Ex Parte Di Fiore et al

Patent Trial and Appeal Board

Dec 21, 2015

13003518 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/003,518 01/10/2011
22879 7590 12/23/2015
HEWLETT-PACKARD COMPANY
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528
FIRST NAMED INVENTOR
Luca Di Fiore
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82246628 9166
EXAMINER
ENGLISH, ALECIA DIANE
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
12/23/2015 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCA DI FIORE and KUNG-NENG LEE
Appeal2014-001381
Application 13/003 ,518
Technology Center 2600
Before ST. JOHN COURTENAY III, LINZY McCARTNEY, and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1---6, 8-10, 13, and 14, which are all the claims pending
in the application. Claims 7, 11, and 12 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-001381
Application 13/003,518
Invention
The claimed invention on appeal is directed to:
A computer system includes a keyboard having at least
one cursor mover, and at least one sensor. The sensor can
detect whether a hand is near the sensor. When the sensor fails
to detect a hand near the sensor, at least one cursor mover is
enabled.
(Abstract).
Representative Claim
1. A computer system, comprising:
a keyboard having at least one cursor mover;
a first sensor and a second sensor on the keyboard, the
first sensor and the second sensor each configured to detect the
presence of a hand near the first sensor and the second sensor,
respectively;
[L 1] the computer system configured to disable the
cursor mover as a result of the first sensor detecting a hand
near the first sensor and the second sensor detecting a hand
near the second sensor, and configured to enable the cursor
mover when either the first sensor does not detect a hand near
the first sensor or when the second sensor does not detect a
hand near the second sensor.
(Emphasis added regarding contested limitation L 1 ).
Rejection
Claims 1---6, 8-10, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Rudd (US
2002/0180704) in view ofKamizono (US 2004/0119697 Al, pub. June 24,
2004).
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Appeal2014-001381
Application I3/003,5I8
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
on appeal on the basis of representative claims I, 8, and I3. See 37 C.F.R.
§ 41.37(c)(l)(iv) (20I2).
ANALYSIS
Rejection of Representative Claims 1, 8, and 13 under§ 103
We have considered all of Appellants' arguments and any evidence
presented. Regarding all contested limitations, we disagree with Appellants'
arguments, and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Answer in response to Appellants'
arguments. (Ans. 6-9). However, we highlight and address specific
findings and arguments for emphasis in our analysis below.
In the Reply Brief, Appellants summarize their arguments regarding
independent claims I, 8, and I 3:
Appellants principle brief explained that the combination
of the sensors IL, IR of Kamizono with the keyboard disclosed
in Rudd did not result in (I) a system that is configured to
disable a cursor mover as a result of both a first sensor and a
second sensor detecting the presence of a hand as seen in claim
I; (2) disabling a cursor mover as a result of both a first sensor
and a second sensor detecting the presence of a hand as seen in
claim 8; or (3) disabling a touchpad and a joystick as a result of
both a first sensor and a second sensor detecting a hand as seen
in claim I 3, because, among other things, neither of the keys 7
or 8 of Kamizono are disabled because both the sensors IL, IR
are activated. Appeal Brief, p. I3-I5; Kamizono, [0066]-[007I];
Figure 7.
Reply Brief (1 ).
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Appeal2014-001381
Application I3/003,5I8
Appellants focus their arguments, based on two principal grounds:
First, Kamizono does not teach or even suggest that the
numeric keys 7 function as the claimed "cursor mover." See
Kamizono, para. [0062]; Figure 7. In Appellant's disclosure as
originally filed, a cursor mover is one that is "used to control
the position of a cursor on a display." Application, para.
[0005]. Admittedly, the cursor shift keys 8 of Kamizono do
provide such functionality; however, the numeric keys 7 do not
and are instead used to insert numeric values during use of the
keyboard device. See Kamizono, para. [0062]; Figure 7. It
should be noted that Kamizono does state that the invention
disclosed therein, " ... can be applied to a group of key [sic.]
having other functions and, also, it may well be applied to a
single key in place of a group of keys." Kamizono, para.
[0070]. However, there is no suggestion in this statement that
the dedicated numeric keys 7 would function as a cursor mover.
Second, the keys 7 are placed on the laterally opposite
side of the keyboard device from the keys 8. See Kamizono;
Figure 7. Thus, the keys 7 are separated not only functionally,
but also physically from the keys 8 of Kamizono. Kamizono,
para. [0062], Figure 7.
For at least these reasons, one skilled in the art would
likely interpret the numeric keys 7 and the cursor shift keys 8 of
Kamizono as being two completely separate devices, only one
of which being a cursor mover (i.e., the keys 8). Moreover, as
previously described in the Appellant's principle brief, the keys
8 of Kamizono are disabled only as a result of one sensor IR
sensing the presence of a human hand and thus not due to both
