Ex Parte ELIASDownload PDFPatent Trials and Appeals BoardMay 18, 201612334320 - (D) (P.T.A.B. May. 18, 2016) Copy Citation 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. 2 Appeal2014-005861 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). 3 Appeal2014-005861 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). 4 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 5 Appeal2014-005861 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). 6 Appeal2014-005861 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. 7 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 8 Copy with citationCopy as parenthetical citation