Ex Parte Crockett et al

Patent Trial and Appeal Board

Aug 13, 2014

11960559 (P.T.A.B. Aug. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TIMOTHY W. CROCKETT and CHARLES R. KIRK
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Appeal 2012-003421
Application 11/960,559
Technology Center 2600
____________________

Before DEBORAH KATZ, MICHAEL J. STRAUSS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to emulating a keyboard on a touch screen
monitor of a computer system. Abstract.
Claim 1, reproduced below, is representative of the claimed subject
matter (disputed limitations emphasized):
A method of emulating a keyboard on a touch screen
monitor of a computer system, the method comprising:
displaying on the touch screen monitor through an on-
screen display (‘OSD’) module of the touch screen monitor a
merged image comprising a graphics display image from a
video adapter of the computer system and a keyboard image;
receiving, by a touch screen module, an input on the
merged image displayed on the touch screen monitor;
determining, by the touch screen module, whether the
input is a keyboard keystroke;
if the input is a keyboard keystroke:
converting, by the touch screen module, the input
to a keyboard keystroke in a native keyboard format; and
sending, by the touch screen module, the converted
keyboard keystroke in the native keyboard format to a
keyboard input adapter of the computer system.

App. Br. 12, Claims App’x. (emphasis added).

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ISSUES ON APPEAL
A. Whether the Examiner erred in rejecting claims 13–18 under
35 U.S.C. § 101 as directed to non-statutory subject matter.

B. Whether the Examiner erred in rejecting claims 1–18 under 35 U.S.C.
§103(a) as unpatentable in view of Skinner1 and Hisano.2

1. Whether the Examiner erred in finding Hisano’s code-
converted touch screen input teaches a touch screen input
converted to a keystroke in a native keyboard format.

2. Whether the Examiner erred in finding Hisano’s sending the
code-converted touch screen input to an interface switching
means or a communications module teaches sending a
keystroke in a native keyboard format to a keyboard input
adapter.

ANALYSIS
Appellants disclose a computer system that includes a touchscreen
monitor having a touchscreen module that emulates a virtual keyboard.
Spec. 7:13–15. The touchscreen module can determine whether an input
touch on the touchscreen monitor is a keystroke by determining, from a table
that maps location coordinates to keys, whether a coordinate of the input
touch is associated with a key on the virtual keyboard. Id. at 14:11–18. If
the input touch is a keystroke, the touchscreen module represents the input
touch as a keystroke in a native keyboard format, where a native keyboard
format is “a format of data transmitted from typical hardware keyboards,”
including by way of example, PS/2 scan codes and USB usage codes. Id. at
8:1–5, 14:20–25. Appellants thereby distinguish data sent in a native

1 U.S. Patent No. 6,661,920 B1, issued on Dec. 9, 2003.
2 U.S. Patent Pub. No. 2006/0034043 A1, published on Feb. 16, 2006.
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keyboard format from data in the format typically sent from a touchscreen
monitor, i.e., input touch coordinates. Id. at 5:16–22, 8:5–8.
Appellants’ touchscreen module then sends the keystroke, encoded in
the native keyboard format, to a keyboard input adapter of the computer
system. Spec. 14:29–31. A keyboard input adapter is “any I/O adapter
capable of connecting a keyboard to a computer system,” including a PS/2
adapter and a USB host controller. Id. at 8:12–20. Thus, for example, the
touchscreen module can send the keystroke in a native keyboard format to a
keyboard input adapter by sending a USB usage code to a USB host
controller, or by sending a PS/2 scan code to a PS/2 adapter. Id. at 14:31–
15:8.
Hisano discloses an electronic device, such as a notebook PC, having
a touchscreen monitor on which a virtual keyboard is displayed. Hisano ¶¶
38, 42, Fig. 1. When a location on the touchscreen monitor that corresponds
to a key on the virtual keyboard is touched, the location “is replaced
(emulated) with information such as codes, etc. to correspond to the
concerned key of the mechanical keyboard, and then the replaced
information are [sic] transmitted to the operating system.” Id. at ¶ 42. More
specifically, the location is code-converted into a signal that corresponds to
the key on the keyboard and that can be handled by the operating system,
and this code-converted signal is sent to an interface switching means. Id. at
¶ 50. Hisano discloses that the interface switching means can be a
component of the operating system, additional software inserted between the
operating system and the keyboard, or a component of the electronic
device’s BIOS or Basic Input Output System. Id. at ¶ 55. Hisano further
discloses that the electronic device includes a communication module for
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controlling the transmission of information into and out of the electronic
device, including by way of a USB port. Id. at ¶ 69.

