Ex Parte Marsden et al

Patent Trial and Appeal Board

May 24, 2018

13308428 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/308,428 11130/2011
61725 7590 05/29/2018
Morgan, Lewis & Bockius LLP I AI
1400 Page Mill Road
Palo Alto, CA 94304-1124
FIRST NAMED INVENTOR
Randal J. Marsden
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P24931US1/63266-5967-US 7886
EXAMINER
EURICE, MICHAEL
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
05/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDAL J. MARSDEN and STEVE HOLE
Appeal2017-001193 1
Application 13/308,428
Technology Center 2600
Before MAHSHID D. SAADAT, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL 2
This is a decision on appeal under 35 U.S.C. § 134(a) from a rejection
of claims 1-7 and 9-21. Claim 8 has been canceled. See App. Br. 6. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Apple Inc. is identified as the real party in interest. App. Br. 4.
2 An oral hearing was conducted for this appeal on May 8, 2018.
Appeal 2017-001193
Application 13/308,428
STATEMENT OF THE CASE
Introduction
The Application is directed to a "method and system that solves the
space problem [of a user interface device] by integrating the numeric keypad
part of the keyboard and the touchpad in the same physical location." Spec.
i-f 8. Claims 1 and 12 are independent. Claim 1 is reproduced below for
reference:
1. A system comprising:
a surface comprising a touch-sensitive display, at least part
of which comprises a multi-mode area;
a plurality of touch sensors coupled to the surface, the
plurality of touch sensors configured to generate at least one
sense signal based on sensed user contact with the surface;
a mode key for selecting between a numeric keypad or
keyboard mode, a touchpad mode, or an auto mode; and
a processor in signal communication with the surface and
the plurality of touch sensors, wherein the processor is
configured to:
detect a selection of the mode key to enter one of
the numeric keypad or keyboard mode, the touchpad
mode, or the auto mode;
upon detection of a selection of the auto mode:
automatically select the touchpad mode
associated with the multi-mode area based on an
interpretation of the generated at least one sense
signal associated with the multi-mode area being a
sliding motion; and
automatically select the numeric keypad or
keyboard mode associated with the multi-mode area
when no sliding motion is detected for a predefined
amount of time.
2
Appeal 2017-001193
Application 13/308,428
References and Rejections3
The following is the prior art relied upon by the Examiner in rejecting
the claims on appeal:
Hiller
Geaghan
Larsen
Huh
US 6,396,483 Bl
US 2006/0279548 Al
US 2007/0091070 Al
US 2007 /0229476 Al
May 28, 2002
Dec. 14, 2006
Apr. 26, 2007
Oct. 4, 2007
Claims 1, 5, 7, 9--11, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hiller, Larsen, and Huh. Final Act. 4.
Claims 2--4, 6, and 12-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hiller, Larsen, Huh, and Geaghan. Final Act. 4.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Any arguments Appellants could have made but chose not to
make are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). Except as
indicated below with respect to dependent claim 21, we are not persuaded
the Examiner erred. We adopt as our own the Examiner's findings and
conclusions with respect to claims 1-7 and 9--20, to the extent they are
consistent with our analysis. We add the following primarily for emphasis.
3 The Examiner has withdrawn the written description rejections of the
claims. See Ans. 3.
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Application 13/308,428
A. Independent Claim 1
Appellants do not separately argue claims 1-3, 5-7, and 9-20. See
App. Br. 13. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Regarding the rejection of claim 1, Appellants contend "the Examiner
has failed to carry the burden of proving a prima facie case because the
proposed combination is lacking several required limitations of the claim[]."
App. Br. 26. Appellants argue "not a single cited reference teaches a mode
key for selecting and deselecting an auto mode, let alone 'a mode key for
selecting between a numeric keypad or keyboard mode, a touchpad mode, or
an auto mode,' as recited in claim 1." App. Br. 24. Appellants further
argue "nothing in Hiller teaches the automatic selection of a 'numeric
keypad or keyboard mode' 'when no sliding motion is detected for a
predefined amount of time,' as required by claim 1." App. Br. 25 (emphasis
omitted).
Appellants' arguments are unpersuasive of error because they focus
on the individual teachings of each reference, whereas the Examiner's
rejection is based on the combined teachings of Hiller, Larsen, and Hu. See
Final Act 7-8 ("it would have been obvious to one of ordinary skill in the art
to modify Hiller's and Larsen's input device providing ... automatic
reversion to the default operational mode upon exceeding a predefined
amount of time of inactivity, with Huh' s ... user selectable mode key"); see
also In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for
obviousness is not ... that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
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Appeal 2017-001193
Application 13/308,428
combined teachings of the references would have suggested to those of
ordinary skill in the art.").
Here, the Examiner correctly finds 4 (A) Hiller teaches an embodiment
