Ex Parte McKillop et al

Patent Trial and Appeal Board

Apr 14, 2016

11591752 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111591,752 11/01/2006
67673 7590 04/18/2016
APPLE c/o MORRISON & FOERSTER LLP NOV A
1650 TYSONS BLVD.
SUITE 300
MCLEAN, VA 22102
Chris McKillop
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.
106842005000(P4090US1) 8987
EXAMINER
MENGISTU, AMARE
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS McKILLOP, ANDREW GRIGNON,
and BAS ORDING
Appeal2014-004014
Application 11/591,752
Technology Center 2600
Before BRUCE R. WINSOR, KEVIN C. TROCK, and
AMBER L. HAGY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 44--52, which constitute all the claims pending in this application.
Claims 1--43 were previously canceled. (Response 2 (Nov. 30, 2012).) We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' disclosed "invention relates generally to touch pads that
provide visual feedback. More particularly, the ... invention relates to
1 The real party in interest identified by Appellants is Apple Inc. (App. Br.
2.)
Appeal2014-004014
Application 11/591,752
touch pads with symbols that adapt based on mode." (Spec. if 13.)
Representative claim 44, which is illustrative, reads as follows:
44. A handheld device operable in multiple modes,
the device comprising:
a display, the display configured to display multiple
GUis [2] associated with the multiple modes, at least one of
the GUis comprising graphical information associated with a
touch input and graphical information associated with a press
input, the graphical information associated with the touch
input and the press input being changeable depending on the
mode,
an input surface, the input surface comprising at least
one touch input zone configured to provide touch signals
when touched and at least one press input zone configured to
provide press signals when pressed,
the display and the input surface being arranged to
display the graphical information associated with the touch
input proximate the touch input zone and to display the
graphical information associated with the press input
proximate the press input zone,
whereby use of an input surface comprising a touch
input zone and a press input zone in multiple modes is
enabled without requiring graphics physically fixed to the
device.
Claims 44--52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Park et al. (US 7,397,467 B2; July 8, 2008) (hereinafter
"Park") and Wu et al. (US 2003/0048262 Al, Mar. 13, 2003) (hereinafter
"Wu").3 (See Final Act. 4--8.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Aug. 7, 2013; "Reply Br." filed Jan. 27, 2014) and the
2 Graphical User Interfaces. (Spec. if 70.)
3 A rejection of claims 44--51 under 35 U.S.C. § 112, 1st paragraph, (see
Final Act, 2-3) is withdrawn. (Ans. 2.)
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Application 11/591,752
Specification ("Spec." filed Nov. 1, 2006) for the positions of Appellants
and the Final Office Action ("Final Act." mailed Oct. 25, 2012) and Answer
("Ans." mailed Nov. 26, 2013) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this Decision. Arguments that Appellants did not make
in the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
ISSUE
Claims 44--52 are rejected under the same ground of rejection. (Final
Act. 4.) Appellants argue the patentability of claim 44 (see App. Br. 9-12;
Reply Br. 1--4), but do not separately argue the patentability of claims 45-52
with particularity (see App. Br. 12-13). Therefore, we select claim 44 as the
representative claim, pursuant to our authority under 3 7 C.F .R.
§ 41.37(c)(l)(iv). Claims 45-52 stand or fall with claim 44.
The issue presented by Appellants' contentions is as follows: Does
the combination of Park and Wu teach or suggest "the display and the input
surface being arranged to display the graphical information associated with
the touch input proximate the touch input zone and to display the graphical
information associated with the press input proximate the press input
zone," as recited in claim 44?
ANALYSIS
Appellants contend as follows:
Park is cited for its disclosure of an input surface with graphic
elements. Wu is cited for its disclosure of a display with
graphic elements. However, neither reference discloses or
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Application 11/591,752
suggests arranging both Park's input surface and Wu's
display to (a) display graphical information associated with
touch input proximate the touch input zone and (b) display
graphical information associated with press input proximate
the press input zone, as required by the pending claims.
(App. Br. 11 (emphases added).) We find this argument unpersuasive
because "one cannot show non-obviousness by attacking references
individually where, as here, the rejection[ is] based on [a] combination[] of
references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants further contend as follows:
Even if Park and Wu are viewed as separately disclosing the
claim elements, the Examiner has failed to provide a reason
to combine the separate elements as proposed, apart from the
hindsight gleaned from the present claims. Mere
identification of the claimed elements in the separate
references and recognition that the components "could be
modified" as required by the claims is insufficient to
establish prima facie obviousness.
Where the prior art references require selective combination,
as in the present rejection, there must be some reason for the
combination other than the hindsight gleaned from the
pending application itself. Something in the prior art must
suggest the desirability, and thus the obviousness, of making
