Ex Parte Duncan

Patent Trials and Appeals Board

Jun 5, 2018

11796252 - (D) (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111796,252 04/27/2007
22879 7590 06/07/2018
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Cameron C. Duncan
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.
82228505 2936
EXAMINER
LEVY,AMYM
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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 CAMERON C. DUNCAN 1
Appeal 2016-006396
Application 11/796,252
Technology Center 2100
Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 7-11 and 21-25, directed to a computing device comprising a
plurality of on-board displays. The claims have been rejected on the
grounds of anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm-in-part.
BACKGROUND
The Specification discloses, in relevant part, a computing device (e.g.,
a notebook computer) with first (primary) and second (secondary) displays
1 Appellant identifies the Real Party in Interest as Hewlett-Packard
Development Company, LP. Appeal Br. 1.
Appeal 2016-006396
Application 11/796,252
for displaying image content to a user. Spec. i-fi-f l, 5-10. Figure 1 of the
Specification is reproduced below:
f ''l ~ ... 1 .• (j_
Figure 1 depicts computing device 10 with primary display 24 and additional
display 54 for displaying image content. Id. i-fi-15, 6. [I]mage content
displayed ... on display 24 is displayable on display 54 ... in either an
extended mode (e.g., extending display 24 to display 54) or in dual display
mode (e.g., display 55 displaying ... a duplicate of image content displayed
on display 24). Id. i19. "In operation, embodiments of computing device 10
enable use of touchpad 52 independent of image content displayed on
display 54." Id. i18. Thus,
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[I]n some embodiments, while image and/or graphics content
is displayed on display 54, touchpad 52 remains functional so
that input may be received by computing device 10 via
touchpad 52 while image content (e.g., web cam output, a
picture of a family, a movie, etc.) is displayed by display 54.
For example, in this embodiment ... image content may be
received from the Internet or elsewhere ... and displayed on
display 54 while e-mail and/or other applications are displayed
and interacted with by a user on display 24. Thus, in this
example, touchpad 52 is configured to remain functional even
while image content is being displayed on display 54 such that
touchpad input received by a user may be communicated to a
respective application displayed on display 24.
Id. if 13.
STATEMENT OF THE CASE
Claims 7-11 and 21-25 are pending and on appeal. Independent
claims 7, 21, and 23 are representative of the subject matter on appeal and
read as follows:
7. A computing device, comprising:
a first housing;
a second housing provided with a keyboard;
a plurality of on-board displays including a first on-board
display contained in said first housing and a second on-board
display contained in said second housing between said
keyboard and a front wall of said second housing; and
a graphics controller configured to control output of
image content to the plurality of onboard displays in a dual
display mode,
wherein the the [sic] second on-board display contained
in said second housing includes a touchpad, the touchpad to
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Application 11/796,252
receive user input independent of content displayed on the
second onboard display contained in said second housing.
21. A method for manufacturing a computer device,
compnsmg:
providing a plurality of on-board displays including at
least one on-board display contained in a first housing and at
least one on-board display contained in a second housing,
wherein the at least one on-board display contained in the
second housing includes a touchpad, the touchpad to receive
user input independent of content displayed on the at least one
on-board display contained in the second housing; and
providing a controller configured to control output of
image content to the plurality of onboard displays in a dual
display mode.
23. A device, comprising:
a display member having a primary display; and
a base member having a secondary display, the secondary
display having a touchpad disposed thereon, the touchpad to
receive user input independent of content displayed on the
secondary display.
Claims 7-11and21-25 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Gillespie. 2 Ans. 2---6. In addition, claims 1-7 stand rejected
under 35 U.S.C. § 103 as unpatentable over Gillespie. Id. at 4.
2 U.S. Patent Application Publication US 2002/0191029 Al, published
December 19, 2002.
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THE PRIOR ART
Gillespie
Gillespie discloses "a graphical user interface in a computing device
having a processor running an operating system and a display." Gillespie
i-f 11. "The graphical user interface comprises a touch screen and a driver
coupling the touch screen to the operating system." Id. The touch screen
"usually serves as a conventional pointing device for the computer" (id. at
43), but also has several other usage modes, which "include 'iconic,'
'auxiliary,' and 'pop-up' touch screen modes" (id. at 48).
In iconic mode, the touch screen "displays an image that includes a
number of small icons such as pictures or buttons" (id. i-f 49), for example,
"icons relating to software that is running on the computer and other aspects
of the operation of the computer" (id.). In auxiliary mode, the touch screen
"displays an auxiliary image specific to a software application that is
running on the computer" that "may include graphic icons and buttons" or
"may be a pure image, such as an advertisement or a set of notes
accompanying a presentation." Id. i-f 76, Fig. 8A. In pop-up mode, the touch
screen "displays a special image much as in the auxiliary mode," but
"appears in response to a user command or other event in the host computer
and is not associated with any particular software application on the main
display." Id. i-f 95; Fig. 11. The different modes can also appear on the
screen at the same time; for example, icons can appear in an auxiliary or
pop-up image, or an auxiliary or pop-up image can be overlaid in a window
on the iconic mode image instead of fully replacing that image. Id. i-f 48.
In addition, Gillespie discloses a magnification tool that can take the
form of a pop-up image displayed on the touch screen "much of the time that
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Application 11/796,252
the computer is used" (id. i-f 101 ), "leaving the main display undisturbed"
(id.). The magnifier pop-up can "be left displayed much of the time that the
computer is used ... leav[ing] the touch sensor operating as a conventional
pointing device; hence, comer tap regions ... are retained." Id. When the
touch screen is in the activated state, an image of controls such as a
magnification level adjustment icon is displayed. Id. "In an alternative
magnification mode, the main display image is reduced and moved to the
touch screen display, and then a magnified view of the portion of the image
is shown on the main display." Id. i-f 102.
Finally, Gillespie teaches that "many other images, logos, status
indicators, command buttons, controls and other types of icons can share the
touch screen display in the iconic usage mode." Id. i-f 59.
ANTICIPATION
Claims 7-11and21-25 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Gillespie. We begin our analysis by determining the relevant
requirements of independent claims 7, 21, and 23.
Claims 7 and 21 are directed to a computing device with a plurality of
on-board displays, including first (primary) and second (secondary) on-
board displays, and both claims require "a graphics controller configured to
control output of image content to the plurality of onboard displays in a dual
display mode." According to the Specification, an example of a "dual
display mode" is when the first (primary) and second (secondary) displays
display duplicate image content. Spec. i-f 9.
The Federal Circuit has held that "configured to" is analogous to
"made to," "adapted to," and "designed to." In re Man Mach. Inteiface
Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016). In other words,
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"configured to" has a narrower meaning than "capable of." Thus, we find
that a person of ordinary skill in the art would understand that the claimed
computing device is specially designed to accomplish the specific purpose
recited in the "configured" clauses of claims 7 and 21-i.e., it is specially
designed to display at least some duplicate content on both primary and
secondary displays. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672
F.3d 1335, 1349 (Fed. Cir. 2012) (using the terms "designed to" and
"configured to" as "to accomplish a specific purpose"); see also In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (accord).
In addition, both claims 7 and 21 require that the secondary display
include a touchpad "to receive user input independent of content displayed"
on the secondary display. According to the Examiner, this limitation merely
"recites an intended use of a touchpad ... and does not limit the claim[ s] to
a particular structure" or "require steps to be performed." Ans. 6. We agree
with the Examiner on these particular points, but nevertheless find that
claims 7 and 21 require that the touchpad be capable of receiving user input
independent of content displayed on the secondary display.
Accordingly, we interpret claims 7 and 21 as requiring a graphics
controller configured to display at least some content on the secondary
display that is also displayed on the primary display, where the touchpad is
capable of receiving input independent of the duplicate content displayed on
the secondary display. This interpretation is consistent with the
Specification: "[E]mbodiments of computing device 10 enable use of
touchpad 52 independent of image content displayed on display 54" and "in
some embodiments, while a movie or other type of image content is being
displayed on display 54, touchpad 52 may be used to receive user input
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associated with an application displayed on display 24." Spec. i-f 8; see also
id. i-f 13; Fig. 1.
Claim 23, on the other hand, does not require a dual display mode,
and thus, merely requires that the touchpad be capable of receiving input
independent of content displayed on the secondary display.
The Examiner finds, in relevant part, that Gillespie's graphics
controller is configured to control the output of image content to a plurality
of on-board displays, for example, a primary display and touch screen
display-where the touch screen provides iconic, auxiliary, and pop-up
general usage modes. Ans. 3. The Examiner finds that Gillespie's graphics
controller is also configured to provide a magnification mode, where the
main display image is reduced and moved to the touch screen display, and a
magnified view of a portion of the image is shown on the main display-and
is therefore configured to provide a dual display mode. Id.
The Examiner further finds that Gillespie "teaches more than two
modes, one of which is a conventional touch pad with a displayed default
image" (id. at 7), where the default image may include graphical icons, a
manufacturer's logo, and/or static or dynamic wallpaper (id. at 8).
