Ex Parte Makela

Patent Trial and Appeal Board

Dec 30, 2013

11173781 (P.T.A.B. Dec. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MIKKO K. MAKELA
__________

Appeal 2011-011525
Application 11/173,781
Technology Center 2100
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
and apparatus for managing user inputs with a controller. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Nokia
Corporation (App. Br. 2).
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Application 11/173,781

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Statement of the Case
Background
“The teachings in accordance with the exemplary embodiments of this
invention relate generally to browsers capable of displaying pages
containing textual elements and, more specifically, relate to browsers used
with mobile devices having a limited display screen area and a limited user
input capability” (Spec. 1, ll. 7-10).
The Claims
Claims 1-30 and 32-38 are on appeal. Claim 1 is representative and
reads as follows (emphasis added):
1. A method, comprising:
receiving signals from a plurality of user inputs, where at least
one user input is a multi-function input operable in a first mode to
provide a display control input, and in a second mode to provide
another function; and
when operating the at least one user input in the first mode,
inhibiting operation of the at least one user input in the second mode,
where inhibiting operation is performed automatically by a controller
in response to a change in content shown on a display in response to
operation in the first mode.

The issue
The Examiner rejected claims 1-30 and 32-38 under 35 U.S.C. §
103(a) as obvious over Nishiyama2 and Bear3 (Ans. 4-11).
The Examiner finds that Nishiyama teaches “a method to operate a
user interface having an output display and an input” (id. at 4). The
Examiner finds that Nishiyama teaches

2 Nishiyama, US 7,019,731 B2, issued March 28, 2006.
3 Bear et al., US 2004/0257341 A1, published Dec. 23, 2004.
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[R]eceiving signals from a plurality of user inputs,
where at least one user input is a multi-function input
operable in a first mode to provide a display control input,
and in a second mode to provide another function (column 1
lines 52-58, line 67 to column 2 line 3 → Nishiyama
discloses a hand held device with a ten-key keypad wherein
the keys can contain the function of inputting numerals and
also to operate an image displayed on display).

(Id. at 4-5.)
In addition, the Examiner finds that Nishiyama teaches “the selection
of the function of use for the keys are based upon the current state of the
device such as when a Web page or a map is presented then the function of
operating an image displayed will be available to the user” (id. at 5). The
Examiner finds that “[w]hile providing one skilled in the art with reasonable
expectation that the functions of the keys depend upon the focused content
on the display, Nishiyama does not explicitly teach this limitation” (id.).
The Examiner finds that Bear et al. teaches
[W]hen operating the at least one user input in the first
mode, inhibiting operation of the at least one user input in
the second mode, where inhibiting operation is performed
automatically by a controller in response to a change in
content shown on a display (page 4 paragraph [0086], page 5
paragraphs [0087]-[0088], page 6 paragraphs [0105]-[0106]
→ Bear discloses wherein the input that affects an object is
dependent of the object that is the focus of attention).

(Id.) The Examiner finds that
While Bear does not explicitly teach this limitation taking
place in response to operation in the first mode, it is
reasonably suggestive to one skilled in the art by way of the
examples provided such as the various objects that provide
the determination of the logical input (selection objects,
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content objects, movable drawing objects, etc[.]) that use of
the navigation functions in both Nishiyama and Bear to non-
content objects (links and graphics) would prevent the use of
numerical or text input options

(id.).
The Examiner finds it obvious “to have combined the keypad on a
handheld device of Nishiyama with the automatic function selection of Bear
to provide an effective approach toward a reduction in size of an electronic
apparatus needing keys for operating a screen, with improved operability
while providing the basis for an interface device that users can immediately
identify an[d] use to navigate information in a simple and consistent way”
(id. at 5-6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Nishiyama and Bear et al. render the
claims obvious?
Findings of Fact
1. Nishiyama teaches
A ten-key keypad for inputting numerals mounted on
a portable telephone T is adapted to a zoom function and a
scroll function for operating an image displayed on a
display. The user can use the keys of the ten-key keypad to
select the mode in which case the keys also serve as image
operation keys.

(Nishiyama, abstract.)
2. Nishiyama teaches
[A] method of using a ten-key keypad has a first feature of
comprising the step of adapting the ten-key keypad,
mounted on an electronic apparatus for inputting numerals,
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to an image-operation function for operating an image
displayed on a display of the electronic apparatus, to allow
the keys of the ten-key keypad to serve as image-operation
keys by means of mode selection. . . . Due to this
adaptation, upon mode selection, the ten-key keypad
normally used for inputting numbers is allowed to serve also
as an image-operation keypad

(Nishiyama, col. 1, l. 52 – col. 2, l. 3).
3. Nishiyama teaches that
To attain the aforementioned object, a method of
using a ten-key keypad has a sixth feature, in addition to the
configuration of the first feature, of further comprising the
step of adapting any one of the keys of the ten-key keypad to
a switching function for selecting image-operation mode for
the image-operation function.

With the method of using the ten-key keypad in the
sixth feature, the switching function of selecting the image-
operation mode is assigned to any one of the keys of the ten-
key keypad. By pressing the relevant key, the image-
operation mode assigned to the ten-key keypad is selected.
This method makes it possible to adapt the ten-key keypad
to a plurality of types of image-operation mode, such as a
zoom operation, a scroll operation, for example.

(Nishiyama, col. 3, ll. 10-23.)
4. Nishiyama teaches that
A function key ‘F’ mounted on the operating section
Tb of the portable telephone T is adapted to a switching
function of switching the ten-key keypad between normal
numeral-input mode and image-operation mode as described
later.
In the ten-key keypad switched to image-operation
mode by actuating the function key F, a numeric key ‘5’
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located at the center of the ten-key keypad is adapted to a
function of switching between scroll mode and zoom mode

(Nishiyama, col. 6, ll. 58-66; see Figure 1).
5. Nishiyama teaches that
In the above portable telephone T, the numerals for,
e.g., a telephone number are inputted through the ten-key
keypad on the operating section Tb in a conventional
manner.
When operating an image displayed on the display Ta,
first, the user activates the switching function assigned to the
function key ‘F’ to switch the ten-key keypad to the image-
operation mode. Then, the user presses the numeric key ‘5’
to select the desired operation mode from among the zoom
mode, scroll mode 1 and scroll mode 2 for operation through
the ten-key keypad

(Nishiyama, col. 8, ll. 6-15; see Figure 1).
6. Bear teaches “systems, methods, and products for enhanced
user navigation to compliment [sic] (but not necessarily replace) a computer
keyboard . . . by providing a robust navigation interface” (Bear, abstract).
7. Bear teaches that “[t]he present invention may comprise: a
minimally necessary group of commands; combining the functionality a set
of at least two command calls into a single logical button” (id.).
8. Bear teaches the invention being based on “objects” (Bear 4-5 ¶
86). Bear teaches that:
An “object” . . . constitute[s], without limitation, a
dialog box, menu, web page, text page, movable drawing
object, or some other such item in a computer system as
such are known and appreciated by those of skill in the art.
For the purpose of describing the invention, it will be
presumed that all objects can be conveniently divided into
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one of four categories: (1) selection objects, such as a dialog
box, menu, etc., where a user selects an element from among
a plurality of elements; (2) content objects, such as an
editable text object; (3) movable drawing objects (MDOs);
and (4) audio objects.

(Id.)
9. Bear teaches that
Whenever a button is pressed . . . such elemental
physical interactions create appropriate electronic signals
constituting a logical input for use with the invention as
described herein . . . . However, for convenience, references
to the elements available for physical interactions (e.g., a
button) shall constitute a direct reference to the logical input
resulting from each such physical interaction. In other
words, input device elements—including buttons . . . shall
constitute logical inputs for the embodiments described
herein when physically acted upon. Thus, by way of
unlimited example only, an “ENTER button” is one form of
a “logical input for ENTER.”

(Id. at 5 ¶ 87.)
10. Bear teaches that
At the heart of the various embodiments of the present
invention is a main button . . . group which provides the
basis for an interface device that users can immediately
identify and use to navigate information in a simple and
consistent way. The embodiments generally comprises [sic]
a core group of logical buttons for a minimally necessary
group of commands (core commands) and, in some
embodiments, additional logical buttons for a secondary set
of navigation commands (secondary commands). . . . In
other embodiments, comprising relatively few physical
components but possessing a substantial number of logical
button [sic], tremendous navigational functionality is
possible that goes far beyond core commands and secondary
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commands, but may also include general commands which,
in some cases, may be object, application, or device specific
and/or revisable.

