Ex Parte Hope

Patent Trial and Appeal Board

Jul 28, 2014

11463739 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte JULIAN CHARLES HOPE
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Appeal 2012-004906
Application 11/463,739
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) the Examiner’s final
rejection of claims 1, 6, 8, 9, 11-16, 18, 21-24, 26 and 27. Claims 2-5, 7, 10,
17, 19, 20, and 25 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
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STATEMENT OF THE CASE
Appellant’s invention “relates generally to communication devices
and, more particularly, to providing control of input operations.” (Spec. ¶
1.) Claim 1 illustrates the claimed subject matter:
1. A mobile communication device comprising:
a housing including a stylus retainer; a user input device
including a touchscreen-enabled display; a stylus to be received
within the stylus retainer, and to interface with the user input
device via contact with the touchscreen-enabled display; and
logic to:
permit interfacing with the user input device, via
contact of the touchscreen-enabled display, for a predetermined
amount of time following placement of the stylus in a first
position within the stylus retainer; prevent, following the
predetermined amount of time, interfacing with the user input
device, via contact of the touchscreen-enabled display, when
the stylus is in the first position within the stylus retainer; and

permit interfacing with the user input device, via
the contact of the touchscreen-enabled display, when the stylus
is in a second position within the stylus retainer, where a first
trigger point within the stylus retainer for transitioning from a
first state, of prevented interface with the user input device, to a
second state, of permitted interface with the user input device,
differs from a second trigger point within the stylus retainer for
transitioning from the second state to the first state.

(indentations and paragraph break added).

REJECTIONS

Claim 1, 6, 8, 9, 11, 12, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nicolas (US 7,046,237 B1; May 16,
2006) (“Nicolas ’237”), Nicolas (US 6,924,791 B1; Aug. 2, 2005) (“Nicolas
’791”), and Denny (US 2004/0212586 A1; Oct. 28, 2004).
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Claims 13–16 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nicolas ’237 and Denny.
Claims 21–24 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Nicolas ’237.
ISSUES
Appellant’s briefing presents the following three issues:
(1) Does the combination of Nicolas ’237, Nicolas ’791, and Denny
teach or suggest “permit[ting] interfacing . . . via contact of the touchscreen-
enabled display, for a predetermined amount of time following placement of
the stylus in a first position within the stylus retainer; prevent[ing],
following the predetermined amount of time, interfacing . . . via contact of
the touchscreen-enabled display, when the stylus is in the first position
within the stylus retainer” as recited in claim 1?
(2) Does the combination of Nicolas ’237 and Denny teach or suggest
activating and deactivating a “display lock” in the manner recited in claim
13?
(3) Does Nicolas ’237 teach the “switch” recited in claim 21?1
ANALYSIS
Claim 1: “Permit[ting] Interfacing . . . Via Contact of the Touchscreen-
Enabled Display, for a Predetermined Amount of Time Following Placement
of the Stylus in a First Position Within the Stylus Retainer . . . ”

