Ex Parte Mattingley-Scott et al

Patent Trials and Appeals Board

Apr 12, 2013

11280112 - (D) (P.T.A.B. Apr. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK MATTINGLEY-SCOTT and MICHAEL PYSCHNY
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Appeal 2010-011134
Application 11/280,112
Technology Center 2600
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J.
DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 22-27, 29-31, and 33.1 Claims 1-21, 28, and 32 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants’ Disclosed Invention
Appellants’ disclosed invention pertains to a laptop computer 1
having an integrated touch pad 2 for detecting and authorizing a user based
on the user’s unique signature 6 which is input with a manually driven input
means 4 (i.e., stylus or pen). Fig. 1; Spec. 1:1-5; 2:5-14; and 5:7-11. The
integrated pointing device or touch pad 2 can detect multiple pressure levels
as needed for dynamic signature recognition. Spec. 7:18-24; Abs.
Exemplary Claim on Appeal
Claim 22 on appeal, with emphases added, reads as follows:
22. A method of validating an identity of a prospective user of a
computer for the purpose of determining whether the prospective user will
be allowed to use the computer, the method comprising the steps of:
(a) providing a computer with an integral pointing device;
(b) denying access to use the computer to the prospective user;
(c) during at least a portion of step (b), providing, by the prospective
user to the computer, a signature through the integral pointing device; and
(d) subsequent to steps (b) and (c), determining whether the signature
provided at step (c) sufficiently matches the signature for an authorized user
of the computer to verify the identity the prospective user as an authorized
user; and
(e) subsequent to step (d), selectively allowing access to the computer
by the prospective user only on condition that a sufficient match is
determined at the determining step (d);
wherein:

1 Claims 34-40 stand withdrawn as being directed to a non-elected invention.
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the computer provided at providing step (a) has stored therein BIOS
software in the form of computer executable instructions;
the BIOS software includes instructions for performing the determining
step (d); and
the BIOS software includes instructions for performing the selectively
allowing step (e). 
Rejections on Appeal
(1) The Examiner rejected claims 22-25, 27, 29-31, and 33 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Gullman
(US 5,280,527), Chan (US 5,995,084), and Kawano (US Pat. Pub.
2002/0054120 A1).2 Ans. 3-7.
(2) The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gullman, Chan, Kawano, and Lee (US
5,422,959).3 Ans. 7-8.
Appellants’ Contentions
(1) Appellants contend (App. Br. 11-18; Reply Br. 2-5) that the
Examiner erred in rejecting claims 22-25, 27, 29-31, and 33 under
35 U.S.C. § 103(a) for numerous reasons, including:

2 Separate patentability is not argued for claims 23-25, 27, 29, 31, and 33.
Except for our ultimate decision, these claims are not discussed further
herein. Appellants provide separate arguments for claim 22 (App. Br. 15-
17) and for claim 30 (App. Br. 17). Since both of the independent claims 22
and 30 recite an “integral pointing device” for inputting a user’s signature,
we select claim 22 as representative of the group of claims 22-25, 27, 29-31,
and 33.
3 Separate patentability is not argued for claim 26. Rather, Appellants
merely rely on the arguments presented for claim 22 from which claim 26
depends for patentability of claim 26.
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(a) Chan, and thus the combination of references, fails to teach or
suggest providing a signature using “an integral pointing device,” as set
forth in independent claims 22 and 30 (App. Br. 15-17);
(b) Chan’s touchpad 110 is not an integral pointing device as claimed,
but is instead an external peripheral of the host system (App. Br. 12-14 and
17);
(c) the term “integral” as used in claims 22 and 30 is supported by
paragraph [0013] of the Specification, which describes “integral” as
meaning “physically built into” the laptop computer with fully internal data
connections, and not “electrically connected to” as determined by the
Examiner (Reply Br. 2-3);
(d) there is no per se rule against patentability of inventions that make
integral devices that were not integral in the prior art, and the cases cited by
the Examiner concerning the obviousness of making two separate devices
integral have little or no relevance to the instant application on appeal
(Reply Br. 3-4); and
(e) Kawano teaches away from storing or locating signature
verification or matching instructions in the BIOS, and from combining its
password verification with touchscreen technology (App. Br. 11 and 14-15;
Reply Br. 4-5).
(2) Appellants contend (App. Br. 18) that the Examiner erred in
rejecting claim 26 under 35 U.S.C. § 103(a) for the same reasons as
provided with respect to claim 22 from which claim 26 depends.

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Issue on Appeal
Did the Examiner err in rejecting claims 22-27, 29-31, and 33 as being
obvious because Chan, and therefore the base combination of Gullman,
Chan, and Kawano, fails to teach or suggest providing a signature using “an
integral pointing device,” as set forth in independent claim 22, and as
similarly recited in remaining independent claim 30?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (App. Br. 11-18) and the Reply Brief (Reply
Br. 2-5) that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (see Ans. 3-11). We concur with the conclusions
reached by the Examiner, and highlight and address specific findings and
arguments for emphasis as follows.
We agree with the Examiner’s broad but reasonable interpretation of
representative claim 22 and the phrase “integral pointing device,” as
encompassing Chan’s touchpad 110 shown in Figure 3A and described at
column 8, lines 36-57 and column 14, line 66 to column 15, line 47 (Ans. 4
and 7-10). Notably, Appellant admits that Chan’s touchpad 110 meets the
“integral pointing device” limitation of claims 22 and 30 if the Examiner’s
interpretation of “integral” is used (Reply Br. 2, fn. 1). The Examiner’s
interpretation (Ans. 8-9) of “integral” as meaning included in a system (e.g.,
connected electrically to the system), essential for completeness of the
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system, and/or essential for performing functions in the system is
reasonable.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Therefore, we look to the specification to see if
it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259
(Fed. Cir. 2010).
In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood words … In such
circumstances, general purpose dictionaries may be helpful.

Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
The plain and ordinary meaning of “integral” is “[e]ssential or
necessary for completeness.” The American Heritage Dictionary, Second
College Edition, p. 667 (1982). Applying the broadest reasonable
interpretation of the term in light of the Specification, we find the meaning
for “integral” to include not only Appellants’ asserted definition of
“physically built into,” but also the Examiner’s definition of being included
in a system (e.g., connected electrically to the system), essential for
completeness of the system, and/or essential for performing functions in the
system. Under the broadest reasonable interpretation of claims 22 and 30, in
light of the Specification, the claimed “integral” pointing device
encompasses Chan’s touchpad 110 which is electrically and physically
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connected to the computer system 185 by the X and Y lines as shown in
Figure 3A and described in column 8, lines 36-57. Am. Acad. of Sci. Tech
Ctr., 367 F.3d at 1364.
Appellants have not sufficiently rebutted the Examiner’s findings with
respect to Chan or otherwise shown, on this record, that the Examiner’s
interpretation of the phrase “integral pointing device” found in claims 22 and
30 as encompassing Chan’s touchpad 110 is in error. Furthermore, while
Appellants’ Specification (see Spec. ¶ [0013]) may describe the integral
pointing device as having fully internal data connections so as to guarantee
data integrity, such internal data connections are not recited in claims 22 and
30. In fact, paragraph [0013] of the Specification fails to contradict, and
even supports, the Examiner’s interpretation of “integral” as meaning
electrically connected to, and essential for completeness of, the system.
We agree with the Examiner (Ans. 9) that integrating two elements
into one is merely a matter of engineering choice and would be obvious to
one of ordinary skill in the art. In re Larson, 340 F.2d 965, 968 (CCPA
1965). The rearrangement of parts in a device is obvious and unpatentable
where shifting the positions of the parts would not have modified the
operation of the device. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re
Japikse, 181 F.2d 1019, 1032 (CCPA 1950).
In the instant case, the location of the pointing device that inputs user
signatures in relation to the computer would not alter the operation of the
overall system shown in Chan (Figure 3A). We consider it an obvious
expedient to the artisan to integrate circuitry or elements of a computer, such
as the touchpad or pointing device 110 of the computer system 185 of Chan,
in an overall touchpad computer system configuration (e.g., Chan’s Figure
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3A configuration). It would have been obvious to one of ordinary skill in
the art looking at the teachings and suggestions of Chan to provide the
touchpad 110, which is already connected by X and Y lines, integrally with
the computer system 185 in order to conserve space. One of ordinary skill in
the art would have recognized that moving the pointing device or touchpad
to the base of the computer system 185 would simplify and reduce
costs/parts in the touchpad computer system shown in Figure 3A. In this
light, we are not persuaded by Appellants’ arguments (Reply Br. 3-4) that (i)
the Examiner has improperly applied a per se rule against patentability of
inventions that make integral devices that were not integral in the prior art
(because the modification would be obvious and would not change the
operation of the touchpad), and (ii) the cases cited by the Examiner
concerning the obviousness of making two separate device integral have
little or no relevance to the instant application on appeal (In re Larson, In re
Kuhle, and In re Japikse are relevant for the reasons discussed surpa).
We also agree with the Examiner (Ans. 10-11) that Kawano does not
teach away from Appellants’ claimed invention or otherwise discourage
using the BIOS to store instructions related to a signature match/verification.
Indeed, if a single user was authorized to have access to the
system/computer and thus only one signature needed to be matched, one of
ordinary skill in the art would recognize that the instructions could be stored
in a memory even if it were a small memory as in Kawano.
In view of the foregoing, Appellants’ contentions (App. Br. 15-17)
that Chan, and thus the base combination of Gullman, Chan, and Kawano,
fails to teach or suggest the integral pointing device recited in claims 22 and
30 are not persuasive. Accordingly, we sustain the Examiner’s rejection of
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independent claims 22 and 30, as well as claims 23-25, 27, 29, 31, and 33
depending respectively therefrom. We sustain the Examiner’s rejection of
dependent claim 26 for the same reasons as claim 22 from which claim 26
depends.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 22-25, 27, 29-31,
and 33 as being unpatentable under 35 U.S.C. § 103(a) over Gullman, Chan,
and Kawano.
(2) Appellants have not separately argued or otherwise shown that the
Examiner erred in rejecting claim 26 as being unpatentable under
35 U.S.C. § 103(a) over Gullman, Chan, Kawano, and Lee.

DECISION
The Examiner’s rejections of claims 22-27, 29-31, and 33 are
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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