Ex Parte ELIAS

Patent Trial and Appeal Board

May 18, 2016

12334320 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/334,320 12/12/2008
69753 7590 05/20/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
John Greer ELIAS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106842024900(P6642US1) 8003
EXAMINER
XAVIER, ANTONIO J
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
EOfficeLA@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 GREER ELIAS
Appeal2014-005861
Application 12/334,320
Technology Center 2600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and
LARRY J. HUME, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-13, 16, and 18-25. Claims 14, 15, and 17 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appellant's invention is an input device (e.g., a keyboard) and method
for providing text and motion input using plural keys and sensors (Figs. 1,
3A---C, and 4; Abs.; claims 1, 10, and 16).
Appeal2014-005861
Application 12/334,320
Exemplary Claim
Independent claim 10 under appeal is exemplary, and reads as
follows:
10. An input device comprising:
multiple keys;
first sensors configured to detect activation of the keys;
and
second sensors configured to track motion across the keys
based on an arbitrary combination of concurrently activated
keys;
wherein the arbitrary combination of the keys is two or
more keys; and
wherein the arbitrary combination of the keys are not
predefined and may be selected from any of the keys.
Examiner's Rejections
(1) The Examiner provisionally rejected claims 1, 10, 16, and 21
under the judicially created doctrine of non-statutory; obviousness-type
double patenting over the combination of Application 12/449 ,3 51 (claim
16), Santilli (US 5,675,361; issued Oct. 7, 1997), and Moon (US
2005/0262882 Al; published Dec. 1, 2005). 1 Final Act. 27-33; Ans. 28-34.
1 Application 12/449,351 (including claim 16 therein) has now matured into
U.S. Patent No. 8,860,693 B2; issued Oct. 14, 2014 (including claims 7, 9,
and 10 therein). Because Appellant fails to present any arguments as to the
obviousness-type double patenting rejection, we sustain this rejection pro
forma.
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Application 12/334,320
(2) The Examiner rejected claims 10, 16, 23, and 24 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Bowen (US
5,707, 160; issued Jan. 13, 1998) and Moon.2 Final Act. 3-8; Ans. 5-9.
(3) The Examiner rejected claims 1-9, 21, 22, and 25 as being
unpatentable under 35 U.S.C. § 103(a) over Bowen, Moon, and Appellant's
Admitted Prior Art (hereinafter, "AAP A") found in paragraphs 2--4 of the
Specification.3 Final Act. 9-20; Ans. 9-21.
( 4) The Examiner rejected dependent claims 11 and 13 as being
unpatentable under 35 U.S.C. § 103(a) over Bowen, Moon, and Official
Notice (taken as to scrolling, panning, and dragging operations). 4 Final Act.
20-22; Ans. 21-23.
(5) The Examiner rejected dependent claims 13 and 18 as being
unpatentable under 35 U.S.C. § 103(a) over Bowen, Moon, and Fyke
2 Appellant argues claims 10, 16, 23, and 24 together as a group, and
presents arguments only with regard to Moon being non-analogous art (App.
Br. 3-5; Reply Br. 2-5). Accordingly, we select claim 10 as representative
for the group of claims 10, 16, 23, and 24 rejected over the combination of
Bowen and Moon, and our analysis will only address claim 10.
3 Appellant relies on the same non-analogous art arguments (as to Moon)
presented as to claims 10, 16, 23, and 24 for the patentability of claims 1-9,
21, 22, and 25 (App. Br. 6; Reply Br. 2-5). Accordingly, the rejection of
claims 1-9, 21, 22, and 25 over Bowen, Moon, and AAP A will stand/fall
with the outcome of the rejection of representative claim 10.
4 With respect to dependent claims 11 and 12, Appellant relies on the
arguments presented as to independent claim 10 from which claims 11 and
12 depend, in addition to asserting that the Official Notice fails to cure the
deficiencies of the base combination of Bowen and Moon (see App. Br. 6).
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Application 12/334,320
(US 2007/0120828 Al; published May 31, 2007). 5 Final Act. 20-22;
Ans. 21-23.
( 6) The Examiner rejected dependent claims 19 and 20 as being
unpatentable under 35 U.S.C. § 103(a) over Bowen, Moon, and Santilli.6
Final Act. 20-22; Ans. 21-23.
Principal Issue on Appeal
Based on Appellant's arguments in the Appeal Brief (App. Br. 3-7)
and the Reply Brief (Reply Br. 2-5), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1-13, 16, and 18-25 as being
obvious under 35 U.S.C. § 103(a) because Moon is non-analogous to
Appellant's invention recited in representative independent claim 10, and are
therefore not properly combinable with Bowen?
ANALYSIS
We have reviewed the Examiner's rejection (Final Act. 3-33;
Ans. 2-7) in light of Appellant's contentions in the Appeal Brief (App.
Br. 3-7) and Reply Brief (Reply Br. 2-5) that the Examiner has erred in
light of the Examiner's response to Appellant's arguments in the Appeal
5 With respect to dependent claims 13 and 18, Appellant relies on the
arguments presented as to independent claims 10 and 16 from which each of
claims 13 and 18 respectively depend, in addition to asserting that Fyke fails
to cure the deficiencies of the base combination of Bowen and Moon (see
App. Br. 6).
6 With respect to dependent claims 19 and 20, Appellant relies on the
