Ex Parte Ure

Patent Trial and Appeal BoardMay 29, 2014

11888811 (P.T.A.B. May. 29, 2014)

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. 11/888,811 08/01/2007 Michael J. Ure 070801LGH.US 5091 30232 7590 05/29/2014 USEFUL ARTS IP MICHAEL J. URE 10518 PHIL PLACE CUPERTINO, CA 95014 EXAMINER LAM, NELSON C ART UNIT PAPER NUMBER 2697 MAIL DATE DELIVERY MODE 05/29/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL J. URE ____________________ Appeal 2011-012226 Application 11/888,811 Technology Center 2600 ____________________ Before: JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012226 Application 11/888,811 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 37-39. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to an input device and mobile electronic devices having improved user interface capabilities are described. In one embodiment, an input device includes a display device, a capacitive touch sensor overlying the display device, and a pressure-sensing layer underlying the display device. (Abstract). Claim 37, reproduced below, is illustrative of the claimed subject matter: 37. A mobile electronic device having telephony capabilities, in one mode thereof being held in a user's hand to the user's ear, comprising: a housing having length, width and height dimensions L x W x H, respectively; a processor housed within said housing; a display coupled to the processor, having a display area of dimensions greater than 0.5 x L x W: and a capacitive touch sensor coupled to the processor, having a touch area of dimensions greater than 0.5 x L x W. REFERENCES The prior art identified and/or relied upon by the Examiner in rejecting the claims on appeal is: Mattila US 2003/0048257 Al Mar. 13, 2003 Kimbrell US 2009/0312075 Al Dec. 17, 2009 Appeal 2011-012226 Application 11/888,811 3 REJECTION The Examiner made the following rejection: Claims 37-39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mattila and Official Notice is taken of the fact that it is notoriously old and well known in the art to modify the parameters of components during the course of routine optimization/experimentation. (Ans. 5-7). ANALYSIS The Examiner relies upon obviousness based upon the Mattila reference in view of Official Notice. (Ans. 6). The Examiner maintains: Official notice is taken of the fact that it is notoriously old and well known in the art to modify the parameters of components during the course of routine optimization/experimentation. It would have been obvious to a person having ordinary skill in the art at the time the invention was made to have had a display area of dimensions and a touch area of dimensions greater than 0.5 x L x W. (Ans. 6). Appellant maintains that "[t]he Claims Implicitly Call For Overlapping Touchpad and Display." (Reply Br. 2). We disagree with Appellant and find no "overlapping" recited in the language of independent claim 37. The language of independent claim 37 merely recites physical couplings and specific dimensions of elements. Appellant further speculates that the Mattila reference "Urges Non-overlapping Touchpad and Display." (Reply Br. 2). Appellant further contends that "physical separation was Appeal 2011-012226 Application 11/888,811 4 likely a requirement in order for the touch pad to be an optical touch pad as taught by Matilla." (Id. at 3). We disagree with Appellant’s speculation and find that the Mattila reference explicitly also suggests alternative uses of different types of touch pads. (Mattila ¶ [0066]). Further, Appellant has not controverted the Examiner's reliance upon "Official Notice." (Ans. 6) (MPEP 2144.03(C)(Appellant has not challenged the Official Notice and the Examiner may take it as admitted, and we further noted the Mattila reference above)1. Additionally, we note that the specific arrangement of the communication device would have further influenced the proffered optimizing step. We also find that the Kimbrell reference, which is of record in the instant application (Form PTO-892, dated Jul. 21, 2010), further evidences a traditional flip phone where the keypad is on one side of the phone and the display is on the other side of the phone. In this arrangement, the keypad may be implemented with a touchpad as evidenced by the Mattila reference and the display on the other half of the flip phone. With the length, width, and depth dimensions of the folded phone as the relevant dimensions as recited in dependent claim 39, it is clear that the display is greater than 0.5 x length x width, and the keypad is similarly greater than 0.5 x length x width of the folded phone. Moreover, the Examiner maintains that discovering the optimal workable ranges was within the routine skill in the art and that absence of 1 “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.” Appeal 2011-012226 Application 11/888,811 5 any criticality the parameters set forth would have been obvious to one of ordinary skill in the art. (Ans. 6). We agree with the Examiner's rationale. In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007), the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances in which a patent might be determined to be obvious without an explicit application of the teaching, suggestion, motivation test. In particular, the Supreme Court emphasized that “the principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. The Court explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if 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. at 1740. The operative question in this “functional approach” is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. Appeal 2011-012226 Application 11/888,811 6 A person having ordinary skill in the art uses known elements for their intended purpose. Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its intended purpose in combination with a spreader and a tamper and screed). “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Appellant has provided no evidence that the claimed difference in size was “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, 127 S. Ct. at 1740-41). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1734 . We find the instant claim language does not functionally differentiate the claimed invention, but merely recites a size variation in the known claimed elements. Therefore, Appellant's arguments do not show error in the Examiner's reasoned conclusion of obviousness of representative independent claim 37. CONCLUSION The Examiner did not err in rejecting claims 37-39 based upon obviousness. Appeal 2011-012226 Application 11/888,811 7 DECISION For the above reasons, the Examiner’s rejection of claims 37-39 is sustained. 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 lp