Ex Parte Pallakoff

Board of Patent Appeals and Interferences

Jul 27, 2012

10891544 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/891,544 07/14/2004 Matt Pallakoff MOVE01 9061
79942 7590 07/30/2012
Nathan Calvert
Nathan Calvert
1404 Norwalk Ln #105
Austin, TX 78703
EXAMINER
NGUYEN, JIMMY H
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
07/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATT PALLAKOFF
____________________

Appeal 2010-002634
Application 10/891,544
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI,
and DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-11, 27-34, and 48-60. We have jurisdiction under 35
U.S.C. § 6(b). Claims 12-26 and 35-47 have been cancelled.
We AFFIRM-IN-PART.
Introduction
According to Appellant,
[t]he invention generally relates to [a system and method for]
hand-held electronic devices, and more specifically, to mobile
wireless devices used to access information servers such as local area
networks and the World Wide Web (i.e. "the Web") and mobile
devices used to run software applications commonly run on desktop
and notebook computers (such as Web browsers, spreadsheets, word
processors, calculators, photo and video editors and viewers, stock
tracking, accounting, etc.).

(Spec. 2, [0001]).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A portable electronic device comprising:
(a) an enclosure effectively sized to be at most 5.2 inches
in a first dimension and at most 3.8 inches in a second
dimension; and
(b) a display comprised in the enclosure such that an
active surface of the display is visible, the display having an
effective pixel count inclusively between 520 and 800 effective
pixels in the first dimension and an effective pixel count
inclusively between 360 and 600 effective pixels in the second
dimension, the display further having an effective pixel density
of at most 175 effective pixels-per-inch (ppi) in the first and
second dimensions.
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References
Pihlaja US 2003/0095095 A1 May 22, 2003
Vaananen US 2003/0095105 A1 May 22, 2003
Barlow US 6,275,935 B1 Aug. 14, 2001
Agrafiotis US 6,295,514 B1 Sep. 25, 2001

Rejections
(1) Claims 2, 6-8, and 27-341,2 stand rejected under 35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as
the invention.
(2) Claims 2, 6-8, 27-34, 54, and 57-603 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.

1 Although the Examiner lists claim 53 as being rejected under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention, it appears to be a typographical error, since: (1) no specifics as to
claim 53 are addressed; (2) the portion of the recitation indicated as being
indefinite is not recited in claim 53; and (3) the Examiner appears to have
recited the rejection to omit claim 53 (Final Rej. 3-4; Ans. 3 and 26).
2 The rejection of claim 54 as being rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention
was withdrawn by the Examiner (Ans. 26). Therefore, we deem claim 53 to
not be rejected as indefinite.
3 The rejection of claim 56 as being rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement was
withdrawn by the Examiner (Ans. 28-29).
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(3) Claim 53 stands rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the enablement requirement.
(4) Claims 1, 3-5, 9-11, 57, and 59 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Pihlaja.4
(5) Claims 2, 6-8, 48-52, 55, 56, and 58 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Pihlaja and Vaananen.

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE 1
35 U.S.C. § 112, second paragraph, indefiniteness
Claims 2, 6-8, and 27-34
Appellant argues the claimed language should be interpreted as the
first pattern of touch and the context modifier switch are simultaneously
engaged by the user (App. Br. 7). Indeed, according to Appellant, “the
claimed language is subject to no other interpretation than that the
engagement be simultaneous with the claimed ‘first pattern of touch’, which
is described at what is being responded to” (id.).
We agree with the Examiner’s finding the “first pattern of touch” is
not in the same clause with “said at least one context modifier switch” (Ans.

4 The rejection of claim 60 as being rejected under 35 U.S.C. §103(a) as
being unpatentable over Pihlaja has been withdrawn by the Examiner (Ans.
33).
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3 and 26). We agree the recitation makes the additional element to be
simultaneously engaged with the context modifier switch unclear.
Accordingly, we are persuaded that the invention as recited in claims
2 and 27 are indefinite. Claims 6-8, which depend from claim 2 and claims
28-34, which depend from claim 27 are also indefinite. Therefore,
Appellant has not persuaded us of error in the Examiner’s rejection of claims
2, 6-8 and 27-34 under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention is in error.

