Ex Parte Choi et al

Patent Trial and Appeal Board

Feb 20, 2014

10675635 (P.T.A.B. Feb. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/675,635 09/30/2003 Jae-Goo Choi 1235-006 6064
66547 7590 02/21/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
ALAM, FAYYAZ
ART UNIT PAPER NUMBER
2649
MAIL DATE DELIVERY MODE
02/21/2014 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 JAE-GOO CHOI and YOUNG CHOI
____________________

Appeal 2011-0100241
Application 10/675,635
Technology Center 2600
____________________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
JASON V. MORGAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Samsung Electronics Co, Ltd. (App. Br. 1).
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Application 10/675,635

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1-8. (App. Br. 3). We have jurisdiction
under 35 U.S.C. § 6(b) (2008).
We reverse.
Appellants’ Invention
Appellants invented a keypad assembly (150) for a mobile phone
(100), wherein the keypad can be used in a touch screen mode or in a key
button function mode by activating a mode shift button (170) on the keypad.
(Spec. [0014], Fig. 1). In particular, the keypad assembly (150) includes a
circuit board (151) having disposed thereupon a keypad rubber (154), a
sensor (153) disposed atop the keypad rubber, and a key button part (156)
disposed atop the sensor. (Spec. [0013], Fig. 2). The key button part
includes a plurality of key buttons that are positioned thereon such that the
top planar surfaces of adjacent keys form a single planar touch screen panel
with no spaces therebetween. (Spec. [0029], Fig. 1).
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A keypad assembly for a portable radiotelephone,
comprising:
a printed circuit board having a plurality of metal domes;
a keypad rubber disposed on the printed circuit board and
having bosses formed integrally on the positions corresponding
to the plurality of metal domes;
a sensing means disposed on the keypad rubber;
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Application 10/675,635

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a key button part disposed on the sensing means, the key
button part integrating a keypad and a touch screen panel by
having a plurality of key buttons being integrally formed with
each other and being positioned such that top planar surfaces of
the plurality of key buttons form a single, substantially planar
touch screen panel with no spacing in between the top planar
surfaces of adjacent keys among the plurality of key buttons, for
functioning in one of a keypad mode and a touch screen panel
mode;
a power supply unit supplying power to the keypad and
cutting off power to the touch screen panel in the keypad mode;
and
an input mode shift key shifting from one of the keypad
mode and the touch screen panel mode to the other mode.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Miyajima US 6,518,958 B1 Feb. 11, 2003
Bick GB 2,367,530 Oct. 3, 2000

Rejections on Appeal
The Examiner rejects claims 1-8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bick and Miyajima.
ANALYSIS
Dispositive Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding
the combination of Bick and Miyajima teaches or suggests a key button part
including a plurality of key buttons positioned on a keypad such that the top
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Application 10/675,635

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planar surfaces of adjacent keys form a single planar touch screen panel
with no spaces therebetween, as recited in claim 1?

Appellants argue the combination of Bick and Miyajima does not
teach or suggest the disputed limitations emphasized above. (App. Br. 8-13,
Reply Br. 1-5). In particular, Appellants argue because Miyajima discloses
a key button part having a plurality of key buttons spaced apart, the buttons
are not positioned on the keypad such that the top portions thereof form a
substantially planar touch screen panel with no spacing between the top
planar surfaces of adjacent keys. (App. Br. 11, Reply Br. 2-3).
In response, the Examiner finds because Miyajima discloses a key
part including a single planar surface having key buttons attached to one
another through a single and same rubber material, Miyajima therefore
teaches no physical gap between the top portions of adjacent key buttons.
(Ans. 13, 15).
On the record before us, we find error in the Examiner’s obviousness
rejection. We note, at the outset, Appellants do not dispute the Examiner’s
finding that Miyajima discloses a single rubber layer upon which a plurality
of key buttons are mounted to thereby form a single surface. However,
Appellants dispute the Examiner’s finding that because the key buttons are
linked together by the same rubber material, no physical gaps exists between
the top planar surfaces thereof despite the explicit indication that such
surfaces are spaced apart. Therefore, the pivotal issue before us turns on
whether Miyajima’s disclosure of a plurality of key buttons mounted on a
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same rubber material teaches or suggests that top surfaces of adjacent
buttons mounted on the rubber material have no spacing between them. We
answer this inquiry in the negative.
As set forth above, the disputed claim limitations require that the key
buttons be positioned on the keypad such that the top planar surfaces thereof
form a single planar touch screen panel with no spacing between the top
planar surfaces of adjacent key buttons. That is, while the buttons are to be
mounted on a same surface, they must also be positioned on the surface such
that planar top portions of adjacent keys have no gap between them. Thus,
while Miyajima’s disclosure of a plurality of key buttons mounted on a same
rubber material teaches that the buttons linked together form a single
surface for the keypad, its disclosure that the top portions of the key buttons
are spaced apart (Fig. 2) vitiates the disputed claim language. Consequently,
Miyajima’s disclosure simply falls short of teaching or suggesting
positioning the buttons on the keypad such that no spacing exists between
their top surfaces of adjacent key buttons. Because Appellants have shown
at least one error in the Examiner’s rejection, we need not reach the merits of
Appellants’ remaining arguments. Therefore, Appellants have shown error
in the Examiner’s rejection of claim 1.
Regarding the rejection of claims 2- 8, because those claims recite
commensurate limitations as in those of claim 1 discussed above, Appellants
have similarly shown error in the rejection of those claims for the foregoing
reasons.
DECISION
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Application 10/675,635

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We reverse the Examiner’s obviousness rejections of claims 1-8.

REVERSED

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