Ex Parte Hochgesang

Patent Trial and Appeal Board

May 29, 2013

11445294 (P.T.A.B. May. 29, 2013)

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.
11/445,294 06/02/2006 Gerhard Hochgesang 1020/0155PUS1 7163
60601 7590 05/29/2013
Muncy, Geissler, Olds & Lowe, PLLC
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
HARRIS, DOROTHY H
ART UNIT PAPER NUMBER
2699
MAIL DATE DELIVERY MODE
05/29/2013 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 GERHARD HOCHGESANG
____________________

Appeal 2010-009769
Application 11/445,294
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-0004499769
Application 11/496,987294

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STATEMENT OF THE CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2-4, 6, 7, 10, and 12. Claims 1, 5, 8, 9, 11, 13, and 14 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant’s Disclosed Invention
Appellant discloses a touch-sensitive display screen movably
integrated in the housing of a device for the manual entry and/or display of
data which provides the operator with haptic feedback corresponding to one
the operator experiences when using a keyboard (Spec. ¶¶ [0007] and
[0008]; Abs.).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 6, 10, and 12, reproduced below, with emphases added:
6. A device for manual entry and/or display of data, the device
comprising:

a housing; and

a touch-sensitive display screen movably integrated in the housing
thereby providing a haptic response, the touch-sensitive display screen being
connected to a processing unit that processes entered data, and further
comprising at least one key panel being included in the housing,

wherein a movability of the touch-sensitive display screen

1 Throughout our decision we refer to the Specification of the Instant
Application (“Spec.”); Final Rejection mailed August 20, 2009 (“Final
Rej.”); the Advisory Action mailed November 3, 2009 (“Adv.”); Appellant’s
Appeal Brief filed March 1, 2010 (“App. Br.”); the Examiner’s Answer
mailed April 13, 2010 (“Ans.”); and Appellant’s Reply Brief filed May 28,
2010 (“Reply Br.”).
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corresponds to a lift/drop of a key of the key panel.

10. A device for manual entry and display of data, the device
comprising:

a housing; and

a touch-sensitive display screen having a touch surface and
being mounted in the housing for sliding movement in a direction
substantially normal to the touch surface between first and second positions,
the display screen shifting from the first position to the second position in
response to an application of force against the touch surface of the display
screen and returning to the first position in response to a cessation of the
application of force against the touch surface of the display screen,

the touch-sensitive display screen being connected to a
processing unit for processing entered data,

wherein the touch-sensitive display screen is guided in the
housing by a guiding device formed of double scissors.

12. A device for manual entry and display of data, the device
comprising:

a housing; and

a touch-sensitive display screen having a touch surface and
being mounted in the housing for sliding movement in a direction
substantially normal to the touch surface between first and second positions,
the display screen shifting from the first position to the second position in
response to an application of force against the touch surface of the display
screen and returning to the first position in response to a cessation of the
application of force against the touch surface of the display screen,

the touch-sensitive display screen being connected to a
processing unit for processing entered data,

and further including a stop for selectively preventing
movement of the display screen from the first position to the second position.
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The Examiner’s Rejections
(1) The Examiner rejected claims 2-4 and 6 under 35 U.S.C. § 102(b)
as being anticipated by Rosenberg (U.S. Patent Publication No.
2003/0038776 A1) (Ans. 3-5);
(2) The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg in view of Stoutenberg (U.S. Patent
Publication No. 2002/0166891 A1) (Ans. 5);
(3) The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg in view of Oelsch (U.S. 4,580,022) (Ans. 6-7);
and
(4) The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg (Ans. 7-9).2
Appellant’s Contentions
(1) With regard to independent claim 6, Appellant contends that
Rosenberg (citing Fig. 5 and ¶ [0043]) provides no information regarding a
relationship between movement of buttons 84 and the movement of the
touch screen in the z-axis direction (App. Br. 5-6; Reply Br. 1);
(2) With regard to independent claim 10, Appellant contends that
there is no reason to modify Rosenberg according to Oelsch to teach a
parallel guide or a double scissors guiding device for a touch sensitive
display screen as recited in claim 10, other than the reasons provided by

