6069614 et al.

Patent Trials and Appeals Board

Oct 29, 2020

2014010010 (P.T.A.B. Oct. 29, 2020)

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.
90/012,469 09/06/2012 6069614 11-25511 6298
42624 7590 10/29/2020
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2020 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 MAN MACHINE INTERFACE TECHNOLOGIES LLC
Appellant
____________________

Appeal 2014-010010
Reexamination Control 90/012,469
Patent 6,069,614
Technology Center 3900
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is a decision on Appellant’s Request for Rehearing of our
Decision on Remand mailed June 19, 2017.
We grant Appellant’s request for the reasons discussed herein.
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STATEMENT OF THE CASE1
Background
USPTO records indicate the required maintenance fees for the
6,069,614 patent (“the ‘614 patent”) have been paid; therefore, the ‘614
Patent appears to still be in force. The ‘614 Patent was assigned by the sole
inventor to Patent Owner on October 26, 2009, as recorded in USPTO
assignment records at reel/frame 23419-696.
Davidson, Davidson, & Kappel, LLC filed a third-party request on
September 6, 2012, for ex parte reexamination of the ‘614 Patent, which was
assigned Reexamination Control No. 90/012,469. The ‘614 Patent, entitled
“MAN MACHINE INTERFACE VIA DISPIAY PERIPHERAL,” issued
May 30, 2000, to the sole inventor, Tara C. Singhal, based on Application
No. 08/710,388, filed September 16, 1996.
The ‘614 Patent was previously subjected to a first ex parte
reexamination, resulting in an Ex Parte Reexamination Certificate (US
6,069,614 C1) being issued on October 7, 2008. During that previous
reexamination, the patentability of claims 12–15 was confirmed, claims 1
and 8 were determined to be patentable as amended, claims 2–7, 9–11,

1 Our decision relies upon Appellant’s Request for Reconsideration
(“Request”) filed June 19, 2019 as Exhibit V to Appellant’s “PETITION
UNDER 37 CFR 1.137(b) FOR REVIVAL OF AN EX PARTE
REEXAMINATION UNINTENTIONALLY TERMINATED,” granted by
the USPTO on April 16, 2020; our Decision on Remand (mailed
June 19, 2017), the Court of Appeals for the Federal Circuit decision, In re
Man Mach. Interface technologies LLC, 822 F.3d 1282 (Fed. Cir. 2016); and
the original Specification (“Spec.,” filed Aug. 27, 2015).
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and 16, dependent on an amended claim, were determined to be patentable,
and new claim 17 was added and determined to be patentable. See US
6,069,614 C1 at col. 1, ll. 16–24.
The current, second reexamination proceeding, upon appeal, resulted
in our Decision on January 27, 2015 affirming the Examiner’s final rejection
of claims 1, 4, 7–10, and 17. Claims 2, 3, 5, 6, and 11–16 were not subject
to reexamination, and thus did not form a part of our Decision.
Appellant appealed our Decision to the Court of Appeals for the
Federal Circuit and, in response, the court affirmed-in-part, reversed-in-part,
vacated-in-part, and remanded the case to the Board for further proceedings
regarding claims 7, 9, and 17, consistent with the court’s claim construction.
Furthermore, based on the court’s revised claim construction, the court
reversed the Board’s anticipation rejection of claim 1 over the disclosure of
JP ‘634, but nevertheless affirmed the Board’s conclusion that claims 1, 4, 8,
and 10 would have been obviousness over the cited prior art, Florin in view
of JP ’634. Id. at 10.2

2 “Based on the language in the specification, [with respect to the
anticipation rejection of claim 1,] we reject the Board’s unreasonably broad
construction and construe ‘adapted to be held by the human hand’ to mean
‘designed or made to be held by the human hand.’” Man Machine, 822 F.3d
at 1286. Further, “we reject the Board’s unreasonable construction, instead
construing ‘thumb switch being adapted for activation by a human thumb’ in
view of the specification to mean ‘thumb switch being made or designed for
activation by a human thumb.’” Id. at 1287.
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This is a Decision on Request for Rehearing of our Decision on
Remand mailed June 19, 2017, and thus, as argued by Appellant, is limited
in scope to our new grounds of rejection of claims 7, 9, and 17.3
Rejection Subject to this Rehearing Request
Claims 7, 9, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Florin, JP ‘634, and JP ‘098. Decision
on Remand 11–33.
References Cited as Evidence
Rejected Claims Subject to this Rehearing Request
Claims 7, 9, and 17, reproduced below after amendment or addition
during the first Reexamination proceeding (represented by brackets and/or
italics), are the subject of this Rehearing Request (underlining added to
contested prior art limitations):
7. [1. A remote control device adapted for use by a
human to control and select from a screen, the screen including
a plurality of choices and a cursor, the remote control device
comprising:

