Ex Parte Marsden et alDownload PDFPatent Trial and Appeal BoardMay 24, 201813308428 (P.T.A.B. May. 24, 2018) Copy Citation 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. 3 Appeal 2017-001193 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 4 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"). 5 Appeal 2017-001193 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 6 Appeal 2017-001193 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 7 Appeal 2017-001193 Application 13/308,428 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). 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