Wai-Lin Maw

Patent Trials and Appeals Board

Feb 27, 2020

12390482 - (R) (P.T.A.B. Feb. 27, 2020)

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.
12/390,482 02/22/2009 Wai-Lin Maw 5198
75011 7590 02/27/2020
CUBIC DESIGN STUDIOS LLC
3383 N FIVE MILE RD #261
BOISE, ID 83713-3925
EXAMINER
BALSECA, FRANKLIN D
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
WILLIAMMAW@AOL.COM
WILLIAMMAW@GMAIL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WAI-LIN MAW
____________

Appeal 2018-007753
Application 12/390,482
Technology Center 2600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereafter “Request”) on January 12, 2020 for reconsideration
of our Decision mailed December 13, 2019 (hereafter “Decision”). We
consider our Decision in light of Appellant’s Request, but we decline to
change the Decision.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cubic
Design Studios LLC. Request 3.
Appeal 2018-007753
Application 12/390,482
2
ANALYSIS
A Request for Rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.” 37
C.F.R. § 41.52(a)(1). It may not rely upon new evidence or new arguments
except as permitted by §§ 41.52(a)(2)–(4). Id. A Request for Rehearing is
not an opportunity for the requesting party to reargue its case or merely to
express disagreement with the Decision.
Claim 1
Appellant contends the Board did not address Appellant’s arguments
as to “why Zadesky’s teaching alone would have satisfied the [E]xaminer’s
reason to combine ‘ . . . because it will permit the touchpad to be used as a
mouse replacement device and also as an input device when the push buttons
are actuated’ . . . [and] therefore would have been obvious not to combine
the references.” Request 8. Specifically, Appellant argues “modifying
Tiphane to include Zadesky’s touch functionality to serve as a mouse
replacement pointing device changes the sequen[ce] of events and
generation of signals for the same sequence of events (hover to depress key)
. . . which would cause signal ambiguity without any measures to
differentiate the true intent of the key press.” Request 9. Appellant also
cites to an embodiment of Tiphane disclosing displaying the function of a
key in a window, and argues that this, too, would render Tiphane inoperative
due to signal ambiguity. Request 10.
Appellant is incorrect that the foregoing arguments were not
addressed in the Decision. See Decision 4–8. As set forth in the Decision,
Zadesky teaches a touch pad that provides a first type of input that tracks
movement and a second type of input involving a pushbutton. Decision 6
(citing Zadesky col. 7, ll. 25–31; col. 8, ll. 25–46). Tiphane describes using
Appeal 2018-007753
Application 12/390,482
3
a proximity detector to indicate the function of a key on a keyboard without
activating the function. Decision 7 (citing Tiphane, col. 1, ll. 58–67).
Tiphane teaches that a different proximity of the user’s finger to the key or
pressure in the user’s touch on the key may activate different functions.
Decision 6 (citing Tiphane, col. 4, ll. 14–26). Tiphane does not require that
the function is invoked at the touch of a key. See Tiphane, col. 1, ll. 63–66
(“This allows a user to determine what a particular key on a keyboard or
other device will do by simply hovering the user’s finger near the top of the
key, or lightly touching the key without depressing it.”) (emphasis added).
Appellant’s arguments involve various embodiments of Tiphane. E.g.,
Request 9–10 (citing Tiphane, col. 2, ll. 3–5 (“Alternately, a small window
on a computer display may be used.”) (emphasis added); col. 2, l. 66–col. 3,
l. 2 (“For example, the event may be the indication of an e-mail message.”)
(emphasis added)). However, as discussed in the Decision, and stated by the
Examiner, “[t]he combination of the references was not used to show the
combination of all of the functionalities taught by the references.” Decision
6 (citing Ans. 3 (alteration in original) (emphasis added)). The combination
proposed by the Examiner permits use of Zadesky’s touch functionality to be
used to track the user movement, rather than to invoke a function. See Ans.
3. Accordingly, for the reasons set forth in the Decision (Decision 4–8),
Appellant’s arguments are not persuasive.