The Examiner acknowledges that Gillespie "describe[ s] modes in
which the touchpad receives input dependent on content displayed [on] the
second display" (id. at 9), but argues that Gillespie also clearly "teaches that
for these same modes, the touchpad is 'to receive user input independent of
content displayed' on the second display as recited in the independent
claims" (id.). Specifically, the Examiner contends that Gillespie "clearly
teaches all the structural limitations of independent claims 7, 21, and 23, as
well as the intended use of the structural limitations" (id.), because "the
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touch input is independent of the displayed default screen with only a
manufacturer's logo; the touch input is independent of a displayed
background image or a displayed wallpaper" (id.).
Appellant contends that "Gillespie discloses a touchpad that can
operate in one of two modes, neither of which disclose that the touchpad is
'to receive user input independent of content displayed,' as recited in the
pending claims." Br. 7. Moreover, Appellant contends that neither
Gillespie's magnifier pop-up feature nor Gillespie's tool for adjusting the
magnification "allow[ s] the device of Gillespie 'to receive user input
independent of content displayed,' as recited in the pending claims." Reply
Br. 2. Specifically, Appellant contends that "an adjustment of the
magnification level ... [is] not 'independent of content displayed,"' as
recited in the pending claims. Id. at 4.
We agree with the Examiner that Gillespie discloses, for example, an
iconic display where icons displayed on the secondary display can be
operated or activated independently of a manufacturer's logo, a background
image, or wallpaper also displayed on the secondary display. However, with
respect to independent claims 7 and 21, the Examiner has not established
that the icons can be operated independently of duplicate content displayed
on the secondary display when the computer is in a dual display mode. As
discussed above, the Specification teaches that an example of a "dual display
mode" is when the primary and secondary displays display duplicate image
content. Spec. i-f 9. The Examiner has not identified any embodiment where
Gillespie's touchpad can receive user input independent of duplicate content
displayed on the secondary display when the primary and secondary displays
are in dual display mode. Similarly, the Examiner has not established that
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Gillespie's magnifier pop-up mode can operate independently of any
duplicate content displayed on both the primary and secondary monitors, as
activation of the magnifier pop-up tool to, for example, adjust the
magnification level, affects the displayed duplicate content. Accordingly,
we are not persuaded that claims 7 and 21, or the claims dependent on them,
are anticipated by Gillespie.
Claim 23, however, stands on a different footing. As discussed above,
claim 23 does not require a graphics controller configured to control output
of image content in a dual display mode, and thus, merely requires that the
touchpad be capable of receiving input independent of any other content
displayed on the secondary display. Gillespie discloses that "many other
images, logos, status indicators, command buttons, controls and other types
of icons can share the touch screen display in the iconic usage mode."
Gillespie i-f 59. For example, scroll arrow icons and a comer tap icon may be
displayed on the secondary display, and "non-critical graphics from [a]
default image could be retained as a background image on which icons
overlap," or an "image such as static or dynamic 'wallpaper' may serve as a
background image." Id. i-f 50.
Accordingly, the rejection of the claims under 35 U.S.C. § 102(b) as
anticipated by Gillespie is reversed with respect to 7-11, 21, and 22, and
affirmed with respect to claims 23-25.
OBVIOUSNESS
In addition, claims 7-11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Gillespie.
With respect to the "dual display" limitation of independent claim 7,
the Examiner argues,
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Under an interpretation of the secondary display
providing at least a portion of the image content of the primary
display, GILLESPIE clearly teaches a dual display mode as
discussed above. However, should the citations above with
respect to magnification not provide sufficient evidence,
GILLESPIE further teaches a tool to adjust the magnification
level (as in FIG 13B), thus at a magnification level IX (i.e. no
magnification), the two displays would display exactly the same
image content. One of ordinary skill in the art at the time of the
invention would have thus found it simply obvious, given all
the various modes provided by GILLESPIE, to have included a
dual display mode such that both primary and secondary
display show identical image content.
Ans. 4.
Whether Gillespie describes a graphics controller configured to
provide a dual display, or merely renders obvious a dual display, the
Examiner has not established that Gillespie's touch screen is capable of
receiving input independent of duplicate content displayed on the secondary
display.
Accordingly, we will reverse the rejection of claims 7-11 under 35
U.S.C. § 103 as unpatentable over Gillespie.
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SUMMARY
The rejection of claims 7-11and21-25 under 35 U.S.C. § 102(b) as
anticipated by Gillespie is reversed with respect to claims 7-11, 21, and 22,
and affirmed with respect to claims 23-25; and
The rejection of claims 7-11under35 U.S.C. § 103(a) as unpatentable
over Gillespie is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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