2 In the Final Office Action, the Examiner rejected claim 12 under 35 U.S.C.
§ 102(b) as being anticipated by Rosenberg (Final Rej. 5-6). However, the
body of the rejection shows that the Examiner made an obviousness rejection
with regard to claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Rosenberg, which has been corrected by the Examiner in the Examiner’s
Answer (see Ans. 7-8 and 11).
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paragraph [0019] of Appellant’s own Specification (App. Br. 8; Reply Br.
2); and
(3) With regard to independent claim 12, Appellant contends that (i)
Rosenberg fails to teach a stop for selectively preventing movement of a
display screen as required by claim 12, and (ii) any modification of
Rosenberg by the Examiner to teach or suggest the limitations of claim 12 is
improperly taken from Appellant’s Specification because Rosenberg does
not discuss any problems caused by undesirable z-axis movement (App. Br.
6-7; Reply Br. 3); and
(4) With regard to the rejections of claims 2-4 under 35 U.S.C. §
102(b) as being anticipated by Rosenberg, and the rejection of claim 7 under
35 U.S.C. § 103(a) over Rosenberg and Stoutenberg, Appellant relies (App.
Br. 6-7) on the arguments made with respect to independent claim 6 from
which claims 2-4 and 7 depend. In view of the foregoing, our analysis will
only address the merits of claim 6 from which claims 2-4 and 7 depend.
Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (App. Br. 5-8)
and the Reply Brief (Reply Br. 1-4), the following issues are presented on
appeal:
(1) Did the Examiner err in rejecting (a) independent claim 6, and
claims 2-4 depending from claim 6,3 under 35 U.S.C. § 102(b) as being
anticipated by Rosenberg, and (b) claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg in view of Stoutenberg, because Rosenberg

3 We note that claims 2-4 improperly depend from a higher numbered claim
(independent claim 6), and consider this harmless error for purposes of this
appeal. However, should there be further prosecution of claims 2-4, it is
suggested the Examiner address this issue at that time.
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fails to teach movement of a touch-sensitive display screen corresponding to
the lift/drop of a key in the key panel, as recited in independent claim 6?
(2) Has Appellant sufficiently shown that the Examiner erred in
finding that it would have been obvious to modify Rosenberg with Oelsch to
meet the limitations of claim 10?
(3) Has Appellant sufficiently shown that the Examiner erred in
finding that it would have been obvious to modify Rosenberg because (i)
Rosenberg fails to teach a stop for selectively preventing movement of a
display screen as required by claim 12, and (ii) modifying Rosenberg to
teach the limitations of claim 12 as suggested by the Examiner involves the
use of impermissible hindsight because Rosenberg fails to discuss any
problems caused by undesirable z-axis movement?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 5-8) and the Reply Brief (Reply
Br. 1-4) that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 3-9), and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 9-11). We highlight and amplify
certain teachings and suggestions of the references as follows.
Independent Claim 6
With regard to independent claim 6, we agree with the Examiner
(Ans. 3-4) that Rosenberg provides a touchpad where the user is able to push
the touchpad along the z-axis using spring elements 52 (Rosenberg, Fig. 5,
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springs 52). We further agree with the Examiner (Ans. 9) that Rosenberg
teaches the touchpad 16 (Rosenberg, Fig. 5) being pressed by the user and
close a switch to provide button and switch input to the computer 10
(Rosenberg, ¶ [0045]). Thus, we agree with the Examiner that Rosenberg
teaches the limitation “wherein a movability of the touch-sensitive display
screen corresponds to a lift/drop of a key of the key panel,” as set forth in
independent claim 6.
Regarding Appellant’s contention that Rosenberg provides no
relationship between the movability of his buttons and touch screen
(Appellant’s Contention (1) supra; App. Br. 5-6), we agree with the
Examiner (Ans. 9) that Rosenberg’s disclosure that the user’s pressing
touchpad 16 to close a switch and provide button and switch input to the
computer 10 (Rosenberg, ¶ [0045]) teaches or suggests a correspondence
between the movability of his buttons and touch screen, as required by claim
6.
While the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005). Appellant argues (App. Br. 5) that the relationship between the
movability of the buttons and the touch screen should be, for example, a
distance the screen moves when pressed related to the distance that the
buttons move when pressed. Appellant further argues (id.) that Rosenberg’s
touchpad does not present such a relationship, and hence, does not anticipate
claim 6. However, the argued relationship between the screen movement
and the button movement is not recited in independent claim 6.
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In view of the foregoing, we sustain the rejection of independent
claim 6 as being anticipated by Rosenberg. Although Appellant nominally
argues the rejections of claims 2-4 and 7 depending from claim 6 separately
(App. Br. 6-7), the arguments presented do not point out with particularity or
explain why the limitations of the claims are separately patentable.
Accordingly, we sustain the rejection of claims 2-4 under 35 U.S.C. § 102(b)
and the rejection of claim 7 under 35 U.S.C. § 103(a) for similar reasons as
just discussed with regard to independent claim 6.
Independent Claim 10
With regard to independent claim 10, we agree with the Examiner
(Ans. 6) that Rosenberg teaches a touch sensitive display screen having a
touch surface and being mounted in the housing for sliding movement in a
direction substantially normal to the touch surface between first and second
positions (Rosenberg, Fig. 8a; ¶ [0074]). We also agree with Examiner
(Ans. 6-7) that Oelsch teaches two shears (i.e., scissors) as guiding means in
order to avoid tilting during out-of-center pressing when the keys are large
(Oelsch, Abs.; col. 1, ll. 6-18; col. 2, l. 55 – col. 3, l. 16).4 We agree with the
Examiner’s motivation provided for combining Rosenberg and Oelsch (see
Ans. 7), that one skilled in the art would have been motivated to have a
parallel guide of double scissors, since such a configuration, absent any
criticality of unobvious and/or unexpected results, is generally achievable
through routine optimization/experimentation.
Appellant contends (Appellant’s Contention (2)) that the Examiner’s

4 We note that Appellant admits in the Specification that such a parallel
guide for a display screen is known in the prior art, such as in U.S. Patent
No. 4,580,022 awarded to Oelsch (Spec. ¶ [0019]).
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obviousness determination is hinged upon impermissible hindsight. To
support the conclusion of hindsight, Appellant presents conclusory
statements (App. Br. 8) that there would be no reason to modify Rosenberg
according to Oelsch other than the reasons provided by Appellant in the
Specification. Such conclusory statements are unsupported by factual
evidence. Additionally, arguments of counsel cannot take the place of
factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Furthermore, while not required to, Appellant has not submitted
evidence of secondary considerations. See Kahn, 441 F.3d at 986 (quoting
Graham v John Deere Co., 383 U.S. 1, 36 (1966)) (evidence of secondary
considerations “may also serve a guard against slipping into use of
hindsight.”).
Therefore, little probative value is accorded to Appellant’s conclusory
statements that the Examiner combined the teachings of Rosenberg and
Oelsch based upon Appellant’s Specification, because the Examiner has
provided a sound reason, namely, to provide two shears (i.e., scissors) as
guiding means in order to avoid tilting during out-of-center pressing when
the keys are large, such as when the touchpad moves in the z-axis to provide
switch input to the computer (see Ans. 7 and 10). And, the Examiner’s
reason is different from Appellant’s reason found in paragraph [0020] of the
Specification, namely, that the double scissors guiding means makes it
possible for the switch element positioned under the display to be contacted
by the movement of the display.
“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
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overemphasis on the importance of published articles and the explicit
content of issued patents. The diversity of inventive pursuits and of modern
technology counsels against limiting the analysis in this way.” KSR Int'l v.
Teleflex Inc., 50 U.S. 398, 419 (2007). Appellant argues (Reply Br. 2) that
the capability of Rosenberg’s display screen to move does not support a
finding that one of ordinary skill in the art would mount it in the same
manner as a key on a computer keyboard, for example, a spacebar on a
keyboard, as suggested by Oelsch. We agree with the Examiner (Ans. 6-7)
that one skilled in the art would have been motivated to have a parallel guide
of double scissors to mount the touchpad, since such a configuration, absent
any criticality of unobvious and/or unexpected results, is generally
achievable through routine optimization/experimentation.
In view of the foregoing, Appellant’s contention that it would not
have been obvious to combine Rosenberg and Oelsch because the
Examiner’s reasoning involves hindsight (Appellant’s Contention (2) supra;
App. Br. 8; Reply Br. 2), is unconvincing. Appellant has not sufficiently
shown that the Examiner erred in finding that it would have been obvious to
modify Rosenberg according to Oelsch, or that the combination of
Rosenberg and Oelsch fails to teach or suggest the “guiding device formed
of double scissors,” as recited in claim 10.
Accordingly, we sustain the obviousness rejection of claim 10 based
upon the combined teachings and suggestions of Rosenberg and Oelsch.