A. WHETHER CLAIMS 13–18 ARE UNPATENTABLE UNDER
35 U.S.C. § 101 AS DIRECTED TO NON-STATUTORY SUBJECT
MATTER.

Appellants argue for the patentability of claims 13–18 under
35 U.S.C. § 101 based solely on the patentability of claim 13. App. Br. 5–6.
We therefore determine the patentability of claims 13–18 based on the
patentability of claim 13 alone. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
The Examiner rejected claim 13 as directed to non-statutory subject
matter, suggesting the claim be amended to recite a computer readable
storage medium comprising a computer program. Final Office Action, 2.
Appellants appealed, arguing that claim 13 is patentable because it recites a
computer program product, which is a statutory article of manufacture. App.
Br. 5–6. The Examiner clarified the rejection, finding claim 13 unpatentable
for reciting a computer readable medium, which the Examiner found to be so
broadly described in the Specification that it includes transitory as well as
non-transitory computer readable media. Ans. 4, 13. Appellants failed to
reply to the Examiner’s Answer in the time period provided for reply. 37
C.F.R. § 41.41(a). Therefore, in the absence of substantive rebuttal
sufficient to persuade us that the disputed claims exclude transitory media,
we affirm the Examiner’s rejection of claims 13–18 under 35 U.S.C. § 101.
Id. at § 41.37(c)(iv).
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B. WHETHER CLAIMS 1–18 ARE UNPATENTABLE UNDER
35 U.S.C. § 103(A) IN VIEW OF SKINNER AND HISANO.

Appellants collectively argue for the patentability of independent
claims 1, 7, and 13. App. Br. 10. Dependent claims 2–6, 8–12, and 14–18
are not separately argued. We find claim 1 to be a representative claim, and
determine the patentability of claims 1–18 based on the patentability of
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Appellants argue that the Examiner has failed to establish a prima
facie case that claim 1 is unpatentable in view of Hisano and Skinner
because the combination fails to teach or suggest each element recited in
claim 1.
1. WHETHER HISANO’S CODE-CONVERTED TOUCH
SCREEN INPUT IS IN A NATIVE KEYBOARD FORMAT.

Appellants first argue that the combination of Hisano and Skinner
fails to disclose converting a touchscreen input to a keyboard keystroke in a
native keyboard format. App. Br. 8–9. The Examiner finds Hisano
discloses this limitation in paragraphs 42 and 50. We agree with the
Examiner.
The Specification broadly defines a “native keyboard format” as “a
format of data transmitted from typical hardware keyboards,” and gives as
examples only, PS/2 scan codes and USB usage codes. Spec. 8:1–5. The
Specification indicates that data in “native keyboard format” is distinct from
data in the format typically transmitted from touchscreen devices, i.e., the
coordinates of the input touch. Id. at 5–8. The Board construes claims to
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have their broadest reasonable interpretation that is consistent with the
specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We
therefore interpret “converting, by [a] touch screen module, [a touchscreen]
input to a keyboard keystroke in a native keyboard format” to mean using a
touchscreen module to convert touchscreen input information into a data
format that is transmitted from typical hardware keyboards.
Hisano teaches that when a user touches a touchscreen device in a
location that corresponds to a key on a virtually displayed keyboard, the
touched location “is replaced (emulated) with information such as codes, etc.
to correspond to the concerned key of the mechanical keyboard.” Hisano
¶ 42. Likewise, Hisano discloses that when a user touches such a virtually
displayed key, a “converting means 300 converts (code-converts) the
information being input from the [touchscreen] input device 201 into the
signal that is output when one key of the existing keyboard is pressed.” Id.
at ¶ 50. The Examiner finds that these passages:
[C]learly show[] how Hisano takes the input received from a
user’s touch of the virtual keyboard on the touch screen and
converts the touch data into a code that replicates the code
which would have been received if the user had instead actuated
the same key on an actual hardware keyboard.

