Ex Parte Elias

Patent Trial and Appeal Board

Sep 12, 2016

11620424 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111620,424 0110512007
69753 7590 09/14/2016
APPLE c/o MORRISON & FOERSTER LLP LA
707 Wilshire Boulevard
Los Angeles, CA 90017
John G. 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.
106842010900(P4549US1) 9237
EXAMINER
OKEBATO, SAHLU
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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 G. ELIAS
Appeal2015-004555
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 APPEAL
Appellant appeals under 35 U.S.C. § 134(a) the Examiner's Final
Rejection of claims 1-7, 9-12, and 14--34. 1 Claims 8 and 13 are cancelled.
We have jurisdiction over the pending rejected claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellant identifies Apple Inc. as the real party in interest. (App. Br. 2.)
Appeal2015-004555
Application 11/620,424
THE INVENTION
Appellant's disclosed and claimed invention is directed to an
electronic device with separate surfaces for input and output. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. 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 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, the method comprising:
detecting a contact on the physical representation of the
control element on the touch surface;
displaying the control element on the display element in
response to detecting the contact on the physical representation
of the control element on the touch surface;
detecting a movement of the contact; and
adjusting a display position of a cursor in response to the
movement of the contact such that the display position of the
cursor on the displayed control element coincident \~1ith a
location of the contact on the physical representation of the
control element on the touch surface.
REJECTIONS
The Examiner rejected claims 1, 2, 5-7, 14--17, 19--22, 24--27, 29, and
31-34 under 35 U.S.C. § 103(a) as being unpatentable over Liebenow et al.
(US 2002/0118175 Al, pub. Aug. 29, 2002) and Kraus et al. (US
2003/0235452 Al, pub. Dec. 25, 2003). (Final Act. 2-8.)
The Examiner rejected claims 3, 4, and 28 under 35 U.S.C. § 103(a)
as being unpatentable over Liebenow, Kraus, and Kawasaki et al. (US
2003/0184528 Al, pub. Oct. 2, 2003). (Final Act. 8-9.)
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Appeal2015-004555
Application 11/620,424
The Examiner rejected claims 18, 23, and 30 under 35 U.S.C. § 103(a)
as being unpatentable over Liebenow, Kraus, and Kerr et al. (US
2006/0197750 Al, pub. Sep. 7, 2006). (Final Act. 9--10.)
The Examiner rejected claims 9--12 under 35 U.S.C. § 103(a) as being
unpatentable over Liebenow, Kraus, and Tuli (US 6,633 ,314 B 1, issued Oct.
14, 2003). (Final Act. 11-12.)
ISSUE ON APPEAL
Appellant's arguments in the Appeal Brief present the following
issue: 2
Whether the Examiner erred in finding the combination of Liebenow
and Kraus teaches or suggests the independent claim 1 limitation, "the touch
surface including at least one physical representation of a control element,"
and the similar limitation recited in independent claim 20. (App. Br. 5-7 .)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner errs. We disagree with Appellant's arguments,
and we adopt as our own ( 1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 2-12)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner's Answer in response to Appellant's Appeal Brief (Ans. 3--4). We
2 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed Sept. 24, 2014); the Reply
Brief (filed Mar. 13, 2015); the Final Office Action (mailed Mar 25, 2014);
and the Examiner's Answer (mailed Jan. 15, 2015) for the respective details.
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Appeal2015-004555
Application 11/620,424
concur with the applicable conclusions reached by the Examiner and
emphasize the following.
In finding Liebenow and Kraus teach or suggest "the touch surface
including at least one physical representation of a control element," the
Examiner relies on the disclosure in Liebenow of a touch sensitive panel on
the back surface of a digital information appliance, and on the disclosure in
Kraus of a flexible keyboard overlay placed upon a touch-sensitive display
screen. (Final Act. 2-3; Liebenow Fig. 9, element 240, i-f 44; Kraus
Abstract, Fig. 3d, i-fi-132-36.)
Appellant argues the Examiner's reliance on the keyboard overlay of
Liebenow as teaching or suggesting the required "physical representation of
a control element" is in error because the keyboard overly is not part of a
"touch surface" of an "electronic device," as those terms are used in the
claims. (App. Br. 6-7.)
This argument is not persuasive, because Appellant focuses on the
Liebenow reference individually, whereas the Examiner's rejection is based
on the combination of Liebenow and Kraus. In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986); 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). Moreover, we agree with the Examiner's
finding that the keys of the keyboard overlay disclosed in Liebenow, which
when pressed actuate contact with a corresponding key area on the touch
sensitive display screen, teach or suggest the claim limitation at issue under
a broad but reasonable interpretation of the claim language - a "touch
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Application 11/620,424
surface including" a "physical representation of a control element." (Ans.
3--4.)
CONCLUSIONS
For the reasons stated above, we sustain the obviousness rejection of
claims 1 and 20 over Liebenow and Kraus. We also sustain the obviousness
rejections of claims 2, 5-7, 14--17, 19, 21, 22, 24--27, 29, and 31-34 over
Liebenow and Kraus, of claims 3, 4, and 28 over Liebenow, Kraus, and
Kawasaki, of claims 18, 23, and 30 over Liebenow, Kraus, and Kerr, and of
claims 9-12 over Liebenow, Kraus, and Tuli, which rejections are not
argued separately with particularity. (App. Br. 7 .)
DECISION
We affirm the Examiner's rejections of claims 1-7, 9-12, and 14--34.
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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