Ex Parte SinghalDownload PDFPatent Trials and Appeals BoardMay 28, 201912589487 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/589,487 103550 7590 Tara Chand Singhal P.O. Box 5075 Torrance, CA 90510 FILING DATE FIRST NAMED INVENTOR 10/24/2009 Tara Chand Singhal 05/30/2019 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 11195.130 5072 EXAMINER LEE, NICHOLAS J ART UNIT PAPER NUMBER 2624 NOTIFICATION DATE DELIVERY MODE 05/30/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): singhal@att.net chand@internetpromise.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TARA CHAND SINGHAL Appeal 2018-001126 Application 12/589,4871 Technology Center 2600 Before BRADLEY W. BAUMEISTER, ERIC S. FRAHM, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, Tara Chand Singhal is the real party in interest. App. Br. 4. Appeal 2018-001126 Application 12/589,487 STATEMENT OF THE CASE Introduction Appellant's application relates to a handheld electronic device that has an integrated control mechanism that integrates a touch sense control mechanism and an electrical switch control mechanism (Title; Abstract; see Figs. 1, 2, 4). The disclosed invention is applicable to all sorts of handheld electronic devices, such as "remote controls, music devices, gaming devices, personal digital assistants, cameras, direction devices and mobile cell phones" (Spec. 1 :25-27; see also Fig. 4 showing various applicable devices). The disclosed and claimed invention provides (i) a "more versatile device function control means ... to perform a large range of control functions from control means that are situated within a small physical space" (Spec. 2: 10-12); and (ii) "versatile control mechanisms that occupy limited space, can perform many functions, and are ergonomically easy to operate" (Spec. 2: 15-16). Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A handheld electronic device, comprising: a. the handheld electronic device is adapted to be held in a palm of a hand supported by fingers, the topside of the device has a display screen and an integrated control mechanism positioned near the display screen, and wherein a thumb of the same hand is naturally positioned on the topside of the device; b. the integrated control mechanism comprises two different control mechanisms, a single touch-screen control mechanism on a top surface of the integrated control mechanism and a single electro-mechanical switch control mechanism on a bottom surface of the integrated control mechanism to be operated by the thumb, the integrated control mechanism is substantially a square in shape and limited in 2 Appeal 2018-001126 Application 12/589,487 surface area to be one square inch or less and equal to or greater than one quarter square inch; c. the single touch-screen control mechanism is activated for touch control of the device by placing a thumb on the touch surface, wherein this single touch-screen control mechanism performs a plurality of navigation functions; and d. the single electro-mechanical switch control mechanism is activated by applying a downward force on the single touch-screen control mechanism, for mode control of the device including turning the device on/off, thereby the integrated control mechanism on the handheld device, without moving the thumb away from the integrated control mechanism performs multiple functions of navigation and device control. The Examiner's Rejections Claims 1-12 are rejected underpre-AIA U.S.C. § 103(a) as being unpatentable over Zadesky et al. (US 2005/0052425 Al; Mar. 10, 2005) (hereinafter, "Zadesky"), Larsen et al. (US 2007 /0091070 Al; Apr. 26, 2007) (hereinafter, "Larsen"), and Jobs et al. (US 2007/0152979 Al; July 5, 2007) (hereinafter, "Jobs")2 (Final Act. 2-10). Claims 13-20 are rejected under pre-AIA U.S.C. § 103(a) as being unpatentable over Zadesky, Larsen, Jobs, and Allen et al. (US 5,942,733; Aug. 24, 1999) (hereinafter, "Allen") (Final Act. 10-12). 2 Appellant nominally presents arguments in two claim groups. See App. Br. 11-36. Independent claims 1, 8, and 13 are listed in the first group, with all of these claims argued together. App. Br. 27-34. Independent claim 13 and dependent claim 20 are listed in the second group, with both of these claims argued together. App. Br. 34-36. Appellant's arguments regarding the second group are substantially the same as those regarding the first group. Furthermore, Appellant does not argue separately the patentability of dependent claims 2-7, 9-12, or 14-20. See App. Br. 11-36. Accordingly, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal 2018-001126 Application 12/589,487 ANALYSIS We have reviewed the Examiner's rejections (Final Act. 2-12) in light of Appellant's contentions in the Appeal Brief (App. Br. 11-36) and the Reply Brief (Reply Br. 3-16) that the Examiner has erred, as well as the Examiner's response to Appellant's arguments in the Appeal Brief (Ans. 2- 13). We disagree with Appellant's contentions. Except as noted below, we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-12; see also Ans. 2- 11) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (Ans. 11-13). We