Ex Parte Griffin

Patent Trial and Appeal Board

Feb 19, 2015

12182528 (P.T.A.B. Feb. 19, 2015)

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.
12/182,528 07/30/2008 Jason T. Griffin 93422-115C 3922
94149 7590 02/20/2015
Fish & Richardson PC
P.O.Box 1022
Minneapolis, MN 55440
EXAMINER
BENLAGSIR, AMINE
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
02/20/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON T. GRIFFIN
____________

Appeal 2012-012151
Application 12/182,528
Technology Center 2600
____________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and ROBERT
E. NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1–5, 9, 11, 14–20, and 26–30. Claims 6–8, 10, 12, 13, 21–25, and
31 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention is directed to a hand-held electronic device having a
keyboard comprising a plurality of keys. Each key of the plurality of keys
comprises a substantially flat contact surface extending to a beveled side.
And the beveled side of each key faces toward a midline of the keyboard.
Appeal 2012-012151
Application 12/182,528

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See Abstract and page 6 of Appellant’s Specification. Claim 1 is illustrative
of the invention and reproduced below.

1. A hand-held electronic device comprising:

a keyboard, said keyboard having a plurality of keys, each key having
a substantially flat contact surface extending between a first side and an
opposed second side of said each key, said first side being beveled, said
second side meeting said contact surface at substantially a right angle;

said keys comprising first keys located left of a midline of said
keyboard and second keys located right of said midline of said keyboard and
wherein said first side of each first key is at a right hand side of said first key
and wherein said first side of each second key is at a left hand side of said
second key.

REJECTIONS AT ISSUE1
The Examiner has rejected claims 1–5, 9, 11, 14–20, and 30, under
35 U.S.C. § 103(a) as unpatentable over Gill (US 6,847,310 B1) and Hsu
(US 7,683,280 B2).2 Answer 4–8, 10–13.
The Examiner has rejected claims 26–29 under 35 U.S.C. § 103(a) as
unpatentable over Gill, Hsu, and Griffin (US 6,867,763 B2). Answer 9–10.
The Examiner has rejected claims 1–5, 9, 11, 14–20, and 26–31 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1, 3, 4, 6, and 8–25 of Griffin (US Application 11/245,809).3
Answer 13–15.

1 Throughout this Opinion we refer to the Appeal Brief dated December 20,
2011, and the Examiner’s Answer mailed March 13, 2012.
2 We note that it has not been established that Hsu is prior art.
3 In the Examiner’s Answer, claim numbers in the header for the double
patenting rejection erroneously include canceled claim 31. Further, we note
Appeal 2012-012151
Application 12/182,528

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ISSUES
Appellant presents several arguments, on pages 6 through 10 of the
Appeal Brief, directed to the Examiner’s rejection of independent claims 1
and 18. The dispositive issue presented by these arguments is: Did the
Examiner err in finding that the combination of Gill and Hsu teaches
each key [of a plurality of keys] having a substantially flat contact
surface extending between a first side and an opposed second side of
said each key, said first side being beveled, said second side meeting
said contact surface at substantially a right angle; said keys
comprising first keys located left of a midline of said keyboard and
second keys located right of said midline of said keyboard and
wherein said first side of each first key is at a right hand side of said
first key and wherein said first side of each second key is at a left
hand side of said second key,

as recited in independent claim 1. With respect to independent claim 18,
Appellant’s arguments present us with the same dispositive issue as
independent claim 1.

ANALYSIS
Obviousness rejections
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejections of claims 1–5, 9, 11, 14–20, and 26–30, under
35 U.S.C. § 103(a).
Appellant’s arguments directed to the rejection of these claims assert
that “the asserted beveled ‘first side’ of Hsu’s key is oriented toward the

that US 11/245,809 had issued as of the time of the “provisional” double
patenting rejection, see US Patent 7,417,565, issued August 26, 2008.
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Application 12/182,528

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bottom, not the midline, of the keyboard.” Appeal Brief 7. Therefore, the
combination of Hsu does not teach the first keys located on the left of a
midline with a beveled edge on the right side and a second set of keys on the
right of a midline with a beveled edge on the left side. Appeal Brief 8. In
response to Appellant’s arguments, the Examiner repeated previous
rejections and submitted no evidence establishing reorientation of Hsu’s
keys. The Examiner simply found that “[i]t would have been obvious to one
of ordinary skill in the art at the time of [the] invention to modify the keys of
the hand-held electronic device of Gill to incorporate the selective structure
of keys as taught by Hsu….” Answer 6. The Examiner has not identified
sufficient evidence to support the finding that incorporating the “selective
structure” of keys as taught by Hsu into the device of Gill results in a
keyboard that possesses Appellant’s claimed key orientation. Accordingly,
we do not sustain the Examiner’s rejections of claims 1–5, 9, 11, 14–20, and
26–30, under 35 U.S.C. § 103(a).

Nonstatutory obviousness-type double patenting rejection
With respect to the Examiner’s rejection based upon the judicially
created doctrine of obviousness-type double patenting, Appellant has not
contested or identified an error in the Examiner’s rejection. “When the
appellant fails to contest a ground of rejection to the Board, … the Board
may treat any argument with respect to that ground of rejection as waived.
In the event of such a waiver, the PTO may affirm the rejection of the group
of claims that the examiner rejected on that ground without considering the
merits of those rejections.” Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008). Accordingly, we summarily sustain the Examiner’s rejection of
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Application 12/182,528

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claims 1–5, 9, 11, 14–20, and 26–30 based upon the judicially created
doctrine of obviousness-type double patenting.

DECISION
We do not sustain the Examiner’s rejections of claims 1–5, 9, 11, 14–
20, and 26–30, under 35 U.S.C. § 103(a).
We sustain the Examiner’s rejection of claims 1–5, 9, 11, 14–20, and
26–30 under the judicially created doctrine of obviousness-type double
patenting.

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).

AFFIRMED
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