the combination. It is impermissible to use the pending
claims as a frame and the prior art references as a mosaic to
piece together a facsimile of the claims. Uniroyal v. Rudkin-
Wiley, 5 USPQ 2d 1434, 1438 (Fed. Cir. 1988).
(App. Br. 11-12.) We are not persuaded of error.
The Supreme Court instructs us the Examiner's obviousness
rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever,
the analysis need not seek out precise teachings directed to the
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Application 11/591,752
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). "The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents." Id. at 419.
While it is often necessary for an Examiner to identify a reason for
combining elements obtained from the prior art in establishing a prima facie
case of obviousness, the identification of such a reason is not a sine qua non
requirement. See id. at 418-19. So long as the Examiner provides an
articulated reasoning with some kind of a rational underpinning to
substantiate the obviousness rejection, such a conclusion is proper. See id. at
418.
Here the Examiner finds; inter alia; as follows:
[A] reason to combine would be the rationale of the use of a
known technique with expected results. This would be the use
of Wu's presenting graphical information on a display
representing a location the user should touch for a desired input.
The combination of Wu and Park would result in presenting
two sets of information, one on the input surface itself as shown
by Park and a second one on the display device as shown by
Wu. Both would be used to guide a user to making desired
input based on the mode of operation of the device.
An alternative combination of the references would be
modifying display and input system described by Wu to include
a touch input surface that displays graphical information as
described by Park. In a combination with the reversal of
primary and secondary references, the touch input device of Wu
could be replaced or modified to include the light and graphical
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elements described by Park usmg a rationale of simple
substitution of elements.
(Ans. 3--4.) We agree with the Examiner.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR, 550 U.S. at 416. "If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability." Id. at 417. "[I]f 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." Id. We are not persuaded that combining Park's
graphical information on an input surface with Wu's graphical information
on a display would have been "uniquely challenging or difficult for one of
ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419).
Appellants' contention that the Examiner's rationale, reversing the
order of the cited references, amounts to an impermissible undesignated new
ground of rejection (Reply Br. 3) is a matter that is addressable by petition to
the Director or her delegates, and not on appeal to this Board. See 37 C.F.R.
§§ 1.181 & 41.40; MPEP § 1207.03(c). That said, we note that where a
rejection is based on a combination of references, the order in which prior
art references are cited to the Applicant is of no significance, but merely a
matter of exposition. In re Bush, 296 F.2d 491, 496 (CCPA 1961).
We conclude the Examiner has met the burden of providing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness," KSR, 550 U.S. at 418, which Appellants have
not persuasively rebutted.
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Appellants contend, for the first time in the Reply Brief~
[ t ]here is no mention of the claimed "proximity" requirement.
There is no mention of the claimed "touch input zone" or "press
input zone" requirements. Instead, the proposed combination
of Wu and Park is described as merely presenting two sets of
information, one on an input surface and one on a display.
(Reply Br. 2.) We are unpersuaded of error. The Examiner makes findings
in the Final Office Action that address the "proximity," "touch input zone,"
and "press input zone" limitations. (See Final Act. 4--5). In the Appeal
Brief Appellants paraphrase a passage of claim 44 that included these
limitations as well as the "both ... and" limitation discussed supra, but
provided only a general contention that, even if combined, neither Park nor
Wu teaches or suggests paraphrased language. (App. Br. 12.) Such a
conclusory general contention, with no specific argument regarding the
"proximity," "touch input zone," and "press input zone" limitations, does not
amount to a substantive argument to which the Examiner can meaningfully
respond. C'f In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."); In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)
("[I]t is not the function of this court to examine the claims in greater detail
than argued by an appellant, looking for [patentable] distinctions over the
prior art."). We note that, other than contending the Examiner's Answer was
deficient for not addressing the "proximity," "touch input zone," and "press
input zone" limitations (Reply Br. 1-2), Appellants offer no particularized
explanation in the Reply Brief as why these limitations are not taught by
Park and Wu, as found by the Examiner (Final Act 4--5).
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Appellants do not persuade us of error in the rejection of
representative claim 44. Accordingly, we sustain the rejection of claim 44
and claims 45-52, which fall with claim 44.
DECISION
The decision of the Examiner to reject claims 44--52 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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