Ex Parte Griffin et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201611966190 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111966,190 12/28/2007 75322 7590 03/02/2016 BlackBerry Limited (Fitch Even) Patent Team 2200 University A venue East Waterloo, ON N2K OA 7 CANADA FIRST NAMED INVENTOR Jason T. Griffin 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. 9169-100928-us 4708 EXAMINER BRAY, STEPHEN A ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 03/02/2016 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): portfolioprosecution@blackberry.com ptoboca@fggbb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON T. GRIFFIN and STEVEN FYKE Appeal2014-003945 Application 11/966, 1901 Technology Center 2600 Before ROBERT E. NAPPI, ELENI MANTIS MER CADER, and STACY B. MARGOLIES, Administrative Patent Judges. MARGOLIES, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Research in Motion Limited. App. Br. 3. Appeal2014-003945 Application 11/966, 190 SUMMARY OF THE INVENTION The invention is directed to a handheld electronic communication device that includes a navigation travel region overlying text entry keys that allows a user to navigate by actuating a navigation home key and then moving a finger across keys within the navigation travel region. See Abstract. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A handheld electronic communication device, compnsmg: a device body having a display area and a keyfield area; a microprocessor communicatively interposed between alphabetic keys of the keyfield area and a display screen of the display area, said microprocessor configured to receive text input instructions via the alphabetic keys of the keyfield area and to display corresponding text on the display screen of the display area; a cursor navigation area coincidentally, at least a portion of which is located with at least a portion of the alphabetic keys of the keyfield area, said microprocessor communicatively interposed between the cursor navigation area and the display screen and configured to receive cursor guidance instructions via the cursor navigation area and to cause corresponding cursor movement on the display screen; and a navigation initiation zone having at least a portion thereof that is exclusive of any of the alphabetic keys and that is fully bounded by the coincidentally located portions of the alphabetic keys and cursor navigation area and said microprocessor programmed to interpret cursor guidance instructions from sweeping contact motion that initiates at the navigation initiation zone and continues across the cursor 2 Appeal2014-003945 Application 11/966, 190 navigation area and to interpret text input instructions from contact that initiates at an alphabetic key. REFERENCES AND REJECTIONS The Examiner rejected claims 1--4, 7, 9-12, and 17-21 under 35 U.S.C. § 103(a) as being obvious in view of Murray (US 2008/0106519 Al; May 8, 2008), Nuovo et al. (US 2004/0212597 Al; Oct. 28, 2004), and C. Larsen et al. (US 2007/0091070 Al; Apr. 26, 2007). Final Act. 4--16. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as being obvious in view of Murray, Nuovo, C. Larsen, and Yeh et al. (US 2007/0273655 Al; Nov. 29, 2007). Final Act. 16 and 17. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being obvious in view of Murray, Nuovo, C. Larsen, and Chiu et al. (US 7,274,353 B2; Sept. 25, 2007). Final Act. 17 and 18. The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a) as being obvious in view of Murray, Nuovo, C. Larsen, and Fyke et al. (US 2005/0024240 Al; Feb. 3, 2005). Final Act. 18 and 19. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being obvious in view of Murray, Nuovo, C. Larsen, Fyke, and Sullivan (US 2007/0294636 Al; Dec. 20, 2007). Final Act. 19 and 20. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being obvious in view of Murray, Nuovo, C. Larsen, and Shiraishi et al. (US 6,809,724 Bl; Oct. 26, 2004). Final Act. 20. 3 Appeal2014-003945 Application 11/966, 190 ISSUE The pivotal issue is whether the Examiner erred in combining Murray, Nuovo, and Larsen to find that the combination teaches "a navigation initiation zone having at least a portion thereof that is exclusive of any of the alphabetic keys and that is fully bounded by the coincidentally located portions of the alphabetic keys and cursor navigation area," as recited in independent claim 1 and similarly recited in independent claims 18 and 20. ANALYSIS Appellants argue that the Examiner erred in combining Murray's touch-sensitive key surfaces, Nuovo's navigation key, and Larsen's fine- resolution touch-sensitive central key to find a navigation initiation zone having at least a portion thereof that is exclusive of any of the alphabetic keys and that is fully bounded by the coincidentally located portions of the alphabetic keys and cursor navigation area, as required by the three independent claims. See App. Br. 10-13. Specifically, Appellants argue that "merely placing Murray's touch-sensitive surfaces on Nuovo's keys will not, in and of itself, yield an operating embodiment as Nuovo' s contact points are technically incapable of providing the data paths that such touch- sensitive surfaces inherently entail." App. Br. 13. Appellants also maintain that "Nuovo' s teachings are unduly complex as compared to