Ex Parte JEON et al

Patent Trial and Appeal Board

Aug 29, 2016

11764963 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111764,963 06/19/2007
68103 7590 08/31/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Jae-Hyoung JEON
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.
0201-0041 6612
EXAMINER
CHOWDHURY, AFROZA Y
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAE-HYOUNG JEON, HARK-SANG KIM, and
SEOK-HYOPARK
Appeal2015-004097
Application 11/764,963
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 21-25, 27-33, 35, and 36. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appeal2015-004097
Application 11/764,963
STATEMENT OF THE CASE
Appellants' invention drives a portable terminal's touchpad.
Spec. i-f 2. In particular, the invention maintains the terminal's user interface
with lower battery consumption than conventional methods. Id. i-f 72. To
accomplish this, the invention checks whether a unit is in sleep mode before
sending an activating signal. Id. i-f 69. This check avoids sending activating
signals to units that are already active. Id.i-fi-f 69--70. Claim 21, reproduced
below, is illustrative:
21. An apparatus for using a portable terminal, the apparatus
compnsmg:
a sensor unit for outputting an interrupt signal if pressure
on the sensor unit is sensed in a sleep mode;
a first control unit for outputting an activating signal to
activate a second control unit when the outputted interrupt signal
is received; and
the second control unit, activated upon receiving the
activating signal, for controlling a touchpad in an active mode,
wherein the sensor unit outputs the interrupt signal for
activating the first control unit corresponding to pressure of a
dome switch included in the sensor unit.
THE REJECTION
The Examiner rejected claims 21-25, 27-33, 35, and 36 under
35 U.S.C. § 103(a) as unpatentable over Orr (US 7,606,552 B2; patented
Oct. 20, 2009) and Zadesky (US 2005/0052425 Al; published Mar. 10,
2005). Non-Final Act. 3-7. 1
1 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
May 12, 2014 ("Non-Final Act."); (2) the Appeal Brief filed September 29,
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Application 11/764,963
CONTENTIONS
The Examiner finds that Orr discloses every recited element of
claim 21 except for the sensor unit outputting the interrupt signal
corresponding to dome switch pressure, but relies on Zadesky as teaching
this feature in concluding the claim would have been obvious. Non-
Final Act. 3-5. In particular, the Examiner finds that Orr's trigger circuit
382 and motion sensor 32 correspond to the recited sensor unit. Id. at 3.
According to the Examiner, Orr's trigger circuit 3 8 outputs a signal
corresponding to the interrupt signal. Id. (citing Orr, col. 7, 11. 3-28). In the
Examiner's view, Orr's monitoring circuit 36 and microprocessor 18
correspond to the recited first and second control units, respectively. Non-
Final Act. 3--4. The Examiner also finds that Orr's monitoring circuit 36
sends a wakeup signal 66, corresponding to the recited activating signal. Id.
Appellants argue that Orr does not output the recited activating signal
when an interrupt signal is received. App. Br. 9-13. In Appellants' view,
claim 21 requires "promptly" activating the second unit. Id. at 12.
According to Appellants, Orr detects movement and further waits for an
indication from an input device before transmitting the activation signal to
the microprocessor. Id. That is, claim 21, in Appellants' view, excludes
2014 ("App. Br."); (3) the Examiner's Answer mailed December 24, 2014
("Ans."); and ( 4) the Reply Brief filed February 19, 2015 ("Reply Br.").
2 Although the Examiner characterizes Orr's numeral 38 as a "trigger unit"
in various quoted passages (Non-Final Act. 3; Ans. 2), Orr labels this
element as a "trigger circuit." See, e.g., Orr, col. 6, 1. 42. Therefore, we
refer to this element using Orr's nomenclature, and treat any error associated
with this inconsistency as harmless.
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Application 11/764,963
Orr's process because it contains an additional, intervening indication from
the input device. Id. at 11-13.
Appellants further contend that Orr does not activate a second control
unit upon receiving the activating signal for controlling a touchpad in an
active mode, as recited in claim 21. Id. at 13-14; Reply Br. 3--4. According
to Appellants, Orr merely performs a process for outputting signals to the
display or an I/O device, but Orr does not control an active touchpad.
App. Br. 11. In Appellants' view, Orr's monitoring circuit sends a wakeup
signal to the microprocessor after receiving the input device's signal, which
shows that Orr's second control unit is not in active mode, as claimed.
Reply Br. 4.
Appellants further contend that neither reference teaches or suggests
the recited activation corresponding to pressure on a dome switch.
