Ex Parte Milne et alDownload PDFPatent Trial and Appeal BoardOct 31, 201412277469 (P.T.A.B. Oct. 31, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES R. MILNE and TRISHA ANN SACHIE YASUHARA ____________ Appeal 2012-009528 Application 12/277,4691 Technology Center 3700 ____________ Before EDWARD A. BROWN, THOMAS F. SMEGAL and LEE L. STEPINA, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James R. Milne and Trisha Ann Sachie Yasuhara (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3−9, 12−16, 19, and 20, the only claims pending in the application on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM−IN−PART and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 According to Appellants, the real parties in interest are Sony Corp. and Sony Electronics, Inc. Appeal Br. 2. Appeal 2012-009528 Application 12/277,469 2 CLAIMED SUBJECT MATTER Claims 1, 9, and 16 are independent. An understanding of the invention can be derived from a reading of claim 1, which is reproduced below. 1. Electronic book comprising: a housing; first and second electronic touch screen displays supported on the housing; a digital processor in the housing controlling presentation on the displays; a tangible computer-reader storage medium accessible to the processor, electronic book files being stored on the medium for presentation of text represented by the files in a portrait mode on the display; the processor receiving a display mode change signal and in response automatically changing presentation of text on at least one display from portrait mode to landscape mode, wherein in response to the display mode change signal the processor presents an image of a keyboard in landscape on the first display and an image of text in landscape on the second display. Clms. App., Appeal Br. 10. REJECTIONS ON APPEAL The following Examiner’s rejections are before us for review. 1. Claims 1, 3, 6, 7, and 16 are rejected under 35 U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over, Biech (US 2007/0182663 A1, pub. Aug. 9, 2007). Appeal 2012-009528 Application 12/277,469 3 2. Claims 5, 9, 12, 14, and 192 are rejected under 35 U.S.C. § 103(a) as unpatentable over Biech and Pallakoff (US 2005/0012723 A1, pub. Jan. 20, 2005). 3. Claims 4 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Biech and Thomas (US 6,567,101 B1, iss. May 20, 2003). 4. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Biech and Yamazaki (US 5,339,091, iss. Aug.16, 1994). 5. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Biech, Pallakoff, and Thomas. 6. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Biech, Pallakoff, and Yamazaki. ANALYSIS Anticipation of claims 1, 3, 6, 7, and 16 by Biech Claims 1, 3, 6, and 7 Appellants argue claims 1, 3, 6, and 7 as a group and present separate argument only for claim 1 (Appeal Br. 4−5). We select claim 1 as the representative claim for this group and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(1) (iv) ( 2012) (effective Jan. 23, 2012). 2 We note the typographical error at page 8 of the Examiner’s Answer as it is apparent from page 6 of the Final Rejection that the stated rejection of claims 9, 12, 14, and 19 under 35 U.S.C. § 103(a) as unpatentable over Biech and Pallakoff, is intended to include claim 5. Appeal 2012-009528 Application 12/277,469 4 Regarding claim 1, the Examiner finds that Biech discloses, inter alia, a processor that both receives “a display mode change signal and in response automatically changing presentation of text on at least one display from portrait mode to landscape mode” (Answer 5) and “presents an image of a keyboard in landscape on the first display and an image of text in landscape on the second display in response to/upon receipt of the display mode change signal.” Answer 6–7, citing Biech, ¶¶ 53-56. Appellants argue that paragraphs 53−56 of Biech: [D]iscusses a screen protector that can simulate a computer keyboard when typing on a touch sensitive screen's virtual keyboard. Nowhere does the relied-upon portion of Biech discuss (1) doing anything in response to the relied-upon mode signal used in the rejection of Claim 1; (2) presenting text on one display while a keyboard is presented on the other display, much less in response to the mode signal as claimed; and (3) presenting both text and keyboard on respective displays in landscape as claimed, as opposed to a general discussion in paragraph 53 of presenting an ‘image’ in landscape. Appeal Br. 4. Appellants also contend that “no mode signal as claimed is present in Biech”; that “the examiner tries to get the sensor [signal] in Biech which establishes the orientation of images to produce the claimed ‘mode signal’” and “even if the sensor signal is a mode signal it fails to meet the language of the claims as to what that mode signal accomplishes”. Reply Br. 1. These contentions are not persuasive. To the extent Appellants contend that Biech does not disclose a “display mode change signal,” as claimed, in determining the scope of patent claims, we give claims “‘. . . their broadest reasonable interpretation consistent with the specification . . . Appeal 2012-009528 Application 12/277,469 5 .’” and “‘. . . . in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). It is the Appellants’ burden to precisely define the invention, not the U.S. Patent and Trademark Office (PTO)’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Here, Appellants have not pointed to any lexicographic definition of the term “display mode change signal” in the Specification, or identified any other disclosure therein that precludes the Examiner’s finding that Biech’s processor receives such signal. We note that anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 83233 (Fed. Cir. 1990) (citing Akzo N.V. v. United States, Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). Here, the Examiner finds that Biech discloses that “[v]arious display orientations may be possible depending on the orientation of the computing devices” and that “the appropriate image may be triggered by a user via a software interface or button, switch or dial[,] for example”. Answer 6 (citing to Biech, paragraphs [005356]). Paragraph 56 of Biech discloses that “[a]nother example includes achieving a surface that simulates a computer keyboard when typing on a touch sensitive LCD screen's virtual keyboard.” As such, we understand that Biech discloses a touch sensitive screen having a virtual keyboard. Biech also discloses that the displayed image can be changed (rotated) by pushing a button or touching on a screen, or by changing the orientation of the computing system. See ¶ 53. Appeal 2012-009528 Application 12/277,469 6 Claim 1 recites that “the processor presents an image of a keyboard in landscape on the first display and an image of text in landscape on the second display.” (Emphasis added). As claim 1 also recites “changing presentation of text on at least one display from portrait mode to landscape mode” in response to the display mode change signal, we construe the term “presents” as encompassing changing what is shown on the display from one display mode to another. Thus, in light of these teachings, Appellants have not apprised us of any error in the Examiner’s determination that the device disclosed by Biech is capable of performing the recited functions, i.e., in response to receiving a signal, “automatically changing presentation of text on at least one display from portrait mode to landscape mode,” and presenting “an image of a keyboard in landscape on the first display and an image of text in landscape on the second display.” For the foregoing reasons, Appellants do not apprise us of any error in the Examiner’s findings, and thus, we sustain the Examiner’s rejection of claims 1, 3, 6, and 7 as being anticipated by Biech. Claim 16 The Examiner finds that Biech teaches “rotation of the image from a portrait view to a landscape view and vice versa can be achieved. . . with the push of a button or a touch on a screen, for example” (Answer 5) and that “Biech clearly also recites a transition from the landscape to the portrait modes may be automatically presented” (id at 13). Appellants argue claim 16 “requires that responsive to receipt of mode change signals from a motion sensor,” keyboard and text are presented in landscape layout on first and second displays and then “the displays is [sic- are] automatically changed such that book text is again presented on each Appeal 2012-009528 Application 12/277,469 7 page [sic-display] in portrait layout.” Appeal Br. 5−6 (emphasis added). We agree with Appellants that the Examiner does not show by a preponderance of the evidence that Biech discloses each of the method steps that are recited by claim 16. For the foregoing reasons, we are persuaded by Appellants’ arguments that the Examiner failed to establish a prima facie showing of anticipation in rejecting claim 16 over Biech. Obviousness of claims 1, 3, 6, 7, and 16 over Biech. Claims 1, 3, 6, and 7 Because we affirm the rejection of claims 1, 3, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Biech as discussed supra, we find it unnecessary to also reach a decision about the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Biech. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of obviousness.); see also 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim . . . .”). Claim 16 As discussed above, we find that claim 16 is not anticipated by Biech. Further, the Examiner also has not provided an apparent reason with a rational underpinning as to why one skilled in the art would have modified Biech to meet the limitations of claim 16. Therefore we do not sustain the rejection of claim 16 as obvious over Biech. Obviousness of claims 5, 9, 12, and 14 based on Biech and Pallakoff Appeal 2012-009528 Application 12/277,469 8 Claims 9, 12, and 14 The Examiner finds that “Biech teaches an electronic book with all the features of claims 1 & 9 as demonstrated above; including where the processor receives a display mode change signal that automatically changes presentation of text from portrait mode to landscape mode on the display (Para. 0056)” Answer 8. The Examiner appears to acknowledge, regarding claim 9, that “Pallakoff is [only] relied upon for a teaching of an uncoupled virtual keyboard” Answer 14. However, independent claim 9 also recites a further transition, i.e., a processor, in response to receipt of a second mode change signal, “automatically changing presentation of the displays such that the book text is presented on each page in portrait layout.” Appeal Br. 12 (emphasis added). Appellants contend that the rejection of claim 9 should be reversed based on their discussion of claim 16, where Appellants argue that “[t]here is nothing about this transition in Biech nor has the examiner pointed to any specific evidence in the computers he identifies (but does not otherwise produce into evidence) that these computers perform as required by Claim 16” Id at 7, (emphasis added). We agree. It is incumbent upon the examiner to establish a factual basis to support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner’s conclusion of obviousness fails to apprise us of where either Biech or Pallakoff teaches the foregoing recitation of claim 9. The Examiner also has not provided an apparent reason with a rational underpinning as to why one skilled in the art would have modified Biech in view of Pallakoff to include the referenced transition recited by claim 9. Appeal 2012-009528 Application 12/277,469 9 Therefore we do not sustain the rejection of claims 9, 12, and 14 as obvious over Biech and Pallakoff. Claim 5 Although the Examiner acknowledges that Biech fails to teach “the processor presenting a user interface on the display allowing a user to select a language, a keyboard associated with the language selected by the user being automatically presented on the display upon receipt of a display mode Change signal” (Answer 8), as recited by claim 5, the Examiner relies on Pallakoff “to teach where the keyboard is associated with a user’s appropriate language (Para. 0112)” Answer 14−15. Appellants made no specific argument in response to this finding, other than observing that “Pallakoff has been relied on for a general teaching of a virtual keyboard uncoupled from the cooperation of structure recited in Claim 9” Reply Br. 7. As such, Appellants do not specifically address the Examiner’s findings and reasoning for the rejection of claim 5. Accordingly, we sustain the Examiner’s rejection of dependent claim 5 as being unpatentable over the combined teachings of Biech and Pallakoff for the same reasons stated above with respect to independent claim 1. Obviousness of claim 4 over Biech and Thomas; and of claim 8 over Biech and Yamazaki. Claims 4 and 8 depend from claim 1. In that Appellants have made no specific argument in response to these rejections, including failing to rebut the Examiner’s reliance on Thomas and Yamazaki (Appeal Br. 8), we sustain the Examiner’s rejection of dependent claims 4 and 8 as being unpatentable for the same reasons stated above with respect to claim 1. Appeal 2012-009528 Application 12/277,469 10 Obviousness of claim 13 over Biech, Pallakoff and Thomas; and of claim 15 over Biech, Pallakoff and Yamazaki. Claims 13 and 15 depend from claim 9. The Examiner’s rejections of claim 13 over Biech, Pallakoff and Thomas and of claim 15 over Biech, Pallakoff and Yamazaki (Answer 10 and 11) are based on the same unsupported findings discussed above for claim 9 with respect to the disclosures of Biech and Pallakoff. The addition of Thomas and Yamazaki does not remedy the deficiencies of Biech and Pallakoff, discussed supra, in regard to claim 9. Accordingly, for similar reasons as discussed above for claim 9, we do not sustain the Examiner’s rejection of claim 13 over Biech, Pallakoff and Thomas, or claim 15 over Biech, Pallakoff and Yamazaki. Obviousness of claim 19 over Biech and Pallakoff; and of claim 20 over Biech and Thomas Claims 19 and 20 depend from claim 16. The Examiner’s rejections of claim 19 over Biech and Pallakoff and of claim 20 over Biech and Thomas (Answer 8, 10, and 14−15) are based on the same unsupported findings discussed above of claim 16 with respect to the disclosure of Biech. The addition of Pallakoff or Thomas does not remedy the deficiencies of Biech, discussed supra, in regard to claim 16. Accordingly, for similar reasons as discussed above for claim 16, we do not sustain the Examiner’s rejection claim 19 over Biech and Pallakoff or claim 20 over Biech and Thomas. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1, 3−9 and 12−15 under 35 U.S.C. § 112, second paragraph, as being indefinite for failure to Appeal 2012-009528 Application 12/277,469 11 particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. The language of a claim satisfies 35 U.S.C. § 112, second paragraph, only if “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). However, claim 1 is directed to an electronic book, but recites that “the processor receiving a display mode change signal and in response automatically changing presentation of text on at least one display from portrait mode to landscape mode . . . .”. Claim 1 does not recite that the processor is, for example, “configured” to receive the claimed display mode change signal and perform the claimed functions. Thus, it is unclear whether infringement of claim 1 occurs when one manufactures an electronic book comprising a processor that allows the user, inter alia, to automatically change the presentation of text on at least one display from portrait mode to landscape mode, or whether infringement occurs when one actually engages in such use with the electronic device. Claim 9 is also directed to an electronic book, but recites “the processor automatically presenting, responsive to receipt of a first mode change signal from a motion sensor, an image of a keyboard in landscape layout on the first display and text in landscape layout on the second display; and responsive to receipt of a second mode change signal from the motion sensor, the processor automatically changing presentation of the displays such that book text is presented on each page in portrait layout” Appeal Br.11−12. Appeal 2012-009528 Application 12/277,469 12 Claim 9 does not recite that the processor is, for example, “configured to automatically” change presentation of the displays in response to receipt of the second mode change signal and perform the claimed functions. Thus, it is unclear whether infringement of claim 9 occurs when one manufactures an electronic book comprising a processor that allows the user, inter alia, to automatically change the presentation of the displays such that book text is presented on each page in portrait layout, or whether infringement occurs when a user actually receives a second mode change signal while engaged in such use with the electronic device. Thus claims 1 and 9 do not apprise a person of ordinary skill in the art of their scope, and thus, fail to comply with 35 U.S.C. § 112, second paragraph. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (noting that when a claim recites both a system and a method for using that system, it is unclear whether infringement occurs when (1) one creates a system that allows a user to perform the recited method, or (2) the recited method actually occurs). For the foregoing reason, we find that claims 1, 3−9 and 12−15 fail to comply with 35 U.S.C. § 112, second paragraph, in failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. DECISION The rejection of claims 1, 3, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Biech is AFFIRMED. The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Biech and Pallakoff is AFFIRMED. Appeal 2012-009528 Application 12/277,469 13 The rejection of Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Biech and Thomas is AFFIRMED. The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Biech and Yamazaki is AFFIRMED. The rejection of claims 5, 9, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Biech and Pallakoff is REVERSED. The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Biech, Pallakoff, and Thomas is REVERSED. The rejection of claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Biech, Pallakoff, and Yamazaki is REVERSED. The rejections of claim 16 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Biech, are REVERSED. The rejections of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Biech and Pallakoff; and claim 20 under 35 U.S.C. § 103(a) as unpatentable over Biech and Thomas, are REVERSED. We do not reach the rejection of claims 1, 3, 6, and 7 as unpatentable under 35 U.S.C. § 103(a) over Biech. We enter a NEW GROUND OF REJECTION of claims 1, 3−9 and 12−15 under 35 U.S.C. § 112, second paragraph. Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides “Appellants may file a single request for rehearing within two months from the date of the original decision of the Board.” This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of Appeal 2012-009528 Application 12/277,469 14 rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THIS DECISION: must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejections, the effective date of the affirmance will be deferred until the prosecution before the Examiner concludes unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. Appeal 2012-009528 Application 12/277,469 15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a) (1)(iv). AFFIRMED−IN−PART; 37 C.F.R. § 41.50(b) llw Copy with citationCopy as parenthetical citation