concur with the conclusions reached by the Examiner, as well as the Examiner's interpretations of the claim limitations. We highlight the following additional points. With respect to independent claims 1, 8, and 13, Appellant argues the Examiner has erred in equating the claimed, "integrated control mechanism" with a display screen of Zadesky, with keys of a Larson keyboard, and with Jobs' text entry interface for a portable communication device (App. Br. 11, 22). We agree with the Examiner's findings (Ans. 12; see also Final Act. 3-4 and Ans. 2-3) that Zadesky is not "only directed to put a mechanically actuated switch underneath a display screen and does not teach or suggest an 'integrated control mechanism' feature of claim l," as argued by Appellant (App. Br. 27). The Examiner finds (see Ans. 12), and we agree, that Zadesky discloses (Fig. 2, 3A, 3B, 4; ,-J 51) a control mechanism providing tracking control through a capacitive touch pad (34, 44) on a surface where the touchpad is depressible for generating a button signal 4 Appeal 2018-001126 Application 12/589,487 through a mechanical switch ( 46). Zadesky further discloses (Fig. 13) a display screen (224) separate from the control mechanism (200). In this light, we are not persuaded by Appellant (see App. Br. 13-22) that the Examiner erred in interpreting the claim limitations recited in claims 1, 8, and 13.3 The Examiner finds, and we agree, that "Larsen discloses a keyboard comprising a touchpad which is substantially square in shape and limited in surface area to be one square inch or less and equal to or greater than one quarter inch and is used for navigation function control of the keyboard (10014; See Fig. 1, 112)" (Final Act. 4; see also Ans. 4). The Examiner finds, and we also agree, that "Jobs discloses mode control of the device including turning the device on/off, thereby the integrated control mechanism on the handheld device, without moving the thumb away from the integrated control mechanism performs multiple functions of navigation and device control (10082)" (Final Act. 5; see also Ans. 5. In general, Appellant's arguments (App. Br. 11, 22, 27-31) are drawn to Zadesky, Larson, and Jobs individually, and not to the combination articulated by the Examiner. The Examiner (see Final Act. 2-12) relies upon Zadesky for all of the subject matter of claim 1 except for the explicit 3 For example, the "handheld electronic device," "single-touch screen control mechanism," "single electro-mechanical switch control mechanism," and "integrated control mechanism" recited in claim 1; the "control mechanism," "handheld device," "single touch sense control mechanism," "single electro-mechanical switch mechanism," and "integrated control mechanism" recited in claim 8; and the "integrated control mechanism," "single touch-screen control mechanism," "capacitive touch sense surface module," and "single electro-mechanical switch control" recited in claim 13. 5 Appeal 2018-001126 Application 12/589,487 teaching of "substantially a square in shape and limited in surface area to be one square inch or less and equal to or greater than one quarter square inch" and "mode control of the device including turning the device on/off, thereby the integrated control mechanism on the handheld device, without moving the thumb away from the integrated control mechanism performs multiple functions of navigation and device control." And, as discussed above, the Examiner relies upon Larson and Jobs for teaching these missing limitations (see generally Final Act. 4-5; Ans. 3-5). Thus, Appellant's contentions (App. Br. 11, 22, 27-31) that Zadesky, Larson, and Jobs individually fail to disclose "an integrated control mechanism" are not persuasive in light of the Examiner's application of a combination of the teachings and suggestions of Zadesky, Larson, and Jobs. We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). In this light, Appellant's arguments (see App. Br. 11, 22, 27-31) concerning the individual shortcomings in the teachings of Zadesky, Larson, and/or Jobs are not persuasive, and are not convincing of the non-obviousness of the claimed invention set forth in independent claims 1, 8, and 13. Reason to Combine The Examiner has provided a factual basis and articulated reasoning with a rational underpinning to support the conclusion of obviousness with regard to claims 1, 8, and 13 (see Final Act. 2-5, 7-9, 10-11; Ans. 11-13). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with 6 Appeal 2018-001126 Application 12/589,487 the Examiner (Final Act. 2-5, 7-9, 10-11; Ans. 11-13) that it would have been obvious to modify Zadesky' s handheld electronic device comprising the integrated control mechanism with Larsen's touch sense control mechanism and Jobs' mode control of the device in order to enhance control on a handheld device controlled by fingers or thumb of a user, as suggested by Larsen and Jobs (see Final Act. 4-5 citing Larsen ,i 14 and Jobs ,i 82). Accordingly, we disagree with Appellant's assertions (App. Br. 11-37) that there is no proper motivation to combine Zadesky, Larsen, and Jobs. Hindsight Appellant contends (App. Br. 27, 31, 33; Reply Br. 3-5, 9-11) the Examiner's obviousness determination is hinged upon impermissible hindsight. To support the allegations of hindsight, Appellant presents statements that the combination of Zadesky, Larson, and Jobs would require more than ordinary skill in the art (App. Br. 27, 31, 33; Reply Br. 3-5, 9- 11). Appellant's statements are unsupported by fact or evidence. In addition, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Icon Health & Fitness, Inc. v. Strava, 2017 WL 744548 *5 (Fed. Cir. Feb. 27, 2017). Also, while not required to, Appellant has not submitted evidence of secondary considerations. Evidence of secondary considerations "may also serve a guard against slipping into use of hindsight." Kahn, 441 F.3d at 986 (Fed. Cir. 2006) (quoting Graham v John Deere Co., 383 U.S. 1, 36 (1966)). Therefore, we accord very little probative value to Appellant's statements that combining the teachings of Zadesky, Larson, and Jobs required more than ordinary skill in the art. 7 Appeal 2018-001126 Application 12/589,487 In view of the foregoing, Appellant's contentions (App. Br. 27, 31, 33; Reply Br. 3-5, 9-11) that it would not have been obvious to combine Zadesky, Larson, and Jobs because the Examiner's reasoning involves hindsight are unconvincing. Reply Brief Appellant has raised several new arguments in the Reply Brief (see Reply Br. 7-14) related to teaching away, level of ordinary skill in the art, non-analogous prior art, and long-felt but unsolved need. However, "[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BP AI 2010) (internal citation omitted) (informative); see also Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief ... is waived.") ( citations and quotation marks omitted). As a result, any new arguments in the Reply Brief not presented in the Appeal Brief need not be considered absent a showing of good why the arguments could not have been presented in the Appeal Brief. See Borden, 93 USPQ2d at 1477. In any event, the arguments made by Appellant in the Reply Brief (Reply Br. 7-14) are not persuasive for the reasons that follow. Teaching Away "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." Ricoh Co. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quotation marks and citations omitted). But "the mere disclosure of alternative designs does not teach 8 Appeal 2018-001126 Application 12/589,487 away . . . . just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012 (quotation marks and citations omitted). As explained in the MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP"), "[ d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments." MPEP § 2123 (II) (citing In re Susi, 440 F.2d 442 (CCPA 1971)). Here, for example, the device and control mechanism of claims 1, 8, and 13 do not preclude a skilled artisan from providing a control mechanism for touch sense control that is substantially square in shape and limited in surface area size while also including mode or on/off control. Appellant does not identify specific teachings or disclosures that would discourage or divert a person of ordinary skill in the art from applying the teachings and suggestions of the prior art as proffered by the Examiner (see Reply Br. 7). Thus, we find that a skilled artisan would not be led away from combining the references as articulated by the Examiner. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed"). Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to determine the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. at 17. "The importance of resolving the level of 9 Appeal 2018-001126 Application 12/589,487 ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry." Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) ("A less sophisticated level of skill generally favors a determination of nonobviousness ... while a higher level of skill favors the reverse."). We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001 ). In this instance, we determine that the level of ordinary skill is best evidenced by the references themselves, particularly Zade sky, Larson, and Jobs. As to the references themselves, Appellant argues, "[t]here are many prior art related to control mechanisms in handheld devices that could have [been] cited as relevant prior art and instead Examiner cit[ ed]ing Larsen and Jobs because there is lack of prior art on the claimed subject matter of [an] Integrated Control Mechanism as in claim 1. This innovation of claimed subject matter on Integrated Control Mechanism has not been fully 10 Appeal 2018-001126 Application 12/589,487 described in the combination of prior arts to make it obvious to a PHOSITA" (Reply Br. 11 ). However, we find that the prior art strives to make handheld portable devices more compact by combining control mechanisms and there is a challenge of designing a user interface and control that allows a user to easily interact with the device. The prior art describes the advantages of combining separate control mechanism types into a single integrated package (see Zadesky ,i 44; Larsen ,i 1; Jobs ,i 5). Zadesky, Larsen, and