Ex Parte Yockey et al

Patent Trial and Appeal Board

Oct 31, 2016

13870848 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/870,848 04/25/2013
22879 7590 11/02/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Robert Francis Yockey
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83159885 9980
EXAMINER
MAMO, ELIAS
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT FRANCIS YOCKEY,
ROBERT ADAM BAUM, DAVID H. HANES, and RUDY WIDIAMAN
Appeal2015-007512
Application 13/870,848
Technology Center 2100
Before JUSTIN BUSCH, JOHN P. PINKERTON, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, L.P. (App. Br. 1.)
Appeal2015-007512
Application 13/870,848
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to configuring "one or more physical
characteristics of a peripheral device ... according to the identity of a user
of a primary device, such as a computing device." (Apr. 25, 2013
Specification ("Spec.") i-f 8.) Claim 8 is representative and is reproduced
below:
8. A method, comprising:
determining an identity of a user of a primary device;
determining user preferences associated with user; and
controlling an actuator to configure a physical
characteristic of a peripheral device in communication
with the primary device in accordance with the user
preferences associated with the determined identity of the
user.
Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Huang
Moore et al.
("Moore")
Bums et al.
("Bums")
US 2003/0197682 Al
US 2005/0083645 Al
US 7,117,369 Bl
Oct. 23, 2003
Apr. 21, 2005
Oct. 3, 2006
Claims 1--4, 8-10, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Huang in view of Bums. (See Final Office
Action (mailed Nov. 6, 2014) ("Final Act.") 2--4.)
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Application 13/870,848
Claims 5-7, 11-14, and 19-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Huang in view of Bums, and further in
view of Moore. (See Final Act. 4--5.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1-20.
Claims 1-5 and 7-20
With respect to claim 8, 2 the Examiner finds that:
Huang [teaches or suggests the last limitation of claim 8
but] does not teach determining an identity of a user of a
primary device; and determining user preferences associated
with the determined identity of the user.
On the other hand, Bums teaches a method and system
for determining an identity of a user of a primary device; and
determining user preferences associated with the determined
identity of the user (col. 3, lines 28-36).
(Final Act. 3.) Appellants disagree and contend that:
Bums merely discloses storing user profiles in a portable
smart card. As disclosed by Bums, such user profiles are used
for storing various "operating characteristics" that may be used
by an operating system to configure a computer. Operating
2 The November 6, 2014, Final Action addresses claim 8, but the Examiner
states that independent "claims 1 [] and 15 [] are substantially similar to
claim[] 8[], hence the rejection of claim[] 8[ is] applied accordingly." (Final
Act. 4.) Appellants in their February 6, 2015 Appeal Brief address claim 1,
but state that "[i]ndependent claims 8 and 15 each recite a similar feature"
for the limitation at issue. (App. Br. 6.) To avoid confusion, we address
claim 1 in this Decision, which will also apply to claims 8 and 15.
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Appeal2015-007512
Application 13/870,848
characteristics may include user interface schema, favorite lists,
etc. See Bums, col. 1, lines 19-21. Thus, as disclosed in Bums
and as is common in the field, user profiles are used to
configure software characteristics of a computer.
To the contrary, examples of Applicant's disclosure
provide for the configuration of a "physical characteristic",
such as a size of a mouse or various physical characteristics of a
keyboard. There is no teaching or suggestion in Burns of using
the user profiles to store any physical characteristics.
(App. Br. 6, emphasis added; see also Reply 2 ("There is no mention of any
physical characteristics in the cited portion of Bums. Instead, ... Bums
merely discloses storing of various 'operating characteristics."').) The
Examiner first responds that "Appellants are pointing to different paragraphs
of Bums that [were] not relied upon in the rejection of the claims." (Ans. 3.)
According to the Examiner, Bums teaches or suggests "determining an
identity of a user of a primary device; and determining user preferences
associated with the determined identity of the user." (Final Act. 3.)
Specifically, the Examiner points to a paragraph of Bums, which discloses:
The profile carrier 54 stores a user's profile in a secured
medium that can be conveniently transported. The profile
consists of user information that can be used to configure
computer 52 according to selected preferences and schema of
the user. The profile contains essentially all of the information
that is useful or personal to the user. For instance, a profile
might include a user's name, logon identity, access privileges,
user interface preferences (i.e., background, layout, etc.), mouse
control preferences (i.e., click speed, etc.), favorites lists,
personal address book, the latest electronic mail (sorted
according to user criteria) and so forth. One can also envision
that application tokens or keys can be stored on the carrier, and
that will allow the user to access or use the applications for
