Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Sep 14, 2021

2020001964 (P.T.A.B. Sep. 14, 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.
14/790,874 07/02/2015 Matthew Geary RPS9202150199-
US-NP(18-15
9726
124906 7590 09/14/2021
The Small Patent Law Group LLC
1423 Strassner Dr.
Suite 100
Brentwood, MO 63144
EXAMINER
PIZIALI, JEFFREY J
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
09/14/2021 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 MATTHEW GEARY, THOMAS SLUCHAK, and
CHRISTOPHER OSBORNE

Appeal 2020-001964
Application 14/790,874
Technology Center 2600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Lenovo
Pte. Ltd.” Appeal Br. 3.
2 Claims 8, 9, and 11–20 are withdrawn (Appeal Br. 36–38) and not under
review. See infra n.3.
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Application 14/790,874

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relate[s] to input devices of a computing
assembly, such as keyboards.” Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of argued subject matter.
1. A system comprising:
a keyboard including a first key and a second key, the first key
operatively coupled with a first light device and a second light
device, and the second key configured to be actuated to change
from a first mode of operation to a second mode of operation;
and
one or more processors activating the first light device to emit a
first light out of the first key responsive to actuation of the first
mode of operation and activating the second light device to
emit a second light out of the first key responsive to actuation
of the second mode of operation, wherein the one or more
processors reverts from the second mode of operation back to
the first mode of operation in response to releasing the second
key.
Appeal Br. 35 (Claim App.).
Rejection3
Claims 1–7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim (KR 10-0222374 B1; July 15, 1998), Myers (US
2011/0205161 A1; Aug. 25, 2011), Dobry (US 7,301,532 B1; Nov. 27,

3 An appealed rejection under 35 U.S.C. § 112(b) (indefiniteness) has been
withdrawn. Ans. 13. An appealed restriction requirement lies outside the
Board’s purview. In re Hengehold, 440 F.2d 1395, 1400 (CCPA 1971)
(Restriction requirements are petitionable and therefore outside the Board’s
jurisdiction.).
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Application 14/790,874

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2007), Brown (US 5,387,042; Feb. 7, 1995), and Aoike (US 2011/0128233
A1; June 2, 2011). Final Act. 12–22.
OPINION
Only claims 1, 4, and 7 are separately argued. Appeal Br. 19–32.
Claim 1 is representative of claims 2, 3, 5, and 6. 37 C.F.R. 41.37(c)(1)(iv).
We are unpersuaded of error in the rejections of claims 1, 4, and 7.
We therefore sustain the Examiner’s decision to reject claims 1–7.
Claim 1
For claim 1, Appellant contends the applied prior art does not teach or
suggest the claimed first keyboard key’s first mode/light and second
mode/light whereby: the first key emits the first and second lights
respectively responsive to the first and second modes; and a second
keyboard key is actuated to change the present mode from first to second
and released to revert the present mode from second to first. Appeal Br. 20–
23, 25–26, 28.
We are unpersuaded of Examiner error because the above
claim features are obvious over Kim and Brown. Kim teaches a keyboard
whereby the alphabetic keys each (claimed first key) have a first mode/light
representing English text and a second mode/light representing Hangul text
(i.e., alphabetic Korean text). Kim 3–4. Kim also teaches a toggle switch
100 (claimed second key) for selecting between the two modes.
Id. Kim only lacks (with respect to the above claim features) a teaching that
the toggle switch 100 reverts the keys to the prior mode if/when the toggle is
released. Brown shows this feature would have been obvious by teaching
that a keyboard’s toggle key, such as for selecting between two modes of the
alphanumeric keys, can hold the current mode until pressed and released.
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Application 14/790,874

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Brown col. 7, ll. 40–43; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
We add that, even assuming (arguendo) the above release feature is
not obvious in view of Brown, it would nonetheless be obvious because a
toggle key for selecting between two modes can revert its selection to the
prior mode in only one of two ways: if/when pressed; or if/when pressed and
released. See In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“Where a
skilled artisan merely pursues ‘known options’ from a ‘finite number of
identified, predictable solutions,’ obviousness under § 103 arises.” (quoting
KSR, 550 U.S. at 421)).
Claim 4
Claim 4 depends from claim 1 and adds: “wherein the one or more
processors perform a first function associated with the first key responsive to
an actuation of the first key during the first mode of operation and the one or
more processors perform a different, second function associated with the
first key responsive to the actuation of the first key during the second mode
of operation.”
Appellant contends that “[n]one of these references describe” this
feature and, “[t]hus, it necessarily follows that the combination of cited
references does not render obvious the subject matter[.]” Appeal Br. 30.
We are unpersuaded of Examiner error because the keys of Kim’s keyboard
enter English text in a respective mode (claimed “first function . . . during
the first mode of operation”) and enter Hangul text in another respective
mode (claimed “second function . . . during the second mode of operation”).
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Application 14/790,874

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Claim 7
Claim 7 indirectly depends from claim 1 (directly depends from
claim 6) and adds: “wherein the one or more processors direct the output
device to display an alphanumeric symbol as the first output responsive to
actuation of the first key during the first mode of the operation and the one
or more processors direct the output device to perform an editing function of
the alphanumeric symbol displayed on the output device responsive to
actuation of the first key during the second mode of the operation.”
Appellant contends: “Kim’s toggle switch merely changes the
keyboard language. Kim does not describe directing any device to perform
editing functions.” Appeal Br. 32. Appellant also contends:
The [Examiner proposes implementing] Dobry’s modes of
operation . . . by customizing the keys to allow easy editing of
documents.[] . . . However, Dobry does not teach or suggest
using modes of operation to improve a user's keyboard
experience by customizing the keys to allow easy editing of
documents. . . . There is no discussion in Dobry of . . . a
second mode of operation.
Id. at 31–32.
We are unpersuaded of Examiner error because, contrary to
Appellant’s contentions, Dobry teaches that keyboard keys can be toggled
between alphanumeric text and editing functions. See Dobry, Fig. 8;
see also Ans. 21 (“one known key/toggle switch (e.g., Dobry’s option
key)”). Thus, Dobry shows it would have been obvious to toggle some of
Kim’s keys between alphanumeric text and editing functions. See KSR,
550 U.S. at 416 (“[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
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Application 14/790,874

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known in the field, the combination must do more than yield a predictable
result.”).
Though obviousness analysis does not require a bodily modification
of cited prior art, we add that Kim’s keyboard could be bodily modified to
toggle some keys between alphanumeric text and editing functions.
Specifically, because Arabic numerals (0, 1, 2, . . .) are used for English
(always) and Hangul (sometimes), Kim’s numeral keys (not illustrated)
could be toggled between numeral text and editing functions without
changing the illustrated keyboard configuration (Kim, Fig. 1). See KSR, 550
U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity[.]”).
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–7.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1–7 103
Kim, Myers,
Dobry,
Brown, Aoike
1–7

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a).
See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED