Jeri Janet. Ellsworth et al.

Patent Trials and Appeals Board

Sep 3, 2019

13831013 - (D) (P.T.A.B. Sep. 3, 2019)

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.
13/831,013 03/14/2013 JERI JANET ELLSWORTH V059-0042US 4162
155626 7590 09/03/2019
Lee & Hayes P.C./Valve
601 W. Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
GIESY, ADAM
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JERI JANET ELLSWORTH and JOSEPH LEROY LUDWIG
____________

Appeal 2017-010233
Application 13/831,0131
Technology Center 2600
____________

Before CARL L. SILVERMAN, ADAM J. PYONIN, and
ALEX S. YAP, Administrative Patent Judges.

YAP, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–26, 28, and 29, which are all the claims pending in this application.
(See Final Office Action (mailed October 6, 2016) (“Final Act.”) 1.) We
have jurisdiction under 35 U.S.C. § 6(b)
We affirm-in-part.

1 According to Appellants, the real party in interest is Valve Corporation.
(Appeal Br. 2.)
Appeal 2017-010233
Application 13/831,013

2
STATEMENT OF THE CASE
Introduction
According to the Specification, Appellants’ invention relates to
“methods and systems for a variable user tactile input device with display
feedback.” (April 14, 2013 Specification (“Spec.”) 1.) Claims 1, 2, and 11
are illustrative, and are reproduced below (with minor reformatting):
1. An input device with display feedback to guide a user to
keys that the user may want to select comprising:
a display comprising a virtual pad overlaid on the display;
and
at least one user input entry point coupled to the display for
highlighting a key on the virtual pad when one of the at
least one user input entry point is hovered over by a pointer.

2. The input device of claim 1, wherein the virtual pad is
semi-transparent.

11. The input device of claim 1, wherein the virtual pad
remains on the display for at least one second after the
pointer is removed from said user input entry point.

Prior Art and Rejection on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Cohen US 6,611,253 Bl Aug. 26, 2003
Ludden et al. US 2010/0277505 Al Nov. 4, 2010

Claims 1–26, 28, and 29 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cohen in view of Ludden. (See Final Act. 5–11.)

Appeal 2017-010233
Application 13/831,013

3
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1, 3–12, 14–26, 28, and 29 under 35
U.S.C. § 103(a). We are persuaded of Examiner error in the rejection of
claims 2 and 13 under 35 U.S.C. § 103(a).
Claims 1, 3–10, 12, 14–21, 23–26, 28, and 29
With regard to claim 1, the Examiner states that:
Cohen does not disclose highlighting a key when the user hovers
over the entry [but] Ludden discloses a touchpad comprising a
virtual keyboard which highlights a key on the virtual keypad
pad when one of the at least one user input entry point is hovered
over by a pointer (see paragraph 0124).
[Therefore, i]t would have been obvious to one of ordinary
skill in the art at the time that the invention was made to combine
the display with the user entry points as disclosed by Cohen with
the highlighting of specific keys when it is detected that the user
is hovering over the inputs as disclosed by Ludden, the
motivation being for the user to see what key would be input
should contact with the user input key be made while viewing
the virtual display over-laid with the real-time renderings of the
user’s hands.
(Final Act. 5–6.) Appellants contend that the Examiner “provides no
rational underpinning to combine Cohen with Ludden or to modify the
combined references to include all of the limitations of any of the foregoing
claims.” (Appeal Br. 5.) Specifically, Appellants contend that:
the Examiner’s rationale only addresses the limitation to
highlight a key when an entry point is hovered over, and does not
provide any support in either of the references or explain why
one of ordinary skill in the art would see a need or find it obvious
to highlight a virtual key when a user hovers over a
corresponding entry point when the user already would have a
Appeal 2017-010233
Application 13/831,013

4
visual reference of the location of the user’s finger relative to the
corresponding entry point in the form of the virtual hands of
Cohen.
(Appeal Br. 6.)
We are not persuaded by Appellants’ contentions. A reason to
combine teachings need not be expressly stated in any prior art reference. In
re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need only be an
articulated reasoning with rational underpinnings to support a reason to
combine teachings. Id. at 988; see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (holding that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”). We find the above-cited
rationale of the Examiner to be an articulated reasoning with rational
underpinnings that shows why a person of ordinary skill in the art would
have combined “the display with the user entry points as disclosed by Cohen
with the highlighting of specific keys when it is detected that the user is
hovering over the inputs as disclosed by Ludden.” (Final Act. 6.)
We are similarly not persuaded by Appellants’ argument that there is
no motivation stating why one would supplement or replace the virtual
hands of Cohen:
when a user hovers over a corresponding entry point when the
user already would have a visual reference of the location of the
user’s finger relative to the corresponding entry point in the form
of the virtual hands of Cohen.
(Appeal Br. 6, emphasis; Reply Br. 5–10.) We agree with the Examiner
that “by highlighting on the virtual keyboard which key would be input if an
Appeal 2017-010233
Application 13/831,013

