Ex Parte Griffin

Patent Trial and Appeal Board

Aug 7, 2014

11837686 (P.T.A.B. Aug. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JASON GRIFFIN
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Appeal 2012-003582
Application 11/837,6861
Technology Center 2600
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Before: JOHN A. EVANS, HUNG H. BUI, and JEFFREY A. STEPHENS,
Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The Real Party in Interest is identified as Research In Motion, Limited.
App. Br. 1.
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from rejection of claims
20–25. Claims 1–19 have been canceled. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

Claimed Subject Matter
The claims are directed to an electronic device with a touchscreen that
can be used to actuate a switch that provides additional input to the
processor. Claim 20, reproduced below, is the only independent claim:
20. An electronic device comprising:
a housing;
a touchscreen display disposed within the housing;
a switch disposed between the touchscreen display and the
housing, wherein the switch, when actuated, provides tactile
feedback and generates a signal that is provided to a processor;
wherein the touchscreen display is moveable and configured to
actuate the switch in response to application of a force on the
touchscreen display;
wherein the processor is configured to:
initiate a first command in response to a signal generated
by the switch when actuated;
initiate a second command in response to signals from
the touchscreen display and a signal generated by the
switch when actuated;
initiate a third command in response to signals from the
touchscreen display without actuation of the switch.

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Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Gaultier US 6,034,672 Mar. 7, 2000
Rosenberg US 6,429,846 B2 Aug. 6, 2002
Zadesky US 2006/0181517 A1 Aug. 17, 2006
Riddiford WO 2004/107146 A2 Dec. 9, 2004

Examiner’s Rejections
(1) Claims 20–25 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
(2) Claims 20 and 22–25 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Riddiford.
(3) Claims 20–25 stand rejected under pre-AIA 35 U.S.C. § 102(e)
as anticipated by Zadesky.
(4) Claims 20–25 stand rejected under pre-AIA 35 U.S.C. § 102(b)
as anticipated by Rosenberg.
(5) Claim 21 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Riddiford and Rosenberg.
(6) Claim 21 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Riddiford and Gaultier.
(7) Claims 20–25 stand provisionally rejected on the ground of
non-statutory obviousness-type double patenting as being unpatentable over
claim 14 of then-copending Application No. 11/837,703 and Zadesky.
(8) Claims 20–25 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 14 of then-copending Application No. 11/837,703 and Rosenberg.
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ANALYSIS
(1) Rejection of claims 20–25 under § 112
The Examiner rejected independent claim 20 for failing to meet the
written description requirement of § 112. The claim recites, among other
elements, a housing, a touchscreen display disposed within the housing, and
“a switch disposed between the touchscreen display and the housing.” The
Examiner found that the switch feature was not described because the switch
is described and shown only as being disposed between the touchscreen
display and base 34 of the housing, not the whole housing. Ans. 4–5; see
also, e.g., Spec. 3, 17 (original claim 1), Fig. 2.
Appellant argues that the Specification shows examples of a switch
disposed between the touchscreen display and housing at Figures 2, 5, 6, 8
through 11, and the associated text. In these examples, the switch is located
only between the touchscreen display and the base of the housing. Appellant
does not cite any portion of the Specification that describes the switch being
located in any other location, such as between the display and front frame or
sidewalls of the housing.
Appellant also argues that “because the touchscreen is disposed within
the housing, it would be inaccurate, impractical, and nonsensical for the
description to ‘explicitly disclose a switch disposed between the touchscreen
display and the whole housing,’ as the Examiner indicates would be
necessary.” App. Br. 5. Appellant does not assert that it would be infeasible
to amend the claim to recite that the switch is disposed between the
touchscreen display and the base of the housing. Appellant appears to
contend, however, that the claim need not be limited to this particular
embodiment shown in the Specification.
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Under the broadest reasonable interpretation for purposes of
examination before the PTO, we do not interpret “a switch disposed between
the touchscreen display and the housing” to require that the switch be
disposed between the touchscreen and the entire housing. We see no support
for such an interpretation. The claim language is broad enough, however, to
allow the switch to be located anywhere between the touchscreen and the
housing.
Satisfaction of the written description requirement of § 112 is a
question of fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). The disclosure must “reasonably convey[ ] to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. “[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.” Id.
We find the switch element of claim 20 to be supported by the written
description. The Specification describes the mechanical switch as “disposed
between a back surface of the touchscreen display 24 and a base 34 of the
housing 22.” Spec. ¶ 20. “It is common, and often permissible, for
particular claims to pick out a subset of the full range of described features,
omitting others.” ScriptPro, LLC v. Innovation Assocs., Inc., __ F.3d __,
No. 2013-1561, slip op. at 7–8 (Fed. Cir. Aug. 6, 2014). The Specification
does not indicate that the particular location of the switch is considered an
essential element of the invention. C.f. Gentry Gallery, Inc. v. Berkline
Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (explaining that claims not
limiting the location of recliner controls on a sofa to a console were not
supported, in part because “it is clear that Sproule considered the location of
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the recliner controls on the console to be an essential element of his
invention”). An applicant for patent “is generally allowed claims, when the
art permits, which cover more than the specific embodiment shown.” In re
Vickers, 141 F.2d 522, 525 (CCPA 1944); see also Ethicon Endo-Surgery,
Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (“If Fox
did not consider the precise location of the lockout to be an element of his
invention, he was free to draft claim 24 broadly (within the limits imposed
by the prior art) to exclude the lockout’s exact location as a limitation of the
claimed invention.”).
Claim 20 does not specify the precise location of the switch other than
that it is disposed between the touchscreen display and housing. However,
such precise location of the switch is not considered to be an essential
element of Appellant’s invention, as claim 20 also recites elements beyond
the existence of a switch between the display and housing, including, for
example, various commands initiated in response to various signals. In this
context, and given that the switch predictably could be placed in various
locations between the touchscreen and housing, we find that the description
in the Specification reasonably conveys to one of ordinary skill in the art that
Appellant was in possession of the claimed subject matter.
Accordingly, we reverse the rejection of claims 20–25 under § 112,
first paragraph.

