Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Aug 24, 2021

2020003341 (P.T.A.B. Aug. 24, 2021)

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.
15/338,821 10/31/2016 Brian William Wallace RPS920160032-
US-NP 18-25
9875
124906 7590 08/24/2021
The Small Patent Law Group LLC
1423 Strassner Dr.
Suite 100
Brentwood, MO 63144
EXAMINER
ABEBE, SOSINA
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
08/24/2021 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):
docket@splglaw.com
jleclair@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN WILLIAM WALLACE and
CUONG HUY TRUONG
Appeal 2020-003341
Application 15/338,821
Technology Center 2600
Before BRADLEY W. BAUMEISTER, JENNIFER MEYER CHAGNON,
and ROBERT J. SILVERMAN, Administrative Patent Judges.
CHAGNON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5–9, 11–13, 16, 17, 19–22, and
24–27. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Lenovo (Singapore) Pte. Ltd.
Appeal Br. 3.
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Application 15/338,821

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CLAIMED SUBJECT MATTER
The claims are directed to “electronic devices that include a touchpad
and more particularly to a touchpad having a touchpad display.” Spec.2 ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An electronic device, comprising:
a memory to store program instructions;
one or more processors to execute the program
instructions;
a main body unit having a housing comprising a top side,
the main body unit further including a keyboard and a touchpad
disposed along the top side of the housing, the keyboard and the
touchpad located in discrete areas of the top side, the touch pad
including a touch sensor and a touchpad display covering at
least a portion of the touch sensor; and
a primary display moveably coupled to the main body
unit,
wherein the touchpad is configured to switch between a
cursor manipulation mode and a program mode, wherein, while
the touchpad is in the cursor manipulation mode, the one or
more processors move a cursor that is displayed on the primary
display based on a user touch input on the touchpad, wherein,
while the touchpad is in the program mode, the one or more
processors display a graphical user interface (GUI) having one
or more virtual buttons on the touchpad display and execute the
program instructions responsive to receiving a user touch input
on the touchpad at the respective one or more virtual buttons,

2 In this Decision, we refer to the Specification filed October 31, 2016
(“Spec.”); Final Office Action dated May 13, 2019 (“Final Act.”); Advisory
Action dated July 23, 2019 (“Advisory Act.”); Appeal Brief filed October 8,
2019 (“Appeal Br.”); and Examiner’s Answer dated January 22, 2020
(“Ans.”).
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Application 15/338,821

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the GUI and the program instructions being specific to a
corresponding program, wherein the one or more processors
execute the program instructions by updating a visual
representation of the corresponding program displayed on the
primary display.
Appeal Br. 40.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Griffin et al. (“Griffin”) US 2009/0303022 A1 Dec. 20, 2009
Kim US 2010/0184485 A1 July 22, 2010
Louch US 2010/0245260 A1 Sept. 30, 2010
Kwak et al. (“Kwak”) US 2011/0063204 A1 Mar. 17, 2011
Lin et al. (“Lin”) US 2012/0262392 A1 Oct. 18, 2012
Lemay et al. (“Lemay”) US 2017/0109039 A1 Apr. 20, 2017
REJECTIONS
I. Claims 1, 5, 11–13, 17, 19, 21, and 24–26 stand rejected under
35 U.S.C. § 103 as being unpatentable over Lin and Louch.
II. Claims 6 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lin, Louch, and Griffin.
III. Claims 3, 16, and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lin, Louch, and Kim.
IV. Claims 7–9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lin, Louch, and Lemay.
V. Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lin, Louch, and Kwak.
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Application 15/338,821

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OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of each of Appellant’s arguments, we are persuaded
Appellant has identified reversible error in the appealed rejection.
The Examiner’s Findings
Regarding claim 1, the Examiner finds:
Lin teaches an electronic device, (fig. 1) comprising:
a memory to store program instructions; one or more
processors to execute the program instructions; (it is obvious the
electronic device as shown in fig. 1 has a memory and a processor
in order to perform an operation corresponding to a user input.)
a main body unit (fig. 1 ; 1) having a housing (fig. 1 ; 11)
comprising a top side, (fig.1; 11) the main body unit (1) further
including a keyboard (fig. 1; 5) and a touchpad (fig. 1; 610 and
fig.2 6) disposed along the top side of the housing, (11) the
keyboard (5) and the touch pad (610) located in discrete areas of
the top side, (see fig. 1) the touchpad (610) including a touch
sensor (fig. 2 and par. [0040]; lines 1 - 9) and
a primary display (fig. 1; 3) moveably coupled to the main
body unit, (fig. 1; 1 ), (fig. 1 and pars. [0026] - [0027])
wherein the touchpad is configured to switch between a
cursor manipulation mode (fig. 3; 610) wherein, while the
touchpad (fig. 3; 610) is in the cursor manipulation mode, (fig. 3;
610) the one or more processors move a cursor that is displayed
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on the primary display based on a user touch input on the
touchpad, (pars. [0032] and [0040]; lines 20 - 29)
Final Act. 3 (internal citations to Lin).
In the Advisory Action, the Examiner finds that “Lin does teach a
touch pad ‘6’ configured to switch between a cursor manipulation mode and
a program mode.” Advisory Act. 1 (citing Lin ¶ 31).
The Examiner relies on Louch as teaching the claimed “touchpad
display covering at least a portion of the touch sensor” and the claimed
“program mode” of the touchpad. Final Act. 4. Specifically, the Examiner
finds that “it is obvious the touchpad display covers part of the touch sensor
and can detect an input on the touchpad display.” Id.; Ans. 4. The Examiner
further finds:
while the touchpad (fig. 2; 220) is in the program mode, (fig. 2
and par. [0037]; lines 1 - 14) the one or more processors
(par. [0053] “processing device” may also refer to a processor,
such as, for example, a microprocessor, an integrated circuit, or
a programmable logic device for implementing virtual input
device application 100) display a graphical user interface (GUI)
(fig. 2; 220) having one or more virtual buttons (fig. 2; 242, 244
and 246) on the touchpad (fig. 2; 220) display and execute the
program instructions responsive to receiving a user touch input
(user’s fingers) on the touchpad (fig. 2; 220) at the respective one
or more virtual buttons, (fig. 2; 222, 224 and 226) the GUI and
the program instructions being specific to a corresponding
program, wherein the one or more processors execute the
program instructions by updating a visual representation of the
corresponding program displayed on the primary display (fig. 2;
210). (par. [0037]).
Final Act. 4 (internal citations to Louch).
In the Answer, the Examiner finds that “Louch teaches the
touchpad 220 provides display functionality.” Ans. 4. The Examiner
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continues, “[t]he touchpad of Louch have a program mode in which is GUI
with virtual buttons (fig. 2; 222, 224, 226) is displayed.” Id. at 5.
The Examiner reasons:
it would have been obvious . . . to further modify the invention
of Lin with the teaching of Louch so as to a virtual
representations of the objects (e.g., virtual objects) can be
generated and presented in a virtual input device, so that a user
can more quickly interact with the objects.
Final Act. 5 (citing Louch ¶ 19).
Appellant’s Arguments
Appellant argues that “[n]either the touchpad 220 of Louch nor any of
the operating areas 610, 620, 630 of the touch input unit of Lin has the dual
mode functionality of the touchpad recited in claim 1.” Appeal Br. 17.
As to Lin, Appellant contends, “Lin does not teach or suggest that any
of the operating areas 610, 620, 630 have dual functionality and can switch
operating modes.” Id. at 13. Instead, according to Appellant, “Lin teaches
three touchpads with different pads for different purposes. The traditional
cursor touchpad is in the middle and the virtual function keys are on the
other two touchpads.” Id. at 18. Thus, Appellant contends that “[t]he
separate touch areas of Lin are not the same as the dual function subject