ISSUE 2
35 U.S.C. § 112, first paragraph, written description
Claims 2, 6-8, and 27-34
We pro forma reverse the Examiner’s rejections under § 112, first
paragraph, as failing to comply with the written description requirement,
because we have sustained the Examiner’s rejection under §112, second
paragraph, as being indefinite supra, and we decline to rely on speculation
as to the meaning of the terms employed and assumptions as to the scope of
these claims. Again, we hasten to add that this is a procedural reversal
rather than one based upon the merits of the rejection.

Claim 54
Appellant argues their Specification sufficiently describes “said
device controller unit being configured to detect contact of a first type
indicative of a user holding the portable electronic device along detected
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contact areas on one or more of the vertical or horizontal controls, and in
response to ignore such contact” as recited in claim 54 (App. Br. 9-10).
The Examiner finds the disclosure cited by Appellant (Spec. 31,
ll. 18-22) does not describe the contact indicative of a user holding the
device along detected contact areas on two or more vertical controls or two
or more horizontal controls (Ans. 7 and 28).
Appellant cites Specification page 31, lines 18-22 as providing
support for the recited device controller (App. Br. 9-10) which states:
An alternative to providing a means for explicit specification of which
sensors to ignore is to use software that automatically ignores contact
other than taps and slides (e.g. contact that hasn't changed for the last
fraction of a second), so that contact with a hand that is merely
holding the device will automatically be ignored.

However, this portion is recited in a “means plus function” format,
and thus, provides no support for the controller unit.
Accordingly, the Examiner did not err in finding the invention as
recited in claim 54 fails to comply with the written description requirement.

Claim 57
Appellant argues their Specification discloses a touch sensitive
display joined to the enclosure as original claim 11 used the exact
terminology (App. Br. 11). Additionally, Appellant contends the term
“display” may be broader than “touch sensitive display” as currently recited,
but that “display” provides the written description support (id.).
The Examiner finds the original disclosure in claim 27 recites “a
touch sensitive display comprised in the enclosure” (Ans. 7-8). The
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Examiner further finds claim 11 recites a “display” which is a different
element than “touch sensitive display” (Ans. 29). Thus, the Examiner
asserts, adequate written description for a touch sensitive display “joined” to
the enclosure is absent from the Specification (id.).
Appellant further argues adequate written description exists for
“exactly two touch sensitive areas” as two sensors are shown in Figure 10
(1002 and 1005) and further described in their Specification (App. Br. 12).
The Examiner disagrees since the claim requires “exactly” two touch
sensitive areas and Figure 10 discloses six sensors (1001-1006) (Ans. 29).
Thus, exactly two touch sensitive areas are not supported by the written
description (Ans. 30).
We agree with Appellant that adequate written support exists for a
touch sensitive display joined to the enclosure. We agree that display covers
the subset of touch sensitive displays and further find a touch sensitive
display “comprised in” the enclosure is “joined to” the enclsoure. We
further agree with Appellant that “exactly” two touch sensitive areas is
supported in the Specification on page 59, ll. 4-5 which states “[a] preferred
embodiment of this class of embodiments has two or more touch sensistive
edges.” Accordingly, by specifying this range, Appellant has provided
adequate support for “exactly” two touch sensitive areas.
Accordingly, the Examiner erred in finding the invention as recited in
claim 57 fails to comply with the written description requirement.

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Claim 58
Appellant argues adequate written description exists for the “context
modifier” modifying context of both the touchscreen keyboard and non-
keyboard inputs (Spec. 32, ll. 4-6). According to Appellant, although the
term is not used explicitly in the Specification, Appellant’s description
describes the modifier keys modifying keyboard inputs (Fig. 15a-b) and non-
keyboard (link click) inputs (App. Br. 12).
We agree with Appellant. First, we find, taking a broad, but
reasonable interpretation of the terms in light of the Specification, “modify”
means “change.” As such, in contrast to the Examiner’s findings (Ans. 31),
we find that changing a character/letter to be displayed in different case
version is modifying the context of the virtual keyboard input.
Specifically, the Specification at page 69, line 24 through page 70,
line 3 describes two modifier features - one to use the modifier spot as a
Shift key to modify the keys on the virtual keyboard and one to use the
modifier spot to cause a menu to appear on the display when clicking on a
screen item (see also Figs. 14A-B and 15A-B). We take a broad, but
reasonable interpretation of “non-keyboard input” and find that a non-
keyboard input is an input that is not a keyboard input. Thus, we find the
example set forth in Figures 14A and 14b – clicking on a link displayed on a
display, is a non-keyboard input.
The claim states the device comprises a context modifier button
operable to modify the context of both user touchscreen keyboard and user
touchscreen non-keyboard inputs. However, the claim does not require both
be operable at the same time. We find the Examiner’s argument that a single
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device operable to perform both functions is unpersuasive (Ans. 31). Both
embodiments are disclosed as being subclasses of “[o]ne class of
embodiments of the present invention…in which each device in the class
includes a touch screen and …one or more modifier spots” (Spec. 69, ll. 24-
25).
Thus, the Examiner erred in finding the invention as recited in claim
58 fails to comply with the written description requirement.

Claim 59
Initially, as noted above with respect to claim 57, we find Appellant
has disclosed a touch sensitive display joined to the enclosure. We further
agree with Appellant that their Specification discloses the “browser program
code installed in memory accessible by the controller” (see App. Br. 13). To
comply with the written description requirement, we determine whether the
disclosure “clearly ‘allow[s] persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.’” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations
omitted). Here, we find the disclosure “reasonably convey[s] to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Id. Indeed, the Specification describes that the
primary storage may hold programs (Spec. 79, ll. 17-31). Such a program
may be a browser program. We also agree with Appellant’s further
explanation that their disclosure describes the memory is accessible by the
controller and performs the recited limitation (App. Br. 13).
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Accordingly, the Examiner erred in finding the invention as recited in
claim 59 fails to comply with the written description requirement.

Claim 60
Initially, as noted above with respect to claim 57, we find Appellant
has disclosed a touch sensitive display joined to the enclosure. The
Examiner argues Appellant has not provided adequate support for the
limitation of “wherein at least one of the effective pixel counts in a
respective dimension is achieved by halving the native resolution of the
touch sensitive display along the respective dimension” because the
Specification discloses a number of “virtual” pixels in one dimension
achieved, not effective pixel counts (Ans. 10-11). Further, the Examiner
argues the display disclosed in the Specification is NOT a touch sensitive
display (Ans. 11).
We agree with Appellant. We find the broader term “display” is
reasonably, but broadly interpreted to include the touch sensitive display.
Thus, the Examiner erred in finding the invention as recited in claim
60 fails to comply with the written description requirement.

ISSUE 3
35 U.S.C. § 112, first paragraph, enablement
Claim53
The Examiner asserts that the recited “second one of said one or more
horizontal controls” does not have adequate support in Appellant’s
Specification (Ans. 31-32). We disagree with the Examiner since we
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understand the interpretation to be as set forth by Appellant – that a first and
a second horizontal control are recited – and supported.5
Thus, the Examiner erred in finding the invention as recited in claim
53 fails to comply with the written description requirement.

ISSUE 4
35 U.S.C. § 103(a): claims 1, 3-5, 9-11, 57, and 59
Claims 1, 3-5, 9-11
Appellant argues the pixel count and pixel density are not mere design
choices (App. Br. 17-21). The Examiner finds the particular effective pixel
count and pixel density of the display and the particular size of the enclosure
are mere size changes of the various criteria (effective pixel count, effective
pixel density for the display, and the size of the enclosure) (Ans. 32). Thus,
the Examiner finds these chosen values are an obvious matter of design
choice (id.).
Appellant additionally argues the Examiner’s assertion of what is
“‘well known’ [is] improperly officially noticed and improperly based on
common knowledge” (App. Br. 18). Additionally, Appellant argues at time
of filing, the particular combination was not on the market, the Examiner
offered no reason why an ordinary artisan would have modified the criteria,
and the present art teaches away (App. Br. 17-21).

5 Should further prosecution occur, we suggest claim 53 be rewritten to
clarify the antecedent basis. Specifically, we find the current recitation of “a
second one of said one or more horizontal controls” has an unclear
antecedent basis in light of its dependence on claim 48. We recommend that
Appellant rewrite claim 53 to clarify that the second control is the second
horizontal control of the one or more horizontal controls.
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Issue 4: Has the Examiner erred in finding the recited pixel count and
pixel density as recited in claim 1 are design choices?