(2) Rejection of claims 20 and 22–25 as anticipated by Riddiford
The Examiner rejected claims 20 and 22–25 under pre-AIA § 102(b)
as anticipated by Riddiford. Ans. 5–7. Appellant argues that Riddiford does
not teach at least one of the first or second commands recited in independent
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claim 20. We agree with Appellant that the first command is not disclosed
in Riddiford.
In claim 20, a first command is initiated “in response to a signal
generated by the switch when actuated.” A second command is initiated “in
response to signals from the touchscreen display and a signal generated by
the switch when actuated.” A third command is initiated “in response to
signals from the touchscreen display without actuation of the switch.”
Under the Examiner’s interpretation of claim 20, the first command can be
the same as the second command and is not required to be in response to
only a signal generated by the switch when actuated. Ans. 20–21. Thus,
according to the Examiner, a single command initiated in response to signals
from the touchscreen display and a signal generated by the switch when
actuated would satisfy both the first command and second command
limitations. See id.
We interpret claim 20 to require three different commands, and the
first command must be initiated only in response to the signals from the
switch. Consistent with the principle that all limitations in a claim must be
considered to be meaningful, it is improper to rely on a single command in
response to signals from the switch and from the touchscreen to satisfy both
the first command and second command elements of claim 20. See Lantech,
Inc. v. Keip Machine Co., 32 F.3d 542, 546–47 (Fed. Cir. 1994) (in
infringement context, a single conveyor held to not meet claim element
requiring at least two conveyors); In re Robertson, 169 F.3d 743,745 (Fed.
Cir. 1999) (claim requiring three separate means not anticipated by structure
containing two means where one of the two means was argued to meet two
of the three claimed means). The “first command” limitation would be
meaningless if it could be in response to “signals from the touchscreen
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display and a signal generated by the switch when actuated,” as required for
the claimed “second command.”
The Examiner found that even if claim 20 required a first command
different from a second command, Riddiford discloses two different
commands. Ans. 21–22. Riddiford discloses actuation of a switch by
pressing down on a virtual key to select the key. Riddiford 4, ll. 6–8.
Riddiford also discloses confirming selection of the key by pressing down to
actuate the switch. Id. at 4, ll. 12–15. These are two different commands,
but both appear to rely on signals from the switch and touchscreen. The
Examiner also relies on Riddiford’s disclosure of a drag and drop command
in which an item may be dragged by pressing on the screen with enough
force to activate the mechanical switch and dragging the item while
maintaining enough pressure to keep the switch actuated, as with a normal
mouse. Ans. 21–22 (citing Riddiford 5, l. 31—6, l. 2). Again, this meets the
second command limitation but cannot be the first command because it is in
response to more than the signal generated by the switch.
Accordingly, we reverse the rejection of claims 20 and 22–25 as
anticipated by Riddiford under § 102(b).

