Ex Parte Khoo et al

Board of Patent Appeals and Interferences

Feb 23, 2010

10264966 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GEOK PEI KHOO and WAN YEN TAN
____________________

Appeal 2009-003966
Application 10/264,966
Technology Center 2100
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Decided: February 24, 2010
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY, III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003966
Application 10/264,966

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-20 under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
According to Appellants, the invention relates to an “improved user
interface for a telephone dialer application in a portable device and a method
for implementing a display area for the device” (Spec. 11, ll. 4-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A method of implementing a display area of a
portable device having a soft input panel interface for a dialer,
comprising:

displaying the soft input panel on a first part of the
display area, the panel having a plurality of soft button sections
and an input display section for displaying an input; and

displaying a separate application on a second part of the
display area for allowing simultaneous display of and access to
the dialer and the separate application.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Goetter, Sprint Introduces Affordable, Customizable New Phone from
Kyocera, Kyocera Wireless Corp., Oct. 24, 2000,
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http://www.kyocerawireless.com/news/20001024.htm. (hereinafter
“Kyocera”).

Hsing, An Interactive Touch Phone for Office Automation, 23 IEEE
Communications Magazine 21-26 (1985) (hereinafter “IEEE”)

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over IEEE in view of Kyocera.

II. ISSUE
Did the Examiner fail to make a prima facie case for the proposed
modification of IEEE in view of Kyocera. The issue turns on whether the
Examiner has articulated a reason for the proposed modification of the IEEE
device, in view of Kyocera, to achieve a “simultaneous display of and access
to the dialer and the separate application” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
IEEE
1) IEEE discloses an “interactive Touch Phone” in which a “user
invokes a service feature by simply touching the appropriate boxes drawn on
a flat-panel display (relabelable buttons)” by a microprocessor (p. 21).
2) The IEEE device display has “[t]ree-structured menus” that
guide the “user, step by step, to the desired end result” (p. 21) and include a
main menu with a “dial” button for accessing a dialer (p. 22; Figs. 1 and 2).
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Kyocera
3) Kyocera discloses a cellular phone having a keypad for entering
numbers, letters, and symbols (i.e., a dialer) and a display screen for
viewing, in part, directory and menu applications (pp. 4-5 and 11).

IV. PRINCIPLES OF LAW
35 U.S.C. § 103(a)
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
In KSR, the Supreme Court reaffirmed that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.” 550 U.S. at 421.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421.
Although common sense directs caution as to a patent
application claiming as innovation the combination of two
known devices according to their established functions, it can
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be important to identify a reason that would have prompted a
person of ordinary skill in the art to combine the elements as
the new invention does.

Id. at 401.

V. ANALYSIS
As to independent claim 1, Appellants argue that the Examiner
“appears to assert that IEEE discloses all the limitations of Claim 1 except
for the limitations of ‘a portable device’ and for allowing the ‘simultaneous
display of and access to the dialer and the separate application’” (App. Br. 4;
emphasis omitted). Appellants also argue that there is no motivation or
suggestion to modify the IEEE device, in view of Kyocera, to include these
features (App. Br. 6). Appellants contend, in part, that “the IEEE device
already includes a user interface (i.e., Touch Screen) for the dialer
application” and the “addition of a keypad to navigate through the IEEE
Device would be redundant and unnecessary in the IEEE device” (App. Br.
6). That is, there is no reason to add a keypad to the IEEE device in view of
Kyocera.
The Examiner finds that “Kyocera teach a phone device similar to that
of IEEE Communication,” but “[i]n addition, Kyocera further teach a
portable device that allows one to dial or access applications” (Ans. 4). That
is, the Examiner applies IEEE to all limitations of claim 1, except for
applying Kyocera to the recited “portable device” and “simultaneous display
of and access to the dialer and the separate application.” The Examiner
states that “[o]ne would have been motivated to make such a combination
because a more user-friendly portable device that allows simultaneous
display of [and] access to a dialer and separate application would have been
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obtained, as taught by Kyocera” (Ans. 4).
Thus, the issue we address on appeal is whether the Examiner failed
to make a prima facie case for the proposed modification of IEEE in view of
Kyocera. The issue turns on whether the Examiner has articulated a reason
for the proposed modification of the IEEE device, in view of Kyocera, to
achieve a “simultaneous display of and access to the dialer and the separate
application” (claim 1).
Based upon the record before us, it is our view that the Examiner’s
proffered rationale of “allow[ing] simultaneous display of [and] access to a
dialer and separate application” is insufficient. (Ans. 4). We find the
Examiner’s rationale is impermissibly based on reconstructive hindsight, as
the Examiner has provided only “ex post reasoning” for the proposed
modification. See KSR, 550 U.S. at 421. In particular, we find the
Examiner has not provided a sufficient rationale explaining why one of
ordinary skill in the art would have made the proposed modification, i.e.,
added Kyocera’s keypad to the IEEE device at the time of the invention.
The Examiner also mentions the “obvious to try” and “common
sense” rationales. Even assuming it would have been “obvious to try” the
proposed modification, the Examiner must articulate a reason as to why that
is so, e.g., show a design need and finite number of identified solutions. Id.
at 421. By the same token, though “common sense directs caution as to …
the combination of two known devices according to their established
functions,” the Examiner must “identify a reason that would have prompted
a person of ordinary skill in the art to combine the elements as the new
invention does.” Id. at 401. Thus, the “obvious to try” and “common sense”
rationales require an articulated reason for the proposed modification. We
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find the Examiner’s rationale for the proposed modification to be
unconvincing.
We find that IEEE and Kyocera disclose no reason for the proposed
modification. IEEE discloses an “interactive Touch Phone” having a touch-
sensitive display with command buttons drawn by a microprocessor (FF 1).
The display’s “relabelable buttons” and “[t]ree-structured menus” guide a
user step-by-step to selectable features (FF 1-2), which include a dialer
accessed via the main menu’s “dial” button (FF 2). Kyocera discloses a
cellular phone having a keypad (i.e., a dialer) and a display screen for
viewing applications (FF 3). We find no properties of the IEEE and
Kyocera devices, e.g., a disclosed deficiency of the IEEE device, that would
have reasonably led an artisan to add another dialer (as taught by Kyocera)
to the IEEE device but for having the claimed invention as a guide to do so.
For the above reasons, we find that neither the applied art nor the
rejection provides a sufficient rationale as to why one of ordinary skill in the
art would have made the proposed modification. Accordingly, Appellants
have shown the Examiner erred in rejecting claim 1. We therefore reverse
the rejection of claim 1, and dependent claims 2-8 falling therewith, under
35 U.S.C. § 103(a) as being unpatentable over IEEE in view of Kyocera.
As independent claims 9 and 19 are rejected under the same reasoning
as claim 1 (Ans. 4), we also reverse the rejection of claims 9 and 19, and
dependent claims 10-18 and 20 falling therewith, under 35 U.S.C. § 103(a)
as being unpatentable over IEEE in view of Kyocera.

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VI. CONCLUSION
Appellants have shown the Examiner erred in finding that claims 1-20
are unpatentable over the teachings of IEEE in view of Kyocera.

VII. DECISION
The Examiner’s decision rejecting claims 1-20 under 35 U.S.C. §
103(a) is reversed.
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).

REVERSED

peb

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