Ex Parte Kerr et al

Patent Trial and Appeal Board

Dec 26, 2017

12495483 (P.T.A.B. Dec. 26, 2017)

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.
12/495,483 06/30/2009 Duncan Robert Kerr P7357US1 2875
65015 7590 12/28/2017
Trev7 T aw frmim
EXAMINER
870 Market Street, Suite 984
SAN FRANCISCO, CA 94102
BODDIE, WILLIAM
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
12/28/2017 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 @ treyzlawgroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUNCAN ROBERT KERR and NICK KING
Appeal 2017-007324
Application 12/495,483
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 14, 24, 26, 61, 63—65, 71—74, 78, 79, 81, and 83—
85. Claims 1-13, 15-23, 25, 27-60, 62, 66-70, 75-77, 80, and 82 were
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Apple Inc. (App.
Br. 2).
Appeal 2017-007324
Application 12/495,483
STATEMENT OF THE CASE
Appellants’ invention relates to a system, device, and method for
electronically marking a housing of a portable electronic device (Spec. 14).
Exemplary claim 14 under appeal reads as follows:
14. A method for illuminating a housing of a portable device
that receives user input, the method comprising:
receiving an input at the portable device;
illuminating a touch-sensitive surface of the housing in
response to the input, wherein illuminating the touch-sensitive
surface of the housing comprises providing visual gesture
guidance for performing a gesture on the touch-sensitive surface
of the housing; and
with a motion sensor in the portable device, detecting
movement of the portable device, wherein illuminating the
touch-sensitive surface of the housing comprises providing a
visual indication of an orientation of the portable device in
response to detecting the movement of the portable device.
REFERENCES and REJECTIONS2
Claims 35, 37, 44, and 66 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Demuynck et al. (US 2010/0123658 Al; published May
20, 2010) (“Demuynck”) (see Final Act. 2—3).
Claims 14, 24, 26, 61, 71, 72, and 74 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Demuynck, Stewart et al.
2 In an Amendment under 37 C.F.R. § 41.33 filed October 18, 2016
(“Amendment”), Appellants cancelled, inter alia, claims 35, 37, 41, 43, 44,
66, and 68—70 (see Amendment 3 4). In an Advisory Action dated
November 4, 2016 (“Advisory Act.”), the Examiner indicated the
Amendment was entered (see Advisory Act. 2). Thus, even though claims
35, 37, 41, 43, 44, 66, and 68—70 are rejected in the Final Office Action,
these claims are not before us on appeal.
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Application 12/495,483
(US 2007/0008301 Al; published Jan. 11, 2007) (“Stewart”), Hovden et al.
(US 2008/0284738 Al; published Nov. 20, 2008) (“Hovden”), and Stefanik
(US 2002/0084929 Al; published July 4, 2002) (“Stefanik”) (see Final
Act. 3-6).
Claim 41 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Demuynck and Stefanik (US 7,679,544 B2; issued Mar. 16, 2010)
(“Stefanik ’544”) (see Final Act. 6).
Claim 43 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Demuynck and Ng et al. (US 2007/0152977 Al; published July 5,
2007) (“Ng”) (see Final Act. 7).
Claims 63—65 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Demuynck, Stewart, and Laverdiere (US 2011/0281652 Al; published
Nov. 17, 2011) (“Laverdiere”) (see Final Act. 7—8).
Claims 68—70 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Demuynck and Laverdiere (see Final Act. 8—9).
Claim 73 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Demuynck, Stewart, and Andrews et al. (US 2009/0004973 Al;
published Jan. 1, 2009) (“Andrews”) (see Final Act. 9-10).
Claims 78, 79, 81, and 83—85 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Demuynck, Kerr (US 7,113,196 B2; issued Sept. 26,
2006) (“Kerr”), and Lindroos et al. (US 2010/0315346 Al; published Dec.
16, 2010) (“Lindroos”) (see Final Act. 10-12).
PRINCIPLES OF LAW
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
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Application 12/495,483
show obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415—16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
(“KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.”).
Further, it is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs that the Examiner erred. We are unpersuaded by
Appellants’ contentions and concur with the findings and conclusions
reached by the Examiner as explained below.
Independent Claim 14
Appellants contend the combination of cited references fails to teach
or suggest “wherein illuminating the touch-sensitive surface of the housing
comprises providing a visual indication of an orientation of the portable
device,” as recited in claim 14 (see App. Br. 7). More specifically,
Appellants argue there would be no motivation to modify the portable device
disclosed in Demuynck to provide illumination indicating an orientation of
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the device because the device is configured to operate in only one direction,
and a user holding Demuynck’s device would be able to determine the
device’s orientation by simply looking at the device (see App. Br. 6; see also
Reply Br. 2—3).
We are not persuaded by Appellants’ contention. As stated by our