3 Our Decision on Remand was issued responsive to remand by the Court of
Appeals for the Federal Circuit (“CAFC”) of the rejection of claims 1, 4, 7–
10, and 17. See In re Man Mach. Interface Techs. LLC, 822 F.3d 1282,
1288–89 (Fed. Cir. 2016).
Florin et al. (“Florin”) US 5,594,509 Jan. 14, 1997
Japanese Patent Laid-Open.
(“JP ‘634”)
No. Sho JP 58-219634 Dec. 21, 1983
Japanese Patent Laid-Open
(“JP ’098”)
No. Sho JP 63-54098 Mar. 8, 1988
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a body adapted to be held by the human hand, the body
having a top side and a bottom side;
a thumb switch positioned on the top side of the body,
the thumb switch being adapted for activation by a human
thumb, the thumb switch being adapted to perform multiple
functions; wherein the thumb switch includes a center switch
[and] an annular switch [which] and a cover plate, the annular
switch including only four switches and the cover plate covers
the four switches, wherein the annular switch surrounds the
center switch, the annular switch being adapted to operate
independently from the center switch; wherein the annular
switch is adapted to effect movement of the cursor between the
plurality of choices and the center switch is adapted to effect
selection of one of the choices identified by the cursor;
electronic means adapted to generate a signal upon
activation of one of the switches; and
transmitting means for transmitting the signal from the
electronic means.]
The device of claim 1 including an electronic display
window secured to the body; wherein the electronic means
generates status information which is displayed on the
electronic display.
9. [8. A control mechanism comprising:
a display peripheral including a set of choices and a
cursor, each choice having a set of sub-choices from which a
selection of one or more sub-choices is desired, the cursor being
movable between the choices and the sub-choices; and
a control device including a multiple function, thumb
switch, the thumb switch including a center switch [and] an
annular switch including only four switches substantially
surrounding the center switch, and a cover plate that covers the
annular switch, wherein the annular switch being adapted to
effect movement of the cursor between the plurality of choices
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and sub-choices and the center switch being adapted to effect
selection of one of the choices and sub-choices identified by the
cursor, wherein the annular switch is adapted to operate
independently of the center switch.]
The control mechanism of claim 8 including a
programmable logic, the programmable logic comprising:
a first data file containing the selection choice data;
a first function means for maintenance of logic state
based on sequence of the switch activations and a second
function means for maintenance of a cursor’s movement based
on the annular switch activations;
a second data file containing operating modes of an
operating system, wherein each choice data from the first data
file has a corresponding operating mode in the second data file,
whereby the programmable logic enabling the display of a
selection screen populated with selection choice data from the
first data file, enabling selection of a choice from the selection
screen, enabling the corresponding operating mode identified in
the second data file to be invoked.
17. A control mechanism comprising:
a display peripheral including a set of choices and a
cursor, each choice having a set of sub-choices from which a
selection of one or more sub-choices is desired, the cursor
being movable between the choices and the sub-choices;
a control device including a multiple function thumb
switch, the thumb switch including a center switch, an annular
switch having only four switches that substantially surround the
center switch, and a cover plate that covers a plurality of these
switches, the annular switch being adapted to effect movement
of the cursor between the plurality of choices and sub-choices
and the center switch being adapted to effect selection of one of
the choices and sub-choices identified by the cursor, wherein
the annular switch is adapted to operate independently of the
center switch; and
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a hand held device having, the multi-function thumb
switch that is able to be operated by either hand’s thumb and a
display screen of the display peripheral as part of the hand held
device.
Claim Grouping
Based on Appellant’s arguments (Request 2–12) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness
rejection of claims 7 and 17 on the basis of representative claim 7. We
address the separately argued rejection of claim 9, infra.
ISSUES AND ANALYSIS
Appellant makes specific arguments with respect to each of claims 7,
9, and 17 (Request 2–12), and makes additional arguments applicable to
these claims as a group concerning (a) whether JP ‘634 is analogous art, and
(b) whether proper motivation to combine JP ‘098 with Florin and JP ‘634
was established by the Board in our new ground of rejection. Request 12–
16. We address these arguments below.
Claims 7 and 17
Appellant argues (Request 2–7) the Board’s rejection of claims 7 and
17 under 35 U.S.C. § 103(a) as being obvious over the combination of
Florin, JP ‘634, and JP ‘098 is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[t]he device of claim 1 including an electronic display window
secured to the body; wherein the electronic means generates status
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information which is displayed on the electronic display,” as recited in
representative claim 7?
Analysis
In our Decision on Remand, the Board made the following factual
findings with respect to the emphasized contested limitation of claim 7:

