Ex Parte Lieu

Board of Patent Appeals and Interferences

Aug 6, 2008

10371923 (B.P.A.I. Aug. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte WINSTON HONG LIEU
_____________

Appeal 2008-2510
Application 10/371,923
Technology Center 2600
______________

Decided: August 6, 2008
_______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and KEVIN F.
TURNER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 10 through 17.
We affirm the Examiner’s rejections of these claims.

INVENTION
The invention is directed towards an input device for a use with a host
device such as a portable terminal. The aspect of operation of the input
device changes as a physical attribute of the portable terminal changes. See
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page 2 of Appellant’s Specification. Claim 10 is representative of the
invention and reproduced below:
10. A portable terminal comprising:
a base;
a display, wherein said display is coupled to said base, and
wherein said display has a display screen;
a cover, wherein said cover is rotatably coupled, for out-of-
plane rotation, to at least one of either said display or said base;
an input device, wherein said input device inputs information
into said portable terminal, and wherein said input device is disposed
on said cover;
a sensor for detecting a change in a state of said portable
terminal; and
a processor for changing an aspect of the operation of said input
device in response to said change in state.

REFERENCES
Suso US 6,466,202 B1 Oct. 15, 2002
(filed Feb 23, 2000)

Finke-Anlauff US 6,580,932 B1 Jun. 17, 2003
(filed May 31, 2000)

Lieu US 6,628,508 B2 Sep. 30, 2003

Kaplan US 6,690,358 B2 Feb. 10, 2004
(filed Nov. 30, 2000)

REJECTIONS AT ISSUE
Claims 10 through 17 stand rejected under the judicially created
doctrine of obviousness double patenting as being unpatentable over claims
1 through 12 of Lieu (US 6,628,508 B2) in view of Kaplan. The Examiner’s
rejection is on pages 4 and 5 of the Answer.
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Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Finke-Anlauff in view of Suso. The Examiner’s rejection
is on pages 6 and 7 of the Answer.
Claims 10 through 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Finke-Anlauff in view of Kaplan. The Examiner’s
rejection is on pages 7 and 8 of the Answer.
Throughout the opinion, we make references to the Brief (received
July 16, 2007) and the Answer (mailed October 1, 2007) for the respective
details thereof.
ISSUES
Rejection under the judicially created doctrine of obviousness double
patenting.
Appellant argues on pages 13 through 16 of the Brief that the
Examiner’s rejection of claims 10 through 17 under the judicially created
doctrine of obviousness double patenting is in error. Appellant argues that
“Kaplan does not teach 'a processor (17) for changing an aspect of the
operation of the input device (100) in response to a change in state’ because
Kaplan provides no teaching about an ‘input device’.” Brief 14. Further,
Appellant argues that Kaplan contains no teaching to change an aspect of
operation of the input device.
Thus, Appellant’s contentions with respect to the judicially created
doctrine of obviousness double patenting present us with two issues;
whether the Examiner erred in determining that Kaplan teaches an input
device and that an aspect of the input device’s operation changes in response
to a change in state. We note that Appellant addressed dependent claims 11
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through 13 and 14 through 17 as separate groups, we will address the issues
raised with respect to these arguments in our analysis.

Rejection under 35 U.S.C. § 103(a) over Finke-Anlauff in view of Suso
Appellant argues on pages 19 through 21 of the Brief that the
Examiner’s rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Finke-Anlauff in view of Suso is in error. Appellant
argues:
There is no disclosure or suggestion to change an aspect of the
operation of an ‘input device’ in response to a change in state. Finke-
Anlauff teaches changing the orientation of the display; the display is
NOT an input device.

Brief 19. Further, Appellant argues that Suso similarly teaches changing the
orientation of a display, but does not teach changing the operation of an
input device. Brief 19-20. Further, with respect to claim 11, Appellant
argues that neither of the references teaches that the aspect changed is the
functionality of the input device. Brief 20.
Thus, with respect to claim 10, Appellant’s contentions present us
with the issue of whether the Examiner erred in finding that the combination
of Finke-Anlauff and Suso teach changing the operation of an input device
in response a change in state as claimed. Further, with respect to claim 11,
Appellant’s contentions present us with the issue of whether the Examiner
erred in finding that the combination of Finke-Anlauff and Suso teach
changing the functionality of an input device in response a change in state as
claimed.

