Ex Parte Kling

Board of Patent Appeals and Interferences

Aug 28, 2006

09561409 (B.P.A.I. Aug. 28, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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
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Ex parte Ralph M. Kling
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Appeal No. 2006-0717
Application No. 09/561,409
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ON BRIEF
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Before KRASS, BARRY, and BLANKENSHIP, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
A patent examiner rejected claims 52-57, 63-67, and 77-80. The appellant
appeals therefrom under 35 U.S.C. § 134(a). We reverse.
I. BACKGROUND
The invention at issue on appeal concerns keypads. (Spec., p. 1, l. 8.) Many
electronic devices feature a keypad for inputting data. Figure 1 of the appellant's
specification shows a keypad used primarily with phones. The keypad includes 12
keys: 10 keys for the numerals 0-9, a "#'' key, and a “*” key. Alphabetic characters are
also printed on the keys for the numerals 2-9. (Id. at ll. 11-16.)
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Application No. 09/561,409
Entering numerals via the keypad is straightforward. Because there are not
enough keys to represent all the letters of the alphabet individually, however, entering
alphabetic characters via the keypad can be cumbersome. (Id. at ll. 17-19.)
In contrast, the appellant's invention comprises a compact alphanumeric keypad
having a numeric mode and an alphabetic mode. Figure 3A of his specification shows
that his keypad features "interstitial" keys 309 and 311 between conventional keys 303,
305, and 307. (Appeal Br. at 3.) When pressed, each interstitial key generates a
distinct electrical signal. (Id.)
A further understanding of the invention can be achieved by reading the following
claim.
52. A keyboard having numeric and alphabetic modes, the keyboard
comprising:
a plurality of regular keys, wherein when pressed individually in the
numeric mode each regular key has a first output, and when pressed
individually in the alphabetic mode each regular key has a second output;
and
an interstitial key positioned between at least two adjacent regular
keys, wherein when pressed in the alphabetic mode the interstitial key
produces a third output.
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Application No. 09/561,409
Claims 52, 53, 55, 57, 63, 64, 67, 77, 79, and 80 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by U.S. Patent No. 4,994,992 ("Lapeyre"). Claims 54, 56, 65,
66, and 78 stand rejected under 35 U.S.C. § 103(a) as obvious over Lapeyre and U.S.
Patent No. 5,973,621 ("Levy").
II. OPINION
"Rather than reiterate the positions of the examiner or the appellant in toto, we
focus on the main point of contention therebetween." Ex parte Sehr, No. 2003-2165,
2005 WL 191041, at *2 (Bd.Pat.App & Int. 2004).. The examiner alleges, "Lapeyre
teaches an interstitial key positioned between at least two adjacent keys by teaching
how, for example, key 23 is positioned between keys (9 & F) and (6 & T) (see figure 4 at
23)." (Examiner's Answer at 4.) The appellant argues, "What is disclosed in Lapeyre
therefore is not an interstitial key, as this term is used in the claims and with this term
interpreted consistently with the specification, because it is simply an extension of a pair
of regular keys, rather than a wholly separate key positioned in the interstice between at
least two regular keys." (Reply Br. at 3.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the independent claims at issue to determine their scope. Second,
we determine whether the construed claims would have been obvious.
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A. CLAIM CONSTRUCTION
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "[c]laims must be read in view of the
specification, of which they are a part." Markman v. Westview Instruments, Inc., 52
F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed. Cir. 1995).
Here, independent claim 52 recites in pertinent part the following limitations: "an
interstitial key positioned between at least two adjacent regular key. . . ." Independent
claims 63 and 77 recite similar limitations. The appellant's specification explains that "it
is another aspect of the present invention to modify a conventional input keypad with a
small 'dummy' key 309 and 311 that can be inserted between the conventional keys of
the input keypad. . . ." (Spec., p. 6, ll. 1-3.) "[T]he dummy keys may be differentiated by
having a different physical size or shape. Furthermore," (id. at ll. 8-9), "the dummy keys
309, 311, 409, and 411 may be electrically active. In other words, the dummy keys
when depressed will cause its [sic] own distinct electrical signal to be output by the input
keypad." (Id. at p. 7, ll. 5-7.) Reading claims 52, 63, and 77 in view of the specification,
the limitations require a physical, interstitial key separate from and positioned between
adjacent, regular keys.
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B. ANTICIPATION DETERMINATION
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). "A claim
is anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing
Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264,
1270 (Fed. Cir. 1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983)). "[A]bsence from the reference of any claimed
element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Here, Lapeyre "relates to keyswitch type manual entry keyboards for both entry
of data and functional control of data processing operations." (Col. 1, ll. 16-18.) A "field
of twelve keys is operated by one hand as a typewriter using a single finger for each
entry to close a keyswitch (or to concurrently close a combination of keyswitches)."
(Col. 4, ll. 28-31.) On each key, "depressions 20 and raised surfaces 23 . . . permit [an]
operator to feel the proper finger positions and to know when the fingers are resting in a
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Application No. 09/561,409
home position or reaching. . . ." (Id. at ll. 31-34.) The raised ridges "of two side-by-side
keys, including sin 14, B and the like, are arranged on a flat surface junction line which
is felt by the operator when the finger is in place for a key stroke of this set of virtual
(two simultaneous keyswitch single) keys." (Id. at ll. 45-49.) In other words, "the set of
virtual keys for more than two simultaneous keyswitch closures by a single finger stroke
are located at the raised ridges 23, which are felt by the operator to assure that the
finger is properly registered." (Id. at ll. 49-53.) Accordingly, the reference's "virtual
keys" merely refer to the activation of "two or more [regular] keyswitches . . .
simultaneously. . . ." (Id. at ll. 43-44.) The virtual keys are not physical keys separate
from regular keys.
The absence of a physical, interstitial key separate from and positioned between
adjacent, regular keys negates anticipation. Therefore, we reverse the anticipation
rejection of claims 52, 63, and 77 and of claims 53, 55, 57, 64, 67, 79, and 80, which
depend therefrom.
C. OBVIOUSNESS DETERMINATION
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443,
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Application No. 09/561,409
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner asserts that "it is clear from figures 1, 2, and 6 of Levy that,
indeed, an interstitial key such as key 7 (figure 6 at 7) is positioned between keys (I, J,
M, N) (see figure 6 at 7, I, J, M, N)." (Examiner's Answer at 8.) The reference's "FIG. 1
shows a perspective view of a finger actuating the function 'number 7' in a telephone
keypad. . . . " (Col. 5, ll. 16-17.) More specifically, "[t]he finger 20 is shown pressing the
associated key caps 14 which actuate the number '7'." (Col. 6, ll. 11-13.) Like Lapeyre
virtual keys, Levy's number 7 refers to the simultaneous activation of regular keys. The
number 7 is not a physical key separate from regular keys.
Absent a teaching or suggestion of a physical, interstitial key separate from and
positioned between adjacent, regular keys, we are unpersuaded of a prima facie case of
obviousness. Therefore, we reverse the obviousness rejection of claims 54, 56, 65, 66,
and 78.
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III. CONCLUSION
In summary, the rejection of claims 52, 53, 55, 57, 63, 64, 67, 77, 79, and 80
under § 102(b) is reversed. The rejection of claims 54, 56, 65, 66, and 78 under
§ 103(a) is also reversed.
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Application No. 09/561,409
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
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Application No. 09/561,409
CHUN M. NG
BLAKELY, SOFOLOFF, TAYLOR & ZAFMAN, LLP
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