Ex parte Gifford

• Decision Date: 09 May 2001
• Docket Number: 990,Appeal 1998-0631,Application 07/957
• Parties: Ex parte HENRY GIFFORD
• Court: Patent Trial and Appeal Board

Ex parte HENRY GIFFORD

Appeal No. 1998-0631

Application 07/957, 990^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 9, 2001

This Opinion is Not binding Precedent of the Board.

ON BRIEF

Before SCHAFER, BARRETT, and RUGGIERO, Administrative Patent Judges.

DECISION ON APPEAL

BARRETT, Administrative Patent Judge.

This is a decision on appeal under 35 U.S.C. § 134 from an examiner's refusal to allow claims 1-10, 12, 14-47 97-140, and 206-211. Claims 48-96 and 141-192 have been withdrawn from consideration by Appellant pursuant to a restriction requirement. Claims 11, 13, and 193-205 have been canceled.

We affirm-in-part.

BACKGROUND

The disclosed invention relates to a keyboard that generates signals indicative of key actuation and of the pressure with which the user has pressed the keys. If the pressure exceeds a certain threshold, or a certain average pressure, the key event is annunciated. By warning the user if too much pressure is being employed, injuries such as carpal tunnel syndrome, tendonitis, and repetitive motion syndrome can be avoided.

Claim 1 is reproduced below.

1. A keyboard apparatus comprising:

a keyboard with depressible keys;

means mechanically engaged with the keys and responsive to the pressing of the keys for generating electrical key signals indicative thereof;

output means conveying the key signals externally from the keyboard;

pressure sensing means mechanically engaged with the keys and responsive to pressure upon particular ones of the keys for generating electrical pressure signals indicative of the pressure on the particular ones of the keys; and

alarm means responsive to the pressure signals being above a predetermined threshold for generating an alarm signal.

The Examiner relies on the admitted prior art (APA) at page 7 lines 2-4, of the specification, and on the following prior art:

Parker

3, 612, 240

October 12, 1971

Johnson et al. (Johnson)

5, 056, 057

October 8, 1991

John et al. (John) (United Kingdom patent application)

1, 330, 742

September 19, 1973

The Human Factor In Computers, IBM Technical Disclosure Bulletin, Vol. 30, No. 1, June 1987, pp. 478-80 (hereinafter "Human Factor").

Claims 2-8, 17-23, 31-44, 99-112, and 121-134 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which the applicant regards as his invention because the Examiner and Appellant do not agree on whether the claims read on the species elected in a restriction requirement. See Manual of Patent Examining Procedure (MPEP) § 821 (5th ed., Rev. 14, Nov. 1992).^[2]

Claims 1, 9, 10, 12, 14-16, 24-30, 45-47, 97, 98, 113-120, 135-140 and 206-211 stand rejected under 35 U.S.C. § 112, second paragraph, as vague and indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as his invention.

Claims 1, 24, 26, 97, 117, and 119 stand rejected under 35 U.S.C § 102(b) as anticipated by the "Human Factor" publication. The Examiner has apparently withdrawn the rejection of claims 9, 10, 27, 29, 30, 98, 113, 120, 136 137, and 207 under 35 U.S.C. § 102(b), as set out in the Office Action of Paper No. 20, because the rejection is not repeated in the Examiner's Answer. See Ex parte Emm, 118 U.S.P.Q. 180, 181 (Bd. App. 1957) (rejection not referred to in the examiner's answer is assumed to have been withdrawn). This renders Appellant's third issue (claims 10, 30, 113, and 137), fourth issue (claims 9, 29, 98, and 136), fifth issue (claim 207), and sixth issue (claims 27 and 120) moot.

Claims 12, 14-16, 25, 45-47, 114-116, 118, 138-140, 206, 210, and 211 stand rejected under 35 U.S.C. § 103 as being unpatentable over the "Human Factor" publication.

Claims 28 and 135 stand rejected under 35 U.S.C. § 103 as being unpatentable over the "Human Factor" publication and Johnson.

Claims 208 and 209 stand rejected under 35 U.S.C. § 103 as being unpatentable over the "Human Factor" publication and the APA, or further in view of either John or Parker.

It appears that the Examiner has withdrawn the rejection of claims 14-16, 26, 27, 45-47, 114-116, 119, 120, and 138-140 under 35 U.S.C. § 112, first paragraph, as failing to provide an enabling disclosure, as set out in the Office Action of Paper No. 20, because the rejection is not repeated in the Examiner's Answer. See Emm, 118 U.S.P.Q. at 181. This renders Appellant's tenth issue moot.