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Rejection under 35 U.S.C. § 103(a) over Finke-Anlauff in view of
Kaplan
Appellant argues on pages 21 through 23 of the Brief that the
Examiner’s rejection of claims 10 through 17 under 35 U.S.C. § 103(a) as
being unpatentable over Finke-Anlauff in view of Kaplan is in error.
Appellant argues that Finke-Anlauff and Kaplan do not teach changing the
operation of an input device in response a change in state as claimed. Brief
21. Further, Appellant argues that Kaplan does not teach changing the
aspect of operation of the device in conjunction with a change in the state of
the device. Brief 21 and 22.
Thus, Appellant’s contentions present us with the issue of whether the
Examiner erred in finding that the combination of Finke-Anlauff and Kaplan
teach changing the operation of an input device in response a change in state
as claimed. We note that Appellant addressed dependent claims 11 through
13 and 14 through 17 as separate groups, we will address the issues raised
with respect to these groups of claims in our analysis.

FINDINGS OF FACT
1. Kaplan teaches a method of controlling the cursor on a hand held
computer by monitoring the spatial orientation of the device.
Abstract.
2. The spatial orientation of the device is monitored by using two
accelerometers. The cursor is moved in the direction desired by the
change in orientation of the device. Kaplan, col. 2, ll. 26-55.
3. The user can also press a button (item 13) which changes the
operation from moving the cursor, to panning the display. Kaplan,
col. 2, ll. 19-24.
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4. Finke-Anlauff teaches a foldable mobile terminal which includes a
keyboard which is accessible when the terminal is unfolded. Abstract,
figs. 2, 3a.
5. The terminal has a keypad (item 9) on the outside of the terminal
which is used to enter information when the terminal is used as a
telephone. Finke-Anlauff, fig. 1, col. 2, ll. 25-30.
6. The device includes a sensor that determines whether the portable
terminal is open (i.e. full function keyboard displayed). Finke-
Anlauff, col. 2, ll. 65-67.
7. When the device is open the keypad (item 9) is rendered inoperable.
Finke-Anlauff, col. 3, ll. 3-6.