of a multi-mode area that is selectable between modes such as a numpad and
a touchpad, (B) Larsen teaches toggling between input modes and reverting
to a default mode upon exceeding a predefined amount of time without
detecting an input, and (C) Huh teaches a mode selection key. See Final
Act. 4--8; Hiller Figs. 1, 6, 3:44--50; Larsen Fig. 3, i-fi-f 17, 30; Huh Fig. 7a,
i1 51. Appellants do not show the Examiner erred in relying on the
combined teachings of the references. Rather, we agree with the Examiner
that one of ordinary skill would have used a separate mode key, such as
taught by Huh, to select between various input modes as taught by Hiller, the
selectable input modes including Larsen's mode for automatically selecting
different input modes based on input times; such combination yields
predictable results. See Final Act. 7-8; Hiller 2:35--40; Larsen i-fi-f l, 4; Huh
i13; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007) ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
We note Appellants raise new arguments in the Reply Brief regarding
the Examiner's reasoning and whether Larsen teaches a mode akin to an
4 We refer to the Examiner's findings with respect to the references. See
Final Act. 4--8. Although Appellants and the Examiner disagree on the
claim construction (see Reply Br. 6-10; Ans. 5-7), we do not reach this
issue because we agree with the Examiner that the combination of cited
references teaches or suggests the claim limitations regardless of the
proffered construction. See, e.g., Ans. 6, 9 (stating the references are cited
for the argued limitations in the interest of "compact prosecution").
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Application 13/308,428
auto mode. See Reply Br. 16-18. We do not find there was a shift in the
Examiner's position in the Answer, therefore these arguments could have
been raised in the initial brief. See Final Act. 4--8; Ans. 12. As such,
Appellants waived these new arguments by not timely raising them. See 3 7
C.F.R. § 41.41(b )(2); see also Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BP AI 2010) (informative opinion).
Accordingly, we are not persuaded the Examiner erred in finding the
limitations of claim 1 to be obvious in view of the combination of Hiller,
Larsen, and Huh. We sustain the Examiner's rejection of claim 1.
B. Dependent Claim 4
Appellants argue the Examiner erred because "claim 4 requires that
'the user selection comprises activation of the mode key displayed by the
processor on the surface,"' which is not taught by any of the cited
references. Reply Br. 20. Particularly, Appellants contend "the soft input
shift mode key in Huh has nothing to do with the claimed mode key." Id.
We are not persuaded the Examiner erred. Consistent with the
Specification, we construe the limitation "displayed by the processor on the
surface" to refer to an image on a dynamic display that is controlled by the
processor. See Spec. i-f 17 ("processor 110 communicates with an optional
hardware controller to cause a display 140 to present an appropriate image");
see also Spec. i-fi-19, 29; In re Smith Int'!, Inc., 871F.3d1375, 1382-83 (Fed.
Cir. 2017) (citations omitted) ("The correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is ... an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is 'consistent with
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Application 13/308,428
the specification."'). As discussed above, we agree with the Examiner that
Huh in view of Hiller and Larsen teaches the recited "mode key." See Ans.
13-14. Huh further teaches the mode key is part of a touch screen, such as a
combined liquid crystal display and touch panel. See Ans. 15-16; Huh
i-fi-135, 37, 39, 51. Thus, we find the combination of cited references teaches
or suggests the recited mode key displayed by the processor on the surface.
See Ans. 16.
We sustain the Examiner's rejection of dependent claim 4.
C. Dependent Claim 21
Appellants argue the Examiner erred because claim 21 recites "the
processor is further configured to display, on the surface, a keyboard and the
multi-mode area adjacent the keyboard," and none of the cited references
teach or suggest "a keyboard that is displayed 'on the surface' and adjacent
to 'the multi-mode area."' App. Br. 31. Particularly, Appellants argue
Hiller and Larsen each teach a physical keyboard, and Huh does not teach a
keyboard next to a multi-mode area. Reply Br. 22-24.
We are persuaded by Appellants' arguments. As discussed above
with respect to claim 4, claim terms are interpreted in light of the description
in the Specification. Based on the claim language and the examples in the
Specification, we interpret claim 21 as requiring the keyboard to be
displayed on a touch screen. See Spec. i-fi-f 17, 18, 25, Fig. 3. None of the
cited references teach the recited inputs displayed adjacent to each other.
Nor does the Examiner provide reasoning to show one of ordinary skill
would modifj; the references to display a touch screen keyboard and adjacent
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multi-mode area. See Ans. 17-19. Accordingly, we do not sustain the
Examiner's rejection of dependent claim 21.
DECISION
The Examiner's decision rejecting claims 1-7 and 9-20 is affirmed.
The Examiner's decision rejecting claim 21 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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