Ex Parte Lieb et al

Patent Trial and Appeal Board

Nov 14, 2014

11518445 (P.T.A.B. Nov. 14, 2014)

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.
11/518,445 09/11/2006 Juergen Lieb 1020/0158PUS1 4442
60601 7590 11/17/2014
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
BENLAGSIR, AMINE
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
11/17/2014 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 JUERGEN LIEB, BERND GROSSMAN, and
RUDOLF LIMPERT
___________

Appeal 2012-007527
Application 11/518,445
Technology Center 2600
____________

Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1, 2, and 4–11, all pending claims of this application.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
December 22, 2011), Appellants’ Reply Brief (“Reply Br.,” filed April 11,
2012), the Examiner’s Answer (“Ans.,” mailed March 13, 2012), and the
originally filed Specification (“Spec.,” filed September, 11, 2006).
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Application 11/518,445

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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to data assigned to keys and/or accessory
devices stored in a programmable memory of a freely programmable
keyboard. Spec. ¶ 2. The invention uses only so much memory space per
key and/or accessory device as is absolutely necessary in that the occupied
memory areas are directly adjacent one another. Spec. ¶ 11.
Claim 1, reproduced below, is illustrative with the disputed limitation
in italics:
1. A method of retrieving data assigned to keys and/or
accessory devices of a freely programmable keyboard and
stored in at least one programmable memory, wherein via
memory addresses stored in a first area of the programmable
memory, the memory locations containing the data are
addressed in the second area of the programmable memory,
wherein the assigned data are stored in the programmable
memory in such a way that per key and/or accessory device
only as much memory space is used as is necessary for the data
to be stored and that the individual memory areas occupied by
data are immediately adjacent to one another.

THE REJECTION
Claims 1, 2, and 4–11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nguyen (US 2006/0262002 A1; Nov. 23, 2006) and
Drescher (US 2002/0166021 A1; Nov. 7, 2002).

Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2010).
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Application 11/518,445

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We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. App. Br. 4–9; Reply Br. 1–2. We are
unpersuaded by Appellants’ contentions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and as set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (see Ans. 7–10). However, we highlight and
address specific arguments and findings for emphasis as follows.

ISSUE
Appellants’ arguments present the issue: Has the Examiner erred by
combining Nguyen and Drescher and finding the combination teaches or
reasonably suggests the disputed limitation of claim 1?

ANALYSIS
Appellants argue Drescher (in combination with Nguyen) fails to
disclose the disputed limitation of claim 1 asserting, “nothing in the record
suggests that it would be obvious to use such memories [(as disclosed in
Drescher)] to avoid gaps.” App. Br. 6. Appellants further contend,
“Drescher does not indicate that it is the stack and pointers that avoid the
memory gaps.” Id. We disagree. The Examiner has identified specific
teachings of Drescher disclosing a memory structure that specifically avoids
gaps in the utilized memory. Ans. 5 (citing Drescher Abstract and ¶¶ 4, 16).
Specifically, Drescher’s Abstract recites, “[I]n order to make available a
stack in which the memory space can be optimally utilized without the
occurrence of memory gaps, the use is proposed of at least one memory
pointer that has a group address component and an element address
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Application 11/518,445

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component.” Therefore, contrary to Appellants’ assertion, Drescher
specifically discloses that the memory structures avoid the gaps in memory.
See also Ans. 9. Thus, the combination of Nguyen and Drescher clearly
discloses the disputed limitation.
Regarding the reason or motivation to combine Nguyen and Drescher,
Appellants argue the Examiner fails to properly support the proposed
combination because the Examiner has failed to identify the proposed
modification to Nguyen (App. Br. 5–6) and a proper reason for modifying
Nguyen has not been provided (App. Br. 7–9). We are not persuaded by
Appellants’ arguments that the Examiner erred. Appellants contend the
record is insufficient to show that the skilled artisan, presented with the
Drescher patent, would create the proposed improved remote controller
without further guidance as to the specific changes needed in Nguyen to
implement the features of Drescher. App. Br. 5. However, “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); and
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
We find the Examiner has sufficiently identified the proposed modification
to Nguyen as, “to substitute the memory utilization of Drescher et al. the
data retrieving/assigning method of Nguyen et al.” Ans. 5–6, 8–9. We
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agree with the Examiner that Drescher teaches or reasonably suggests use of
its disclosed memory structures to optimally utilize memory by avoiding
gaps in memory. Ans. 9–10.
Furthermore, the Examiner explains, “improvement to achieve
optimal/efficient data arrangement in a memory has been conventionally
desired in all sort of electronic devices” (Ans. 9). We agree. The
need/desire to optimize memory utilization is well-known and ubiquitous.
See, e.g., Nguyen ¶ 26 (“Storing information in this manner is preferred,
although not required, as it optimizes use of memory space . . . .” (emphasis
added)). “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability.” Id. at 417. We
conclude the Examiner’s findings articulate a reason based on rational
underpinnings. Specifically, the Examiner finds programmable keyboards
are well known and similar to Nguyen’s programmable remote controller
and “to substitute the memory managing method of Nguyen with the
memory managing method of Drescher et al. would have been obvious to
one of ordinary skill in the art, since it would yield predictable result.” Ans.
10. Thus, we agree with the Examiner that the combination of the familiar
elements of Nguyen and Drescher produces a predictable result of more
efficient/optimal use of memory—i.e., teaches or reasonably suggests the
disputed limitation as a predictable result of well-known features of the prior
art. Appellants’ Reply Brief does not persuade us of error in the Examiner’s
reasoning.
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Application 11/518,445

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In view of the above discussion, we are not persuaded the Examiner
erred by combining Nguyen and Drescher and finding the combination
teaches or reasonably suggests the disputed limitation of claim 1.
Therefore, we sustain the Examiner’s rejection of independent claim
1. Appellants argue the Examiner erred in rejecting independent claim 2 and
dependent claims 4–11 for the same reasons as claim 1 (App. Br. 9) and
thus, for the same reasons as claim 1, we sustain the rejection of claims 2
and 4–11.
DECISION
For the above reasons, the Examiner’s decisions rejecting claims 1, 2,
and 4–11 under § 103 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

msc