Ex Parte Lee et al

Patent Trial and Appeal Board

Oct 31, 2014

11530278 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEPHEN LEE, TROY HULICK, and MARK BABELLA
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Appeal 2012-009616
Application 11/530,278
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–22. Claims 23–29 have been canceled. We reverse.

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REJECTIONS
(1) The Examiner rejected claims 1-9 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Phillips (US 2006/0172785 A1; issued Aug. 3, 2006),
Cheng (US 6,802,662 B1; issued Oct. 12, 2004), and Ueda (US 5,597,244;
issued Jan. 28, 1997). Ans. 5–9.
(2) The Examiner rejected claims 10 and 12 under 35 U.S.C. § 103(a)
as unpatentable over Phillips, Cheng, Ueda, and Wineman (US 3,825,101;
issued Jul. 23, 1974). Ans. 9–10.
(3) The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Phillips, Cheng, Ueda, and Kim (US 2005/0248537 A1;
issued Nov. 10, 2005). Ans. 10–11.
(4) The Examiner rejected claims 14–16, 19, 21, and 22 under 35
U.S.C. § 103(a) as unpatentable over Phillips, Cheng, Ueda, and Kim. Ans.
11–14.
(5) The Examiner rejected claims 17, 18, and 20 under 35 U.S.C. §
103(a) as unpatentable over Phillips, Cheng, Ueda, Kim, and Wineman.
Ans. 14–16.
Appellants’ Contentions
With regard to independent claims 1 and 14, Appellants argue, inter
alia, that the Examiner did not have proper motivation to combine the three
base references (i.e., Phillips, Cheng, and Ueda) together, and instead relied
upon hindsight reasoning (Br. 5-14).
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Issue on Appeal
Based on Appellant’s arguments, the following issue is presented for
appeal:
Did the Examiner err in rejecting independent claims 1 and 14, as well
as remaining dependent claims 2–13 and 15–22, as being obvious because
Phillips, Cheng, and Ueda are not properly combinable to teach or suggest
the mobile computing device limitations at issue in independent claims 1 and
14?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 5–14) that the Examiner erred. We
agree with Appellants’ argument that the Examiner did not have proper
motivation to combine Phillips, Cheng, and Ueda, and that the Examiner has
relied upon impermissible hindsight reasoning (Br. 5-14). Although the
motivations for combining each individual reference with each other
individual reference are reasonable,1 there is no motivation for combining all

1 The Examiner concludes it would have been obvious (i) to modify Phillips
with Cheng in order “to have a plurality of keycaps that extend outward
from the front face because this design improves ‘clickability’ of the key
pad” (Ans. 6); and (ii) to provide a keypad “at least partially on an occupied
region of the portion of the front face that has the contour because this
design helps distinguish different keys and provide [an] ergonomic
keyboard” (And. 7). The Examiner also concludes it would have been
obvious (i) to modify Phillips with Ueda “to provide [an] ergonomic
keyboard for inputting” (Ans. 17); and (ii) to modify Phillips with “Cheng

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three references to achieve Appellants’ mobile computing device including
housing with a contour as recited, a display screen also with the recited
contour, and a keypad provided with keycaps (claim 1) or a keypad
assembly provided with key structures and a substrate (claim 14), as recited
in each of independent claims 1 and 14.
Ueda’s Figure 1 (showing an electronic typewriter with spell check)
and Cheng’s Figure 1 (showing a round ergonomic keyboard assembly),
even when combined with the disclosure of Phillips of a mobile telephone
(see Figure 2), only teaches or suggests a round mobile phone having spell
check. The combination of Phillips, Cheng, and Ueda does not teach or
suggest a mobile computing device including a housing, display, and
keyboard assembly as recited in Appellants’ claims 1 and 14 and shown in
Appellants’ Figures 1 and 2.
In view of the foregoing, Appellant’s contentions (Br. 5–14) that it
would not have been obvious to combine Phillips, Cheng, and Ueda because
the Examiner’s reasoning is conclusory and involves hindsight are
convincing. Appellants have shown that the Examiner erred in concluding
that it would have been obvious to modify Phillips with the teachings of
Cheng and Ueda to achieve the subject matter recited in each of independent
claims 1 and 14 on appeal. Accordingly, we do not sustain the obviousness
rejection of claims 1–22 based upon the combined teachings and suggestions
of the base references of Phillips, Cheng, and Ueda.

and Ueda to provide [an] ergonomic keyboard for inputting” (Ans. 18). The
Examiner determines that Phillips, Cheng, and Ueda are all in the analogous
art of “providing keyboard for inputting means for devices” (Ans. 19).
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DECISION
For the foregoing reasons, the Examiner’s decision rejecting claims 1–
22 is reversed.

REVERSED

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