which he/she has tokens or keys.
(Bums, 3:28--42.) The Examiner further explains that
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Appeal2015-007512
Application 13/870,848
[r]egarding configuration of physical characteristics, the
Examiner cited Huang - the primary reference. Huang teaches
controlling of a nozzle to adjust/regulate air flow into a mouse
thereby increasing/decreasing the size of a computer mouse
according to the user's need .... The secondary reference (i.e. -
Bums) is cited as teaching determining identity of a user and
the user's preference that are stored in the computer so that the
stored preferences are used to configure a peripheral such as
mouse.
(Ans. 3--4.) In other words, it is "the combined teachings of Huang and
Bum[ s] [that] teach[ es or suggests] the claimed invention." (Ans. 4.)
Appellants have not persuaded us that the Examiner erred. We agree
with the Examiner's finding that Huang in view of Bums teaches or suggests
the limitations at issue. (Final Act. 2-3; Ans. 2-3.) Moreover, "one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references." See In re Keller,
642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
The Examiner also finds that one of ordinary skill in the art would
have been motivated to combine the teachings of both references "to retain
the user's profile and use the same setup when the mouse is connected to
different computers." (Final Act. 3.) Appellants further contend that
it is unreasonable to conclude that one of ordinary skill in the art
would combine the references as alleged by the Examiner [because]
Bums does not relate to configuration of physical characteristics.
[Instead,] Bums merely attempts to solve the problem of availability
of user profiles by providing user profiles on a portable smart card.
There is no attempt in Bums at addressing configuration of physical
characteristics based on a user's identity, as solved by examples of
Appeallant' s [sic] disclosure.
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Appeal2015-007512
Application 13/870,848
(App. Br. 7-8.) We are, however, not persuaded that Appellants have shown
the Examiner erred. We find that the Examiner provides sufficient
articulated reasoning having a rational underpinning, such that a person of
ordinary skill in the art would have been motivated to combine the teachings
of Huang and Bums. (Id.) See KSR Int'! Co., v. Teleflex, Inc., 550 U.S.
398, 415, 418 (2007).
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 8. Thus, we sustain the 35 U.S.C. § 103 rejection of
claim 8, as well as independent claims 1 and 15, which are not argued
separately. (App. Br. 5---6.) We also sustain the 35 U.S.C. § 103 rejections
of claims 2-5, 7, 9-12, 14, and 16-19, which depend on either claims 1, 8,
or 15 and are not argued separately. (App. Br. 4--8.)
Claim 6, 13, and 20
Claims 6, 13, and 20 recite "wherein the physical characteristic is at
least one of a split angle or a tenting angle." (Emphasis added.) The
Examiner finds that:
Moore teaches a pop-up keyboard with slope adjustment at any
desired angle (see fig. 2, the split angle formed by a
tented/sloped keyboard), wherein a motor can be used for
positioning or adjusting the keyboard peripheral/user device
(page 2, i-f26 and i-f22, lines 8-10).
(Final Act. 4, emphasis added.) Appellants, however, contend that:
As described in Appellant's disclosure, a split angle is
described as an angle separating various keyboard segments.
For example, with reference to Figure 5A (reproduced below),
Appellant's disclosure descr[ib]es moving "the keyboard
segments 510, 520 on the keyboard base 599 to configure the
split angle 530 in accordance with the user preferences."
Specification, paragraph [0026].
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Application 13/870,848
Further, Appellant's disclosure describes a tenting angle as an
angle varied by raising or lowering the inside edges of the
keyboard segments.
(App. Br. 8-9, emphases added.) According to Appellants, Moore neither
teaches nor suggests a split angle or tenting angle as claimed because the
tenting angle in Moore does not raise or lower on the inside edges of the
keyboard segments, similar to the example in the Specification. (App. Br.
10-11; Reply 3-5.)
Appellants' argument is unpersuasive because it is not commensurate
with the scope of the claims. For example, Appellants' argument suggests
that claims 6, 13, and 20 require, without support in the claim language, that
split angle and tenting angle be restricted to the embodiment in the
Specification. Moreover, Appellants have not offered persuasive argument
that the Examiner's interpretation is either overbroad or unreasonable. (Ans.
5; Final Act. 4--5.) See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(holding that although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims). Further, we
agree with the Examiner's finding that "Moore teaches a pop-up keyboard
with slope adjustment at any desired tenting angle." (Ans. 5; Moore i-fi-122,
26, FIG. 2.)
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claims 6, 13, and 20. Thus, we sustain the 35 U.S.C. § 103
rejection of claims 6, 13, and 20.
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Application 13/870,848
DECISION
The decision of the Examiner to reject claims 1-20 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)(l )(iv).
AFFIRMED
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