Ex Parte Hayes et al

Board of Patent Appeals and Interferences

Sep 8, 2010

10922673 (B.P.A.I. Sep. 8, 2010)

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.
10/922,673 08/20/2004 Patrick H. Hayes 81230.105US2 3574
34018 7590 09/09/2010
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
SIM, YONG H
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
09/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK H. HAYES and SANDRO DAVID KLEIN
_____________

Appeal 2009-007417
Application 10/922,673
Technology Center 2600
____________

Before ROBERT E. NAPPI, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007417
Application 10/922,673

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 56-62. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellants’ Figures 11a, 11b, and 8 are reproduced below:

Appeal 2009-007417
Application 10/922,673

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Figure 11a depicts a remote control 100f having a face panel 801’
screen printed with icons using several different ink formulations, each ink
responsive to a specified light wavelength or range of light wavelengths (i.e.,
the visible light color). For example a single key location label 1102 may
include the label “9” printed in an ink responsive to red light, the label
“Guide” in an ink responsive to blue light, and the label “Angle” in an ink
responsive to green light. Illumination of the face panel in each of these
respective colors may thus be used to bring different sets of labels or icons
into prominence (relative to the remaining labels), depending upon the
current device being controlled (i.e., referring to whether a TV, DVD, or
cable is currently controlled).
Figure 11b also depicts the remote control 100f, but illustrates the
appearance of face panel 801’ when the face panel 801’ is internally
illuminated with red light (in the illustrated example, the user interface
Appeal 2009-007417
Application 10/922,673

4
displayed corresponds to the TV device mode in which the labels printed in
ink responsive to red wavelengths - e.g., labels having a reddish color - are
more prominently displayed relative to the other labels).
Figure 8 illustrates a controlling device 100d having a translucent
display face 801 (i.e., a face that allows for passage of at least some incident
light). The display face 801 is preferably made from light conducting
material and includes an overlay with touch-sensitive keys. See generally
Spec. 22:6-19; 11:14-17.
Claim 56, reproduced below, is representative of the subject matter on
appeal:
56. A controlling device for commanding operating functions of an
appliance, comprising:
a translucent display having a touch-sensitive surface providing a
plurality of function keys each operable to cause a transmission of at least
one command to at least one of a plurality of appliances for commanding at
least one operating function of the at least one of the plurality of appliances
and having a plurality of defined portions associated with the plurality of
function keys; and
a light source for illuminating the translucent display;
wherein the light source is used to make select ones of the plurality of
defined portions of the translucent display more visually prominent relative
to remaining ones of the plurality of defined portions of the translucent
display and thereby indicate which operating functions of the one or more of
the plurality of appliances are commandable in response to operation of one
or more of the plurality of function keys as a function of the one or more of
the plurality of appliances to be currently controlled through use of the
controlling device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2009-007417
Application 10/922,673

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Nebenzahl US 5,164,723 Nov. 17, 1992
Muurinen US 5,408,060 Apr. 18, 1995
Rogers US 6,794,992 B1 Sep. 21, 2004
Sasaki US 6,917,005 B2 Jul. 12, 2005
The following rejections are before us for review:
1. The Examiner rejected claims 56 and 58-60 under 35 U.S.C.
§ 103(a) as being unpatentable over Muurinen in view of Rogers.
2. The Examiner rejected claim 57 under 35 U.S.C. § 103(a) as being
unpatentable over Muurinen in view of Rogers and further in view of
Nebenzahl.
3. The Examiner rejected claims 61 and 62 under 35 U.S.C. § 103(a)
as being unpatentable over Muurinen in view of Rogers and further in view
of Sasaki.

ISSUE
The pivotal issue is whether the combination of Muurinen in view of
Rogers teaches a touch-sensitive display which provides a plurality of
function keys.

ANALYSIS
Appellants argue (App. Br. 6-7; Reply Br. 4), inter alia, with respect
to claim 562, that Muurinen teaches a keypad having a plurality of
pushbuttons where each individual pushbutton is provided with a cap of
translucent material, and thus, Muurinen teaches the antithesis of the

2 We note that while Appellants refer to dependent claim 58 (App. Br. 5-8),
it is clear from the content that this is an inadvertent error with the intent to
refer to base independent claim 56.
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Application 10/922,673

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claimed touch-sensitive display which requires a translucent display
providing a plurality of function keys. We agree with Appellants.
At best, Muurinen teaches illuminated pushbuttons 15 of a keyboard
15 (col. 2, ll. 56-60) and not “a translucent display having a touch-sensitive
surface providing a plurality of function keys” as recited in independent
claim 56.
The additional references of Rogers, Nebenzahl, and Sasaki, either
alone or in combination, do not cure the cited deficiency.
Accordingly, we will reverse the Examiner’s rejection of claim 56,
and for similar reasons, we will also reverse the rejections of claims 57-62.

CONCLUSION
The combination of Muurinen in view of Rogers does not teach a
touch-sensitive display which provides a plurality of function keys.

ORDER
The decision of the Examiner to reject claims 56-62 is reversed.

REVESRED

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GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732