Claim 11
Appellant takes issue with the statement in the Decision that
“[a]lthough Tiphane mentions an embodiment where a ‘speaker of a
computer can provide an audible indication of the key function, which
would especially be useful for blind users,’ there is no further disclosure in
Appeal 2018-007753
Application 12/390,482
4
Tiphane to support that its primary function or intended purpose is for the
blind.” Request 11 (citing Decision 9).
Appellant argues “despite a number of references to ‘window’ and
‘display’ (Tiphane col. 2 line 3–5) there is no further disclosure in Tiphane
to support that its primary function or intended purpose of the embodiment
in Fig. 3 is for the sighted.” Request 11. According to Appellant, “[i]n
absence [of] an express disclosure for either the sighted or the blind, if it can
be deduced that the embodiment in Fig. 3 is for the sighted, then, it must
also be the case that it can be deduced that the embodiment in Fig. 4 is for
the blind.” Request 11. Appellant further argues “[h]aving derived and
established that the embodiment in Fig. 4 is for the blind, it entails that the
proposed modification (Dec. on Appeal 9) would make Tiphane inoperative,
which would be analogous to replacing the Brail with a display screen for
the blind.” Request 12.
Appellant further argues that “[t]he Board did not address the
argument that the proposed modification would rather make the combination
feel less like a regular keyboard instead.” Request 12. Appellant argues
“[t]he proposed modification would not only make the primary reference
inoperative, but also fail to serve the purpose as claimed by the office (more
like a regular keyboard), refuting reasonable expectations for success for
achieving the claimed invention.” Request 12.
Appellant also argues
The Board seemed to have suggested that obviousness of
the prior art is not refuted when the meaningful advantages
outweigh disadvantages “ . . . the mere existence of
disadvantages resulting from a modification does not refute the
obviousness of the modification when the prior art indicates the
modification also offers an advantage.” (Dec. on Appeal 10,
Medichem, S.A. v. Rolabo, S.L 437 F.3d 1157 (Fed. Cir. 2006)
Appeal 2018-007753
Application 12/390,482
5
and Winner Intern. Royalty Corp. v. Wang 202 F.3d 1340 (Fed.
Cir. 2000)).

Appellant submits that the reverse would also be true by
the same rationale, refuting the obviousness of the prior art,
rendering the prior art unobvious, when a feature that is
distinctly advantageous is replaced with another feature that
does not offer a meaningful advantage, i.e. replacing the air gap
between keys with a display screen (Appeal Br. 15–16), since
the disadvantages heavily outweigh meaningful advantages.
Request 12–13 (emphasis added).
Appellant is incorrect that these arguments were not addressed in the
Decision. See Decision 4, 8–10. We note that in the Decision, we
acknowledged that we have adopted as our own the Examiner’s findings and
conclusions as set forth in the Examiner’s Answer and Final Action.
Decision 4, 10. Therefore, to the extent Appellant is arguing that a point
was overlooked because it was not explicitly addressed, we find that
argument unavailing. Furthermore, Appellant appears to be rearguing its
case and disagreeing with our findings, rather than addressing a point that
was overlooked. We remain unpersuaded that the intended purpose or
primary function of Tiphane’s Figure 4 is for the blind. See Decision 9. The
only mention of use by the blind is in reference to the use of a speaker for an
audible indication of the key function. Tiphane, col. 2, ll. 3–5. As stated in
our Decision, there is no further disclosure in Tiphane to support that its
primary function or intended purpose (for Figure 4 or otherwise) is for blind
users. See Decision 9.
Claims 18 and 21

Appellant argues:

Appeal 2018-007753
Application 12/390,482
6
The Board did not address why the unscaled drawing
(Miyajima Fig. 2 & 3) would serve as a basis for protrusions as
claimed by the proposed combination of the office (Appeal Br.
18).

Nor did the Board explain how the paint markings or the
display of the function on the key on a display screen (Dec. on
Appeal 10) would provide recognizable tactile feedback like the
protrusions that can be felt laterally.

Both the claimed invention and the rational underpinning
of the office clearly claim a limitation for protrusions that can
be felt laterally (Appeal Br. 17).

Wherein, the combined references (Miyajima et al.
(6,518,958)) combination does not offer a clear and convincing
basis for protrusions that can be felt laterally, which is a
specific requirement of the claimed invention, there is no basis
for a prima facie for obviousness. Since, the proposed
combination lacks a key limitation, the proposed combination
teaches away from the claimed invention.
Request 13–14. Appellant presents the same arguments for claim 21.
Request 14–15.
Appellant is incorrect that these arguments were not addressed in the
Decision. See Decision 4, 11–13. Again, we note that in the Decision, we
acknowledged that we have adopted as our own the Examiner’s findings and
conclusions as set forth in the Examiner’s Answer and Final Action.
Decision 4, 12. Appellant appears to be rearguing its case and disagreeing
with our findings, rather than addressing a point that was overlooked. For
the reasons set forth in the Decision, we remain unpersuaded that Examiner
erred in finding that the combination of Miyajima and Tiphane teaches or
suggests the limitations in claims 18 and 21. Decision 11–13.

Appeal 2018-007753
Application 12/390,482
7
DECISION
The Request for Rehearing is denied.
Outcome of Decision on Rehearing:

Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1–10, 17 103(a) Tiphane, Zadesky 1–10, 17
11–16 103(a) Tiphane, Takala,
Nishikawa
11–16
18–25 103(a) Miyajima, Tiphane 18–25
Overall
Outcome
1–25

Final Outcome of Appeal after Rehearing:

Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
17 112, first
paragraph
Written
Description
17
1–10, 17 103(a) Tiphane, Zadesky 1–10, 17
11–16 103(a) Tiphane, Takala,
Nishikawa
11–16
18–25 103(a) Miyajima, Tiphane 18–25
Overall
Outcome
1–25

DENIED