Ex Parte Howarth et al

Patent Trial and Appeal Board

Aug 28, 2014

11623284 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ARTHUR G. HOWARTH and JOHN A. TOEBES
_____________

Appeal 2012-04122
Application 11/623,284
Technology Center 2600
______________

Before, JEFFREY T. SMITH, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 23.
We affirm.
INVENTION
The invention is directed to a phone where images displayed on a
keypad are dynamically changed. See Abstract of Appellants’ Specification.
Claim 1 is illustrative of the invention and reproduced below:

1. A networked phone apparatus, the networked phone
apparatus being arranged to utilize Voice over Internet Protocol
(VoIP), comprising:
a dynamic keypad, the dynamic keypad including a
plurality of dynamic keys, the plurality of dynamic keys being
Appeal 2012-04122
Application 11/623,284
2

arranged to display images, wherein the dynamic keypad is
arranged to be used as a phone keypad; and
control channel logic, the control channel logic being
arranged to cause the images displayed on the plurality of
dynamic keys to be changed, the control channel logic further
being arranged to cause deactivation of any dynamic keys of the
plurality of dynamic keys on which images are not displayed.

REJECTIONS AT ISSUE

The Examiner has rejected claims 1 through 7, 22, and 23 under 35
U.S.C. § 103(a) as unpatentable over Kang (US 7,423,557 B2, Sept. 9, 2008)
and Stanek (US 5,936,554 Aug. 10, 1999). Ans. 5–8.1
The Examiner has rejected claims 8 through 21 under 35 U.S.C.
§ 103(a) as unpatentable over Kang. Ans. 8–10.

ISSUES
Claims 1 through 7 and 22
Appellants argue, on pages 9 through 13 of the Appeal Brief, that the
Examiner’s rejection of claims 1 through 7 and 22 is in error. These
arguments present us with the issues:
1) Did the Examiner err in finding the combination of Kang and
Stanek teaches logic arranged to cause deactivation of any
dynamic keys on which images are not displayed?

1 Throughout this opinion we refer to the Supplemental Appeal Brief dated
June 30, 2011, Reply Brief dated December 12, 2011, and the Examiner’s
Answer mailed on October 11, 2011.
Appeal 2012-04122
Application 11/623,284
3

2) Did the Examiner err in finding the combination of Kang and
Stanek teaches logic arranged to cause the images displayed on the
dynamic keys to be changed?

Claims 8 through 10
Appellants argue, on pages 13 through 16 of the Appeal Brief, that the
Examiner’s rejection of claims 8 through 10 is in error. These arguments
present us with the issue:
3) Did the Examiner err in finding it would have been obvious to use
the device of Kang with a voice over internet protocol (VoIP) ?

Claim 11
Appellants argue, on pages 16 through 21 of the Appeal Brief, that the
Examiner’s rejection of claim 11 is in error. These arguments present us
with the issues:
4) Did the Examiner err in finding it would have been obvious to use
the device of Kang with an interactive voice response system
(IVR) system where the first image is associated with the
Application?
5) Did the Examiner err in finding it would have been obvious to use
the device of Kang to display a second image on the first dynamic
key instead of the first image if it is determined that a second menu
is initiated?

Claims 15, 17, 19, 20, and 21
Appellants argue, on pages 21 through 24, and 28 through 31 of the
Appeal Brief that the Examiner’s rejection of claims 15, 17, 19, 20 and 21 is
Appeal 2012-04122
Application 11/623,284
4

in error. These arguments present us with the same issues as claim 8 (issue
3) discussed above.
Claim 16
Appellants argue, on pages 24 through 26 of the Appeal Brief that the
Examiner’s rejection of claim 16 is in error. These arguments present us
with one of the same issues as claim 11 (issue 4) discussed above.
Claim 18
Appellants argue, on pages 26 through 28 of the Appeal Brief that the
Examiner’s rejection of claim 18 is in error. These arguments present us
with one of the same issues as claim 11 (issue 5) discussed above.
Claim 23
Appellants argue, on pages 31 through 33 of the Appeal Brief that the
Examiner’s rejection of claim 23 is in error. These arguments present us
with the issue:
6) Did the Examiner err in finding the combination of Kang and
Stanek teach performing no action in response to an input if the
input is from the selection of an inactive dynamic key?

On pages 33 through 34 of the Brief, Appellants also argue the
Finality of the last office action is in error. These arguments are directed to
a petitionable issue and not an appealable issue. See In re Schneider, 481
F.2d 1350, 1356–57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894
(CCPA 1967). See also Manual of Patent Examining Procedure (MPEP)
(8th Ed., August 2001) § 1002.02(c), item 3(g) and § 1201. Thus, the relief
sought by Appellants, to have the Examiner issue a new office action, would
have been properly presented by a petition to the Director under 37 C.F.R.
Appeal 2012-04122
Application 11/623,284
5

§ 1.181 instead of by appeal to this Board. Accordingly, we have not
considered any of the issues raised by Appellants’ arguments.

ANALYSIS
The Examiner has provided a comprehensive response to Appellants’
arguments. We have reviewed the Examiner’s response and concur. We
add the following for emphasis.