matter provided in claim 1.” Id.
Appellant contends that “Louch also cannot teach or suggest a
touchpad configured to switch between a cursor manipulation mode and a
program mode.” Id. at 17. As to Louch, Appellant contends:
Louch does not teach or suggest that the touchpad 220 provides
any display functionality. Instead, the dotted circles (e.g., 222,
224, and 226) shown in Figure 2 of Louch are merely
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indications of the physical locations within the area of the
touchpad 220 that correspond to the locations of the virtual
objects 242,244, and 246 displayed in the virtual trackpad 240
on the display device 210. Louch includes a touchpad 220 with
no display. There are no indications in Louch that the
touchpad 220 has a display.
Appeal Br. 17 (emphases Appellant’s).
Appellant further contends that “Louch teaches one touchpad
operating in cursor manipulation mode.” Id. at 18. As to the Examiner’s
findings regarding areas 222, 224, 226 of Louch,
Appellant submits that the Examiner misunderstands
Figure 2 of Louch, mistaking the areas 222, 224, 226 as
representative of a display. However, the areas are merely
positions on the touchpad meant to show a one-to-one
relationship with positions 242, 244, 246 of the virtual objects as
described above in paragraph 39 of Louch. The virtual objects
242, 244, 246 are not displayed on the touchpad 220 of Louch.
The virtual objects 242,244,246 are displayed on the primary
screen 210.
Appeal Br. 19 (emphases Appellant’s).
Analysis
We agree with Appellant that Louch does not disclose a touchpad
with a display, which is critical to the Examiner’s determinations,
summarized above. Contrary to the Examiner’s findings, nothing in Louch
indicates that areas 222, 224, 226 are any sort of display or virtual button.
Rather, Appellant’s contention that areas 222, 224, 226 “are merely
positions on the touchpad” (Appeal Br. 19 (emphasis omitted)) is more
consistent with the disclosure of Louch.
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Louch teaches:
[A] virtual input device application can generate a virtual input
device (e.g., a virtual trackpad 240) based on a physical input
device (e.g., trackpad 220). . . . A user can interact with virtual
objects (e.g., virtual objects 242, 244, and 246) displayed on the
virtual trackpad 240 by providing input at corresponding
positions (e.g., physical coordinates) on the trackpad 220.
Louch ¶ 37. Louch describes that “a user does not have to look at the
trackpad 220 to select virtual objects, for example, displayed on the virtual
trackpad 240.” Id. ¶ 38 (emphasis added).
The positions of virtual objects 242, 244, and 246 correspond to
positions 222, 224, and 226 (as indicated by the dotted circles),
respectively. Virtual objects 242, 244, and 246 are displayed at
virtual positions (e.g., virtual coordinates) on the virtual trackpad
240 that are a same relative distance from edge 248 and 249 as
positions 222, 224, and 226 are from edge 228 and 229.
Louch ¶ 39. Nothing in Louch provides any indication that these “positions”
222, 224, 226 are displayed in any way on touchpad 220. The Examiner
does not rely on Lin as teaching this claim feature. See Final Act. 3–4
(admitting that Lin does not teach this limitation).
We, therefore, agree with Appellant that the Examiner erred in
determining that the cited combination teaches “while the touchpad is in the
program mode, the one or more processors display a graphical user interface
(GUI) having one or more virtual buttons on the touchpad display and
execute the program instructions responsive to receiving a user touch input
on the touchpad at the respective one or more virtual buttons,” as recited in
claim 1.
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Application 15/338,821

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Conclusion
For the reasons discussed, we do not sustain the rejection of claim 1,
or its dependent claims. Independent claims 12 and 19 include similar
limitations and we do not sustain the rejection of these claims, or the claims
that depend therefrom, for similar reasons.
CONCLUSION
The Examiner’s rejections of claims 1, 3, 5–9, 11–13, 16, 17, 19–22,
and 24–27 under 35 U.S.C. § 103 are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 11–13,
17, 19, 21,
24–26
103 Lin, Louch 1, 5, 11–13,
17, 19, 21,
24–26
6, 20 103 Lin, Louch, Griffin 6, 20
3, 16, 22 103 Lin, Louch, Kim 3, 16, 22
7–9 103 Lin, Louch, Lemay 7–9
27 103 Lin, Louch, Kwak 27
Overall
Outcome
1, 3, 5–9,
11–13, 16,
17, 19–22,
24–27

REVERSED