Ex Parte Lazaridis et alDownload PDFPatent Trial and Appeal BoardOct 27, 201410679577 (P.T.A.B. Oct. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MIHAL LAZARIDIS, ROBERT J. LOWLES, and JASON GRIFFIN ____________________ Appeal 2012-006725 Application 10/679,5771 Technology Center 2600 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1 and 3–11. Appellants have previously canceled claim 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Research in Motion Limited. App. Br. 3. Appeal 2012-006725 Application 10/679,577 2 STATEMENT OF THE CASE2 The Invention Appellants' invention relates to "[a] mobile device having a keyboard that is selectively illuminated to indicate an active portion." Abstract. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases and formatting added): 1. A mobile device for executing at least two applications, having a keyboard, the mobile device comprising: an input mode selector configured to receive, from one of the at least two applications, a signal indicative of a default active input mode automatically in response to execution of the one of the at least two applications, the input mode selector configured to determine an active input mode of the keyboard of the mobile device in accordance with the received signal indicative of the default active input mode, the keyboard having a plurality of keys, each of the plurality of keys having at least two pre-existing indicia depicted thereon; and a backlight controller configured to receive a signal indicative of the active input mode from the input mode selector, the backlight controller, responsive to the signal indicative of the active input mode provided by the input mode selector, configured to 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Aug. 19, 2011); Reply Brief ("Reply Br.," filed Jan. 11, 2012); Examiner's Answer ("Ans.," mailed Nov. 14, 2011); Final Office Action ("Final Act.," mailed Apr. 21, 2011); and the original Specification ("Spec.," filed Oct. 6, 2003). Appeal 2012-006725 Application 10/679,577 3 control at least one light source to selectively illuminate one of the at least two pre-existing indicia on the plurality of keys, the illuminated indicia defining an active portion of the keyboard of the mobile device. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Muurinen US 5,408,060 Apr. 18, 1995 Adachi et al. ("Adachi") US 6,693,272 B2 Sept. 20, 2001 Zhao et al. ("Zhao") US 2002/0054676 A1 May 9, 2002 Rejections on Appeal R1. Claims 1, 3–7, and 9–11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Muurinen and Zhao. Ans. 4. R2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Muurinen, Zhao, and Adachi. Ans. 7. GROUPING OF CLAIMS Based on Appellants’ arguments (App. Br. 9 and 11–18), we decide the appeal of rejection R1 of claims 1, 3–7, and 9–11 on the basis of representative claim 1. We address remaining claim 8 under rejection R2, not argued separately, infra. Appeal 2012-006725 Application 10/679,577 4 ISSUE Appellants argue (App. Br. 11–18; Reply Br. 2–3) the Examiner's rejection of claims 1, 3–7, and 9–11 under 35 U.S.C. § 103(a) as being obvious over the combination of Muurinen and Zhao is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a mobile device having an input mode selector configured to: "receive, from one of the at least two applications, a signal indicative of a default active input mode automatically in response to execution of the one of the at least two applications," and "determine an active input mode of the keyboard of the mobile device in accordance with the received signal indicative of the default active input mode," as recited in claim 1? ANALYSIS We only consider those arguments actually made by Appellants in reaching this decision, and we do not consider arguments which Appellants could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We disagree with Appellants' arguments with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner's Answer in response to Appellants' arguments. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appeal 2012-006725 Application 10/679,577 5 Appellants' Arguments We summarize Appellants’ five principal arguments A1–A5 as follows, and address each argument seriatim. Argument A1: "Muurinen's input mode selector is a manual input mode selector," and automatic input mode selection, as claimed, is not contemplated (App. Br. 12–13). Response to Argument A1 The Examiner did not cite Muurinen as teaching or suggesting an automatic input mode selection. Instead, the Examiner relies upon Zhao as teaching or at least suggesting an automatic input mode selector such that the combination of Muurinen and Zhao teaches or suggests the invention recited in claim 1. Ans. 9. In particular, the Examiner finds, and we agree, Muurinen teaches a manual input selector, and Zhao's mobile phone has a plurality of keys, each with at least two indicia thereon such as characters and numerals, as well as an automatic input mode selector used to receive signals from at least two applications indicating the default active input mode, depending on which one of the programs is being executed. App. Br. 4–5. Zhao teaches: The mode of operation (data, telephony or joint) for the multifunctional keyboard 51 is preferably determined by the keyboard mode control software module 54 based on either