Ex Parte Pihlaja

Board of Patent Appeals and Interferences

Nov 12, 2009

10135966 (B.P.A.I. Nov. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PEKKA PIHLAJA
____________

Appeal 2009-004728
Application 10/135,966
Technology Center 2600
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Decided: November 12, 2009
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejections of
claims 1-21, the only claims pending (App. Br. 2).1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention provides multiple textual characters displayed
on one input key to allow selection and corresponding screen display of such
textual characters (or functions associated with such characters), without the
use of conventional mechanisms such as a separate (e.g. control or shift)
key. In one embodiment, a “touch-sensitive” “keyboard” (Spec. 7:30)
provides a single key displaying one or more selectable characters at various
locations on the key. A user moves a finger, pen, or stylus along the key
toward the desired character to indicate a desired selection of one of the
multiple characters on the key (see Figs. 1b, 1c).
In another embodiment, a hard “mechanic keyboard” (Spec. 10:7-8)
provides the same display of multiple characters on a single key, but instead
of moving a finger, pen, or stylus along the key, the user employs a mouse
or stick controller 222 to indicate directional movement 223 to select one of
the desired characters displayed on the key (see Fig. 2b).
In each embodiment, the invention displays the selected character on a
viewing screen. (Abstract; Spec. 7:28 to 8:11; 10:6-22; 11:10-13).
Exemplary claim 1 follows:
1. A method for selecting a sub-function of at least one key,
wherein the at least one key has a main function, the method comprising:

1 This opinion refers to Appellant’s Brief [hereinafter Br.] and Reply Brief
[hereinafter Reply Br.], and the Examiner’s Answer [hereinafter Ans.].
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showing the at least one key on a touch-sensitive surface;
showing on the key at least one character indicating the main function
of the key at a given first location of the key;
showing on the key at least one character indicating the sub-function
of the key at a given second location of the key, where the sub-
function is a variation of the main function, and wherein the at
least one character indicating the main function and the at least
one character indicating the sub-function are shown on the key
simultaneously;
detecting a sweeping touch of the key on the touch sensitive surface,
wherein the sweeping touch begins at an initial location on the
key, continues in a direction toward the second location of the
key and ends at a termination location, the sweeping touch
being indicative of a selection of the sub- function of the key;
and
implementing the variation of the main function corresponding to the
sub-function of the key.
The Examiner relies on the following prior art references:
Sasaki US 5,717,425 Feb. 10, 1998
Ichbiah US 2003/0014239 A1 Jan. 16, 2003
The Examiner rejected claims 1-21 as obvious under 35 U.S.C. §
103(a) based on Sasaki and Ichbiah.

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ISSUES
Appellant contends that the references do not collectively teach the
simultaneous display of at least two characters on a single key as required by
claim 1, or comparing a distance to a predetermined threshold to determine a
sub-function selection as required by claim 3. (Each character on a key
determines, according to claims 1 and 2 and the disclosure, either a function
or sub-function. Typically, though not required according to claims 1 and 2,
the character displayed on the key and selected is also displayed on the view
screen according to its “function” or “sub-function.” In other words, each
character signifies what (e.g. either the “5” (function) or the “%” (sub-
function) – Fig. 1c (see infra FF 1) will be displayed on a view screen when
the “5” or “%” character on the key is selected.) Appellants also maintain
that claim 2 requires a mechanical keyboard and the references only teach a
soft keyboard (App. Br. 9-19).
Appellant’s arguments raise the following issues: Did Appellant
demonstrate that the Examiner erred in finding that
1) the references collectively teach the simultaneous display of at least
two characters on a single key as required by claim 1;
2) claim 2 requires a mechanical keyboard; and
3) Ichbiah teaches “wherein the sub-function is selected only if the
distance from the initial location to the termination location is longer than a
predetermined threshold” as claim 3 recites?