reviewing court, an explicit motivation in the references is not necessary to
support a conclusion of obviousness. See Ethicon, 844 F.3d at 1350.
Further, we agree with the Examiner that it would have been obvious to one
of ordinary skill in the art to incorporate the dynamic sensing region
indicator disclosed in Hovden (see Hovden 149) in the portable electronic
device disclosed in Demuynck (see Demuynck || 48, 60; Figs. 1, 5), as
users of Demuynck’s portable device would benefit from Hovden’s indicator
that indicates an orientation of a portable device (see Final Act. 5; see also
Ans. 4). Contrary to Appellants’ arguments, at least some users of
Demuynck’s portable device would still benefit from being able to ascertain
an orientation of the portable device via Hovden’s indicator, notwithstanding
that Demuynck’s portable device is configured to operate solely in one
direction.
Based on our review of the references, we agree with the Examiner
that the combination of cited references teaches or suggests “wherein
illuminating the touch-sensitive surface of the housing comprises providing
a visual indication of an orientation of the portable device,” as recited in
claim 14. Therefore, we sustain the rejection of claim 14 under
35 U.S.C. § 103(a).
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Independent Claim 78
Appellants contend the combination of cited references fails to teach
or suggest “wherein the electronic device is configured to operate in a low-
power mode in which the light source illuminates the touch-sensitive surface
of the housing with an illumination effect to present information without
utilizing the display,” as recited in claim 78 (see App. Br. 13). More
specifically, Appellants argue if Demuynck’s portable device was modified
such that its display was deactivated while its touch-sensitive input device
remained active to display information, the modification would render
Demuynck inoperable for its purpose because a user would no longer be able
to select text entry characters on Demuynck’s display using the touch-
sensitive input device (see App. Br. 11—12; see also Reply Br. 4—5).
We are not persuaded that the Examiner erred. As previously
discussed, and as correctly found by the Examiner, the test for obviousness
is not whether the low-power mode of the electronic device disclosed in
Lindroos (where the display of the electronic device is inactive) can be
bodily incorporated into the portable electronic device disclosed in
Demuynck (see Ans. 5—6). Instead, the test is whether the claimed “low-
power mode in which the light source illuminates the touch-sensitive surface
of the housing with an illumination effect to present information without
utilizing the display” would have been obvious to one of ordinary skill in the
art in light of the teachings of Demuynck and Lindroos (as well as the other
cited references). We agree with the Examiner’s finding that the
aforementioned claim limitation would have been obvious in light of the
combined teachings of the cited references (see Final Act. 10—11).
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Thus, we agree with the Examiner that the combination of cited
references teaches or suggests “wherein the electronic device is configured
to operate in a low-power mode in which the light source illuminates the
touch-sensitive surface of the housing with an illumination effect to present
information without utilizing the display,” as recited in claim 78.
Accordingly, we sustain the rejection of claim 78 under 35 U.S.C. § 103(a).
Claim 85
Appellants contend the combination of cited references fails to teach
or suggest “wherein the opening has first and second opposing edges and
wherein the touch-sensitive surface of the housing surrounds the first and
second opposing edges,” as recited in claim 85 (see App. Br. 14—15). More
specifically, Appellants argue Kerr’s disclosure of a non-touch-sensitive
housing that surrounds a display does not teach or suggest extending
Demuynck’s touch sensitive input device to surround an upper edge of
display (see App. Br. 14; see also Reply Br. 6).
We are not persuaded by Appellants’ contention. We agree with the
Examiner that Demuynck teaches a touch-sensitive input device and Kerr
teaches a housing that surrounds first and second opposing edges of an
opening (see Final Act. 10, 12 (citing Demuynck | 62; Kerr 17:40-60); see
also Ans. 6). Under KSR, “[t]he 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).
Thus, we agree with the Examiner that the combination of cited
references teaches or suggests “wherein the opening has first and second
opposing edges and wherein the touch-sensitive surface of the housing
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surrounds the first and second opposing edges,” as recited in claim 85.
Accordingly, we sustain the rejection of claim 85 under 35 U.S.C. § 103(a).
Remaining Claims
No separate arguments are presented for the remaining dependent
claims (see App. Br. 7, 9-10, 13). We therefore sustain their rejections for
the reasons stated with respect to independent claims 14 and 78.
DECISION
We affirm the Examiner’s rejection of claims 14, 24, 26, 61, 63—65,
71-74, 78, 79, 81, and 83-85 under 35 U.S.C. § 103(a).
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)(iv).
AFFIRMED
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