Jobs all disclose handheld devices with integrated control mechanisms, having a single touch-screen type and single electro-mechanical switch type (see Zadesky ,i,i 4, 81, 82; Larsen ,i,i 1, 2, 10, 12; Jobs ,i,i 50, 53, 64, 65). Furthermore, "single touch-screen type" and "single electro-mechanical switch type" control devices were well-known control devices as evidenced by the prior art (see Zadesky ,i,i 8, 82; Larsen ,i 13, 25; Jobs ,i 64, 82). Because of this, we find that the teachings of Zadesky, Larsen, and Jobs attempt to solve similar problems related to combining control mechanisms, as claimed by Appellant, and it would have been obvious to one of ordinary skill in the art at the time of invention to combine their teachings. Non-Analogous Prior Art We are also unpersuaded by Appellant's contention (Reply Br. 8-9) that the Examiner erred in rejecting claims 1, 8, and 13 because Zadesky, Larsen, and Jobs are non-analogous art. A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MGA 11 Appeal 2018-001126 Application 12/589,487 Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A reference is considered analogous prior art: ( 1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if "the reference still is reasonably pertinent to the particular problem with which the inventor is involved," even though the reference is not within the field of the inventor's endeavor. Bigio, 381 F.3d at 1325. The "field of endeavor" test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply "common sense" in "deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor." Id. at 1326 (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). As to the "reasonably pertinent" test, a reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to 12 Appeal 2018-001126 Application 12/589,487 consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. Clay, 966 F.2d at 659. In the instant case on appeal, Zadesky, Larsen, and Jobs are all analogous art to the Appellant's claimed invention. Specifically, Appellant's invention is a handheld electronic device that has an integrated control mechanism (Spec. p. 3). Zadesky, Larsen, and Jobs all relate to the same problem as the claimed invention of providing a user with a handheld electronic device with integrated control mechanism for controlling the device while being held ( citing Zadesky ,i 4; Larsen ,i 1; Jobs ,i 53). Additionally, Zadesky, Larsen, and Jobs all are directed to the same field of endeavor as Appellant's invention-handheld electronic devices. Long Felt and Unsolved Need Beyond generally describing consumer electronic devices in the prior art (Reply Br. 12-14), Appellant has not set forth any specifics regarding the long felt need by others. The need must have been a persistent one that was recognized by those of ordinary skill in the art. See In re Gershon, 372 F.2d 535 (CCP A 1967) ("Gershon"). See also Monarch Knitting Machinery v. Sulzer Marat GMBH, 139 F.3d 877, 884 (Fed. Cir. 1998) ("The relevant secondary consideration is 'long-felt but unsolved need,' not long-felt need in isolation."). This can be shown, e.g., by evidence showing unsuccessful efforts to solve the problem. See Orthopedic Equip. Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983) ("Orthopedic") (Although the claimed invention achieved the desirable result, there was no evidence of any prior unsuccessful attempts to do so). 13 Appeal 2018-001126 Application 12/589,487 The failure to solve a long-felt need may be due to factors such as lack of interest or lack of appreciation of an invention's potential or marketability rather than want of technical know-how. Scully Signal Co. v. Elecs. Corp. of Am., 570 F.2d 355, 361 (Fed. Cir. 1977) ("Scully"). Specifically, Appellant has not set forth in a Declaration (i) how long the need existed, (ii) evidence of the efforts and resources expended during that time in attempt to solve the problem, or (iii) that others tried and failed to solve the problem. (See e.g., In re Gershon, 372 F.2d 535; Orthopedic, 707 F.2d at 1382; Scully, 570 F.2d at 361). Because Appellant has not set forth how long the need existed, evidence of the efforts and resources expended during that time in attempts to solve the problem, or that others tried and failed to solve the problem, Appellant has not made a convincing showing of long-felt need. Thus, when the evidence of long-felt need is weighed as a whole against the evidence of obviousness, we find such evidence to be insufficient to overcome the evidence of obviousness on the record. CONCLUSIONS Appellant has not sufficiently shown the Examiner erred in rejecting representative claim 1, as well as claims 2-12 grouped therewith, under 35 U.S.C. § 103(a) over the base combination of Zadesky, Larsen, and Jobs. For similar reasons, Appellant also has not sufficiently shown the Examiner erred in rejecting claims 13-20 under 35 U.S.C. § 103(a) over the same base combination of Zadesky, Larsen, and Jobs. Therefore, we sustain the rejections before us. 14 Appeal 2018-001126 Application 12/589,487 DECISION The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation