Wai-Lin Maw

Patent Trials and Appeals Board

Dec 13, 2019

12390482 - (D) (P.T.A.B. Dec. 13, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/390,482 02/22/2009 Wai-Lin Maw 5198
75011 7590 12/13/2019
CUBIC DESIGN STUDIOS LLC
3383 N FIVE MILE RD #261
BOISE, ID 83713-3925
EXAMINER
BALSECA, FRANKLIN D
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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):
WILLIAMMAW@AOL.COM
WILLIAMMAW@GMAIL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WAI-LIN MAW
____________

Appeal 2018-007753
Application 12/390,482
Technology Center 2600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a) , Appellant1 appeals from the
Examiner’s decision to reject claims 1–25, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cubic
Design Studios LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention relates to “a space efficient alphanumeric input
device that can be used in applications where there is a limited amount of
space available for an input device.” Spec. 1. Claims 1, 11, and 18,
reproduced below, are representative of the claimed subject matter:
1. An input device comprising:
a) a flexible touchpad;
b) one or more pushbuttons positioned below said flexible
touchpad;
c) a processor, a collection of software and hardware
subsystems, in communication with said flexible touchpad and
pushbuttons; and
d) one or more instructions defined within said processor,
configured to interpret interaction, and observation of the
movement of a contact point, which is a point of engagement of
an object with said flexible touchpad, in relation to said flexible
touchpad and pushbuttons,
wherein said flexible touchpad captures the movement of
said contact point, while said flexible touchpad and pushbuttons
retain a recognizable undulating tactile feedback, and said
instructions trigger a signal conditional on the position of said
contact point.
11. An input device comprising:
a) a flexible display screen comprising one or more layers
with a continuous stretch of surface;
b) one or more mechanical protrusions arranged in a
manner so that they can be felt through the topmost layer of said
flexible display screen; and
c) a processor, a collection of software and hardware
subsystems, in communication with said flexible display screen
and said one or more mechanical protrusions;
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wherein the described arrangement doubles said input
device into a display device and a tactile keypad.
18. A non-transitory computer readable medium
encoded with computer readable instructions for an input device
wherein said computer readable instructions comprise:
a) providing user interaction on a flexible membrane
system comprising one or more layers; and
b) providing communication with one or more mechanical
protrusions that can be laterally felt through the topmost layer of
said flexible membrane system that yields to pressure, through a
processor, a collection of software and hardware subsystems,
wherein said computer readable instructions coordinate
said user interaction in relation to said one or more mechanical
protrusions.
REJECTIONS
Claim 17 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written-description requirement. Final Act. 3.
Claims 1–10 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tiphane (US 6,680,677 B1; issued Jan. 20, 2004) and
Zadesky et al. (US 7,499,040 B2; issued Mar. 3, 2009) (“Zadesky”). Final
Act. 5.
Claims 11–16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tiphane, Takala et al. (US 6,788,294 B2; issued Sept. 7, 2004)
(“Takala”), and Nishikawa et al. (US 5,907,375; issued May 25, 1999)
(“Nishikawa”). Final Act. 10.
Claims 18–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Miyajima et al. (US 6,518,958 B1; issued Feb. 11, 2003) (“Miyajima”)
and Tiphane. Final Act. 13.
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ANALYSIS
Section 112 Rejection
Appellant does not address the rejection under 35 U.S.C. § 112, first
paragraph. See generally Appeal Br. Accordingly, we summarily sustain
the Examiner’s rejection of claim 17 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written-description requirement. See MPEP
§ 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it.”); see also Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (designated precedential) (“If an appellant fails to present
arguments on a particular issues — or more broadly, on a particular rejection
— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).
Section 103 Rejections
After considering each of Appellant’s arguments, we agree with the
Examiner. We refer to, rely on, and adopt the Examiner’s findings and
conclusions as set forth in the Examiner’s Answer and in the action from
which this appeal was taken. See Ans. 2–6; Final Act. 3–19. Our discussion
here will be limited to the following points of emphasis.
Claim 1
The Examiner finds Tiphane teaches an input device comprising a
flexible touchpad and one or more pushbuttons positioned below the flexible
touchpad, and that Tiphane’s touchpad molded around each key teaches each
key having “recognizable tactile feedback [because each key will retain its
original shape].” Final Act. 5 (citing Tiphane Figs. 3, 4, col. 1, ll. 60–63,
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col. 3, ll. 45–50, 56–58). However, the Examiner finds “Tiphane does not
teach that the touchpad is used to interpret movement of a contact point.”
