Ex Parte Lazaridis et alDownload PDFPatent Trial and Appeal BoardDec 16, 201411941774 (P.T.A.B. Dec. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MIHAL LAZARDIS, JASON GRIFFIN, and NORMAN LADOUCEUR ____________________ Appeal 2012-010887 Application 11/941,774 Technology Center 2600 ____________________ Before JOESPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-010887 Application 11/941,774 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–9, 14, 17–21, and 24–28. Claims 10–13, 15, 16, 22, and 28 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Exemplary Claims Exemplary claims 1 and 24 under appeal, with emphases added to disputed portions of the claims, read as follows: 1. An electronic device comprising: a base; a touch screen display movable relative to the base, the touch screen display including a display and a touch-sensitive overlay overlying the display; first and second switches disposed between the base and the display and configured to: actuate the first switch in response to application, anywhere on the touch-sensitive overlay, of a first force causing a first pivoting action of the touch-sensitive overlay and the display relative to the base while stopping actuation of the second switch; actuate the second switch in response to application, on the touch-sensitive overlay during application of the first force, of a second force causing a second pivoting action of the touch-sensitive overlay and display relative to the base. 24. A touch screen display comprising: a base; Appeal 2012-010887 Application 11/941,774 3 a display movable relative to the base; a touch-sensitive overlay overlying the display; first and second switches disposed between the base and the display and configured to: actuate the first switch in response to application, at a first location anywhere on the touch-sensitive overlay, of a first force causing a first pivoting action of the touch-sensitive overlay and the display relative to the base while stopping actuation of the second switch; actuate the second switch in response to application on the touch-sensitive overlay during application of the first force, of a second force causing a second pivoting action of the touch-sensitive overlay and display relative to the base; a controller coupled to the touch-sensitive overlay and a processor coupled to the controller and the touch screen display. The Examiner’s Rejections (1) The Examiner rejected claims 1–9, 14, 17–21, and 24–28 under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. Ans. 4–6. (2) The Examiner rejected claims 1–5, 8, 9, 14, 17–21, 24, 25, and 27 under 35 U.S.C. § 103(a) over the combination of Zadesky (US 2006/0181517 A1; published Aug. 17, 2006) and Kim (US 5,736,703; issued Apr. 7, 1998). Ans. 6–9. Appeal 2012-010887 Application 11/941,774 4 Principal Issues on Appeal1 Based on Appellants’ arguments in the briefs (App. Br. 7–16; Reply Br. 4–5),2 the following principal issues are presented on appeal: (1) Did the Examiner err in rejecting independent claims 1 and 24 under U.S.C. § 112 for failing to comply with the written description requirement? (2) Did the Examiner err in rejecting independent claims 1 and 24 under 35 U.S.C. § 103(a) over the combination of Zadesky and Kim? ANALYSIS We have reviewed the Examiner’s rejections (Ans. 4–9) in light of Appellants’ arguments in the Appeal Brief (App. Br. 7–17) and the Reply Brief (Reply Br. 4–6) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 10–14). We agree with Appellants’ arguments and conclusions as to both the written description and obviousness rejections. We concur with Appellants’ contentions that (i) Figures 4 and 5 and paragraphs 42, 47, and 49 of the Specification provide support for stopping actuation of the second switch, as recited in each of claims 1 and 24 (see 1 We recognize that Appellants’ arguments present additional issues. For example, Appellants’ arguments (App. Br. 12–14 and 16) regarding the lack of motivation to combine Zadesky and Kim are not persuasive. However, we are persuaded of Examiner error as to the issues discussed in our analysis regarding independent claims 1 and 24, and as such we do not reach any additional issues pertaining to claims 1 and 24 (e.g., motivation) or dependent claim 6 (e.g., enablement and/or written description). 2 Appellants contend (App. Br. 16) that the Examiner erred in rejecting claims 2–5, 8, 9, 14, 17–21, 24, 25, and 27 for obviousness for the same reasons argued with respect to claim 1 and 24. Appeal 2012-010887 Application 11/941,774 5 App. Br. 7–10 discussing the operation of display stops 89 and 128); (ii) Figure 3 and paragraph 20 of the Specification provides support for a controller (34) being coupled to a touch-sensitive overlay (32) and a processor (40) being coupled to the controller and the touch screen display, as recited in claim 24 (see App. Br. 10); and (iii) Kim, nor the combination of Zadesky and Kim teaches or suggests first and second switches configured to stop actuation of the second switch while actuating the first switch in response to the application of a first force on a touch-sensitive overlay, as recited in each of independent claims 1 and 24 (see App. Br. 12– 16). Notably, the Examiner fails to address the limitation found in each of claims 1 and 24 of stopping actuation of the second switch (the same feature alleged by the Examiner to lack support in the written description) in the obviousness rejection (see generally Ans. 7–8 and 13–14). Even if the combination of Zadesky and Kim were to have taught or suggested first and second switches for a touch screen device/display, the combination has not been shown by the Examiner to stop actuation as recited in each of claims 1 and 24 (no prima facie case has been made). We also note that the Examiner’s determination that Zadesky’s element 140A shown in Figure 10A is a display stop as recited in each of dependent claims 8 and 9 (Ans. 8) is incorrect, since Zadesky describes elements 140 and 140A as being a “mechanical switch” or “switch” (Zadesky, ¶¶ 68–70). Therefore, we agree with Appellants that the combination of Zadesky and Kim, even if it produced first and second switches, would not teach or suggest the configuration of the first and second switches recited in each of independent claims 1 and 24, including stopping actuation of the second switch while Appeal 2012-010887 Application 11/941,774 6 actuating the first switch in response to the application of a first force on a touch-sensitive overlay. Accordingly, we do not sustain the Examiner’s rejections of independent claims 1 and 24, as well as dependent claims 2–9, 14, 17–21, and 25–28 depending respectively therefrom. CONCLUSIONS (1) The Examiner erred in rejecting claims 1–9, 14, 17–21, and 24–28 under U.S.C. § 112 for failing to comply with the written description requirement. (2) The Examiner erred in rejecting claims 1–5, 8, 9, 14, 17–21, 24, 25, and 27 under 35 U.S.C. § 103(a) over the combination of Zadesky and Kim because Kim fails to teach or suggest first and second switches configured as recited in each of independent claims 1 and 24 to stop actuation of the second switch while actuating the first switch in response to the application of a first force on a touch-sensitive overlay. DECISION The Examiner’s rejections of claims 1–9, 14, 17–21, and 24–28 are reversed. REVERSED lv Copy with citationCopy as parenthetical citation