the current requirements of the device 50, a selection by the user of the device 50, or possibly based on some other triggering event. . . . For instance, if an address book application is executed, the keyboard mode control software 54 will preferably automatically set the multifunctional keyboard 51 to a preferred mode. Appeal 2012-006725 Application 10/679,577 6 Zhao ¶ 29 (emphasis added). The Examiner provides articulated reasoning with a rational underpinning for combining the references in the manner suggested, as required by KSR.3 See Ans. 11. Thus, we find Zhao teaches or at least suggests an automatic mode selection which, when combined with Muurinen, teaches or at least suggests the disputed limitations. We further note, "one cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." Id. at 425. Accordingly, we find Appellants' argument A1 is not persuasive. Argument A2: "Zhao's keyboard mode control software module is functionally different from the input mode selector as claimed in claim 1" because Zhao assigns functionality to multifunctional keys based on the device's operational mode, and does not teach or suggest the keyboard mode control changes the illumination of active portions of the keys (App. Br. 13–14). 3 The U.S. Supreme Court has held "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Appeal 2012-006725 Application 10/679,577 7 Response to Argument A2 As an initial matter of claim interpretation, we conclude device claim 1 recites multiple statements of intended use of the recited input mode selector: "an input mode selector configured to [perform intended functions]," and "a backlight controller configured to [perform intended functions]." "An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although ''[s]uch statements often . . . appear in the claim's preamble . . . ,'' In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. This reasoning is applicable to the contested functional limitation of: the "input mode selector configured to receive . . . a signal . . . automatically in response to [a condition]," and "configured to determine [a mode according to the received signal]" (Claim 1 (emphasis added)), which does not further limit the structure of the claimed mobile device.4 Therefore, a 4 The patentability of an apparatus claim "depends on the claimed structure, not on the use or purpose of that structure." Catalina Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Superior Industries, Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: "[A] system claim generally covers what the system is, not what the system does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had Appeal 2012-006725 Application 10/679,577 8 question arises as to how much patentable weight, if any, should be given to the contested functional limitations, particularly the argued limitations with respect to the claimed input mode selector. Even assuming, arguendo, our reviewing court may give the contested functional limitations full patentable weight, as pointed out above, we note the test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); and see Keller, 642 F.2d at 425 (emphasis added). We further note the Examiner cites Zhao for its teaching of the concept that automatic mode selection depending on which of at least two applications is active, was known in the art. Ans. 12. We agree with the Examiner's findings. Argument A3: "Muurinen and Zhao, alone or in combination, fail to teach or suggest all claimed elements" because Muurinen changes input mode by manual (user) actuation, and illumination of an active portion of the keys is not automatically changed based on a received signal from an application, while Zhao teaches key functionality being assigned based upon the active application, and does not teach or suggest controlling the illumination of the keys on the keyboard (App. Br. 14–15). Response to Argument A3 We find Appellants' argument A3 is closely related and perhaps redundant when Arguments A1 and A2 are given consideration, as discussed conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)). Appeal 2012-006725 Application 10/679,577 9 above. Again, we find Appellants are arguing the references separately, and are not considering what the prior art combination set forth by the Examiner (Ans. 4–6) would have suggested to a person of ordinary skill in the art. Accordingly, we find Argument A3 is not persuasive. Argument A4: "Examiner's proposed modification would change the principle of operation of Muurinen's input mode selector" because [i]n order for the manual input mode selector of Muurinen to function as the input mode selector of claim 1, its fundamental principle of operation as a mechanical switch that responds to manual actuation has to be changed to a receiver capable of receiving a signal indicative of the default active input mode automatically in response to the execution of one of the at least two applications, which was not contemplated at all by Muurinen. App. Br. 15–16. Response to Argument A4 The Examiner finds, and we agree, "the suggested substitution and modification of the input device of Muurinen (based on the teachings of Muurinen and Zhao) would improve the functionalities of the device of Muurinen and would not change the principle of operation of said device." Ans. 12. Appellants