App. Br. 4--8; Reply Br. 2-3. Appellants acknowledge that Zadesky is cited
to teach a dome switch. App. Br. 4. But Appellants argue that Zadesky's
dome switch is only used in the conventional way. Id. at 5. According to
Appellants, Zadesky' s dome switch is used to make selections or issue
commands, not to activate a control unit. Id. at 6-8; see also Reply Br. 2-3.
ISSUES
Under§ 103, has the Examiner erred by finding that Orr and Zadesky
collectively would have taught or suggested:
I. outputting an activating signal when an interrupt signal is received,
as recited in claim 21?
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Application 11/764,963
II. activating a second control unit upon receiving the activating
signal, the unit for controlling a touchpad in an active mode, as recited in
claim 21?
II. activating the first control unit corresponding to pressure of a dome
switch, as recited in claim 21?
ANALYSIS
I
We see no error in the Examiner's broad, but reasonable, construction
of outputting an activating signal to activate a second control unit when the
outputted interrupt signal is received. Non-Final Act. 3--4.
The Specification describes that if an interrupt signal is input to the
first control unit, then the first control unit outputs the activating signal.
Spec. i-f 35, cited in App. Br. 2. That is, although the activating-signal output
is conditioned upon the interrupt-signal input, this example does not require
that the output occurs immediately after the input. See Spec. i-f 35. In
another example, if an interrupt signal is input to the first control unit, an
intervening step occurs-i.e., the first control unit is converted to active
mode-then the first control unit outputs the signal. Id. i-f 68, cited in
App. Br. 2. Although these examples inform our construction, the
Specification does not limit our interpretation to outputting the activating
signal at the time that the interrupt signal is received.
Under its plain meaning, the term "when" simply means at the time or
in the event that. THE RANDOM HOUSE COLLEGE DICTIONARY 1498 (Revised
ed. 1982). So a broad, but reasonable, interpretation of the first control
unit's function is outputting an activating signal in the event that, but not
necessarily at the time, the interrupt signal is received.
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Appeal2015-004097
Application 11/764,963
Given this interpretation, the Examiner did not err in finding that
Orr's monitoring unit 36 outputs wakeup signal 66 when signal 40 is
received from trigger circuit 38. Non-Final Act. 3.
Specifically, Orr's trigger circuit 38 detects movement. Orr, col. 7,
11. 3---6, cited in Non-Final Act. 3. Trigger circuit 38 then sends signal 40 to
monitoring circuit 36. Orr, col. 6, 11. 48-51; see also id., Fig. 3. Monitoring
circuit 36 sends wakeup signal 66 to microprocessor 18 in response to a
signal from input device 34. See, e.g., id., col. 12, 11. 4--12; id., Fig. 5, item
502. Signal 66 activates microprocessor 18. Id., col. 11, 11. 53-55. That is,
Orr discloses some intervening steps between the reception of Orr's signal
40 (the recited interrupt signal) and the output of signal 66 (the recited
activating signal). See App. Br. 9-13.
But the claim does not preclude Orr's intervening steps. Rather, the
claim's preamble employs the transition word, "comprising." "Comprising"
is a term of art that does not exclude additional, unrecited elements like
Orr's signal from input device 34. See Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501 (Fed. Cir. 1997). And by the plain meaning of "when,"
Orr's signal 66 (the activating signal) need only be output in the event, but
not necessarily at the time, that Orr's signal 40 (the interrupt signal) is
received.
Nor do we find any requirement in the claim that the second unit is
activated "promptly," as Appellants argue (App. Br. 12). Even so, the
Specification does not provide any specific disclosure or examples for
determining what constitutes such promptness. Accordingly, we are
unpersuaded by Appellants' arguments (1) that the claim excludes Orr's
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Application 11/764,963
additional, intervening indication from input device 34, or (2) that claim 21
requires "promptly" activating the second unit. See id. at 11-13.
II
We are also unpersuaded that Orr's second control unit
(microprocessor 18) does not control the touchpad. Id. at 10-11, 13-14.
Appellants note that Orr's microprocessor 18 generates an output to
auxiliary I/O device 106. Id. at 11. Accord Orr, col. 5, 11. 42--44. The
Examiner, however, finds that Orr's auxiliary I/O device 106 can be a
touchpad. Ans. 5 (citing id., col. 5, 11. 38--48). And here, Appellants have
not distinguished Orr's output (Orr, col. 5, 11. 42--44) from the recited
control. See App. Br. 14; Reply Br. 3--4. So on this record, we are not
persuaded that Orr lacks the recited touchpad control.