(3) Rejection of claims 20–25 as anticipated by Zadesky
The Examiner rejected claims 20–25 under pre-AIA § 102(e) as
anticipated by Zadesky. The Examiner cites Zadesky’s disclosure of a menu
command initiated by pressing on a moveable touchscreen to tilt the screen
forward. Ans. 23; see Zadesky ¶¶ 43, 55. Zadesky also discloses that input
signals generated when the touchscreen is moved “can be used to initiate
commands, make selections, or control motion in a display.” Zadesky ¶ 39;
see Ans. 23. “[I]n order to generate signals indicative of the movements, the
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detection mechanism 56 generally includes one or more movement
indicators 57 such as switches, sensors, encoders, and/or the like as well as
input control circuitry 59.” Zadesky ¶ 47. Zadesky thus discloses the first
command in response to a signal generated only by the switch, which is
missing from Riddiford.
The “second command” in claim 20 is the only limitation that
Appellant argues is not disclosed in Zadesky. Regarding the claimed second
command, Zadesky discloses:
In some cases, the display actuator 50 is arranged to provide
both the touch screen signals and the input signals at the same
time, i.e., simultaneously moving the display 52 while
implementing a touch action on the touch screen 62. In other
cases, the display actuator 50 is arranged to only provide an
input signal when the display 52 is moved and a touch screen
signal when the display 52 is stationary.
Zadesky ¶ 54. Appellant argues that “Zadesky teaches only that the timing
that different signals are provided differs between the two situations,” and
that simultaneously providing signals from the touchscreen and the switch is
not sufficient to meet the “second command” limitation. App. Br. 8.
We agree with Appellant that the second command limitation of claim
20 is not taught explicitly in Zadesky. Zadesky does not disclose that the
signals that may be received from the touchscreen and switch
simultaneously are combined to generate a command in response to both
signals. Although it may have been obvious to do so, Zadesky does not
anticipate claim 20.
Accordingly, the rejection of claims 20–25 as anticipated by Zadesky
under pre-AIA § 102(e) is reversed.

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(4) Rejection of claims 20–25 as anticipated by Rosenberg
Rosenberg discloses that a “user is able to push the touchpad 16 along
the z-axis to provide additional input” to an electronic device using a switch.
Rosenberg col. 9, ll. 13–15 & ll. 31–39. Appellant argues that this
“additional input” from the switch cannot meet both the first and second
command limitations. We agree that the portions of Rosenberg cited by the
Examiner do not disclose explicitly both the “first command in response to a
signal generated by the switch when actuated” and the “second command in
response to signals from the touchscreen display and a signal generated by
the switch when actuated.” Accordingly, we reverse the rejection of claims
20–25 as anticipated by Rosenberg under pre-AIA § 102(b).

(5)-(6) Rejections of claim 21 as unpatentable under § 103(a)
Appellant argues that claim 21 is patentable over the combination of
Riddiford and Rosenberg, and over the combination of Riddiford and
Gaultier, for “at least the same reasons independent claim 20 is patentable.”
App. Br. 10, 11. No separate argument is provided with respect to claim 21.
Accordingly, we reverse the rejections of claim 21 as unpatentable under
§ 103(a) over Riddiford and Rosenberg, and over Riddiford and Gaultier, for
the same reasons the rejection of claim 20 as anticipated by Riddiford is
reversed.

(7)-(8) Obviousness-type double patenting rejections of claims 20–25
The Examiner provisionally rejected claims 20–25 on two separate
grounds of nonstatutory obviousness-type double patenting. Each rejection
relied on claim 14 of co-pending Application Serial No. 11/837,703 (“the
’703 Application”) in combination with another reference. The claims of the
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’703 Application were amended by the Examiner in a Notice of Allowance
dated September 13, 2011, which is after the Appeal Brief was filed but
before the Examiner’s Answer in the current appeal. The ’703 Application
issued as a patent on January 10, 2012.
Appellant’s arguments regarding the double patenting rejections
amount to little more than recitation of the claims and reference to other
arguments. We note, however, that the analysis provided in the Final Office
Action is cursory. The Examiner provides further analysis in the Answer,
which Appellant does not address in the Reply. Because the double
patenting rejections rely on the Examiner’s interpretation of claim 20, which
we have modified herein, we reverse the rejection of claims 20–25 on the
grounds of nonstatutory obviousness-type double patenting.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection and separately reject claim 20 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Zadesky and Riddiford for the following
reasons.
First, we incorporate the Examiner’s rejection of claim 20 (Ans. 7–9)
for Zadesky’s disclosure of all elements of claim 20 except that the
processor is configured to “initiate a second command in response to signals
from the touchscreen display and a signal generated by the switch when
actuated.”
Next, as to the claimed “second command,” we find Zadesky
discloses that touch screen signals from a touch screen and input signals
from moving the touch screen and actuating a switch can be provided
simultaneously. See Zadesky ¶¶ 39, 47, 54. Zadesky does not disclose
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explicitly that the signals that may be received from the touchscreen and
switch simultaneously are combined to generate a command in response to
both signals as required by claim 20. Riddiford discloses commands
initiated in response to signals from the touchscreen display and a signal
generated by a switch that provides tactile feedback when actuated. For
example, Riddiford discloses confirming selection of a virtual key by
pressing down on the touchscreen to actuate the switch. Riddiford 4, ll. 8–
15. When the switch is actuated, the X-Y coordinates of the area of the
touchscreen being pushed down upon are used to confirm selection of the
virtual key being pressed. Id. Riddiford also discloses a drag and drop
command in which an item may be dragged by pressing on the screen with
enough force to activate the mechanical switch and dragging the item while
maintaining enough pressure to keep the switch actuated, as with a normal
mouse. Riddiford 5, l. 31—6, l. 2. Both of these commands are in response
to signals from the touchscreen display and a signal generated by the switch
when actuated.
Based on these findings from Zadesky and Riddiford, we conclude it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to initiate the confirm selection or drag and drop commands
disclosed in Riddiford using the electronic device of Zadesky in order to
provide additional input and commands for controlling the electronic device.
Zadesky itself discloses that various combined inputs from user movement
of the touchscreen “may cooperate to produce a new set of user inputs.”
Zadesky ¶ 45. We also conclude that it would have been obvious to
combine signals from both movement of the touchscreen and input from
pressure on the touchscreen as in Riddiford to produce a new set of user
inputs. Riddiford also notes that the drag and drop command using the
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touchscreen and switch “mirrors how drag and drop is achieved using a
normal mouse,” Riddiford 6, l. 2, which provides additional motivation for
one of skill in the art to incorporate this familiar user action into the
electronic device disclosed in Zadesky.
We note the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination. We have rejected independent claim 20
based on our authority under 37 C.F.R. § 41.50(b). We have not, however,
reviewed the remaining claims to the extent necessary to determine whether
those claims are unpatentable under 35 U.S.C. § 103(a). We leave it to the
Examiner to ascertain whether claims dependent from claim 20 should be
rejected on similar grounds to those set forth herein or in combination with
additional prior art.

DECISION
The Examiner’s rejections of claims 20–25 under §§ 112, 102, and
103 are reversed. We also reverse the double patenting rejections of claims
20–25.
We also enter a new ground of rejection of claim 20 under 35 U.S.C.
§ 103(a) pursuant to our authority under 37 C.F.R. § 41.50(b). “A new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.50(b). Section 41.50(b) provides that
the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
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rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)

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