7. The device of
claim 1
Obviousness Rejection R3 of claim 1 over Florin
and JP ‘634 was affirmed by the CAFC.
including an
electronic display
window secured to
the body; wherein
the electronic
means generates
status information
which is displayed
on the electronic
display.
JP ‘098 discloses a display screen of the display
peripheral as part of the hand held device, with
status information displayed thereon. Figure 3 of JP
‘098 is shown below, with “Menu” 70, “Menu” 71,
and “Cursor” 78:
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FIG. 3 of JP ‘098 is a view of a menu to be
displayed on the remote control apparatus.
JP ‘098 further explains Fig. 3 as follows:
The menu generation section 55 is
controlled by a microcomputer 64 and
carries out on/off of menu display and
changeover between a menu 70 and
another menu 71 in FIG. 3.
JP ‘098, page 11 (emphasis added).
Similar findings were made with respect to the contested limitation of
independent claim 17. See Decision on Remand 24–33.
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Appellant contends:
FIG. 3 of JP’ 098 does not depict a menu to be displayed on a
hand held device. While it is true that the Brief Description of
the Drawings in JP ‘098 describes FIG. 3 as “a view of a menu
to be displayed on the remote control apparatus” (JP ‘098 at
18), it is not true that the “remote control apparatus” of FIG. 3
is a hand held device on which a menu is displayed.
Request. 3. Appellant explains “[a] POSITA [person of skill in the art]
would also understand that the displayed menu of FIG. 3 of JP ‘098 is
displayed on the receiver, which is not hand-held, not the transmitter.”
Request 4.
For example, JP ‘098 discloses that “FIG. 3 is a view
illustrating a menu to be displayed on a CRT of the receiver of
FIG. 1.” JP ‘098 at 9. This language establishes several things.
First, it establishes that the menu of FIG. 3 is displayed on “the
receiver of FIG. 1,” not the transmitter. Second, it establishes
that the “remote control apparatus” of FIG. 3 (e.g., from the
language quoted by the Board) is the same remote control
apparatus depicted in FIG. 1, which includes both a transmitter
and a receiver. Moreover, a POSITA would appreciate that
CRT stands for “cathode ray tube,” and that a CRT is not
something that would be part of a hand held remote control
apparatus.
Request. 5.
We are persuaded of error in our rejection by Appellant’s argument,
and reverse our decision to reject claims 7 and 17.
Claim 9
Appellant argues (Request 8–12) the Board’s rejection of claim 9
under 35 U.S.C. § 103(a) as being obvious over the combination of Florin,
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JP ‘634, and JP ‘098 is in error. These contentions present us with the
following issues:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a “[t]he control mechanism of claim 8 including a programmable
logic, the programmable logic comprising,” inter alia: (a) “a first data file
containing the selection choice data;” and (b) “a second data file containing
operating modes of an operating system,” as recited in claim 9?
Analysis
In our Decision on Remand, the Board made the following factual
findings with respect to the emphasized contested limitations of claim 9:
9. The control
mechanism of
claim 8
Obviousness Rejection R3 of claim 8 over Florin
and JP ‘634 was affirmed by the CAFC.
a first data file
containing the
selection choice
data;
The programmable logic of JP ‘098 includes a first
data file (generating “Menu” 70 and “Menu” 71)
containing the selection choice data (generating,
e.g., “channel” 3-1, “sound changeover” 3-2,
“sound volume great” 3-3, “sound volume small” 3-
4) as illustrated in Fig. 3 and explained below:
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FIG. 3 is a view of a menu to be displayed on the
remote control apparatus.
JP ‘098 explains how the menu 70 is generated:
The menu generation section 55 receiving
an output of the menu 70 on outputting
section 82 generates a pattern of the
menu 70 and sends the pattern to the
mixing section 57.
JP ‘098, p. 12 (emphases added). The choices for
menu 70 are known in advance, and thus are stored
in a non-transitory way. This storage involves a
collection of information which is a “data file”.
Likewise, referring to Fig. 5 of JP ‘098, the first
data file (storage corresponding to “menu” 100 and
“menus” 101 to 105) contains selection choice data
(generating “large items” 5-1 to 5-4 and “small
items” 5-5 to 5-37), as shown in Fig. 5 of JP ‘098
below:
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JP ‘098 explains Fig 5 as follows:
[A]ccording to the present invention, if a
menu 100 in which the 48 functions are
classified in large items as shown in FIG.
5 and the small item menus 101 to 105
belonging to the items are used, then it is