sensors IL, IR making such a detection. Appeal Brief, p. I3-
I5; Kamizono, [0066]-[007I]; Figure 7.
(Reply Br. 2, emphasis added).
We find the first argument ("Kamizono does not teach or even suggest
that the numeric keys 7 function as the claimed 'cursor mover"') is a new
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Appeal2014-001381
Application 13/003,518
argument not presented in the principal Brief and not in response to a shift in
the Examiner's position in the Answer. 1 Pursuant to 37 C.F.R.
§ 41.41 (b )(2 ), Appellants have not shown good cause why this untimely
argument should be considered.
Nevertheless, we recognize that Kamizono (i-f 62) describes keys 7
(Figure 7) as numeric input keys that are not dedicated cursor mover keys,
such as arrow keys. However, as pointed out by Appellants (Reply Br. 2),
Kamizono's paragraph 70 teaches other variant arrangements, "applied to a
group ofkey[s] having other functions" would be obvious:
[0070] In the third embodiment of the present invention
described hereinbefore, it is controlled to validate or invalidate,
the group of dedicated numeric input keys 7 or the group of
dedicated cursor shift keys 8, respectively by the output of the
sensor IL for left hand detection or the sensor lRfor right hand
detection; however, it is obvious that the present invention is
not limited to this. but can be applied to a group of key having
other functions and, also, it may well be applied to a single key
in place of a group of keys.
(Emphasis and underline added).
Appellants further contend: "one skilled in the art would likely
interpret the numeric keys 7 and the cursor shift keys 8 of Kamizono as
being two completely separate devices, only one of which being a cursor
mover (i.e., the keys 8)" (Reply Br. 2, emphasis added).
1 See 37 C.F .R. § 41.41 (b )(2) ("Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive to an argument raised
in the examiner's answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.").
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Appeal2014-001381
Application I3/003,5I8
However, we find an artisan would have recognized that pressing any
numeric key (0-9) using Kamizono's numeric keys 7 (Fig. 7) would perform
two functions: (1) enter the numeric value on the screen, and (2),
simultaneously move the cursor position one character position to the right
of the entered numeric character.
In reviewing the record, we find Appellants have not set forth a
definition in the claims or Specification that would preclude the Examiner's
broader reading of "cursor mover" on Kamizono' s keys 7 and 8, as depicted
in Figure 7. (See Ans. 7-9). 2
Because Kamizono (i-f70) expressly describes it would be obvious for
the IL and IR sensors depicted in Figure 7 to be applied "to a group of keys
having other functions," and because Appellants have not provided a
definition for "cursor mover" (claim I), we find unpersuasive Appellants'
contention "there is no suggestion in this statement [Kamizono i170] that the
dedicated numeric keys 7 would function as a cursor mover." (Reply Br. 2).
Regarding the second principal ground of argument (that
"the keys 8 of Kamizono are disabled only as a result of one sensor IR
sensing the presence of a human hand and thus not due to both sensors IL,
IR making such a detection" -Reply Br. 2), we find such arrangement
implementing both sensors in combination (e.g., simultaneously) would have
merely realized a predictable result, well within the level of skill of an
artisan.
2 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d I374, I379 (Fed.
Cir. 2007).
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Appeal2014-001381
Application I3/003,5I8
Thus, we find implementing both sensors as claimed (i.e., to disable
one or more cursor movers, claims I, 8, I3) would have been a "predictable
use of prior art elements according to their established functions." KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 4I 7 (2007). Because using plural sensors
in combination would have produced a predictable result under § I 03, we
find the claimed arrangement (or use) of a plurality of sensors is not an
unobvious distinction over the prior art of record (e.g., Kamizono's sensors
IL and IR, Figure 7). 3
Nor have Appellants provided evidence that combining such
familiar sensors would have been "uniquely challenging or difficult for one
of ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d I I57, I I62 (Fed. Cir. 2007), or would have yielded unexpected results.
Therefore, on this record, and by the preponderance of evidence, we are not
persuaded of error regarding the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness. (Independent claims I, 8, and I 3).
Because Appellants have not persuaded us the Examiner erred, we
sustain the rejection of representative claims I, 8, and I3. The remaining
dependent claims fall with their respective independent claim. See
"Grouping of Claims" supra.
3 "A mere duplication of parts is not invention." In re Marcum, 47 F.2d 377,
378 (CCPA I93I) (citing Topliffv. Topliff, I45 U.S. I56, I63 (1892)). "It is
well settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced." In re Harza, 274 F.2d
669, 67I (CCPA I960).
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Appeal2014-001381
Application 13/003,518
DECISION
We affirm the Examiner's rejection of claims 1-6, 8-10, 13, and 14
under§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(f).
AFFIRMED
kis
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