Ans. 14. We agree. Therefore, we find Hisano’s converting means
discloses “converting, by the touch screen module, the input to a keyboard
keystroke in a native keyboard format,” as recited in claim 1.
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2. WHETHER HISANO’S INTERFACE SWITCHING MEANS
OR COMMUNICATIONS MODULE IS A KEYBOARD
INPUT ADAPTER.

Appellants next argue that the combination of Hisano and Skinner
fails to disclose sending the keystroke in a native keyboard format to a
keyboard input adapter. App. Br. 9. In doing so, Appellants first argue that
the Specification defines a “keyboard input adapter” to be computer
hardware on page 8, lines 12–14. App. Br. 9. The Examiner finds the
Specification is not clear on this definition. Ans. 15. We agree with the
Examiner, and are not persuaded by Appellants’ argument.
In the passage cited by Appellants, the Specification states that “[a]
keyboard input adapter may be implemented as any I/O3 adapter capable of
connecting a keyboard to a computer system.” Spec. 8:12–14 (emphasis
added.) We do not find this passage to either define a keyboard input
adapter, or to limit keyboard input adapters to computer hardware. Rather,
the passage broadly discloses that a keyboard input adapter can be any I/O
adapter that connects a keyboard to a computer, presumably including
hardware, software, or firmware I/O adapters. We find this interpretation
supported by other portions of the Specification. For example, the
Specification identifies USB host controllers as examples of keyboard input
adapters, and discloses that USB host controllers can be “implemented as a
combination of hardware, firmware, or software.” Id. at 8:17–20, 9:3–7.
We therefore interpret “sending, by the touch screen module, the converted
keyboard keystroke in the native keyboard format to a keyboard input
adapter of the computer system” to mean using the touchscreen module to

3 Input/Output
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send the converted keyboard keystroke to any I/O adapter that is capable of
connecting a keyboard to a computer system, regardless of whether the I/O
adapter is implemented in hardware, software, or firmware. In re Morris,
127 F.3d at 1054.
Next, Appellants argue that since Hisano’s communications module
and interface switching means are all-software implementations, Hisano
cannot disclose sending a keystroke converted to a native keyboard format to
a keyboard input adapter. App. Br. 8–9. The Examiner finds the claims do
not require a hardware-only keyboard input adapter, and finds Hisano’s
communications module 700e teaches this limitation. Ans. 14–15. In
particular, the Examiner finds that paragraph 60 of Hisano:
[T]eaches that the communication module 700e transmits the
codes, which were previously generated based on the user’s
input as translated into a native keyboard format, out of the
electronic device and receives other data into the electronic
device. The communication module can be used to control, for
example, a USB port. Appellant has stated in the Appeal Brief
as well as in the specification that the keyboard can have a USB
type keyboard connection (see page 8, lines 14–20).
Ans. 14–15. We agree with the Examiner.
As noted above, we are not persuaded by Appellants’ argument that
claim 1 requires a hardware-only implementation of a keyboard input
adapter, and do not construe claim 1 so narrowly. We find paragraph 69 of
Hisano teaches an all software implementation of his invention (Third
System Configuration) in which a communications module 700e controls a
USB port, and “transmits the information converted by the converting
module 700b to the outside of the electronic device” through the USB port.
Hisano ¶ 69. We find Hisano’s converting module 700b performs a similar
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function as Hisano’s converting means 300, which in one implementation,
code-converts a location on a touchscreen device on which a virtual
keyboard is displayed to a signal that is output when a key of the keyboard is
pressed. Id. at ¶¶ 50, 67. Thus, we find paragraph 69 of Hisano teaches
using communications module 700e to send a code-converted signal (i.e., a
keystroke in a native keyboard format) received from converting means
700b through a USB port to a USB host adapter (i.e., a keyboard input
adapter). Id. at ¶¶ 50, 67, 69.
In addition, we find Hisano’s interface switching means can itself be a
keyboard input adapter. Appellants argue that Hisano’s interface switching
means cannot be a keyboard input adapter because it is an all-software
implementation, and the keyboard input adapter must be a hardware
implementation. We disagree.
As explained above, we do not construe claim 1 to require a
hardware-only implementation of a keyboard input adapter. Moreover, we
find Hisano teaches the interface switching means can be implemented in
either hardware, software, or firmware. For example, Hisano teaches that
the “emulation function of the mechanical keyboard may be installed into an
electronic circuit . . . or may be implemented by the software such as
firmware, or the like.” Hisano ¶ 42. Similarly, Hisano teaches the Third
System Configuration, in which the interface switching means is
implemented as software module 700a, is “the case where most of the
hardwares [sic] in the electronic device 1 such as the converting means 300,
the interface switching means 401, 501, 601, etc. are implemented by the
software.” Id. at ¶¶ 65–66. Therefore Hisano teaches or suggests that the
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converting and interface switching means may be implemented either in
hardware or, as in the Third System Configuration, in software.
Furthermore, Hisano teaches the input switching means can be a part
of the operating system, software inserted between the keyboard and the
operating system, or incorporated into BIOS. Hisano ¶ 55. A person of
ordinary skill in the art at the time of Appellants’ invention would have
understood BIOS to be:
An acronym from Basic Input Output System pronounced
"BYE-ose." It is software that generally resides in a ROM (or
PROM) and supports the transfer of information between
hardware elements or subelements of a computer. The BIOS
provides the primitive control of the devices, such as the
keyboard, hard disk drive, and monitor.

Frank Hargrave, Hargrave’s Communications Dictionary 55 (2001).
Likewise, a person of ordinary skill in the art at the time would have known
that another term for software inserted between a keyboard and an operating
system is a device driver. For example, Hargrave defines a device driver as
“[a] software routine that directly controls the operation and data throughput
of a piece of hardware (a device). The device driver enables other programs
to use the device via standardized commands.” Id. Consequently, we find
the Examiner’s rejection is further supported by paragraphs 50 and 55 of
Hisano, which teaches transmitting a code-converted signal from a
touchscreen device displaying a virtual keyboard (i.e., a keystroke in a
native keyboard format) to an interface switching means implemented in the
form of a device driver or a BIOS (keyboard input adapter).

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CONCLUSIONS
In view of the foregoing, we conclude:
1. The Examiner did not err in finding Hisano’s code conversion
of a touchscreen input teaches or suggests converting a touch
screen input to a keyboard keystroke in a native keyboard
format as recited in claim 1.
2. The Examiner did not err in finding Hisano’s communication
module 700e sending information through a USB port it
controls teaches or suggests sending a converted keyboard
keystroke in a native keyboard format to a keyboard input
adapter as recited in claim 1.
3. The Examiner did not err in rejecting claims 1–18 under
35 U.S.C. § 103(a) over Hisano and Skinner.
4. The Examiner did not err in rejecting claims 13–18 under
35 U.S.C. § 101.

DECISION
The Examiner’s rejections of claims 1–18 under 35 U.S.C. § 103(a) is
affirmed. The Examiner’s rejections of claims 13–18 under 35 U.S.C. § 101
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) (2009).

AFFIRMED

cdc

Notice of References Cited

Application/Control No.

11/960,559
Applicant(s)/Patent Under
Reexamination
Timothy W. Crockett et al.
Examiner

Ilana Spar
Art Unit

2600

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Frank Hargrave, Hargrave’s Communications Dictionary 55 (2001).

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*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16