Ex Parte Hara et al

Board of Patent Appeals and Interferences

Jul 27, 2005

10164853 (B.P.A.I. Jul. 27, 2005)

The opinion in support of the decision being
entered today was not written for publication and
is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROSHI HARA and TOSHIKAZU IDO
____________
Appeal No. 2005-1785
Application No. 10/164,853
____________
ON BRIEF
____________
Before KRASS, BARRETT, and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from a rejection of claims 1-5 and 7-21.
THE INVENTION
The appellants claim a remote commander and a method for
activating a user interface of the remote commander. Claim 1,
which claims the method, is illustrative:
1. A method for activating a user interface of a remote
commander, wherein said method comprises:
providing a plurality of user interfaces, each said
user interface electrically connected to a connector;
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Application No. 10/164,853
2
activating a user interface at least in part by moving
a first user interface relative to a second user interface; and
providing illumination only in said first user
interface in response to the moving act.
THE REFERENCES
Vance et al. (Vance) 6,498,600 Dec. 24, 2002
(filed Aug. 18, 1999)
Kfoury 6,549,789 Apr. 15, 2003
(filed Apr. 28, 2000)
THE REJECTIONS
Claims 1-5 and 7-21 stand rejected as follows: under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and under 35 U.S.C. § 103 as
being unpatentable over Kfoury in view of Vance.
OPINION
We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 112, first paragraph
In order for the appellants’ specification to provide
written descriptive support for the invention presently claimed,
all that is required is that it reasonably convey to one of
ordinary skill in the art that as of the filing date of the
application, the appellants were in possession of the presently-
claimed invention; how the specification accomplishes this is not
material. See In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
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Application No. 10/164,853
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1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196
USPQ 465, 467 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262, 191
USPQ 90, 96 (CCPA 1976). It is not necessary that the
application describe the presently-claimed invention exactly, but
only sufficiently clearly that one of ordinary skill in the art
would recognize from the disclosure that the appellants invented
it. See Edwards, 568 F.2d at 1351-52, 196 USPQ at 467; Wertheim,
541 F.2d at 262, 191 USPQ at 96. “[T]he PTO has the initial
burden of presenting evidence or reasons why persons skilled in
the art would not recognize in the disclosure a description of
the invention defined by the claims.” Wertheim, 541 F.2d at 263,
191 USPQ at 97.
The examiner argues that “the specification as originally
filed fails to disclose activation of a user interface at least
in part by movement, when movement occurs or in response to
movement”, because “activation of a user interface occurs based
on the position of the connectors, not on movement of the
interfaces” (answer, page 4).
The originally filed specification discloses activating a
user interface initially by pressing a button on a remote
commander and then by bringing first connector 100 into or out of
contact with second connector 110 (page 5, lines 14-15; page 6,
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lines 1-10; figure 2). “[W]hen first connector 100 is in contact
with second connector 110, activation of control and illumination
is provided to first user interface 30. However, when first
connector 100 is not in contact with second connector 110,
activation of control and illumination is provided to second user
interface 40” (page 6, lines 7-10). The originally filed
specification describes moving the connectors into or out of
contact with each other by rotating user interfaces 30 and 40
about hinge 20 toward or away from each other (page 5, line 23 -
page 6, line 2). Hence, the originally filed specification would
have reasonably conveyed to one of ordinary skill in the art that
as of the filing date of the application, the appellants were in
possession of activating a user interface by relative movement of
first and second user interfaces.
The examiner argues that “such activation of only an active
user interface does not specify illumination of a first interface
and not a second interface” (answer, page 4).
The appellants’ originally filed specification discloses
that “[t]he microprocessor is configured to activate either first
user interface 30 or second user interface 40, depending on which
user interface 10 is currently addressable to a user” (page 4,
lines 21-23), and that “[a]ctivation of any user interface 10
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5
that is currently addressable to the user further includes
activating the illumination of that user interface 10 that is
currently addressable to the user” (page 5, lines 12-14). The
originally filed specification, therefore, would have reasonably
conveyed to one of ordinary skill in the art that as of the
filing date of the application, the appellants were in possession
of illuminating only a first user interface.
For the above reasons we reverse the rejection under
35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 103
Each of the appellants’ independent claims requires
illuminating a first user interface but not a second user
interface.
Kfoury discloses a handheld electronic device, such as a
cellular radiotelephone, having two housing portions, one of
which has at least two user interfaces and the other of which has
at least one user interface (col. 3, lines 3-6). The housing
portions are connected to each other by a swivel hinge that
permits the housing portions to be rotated and folded together
such that in the folded position, any selected user interface on
one housing portion can face any selected user interface on the
other housing portion (col. 3, lines 6-14). “Each user interface
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may be selectively adapted to operate in an inactive operation
mode, an input operation mode, an output operation mode or a
combination thereof” (col. 3, lines 14-16). In one embodiment,
two interfaces that face each other when the housings are in the
folded position are in the inactive operation mode (col. 5,
lines 39-45). When the housings are folded together, a detector,
preferably a reed switch, in one housing portion comes into
proximity with a magnet in the other housing portion which
activates the detector, thereby causing a first position signal
to be sent to a microprocessor which sends a signal to the
appropriate user interface in accordance with the programmed
operation mode of the device (col. 6, line 46 - col. 7, line 13).
The examiner argues that “[f]igure 12 shows an embodiment in
which one user interface has been moved over (folded over)
another user interface and only the outer user interface is
active[,] inner interfaces being inactive” (answer, page 6).
Kfoury’s discussion of figure 10 (col. 5, lines 39-45) indicates
that the inner interfaces in figure 12 are inactive. Kfoury,
however, indicates that each housing portion can have a user
Appeal No. 2005-1785
Application No. 10/164,853
1 Kfoury does not disclose that the lower housing portion in figure 12
has no user interface on its bottom side.
2 The examiner does not rely upon Vance for any disclosure that remedies
the above-discussed deficiency in Kfoury.
7
interface on each of its sides (col. 4, lines 39-52),1 and Kfoury
does not disclose illuminating only one outer user interface in
response to relative movement of the housings.
The examiner argues that only one of Kfoury’s four user
interfaces can be active at certain times, based on the movement
of the interfaces in relation to each other (answer, page 6).
The examiner, however, does not cite any portion of Kfoury which
discloses only one active user interface.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellants’ claimed invention.2
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DECISION
The rejections of claims 1-5 and 7-21 under 35 U.S.C. § 112,
first paragraph, written description requirement, and under
35 U.S.C. § 103 over Kfoury in view of Vance, are reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 2005-1785
Application No. 10/164,853
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