ANALYSIS
Rejection under the judicially created doctrine of obviousness double
patenting.
Appellant’s arguments have not persuaded us that the Examiner erred
in determining that Kaplan teaches an input device. Claim 10 recites “an
input device, wherein said input device inputs information into said portable
terminal.” Appellant, on page 7 of the Brief, states that an input device is
defined as a “device that enables a user to input data or commands to a
computer.” This definition is commensurate with the use of the term input
device in Appellant’s Specification. The Examiner has found that Kaplan’s
teaching of changing the spatial orientation of the device meets the claimed
input device. Answer 5. We concur with the Examiner’s finding. Kaplan
teaches that the portable device has accelerometers within the device which
measure the orientation of the device. Fact 2. The orientation of the device
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is then used to control the cursor. Facts 1 and 2. One skilled in the art
would recognize the location of the cursor on the display is controlled by the
computer. As such, a user changing the orientation of the device is inputting
information to the computer to identify where on the display the user wants
to move the cursor. Thus, we consider Kaplan’s teaching of changing the
spatial orientation of the device meets the claimed input device.
Appellant’s argument, on page 14 of the Brief, that Kaplan teaches in
the background of the invention to do away with input devices, is not
persuasive. As discussed above, since the operation of Kaplan’s device is
within the definition of an input device, the fact that Kaplan does not use the
term “input device” to describe the device is immaterial. Further, we find
that Kaplan’s discussion of other input devices in the background is merely
identifying deficiencies in other forms of input devices and not to identify
that the device is not an input device.
Thus, Appellant’s arguments have not persuaded us that the Examiner
erred in determining that Kaplan teaches an input device as claimed in claim
10.
Appellant’s arguments have not persuaded us that the Examiner erred
in determining that Kaplan teaches an aspect of the input device’s operation
changes in response to a change in state. Claim 10 recites “a processor for
changing an aspect of operation of said input device in response to said
change in state of the device.” The term “aspect of operation” is defined in
Appellant’s Specification as “means one or more characteristic of the way in
which the input device works.” Specification 3. The term “state” is defined
in Appellant’s Specification as “refers to a physical attribute of the portable
terminal (or other host device), such as a changeable physical
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configuration.” Specification 2. Thus, it is with these definitions that we
determine the scope of the claim.
The Examiner, on page 8 of the Answer, finds that Kaplan teaches
that the operation of button 13, which changes the operation of the input
device from moving cursor to scrolling of display (a panning operation),
meets the claimed changing an aspect of the devices operation in response to
a change in state. We concur with the Examiner findings. As discussed
above, we consider Kaplan to teach the input device. Further, Kaplan
teaches that the input device can be used for both a cursor movement and
scrolling (panning). Fact 3. As the switching between the cursor movement
and panning is changing a characteristic of the way the input device works,
we consider this to be a change in the “aspect of the operation” of the input
device. Further, Kaplan teaches that the change in the way the device works
is actuated by depressing switch 13. Fact 3. As depressing the switch is a
changeable physical attribute of the device, we consider operation of the
switch to represent a change in state. Thus, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection as we find that Kaplan
teaches that an aspect of the input device’s operation changes in response to
a change in state.
For the aforementioned reasons, Appellant’s contentions have not
persuaded us of error in the Examiner’s rejection of claim 10.
On page 16 of the Brief, Appellant groups claims 11 through 13
together and asserts that the Examiner’s rejection of these claims is in error.
Appellant reasons that claim 11 recites that the aspect that the processor
changes is the functionality of the input device. These arguments have not
persuaded us of error in the Examiner’s rejection. As discussed with respect
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to claim 10, Kaplan teaches that the operation of switch 13 changes the
function of the input device from one which moves the cursor to one of
scrolling or panning of the display. Thus, Appellant’s arguments have not
persuaded us of error in the Examiner’s obviousness double patenting
rejection of claims 11 through 13.
On page 16 of the Brief, Appellant groups claims 14 through 17
together and asserts that the Examiner’s rejection of these claims is in error.
Appellant reasons that claim 14 recites that the input device is a pointing
device and that Kaplan teaches away from using a pointing device. These
arguments have not persuaded us of error in the Examiner’s rejection.
Appellant’s Specification identifies that a “pointing device” is a device by
which a user interacts with a desktop. As discussed with respect to claim 10,
Kaplan teaches that the device can be used to move the cursor on the
display, or to scroll the display, and clearly these are interactions with the
desktop display on the computer. Fact 3. Thus, Appellant’s arguments have
not persuaded us of error in Examiner’s obviousness double patenting
rejection of claims 14 through 17.
For the aforementioned reasons, we sustain the Examiner’s rejection
of claims 10 through 17 under the judicially created doctrine of obviousness
double patenting.

