Ex Parte Provencher et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10837018 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIKE PROVENCHER and KENT BIGGS
____________

Appeal 2009-002339
Application 10/837,018
Technology Center 2600
____________

Decided:1 June 29, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002339
Application 10/837,018

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-27. See App. Br. 3. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We affirm-in-part and enter a new ground of rejection
under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants invented a computer keyboard having a keypad capable of
operating in a PC mode and a telephone mode.2
Claim 1 which further illustrates the invention follows:
1. A computer keyboard, comprising:
a keypad having upper, middle and lower rows, each row having at least
three keys; wherein the keypad is capable of operating in a PC mode and a
telephone mode such that:
the PC mode comprises PC/numeric and PC/cursor-control submodes
such that, in the PC/numeric submode, keys in the upper row correspond to
the numbers 7- 9 and keys in the lower row correspond to the numbers 1-3
and, in the PC/cursor- control submode, at least one key in each of the upper,
middle and lower rows corresponds to a cursor control command; and
in the telephone mode, keys in the upper row correspond to the
numbers 1-3 and keys in the lower row correspond to the numbers 7-9, and
the computer keyboard is arranged to transmit, to a host computer, a signal
corresponding to the key operated on the keypad in the telephone mode.

2 See generally App. Br. 3-4 and Spec 2-5.
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The Rejections
The Examiner relies upon the following prior art references as
evidence of unpatentability:
Haber US 5,375,165 Dec. 20, 1994
Kim US 6,281,812 B1 Aug. 28, 2001
Clapper US 2003/0011571 A1 Jan. 16, 2003

Claims 13 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haber and Kim (Ans. 3-5).
Claims 1-12 and 14-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haber, Kim and Clapper (Ans. 5-10).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Claim 13 and 273
Appellants argue that Haber teaches away from the incorporation of
telephone operation in a host computer and therefore the combination of
Haber and Kim is improper (App. 7-8). It is the Examiner’s position that the
combination is based upon Haber’s use of two different sets of keypad
configurations based upon the mode selected in Kim’s computer keyboard
and therefore the rejection is proper. See Ans. 10.

3 Appellants argue claims 13 and 27 separately. See App. Br. 7-11.
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ISSUE
Have the Appellants shown that the Examiner erred in finding that the
combination of Haber and Kim discloses a computer keyboard wherein the
keyboard transmits to the host computer a code corresponding to the mode
of the keypad’s function?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Haber
1. Haber discloses that the keypad area of the computer keyboard serves a
dual purpose depending upon the state of the DIAL key 206 and the LINE
key 207 on the computer keyboard (Col. 6, ll. 31-34).
2. In a standard keyboard mode, the LINE Key 207 and the DIAL Key 206
are not activated; however, in the control mode both keys are activated (Col.
5, ll. 58-60).

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3. Figure 4 of Haber is reproduced below:

Figure 4 discloses a keypad area of the keyboard in standard mode
employed in common PC usage where there is no telephone related
activity.
4. Figure 5 of Haber is reproduced below:

Figure 5 discloses a keypad area of the keyboard in control mode
employed in telephone related activities using a Dual Tone Multi-
Frequency (DTMF) layout.
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5. LINE key 207 activates keypad area 205 while the other keys are
disabled. Activating DIAL key 206 causes the scan codes to interpret the
keypad area as shown in Figure 5 (Col. 7, ll. 36-50).
6. Figure 6 of Haber is reproduced below:

Figure 6 discloses a computer keyboard 201 in association with a
keyboard controller 310 which interprets the code from the keyboard
and determines if the code is transmitted to the computer 241 or the
telephone 311.
Kim
7. Kim discloses a computer having a light emitting diode (LED) display
keyboard device having a number lock key for activating numerical function
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keys on the keyboard and a telephone lock key for activating the telephone
function keys (Abs.).
8. Kim discloses that the corresponding function keys are automatically lit
when a calculating or telephone function is performed in a window
environment (Col. 5, ll. 35 to 44).

PRINCIPLES OF LAW
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int'l v. Teleflex, Inc., 550
U.S. 398 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock [,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.

KSR, 550 U.S. at 417. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 418. Such a showing requires:
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“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Appellants argue that while the Examiner admits that Haber does not
disclose a keyboard arranged to transmit to the host computer as claimed, the
Examiner overlooks the fact that Haber actually teaches away from the Kim
reference. See App. Br. 8-9. The Appellants base their argument on Haber’s
Background of the Disclosure section, specifically column 3, lines 56-69
(App. Br. 8). The Appellants seek further support for their arguments by
stating that Haber asserts independent power sources for the telephone
functionality and computer system (App. Br. 8). Finally, the Appellants
argue that Haber appears to indicate a clear opposition to combining the
functionality of the keyboard and the telephone service with the computer
system by maintaining that the combined keyboard telephone functionality is
severely compromised because of its dependency on the operational status of
the PC. See App. Br. 9.
The Examiner disagrees with the Appellants’ assertion that Haber is
directed to the independent operation of telephone functionality from normal
keyboard functionality (Ans. 10). It is the Examiner’s position that Haber is
relied upon to disclose the use of two different sets of keypad configurations
based upon the mode selected in Kim’s computer keyboard (Ans. 10).
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As previously noted, the Appellants rely upon Haber, column 3, lines
56-59, to support their arguments. Haber, however, refers to the desire to
have an autonomous arrangement with the keyboard and a telephone
instrument so that the PC does not need special adaptation to handle the
combined functionality. See Haber, col. 3, ll. 56-60. Haber is aware of this
concern and provides a keyboard that addresses the combined functionality
without the need to adapt to the PC (FF1-6). Further, the Appellants rely
upon sections of Haber where Haber discusses and critiques the state of the
art as well as specific prior art references (App. Br. 8-9). These sections
have no bearing on the invention of Haber other than providing insight to the
state of the technology. Therefore, the Appellants’ assertion that Haber
discloses separation of telephone functionality of a keyboard from standard
keyboard functionality is not supported by the Haber reference.
Appellants argue that the combination of Haber and Kim would
merely result in the addition of the indication of active keys on the keyboard
of Haber and therefore Kim does not address the noted deficiencies of
Haber. See App. Br. 10. Haber discloses the dual functionality of the
keypad area of a keyboard in regards to computing and telephone modes (FF
3-6). However, instead of sending a signal corresponding to the telephone
mode to the host PC, Haber sends the signal to a telephone instrument (FF
6). Kim discloses that the keyboard transmits to the host computer a signal
corresponding to both the telephone and computing modes (FF 7-8).
Therefore, Kim addresses Haber’s deficiency by disclosing that directing a
signal to the host computer with regard to the telephone operation was well
known in the art. Whether or not an additional indication key is positioned
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on the keyboard of Haber does not diminish the combination of Haber and
Kim. Therefore, we do not find the Appellants’ argument persuasive.
It is the Appellants’ position that the Examiner is now applying Haber
to Kim instead of applying Kim to Haber as originally presented. See App.
Br. 11 and Reply Brief 5-6. The Appellants further argue that the
combination of Haber and Kim would result in a keypad arrangement having
an identical key layout in each mode and therefore would not address the
claimed invention. See App. Br. 11 and Reply Br. 5-6. We do not find this
argument persuasive because the Examiner relies upon the combination of
Haber and Kim and, as we discussed previously, the combination of Haber
and Kim discloses a keypad area of a keyboard wherein the keypad operates
both in a PC and telephone mode with appropriate keypad layouts.
Claim 13 actually reads on the Haber reference. Claim 13 only
requires that the keyboard transmit to the host computer a code
corresponding to the key operated in the keypad in accordance with the
mode of the keypad. Haber sends a signal to the host computer when Haber
is operating in PC mode (FF 6). Therefore, for these reasons, we find that
Haber actually anticipates claim 13. Nevertheless, we agree with the
Examiner's obviousness rejection based on Haber and Kim as obviousness
rejections can be based on references that happen to anticipate the claimed
subject matter. See In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979).
We find that Appellants have not persuasively rebutted the Examiner's
prima facie case of obviousness for claim 27, but merely contend that the
claim includes additional features not addressed by the Haber and Kim
combination (App. Br. 6-11).
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Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Since
Appellants did not particularly point out errors in the Examiner’s reasoning
to persuasively rebut the Examiner's prima facie case of obviousness, the
rejection is therefore sustained.
We will sustain the Examiner’s obviousness rejection of claims 13
and 27.