Claims 1 through 7 and 22
Appellants’ arguments directed to the first issue center around the
assertion that Stanek’s dimming of keys that are inactive for a game does not
reasonably suggest not displaying an image on a key. Appeal Br. 11.
Appellants state Stanek teaches every key, except the space bar, has indicia
on it, thus, there is no suggestion to deactivate keys without images. Id. In
response, the Examiner finds Kang in Figure 14 depicts the feature of
inactive keys having no display. Ans. 12. Further, the Examiner finds that
in Stanek diming the keys are to give the appearance of a key without an
image and an inactive key is a deactivated key. Id. We have reviewed the
passages cited by the Examiner and agree with the Examiner’s findings with
respect to the first issue.
Appellants’ arguments directed to the second issue center around the
assertion that Kang does not teach control logic. The Examiner states that
Appellants’ Specification depicts, in Figure 5B, the control logic as a box
(i.e., the Appellants’ Specification does not identify a specific structure of
the control logic). Ans. 12. Based upon this claim construction, the
Examiner finds that Kang’s item 550, in Figure 5, teaches the claimed
control logic. Id. We concur and note that Kang identifies item 550 as a
Appeal 2012-04122
Application 11/623,284
6

control unit , which sets and changes the character or image to be displayed
on the key display unit. Col. 6, ll. 58–60. Thus, Appellants’ arguments
directed to the second issue have not persuaded us of error in the Examiner’s
rejection.
As Appellants’ arguments directed to the first two issues have not
persuaded us of error, we sustain the Examiner’s rejection of claims 1
through 7, 12 through 14and 22.

Claims 8 through 10
Appellants argue Kang does not disclose VoIP, and the only phone
disclosed by Kang is a mobile phone. Appeal Br. 14–15. The Examiner
responds stating that all phones are on a network and connected to some
switching network to communicate with other phones, thus, concluding that
Kang teaches a networked phone. Ans. 13. Further, the Examiner finds that
a VoIP phone is a “merely a phone with a particular protocol,” which the
Examiner finds is known. Id. We concur with the Examiner. We further
note that Appellants’ Specification which merely discusses VoIP by stating
“[n]etworked phones, which may be software and/or hardware based, are
often used in voice over Internet Protocol (Vo/IP) . . .” demonstrates that
Appellants’ disclosure is relying upon VoIP being known in the art. Spec. 3.
Accordingly, Appellants’ arguments directed to the third issue have not
persuaded us of error. Thus, we sustain the Examiner’s rejection of claims 8
through 10.

Claim 11
Appellants’ arguments directed to the fourth issue assert that Kang
does not disclose using the phone in an IVR system or connecting the phone
Appeal 2012-04122
Application 11/623,284
7

to an IVR system. Appeal Br. 18. We are not persuaded of error in the
Examiner’s rejection. We concur with the Examiner’s comprehensive
response on pages 12 through 14 of the Answer. The Examiner finds that
IVR systems are known. Ans. 13. We concur; this assertion is also
supported by Appellants’ disclosure on page 1 of the Specification. Further,
we concur with the Examiner’s findings that Kang teaches that the functions
and displays on indicia on the keys vary with the application. Id. 13–14.
Thus, Appellants’ arguments directed to the fourth issue have not persuaded
us of error in the Examiner’s rejection of representative claim 11.
Appellants’ arguments directed to the fifth issue center around Kang’s
Figure 6 not depicting two menus which are related. Appeal Br. 19. The
Examiner finds that Kang teaches that the menus displayed change
depending upon the functions associated with the application.. Ans. 14. We
concur with this finding by the Examiner. We further note that the
embodiment of Kang, in Figure 15 also shows the claimed two images (and
menus) displayed (e.g., if the user is in the TV menu (1301), and selects the
Video button, the video menu (1302), with different indicia on the keys, is
presented to the user.) Accordingly, Appellants’ arguments directed to the
fifth issue have not persuaded us of error in the Examiner’s rejection of
claim 11. This we sustain the Examiner’s rejection of claim 11.

Claims 15, 17, 19, 20, and 21
As discussed above Appellants’ arguments present us with the same
issue as claim 8 (issue 3). As discussed above, Appellant’s arguments
directed to the third issue have not persuaded us of error. Thus, we similarly
sustain the Examiner’s rejection of claims 15, 17, 19, 20, and 21.

Appeal 2012-04122
Application 11/623,284
8

Claim 16
As discussed above Appellants’ arguments present us with one of the
same issues as claim 11 (issue 4) discussed above. As discussed above,
Appellants’ arguments directed to the fourth issue have not persuaded us of
error. Thus, we similarly sustain the Examiner’s rejection of claim16.

Claim 18
As discussed above Appellants’ arguments present us with one of the
same issues as claim 11 (issue 5) discussed above. As discussed above,
Appellants’ arguments directed to the fifth issue have not persuaded us of
error. Thus, we similarly sustain the Examiner’s rejection of claim 18.

Claim 23
Appellants assert “Staneck [sic] does not disclose or reasonably
suggest performing no action in response to an input if it’s determined that
the input is the selection of a second dynamic key that has no image
displayed thereon.” Appeal Br. 33. The Examiner finds the combined
teachings of the reference is such that a key without an image is an inactive
key (keys without functions have no images) thus pressing an inactive key
(without an image) would result in no action. Ans. 16–17. We concur and
accordingly are not persuaded of error in the Examiner’s rejection by
Appellants’ arguments. Thus, we sustain the Examiner’s rejection of claim
23.
DECISION
The decision of the Examiner to reject claims 1 through 23 is
affirmed.
Appeal 2012-04122
Application 11/623,284
9

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

tj