Ex Parte Lagnado et al

Patent Trial and Appeal Board

Mar 31, 2014

11413948 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ISAAC LAGNADO and TIMOTHY NEILL
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Appeal 2011-011805
Application 11/413,948
Technology Center 2600
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Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19 and 21-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
A system has a first component and a second component. The second
component includes a first state, which restricts physical access of the first
component by a user, and a second state, which permits physical access of
the first component by the user. The system includes logic that is responsive
to the second component transitioning from the first state to the second state,
which triggers disabling of at least one function of the system while
permitting all remaining functions of the system to remain enabled. See
Abstract.
Independent claims 1 and 26, reproduced below, are representative of
the subject matter on appeal.
1. A system comprising:

a first component;

a second component that, when in a first state, restricts physical
access of said first component by a user, and when said second
component is in a second state said second component permits
physical access of said first component by the user; and

logic that, responsive to said second component transitioning from
said first state to said second state, triggers disabling of one function
of said system while permitting all remaining functions of said system
to remain enabled.

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26. A system comprising:

a subscriber identity module (SIM);

a door that, when in a first state, restricts physical access of said SIM
by a user, and when said door is in a second state said door permits
physical access of said SIM by the user; and

logic that, responsive to said door transitioning from said first state to
said second state, triggers disabling a network connection of said
system while permitting all non-network connection functions of said
system to remain enabled.

REFERENCES and REJECTIONS
1. The Examiner rejected claims 1-3, 6-10, 15-17, 21, 22, and 25 under
35 U.S.C. § 103(a) as being unpatentable over Nishimura (U.S. Pub.
No. 2001/0032883 A1, Oct. 25, 2001) in view of Akram et al. (U.S.
Pub. No. 2004/0063464 A1, Apr. 1, 2004) and Kim et al. (U.S. Pat.
No. 6,751,446 B1, Jun. 15, 2004).
2. The Examiner rejected claims 4, 5, and 23 under 35 U.S.C. § 103(a)
as being unpatentable over Nishimura in view of Akram and Kim and
further in view of Ishikawa et al. (U.S. Pub. No. 2008/0014967 A1,
Jan. 17, 2008).
3. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Nishimura in view of Akram and Kim and further
in view of Malthouse (U.S. Pub. No. 2002/0039910 A1, Apr. 4,
2002).
4. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Nishimura in view of Akram and Kim and
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further in view of Van Gen (U.S. Pat. No. 6,535,750 B1, Mar. 18,
2003).
5. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Nishimura in view of Akram and Kim and further
in view of Rohrbach (U.S. Pat. No. 5,898,783, Apr. 27, 1999).
6. The Examiner rejected claims 18 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Nishimura in view of Akram and Kim and
further in view of Bear et al. (U.S. Pub. No. 2006/0006230 A1, Jan.
12, 2006).
7. The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Nishimura in view of Akram, Kim, and Ishikawa
and further in view of Paksoy et al. (U.S. Pub. No. 2006/0129848 A1,
Jun. 15, 2006).
8. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Akamatsu et al. (U.S. Pat. No. 6,304,454 B1, Oct.
16, 2001) in view of Hayashi (U.S. Pat. No. 6,650,913 B1, Nov. 18,
2003) and further in view of Kim.

ISSUES
The issues are whether the Examiner erred in finding:
1. the combination of Nishimura, Akram, and Kim teaches the use of
logic to trigger disabling of one function of a system responsive to a
component transitioning states while permitting all remaining
functions of the system to remain enabled; and
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2. the combination of Akamatsu, Hayashi, and Kim teaches all
remaining functions of the system remain enabled when the door
transitions from the first state to a second state as recited in claim 26.

ANALYSIS
Claims 1-19 and 21-25
Appellants argue that Kim does not teach “logic that, responsive to
said second component transitioning from said first state to said second
state, triggers disabling of one function of said system while permitting all
remaining functions of said system to remain enabled” (App. Br. 13; Reply
Br. 2).
We do not agree. We agree with the Examiner’s finding that Kim
(col. 5, ll. 43-48) teaches logic to enable or disable the speaker phone
function when the flip cover 7 is open or closed (An. 19). The claims, of
course, do not stand alone. Rather, they are part of a “fully integrated
written instrument” consisting principally of a specification that concludes
with the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (citations omitted). For that reason, claims “‘must be read in view of
the specification, of which they are a part.’ . . . [T]he specification ‘is always
highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” Id. (citations
omitted). The Specification (¶ [0016]) discloses that “[l]ogic . . . may
comprise hardware, software, firmware, or any combination thereof.” The
Specification discloses logic that determines whether a function is to be
disabled (id.). The Examiner applied Kim, consistent with the disclosure in
Appellants’ Specification having hardware (elements 10 and 20), which uses
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logic to disable the speaker function when the flip cover 7 is closed (Ans.
19; Kim, col. 5, ll. 29-63; see Kim, Table 1).
We further agree with the Examiner that Kim permits all remaining
functions of the system to remain enabled when the one function is disabled
(Ans. 19). We note that “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). The Examiner finds that Kim teaches, “if the flip cover 7 is closed,
the sensor switch 10 is turned on, to provide a ‘low’ signal to the controller
20, that disables the speaker phone function, causing the mobile telephony
station to operate in the regular telephone mode” (col. 5, ll. 45-49 (emphasis
added)). A person of ordinary skill in the art would reasonably infer that
“regular operation” of the telephone would include all remaining functions.
Accordingly, we affirm the Examiner’s rejection of claims 1, 15, and
21, and for the same reasons the rejection of claims 2-14, 16-19, and 22-25.
Claim 26
Appellants argue that Hayashi does not teach the limitation of:
“responsive to said door transitioning from said first state to said second
state, triggers disabling a network connection while permitting all non-
network related functions of said system to remain enabled,” as recited in
claim 26 (App. Br. 19). Appellants argue that at least some of the network
related functions, such as the screen and keypad, cannot remain enabled
when the cover is closed (id. at 20; Reply Br. 2). Appellants argue that Kim
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does not teach all remaining functions of the system are enabled when the
speaker phone function is disabled (App. Br. 20).
We do not agree. We agree with the Examiner’s findings in the Final
Rejection (p. 16), which relied on Kim for a teaching that all remaining
functions of the system are enabled when the one function is disabled. Kim
teaches that the telephone operates in a regular mode when the speaker
function is disabled, supra.
We do not agree with Appellants’ argument that the screen and
keypad cannot remain enabled when the cover is closed. All of the features
of the secondary reference need not be bodily incorporated into the primary
reference, but consideration should be given to what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary
skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). While
the cover of Hayashi would prevent the access to the keypad and screen,
Kim clearly discloses a flip telephone with screen accessible through
window 8 when the cover 7 is closed (see Kim, Fig. 1; col. 3, ll. 35-37
(indicating that Figure 1 shows a flip cover closed)). Furthermore, the keys
3 and 9 are accessible when the cover 7 is closed (see id. at Fig. 1).
Accordingly, we affirm the Examiner’s rejection of claim 26.

CONCLUSIONS
The Examiner did not err in finding:
1. the combination of Nishimura, Akram, and Kim teaches the use of
logic to trigger disabling of one function of a system responsive to a
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component transitioning states while permitting all remaining
functions of the system to remain enabled; and
2. the combination of Akamatsu, Hayashi, and Kim teaches all
remaining functions of the system remain enabled when the door
transitions from the first state to a second state as recited in claim 26.

DECISION
The Examiner’s decision rejecting claims 1-19 and 21-26 is 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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