do not rebut this finding by the Examiner, except to allege, in the Reply Brief, "modifying the manual input mode selector of Muurinen to function as the input mode selector claimed in claim 1 would require the wholesale replacement of the mechanical switch, and would change the fundamental principle of operation of Muurinen, which is predicated on manual actuation of a manual switch." Reply Br. 3. Appeal 2012-006725 Application 10/679,577 10 Based upon our review of the record before us, we find Appellants have failed to present substantive arguments supported with specific factual evidence of sufficient character and weight to persuade us of error regarding the Examiner's findings of facts and ultimate legal conclusion of obviousness. We note Appellants' assertions in Argument A4 amount to unsupported attorney argument, and therefore we give them little weight. Mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at http://www.uspto.gov/web/offices/ dcom/bpai/its/fd09004693.pdf. Therefore, we do not find error in the Examiner's reliance on the combined teachings and suggestions of Muurinen and Zhao in rejecting claim 1. Argument A5: "Examiner's rationale for combining Muurinen and Zhao is improper" (App. Br. 16) because "Muurinen deals with illumination of keys with multiple indicia, while Zhao deals with assigning functionality to the keys of a multifunctional keyboard [and t]he two references do not teach or suggest 'the solution to the same problem' as asserted by the Examiner," (App. Br. 17 (citing Final Act. 7)) and "the only plausible reason for a person to attempt a combination of Muurinen and Zhao would be to take the device as claimed in claim 1 as a blueprint for piecing together Muurinen and Zhao to defeat . . . patentability of the [claimed] device." App. Br. 18. Appeal 2012-006725 Application 10/679,577 11 Response to Argument A5 Appellants argue, inter alia, the Examiner rejected claim 1 based upon impermissible hindsight, and that the two prior art references, Muurinen and Zhao, allegedly do not solve the same problem. Id. As mentioned above, KSR requires the Examiner to provide articulated reasoning with a rational underpinning for combining references under § 103. See KSR, 550 U.S. at 418. We find the Examiner has met his burden, as discussed, supra. Further, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR, 550 U.S. at 419. For a prima facie case of obviousness to be established, the reference need not recognize the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."). As for Appellants' hindsight portion of the argument, we see the hindsight question before us as a balancing test, i.e., whether the Examiner's proffered combination of references is merely: (1) "the predictable use of prior art elements according to their established functions" (KSR, 550 U.S. at 417), consistent with common sense; or, (2) would an artisan reasonably have combined the cited references in the manner proffered by the Examiner Appeal 2012-006725 Application 10/679,577 12 but for having the benefit of the claim to use as a guide (i.e., impermissible hindsight)? After reviewing the respective teachings and suggestions of the cited references, we find the evidence more strongly supports the first prong of the balancing test. It is our view that it would have been obvious to an artisan having general knowledge of data entry and mode switching in connection with multifunctional keyboards to combine the manual selection mode of Muurinen with the automated functionality of Zhao for the reasons articulated by the Examiner. Ans. 5–6, 10–11. As discussed above, the Examiner provided sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Appellants have not demonstrated that the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 22, "X. EVIDENCE APPENDIX . . . None"). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Appeal 2012-006725 Application 10/679,577 13 Accordingly, we sustain the Examiner's obviousness rejection of independent claim 1 and claims 3–7 and 9–11 which fall therewith. § 103(a) Rejection R2 of Claim 8 In view of the lack of any substantive or separate arguments directed to the obviousness rejection of claim 8 under § 103 over the combination of Muurinen, Zhao, and Adachi (see App. Br. 9), we sustain the Examiner's rejection of claim 8, as it falls with its independent claim 1. Arguments not made are considered waived. Our reviewing court states: When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection . . . . [T]he Board may treat any argument with respect to that ground of rejection as waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008). Further, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Accordingly, we sustain the rejection of claim 8. REPLY BRIEF To the extent Appellants advance new arguments in the Reply Brief (Reply Br. 2–3) not in response to a shift in the Examiner's position in the Answer, we note that "[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived."). Appeal 2012-006725 Application 10/679,577 14 CONCLUSION The Examiner did not err with respect to the obviousness rejections of claims 1 and 3–11 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1 and 3–11. 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) (2011). AFFIRMED tj Copy with citationCopy as parenthetical citation