Ex parte Robbins

Board of Patent Appeals and Interferences

May 23, 2001

08398834 (B.P.A.I. May. 23, 2001)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DANIEL C. ROBBINS
________________
Appeal No. 1999-0564
Application 08/398,834
________________
ON BRIEF
________________
Before THOMAS, JERRY SMITH and BLANKENSHIP, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 2-11, 13 and 22-
31. Claims 1, 12, 14-21 and 32 had previously been cancelled.
Claim 33 was indicated by the examiner to contain allowable
subject matter. Appellant indicates that claims 6-11, 23-25
and 29-31 are not being appealed [brief, page 2]. Therefore,
Appeal No. 1999-0564
Application 08/398,834
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this appeal is directed to the rejection of claims 2-5, 13, 22
and 26-28.
The disclosed invention pertains to an input device
for a computer. More specifically, the input device has a
keyboard with two sets of keys spaced apart from each other.
A touch sensitive pad is disposed in the space between the two
sets of keys. The input device is designed so that the
operator can operate the touch sensitive pad with an index
finger while keeping the other fingers on the traditional home
keys of the keyboard.
Representative claim 2 is reproduced as follows:
2. A computer with a central processing unit, a memory,
a display and an input device, wherein said input device
comprises:
a keyboard having a plurality of keys, each key
corresponding to one of a plurality of alphanumeric and
punctuation characters, said keys arranged in first and second
sets, each set having a plurality of rows, each set having a
home row of keys for normally receiving the tips of the
fingers of an operator, said first and second sets spaced from
each other, said keyboard having a switching matrix
operatively associated with said keys for generating a
computer input signal corresponding to the key operated by an
operator; and
a touch sensitive input pad disposed in the space between
the two sets of keys and accessible by removing only one index
finger from one of the home keys,
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Application 08/398,834
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wherein the touch sensitive input pad generates one or
more signals corresponding to one or more different pressures
applied to on the pad by the operator.
The examiner relies on the following references:
Bowen 5,502,460 Mar. 26, 1996
(filed Aug. 02,
1994)
“Combined-User Interface for Computers, Television, Video
Recorders, and Telephone, etc.,” IBM Technical Disclosure
Bulletin, Vol. 33, No. 3B, August 1990, pages 116-118
(hereinafter IBM).
Claims 2-5, 13, 22 and 26-28 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
Bowen in view of IBM.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
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Application 08/398,834
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rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 2-5, 13, 22 and 26-28. Accordingly, we
affirm.
Appellant has indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 8]. Consistent with this indication
appellant has made no separate arguments with respect to any
of the claims on appeal. Accordingly, all the claims before
us will stand or fall together. Note In re King, 801 F.2d
1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Therefore, we will consider the rejection against independent
claim 2 as representative of all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
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Application 08/398,834
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837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
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and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
With respect to representative, independent claim 2,
the examiner cites Bowen as teaching a computer in which two
separate sets of keys [80,86] are spaced apart with a touch
sensitive display [84] disposed therebetween. The examiner
cites IBM as teaching a touch sensitive input pad in which two
different pressures are detected for moving a cursor and for
selecting a function, respectively. The examiner finds that
it would have been obvious to the artisan to modify the touch
sensitive display of Bowen to be responsive to two different
pressures as taught by IBM [answer, pages 4-5].
Appellant’s only argument is that the modification
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proposed by the examiner is improper because it would
eliminate the display from the Bowen computer, making it
inoperable for its intended purpose [brief, pages 9-10].
We agree with the position argued by the examiner. As
pointed out by the examiner, the proposed modification does
not replace Bowen’s display with a touch sensitive pad because
Bowen discloses that display 84 may also be a touch sensitive
display [column 7, line 14]. Therefore, all the examiner
proposes to do is modify the touch sensitive display of Bowen
to respond to pressure as taught by IBM. Under this
modification, the Bowen computer would still operate for its
intended purpose.
In summary, the examiner has established a prima facie
case of the obviousness of representative claim 2.
Appellant’s only argument in rebuttal is not agreed with and
is not persuasive of error in the rejection. Therefore, we
sustain the examiner’s rejection of all the appealed claims.
Accordingly, the decision of the examiner rejecting claims 2-
5, 13, 22 and 26-28 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
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Application 08/398,834
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§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-0564
Application 08/398,834
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Paul J. Maginot
Intellectual Property Section
Law Department
AT&T Global Information Solutions Co.
101 West Schantz ECD 2
Dayton, OH 45479-0001