1 Although Appellant’s arguments concern limitations recited in claim
21, (see, e.g., App. Br. 15), Appellant occasionally mentions claim 22 when
discussing these limitations, (see, e.g., App. Br. 16, 17). Because Appellant
has not presented substantive arguments concerning the limitations recited in
claim 22, we will only address claim 21.
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Nicolas ’237 is a continuation of Nicolas ’791, and as such, their
written descriptions are nearly identical in all relevant respects. The Nicolas
references describe “[a] method and system . . . for automatic power-up and
automatic power-down of a computer system based on the position . . . of an
associated stylus . . . .” Nicolas ’237 col. 2, ll. 54–57. The references
disclose “[w]hen the stylus is removed from a receiving slot, a switch
automatically turns full power onto the computer . . . .” Id. at col. 2, ll. 61–
64. By contrast, “when the stylus is inserted back into the receiving slot, the
switch automatically returns the computer to a power reduction mode where
one or all of the components of the computer are powered down.” Id. at col.
2, l. 64 – col. 3 l.1. As is particularly relevant here, the references note “the
stylus-based automatic power-up and power-down features work in concert
with other power-up and power-down mechanisms of the computer, such
[as] . . . time-out power off modes.” Id. at col. 3 ll. 11–14.
The Examiner found the disclosed method and system suggested the
disputed “permit[ting]” limitation. Curiously, despite the Nicolas references
effectively sharing a written description, the Examiner found Nicolas ’237
did not teach this limitation but concluded Nicolas ’791 did. (Ans. 5-6.)
The Examiner found the disclosed “time-out power off mode” suggested the
recited “predetermined amount of time” and reasoned “that one of skill
would find it obvious to have the mobile system . . . power down after a
time-out function once the stylus has been placed in the retainer.” (Id.)
Appellant contends this finding is erroneous for at least two reasons.
First, the Examiner admitted Nicolas ’237 did not teach this limitation, and
Nicolas ’237 has essentially the same written description as Nicolas ’791.
(App. Br. 11.) Appellant contends this discrepancy renders the rejection
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improper. (Id. at 11.) Second, Appellant argues the cited section of Nicolas
’791 does not support the Examiner’s findings. According to Appellant, the
section merely discloses automatically returning a computer to a power
reduction mode when a user inserts a stylus into the receiving slot. (Id. at
11–12.)
We find the latter argument persuasive. Although the cited section of
Nicolas ’791 discloses “the stylus-based automatic power-up and power-
down features work in concert with . . . time-out power off modes,” Nicolas
’791 col. 2 l. 65 – col. 3 l. 3, this section does not explain how the features
“work in concert.” Other portions of the written description indicate the
features “work in concert” in the sense that either feature can power down
the system, not that the system automatically powers down a predetermined
time after a user inserts the stylus in the retainer. See, e.g., id. Fig. 9B; col.
9, l. 51 – col. 10, l. 19. In fact, the written description indicates the system
will not temporarily power the device after a user inserts the stylus into the
retainer because both stylus insertion and a timeout cause the system to
automatically power down. See id. In light of this, we agree with Appellant
the cited portion of Nicolas ’791 would not have suggested this limitation to
one of skill in the art. We therefore cannot sustain the rejection of claim 1
and its dependent claims.
Claim 13: Activating and Deactivating a “Display Lock”
Claim 13 requires “activating a display lock . . . by transitioning from
a deactivated state, when the pointer triggers a first trigger point in a holder
associated with the communication device.” Claim 13 also recites
“removing the pointer entirely from the holder to trigger a second trigger
point; deactivating the display lock . . . by transitioning from an activated
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state, when the pointer triggers the second trigger point in the holder, where
the first trigger point and the second trigger point are at different locations
within the holder.” The Examiner found the combination of Nicolas ’237
and Denny suggested these limitations. (Ans. 9.)
Nicolas ’237 discloses using two “detector elements” within the stylus
retainer that “not only report that the stylus has been inserted into [the] slot
but also that the stylus is in the process of being slid into or slid out of the
slot 350.” Nicolas ’237 col. 9, ll. 37–39 (internal reference numbers
omitted). The reference explains “[b]oth detector elements . . . are coupled
to the switch circuit. The mode of the switch is controlled by detector
device and the basic modes are: stylus-in; and stylus out. Stylus in
corresponds to power-down and stylus out corresponds to power-up.” Id. at
col. 9, ll. 39-44 (internal reference numbers omitted). Figure 1 below
illustrates a cross section of the retainer; the detector elements are labeled
380a and 380b:
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Figure 1: Cross Section of the Stylus Retainer
The Examiner found Nicolas ’237 taught using the detector elements
to determine when “the stylus is in the process of being removed or inserted
and also detect when the stylus has been fully removed (resulting in power
up state) or fully inserted (resulting in power down state).” (Ans. 9). The
Examiner explained in the Answer that, given the placement of the sensors
within the retainer, one of skill in the art would have understood elements
380a and 380b respectively determine when to power up and power down
the device:
[O]ne of skill in the art can tell that based on the direction the
stylus is traveling to a position inside the holster, each detector
will register a signal differently. . . . [I]f the stylus is being
removed from the holster detector 380b will register first and
detector 380a will register second which would send a full
signal to switch 375 to alert the system of power up mode.
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However when the stylus is being placed back into the holster
the detector 380a will register first and detector 380b will
register second to send a full signal to the switch and alert the
system of a power down mode. Therefore each detector would
provide a different determining factor for the system to enter
into power up or power down mode.
(Id. at 14–15.) Despite these findings, the Examiner found Nicolas ’237 did
not explicitly disclose removing the stylus “entirely from the holder to
trigger a second trigger point” but found Denny taught this limitation. (Id.)
Appellant argues the cited portions of Nicolas ’237 do not support the
Examiner’s findings. (App. Br. 14.) In particular, Appellant contends these
citations do not teach or suggest (1) detecting the stylus has been completely
removed or inserted and (2) elements 380a and 380b respectively determine
when to power up and power down the device. (Id.)
We agree with the Examiner. Claim 13 only requires “removing the
pointer entirely from the holder to trigger a second trigger point,” and the
Examiner relied upon Denny for this limitation, (see Ans. 9). Because
Appellant has not challenged the Examiner’s reliance on Denny for this
limitation, we see no reason to overturn the rejection on this ground. As for
the detector elements, we agree that, given the location of the detector
elements within the retainer, one of skill in the art would have understood
element 380a determined when to power up the device and element 380
determined when to power down the device. Accordingly, we sustain the
rejection of claim 13. Because Appellant has argued claims 14–16 and 18
with claim 13, claims 14–16 and 18 fall with claim 13.
Claim 21: “Switch”
Appellant’s arguments regarding the “switch” recited in claim 21
largely track the arguments Appellant raised vis-à-vis claim 13. But unlike
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claim 13, claim 21 does not recite “removing the pointer entirely from the
holder to trigger a second trigger point” and therefore Appellant’s arguments
concerning whether Nicolas ’237 discloses completely inserting and
removing the stylus are irrelevant here. Regarding Appellant’s contentions
about the detector elements, we find these arguments unconvincing for the
reasons discussed in connection with claim 13. We therefore sustain the
rejection of claim 21. Because Appellant argued claims 21–24 together with
claim 21, we also sustain the rejection of these claims.
DECISION
For the reasons discussed above, we REVERSE the rejection of
claims 1, 6, 8, 9, 11, 12, 26, and 27. We AFFIRM the rejections of claim
13–16, 18, and 21-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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