We refer to the Office Action (Paper No. 20) (pages referred to as "OA") and the Examiner's Answer (Paper No. 27) (pages referred to as "EA"), which incorporates by reference the rejection in Paper No. 20, for a statement of the Examiner's position, and refer to the replacement Appeal Brief (Paper No. 26) (pages referred to as "Br") for a statement of Appellant's arguments thereagainst.

OPINION

Grouping of claims

Claims not separately argued are considered to stand or fall together with broadest claim in the group under rejection or with the claims from which they depend. See 37 CFR § 1.192(c)(7) (1996) (claims stand or fall together unless appellant includes a statement that the claims do not stand or fall together and, in the argument section, explains why the claims of the group are believed to be separately patentable). Cf. In re Dillon, 919 F.2d 688, 692, 16 U.S.P.Q.2d 1897, 1900 (Fed. Cir. 1990) (in banc) ("It is not the practice of this court to review claims that an applicant has not separately argued at the Board level, because, inter alia, we lack the benefit of the Board's reasoned decision on the separate patentability of those claims.")

Only argued limitations are addressed

We confine our analysis to issues and differences argued in the briefs. Under USPTO rules, an appellant's brief is required to specify the specific limitations in the rejected claims which are not described in the prior art or rendered obvious over the prior art. See 37 CFR § 1.192(c)(8)(iii) & (iv). Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 U.S.P.Q.2d 1281, 1285 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art."); In re Wiechert, 370 F.2d 927, 936, 152 U.S.P.Q. 247, 254 (CCPA 1967) ("This court has uniformly followed the sound rule that an issue raised below which is not argued in this court, even if it has been properly brought here by a reason of appeal, is regarded as abandoned and will not be considered. It is our function as a court to decide disputed issues, not to create them."); In re Wiseman, 596 F.2d 1019, 1022, 201 U.S.P.Q. 658, 661 (CCPA 1979) (arguments must first be presented to the Board before they can be argued on appeal).

35 U.S.C. § 112, second paragraph Claims 2-8, 17-23, 31-44, 99-112, and 121-134

Procedural background

In a Restriction Requirement (Paper No. 5) entered November 9, 1993, the Examiner stated (Paper No. 5, p. 2):

1. This application contains claims directed to the following patentably distinct species of the claimed invention:

- Species 1, shown in figure 4.

- Species 2, figure's [sic] 7-8.

- Species 3, figure 11.

- Species 4, figure 12.

- Species 5, figure's [sic] 13A-13B.

Applicant is required under 35 U.S.C. § 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claim is considered generic.

In a Response (Paper No. 6) entered December 9, 1993, Appellant elected species 1, shown in figure 4, and stated: "Claims that are thought to relate to the figure are claims 1-47 and 97-140."

The Examiner entered a first Office Action (Paper No. 7) on February 1, 1994, holding, without explanation, that claims 2-10, 14-23, 26-47, 98-116 and 119-140 are not readable on the elected species of figure 4 and are withdrawn claims from consideration (Paper No. 7, p. 1).

Appellant filed an Amendment (Paper No. 10) on May 17, 1994, traversing the Examiner's action (Paper No. 10, pp. 17-23).

The Examiner entered an Office Action (Paper No. 11) on August 1, 1994, maintaining that claims 2-10, 14-23, 26-47, 98-116, and 119-140 are not readable on the elected species of figure 4 because the claims "involve elements or teachings not shown in Fig. 4" (Paper No. 11, p. 2) and noting that the claims are withdrawn from consideration.

Appellant filed a second Amendment (Paper No. 12) on November 14, 1994, maintaining the traversal of the Examiner's action (Paper No. 12, pp. 16-17).

The Examiner entered a Final Rejection (Paper No. 15) on June 5, 1995, maintaining that claims 2-10, 14-23, 26-47, 98-116, and 119-140 are not readable on the elected species of figure 4 because the claims "involve elements or teachings not shown in Fig. 4" (Paper No. 15, p. 2) and noting that the claims are withdrawn from consideration.

Appellant filed a Petition under 37 CFR § 1.144 (Paper No. 16) on December 5, 1994, before entry of Paper No. 15, which was lost and resubmitted by facsimile on June 20, 1995, requesting that claims 2-10, 14-23, 26-47, 98-116, and 119-140 be considered and not withdrawn from consideration.

In a Decision on Petition (Paper No. 17) entered July 11, 1995 the Director of Group 2600 granted Appellant's "Petition under 37 CFR 1.144, filed on December 5, 1994, seeking reversal of the examiner's holding that claims 2-10, 14-23, 26-47, 98-116 and 119-140 are not directed to the elected species and thereby withdrawn from consideration" (Paper No. 17, p. 1). The decision on petition stated that "[u]pon further consideration and per MPEP 821, it is held that claims 2-10, 14-23, 26-47, 98-116 and 119-140 should be...