Rejection under 35 U.S.C. § 103(a) over Finke-Anlauff in view of Suso
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of Finke-Anlauff and Suso teaches changing
the operation of an input device in response to a change in state as claimed.
As discussed above, Claim 10 recites “a processor for changing an aspect of
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operation of said input device in response to said change in state of the
device.” The term “aspect of operation” is defined in Appellant’s
Specification as “means one or more characteristic of the way in which the
input device works.” Specification 3.
Appellant admits on page 19 of the Brief that Finke-Anlauff discloses
a sensor item 15 which detects a change in state of the portable terminal. In
rejecting claim 10 the Examiner equates Finke-Anlauff’s keyboard item 9
with the input device. Answer 9. We concur with the Examiner’s findings.
Fact 5. We also find that Finke-Anlauff teaches that when the portable
device is open, as indicated by sensor item 15, the input device item 9 is
disabled. Fact 7. We consider disabling the keypad to be a change in the
way the input device works and as such we find that Finke-Anlauff teaches
that the aspect of operation of the input device, keypad 9, is changed in
response to a change in state of the device. Thus, Appellant’s arguments
have not persuaded us of error in the Examiner’s rejection of claim 10 based
upon the teachings of Finke-Anlauff in view of Suso.
Similarly, Appellant’s arguments directed to claim 11 have not
persuaded us that the Examiner erred in finding that the combination of
Finke-Anlauff and Suso teaches changing the functionality of an input
device in response a change in state as claimed. As discussed above, Finke-
Anlauff teaches that when the portable device is open, as indicated by sensor
item 15, the input device item 9 is disabled. Fact 7. We consider disabling
the keypad to be a change in the functionality, i.e., change from being
functional to not being functional. Thus, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claim 11 based upon the
teachings of Finke-Anlauff in view of Suso.
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For the aforementioned reasons, we sustain the Examiner’s rejection
of claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over
Finke-Anlauff in view of Suso.
Rejection under 35 U.S.C. § 103(a) over Finke-Anlauff in view of
Kaplan
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of Finke-Anlauff and Kaplan teach changing
the operation of an input device in response to a change in state as claimed.
As discussed above with respect to the rejection of claim 10 being
unpatentable over Finke-Anlauff and Suso, we find that Finke-Anlauff’s
teaching of disabling the keypad, item 9, when the device is open, meets the
claimed change in the input device. Further, as discussed above with respect
to the obviousness double patenting rejection, we find that Kaplan’s teaching
of changing the spatial orientation of the device meets the claimed input
device. Further, as discussed in regard to that rejection, the operation of
Kaplan’s input device is changed based upon the state (whether the switch is
depressed). Thus, Appellant has not persuaded us of error in the Examiner’s
rejection of claim 10 as we find that both Finke-Anlauff and Kaplan teach
changing the operation of an input device in response to a change in state as
claimed.
On page 22 of the Brief, Appellant groups claims 11 through 13
together and asserts that the Examiner’s rejection of these claims is in error.
Appellant reasons that claim 11 recites that the aspect that the processor
changes is the functionality of the input device. These arguments have not
persuaded us of error in the Examiner’s rejection. As discussed above with
respect to the rejection of claim 11 being unpatentable over Finke-Anlauff
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and Suso, we find that Finke-Anlauff’s teaching of disabling the keypad,
item 9, when the device is open to meet the claimed change in functionality
of the input device. Further, as discussed above with respect to the
obviousness double patenting rejection of claim 11, we find that Kaplan’s
teaching of changing the operation of Kaplan’s input device from one which
moves the cursor to one of scrolling or panning of the display to be a change
in the functionality of the input device. Thus, Appellant has not persuaded
us of error in the Examiner’s rejection of claim 11 through 13 as we find that
both Finke-Anlauff and Kaplan teach changing the functionality of an input
device.
On page 23 of the Brief, Appellant groups claims 14 through 17
together and asserts that the Examiner’s rejection of these claims is in error.
Appellant reasons that claim 14 recites that the input device is a pointing
device and that neither Finke-Anlauff nor Kaplan teaches using a pointing
device. These arguments have not persuaded us of error in the Examiner’s
rejection. As discussed above with respect to the obviousness double
patenting rejection of claim 14, we find that Kaplan’s input device to move
the cursor meets the claimed pointing device. Thus, Appellant’s arguments
have not persuaded us of error in Examiner’s rejection of claims 14 through
17.
For the above reasons, we sustain the Examiner’s rejection of claims
10 through 17 under 35 U.S.C. § 103(a) as being unpatentable over Finke-
Anlauff in view of Kaplan.
SUMMARY
In summary, we sustain the Examiner’s rejection of: claims 10
through 17 under the judicially created doctrine of obviousness double
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patenting; claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable
over Finke-Anlauff in view of Suso; and claims 10 through 17 under 35
U.S.C. § 103(a) as being unpatentable over Finke-Anlauff in view of
Kaplan. The decision of the Examiner is affirmed.
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).

AFFIRMED

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