Final Act. 5. The Examiner, therefore, relies on Zadesky to teach a touchpad
device having pushbuttons positioned below the touchpad, where movement
of a contact point in relation to the touchpad and pushbuttons triggers a
signal conditional on the position of the contact point. Final Act. 5 (citing
Zadesky col. 7, ll. 25–31, col. 8, ll. 25–46). The Examiner finds it would
have been obvious to use Zadesky’s teachings in Tiphane’s touchpad
“because it will permit the touchpad to be used as a mouse replacement and
also as an input device when the pushbuttons are actuated.” Final Act. 6.
Appellant argues the Examiner has not provided sufficient reasoning
to combine Tiphane and Zadesky. Appeal Br. 8. In particular, Appellant
argues that the proposed combination “would necessarily result in reduced
functionality and inoperability of the primary functions of Tiphane without
providing meaningful advantage.” Appeal Br. 9. Appellant argues “Tiphane
teaches a flexible touchpad molded around individual keys of a set of keys
providing tactile feedback,” and “Zadesky teaches using a touchpad as a
mouse replacement for a point and click graphical user interface (GUI),
comprising point, click, move, and drag actions” and combining these
teachings “would necessarily cause a single touch of a key to generate two
input signals, since Tiphane teaches touch invocation, invoking a function at
the touch of a key . . . and Zadesky teaches contact engagement as a signal to
initiate a mouse function.” Appeal Br. 9. According to Appellant, this
would “introduce adverse effects such as signal ambiguity and signal
conflict.” Appeal Br. 9–10; see Reply Br. 2–3.
We are not persuaded by Appellant’s argument because it is
essentially an argument against the bodily incorporation of Zadesky into
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Tiphane. However, the test for obviousness is not whether the features of
one reference may be bodily incorporated into another reference. Rather, the
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, Appellant’s arguments do not persuasively address the
combination as proposed by the Examiner. As the Examiner states, “[t]he
combination of the references was not used to show the combination of all of
the functionalities taught by the references.” Ans. 3.
Tiphane teaches a touchpad layer that is flexible (flexible touchpad)
that is mounted above and molded around depressible keys (pushbuttons
below the flexible touchpad). Tiphane, col. 3, ll. 45–50, 56–58. Tiphane
also teaches that different proximity of the user’s finger to the key or
pressure in the user’s touch on the key may activate different functions.
Tiphane, col. 4, ll. 14–26. The Examiner relies on Zadesky to teach “that the
touch input instead of being used to invoke a function, it could be used to
track the user movement and that the pushbuttons can be used as second
means of input.” Ans. 3. In other words, Zadesky teaches a touch pad that
provides a first type of input tracking movement and also a second type of
input, a button signal, when depressed. Zadesky col. 7, ll. 25–31; col. 8, ll.
25–46. As proposed by the Examiner, the combination, therefore, would
permit Tiphane’s input device to use Zadesky’s touch functionality as a
means to track the user’s movement and the pushbutton as a means to input
a function. Ans. 3. We find the Examiner has articulated how the claimed
features are met by the proposed combination of reference teachings with
some rational underpinning consistent with the guidelines stated in KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). See Final Act.
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5–6; Ans. 2–4. Appellant has not persuasively argued why the Examiner’s
reasoning is in error. Nor has Appellant provided evidence that the
combining the teachings was “uniquely challenging or difficult for one of
ordinary skill in the art,” or that such a combination “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Appellant further argues that the “combined teaching would also
render Tiphane’s teaching inoperable for its intended purpose” because the
“signal ambiguity of the mouse click and the touch invocation” would cause
the application to be “invoked from an inadvertent mouse click of a touch
invocation, or vice versa, losing focus to an application immediately instead
of being able to delay it.” Appeal Br. 10. Appellant argues that the
combination would create an interface that “would be very frustrating and
difficult to use.” Appeal Br. 10.
We are not persuaded by Appellant’s arguments. Tiphane is generally
directed to indicating the function of a key on a keyboard without actually
activating the function of the key via the use of a proximity detector.
Tiphane, col. 1, ll. 58–67. We fail to see how modifying Tiphane to include
Zadesky’s touch functionality frustrates this purpose. Moreover, nothing in
Tiphane discourages, criticizes, or otherwise discredits the proposed
modification (Tiphane’s keyboard with Zadesky’s inputs). See In re
Gordon, 733. F.2d 900, 902 (Fed. Cir. 1984) (an argument that the system is
rendered “inoperable for its intended purpose” is, in effect, a “teaching
away” argument).
Appellant also argues the combination provides no reasonable
expectation of success as “[n]either [reference] teaches any measures to
address the inherent deficiencies caused by signal ambiguity and conflict.”
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Appeal Br. 10. In support of this argument, Appellant also argues that
Tiphane teaches a “serrated and jagged surface,” whereas “Zadesky teaches
a substantially even backplane.” Appeal Br. 11.
In order to establish a reasonable expectation of success, the
challenger must show “a reasonable expectation of achieving what is
claimed in the patent-at-issue.” Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (emphasis added).
As discussed above, we find the Examiner has sufficiently established that
the combination of Tiphane and Zadesky teaches what is claimed in claim 1
with some rational underpinning to combine the references. See Final Act.
5–6; Ans. 2–4; see KSR, 550 U.S. at 418. Appellant’s argument that
Tiphane does not teach any motivation or suggestion to integrate Zadesky’s
contact tracking into its array of pushbuttons molded by a flexible touchpad
(Appeal Br. 11) is unpersuasive, because the suggestion or motivation need
not come from the references themselves. See KSR, 550 U.S. at 415, 420.
For at least the above reasons we sustain the Examiner’s § 103
rejection of independent claim 1. For the same reasons, we sustain the
Examiner’s § 103 rejection of dependent claims 2–10 and 17, not argued
separately.
Claim 11
The Examiner finds Tiphane teaches all of the limitations of claim 11,
except that Tiphane does not explicitly teach that the display screen is
flexible and comprises one or more layers with a continuous stretch of
surface, and Tiphane also does not teach that mechanical switches are used
to sense pressure. Final Act. 10–11 (citing Tiphane Figs. 2, 4; col. 3, ll. 15–
25, 56–58; col. 4, ll. 14–15, 24–26). The Examiner relies on Takala to teach
a flexible touch display screen comprising one or more protrusions and one
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or more layers with a continuous stretch of surface. Final Act. 11 (citing
Takala Fig. 2, col. 5, ll. 50–65; col. 6, ll. 21–31) and on Nishikawa to teach a
touch screen device comprising a mechanical button in order to detect
pressure. Final Act. 11 (citing Nishikawa col. 9, ll. 18–56). The Examiner
finds it would have been obvious to use Takala’s touch screen in Tiphane’s
keyboard because the flexible touchscreen with the protrusion would help
the user know where the keys of the keyboard are located. Final Act. 11.
Appellant argues that the proposed combination, “to use Takala’s
touch screen with the keyboard taught by Tiphane,” would “necessarily
result in reduced functionality and inoperability of the primary functions of
Tiphane,” which is “elimination of the distinct empty space between
adjacent keys” allowing “blind users . . . to navigate the keyboard by tactile
sense differentiating the distinct feels of a solid key and an air gap.” Appeal
Br. 15 (citing Tiphane Fig. 4, col. 2, ll. 1–6). Specifically, Appellant argues
that Tiphane is intended to “greatly benefit the blind users that could
navigate the keyboard by feel and confirm a key by an audible sound instead
by sight,” but the proposed combination “would not only be a disadvantage,
but also the display would not serve as an advantage to the blind user who
would have to rely on touch and sound instead of sight.” Appeal Br. 15–16;
see Reply Br. 4. According to Appellant, the “combined teaching would
render Tiphane’s teaching inoperable for its intended purpose, if indeed
Tiphane’s teaching (fig. 4) is intended for the blind users.” Appeal Br. 17.
We are not persuaded by Appellant’s arguments. Although Tiphane
mentions an embodiment where a “speaker of a computer can provide an
audible indication of the key function, which would be especially useful for
blind users,” there is no further disclosure in Tiphane to support that its
primary function or intended purpose is for blind users. Tiphane, col. 2, ll.
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4–6. Moreover, the mere existence of disadvantages resulting from a
modification does not refute the obviousness of the modification when the
prior art indicates the modification also offers an advantage. Trade-offs
regarding features, costs, manufacturability, or the like, do not necessarily
prevent the combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
We agree with the Examiner’s finding that Tiphane teaches an input
device with flexible touchpad and mechanical protrusions arranged to be felt
through the topmost layer of said touchpad, and that Tiphane also teaches an
implementation using touch-activated buttons on a display screen, which
doubles the input device into a display and a tactile keyboard. Final Act.
10–11 (citing Tiphane col. 3, ll. 56–58, col. 4, ll. 14–15, 24–26); see Ans. 4.
The Examiner relies on Takala “only . . . to show that a touch screen can be
molded in such a way that can provide tactile feedback.” Ans. 4; see Final
Act. 11 (citing Takala Fig. 2, col. 5, ll. 50–65, col. 6, ll. 21–31).