(Id. at 5 ¶ 88.)
11. Bear et al. teaches that
FIG. 3A is a flow chart depicting the logic for the
ENTER button in certain embodiments of the present
invention. When the ENTER button is pressed at block 302,
the ENTER button system determines, at block 304, if the
object is a selection object (and not a content object or a
movable drawing object) and, if not, for the present
embodiment no other event occurs and the system returns at
block 350. (Events other than the null event of the present
invention are certainly possible for content objects and
movable drawing objects, as will be appreciated by those
possessing sufficient skill in the relevant art.) On the other
hand, if the object is in fact a selection object, at block 306
the system determines if an active element in the object is
already selected. If an active element is already selected, at
block 312 an “execute” event occurs that is equivalent to
depressing the Enter key on a keyboard (and which results in
an Open, Accept, or OK of the selected element as
appropriate, and as such events are known and appreciated
by those of skill in the art); the system then returns at block
350. On the other hand, if an active element is not already
selected, then at block 308 the system then makes a
determination as to whether an element of the object has
been marked as the Initial Focus (as a default selection
element) and if so, then at block 314 the element marked as
the Initial Focus is selected and thereafter the system returns
at block 350. Finally, if there is no Initial Focus, then at
block 316 the system selects the first listed element of the
object and returns at block 350.

(Id. at 6 ¶ 105.)
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12. Bear et al. teaches that
Naturally, variations to the logic flow depicted in
FIG. 3B can and will be desirable under certain
circumstances. For example, consider FIG. 3B which is a
flow chart depicting just such a variation in the logic for the
ENTER button depicted in FIG. 3A. In this embodiment—
and after already determining (a) at block 304 that the object
is a selection object, (b) at block 306 that an active element
has not already been selected, and (c) at block 308 that the
object has no Initial Focus (identical to the method of FIG.
3A)—at block 310 the system of FIG. 3B further determines
whether any active elements are visible and, if so, at block
318 would then select the first visible element or, if not, at
block 316 the system would then select the first listed
element. This and other such subtle variations in logic are
herein disclosed by the present invention.

(Id. at 6 ¶ 106.)

Principles of Law
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Analysis
Nishiyama reasonably teaches a method of receiving signals from a
plurality of user inputs where at least one user input is a multi-function input
in a first mode to provide a display control input, and in a second mode to
provide another function (FF 1-5). Nishiyama further teaches that when
operating the at least one user input in the first mode, operation of the at
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least one user input in the second mode may be inhibited by the user’s
actuation of a specific function key (FF 1-5). Bear teaches a button that can
execute more than one command (FF 6-7). Bear teaches automatically
inhibiting the operation of certain “objects” based on the “focus” of the
object within a certain display and executing the command associated with
that “focus” (FF 8-12).
However, regarding the claim step of “when operating the at least one
user input in the first mode, inhibiting operation of the at least one user input
in the second mode, where inhibiting operation is performed automatically
by a controller in response to a change in content shown on a display in
response to operation in the first mode,” the Examiner finds that
Bear allows the system to automatically determine which
mode/function should be executed based on a current state
or focus of an application (content shown on a display).
Bear describes how the command issued by the system takes
into consideration the current object of focus and issues the
command accordingly; thereby a change in content by a user
using the first mode would be issued accordingly.

(Ans. 13.)
Appellant contends that “nowhere is it taught or suggested that such
an operation would be performed in response to a change in content shown
on the display in response to an operation in the first mode” (App. Br. 13).
Appellant further contends that
Nowhere in the disclosure of Bear is it taught or suggested
that the state of an application or the current focus is directly
related to the content shown on the display. Conversely, the
state of an application and the current focus can be
independent from the content shown on the display. Thus,
Bear does not allow the system to automatically determine
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which mode/function should be executed based on the
content shown on the display . . .

(Reply Br. 2).
We find that the Appellant has the better position. The Examiner
acknowledges that Nishiyama does not teach “the function of the keys
depend[ing] upon the focused content on the display” (Ans. 5). The
Examiner provided no evidence that Bear performs this step, and provides
no evidence or argument that the step of automatically “inhibiting operation
of the at least one user input in the second mode” in response to the content
shown on a display would have been obvious to one of ordinary skill in the
art.
Instead, the Examiner relies upon Bear to show how the active focus
element within a display determines logical input (id. at 5). However, as
Appellant points out, the “object of focus and the content shown on the
display are mutually exclusive in the embodiments taught by Bear” (Reply
Br. 2). Consequently, Bear cannot reasonably be interpreted to suggest
automatic control of the focus and content relative to one another as required
by the “inhibiting operation” limitation in claim 1. Thus, the Examiner has
not provided evidence that Bear teaches the claim limitation that is missing
from Nishiyama, and therefore has not satisfied the burden of providing
sufficient evidence for a case of obviousness.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Nishiyama and Bear render the claims obvious.
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SUMMARY
In summary, we reverse the rejection of claims 1-30 and 32-38 under
35 U.S.C. § 103(a) as obvious over Nishiyama and Bear.

REVERSED

cdc