Ex parte Johnson et al.

Board of Patent Appeals and Interferences

Apr 20, 1998

08080689 (B.P.A.I. Apr. 20, 1998)

Application for patent filed June 22, 1993. According to1
appellants, the application is a continuation of Application
07/669,066, filed March 12, 1991, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte REYNOLD B. JOHNSON,
KENNETH A. FESLER
and
EUGENE W. WEBER
_____________
Appeal No. 95-3270
Application 08/080,6891
______________
ON BRIEF
_______________
Before COHEN, STAAB and BARRETT, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 95-3270
Application 08/080,689
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 11, 13 through 16, 18, 21, 22, 24, 25, 27 through 30, 37
through 46, 48 through 51, 53, 54, 56, 57, 59, and 62. Claims 12
17, 23, 26, 31 through 36, 47, 52, 55, 58, 60, and 61, the only
other claims remaining in the application, are indicated by the
examiner as being allowed (Paper No. 24).
Appellants’ invention pertains to a typewriter, a self-
contained portable typewriting unit, and a typewriting method.
An understanding of the invention can be derived from a reading
of exemplary claims 1, 18, and 37, copies of which appear below.
1. In a typewriter: a keyboard panel having a
plurality of characters printed thereon in optically readable
form, a mouse movable about the keyboard panel and having means
for visually aligning the mouse with a selected one of the
printed characters, means for holding the mouse in a fixed
position relative to the character with which it has been
aligned, means coupled to the mouse for optically scanning the
printed character with which the mouse is aligned and providing
electrical signals which describe the scanned character as a bit
map, a printer which produces visual images on an output medium
by selective actuation of elements arranged in a matrix, and
means responsive to the electrical signals for actuating the
elements in the matrix in accordance with the bit map to form
an image of the selected character.
Appeal No. 95-3270
Application 08/080,689
3
18. In a self-contained portable typewriting unit: a
case, a keyboard panel mounted on the case and having a plurality
of characters printed thereon in optically readable form, a mouse
movable about the keyboard panel and having means for visually
aligning the mouse with a selected one of the characters, means
for holding the mouse in a fixed position relative to the charac-
ter with which it has been aligned, means coupled to the mouse
for optically scanning the selected character and providing
electrical signals which describe the character as a bit map, a
printer mounted in the case and forming an integral part of the
unit for producing visual images on an output medium by selective
actuation of elements arranged in a matrix, and means responsive
to the electrical signals for actuating the elements in the
matrix in accordance with the bit map to form an image of the
character with which the mouse is aligned.
37. In a typewriting method utilizing a keyboard panel
having a plurality of characters printed thereon in optically
readable form, the steps of: visually positioning a mouse in
alignment with a selected one of the printed characters, tempo-
rarily locking the mouse in a fixed position relative to the
selected character, optically scanning the printed character with
which the mouse is aligned and providing electrical signals which
describe the scanned character as a bit map, and actuating a
matrix printer in accordance with the bit map to form an image
of the character with which the mouse is aligned.
As evidence of obviousness, the examiner has applied
the documents listed below:
Toyoda 4,626,925 Dec. 2, 1986
Johnson 4,722,621 Feb. 2, 1988
Bennett et al. (Bennett) 5,051,736 Sep. 24, 1991
The following rejections are before us for review.
Appeal No. 95-3270
Application 08/080,689
In Paper No. 30, the examiner indicated that the reply2
brief dated March 2, 1995 was entered. However, it is not clear
if the examiner also intended to indicate entry of the “EVIDENCE
OF NONOBVIOUSNESS” also filed on March 2, 1995. Since we have
reversed the rejections of appellants’ claims, infra, the content
of this latter submission would not be of consequence in this
appeal.
4
Claims 1 through 5, 11, 13, 16, 18, 21, 22, 24, 25, 27
through 29, 37 through 40, 46, 48, 51, 53, 54, 56, 57, and 62
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Johnson in view of Toyoda.
Claims 6 through 10, 14, 15, 30, 41 through 45, 49, 50,
and 59 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Johnson in view of Toyoda, as applied to claims 1, 13, 18,
21, 37, 48 and 53 above, further in view of Bennett.
The full text of the examiner's rejections and response
to the argument presented by appellants appears in the answer
(Paper No. 26), while the complete statement of appellants’
argument can be found in the main and reply briefs (Paper Nos. 25
and 27).2

OPINION
Appeal No. 95-3270
Application 08/080,689
5
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellants’ specification and claims, the applied patents, and
the respective viewpoints of appellants and the examiner. As a
consequence of our review, we make the determination which
follows.
We reverse the respective rejections of appellants’
claims under 35 U.S.C. § 103.
For the more specific reasons delineated, infra, our
assessment of independent claims 1, 13, 18, 21, 30, 37, 48, 53,
59, and 62, in particular, and the applied prior art, reveals to
us that the subject matter of these claims would not have been
suggested to one having ordinary skill in the art on the basis of
the evidence of obviousness before us.
Each of the examiner’s rejections is founded upon the
basic combination of the Johnson and Toyoda patents.
The applied patent to Johnson, also cited in
appellants’ specification (page 2), addresses a keyboard assembly
(typewriter) wherein a character selection mechanism 28
Appeal No. 95-3270
Application 08/080,689
6
(Figure 1) is used to select a particular character and
thereby establish which daisy wheel printing unit 27 and print
element 84 will be activated to print the selected character.
As an alternative, the patentee (column 10, lines 50 through 53,
and column 11, lines 33 through 40) contemplates generating a
digital address for retrieving a prerecorded storage character to
be printed.
The Toyoda patent teaches a photoelectric reader which
enables one to record only a selected portion of an original,
such as a portion of a page document. This is accomplished by a
reader part R moving on an original 8 to read or scan selected
image data and transform same into electric signals, which
signals are used for effecting the recording of the images on
paper 7 in a printer part P (Figure 1).
While, as evidenced by the Toyoda teaching,
photoelectric readers are certainly known, it is readily apparent
to us that one having ordinary skill in the art, absent
appellants’ own explicit teaching, would not have been motivated,
from a combined consideration of the respective teachings of
Johnson and Toyoda alone, to alter the teaching of Johnson as
Appeal No. 95-3270
Application 08/080,689
7
proposed. In the present case, we believe it is fair to say that
inappropriate reliance upon appellants’ own teaching and
impermissible hindsight would have been the only basis for
bringing the teachings of the Johnson and Toyoda references
together to effect the claimed invention. As to the disclosure
of the Bennett patent, we find that it simply does not overcome
the deficiency noted above relative to the teachings of Johnson
and Toyoda.
In summary, this panel of the board has:
reversed the rejection of claims 1 through 5, 11, 13,
16, 18, 21, 22, 24, 25, 27 through 29, 37 through 40, 46, 48, 51,
53, 54, 56, 57, and 62 under 35 U.S.C. § 103 as being
unpatentable over Johnson in view of Toyoda; and
reversed the rejection of claims 6 through 10, 14, 15,
30, 41 through 45, 49, 50, and 59 under 35 U.S.C. § 103 as being
unpatentable over Johnson in view of Toyoda and Bennett.
Appeal No. 95-3270
Application 08/080,689
8
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 95-3270
Application 08/080,689
9
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