Furthermore, Appellants argue that Orr's microprocessor 18 is not in
active mode when controlling the touchpad. App. Br. 13-14; Reply Br. 3--4.
Orr, however, discloses a low-power mode and a normal-operating mode.
See Orr, col. 6, 11. 15-17. Orr places the device in low-power mode after a
period of inactivity. Id., col. 6, 11. 19-23. In contrast, Orr's data-
communication mode is characterized by activity, including signals received
from input devices and elsewhere. See id., col. 5, 11. 33-52. Furthermore,
the output that the Examiner cites to teach the recited control is part of the
activity occurring in data-communication mode. Ans. 5 (citing Orr, col. 5,
11. 38--48). On this record, the Examiner's finding that Orr's microprocessor
18 is in active mode when controlling the touchpad (Ans. 4) is reasonable.
III
We are also unpersuaded that neither reference teaches or suggests
that the interrupt signal corresponds to the recited dome-switch pressure.
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Application 11/764,963
See App. Br. 5-8; Reply Br. 2-3. To support this argument, Appellants
discuss how Zadesky uses dome switches. See App. Br. 5-8. But the
Examiner proposes substituting Zadesky's dome switch in Orr's system.
Non-Final Act. 5. So the relevant inquiry is not whether Zadesky uses its
dome switch to output an interrupt signal for activating the first control unit.
Rather, the issue here is whether it would have been obvious to employ
Zadesky' s dome switch as a specific implementation of Orr's generically
disclosed input device.
Orr's motion sensor 32 works with the triggering circuit to output
signal 40 (Orr, col. 7, 11. 3-8, cited in Non-Final Act. 3}-i.e., the recited
interrupt signal (Non-Final Act. 3). Notably, Orr discloses several
exemplary alternatives to motion sensor 32. See Orr, col. 9, 11. 8-20. For
example, Orr's motion sensor 32 could be a spring-loaded switch, a keypad,
or any other signal-generating device responsive to reactivation conditions.
Id., col. 9, 11. 8-20.
We see nothing on this record that suggests, for example, Zadesky's
dome switch would be incapable of responding to reactivation conditions.
Appellants have not shown, for example, that replacing a key or spring-
loaded switch with a dome switch would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans. See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Nor have Appellants shown that employing Zadesky's particular input
device would render the prior art unsuitable for its intended purpose so as to
teach away from such an approach. See In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984).
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Application 11/764,963
In the rejection, the Examiner proposes using Zadesky's dome switch
to receive user input as a depressible touchpad. See Non-Final Act. 5. That
is, the dome switch performs the same function in the combination as it does
separately with no change in its operation. In this way, the Examiner
combines prior art elements according to known methods to yield
predictable results-an obvious combination. See KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007).
Accordingly, we sustain the Examiner's rejection of claim 21, and
claims 22-25, 27-33, 3 35, and 36, not argued separately with particularity.
See App. Br. 14--15; Reply Br. 4.
CONCLUSION
The Examiner did not err in rejecting claims 21-25, 27-33, 35, and 36 under
§ 103.
3 \Ve note in passing that claim 29's steps are performed only if the unit is in
sleep mode. That is, every step of claim 1 is conditioned either expressly or
implicitly on the limitations of the claim's first clause, which outputs an
interrupt signal if pressure on the sensor unit is sensed in a sleep mode. In
fact, Appellants' invention operates by first checking whether the control
unit is in sleep mode to avoid sending activating signals to units in the active
mode. See Spec. i-f 70. Notably, the Federal Circuit has held that "[i]f the
condition for performing a contingent step is not satisfied, the performance
recited by the step need not be carried out in order for the claimed method to
be performed." Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 F.
App'x 603, 607 (Fed. Cir. 2007) (unpublished); see also Applera Corp.-
Applied Biosystems Grp. v. Illumina, Inc., 375 F. App'x 12, 21
(Fed. Cir. 2010) (unpublished) (affirming a method claim's interpretation as
including a step that need not be practiced if the condition for practicing the
step is not met). The Examiner, however, did not articulate such a
construction. See Non-Final Act. 7. Nor will we speculate in that regard
here in the first instance on appeal.
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Appeal2015-004097
Application 11/764,963
DECISION
The Examiner's decision rejecting claims 21-25, 27-33, 35, and 36 is
affirmed.
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).
AFFIRMED
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