ANALYSIS
We agree with the Examiner that the recited pixel count and pixel
density are design choices. Indeed, as noted by the Examiner (id.),
Appellant has provided a list of various devices with various pixel counts
and pixel densities (see Spec. 4, Table 1). Appellant argues their solution is
the optimal pixel count, size, and pixel density and the device size would
have to change based on the recited pixel density and pixel count (App. Br.
18). However, we find Appellants’ arguments to be unpersuasive. We agree
with the Examiner that such a combination is a design choice. See In re
Larson, 340 F.2d 965, 968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523
(CCPA 1961). Further, Appellant has not shown determining this particular
combination would have been uniquely challenging or difficult for an
ordinary artisan or represented an unobvious step over the prior art (see
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))).
We find Appellant’s other arguments unpersuasive as the Examiner
has argued the size choices are design choices.
Accordingly, the Examiner did not err in finding Pihlaja would have
taught or suggested the invention as recited in independent claim 1;
independent claim 11, argued on the basis of claim 1; and dependent claims
3-5, 9 and 10, not separately argued. Therefore, the Examiner did not err in
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rejecting claims 1, 3-5, and 9-11under 35 U.S.C. § 103(a) for obviousness
over Pihlaja.

Claims 57 and 59
Initially we again find, based on the findings and reasons set forth
with respect to claim 1 above, the recited pixel count and pixel density are
design choices.
In addition, Appellant argues Pihlaja does not teach the claimed
limitation “a first touch sensitive area disposed along a bottom edge of said
enclosure, extending from approximately a midpoint along the bottom edge
toward a right edge of said enclosure, and a second touch sensitive area
disposed along a right edge of said enclosure.” (App. Br. 21). According to
Appellant, such a relocation “in order to view a larger image” would not
work because the relocated senor of Pihlaja would still extend over half of
the bottom edge of the screen and would not allow a screen size increase
(id.).

Issue: Has the Examiner erred in finding “a first touch sensitive area
disposed along a bottom edge of said enclosure, extending from
approximately a midpoint along the bottom edge toward a right edge of said
enclosure, and a second touch sensitive area disposed along a right edge of
said enclosure” as recited in claim 57?

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ANALYSIS
We find Pihlaja teaches or suggests the recited limitation. We find
Pihlaja teaches or at least suggests, the touch sensitive regions relocated to
the edges of the enclosure as shown in Fig. 7. We further agree that all soft
buttons of the device are located to the right half of as shown in Fig. 5 of
Pihlaja, and one of ordinary skill in the art could have reduced the size of the
first touch sensitive area (107). Pihlaja further discloses the linear input
devices may be place on sides other than the display side, thus suggesting
placement on the edges of the disclosure (pg. 4, ¶ [0038]). Additionally, we
agree with the Examiner that the location and size of the touch sensitive
regions are design choices and further note Appellant has not shown the
placement would have been uniquely challenging or difficult for an ordinary
artisan or represented an unobvious step over the prior art.
Therefore, we find Appellant’s argument unpersuasive. Accordingly,
the Examiner did not err in rejecting claim 57 under 35 U.S.C. § 103(a) for
obviousness over Pihlaja.
Appellant did not separately argue claim 59. Accordingly, the
Examiner did not err in rejecting claim 59 under 35 U.S.C. § 103(a) for
obviousness over Pihlaja.

ISSUE 5
35 U.S.C. § 103(a): claims 2, 6-8, 48-52, 55, 56, and 58
Claims 2 and 6-8
We pro forma reverse the Examiner’s rejections under § 103(a), as
being unpatentable over Pihlaja and Vaananen, because we have sustained
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the Examiner’s rejection under §112, second paragraph, as being indefinite
supra, and we decline to rely on speculation as to the meaning of the terms
employed and assumptions as to the scope of these claims. Again, we hasten
to add that this is a procedural reversal rather than one based upon the merits
of the rejection.

Claims 48-52 and 55
Appellant asserts their invention is not obvious over Pihlaja and
Vaananen because neither reference teaches a modifier switch disposed at
the edge of the enclosure as recited in claim 48 (App. Br. 23). Specifically,
Appellant contends Vaananen teaches the modifier switch (the Aa shift key)
at the edge of the keyboard but not at the edge of the enclosure (id.).
Additionally, Appellant argues Vaananen does not teach “the context
modifier switch extends from the edge at which it is disposed to at least a
portion of the front of the enclosure” (id.). Appellant asserts the claimed
location provides improved functionality.

Issue: Has the Examiner erred in finding the combination of Pihlaja
and Vaananen would have taught or suggested “a modifier switch disposed
at the edge of [the] enclosure” as recited in claim 48?

ANALYSIS
We agree with and adopt the Examiner’s findings that the
combination of Pihlaja and Vaananen teaches or suggests a modifier switch
disposed at the edge of the enclosure (Ans. 33-34). Appellant did not
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separately argue claims 49-52 and 55 which depend from independent claim
48. Accordingly, Appellant has not shown the Examiner erred in finding the
combination of Pihlaja and Vaananen teaches or suggests the invention as
recited in claims 48-52 and 55. Therefore, the Examiner did not err in
rejecting claims 48-52 and 55 under 35 U.S.C. § 103(a) for obviousness over
Pihlaja and Vaananen.

Claims 56 and 58
Appellant argues the Examiner’s assertion that making the context
modifier switch operable as a right-click button is not a design choice (App.
Br. 24). Appellant further contends that although right-click menus are well
known in response to a mouse-button right click, the claimed feature
requires two inputs – one on a modifier switch and one on a touchscreen
display item (id.).
Issue: Has the Examiner erred in finding the context modifier switch
being operable as a right-click button, which displays a menu on said display
when the user clicks on an item on said display while simultaneously
engaging the right-click context modifier switch is a design choice?

ANALYSIS
We agree with the Examiner’s findings and conclusions (Ans. 34-35).
We emphasize Vaananen teaches use of a shift key and both Barlow and
Agrafiotis teach use of a right-click button (Vaananen, ¶[0018]; Barlow, col.
24, ll. 42-46; and Agrafiotis, col. 20, ll. 45-46). We agree with the Examiner
that using a shift key or a right-click button as a context modifier switch,
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which displays a menu on the display when a user click on a display item
while simultaneously engaging the right-click button (Ans. 34-35).
We further find the context modifier button being operable to modify
context of both the user touchscreen keyboard inputs and the user
touchscreen non-keyboard inputs is taught or suggested by the combination
of Pihlaja and Vaananen. Specifically, Pihlaja teaches use of context
modifier button (Abstract) while Vaananen teaches use of a shift button as a
context modifier switch simultaneously pressed with another input (pg. 2,
¶ [0018]). Both Barlow and Agrafiotis teach using a right-click button as a
context modifier switch (Barlow, col. 24, ll. 42-46 and Agrafiotis, col. 20, ll.
45-46). Therefore, we agree with the Examiner the context modifier switch
being operable as a right-click button which displays a menu on said display
when the user clicks on an item on said display while simultaneously
engaging the right-click context modifier switch is a design choice. As
further emphasis, we find the relied upon references would have fairly
taught or suggested such a design choice.
Therefore, the Examiner did not err in rejecting claims 56 and 58
under 35 U.S.C. § 103(a) for obviousness over Pihlaja and Vaananen.

CONCLUSIONS
(1) Claims 53 and 60 have not been shown to be unpatentable on this
record.
(2) Claims 1-11, 27-34, and 48-52, and 54-59 are not patentable.

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DECISION
(1) The rejection of claims 2, 6-8, and 27-34 under 35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as
the invention is affirmed.
(2) The rejection of claims 2, 6-8, 27-34, and 57-60 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement is reversed.
(3) The rejection of claim 54 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement is affirmed.
(4) The rejection of claim 53 under 35 U.S.C. §112, first paragraph, as
failing to comply with the enablement requirement is reversed.
(5) The rejection of claims 1, 3-5, 9-11, 57, and 59 under 35 U.S.C.
§103(a) as being unpatentable over Pihlaja is affirmed.
(6) The rejection of claims 2 and 6-8 under 35 U.S.C. §103(a) as being
unpatentable over Pihlaja and Vaananen is reversed.
(7) The rejection of claims 48-52, 55, 56, and 58 under 35 U.S.C. §103(a)
as being unpatentable over Pihlaja and Vaananen 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) (2010).

AFFIRMED-IN-PART

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