arguments presented as to independent claim 16 from which claims 19 and
20 depend, in addition to asserting that Santilli fails to cure the deficiencies
of the base combination of Bowen and Moon (see App. Br. 6).
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Appeal2014-005861
Application 12/334,320
Brief (Ans. 5-34). We disagree with Appellant's conclusions as to
representative claim 10.
With regard to representative claim 10, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the Action from which this
appeal is taken (Final Act. 3-5; Ans. 3---6), and (2) the reasons set forth by
the Examiner in the Examiner's Answer in response to Appellant's Appeal
Brief (see Ans. 34--39). We concur with the conclusions reached by the
Examiner as to representative claim 10, and highlight and address specific
findings and arguments for emphasis as follows.
Analogous Art and Motivation to Combine
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MGA
Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
A reference is considered analogous prior art: ( 1) if the reference is from the
same field of endeavor as the claimed subjected matter, regardless of the
problem addressed, or (2) if "the reference still is reasonably pertinent to the
particular problem with which the inventor is involved," even though the
reference is not within the field of the inventor's endeavor. Bigio, 381 F.3d
at 1325.
The "field of endeavor" test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Bigio, 381 F.3d at 1325-27. It is
necessary to apply "common sense" in "deciding in which fields a person of
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Application 12/334,320
ordinary skill would reasonably be expected to look for a solution to the
problem facing the inventor." Id. at 1326 (internal citations and quotation
marks omitted).
As to the "reasonably pertinent" test: A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem. Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve. If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection. An inventor may well have been motivated to
consider the reference when making his invention. If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it. Clay, 966 F .2d at 659.
In the instant case on appeal, we agree with the Examiner (see
Ans. 34--35) that Appellant's reliance on the Title of the application in
narrowly defining the field of endeavor is improper, especially when the test
for analogous art is drawn on the claimed subject matter of Appellant's
invention (e.g., the subject matter of representative claim 10, which is
simply drawn to an "input device" having "keys"). Here, the subject matter
of claim 10 is not limited to a motion sensitive keyboard (see App. Br. 4--5),
and in fact, is broadly drawn to simply an "input device" for a computing
system (i-f l, Field of the Invention).
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Application 12/334,320
Further, we agree with the Examiner that Moon relates to a user
interface or input device for a computing system (see Ans. 35 citing Moon
i-fi-13, 15, and 25) which is from the same field of endeavor as the claimed
subjected matter of claim 10. We also agree with the Examiner
(Ans. 36-39) that Moon is concerned with a similar problem as Appellant's
recited subject matter - that of improving a user interface experience for
key-based input devices by implementing a mode switch using keys and
making use of the input device more convenient. Finally, the Examiner's
articulation of the motivation to combine the teachings and suggestions of
Bowen and Moon is both reasonable and well-founded (see Final Act. 3-5;
Ans. 3---6).
In view of the foregoing, we agree with the Examiner (Ans. 5-9) that
Bowen and Moon are analogous to the subject matter of representative
claim 10, and thus, are properly combinable.
In view of the foregoing, we sustain the rejection of representative
claim 10 (as well as claims 16, 23, and 24 grouped therewith) as being
obvious under 35 U.S.C. § 103(a) over the combination of Bowen and
Moon.
Claims 1-9, 11-13, 18-22, and 25
Because the Examiner did not err in determining that Moon is
analogous art to the subject matter recited in Appellant's representative
claim 10, and is therefore properly combinable with Bowen, we also sustain
the rejections of claims 1-9, 11-13, 18-22, and 25 (which rely on the same
base combination of Bowen and Moon), for the reasons already provided as
to claim 10.
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Appeal2014-005861
Application 12/334,320
CONCLUSIONS
(1) The rejection of claims 1, 10, 16, and 21 under the judicially
created doctrine of non-statutory, obviousness-type double patenting is
sustained because Appellant has not presented any arguments as to this
rejection or otherwise shown the rejection to be in error.
(2) The Examiner did not err in rejecting claims 1-13, 16, and 18-25
as being obvious over the base combination of Bowen and Moon because
Moon is analogous art to the subject matter recited in Appellant's
representative claim 10, and is therefore properly combinable with Bowen.
DECISION
(1) The Examiner's decision rejecting claims 1, 10, 16, and 21 for
double patenting is affirmed proforma.
(2) The Examiner's obviousness rejections of claims 1-13, 16, and
18-25 under 35 U.S.C. § 103(a) are 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)(l )(iv).
AFFIRMED
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