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FINDINGS OF FACT (FF)
Appellant’s Disclosure
1. Appellant’s Figure 1c is depicted below:

Appellant’s Fig. 1c, depicted above, shows two selectable characters,
“5” and “%”, on a single key, with the former selected by pressing the key
and the later selected by moving a finger or stylus in the direction indicated
(see supra “STATEMENT OF THE CASE”).
2. Appellant discloses a “touch-sensitive” “keyboard” and a
“mechanic keyboard” (id).
3. Appellant’s disclosed invention determines a distance D of
movement for a character/function selection by subtracting the coordinates
(x0, y0) from the coordinates (x1, y1) (see Fig. 1c infra at FF 1). The
distance D is compared to a threshold. (Spec. 6:26-32). Angular direction
of the movement is also calculated to determine the character selection.
“The key can be divided relative to the origin into one or more sectors 152 to
167, whereby one or more sectors correspond to one character, and thus, a
certain character corresponds to the values of the angle relative to the origin.
For example, the ‘%’ character in sectors 152, 153 comprises the values of
the angle θ between α1 < θ < α2.” (Spec. 8:16-20; Fig. 1d).
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Ichbiah
4. Ichbiah’s Figure 3 is depicted below:

Ichbiah’s Figure 3, depicted above, indicates relative movement from
a character 26 in a key center as required to select one of the related
characters 26 to 30.
5. Ichbiah’s system calculates distance and direction by comparing
starting (X1, Y1) and ending coordinates (X2, Y2) of a pen movement to
determine a character selection (¶¶ 0024, 0055, 0057; Figs 14, 16). “[A]
stored set of extended characters corresponds to the slides of a short length
and a stored set of other characters (e.g. upper case characters) correspond
[sic] to slides of a longer length” (¶ 0024).

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Sasaki
6. Sasaki’s Figures 3C, 3D, and 23 are depicted below:

Sasaki’s figures above show areas (e.g., C2, C3) in the corners of keys
corresponding to the selection of different characters related to the main
character in the center of the key.

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A determination of
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obviousness can be based on a showing that “there was an apparent reason to
combine the known elements in the fashion claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant has the burden on appeal
to show reversible error by the Examiner in maintaining the rejection. See
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board,
an applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (citation omitted).
“[W]hen . . . the prior art . . . is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416 (citation omitted).
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” Id. at
417(citation omitted). “‘Our suggestion test is in actuality quite flexible and
not only permits, but requires, consideration of common knowledge and
common sense.’” Id. at 421 (citation omitted).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
ANALYSIS
Claim 1
Appellant’s argument (App. Br. 10-11) that Sasaki does not disclose
multiple characters on a single key because Sasaki’s characters are on two
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keys, is not persuasive. Sasaki discloses characters on different locations
(e.g.,, C2, C3) of the same key (FF 6). Appellant does not define a key in
terms of any defined area, and the simple square-like designations (C2, C3)
on Sasaki’s keys appear merely to designate different sectors of the same
key (see FF 6), similar to Appellant’s disclosed sectors (FF 3). “The
problem in this case is that the appellants failed to make their intended
meaning explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). “It is the applicants’ burden to precisely define the invention, not the
PTO’s.” Id.
In any case, the Examiner’s rejection (Ans. 3-4) based on the
combination of references, relies on Ichbiah for a single key having multiple
selectable characters (FF 4), and relies on Sasaki only to suggest the
simultaneous display on a single key of such multiple characters (FF 6) “so
that the troublesome operations for inputting various characters could have
been reduced” (Ans. 4). In other words, “common knowledge and common
sense,” KSR, 550 US at 421, in light of the reference teachings (FF 4-6),
suggests the simultaneous display of selectable characters on a single key so
that a user need not memorize all the various characters on the single key.
Appellant also argues (App. Br. 11) with respect to Sasaki that “the
main function of the key and the sub-function of the key are not shown on
the key simultaneously. . . .The possibility that a sub-function may be
depicted in the small adjacent keys of FIG. 3D is irrelevant because the main
function and the sub-function have to be shown simultaneously on the same
key.” However, claim 1 recites “at least one character indicating the main
function and at least one character indicating the sub-function . . . shown on
the key simultaneously.”
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That is, the claim requires simultaneous display of characters, not
functions. While Appellant’s argument, liberally construed, implies that
Sasaki does not disclose whether or not the smaller square areas (e.g., C2,
C3) on each key display any characters (or sub-functions) (see FF 6),
Sasaki’s disclosure at least suggests such character key displays, so that a
user can quickly verify which character will be displayed (on a monitor)
without having to remember each designation for multiple keys, as discussed
supra.
Moreover, Appellant acknowledges that “Figure 23 of Sasaki presents
an embodiment in which a small key shows a character (“ or °) indicating a
sub-function that is a variation of a main function of an adjacent large key”
(App. Br. 12). (See FF 6 (displaying Figure 23)). These characters, on the
same key according to the findings supra, satisfy the argued claim
limitation. Claim 1 does not require a character displayed on a key (and
selected) to correspond to the same character displayed on a viewer (i.e.,
after selecting the key character, the “main function” or “sub-function”
recited in claim 1 need not be the same character on the key).
Appellant’s arguments (App. Br. 13-14) that Sasaki, requiring mouse
movement, would change the principal of Ichbiah’s “sweeping cursor
action” (id. at 14) or teach away from Ichbiah, are unconvincing. The
arguments mischaracterize the proposed modification which merely
incorporates Sasaki’s teaching of displaying multiple characters on a single
key (FF 6) into Ichbiah’s single key (FF 4). Moreover, Appellant does not
explain why Sasaki’s mouse movement teaches away from Ichbiah’s
“sweeping cursor action” such that skilled artisans “would be discouraged
from following the path set out in the reference, or would be led in a
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direction divergent from the path that was taken by the applicant,” Gurley,
27 F.3d at 553.
Claim 2
Appellant’s argument (App. Br. 15-17) that claim 2 requires a
“mechanical keyboard” is not commensurate in scope with the claim. Claim
2 recites a “keyboard” without specifying it as “mechanical.” Moreover,
contrary to Appellant’s related arguments (id.), the Specification does not
require such a limiting claim interpretation, because the Specification
describes two types of keyboards, a “mechanic keyboard” and a “touch-
sensitive” “keyboard” (FF 2).
It follows that claim 2, reciting a generic “keyboard,” reasonably
covers both types of keyboards. (See also claim 9, reciting “a touch-
sensitive surface for showing a keyboard, the keyboard . . .” (emphasis
added) (signifying a keyboard need not be mechanical)). Therefore,
Appellant’s arguments supra and further arguments relying on those
presented for claim 1 (App. Br. 16) fail to demonstrate error.
Claim 3
Appellant’s argument (App. Br. 18) that Ichbiah does not disclose or
suggest the determination of a “pre-determined threshold” as required by
claim 3, is unconvincing. Ichbiah calculates a sliding length to determine
which key character is selected (FF 5) as Appellant admits (App. Br. 17-18;
Reply Br. 7).
Skilled artisans would have understood that there would be no reason
to calculate the length to determine a key selection unless the calculation
involved a comparison to a predetermined threshold. (Compare Ans. 9
(citing Ichbiah’s slide length detection at Fig. 11, ¶ 0055)). Further, Ichbiah
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implicitly compares short and long calculated distances to an intermediate
threshold in order to determine which character is selected (see FF 5).
Therefore, Appellant’s arguments fail to demonstrate error.
Claims 4-21.
Appellant (App. Br. 18-31) relies on arguments presented for claims 1
and 2, and also repeats the limitations of claims 4-21, generally asserting
without specific arguments, that the references fail to teach the repeated
limitations. The Examiner outlined the claim limitations (Ans. 6-10). As
such, Appellant’s general denials fail to demonstrate error as required on
appeal. Kahn, 441 F.3d at 985-86; 37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION
Appellant did not demonstrate that the Examiner erred in finding that
1) the references collectively teach the simultaneous display of at least two
characters on a single key as required by claim 1; 2) claim 2 requires a
mechanical keyboard; and 3) Ichbiah teaches “wherein the sub-function is
selected only if the distance from the initial location to the termination
location is longer than a predetermined threshold” as claim 3 recites.

DECISION
We affirm the Examiner's decision rejecting claims 1-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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rvb

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