Ex Parte Waites

Patent Trial and Appeal Board

Sep 28, 2016

14165612 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/165,612 01/28/2014
12755 7590 09/29/2016
Beck Tysver Evans , PLLC
2900 Thomas Avenue S., Suite 100
Minneapolis, MN 55416
FIRST NAMED INVENTOR
Nigel Waites
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.
5123 1001
EXAMINER
LEE, MICHAEL
ART UNIT PAPER NUMBER
2422
MAILDATE DELIVERY MODE
09/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIGEL WAITES
Appeal2015-008039
Application 14/165,612
Technology Center 2400
Before JEFFREYS. SMITH, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-26, which constitute all the claims pending in this
application. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
REFERENCES AND REJECTIONS ON APPEAL
Claims 1, 2, 5, 6, 11, 13-16, 21, 22, and 24 are rejected under 35
U.S.C. § 102 as anticipated by Gottlieb (US 2010/0271231 Al; Oct. 28,
2010). Ans. 2-5.
Appeal2015-008039
Application 14/165,612
Claim 3 is rejected under 35 U.S.C. § 103 as obvious over Gottlieb
and Lissner et al. (US 6,636,606 Bl; Oct. 21, 2003) ("Lissner"). Ans. 5-7.
Claims 4, 7, 8, 17, and 23 are rejected under 35 U.S.C. § 103 as
obvious over Gottlieb and Arling et al. (US 2008/0005764 Al; Jan. 3, 2008)
("Arling"). Ans. 7-8.
Claims 9, 18, and 25 are rejected under 35 U.S.C. § 103 as obvious
over Gottlieb and Henty (US 2008/0239168 Al; Oct. 2, 2008), or Gottlieb
and Hardacker (US 2010/0118209 Al; May 13, 2010). Ans. 8.
Claims 10 and 19 are rejected under 35 U.S.C. § 103 as obvious over
Gottlieb. Ans. 8-10.
Claims 12, 20, and 26 are rejected under 35 U.S.C. § 103 as obvious
over Gottlieb and Herz (US 6,407,779 Bl; June 18, 2002). Ans. 10.
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to "a remote control device that has two
interface panels on opposite sides of the device, where the remote uses an
orientation sensor to ignore signals from certain inputs based upon the
orientation of the remote control." Spec. i-f 2.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative and reproduced below, with the disputed
limitation emphasized:
1. A remote control for controlling a display device
compnsmg:
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Application 14/165,612
a) a first face being generally upwardly facing when the
remote control is in a first position, the first face having a
plurality of input buttons;
b) a second face located on the remote control opposite
the first face, the second face being generally upwardly facing
when the remote control is in a second position, the second face
comprising a display screen;
c) an orientation sensor;
d) a transmitter for transmitting signals; and
e) a processor that:
i) examines the orientation sensor to determine
whether the remote control is in the first position or the second
position,
ii) when the remote control is in the first position:
( 1) transmits signals through the transmitter
based on inputs received from the plurality of input buttons, and
(2) powers down the display screen, and
iii) when the remote control is in the second
position; powers the display screen so as to present information
to a user.
ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 1, 2, 5, 6, 11, 13-16, 21, 22, AND 24
BY GOTTLIEB
The Examiner finds Gottlieb describes all limitations of claim 1. Ans.
2--4; see also Ans. 11. The Examiner finds Gottlieb's ignoring any
accidental depression of down-facing touch-screen buttons (while receiving
inputs from up-facing buttons) describes the recited (claim 1) "powers down
the display screen." Ans. 3--4 (citing Gottlieb i-fi-f 10, 14).
Appellant presents the following principal arguments:
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1.
Gottlieb teaches that a button press can be "ignored" based on
the orientation of the remote (Gottlieb i-f [0010]), and that
buttons can be "disable[ d]" when the remote is not being held
by a user (Gottlieb i-f [0013]). However, Gottlieb does not teach
that these buttons are ever de-powered in any circumstances.
App. Br. 10-11.
11.
[T]he removal of power from the downward facing buttons
does not necessarily flow from Gottlieb' s teaching that such
buttons are to be ignored or are disabled. As explained above, it
is consistent with Gottlieb' s teaching that the downward facing
buttons be continuously powered, with the control logic device
220 simply ignoring the status signals that it receives from
downward facing buttons."
App. Br. 13.
We do not see any error in the Examiner's finding that Gottlieb
describes the disputed limitation.
In considering the disclosure of a reference, "it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). "A reference
anticipates a claim if it discloses the claimed invention 'such that a skilled
artisan could take its teachings in combination with his own knowledge of
the particular art and be in possession of the invention."' In re Graves, 69
F.3d 1147, 1152 (Fed. Cir. 1995) (citing In re Legrice, 301F.2d929 (CCPA
1962)).
Gottlieb (i-f 10) discloses "if the first set [of] buttons 11 OA-11 OC were
face up, then any accidental depression of any of the buttons of the second
set of buttons l lOD-1 lOF would be ignored."
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Application 14/165,612
Gottlieb (if 14) discloses "separate physical push buttons on each face
could instead be replaced by or supplemented with touch sensitive buttons, a
touch sensitive screen or at least one other visual indicator (e.g., an LED)."
Appellant's arguments (i) and (ii) do not show error in the contested
finding in view of Gottlieb' s disclosures of ignoring any accidental
depression of down-facing touch-screen buttons. Gottlieb iii! 10, 14. An
ordinarily skilled artisan could reasonably infer (Preda, 401 F .2d at 826)
Gottlieb' s ignoring of down-facing touch-screen buttons does disclose
powering down these down-facing touch-screen buttons. Put another way,
Gottlieb' s express disclosure of ignoring a button press, when taken in
conjunction with a skilled artisan's knowledge of well-known reasonable
ways of ignoring a button press, including powering down the button, and in
the case of touch-screen (display screen) buttons, powering down the touch-
screen (display screen), is capable "of placing the invention in the
possession of those so skilled." Legrice, 301 F.2d at 944.
We, therefore, sustain the Examiner's rejection of claim 1, as well as
claims 2, 5, 6, 11, 13-16, 21, 22, and 24, which are not separately argued
with particularity.
THE OBVIOUSNESS REJECTION OF CLAIM 3 OVER GOTTLIEB AND LISSNER
The Examiner finds Gottlieb and Lissner teach all limitations of claim
3. Ans. 5-7; see also Ans. 11-12. Claim 3 recites "four separate comer
stand elements." The Examiner finds Lissner discloses protruding elements
around remote control keys. Ans. 6 (citing Lissner col. 1, 11. 6-12; col. 4; 11.
24--28). The Examiner reasons:
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Application 14/165,612
it would have been obvious to one of ordinary skill in the art to
include protrusions of any shape, size number and arrangement,
such as in the comers of the remote controller of the two-sided
remote controller of Gottlieb, which, due to their distance
protruding beyond the keys' distance, would provide
inadvertent depressing of the keys/buttons when laying it down.
Ans. 6.
Appellant presents the following principal arguments:
"Lissner teaches a 'keypad button guard' that is not designed to
prevent buttons from being pushed when the keys are placed on a flat
surface, but are designed to prevent fingers from accidentally pushing a
button." App. Br. 15. "[R]egardless of how Lissner' s invention is
reconfigured (see Figure 5 ofLissner for some of Lissner's possible
reconfigurations), one of ordinary skill of the art would never review the
Lissner patent and then be inspired to develop the claimed comer stand
elements of claim 3." App. Br. 16.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
Regarding Appellant's arguments,
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Lissner' s teaching (col. 1, 11. 6-12) of a button-surrounding guard and
Lissner's further teaching (col. 4, 11. 20-23) (emphasis added) of
"accommodating virtually any button and even combinations of buttons on a
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key pad device to prevent accidental and unknowing activation of the
function of those buttons of the device," when incorporated into Gottlieb,
suggest four separate comer stand elements to accommodate the
combination of buttons on Gottlieb. Put another way, incorporating four
separate comer stand elements (as an obvious variation of a guard for a
combination of buttons to prevent one particular type of accidental
activation) into Gottlieb, in light of Lissner' s teachings would have been a
predictable use of prior art elements according to their established functions
- an obvious improvement. As the U.S. Supreme Court has explained:
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 Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
We, therefore, sustain the Examiner's rejection of claim 3.
THE OBVIOUSNESS REJECTION OF CLAIMS 4, 7, 8, 17, AND 23 OVER GOTTLIEB
ANDARLING
Appellants do not present arguments regarding the rejection of claims
4, 7, 8, 17, and 23. See App. Br. 9-17.
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We, therefore, sustain the Examiner's rejection of claims 4, 7, 8, 17,
23.
THE OBVIOUSNESS REJECTION OF CLAIMS 9, 18, AND 25 OVER GOTTLIEB AND
HENTY, OR GOTTLIEB AND HARDACKER
Appellants do not present arguments regarding the rejection of claims
9, 18, and 25. See App. Br. 9-17.
We, therefore, sustain the Examiner's rejection of claims 9, 18, and
25.
THE OBVIOUSNESS REJECTION OF CLAIMS 10 AND 19 OVER GOTTLIEB
The Examiner finds Gottlieb teaches all limitations of claim 10. Ans.
8-10; see also Ans. 12-13. Claim 10 recites "wherein the input buttons
comprise a simplified interface without any advanced buttons selected from
an advanced button set comprising picture-in-picture buttons and color
modification buttons; and wherein the touchscreen displays advanced
buttons selected from the advanced button set."
Ans. 9
The Examiner reasons:
It would have been obvious at the time of filing (or even
expected) to realize that physical keys are limited to dedicated
functions, whereas a touch-screen that typically involves menu-
based entries afford[ s] an extended list of advanced and more
specific television options for selection. The touch-screen
layout can include an extended layout of dedicated keys and
alphanumerics therefor.
Appellant presents the following principal argument:
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"None of the cited remotes place physical buttons on one side of the
remote, a touchscreen on the others, and divide the functionality of the two
interfaces as defined in claim 10." App. Br. 17.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's conclusion of obviousness.
The rationale to support a conclusion that a claim would have been
obvious may be that:
a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but
of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was
obvious under§ 103.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
There exists only a finite number of possible arrangements for
advanced buttons selected from the advanced button set. Advanced buttons
may either be located on both faces of the remote control; located only on
the first face of the remote control, or located only on the second face of the
remote control. We, therefore, conclude that it would have been obvious to
a person having ordinary skill in the art to have designed a specific
arrangement of advanced buttons meeting the argued claim limitations.
Such a design layout would have been merely a product of ordinary skill and
common sense. This is because when faced with the design need of locating
the claimed advanced buttons, one of ordinary skill in the art would have
found it obvious to try locating the advanced buttons in the claimed
arrangement from the finite set of identified arrangements and because the
claimed arrangement produces a predictable solution that is within the grasp
of one of ordinary skill. See KSR, 550 U.S. at 421.
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We, therefore, sustain the Examiner's rejection of claim 10, as well as
claim 19, which is not separately argued with particularity.
THE OBVIOUSNESS REJECTION OF CLAIMS 12, 20, AND 26 OVER GOTTLIEB
AND HERZ
Appellants do not present arguments regarding the rejection of claims
12, 20, and 26. See App. Br. 9-17.
We, therefore, sustain the Examiner's rejection of claims 12, 20, and
26.
DECISION
The Examiner's decision rejecting claims 1-26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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