Ex Parte Zadesky et al

Patent Trial and Appeal Board

Oct 31, 2014

11477469 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte STEPHEN PAUL ZADESKY, JONATHAN P. IVE,
CHRISTOPHER J. STRINGER, MATTHEW DEAN ROHRBACH,
STEPHEN BRIAN LYNCH, and BRETT WILLIAM DEGNER
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Appeal 2012-001874
Application 11/477,469
Technology Center 2600
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Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
JASON J. CHUNG, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1–7 and 10–14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 11/477,469

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STATEMENT OF THE CASE
Appellants’ claimed invention is directed to an electronic device
having an actuating user interface (Spec. ¶ 4).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A handheld media player, comprising:
a housing for enclosing internally various functional
components for operating the handheld media player, the housing
including an opening;
a substantially rigid electronic display device covering the
opening and including internal circuitry, a protective shield
configured to protect the display device and a stiffening plate
configured to reduce flex of the internal circuitry, the substantially
rigid electronic display device cooperating with the housing to form
the peripheral surfaces of the handheld media player, the substantially
rigid electronic display device having a flat outer touchable surface
that is exposed to a user of the handheld media player, the
substantially rigid electronic display device being configured to tilt to
at least four positions relative to the housing, the at least four
positions including a top tilt position, a bottom tilt position, a left tilt
position and a right tilt position;
a frame enabling the display device to float relative to the
housing while being moveably constrained thereto,
the display device being translatable between an upright and a
depressed position relative to the housing in order to generate at least
first input signals based on translational movement of the display
device;
a plurality of button zones representing regions of the display
device configured to tilt relative to the housing in order to generate at
least second input signals based on tilting movement of the button
zones;
a touch input surface configured to generate at least third input
signals when a finger touches or is moved relative to the touch input
surface; and
a plurality of mechanical switches associated with the plurality
of button zones and located within the housing and underneath the
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substantially rigid electronic display device, the plurality of
mechanical switches including at least four mechanical switches that
cooperate with the tilting of the substantially rigid electronic display
device to provide at least four distinct user inputs, the four mechanical
switches including a first mechanical switch, a second mechanical
switch, a third mechanical switch and a fourth mechanical switch, the
first mechanical switch being located underneath a top portion of the
substantially rigid electronic display device, the second mechanical
switch being located underneath a bottom portion of the substantially
rigid electronic display device, the third mechanical switch being
located underneath a left portion of the substantially rigid electronic
display device, and the fourth mechanical switch being located
underneath a right portion of the substantially rigid electronic display
device, the first mechanical switch generating a first switch signal
when the substantially rigid electronic display device is tilted to the
top tilt position, the second mechanical switch generating a second
switch signal when the substantially rigid electronic display device is
tilted to the bottom tilt position, the third mechanical switch
generating a third switch signal when the substantially rigid electronic
display device is tilted to the left tilt position, the fourth mechanical
switch generating a fourth switch signal when the substantially rigid
electronic display device is tilted to the right tilt position,
wherein the display device, the plurality of button zones and the
touch input surface are centrally placed to enable generation of the
first, second and third input signals at least while the handheld media
player is being carried.

REFERENCES and REJECTION
The Examiner rejected claims 1–7 and 10–14 under 35 U.S.C. §
103(a) based upon the teachings of Salminen (US 6,686,906 B2, issued Feb.
3, 2004), Ekedahl (US 6,259,491 B1, issued July 10, 2001), and Moriya (US
2003/0206202 A1, issued Nov. 6, 2003).

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ANALYSIS
Appellants assert the Examiner erred in finding Salminen teaches or
suggests a touch input surface generating input signals responsive to touch
or movement by a finger as claimed (App. Br. 5). Rather, Appellants
contend, Salminen discloses a “tactile button-like input” that is
advantageous over a touch surface, as a touch surface is expensive and fails
to provide the tactile feel of a push button (App. Br. 7). Thus, Appellants
argue, Salminen teaches away from using a touch input surface (id.).
Further, Appellants argue, Salminen teaches push buttons are activated when
pushed or pressed, not when they are merely touched (Reply Br. 2). We do
not agree.
The Examiner finds Salminen does not teach away as Salminen
clearly teaches a “touch input surface” in Figures 7a–7c. We agree. Further,
we note there is no specific definition of “touch input surface” in
Appellants’ Specification, thus, this term is given a broad but reasonable
construction, met by Salminen’s disclosure. Additionally, our reviewing
court guides that “A reference does not teach away […] if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009). Salminen does not criticize, discredit, or
discourage using a touch surface. Salminen merely states a touch sensitive
surface has advantages (freedom to design, etc.) and disadvantages
(relatively expensive, lacks tactile feel of push button, etc.) (col. 2, ll. 55–60)
over push buttons. There is no discouragement from following the path set
out in the Salminen, nor would one “be led in a direction divergent from the
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path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). We further agree with the Examiner that Appellants’ are arguing
“a specific type of ‘a virtual touch screen’” (Ans. 14), which is not
commensurate in scope with the language of the claims.
We also agree with and adopt the Examiner’s findings regarding
Appellants hindsight argument, as our own (Ans. 14–15) and that Appellants
are separately arguing the references (Ans. 16).
On this record, we are not persuaded the Examiner’s reading of the
claims on the cited combination of references is overly broad, unreasonable,
or inconsistent with the Specification. Thus, in light of the broad terms
recited in the claims and the arguments presented, Appellants’ have failed to
clearly distinguish their claimed invention over the prior art relied on by the
Examiner. We therefore sustain the Examiner’s rejection of claim 1.
Because Appellants have not provided separate arguments against the
rejections of claims 2–7 and 10–14, these claims fall with claim 1 for the
same reasons as set forth above. See 37 C.F.R. § 41.37(c)(1)(iv).

DECISION
The Examiner’s decision rejecting claims 1–7 and 10–14 under 35
U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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