Ex Parte Hillmering

Board of Patent Appeals and Interferences

Aug 29, 2002

08973003 (B.P.A.I. Aug. 29, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTER HILLMERING
____________
Appeal No. 2001-1602
Application No. 08/973,003
____________
ON BRIEF
____________
Before SMITH, FLEMING, and LALL, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-7.
The invention is an alphanumerical keyboard which is
programmed such that an alpha-character is generated only when
two adjacent keys are simultaneously depressed. A numeral is
generated only when a single key is depressed.
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Application No. 08/973,003
Independent claim 1 present in the application is reproduced
as follows:
1. An alphanumerical keyboard comprising a plurality of numeral
keys and function keys,
wherein the keyboard is programmed so that only simultaneous
depression of exactly two mutually adjacent keys will generate an
alpha-character and so that only depression of solely one numeral
key will generate a numeral,
wherein simultaneous depression requires both of the exactly
two mutually adjacent keys to be in a depressed state at the same
time.
References
The references relied on by the Examiner are as follows:
Prame 4,381,502 Apr. 26, 1983
Beers 5,007,008 Apr. 9, 1991
Danish 5,117,455 May 26, 1992
Rejections at Issue
Claims 1, 3, 5, and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Danish and Prame.
Claims 2, 4, and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Danish, Prame and Beers.
1 Appellant filed an Appeal Brief on October 20, 2000. We
will refer to this appeal brief as simply the Brief. Appellant
filed a reply brief on April 9, 2001. We will refer to this
reply brief as the Reply Brief.
2 The Examiner responded to Appellant's Appeal Brief on
February 9, 2001. We will refer to this answer as simply the
Answer.
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Appeal No. 2001-1602
Application No. 08/973,003
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the brief1 and the answer2 for the details
thereof.
OPINION
We will reverse the rejection of claims 1-7.
With regard to independent claims 1 and 7, Appellant argues
that Danish does not disclose that only the depression of exactly
two mutually adjacent keys will generate an alpha-character. See
Brief, page 4, lines 17-19. Appellant argues that since only
some of the Danish's alpha-characters are generated using two
keys, Danish does not disclose a keyboard where an alpha-
character is always and only generated by depressing two mutually
adjacent keys. See Brief, page 5, lines 7-8 and 14-17.
The Examiner argues that the Danish keyboard could be
modified by one of ordinary skill in the art to allow all the
alpha-characters to be generated using two adjacent keys. The
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Application No. 08/973,003
Examiner relies upon the following language in Danish to provide
evidence for motivation:
It will be recognized by those skilled in the art that
other key pad arrangements are used and that the matrix
or the present invention may be adapted for use with
other keypad configurations.
See Answer, page 8, lines 14-16. This language, contends the
Examiner, constitutes a suggestion for the modification of the
Danish keypad by using other keypad arrangements and
configurations. See Answer, page 8, lines 16-18.
In response to the Examiner's argument that the Danish
keyboard could be modified to form the claimed invention,
Appellant argues that there is no teaching or suggestion
available in Danish for the modification. See Brief, page 7,
lines 14-18. Appellant argues that since Danish teaches a 12 key
keyboard and that the keyboard of the claimed invention, as shown
in Appellant's Figure 1, has 20 keys, there is no motivation for
one of ordinary skill in the art to increase the number of keys
without a clear advantage being present. See Brief, page 8,
lines 1-7.
Obviousness can only be established by combining or
modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or
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Appeal No. 2001-1602
Application No. 08/973,003
motivation to do so found either explicitly or implicitly in the
references themselves or in the knowledge generally available to
one of ordinary skill in the art. The Federal Circuit has stated
that, "[t]he mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We agree with Appellant that the Examiner has failed to
point to any teachings in Danish that would suggest the
desirability of the modification to the Danish keyboard to
achieve the limitations of claims 1 and 7. Although we agree
with the Examiner that Danish suggests the modification of its
keypad, we do not find any suggestion in Danish to modify its
keypad to that of the claimed invention, wherein generation of
alpha-characters is limited to always depressing exactly two
adjacent keys.
The first step in our analysis is determining the scope of
Appellant's claim. As the Federal Circuit has pointed out, "the
name of the game is the claim." In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998).
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Application No. 08/973,003
In determining the scope of Appellant's claim, we find that
the only embodiment disclosed by the Appellant is a keyboard that
has twenty keys in order to implement a keyboard as claimed.
This finding is strengthened by Appellant's argument that the
keyboard of the claimed invention, as shown in Appellant's Figure
1, has 20 keys. See Brief, page 8, lines 1-3. Thus, we find
that the scope of Appellant's claim would not allow a reading on
a standard telephone keypad with twelve keys, such that
simultaneous depression of exactly two mutually adjacent keys
generates an alpha-character.
Next, we must determine whether Danish provides the
requisite hint or suggestion for modification to the claimed
invention. The objective of Danish is to improve upon the
standard telephone keypad, which has twelve keys, by providing a
method for entering both alphabetical and numerical characters
using the same set of keys. We find that Danish actually teaches
away from modifying the standard telephone keypad in order to
achieve the keyboard of the claimed invention, because the
modification would increase the number of keys from twelve, such
that the keyboard no longer would be a standard telephone keypad.
Thus, we agree with Appellant that there is no motivation,
implicit or explicit in Danish, to modify the
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Application No. 08/973,003
standard telephone keypads by substantially increasing its number
of keys as well as by re-arranging the key layout, so as to
provide generation of alpha-characters by depressing exactly two
adjacent keys. As such, we cannot sustain the Examiner's
rejection of claims 1 and 7 as being unpatentable under 35 U.S.C.
§ 103 in view of Danish and Prame.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 and 7 and dependent claims 2-6 under 35 U.S.C.
§ 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
MRF/LBG
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Appeal No. 2001-1602
Application No. 08/973,003
YOUNG & THOMPSON
745 SOUTH 23RD STREET
ARLINGTON VA 22202
Lesley
Appeal No. 2001-1602
Application No. 08/973,003
APJ FLEMING
APJ LALL
APJ JERRY SMITH
DECISION: REVERSED

Prepared: September 22, 2003
Draft Final
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