ISSUE
Have the Appellants shown that the Examiner erred in finding that the
combination of Haber, Kim and Clapper discloses a computer keyboard
wherein the keyboard transmits to the host computer a code corresponding to
keypad operating in the telephone mode?

Claim 1
Appellants argue that the obviousness rejection of claim 1 is improper
because the Examiner rejected the claim without reciting the Kim reference
in the Final Rejection (Reply Br. 7-8). The Examiner applied Kim in
obviousness rejections of claims 13 and 27 for the first time in the Final
Rejection; Kim was not included in the obviousness rejections of claims 1-
12 and 14-26 until the Examiner’s Answer. See Final Rej. 3-9 and Ans. 5-
10.
After reviewing the Final Rejection, it is clear that the Examiner never
addressed claim 1 in regard to the combination of Haber and Kim. The
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Examiner only included Kim in the obviousness rejection statement in the
Answer. Therefore the obviousness rejection of claim 1 is reversed because
Kim’s exclusion from the obviousness rejection is more than a minor error,
and because the Examiner never established a prima facie case of
obviousness against claim 1 prior to the Answer.4
We will not sustain the Examiner’s rejection of independent claim 1
and dependent claims 2-12 and 14-26 for similar reasons.

New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103(a) for claim 1.
Claim 1 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Haber in view of Kim.
Haber discloses a computer keyboard (Fig. 3) with a keypad having
upper, middle and lower rows where each row has at least three keys and
wherein the keypad is capable of operating in PC mode and telephone mode
(Figs. 3-6). Haber discloses that in the PC mode, the keys in the keypad in
the upper row correspond to numbers 7-9 and the lower row keys correspond
to numbers 1-3 (Fig. 4). Haber further discloses that while in the PC mode,
at least one key in each of the upper, middle and lower rows of the keypad
corresponds to a cursor command (Fig. 4). Haber discloses that while in the

4 See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a
reference is relied on to support a rejection, whether or not in a ‘minor
capacity,’ there would appear to be no excuse for not positively including
the reference in the statement of the rejection.”)

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telephone mode, the upper row keys of the keypad correspond to numbers 1-
3 and lower row keys correspond to numbers 7-9 (Fig. 5).
However instead of sending a signal corresponding to the key
operated on the keypad in the telephone mode to the host computer, Haber
sends the signal to a telephone instrument (Fig. 6). Kim discloses a
keyboard that transmits to the host computer a signal corresponding to both
the telephone and computing modes (col. 5, ll. 42-45). Therefore, Kim
addresses Haber’s deficiency by disclosing that a directing a signal to the
host computer in regards to the telephone operation of a keypad was well
known in the art. Therefore, it would have been obvious to one of ordinary
skill in the art to modify the invention of Haber by directing Haber’s keypad
telephone mode signal to the host computer instead of or in addition to a
telephone instrument in view of the teachings of Kim since the technology
was well known at the time of the invention.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. 41.50(b), we emphasize that our decision does not
mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

CONCLUSION
1. Appellants have not shown that the Examiner erred in finding that the
combination of Haber and Kim discloses a computer keyboard wherein the
keyboard transmits to the host computer a code corresponding to the mode
of the keypad’s function.
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2. Appellants have shown that the Examiner erred in finding that the
combination of Haber, Kim and Clapper discloses a computer keyboard
wherein the keyboard transmits to the host computer a code corresponding to
keypad operating in the telephone mode.

ORDER
We will sustain the decision of the Examiner to reject claims 13 and
27; however, we will not sustain the decision of the Examiner to reject
claims 1-12 and 14-26.
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
rejection.., shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE 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 ....
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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).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

KIS
HEWLETT PACKARD COMPANY
P. O. BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400