Ex parte Roth

Board of Patent Appeals and Interferences

Apr 19, 2000

08511268 (B.P.A.I. Apr. 19, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT T. ROTH
____________
Appeal No. 1998-0746
Application No. 08/511,268
____________
HEARD: April 7, 2000
____________
Before HAIRSTON, LALL, and GROSS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 15
through 35.
The disclosed invention relates to an arrangement of a
numeric keypad in first and second immediately adjacent
straight parallel rows of five keys each in clockwise
Appeal No. 1998-0746
Application No. 08/511,268
2
ascending order of the numeric keys. No other actuable keys
are located between the parallel rows of numeric keys.
Claim 15 is illustrative of the claimed invention, and it
reads as follows:
15. A keypad for facilitating efficient entry of numeric
data, said keypad comprising:
a plurality of actuable keys, at least some of which are
numeric keys wherein an associated numeral unique to each
numeric key is affixed to or adjacent that key, each numeric
key having a predetermined length along a first dimension of
said keypad;
said numeric keys being arranged in first and second
immediately adjacent straight parallel rows of five keys each
in clockwise ascending order of said associated numerals such
that none of said actuable keys are disposed between said
parallel rows of said numeric keys, and such that said rows
extend along a second dimension of said keypad and are
arranged in said first and second dimensions in positions
facilitating efficient entry of numeric data;
wherein said keypad contains ten of said numeric keys and
each said numeric key is uniquely associated with a respective
numeral in the range of zero through nine.
The references relied on by the examiner are:
Deakin D 145,780 Oct. 22,
1946
Schmidt 4,522,518 June 11,
1985
Claims 15, 16, 18 through 30, 34 and 35 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Schmidt.
Appeal No. 1998-0746
Application No. 08/511,268
3
Claims 17 and 31 through 33 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Schmidt in view of Deakin.
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
The obviousness rejection of claims 15 through 35 is
reversed.
The examiner states (Answer, page 4) that:
Schmidt discloses in Fig. 4 the claimed
plurality of keys with the numerical keys arranged
in two parallel rows of five and in clockwise
ascending order. The keys are not arranged
immediately adjacent to each other because four keys
are inserted between the rows. Fig. 2b discloses
the keys in a substantially parallel configuration
with the keys immediately adjacent to each other.
One of ordinary skill in the art at the time of the
invention would have recognized that the specific
arrangement of the key[s] is based on the particular
needs and adaptations for a particular use. It is
clear that the concept of placing keys adjacent to
each other for ease of use because the keys are
related is a well known concept. Further, the
arrangement of keys in an ascending clockwise
fashion is also known and desirable based on the
specific application. Thus, the combination of
these two arrangements for specific purposes would
have been obvious because the combination of the two
arrangements would provide the well known advantages
inherent in each configuration.
Appeal No. 1998-0746
Application No. 08/511,268
4
Appellant argues (Brief, pages 6 and 7) that the examiner
is “merely picking and choosing teachings from various prior
art embodiments” based on hindsight knowledge gleaned from
appellant’s invention. We agree. Other than appellant’s
disclosed and claimed invention, the examiner has not produced
any evidence that the skilled artisan would have known to
combine the two embodiments in Figures 2b and 4 of Schmidt to
arrive at the claimed invention. The numerical keys in Figure
2b of Schmidt are intentionally staggered to fit between the
alphabetical keys of the keyboard arrangement (column 8, lines
16 through 21), and the two straight columns of numerical keys
in Figure 4 of Schmidt are specifically separated by four
numeric-related punctuation keys (column 8, line 54 through
column 9, line 2). In Figure 4, the left hand accesses the
low numbers (i.e., 1, 2, 3, 4 and 5), and the right hand
accesses the high numbers (i.e., 6, 7, 8, 9 and 0) (column 8,
lines 64 through 66). The examiner’s rationale falls flat on
its face because Schmidt staggered the numerical keys in
Figure 2b for “ease of use,” and Schmidt specifically located
the punctuation keys between the numerical keys in Figure 4
for the same reason. Based upon such specific teachings in
Appeal No. 1998-0746
Application No. 08/511,268
5
Schmidt, neither embodiment can be modified so that the
numeric keys are arranged in first and second immediately
adjacent straight parallel rows of five keys each in clockwise
ascending order so that no other actuable keys are disposed
between the parallel rows of numeric keys as claimed. Thus,
in the absence of a convincing line of reasoning by the
examiner for modifying the two embodiments in Figures 2b and 4
of Schmidt, we agree with the appellant (Brief, page 7) that
“the use of such impermissible hindsight is not adequate
motivation to arrive at the present invention and . . . the
Examiner has improperly combined the two distinct embodiments
of Schmidt in order to meet the limitations of the claimed
invention.” As a result thereof, the obviousness rejection of
claims 15, 16, 18 through 30, 34 and 35 is reversed.
Turning next to the obviousness rejection of claims 17
and 31 through 33, appellant argues (Brief, page 16) that:
Deakin discloses a telephone desk stand having
numeric keys arranged in two vertical columns in
counterclockwise ascending order and placed adjacent
to their associated letters. In contrast thereto,
the keyboard of Schmidt includes separate alphabet
and numeric keypads for entry of alphabet and
numeric data. Appellant respectfully submits that
it would not be obvious to incorporate the numeric
key and letter association of Deakin with a computer
Appeal No. 1998-0746
Application No. 08/511,268
6
keyboard such as disclosed by Schmidt, since there
would be no motivation for doing so.
We agree. Inasmuch as hindsight can not be a motivating
factor for combining the teachings of Deakin with those of
Schmidt, we agree with appellant (Brief, pages 18 and 19) that
“the Examiner has failed to establish a prima facie case of
obviousness.” In summary, the obviousness rejection of claims
17 and 31 through 33 is reversed.
DECISION
The decision of the examiner rejecting claims 15 through
35 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
Appeal No. 1998-0746
Application No. 08/511,268
7
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
lp
Appeal No. 1998-0746
Application No. 08/511,268
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BIRCH, STEWART, KOLASCH & BIRCH
P.O. BOX 747
ATTN: JOE McKINNEY MUNCY
FALLS CHURCH, VA 22040-0747
Leticia
Appeal No. 1998-0746
Application No. 08/511,268
APJ HAIRSTON
APJ GROSS
APJ LALL
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 8, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT