Ex Parte Hatambeiki et al

Patent Trial and Appeal BoardApr 29, 2016

12849497 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/849,497 08/03/2010 Arsham Hatambeiki 34018 7590 05/03/2016 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 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. 81230.146US4 7957 EXAMINER OLIVER, GERALD L ART UNIT PAPER NUMBER 2624 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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): j arosikg@gtlaw.com chiipmail@gtlaw.com escobedot@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARSHAM HAT AMBEIKI, JEFFREY KO HANEK, PAMELA EICHLER KEILES, and RAMZI AMMAR! Appeal2014-007224 Application 12/849,497 Technology Center 2600 Before JASON V. MORGAN, SHARON PENICK, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1-8, 10, 11, 15-19, and 36--41, which constitute all claims pending in the application. (App. Br. 1; Final Act. 1.) We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. INVENTION Appellants' disclosed invention relates to a system and method for providing improved command, navigation, and text input functionality on a Appeal2014-007224 Application 12/849,497 controlling device. (Spec. 2.) Claims 1 and 16, which are illustrative, with disputed limitations italicized and with bracketed annotations, read: 1. A hand-held device, comprising: a housing having a top surface and a bottom surface opposite the top surface; at least one transmitter carried by the housing; a first user interface associated with the top surface of the housing having first user interface input elements which, when active, are actuatable to cause the at least one transmitter to transmit communications to an external device; a second user interface associated with the bottom surface of the housing having second user interface input elements which, when active, are actuatable to cause the at least one transmitter to transmit communications to an external device; and a processing device having associated programming for selectively making one of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface active while making the other of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface inactive; [i] wherein the processor and associated programming considers received signals each having an assigned priority when selectively making one of the first user interface input elements of the first user inteiface and the second user inteiface input elements of the second user inteiface active while making the other of the first user interface input elements of the first user inteiface and the second user inteiface input elements of the second user interface inactive. 2 Appeal2014-007224 Application 12/849,497 16. In a hand-held device comprising a housing having a top surface and a bottom surface opposite the top surface, at least one transmitter carried by the housing, a first user interface associated with the top surface of the housing having first user interface input elements which, when active, are actuatable to cause the at least one transmitter to transmit communications to an external device, a second user interface associated with the bottom surface of the housing having second user interface input elements which, when active, are actuatable to cause the at least one transmitter to transmit communications to an external device, and method for making one of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface active while making the other of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface inactive, compnsmg: receiving a plurality of signals; [ii] using a priority assigned to each of the plurality of received signals to determine which one of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface to make active; and making the other of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface inactive. REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: Troedel et al. US 6,504,488 B2 Jan. 7,2003 Oh US 2005/0283551 Al Dec. 22, 2005 3 Appeal2014-007224 Application 12/849,497 Cantu et al. US 7,115,032 B2 Oct. 3, 2006 Migos et al. US 2010/0164745 Al July 1, 2010 Grignani et al. US 2010/0201712 Al Aug. 12, 2010 REJECTIONS Claims 1-7, 15-19, and 36-39 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination ofMigos and Grignani. (Ans. 4.)1 Claim 8 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Migos, Grignani, and Cantu. (Ans. 18.) Claims 10 and 11 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Migos, Grignani, and Troedel. (Ans. Claims 40 and 41 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination ofMigos, Grignani, and Oh. (Ans. 21.) ISSUES 1. Did the Examiner err in finding that the combination of Migos and Grignani teaches or suggests limitation [i] in claim 1? (App. Br. 6-10.) 2. Did the Examiner err in finding that Mi gos and Grignani teaches or suggests limitation [ii] in claim 16? (App. Br. 6-10.) 1 Claims 40 and 41 were erroneously included in this rejection. (Ans. 4.) 4 Appeal2014-007224 Application 12/849,497 ANALYSIS In rejecting claim 1, the Examiner finds that remote control 102 in Migos satisfies disputed limitation [i] ("wherein the processor and associated programming considers received signals each having an assigned priority when selectively making one of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface active ... "). (Final Act 2-3; Ans. 2-3, 5-6, citing Migos i-fi-1 19, 30.) The Examiner also cites Grignani for this limitation. (Final Act. 6- 7; Ans. 6-7.) Remote control 102 in Migos has two opposed sides, A and B, that are each configured to be active, but not at the same time. (Migos i-f 19.) Migos discloses that generally the side facing upward will be active while the side facing downward will be inactive. (Id.) In an alternative embodiment, however, the side facing downward will be active. (Id.) CPU 210 in remote control 102 provides signals to LCD controllers 212a and 212b to display function indicators on the active side. (Id. at i130.) The Examiner finds the signals that CPU 210 provides to LCD controllers 212a and 212b and the disclosure that the remote control 102 can operate in accordance with its primary or its alternative embodiment satisfy the disputed limitation. (Ans. 2-3, 5-6.) The Examiner finds that the disclosure of the alternate embodiment teaches an override signal that provides an assigned priority. (Id.) Appellants argue that the signals CPU 210 provides to LCD controllers 212a and 212b do not teach or suggest the disputed limitation because they are signals sent by, than received by, the 5 Appeal2014-007224 Application 12/849,497 processor and that Migos does not teach or suggest an override signal providing an assigned priority. (App. Br. 7-8.) We agree with Appellants. The signals CPU 210 provides to LCD controllers 212a and 212b are sent by the processor, not received by it. The disputed limitation recites that the process considers received signals. (See claim 1.) Migos's disclosure of an alternative embodiment (downward-facing side active) to the primary embodiment (upward-facing side active) by itself does not teach or suggest an override control for switching between these embodiments. (Id. at 7; Reply Br. 3.) CPU 210 could be programmed consistent with Migos's primary or alternative embodiments without having the ability to switch between those embodiments. (App. Br. 7; Reply Br. 3.) This means that, in either embodiment, CPU 210 could determine which surface should be active based only on a signal indicating which side is up (and hence which side is down) and not on an assigned priority for the signal. (App. Br. 7; Reply Br. 3.) Therefore, we agree with the Appellants that the cited disclosures in Migos do not teach or suggest having an assigned priority for the received signals considered by the processor when selecting which user interface input elements to make active. (App. Br. 7; Reply Br. 3.) As mentioned, the Examiner also cites Grignani as evidencing the obviousness of disputed limitation [i]. (Final Act. 6-7; Ans. 6-7.) The Examiner finds that Grignani teaches determining the enablement status of its first and second input devices based on the current orientation of the terminal as detected by the orientation sensor. (Final Act. 6; Ans. 6, citing Grignani i-f 15.) As Appellants argue, however, the orientation signal is just 6 Appeal2014-007224 Application 12/849,497 one received signal, and Grignani does not teach or suggest giving that signal an assigned priority. (App. Br. 9.) Accordingly, we do not sustain the rejection of claim 1. We also do not sustain the Examiner's rejection of claim 16. Disputed limitation [ii] in claim 16 recites the use of assigned priorities to determine which user interface input elements to make active (i.e., "using a priority assigned to each of the plurality of received signals to determine which one of the first user interface input elements of the first user interface and the second user interface input elements of the second user interface to make active."). As discussed above, the cited disclosures in Migos and Grignani do not teach or suggest considering received signals with assigned priorities when determining which user interface input elements to make active. Therefore, the cited disclosures do not teach or suggest using such assigned priorities to determine which user interface elements to make active and do not teach or suggest limitation [ii]. All of the remaining claims incorporate through dependency the limitations of claim 1 or claim 16. (Claim Appendix.) Therefore, we do not sustain the rejection of the remaining pending claims.2 DECISION The decision of the Examiner to reject claims 1-8, 10, 11, 15-19, and 3 6--41 is reversed. REVERSED 2 In light of this holding, we do not reach Appellants' additional arguments for reversing the rejection. (App. Br. 10-12.) 7