For at least the above reasons we sustain the Examiner’s § 103
rejection of independent claim 11. For the same reasons, we sustain the
Examiner’s § 103 rejection of dependent claims 12–16, not argued
separately.
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Claims 18 and 21
The Examiner finds Miyajima teaches protrusions placed over the
flexible membrane system, but does not teach that the protrusions used to
activate the switch are placed below the flexible membrane system. Final
Act. 13 (citing Miyajima Figs. 2, 3, col. 6, ll. 5–23). The Examiner finds
Tiphane teaches an input device with a flexible membrane system and one or
more mechanical protrusions. Final Act. 13–14 (citing Tiphane Figs. 2, 4,
col. 3, ll. 14–16). Specifically, the Examiner finds that Tiphane “clearly
teaches that the protrusions can be placed below a flexible membrane
without affecting the functionality of the device or the user experience,” and
“that the device can have recognizable feedback that can be felt through the
top most layer.” Ans. 5–6 (citing Tiphane Fig. 4). The Examiner finds it
would have been obvious to modify Miyajima’s device with Tiphane’s
teachings
because placing the protrusions below the touch surface will
improve user input produced by the touch surface and the
pushbuttons since the user will be able to activate the touch
surface directly without any protrusions being in the way like a
regular touchpad and the pushbuttons will be activated directly
by the protrusions without the touch surface being [i]n the way
like a regular keyboard.
Final Act. 14.
Appellant argues that the proposed combination of Miyajima and
Tiphane, “namely ‘placing the protrusions below the touch surface’ . . .
would necessarily result in reduced functionality and inoperability of the
primary functions of Miyajima without providing meaningful advantage.”
Appeal Br. 17–18; see Appeal Br. 19–20. Specifically, Appellant argues
that Miyajima does not teach “protrusions but in fact button (paint)
markings” that would be hidden from view if they were to be placed under
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the touch surface as taught by Tiphane.” Appeal Br. 18 (citing Miyajima
Figs. 1–3, col. 5, ll. 15–20); see Appeal Br. 20–21; Reply Br. 5–7.
Appellant argues that the “combined teaching with the button markings ‘out
of sight’ would necessarily cause a great deal of difficulty even when dialing
a simple telephone number” because the “button (paint) markings are hidden
under the touch pad.” Appeal Br. 18 (citing Miyajima Figs. 1–3, col. 5, ll.
15–20); see Appeal Br. 20–21; Reply Br. 5–7. Appellant, therefore, argues
the combined teachings would also render Miyajima inoperable for its
intended purpose because the combination would deprive the user of both
visual and tactile senses. Appeal Br. 18–19.
Appellant’s arguments are not persuasive. As with claim 1, Appellant
is arguing the bodily incorporation of Tiphane into Miyajima, rather than
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. We agree with the Examiner’s findings that one of skill in the art
would have found it obvious to modify Miyajima to place a flexible
membrane over its protrusions (as shown in Fig. 2 of Miyajima) to activate
the switch. See Ans. 5–6, 13–17; Final Act. 13–17. Additionally, we are
not persuaded Miyajima’s markings would be hidden from view as a result
of the combination. Appellant’s argument presumes that Tiphane’s flexible
membrane is opaque, or otherwise obscures the markings on Miyajima’s
buttons in such a way that the user will not be able to see them. However,
Tiphane teaches that its touchpad layer may be a flexible membrane, such as
that disclosed in U.S. Patent No. 6,067,074 (“the ’074 patent”). Tiphane,
col. 3, ll. 53–55. The ’074 patent describes, for example, a “liquid crystal
display membrane that obscures the underlying keyboard switches until the
processing system addresses the display to generate a template identifying
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the relevant switches and their functions.” ’074 patent, col. 2, ll. 56–59.
We, therefore, do not find Appellant’s arguments persuasive that Miyajima
would be inoperable or “broken” (App. Br. 18) as a result of the
combination.
For at least the above reasons we sustain the Examiner’s § 103
rejection of independent claims 18 and 21. For the same reasons, we sustain
the Examiner’s § 103 rejection of dependent claims 19, 20, and 22–25.
CONCLUSION
We affirm the Examiner’s rejection of claim 17 under 35 U.S.C.
§ 112.
We affirm the Examiner’s rejections of claims 1–25 under 35 U.S.C.
§ 103.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
17 112 Written Description 17
1–10, 17 103 Tiphane, Zadesky 1–10, 17
11–16
103 Tiphane,
Takala,
Nishikawa
11–16
18–25 103 Miyajima, Tiphane 18–25
Overall
Outcome
1–25
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TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).

AFFIRMED