5
input key were actuated would still aid the user in deciding how to better
position his/her hands/fingers.” (Ans. 4.) In other words, the Examiner’s
modification would improve on the accuracy of the system disclosed in
Cohen.
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 1. Thus, we sustain the 35 U.S.C. § 103(a) rejection of
claim 1, as well as the 35 U.S.C. § 103(a) rejections of claims 3–10, 12, 14–
21, 23–26, 28, and 29, which are not argued separately. (Appeal Br. 4–10.)
Claims 2 and 13
Claims 2 and 13 recite, in part, “wherein the virtual pad is semi-
transparent.” The Examiner points to column 7, lines 25 to 59 of Cohen for
“the virtual pad is semi-transparent” limitation. (Final Act. 6, 8.)
Appellants contend that “the cited portion of Cohen does not mention
transparency or semi-transparency of the virtual keyboard at all.” (Appeal
Br. 13.) The Examiner disagrees and notes that
the cited portion of Cohen includes “Simulation software 32
also defines the shape, color, contrast and animated image
appearance of virtual objects 42a and 42b. The size and
positioning of virtual world zone 42 on screen 46 is at the
discretion of the user. For example, zone 42 may occupy the
lower section of screen 46, in proximity to applications zone 44,
or it may be floating over applications zone 44 (e.g.[,] as
another window application). Simulation software 32 may also
redefine the boundaries of applications zone 44 while insuring it
retains all its information, in order to make space for virtual
world zone 42.” (emphasis added). As such, Examiner believes
that this disclosure inherently suggests that the virtual zone (42)
is semi-transparent and therefore satisfies the claim language as
recited in claims 2 and 13.
Appeal 2017-010233
Application 13/831,013

6
(Ans. 4.) We agree with Appellants that “the cited portion of Cohen does
not mention transparency or semi-transparency of the virtual keyboard at all
and provides no explanation why displaying the virtual zone as floating over
the applications zone necessarily requires the virtual zone to be semi-
transparent.” (Reply Br. 10.) The Examiner also does not explain how a
person of ordinary skill in the art would understand this portion of Cohen to
“inherently suggests that the virtual zone (42) is semi-transparent.” (Ans. 4;
see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection
based on section 103 clearly must rest on a factual basis.”))
Therefore, we are persuaded of Examiner error in the rejection of
claims 2 and 13 and do not sustain the 35 U.S.C. § 103 rejection of these
claims.
Claims 11 and 22
Claims 11 and 22 recite, in part, “wherein the virtual pad remains
on the display for at least one second after the pointer is removed from
said user input entry point.” The Examiner points to column 6, lines 50
through column 7 lines 25 of Cohen for this limitation. (Final Act. 8.)
Appellants contend that “the cited portion of Cohen does not mention
maintaining a virtual pad on a display after the pointer is removed,
much less doing so for at least one second after the pointer is removed
from said user entry point.” (Appeal Br. 13.) The Examiner points out
that “the claim does not require removing the virtual pad after the one
second period of inactivity, but only that the virtual pad remains for at
least one second.” (Ans. 4.) The Examiner further notes that “Cohen
does not disclose removing the virtual keyboard at all, so the virtual
Appeal 2017-010233
Application 13/831,013

7
keyboard inherently remains on the screen for at least one second after
the user’s hands are removed from the keyboard area.” (Ans. 4–5.)
Appellants do not respond to the Examiner’s contentions. (See Reply
10–11.)
We agree with the Examiner that the limitation does not require
removal of the virtual pad after one second but simply requires it to remain
on the display for one second. We also agree with the Examiner that Cohen
does not disclose removing the virtual keyboard therefore it “inherently
remains on the screen for at least one second after the user’s hands are
removed from the keyboard area.” (Ans. 5.) For the foregoing reasons, we
are not persuaded of Examiner error in the rejection of claims 11 and 22 and
sustain the 35 U.S.C. § 103 rejection of claims 11 and 22.

DECISION
We affirm the decision of the Examiner to reject claims 1, 3–12, 14–
26, 28, and 29 under 35 U.S.C. § 103(a). We reverse the decision of the
Examiner to reject claims 2 and 13 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART