actuation and not in
response to the second mode of actuation, as also recited by the independent
claims.” App. Br. 6. Appellant contends that a tactile indication in Fyke “is
either always provided for a user selectable element... or is never provided
for a user selectable element” and, therefore, “the tactile indication does not
vary for the same user selectable part depending upon the mode of operation
as recited by the independent claims.” Id.
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Appeal 2016-002520
Application 12/767,367
The Examiner finds that Fyke teaches a wireless handheld device
having a display with a touch screen key arrangement (virtual keys) and a
physical keyboard. Final Act. 2—3 (citing Fyke H 32, 37, 46-48, Fig. 2A);
see Fyke 1131, 47, Fig. 15; see also Ans. 3. The Examiner further finds that
the touch screen key arrangement and the physical keyboard “together form
a user selectable part.” Final Act. 3; see Ans. 3. The Examiner reasons that
in Fyke “a first active state occurs when touch screen buttons are actuated,
and a second active state occurs when physical buttons are actuated.” Ans. 3
(citations omitted); see Final Act. 3.
In response, Appellant asserts that the Examiner employs an
“incorrect and overly broad” interpretation of “user selectable part” that does
not comport with “the manner in which the user selectable part is described
by the present application and, as a result, the manner in which a person of
ordinary skill in the art would interpret a user selectable part in light of the
disclosure provided by the present application.” Reply Br. 1—2; see App.
Br. 5. Appellant also asserts that “the present application distinguishes
between a user selectable part embodied by a touch sensitive display and a
user selectable part embodied by a physical key pad.” Reply Br. 1—2.
We agree with Appellant that the Examiner employs an unreasonably
broad interpretation of “user selectable part.” See In re Abbott Diabetes
Care Inc., 696 F.3d 1142, 1149-50 (Fed. Cir. 2012) (vacating Board
decision due to Board’s unreasonably broad claim interpretation). “[DJuring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Here, the Specification explains that a user input
device “may comprise a keypad or a portion of a touch sensitive display or a
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Application 12/767,367
combination of’ different input components. Spec. 8:26—28. The
Specification also explains that “[t]he user selectable part 63 may comprise
any part of a user input device 13 which may be actuated and in response to
the actuation provide a control signal. . . .” Spec. 13:15—17. The
Specification then explains that a “plurality of user selectable parts 61, 63,
65 may be provided simultaneously” and “may comprise portions of a touch
sensitive display . . . [or] a plurality of keys in a key pad.” Id. 13:17—22.
According to the Specification, a “user selectable part” does not encompass
an entire touch screen key arrangement together with an entire physical
keyboard.
Summary
Based on the record before us, the Examiner has not adequately
explained how the cited portions of Fyke disclose a “user selectable part” as
properly interpreted in independent claims 1,13, and 25. Thus, we do not
sustain the anticipation rejection of these independent claims based on Fyke.
Claims 2—5, 7, 8, 33, and 34 depend from claim 1; claims 14—17
and 35 depend from claim 13; and claim 36 depends from claim 25. For the
reasons discussed above regarding the independent claims, we do not sustain
the anticipation rejection of these dependent claims based on Fyke.
The Rejection of Claims 12 and 32
Under 35 U.S.C. § 103(a) Based on Fyke
Claims 12 and 32 depend from claim 1. For the reasons discussed
above regarding the anticipation rejection of claim 1, we do not sustain the
obviousness rejection of these dependent claims based on Fyke.
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Application 12/767,367
The Rejection of Claim 6 Under 35 U.S.C.
§ 103(a) Based on Fyke and Vartanian
Claim 6 depends from claim 1. On the record before us, the Examiner
has not shown how the additionally cited Vartanian reference overcomes the
deficiency in Fyke with respect to claim 1. Hence, we do not sustain the
obviousness rejection of claim 6 based on Fyke and Vartanian.
DECISION
We reverse the Examiner’s decision to reject claims 1—8, 12—17, 25,
and 32—36.
REVERSED
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