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Independent Claim 125
With regard to independent claim 12, we agree with the Examiner
(Ans. 7-9) that Rosenberg teaches the touch-sensitive display screen shifting
from a first position to a second position in response to an application of a
force to the surface, and returning to the first position in response to
cessation of the force (Rosenberg, ¶¶ [0043] – [0045]; Fig. 5). We also
agree with the Examiner (Ans. 8) that Rosenberg does not explicitly disclose
a stop for selectively preventing movement of the display screen from the
first position to the second position (Rosenberg, ¶ [0043]).
We further agree with the Examiner that Rosenberg proposes
providing (i) a relatively large amount of force to initiate z-axis movement
of the touchpad so as to avoid such movement during normal operation
(Rosenberg, ¶ [0045]), and (ii) stops to limit the travel of the touchpad to a
desired range along the z-axis (Rosenberg, ¶ [0043]). We agree with the
Examiner’s reason for modifying Rosenberg, namely that of providing a stop
to selectively prevent movement of the display screen from the first position
to the second position to in turn prevent unwanted movement of the
touchpad during normal use when z-axis movement is not required.
Arguments of counsel cannot take the place of factually supported
objective evidence. In re Huang, 100 F.3d at 139-40; In re De Blauwe, 736
F.2d at 705. We accord very little probative value to Appellant’s conclusory
statements that (i) the Examiner modified the teachings of Rosenberg, based

5 37 C.F.R. 1.83(a) requires that each feature appearing in the claims be
shown in the drawings. However, the stop and processing unit of
independent claim 12 are not shown in any of the Drawings of the
Specification (see generally Figs. 1-3).

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upon the disclosure of the Instant Application, and (ii) the modification
proposed by the Examiner prevents Rosenberg’s touchpad from operating in
the disclosed manner (Appellant’s Contention (3) supra; App. Br. 7; Reply
Br. 3) for the following two reasons. First, the Examiner provided a sound
rationale to modify Rosenberg to include a stop to provide selective
movement, namely to prevent unwanted movement of the touchpad during
normal use when z-axis movement is not required (see Ans. 11). Second,
Appellant provides no factual findings to support the conclusory statements.
See Kahn, 441 F.3d at 986 (quoting Graham v John Deere Co., 383 U.S. 1,
36 (1966)).
Appellant has raised a new argument in the Reply Brief (Reply Br. 3)
that modifying Rosenberg to prevent movement of the touchpad would
render Rosenberg unsatisfactory for its intended purpose.
“Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative); see also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.") (citations and
quotation marks omitted).
Here, the Examiner's finding(s) in the Examiner's Answer (Ans. 11)
that Rosenberg can be modified to provide stops as suggested by Rosenberg
to prevent unwanted z-axis movement is identical to that in the Final
Rejection (Final Rej. 5-6), from which the instant appeal was taken.
Because the findings are identical, we find nothing that would have
prompted the new argument in the Reply Brief. Appellant could have made
the argument in the Appeal Brief. The term “Reply Brief” is exactly that, a
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brief in reply to new rejections or new arguments set forth in an Examiner’s
Answer. Appellant may not present arguments in a piecemeal fashion,
holding back arguments until an examiner answers the original brief. To the
contrary, such bases for asserting error are waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
In any event, the argument made by Appellant in the Reply Brief
(Reply Br. 3) that modifying Rosenberg would render Rosenberg
unsatisfactory for its intended purpose not persuasive, because (i) Rosenberg
suggests providing stops to limit the travel of the touchpad to a desired range
along the z-axis (Rosenberg, ¶ [0043]), and (ii) modifying Rosenberg to
provide a stop to selectively prevent movement of the display screen from
the first position to the second position would have been obvious, as
suggested by the Examiner, to prevent unwanted movement of the touchpad
during normal use when z-axis movement is not required.
In summary, Appellant’s arguments in the Appeal Brief (App. Br. 6-
7) and Reply Brief (Reply Br. 3) do not convince us that Rosenberg fails to
teach or suggest the limitations of claim 12. Accordingly, we sustain the
obviousness rejection of claim 12 over Rosenberg.

CONCLUSIONS
(1) The Examiner did not err in rejecting (a) independent claim 6, and
claims 2-4 grouped therewith, under § 102(b), and (b) claim 7 under §
103(a), since Rosenberg teaches the movement of a touch-sensitive display
screen corresponding to the lift/drop of a key of the key panel, as set forth in
independent claim 6.
(2) Appellant has not sufficiently shown that the Examiner erred in
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finding that it would have been obvious to modify Rosenberg according to
Oelsch to meet the limitations of claim 10.
(3) Appellant has not sufficiently shown that the Examiner erred in
finding that it would have been obvious to modify Rosenberg for the reasons
set forth by the Examiner to meet the limitations of claim 12.

DECISION
The Examiner's rejections of claims 2-4, 6, 7, 10, and 12 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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