numerous other prior art offerings," and that "[ c ]omplexity, in tum, leads to increased cost of design and manufacture as well as reduced reliability and increased maintenance costs." Id. at 13-14. Thus, Appellants argue, the skilled artisan would "have no reason to pursue consideration of the teachings of' Nuovo. Id. at 14. Appellants further assert that a person of ordinary skill in 4 Appeal2014-003945 Application 11/966, 190 the art would be dissuaded from making the suggested use of Larsen because Larsen "criticizes" using separate cursor control interfaces that may require "a significant change in the user's typing behavior" in moving from a home position on the keyboard to the location of the pointing device. Id. The Examiner responds that the contact points of the combined teachings of the references would have the necessary bandwidth to transmit touch data because "Murray and Larsen disclose that each touchpad segment has its own lead for transmitting touch data separate from the circuitry of the key upon which it is mounted" and "the leads can be routed in accordance with the requirements of the designer." Ans. 10-11. The Examiner adds that, as disclosed by Nuovo, a user could rotate the keypad by removing it from the handheld device and putting it back in at an alternative configuration. Ans. 11. The Examiner thus finds that Nuovo's removable arrangement "would only require having one or more connection points for connecting the leads from the touchpad segments to the appropriate control circuitry." Id. The Examiner also finds that "if price and complexity were a concern," one of ordinary skill in the art would use Nuovo's user-removal option for rotation, which is less expensive and less complicated than Nuovo's in-place rotation design. Id. at 11-12. In response to Appellants' argument that Larsen criticizes an arrangement that requires a significant change in the user's typing behavior, the Examiner finds that Murray's and Nuovo's handheld devices are "designed to be held in the palm of the user's hand, with the thumb of the hand ... resting on the keypad ... and being used to make inputs." Id. at 12. Therefore, the Examiner finds, a pointer device in the center of the keypad (as taught by Murray and Nuovo) would 5 Appeal2014-003945 Application 11/966, 190 be under the thumb of the user, which would not require the user to change typing behavior. See id. at 12. Appellants' arguments that the Examiner erred are not persuasive. Appellants argue that a touch-sensitive region cannot be physically incorporated into the Nuovo device. See App. Br. 12-13. The test for obviousness, however, "is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; [r]ather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091, 2015 WL 7755665, at *9 (Fed. Cir. Dec. 2, 2015). Each reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Keller, 642 F.2d at 413. In KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references, with little recourse to the knowledge, creativity, and common sense that a skilled artisan would have brought to bear when considering combinations or modifications. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415--422 (2007); see also Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). We agree with the Examiner's analysis of the combined teachings of the references as set forth in pages 4 through 7 of the Final Office Action and the Examiner's findings on page 11 of the Answer regarding the technical feasibility of the combined teachings. In addition, we are not persuaded by Appellants' unsupported and speculative assertions regarding cost and Appellants' argument regarding Larsen's discussion of typing 6 Appeal2014-003945 Application 11/966, 190 behavior. See App. Br. 13-14. We agree with the Examiner's findings on pages 11 and 12 of the Answer responding to those arguments. Rather than addressing the Examiner's findings regarding combining the references, Appellants raise a completely different argument for the first time in their Reply Brief. See Reply Br. 1-3. Appellants argue that the references fail to teach initiating a sweeping contact in a navigation area that excludes any alphabetic keys and then continuing that contact in an alphabetic key area. Reply Br. 3. The Examiner, however, found in the Final Office Action that Larsen in combination with Murray teaches this limitation (see Final Act. 6-7) and Appellants failed to challenge that finding in their Appeal Brief. See App. Br. 10-15. Appellants therefore have waived the argument. See 37 C.F.R. § 41.37(c)(iv); 37 C.F.R. § 41.41 (b )(2). For the foregoing reasons, we sustain the Examiner's obviousness rejection of independent claims 1, 18, and 20 based on the combination of Murray, Nuovo, and Larsen. Appellants do not separately address the limitations added by dependent claims 2-17, 19, and 21, and rely exclusively on their arguments for the independent claims. See App. Br. 14-- 15. For the reasons explained above with respect to claims 1, 18, and 20, we sustain the Examiner's obviousness rejections of the dependent claims. DECISION We affirm the Examiner's obviousness rejections of claims 1-21. 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). 7 Appeal2014-003945 Application 11/966, 190 AFFIRMED 8 Copy with citationCopy as parenthetical citation