111 F.3d 1569 (Fed. Cir. 1997), 96-1391, In re Lueders

Docket Nº:96-1391.
Citation:111 F.3d 1569
Party Name:42 U.S.P.Q.2d 1481 In re William R. LUEDERS.
Case Date:April 24, 1997
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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111 F.3d 1569 (Fed. Cir. 1997)

42 U.S.P.Q.2d 1481

In re William R. LUEDERS.

No. 96-1391.

United States Court of Appeals, Federal Circuit

April 24, 1997

Rehearing Denied May 22, 1998.

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Ronald O. Neerings, Texas Instruments Incorporated, of Dallas, TX, argued for appellant. With him on the brief was Jay M. Cantor, Washington, DC.

Joseph G. Piccolo, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, U.S. Department of Commerce, Arlington, VA, argued for appellee. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Karen A. Buchanan, Associate Solicitor. Of counsel was David J. Ball, Jr., Associate Solicitor.

Before RICH, MAYER and LOURIE, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) affirming the rejection of claims 78-99 of patent application 07/853,356 entitled "Keyboard with Flexible Display and Prompt Capability" (Lueders application). The Board affirmed the rejection of the claims as obvious under 35 U.S.C. § 103 (1994) on grounds other than those relied upon by the Examiner. We reverse.


The Lueders application is a continuation of several prior continuation applications, all having a priority date of August 27, 1986. Claims 78-99 are the only remaining claims in the application. Of these, only Claim 78 and Claim 92 are independent. Claim 78 is representative for purposes of the issues raised in this appeal and is reproduced below.

Claim 78:

A device comprising:

a plurality of data generating elements individually operable and responsive to pressure; and

an electrically programmable display covering said plurality of elements for providing visual indicia associated with said plurality of elements anywhere on said display and operative to flex sufficient [sic] to actuate at least one of said plurality of elements responsive to pressure exerted on said display.

Claim 92 differs from Claim 78 in pertinent part by the addition of a processor for applying signals to the display.

A preferred embodiment of the Lueders invention is depicted in the following Fig. 2 taken from the Lueders application, and described in the detailed description of the invention. This exploded view shows the major components. Starting from the bottom, there is a printed circuit board (26) 1 on which a plurality of pressure actuated electrical switches (28) are mounted. A static or electromagnetic shield (32) is positioned to completely cover the switches and circuits. A backlighting panel (34) is located on top of the shield, followed by a flexible liquid crystal display (36) over the backlight. Lastly, a frame (41) peripherally clamps the display, backlight, and shield to the printed circuit board.

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The meaning of the claims is explained in the specification and was further elucidated at oral argument. The clause "a plurality of data-generating elements individually actuable in response to pressure" means a pressure responsive keyboard made up of pressure-actuated switches. An electrically programmable display is operatively associated with the keyboard to provide visual indicia associated with the keys. Importantly, the display is sufficiently flexible so that pressure on the display will actuate one of the keys on the keyboard. In one representative embodiment, the invention is an interactive programmable keyboard comprising a flexible liquid crystal membrane display that fits over a keyboard such that the displays and functions associated with particular keys can change dynamically in response to user input, to prior programming, or even at random. According to the Lueders application's summary of invention, the display provides the advantage of allowing the user to be interactive with a processing system such that the particular instructions or functional indicia displayed on the screen above each key can change in response to various key depressions and thereby enable a user to enter further and different processing instructions using the same keyboard. The claimed invention is intended to be used for any dynamic input and output. One such use would be as a responsive keyboard where the visible indicia corresponding to each key change in response to actuation of the key. Because the keys are claimed generically as pressure-sensitive data-generating elements, however, they could be small dots rather than large keys, in which case the apparatus could be used as a graphical input and output device, like an electronic sketch-pad.

The Examiner rejected all claims as obvious over a primary reference, U.S. Patent No. 4,403,965 to William R. Hawkins ("Hawkins"), in view of three secondary references. The Board affirmed the examiner's rejection, but "for different reasons." Relying on the general level of skill in the art, rather than on any specific disclosures of secondary references, the Board held that Hawkins sufficiently suggested all elements of the claimed invention to render it obvious.


We review the Board's ultimate legal conclusion of obviousness de novo. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566, 1 USPQ2d 1593, 1596 (Fed.Cir.1987). This legal conclusion, however, rests on several factual findings, including among others, what a prior art reference teaches or suggests--two different inquiries, as well as the secondary indicia of obviousness discussed by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545 (1966), see In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041 (Fed.Cir.1992); Panduit, 810 F.2d at 1579 n. 42, 1 USPQ2d at 1606 n. 42. We

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review these underlying findings of fact for clear error. See, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.Cir.1991).

The primary reference in this case, Hawkins, teaches an electronic teaching apparatus designed for use by children, which includes a speech synthesizer that audibly reports the subject of a pictorial representation when it is pressed by the user. For example, when a user presses the picture of a tree, the machine utters the word "tree." An embodiment of the Hawkins apparatus is shown in the following Figures 2a and 2b, taken from Hawkins.


Hawkins teaches a pressure-responsive keyboard (3) 2 that is programmable through actuation of coding switches (7) on the side of the keyboard. This keyboard is used in conjunction

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with a plurality of coded flexible overlays (2), each displaying a series of pictorial representations and having a set of four coding apertures (6). The coding apertures mechanically engage the coding switches (7), shown in Fig. 2b, to selectively determine which sounds will be produced in response to activation of the keys underlying the particular pictorial representations on the particular flexible overlay then in use.

The Board made the following findings concerning Hawkins:

The Hawkins teaching apparatus essentially requires only two features with respect to its inputs and visual outputs. The visual outputs must be variable to give the device sufficient flexibility and practical application. The inputs must be actuable by the user by touching or depressing a specific portion of the display overlay.

According to the Board, this is a very broad teaching of inputs and outputs that would be combined by one of ordinary skill in the art to form the Lueders invention. The Board found the teaching to be augmented by the suggestion...

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