apparent that operation similar to the
channel operation of the embodiment
described above can be achieved. An
arrow mark in FIG. 5 indicates a small
item menu corresponding to the large
item selected on the menu 100.
JP ‘098, pp. 16–17.
a second data file
containing
operating modes of
an operating
system,
JP ‘098 teaches a second data file containing
operating modes of an operating system (“the 48
functions” classified in menus 100 to 105), as
explained below:
[A]ccording to the present invention, if a
menu 100 in which the 48 functions are
classified in large items as shown in FIG.
5 and the small item menus 101 to 105
belonging to the items are used, then it is
apparent that operation similar to the
channel operation of the embodiment
described above can be achieved.
JP ‘098, pages 16–17 (emphasis added). The
functions are known in advance, and thus are
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necessarily stored in a non-transitory way. We find
this disclosed storage involves a collection of
information which is, under a broad but reasonable
interpretation, a “data file.”
To the extent the claim calls for “first” and
“second” data files, we find the respective portions
of the stored information containing the “selection
choice data” and “operating modes of an operating
system” correspond to the first and second data files
under the broadest reasonable interpretation of the
claims.
Further, even if our reviewing court were to find JP
‘098 does not teach or suggest two separate data
files as claimed, we find creating two separate files
containing the two different types of claimed
information would not have been uniquely
challenging or otherwise beyond the level of
ordinarily skilled artisans. See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
Appellant contends:
[T]he simple fact that a menu is generated does not mean that a
data file containing selection choice data explicitly exists. All
that the disclosure of a menu generation section tells a POSITA
is that a menu is somehow generated. It does not inform a
POSITA that a data file containing selection choice data is
explicitly used to generate the menu. JP ‘098 is silent on
whether or not it uses a data file containing selection choice
data to generate a menu.
Request. 8. “[T]he Board assumes that the choices for menu 70 must be
stored in a data file. It is equally plausible, however, that JP ‘098’s menu
could be implemented using something other than a data file, such as an
application-specific integrated circuit.” Request 9.
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We are persuaded of error in our rejection by Appellant’s argument,
and reverse our decision to reject claim 9.
Other Arguments
Appellant presents additional arguments, in particular, that JP ‘634 is
non-analogous art, i.e., (a) JP ‘634 is from a different field of endeavor than
the ‘614 patent subject to reexamination, and (b) the Board did not establish
that JP ‘634 pertains to the same problem as the ‘614 Patent (Request
12–14), and that a person of ordinary skill in the art would not have been
motivated to combine JP ‘098 with Florin and JP ‘634 in the manner
suggested. Request 14–16.
However, we note that the Federal Circuit affirmed the rejection of
claim 1 under 35 U.S.C. § 103(a) over the combination of Florin and JP
‘634, thus rendering Appellant’s argument regarding JP ‘634 moot. See
Man Machine 822 F.3d at 1288. We do not reach a legal conclusion as to
whether res judicata or issue preclusion attaches to this newly presented
argument.
Nonetheless, because we agree with at least one of the dispositive
arguments advanced by Appellant, we need not reach the merits of
Appellant’s other arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach
a decision based on “a single dispositive issue”).
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CONCLUSION
We have considered all of the arguments timely raised by Appellant in
the Request, and grant Appellant’s request to reverse the rejection of
clams 7, 9, and 17 under 35 U.S.C. § 103(a).
SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35
U.S.C
§
Basis/References Denied Granted
7, 9, 17 103(a) Obviousness Florin, JP ‘634, JP ‘098 7, 9, 17
Final Outcome of Appeal after Rehearing:
DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis /
References Affirmed Reversed
1, 4, 8, 10 103(a) Obviousness Florin, JP '634
1, 4, 8, 10
7, 9, 17 103(a) Obviousness Florin, JP ‘634, JP ‘098
7, 9, 17
Overall
Outcome 1, 4, 8, 10
4 7, 9, 17
GRANTED

4 In our Decision on Remand, we noted that Claims 2, 3, 5, 6, and 11–16
were not subject to reexamination, and thus did not form a part of our
Decision. Decision on Appeal (1) mailed Jan. 27, 2015; and see Final Action
(1) mailed Aug. 16, 2013.
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