Ex Parte Reeves et al

Patent Trial and Appeal Board

Mar 21, 2017

12262357 (P.T.A.B. Mar. 21, 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.
12/262,357 10/31/2008 Raymond Emilio Reeves 5700/SPRI. 140977 6067
32423 7590 03/23/2017
SPRINT COMMUNICATIONS COMPANY L.P.
6391 SPRINT PARKWAY
KSOPHTO101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
HICKS, CHARLES V
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
6450patdocs @ sprint.com
steven.j.funk@sprint.com
S printPTO @ shb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND EMILIO REEVES and
RYAN ALAN WICK
Appeal 2016-006624
Application 12/262,357
Technology Center 2600
Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and
LINZY T. McCARTNEY, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-006624
Application 12/262,357
STATEMENT OF THE CASE
The present patent application concerns “the problem of associating a
gesture, in contact with a touch screen on a device, with characters.” Spec.
11. Claim 1 illustrates the claimed subject matter:
1. One or more non-transitory computer-readable storage
media having computer-useable instructions embodied thereon
for performing a method of configuring a front surface of a
device into a set of regions, the method comprising:
receiving a request to configure the front surface of the
device into the set of regions, wherein the device is selected from
a group including a mobile phone, a personal digital assistant
(PDA), a laptop, and a portable computing device;
determining a configuration from a set of configurations
in the device;
when the configuration is selected, identifying on the front
surface of the device each region in the set of regions, wherein
each region of the set of regions is equal in size and the set of
regions occupy an entire front surface of the device, and wherein
the front surface has no character indication, no keyboard
indication, or no keypad indication;
defining boundaries of each region by associating each
region with a set of coordinates; and
using the set of coordinates for each region to detect a
gesture on the front surface of the device, wherein the front
surface detects the gesture in each region to represent a character,
and wherein the gesture can start at any point on the front surface.
REJECTIONS
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Prior (US 2006/0082540 Al; Apr. 20, 2006) and Westerman et al. (US
2008/0316183 Al; Dec. 25, 2008).
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Appeal 2016-006624
Application 12/262,357
Claims 8-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Prior, Westerman, Guyout-Sionnest et al. (US 2008/0015115 Al; Jan.
17, 2008).
ANALYSIS
With respect to claim l,1 Appellants contend the teachings of Prior
and Westerman cannot be combined because doing so would make Prior’s
invention unsatisfactory for its intended purpose and change its principle of
operation. See App. Br. 5-7. In particular, Appellants assert “Prior does not
contemplate using a keyboard,” while “Westerman discloses implementing
swipe gestures for touch screen keyboards.” Id. at 6-7 (emphases omitted).
Therefore, according to Appellants, “[i]f Prior and Westerman were
combined, Prior would have to incorporate a QWERTY virtual keyboard,
which would make Prior unsatisfactory for its intended purpose.” Id. at 7
(emphases omitted). In Appellants’ view, the combination would also
change Prior’s principle of operation because “Prior [would be] forced to
incorporate the very keyboard that it says has drawbacks.” Id. (emphasis
omitted); see also Reply Br. 4-5.
The Examiner found Prior teaches or suggests each limitation recited
in claim 1 except for “one or more non-transitory computer-readable storage
media having computer-useable instructions embodied thereon.” See Final
Act. 3^4. The Examiner found Westerman is analogous art to Prior and
teaches or suggests the recited “non-transitory computer-readable storage
medium.” Id. at 5. The Examiner concluded it would have been obvious to
1 Appellants argue claims 1-7 together. As permitted by 37 C.F.R.
§ 41.37(c)(i)(iv), we select claim 1 as representative of these claims.
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Appeal 2016-006624
Application 12/262,357
one of ordinary skill in the art to combine this aspect of Westerman’s
teachings with Prior’s apparatus to arrive at the claimed invention. See Id.
The Examiner did not conclude it would have been obvious to combine
Westerman’s keyboard with Prior’s apparatus, see id., and contrary to
Appellants’ arguments, we see no reason one of skill in the art would have
been forced to do so. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton. ” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). We therefore find Appellants’ arguments unpersuasive.
Appellants also contend Prior does not teach or suggest “wherein each
region of the set of regions is equal in size and the set of regions occupy an
entire front surface of the device, and wherein the front surface has no
character indication, no keyboard indication, or no keypad indication.” App.
Br. 7-10. According to Appellants, “an entire front surface of the device”
“means the entire surface of the device is intended and not just the display
portion or some other portion.” Id. at 8. Appellants argue Prior’s touch-
sensitive device surface does not teach or suggest the recited “an entire front
surface of the device” because the surface does not make up the entire front
face of Prior’s device. See id. at 7-8. Appellants contend the Examiner has
read the term “touch sensitive” from the written description into the claims
and ignored the plain and ordinary meaning of the words “entire surface.”
See id. at 8-10 (citing Figs 1-3A and 4A-6C); see also Reply Br. 7-11..
The plain and ordinary meaning of the words “entire” and “surface”
respectively include “whole” and “plane” or “an external part.” Entire,
Merriam-Webster’s Collegiate Dictionary (11th ed. 2003); Surface,
Merriam-Webster’s Collegiate Dictionary (11th ed. 2003). And in this
context, the article “an” means “one or more.” Baldwin Graphic Sys., Inc. v.
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Appeal 2016-006624
Application 12/262,357
Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (explaining “[t]his court
has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent
parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising’” (alternation in original)
(quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356
(Fed.Cir.2000))). Therefore, the plain and ordinary meaning of “an entire
front surface of the device” includes one or more whole front planes or
external parts of the device.
Under this construction of “an entire front surface of the device,” we
agree with the Examiner’s finding that Prior’s touch-sensitive display
teaches or suggests this claim element. As shown in Figure 8A, the touch-
sensitive display 54 is a whole front plane and a whole front external part of
device 50. See Prior Fig. 8A; see also Fig. 4 (depicting a display 14 as a
whole front surface of mobile telephone 10). Contrary to Appellants’
arguments, in making this finding, the Examiner did not import the term
“touch sensitive” from the written description into the claims. Instead, the
Examiner found Figures 3B and 3C, among others, indicate that the claimed
“surface” may be a touch-sensitive portion of a device. See Final Act. 18.
We note the above construction is consistent with Appellants’ written
description. Although the written description does not explicitly define “an
entire front surface of the device,”2 the written description describes a device
2 To the extent Appellants assert Figures 1A-3A and 4A-6C show separate
embodiments in which the front part of the device includes only a surface,
Appellants have not persuaded us this is the case. The written description
generally describes the surfaces shown in these figures as a “surface located
on the device” or “a surface of a device” but these figures show only the
surface, not the rest of the device. See, e.g., Spec. Tflf 26, 31. Only Figures
3B and 3C appear to show the device described in the written description.
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Appeal 2016-006624
Application 12/262,357
that includes a display screen 375 and a “surface 305 on the device,” where
both the display screen 375 and the surface 305 appear on the front the
device. Spec. y42; see also Fig. 3B (depicting the device described in
paragraph 42 of Prior). The written description discloses the surface 305
encompasses a “touch screen located on the device, divided into the regions
310, 315, 320” and that surface 305 is “also seen as the surface 105 in FIG. 1
and the surface 205 in FIG. 2.” Id. yy 38, 42. As shown in Figure 3B and
described in paragraph 42, surface 305 does not make up the whole front
portion of the device; rather, surface 305 and display screen 375 collectively
comprise the front portion of the device.3 See id. 142, Fig. 3B.
Finally, Appellants take issue with the Examiner’s findings
concerning claim 3,11, and 15 in the Reply Brief. See Reply Br. 6-7.
Appellants have waived these arguments by failing to raise them in the
Appeal Brief. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2); In reLovin,
652 F.3d 1349 (Fed. Cir. 2011).
For the above reasons, we sustain the Examiner’s rejection of claim 1.
Because Appellants have not presented separate, persuasive arguments for
claims 2-7, we also sustain the Examiner’s rejection of these claims.
Appellants rely on arguments substantially similar to those discussed above
for claims 8-19. See, e.g., App. Br. 11-12. We find these arguments
3 Even if Appellants were correct that “an entire front surface of the device”
requires that Prior’s touch-sensitive display make up the entire front face of
device 50, the Examiner found that touch-sensitive surfaces that comprise
the entire front surface of a device were well known in the art. See, e.g.,
Final Act. 18 (citing Kerr et al. (US2006/0197750 Al; Sept. 7, 2006)). It
would have been obvious to combine such a surface with the teachings of
Prior and Westerman to provide a larger touch-sensitive surface and thereby
facilitate interacting with the device through touch.
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Appeal 2016-006624
Application 12/262,357
unpersuasive for the above reasons and therefore sustain the Examiner’s
rejection of claims 8-19.
DECISION
We affirm the rejections of claims 1-19.
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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