Ex Parte EliasDownload PDFPatent Trial and Appeal BoardDec 5, 201611620424 (P.T.A.B. Dec. 5, 2016) Copy Citation 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. 11/620,424 01/05/2007 John G. Elias 106842010900 (P4549US1) 9237 69753 7590 12/07/2016 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 EXAMINER OKEBATO, SAHLU ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 12/07/2016 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): EOfficeL A @ mofo. com PatentDocket @ mofo. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN G. ELIAS Appeal 2015-004555 Application 11/620,424 Technology Center 2600 Before JOSEPH L. DIXON, TERRENCE W. McMILLIN, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE On Nov. 14, 2016, Appellant filed a Request for Rehearing (hereinafter “Req. Reh’g”) under 37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent Trial and Appeal Board (Board), mailed Sep. 14, 2016.1 In the Decision, we affirmed the Examiner’s Final Rejection of claims 1-7, 9-12, and 14—34. We deny the Request for Rehearing. 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. §41.52(a)(1). Appeal 2015-004555 Application 11/620,424 In their Request, Appellant asserts “[t]he Decision misapprehended the Examiner’s rejection of the claim limitation at issue and thereby overlooked that Appellant properly addressed the proposed rejection, as a whole.” (Req. Reh’g. 2.) The following claim element is at issue: [T]he hand-held electronic device comprising a display element on a first surface of the hand-held electronic device and a touch surface on a second surface of the electronic device, the touch surface including at least one physical representation of a control element. . . . (App. Br. 5.) In the Final Action, the Examiner relied on both Liebenow and Kraus in finding the combination teaches or suggests this claim element: Liebenow discloses a method for operating a hand-held electronic device, the hand- held electronic device comprising a display element on a first surface of the hand-held electronic device (front surface 204 and display 216, fig. 7) and a touch surface on a second surface of the electronic device (back surface 206 and touch sensitive panel 240, fig. 9). . . . * * * Liebenow does not explicitly disclose the touch surface including at least one physical representation of a control element. However, Kraus discloses the touch surface (304, fig. 3) including at least one physical representation of a control element ([0037] and key area 300, rigid frame 314 and keyboard overlay 110, fig. 3d; wherein the keyboard overlay configuration shows in fig. 4). (Final Act. 2—3.) Appellant mischaracterizes the rejection, asserting “the Examiner conceded the Liebenow does not disclose the claim limitation at issue, and relied entirely on Kraus.” (Req. Reh’g. 3.) Significantly, however, the Examiner stated Liebenow “does not explicitly disclose” a physical representation of a control element on its touch surface, and went 2 Appeal 2015-004555 Application 11/620,424 on to rely on both Liebenow and Kraus as teaching or suggesting the claim element at issue. (Final Act. 3.) Therefore, Appellant’s insistence on focusing on the disclosure of Kraus alone is precisely the type of unpersuasive argument counseled against in such authorities as In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art). Appellant further asserts “For the first time in the record, the Board proposes to reject the claim limitation at issue based on a combination of Liebenow and Kraus,” and further characterizes that combination as a “new rejection.” (Req. Reh’g. 3—4.) However, as stated above, the Examiner’s rejection is based on that combination. In addition, Appellant argues: [T]he contribution of Liebenow applied by the Decision (“a touch sensitive panel on the back surface of a digital information appliance”) does not add anything meaningful with respect to the claim limitation at issue. Kraus already discloses, and the Examiner relied on, Kraus’ touch sensor 304 for the touch surf ace. (Final Office Action at 3.) The Board essentially substitutes Liebenow’s touch sensitive panel 240 for Kraus’ touch sensor 304. However, the claimed characteristic of the touch surface (i.e., including a physical representation of a control element), not the source of the touch surface, was the issue underlying Appellant’s arguments. (Req. Reh’g. 4.) To the contrary, the disclosure in both references of a touch sensitive surface, in the context of hand-held electronic device displays, together with the disclosure in Kraus of the keyboard overlay, reasonably supports the Examiner’s finding that “it would have been obvious to one of ordinary skill in the art at the time of the invention was made to use Kraus’s 3 Appeal 2015-004555 Application 11/620,424 keyboard overlay with Liebenow’s input device in order to activate a desire[d] function effectively.” (Final Act. 3; Ans. 3 4.) Appellant repeats the argument, “Kraus’ overlay is separate from, not part of the touch sensor.” (Req. Reh’g. 4; see App. Br. 6—7.) The Examiner properly rejected this argument because, under the broadest reasonable interpretation of “touch surface including at least one physical representation of a control element,” the Kraus touch surface does include the keyboard overlay. (Ans. 3—4.) As the Examiner finds: When the user presses a key area 300, the key area 300 collapses or deforms until the display actuator 306 comes into contact with the touch sensor 304 of the display screen. In the embodiment of FIG. 3c, the display actuator 306 concentrates the pressure of the user’s finger into a small, well defined area on the touch sensor 304. (Ans. 3.) We further note Kraus discloses the overlay is “securely connected” so as to properly engage with the touch surface and to be electrically connected to the device. (Kraus Fig. 4, || 40-41.) Furthermore, we do not agree with Appellant’s assertion that the Examiner improperly “dissected” the claim element at issue. (Req. Reh’g. 5.) Appellant partially quotes from the Final Action: “‘the keyboard overlay represents the input keys as a physical representation of those keys.’” (Id.) However, the complete quotation is: "The argued claimed limitation says ‘the touch surface including at least one physical representation ’ and the keyboard overlay represents the input keys as a physical representation of those keys.” (Final Act. 13 (Emphasis added)). Considering the Examiner’s findings as a whole, we are not persuaded the Examiner erred in construing the pertinent claim language. Nor are we persuaded that any of the “intrinsic or extrinsic evidence,” that Appellant 4 Appeal 2015-004555 Application 11/620,424 refers to, demonstrate Examiner error, or constitute points misapprehended or overlooked by the Board. (Req. Reh’g. 6.) In summary, having fully considered the arguments in the Request for Rehearing, on this record, we are not persuaded that we have misapprehended or overlooked any points raised by Appellant. We find none of Appellant’s arguments are persuasive that our Decision was in error. We have reconsidered our Decision, but decline to grant the relief requested. DECISION In view of the foregoing discussion, we have granted Appellant’s Request to the extent that we have reconsidered the original Decision but have denied it with respect to making any changes to the Decision. REHEARING DENIED 5 Copy with citationCopy as parenthetical citation