Ex Parte 6069614 et al

Patent Trial and Appeal Board

Jan 26, 2015

90012469 (P.T.A.B. Jan. 26, 2015)

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.
90/012,469 09/06/2012 6069614 11-25511 6298
7590 01/27/2015
TARA CHAND, C/O MAN MACHINE INTERFACE
TECHNOLOGIES LLC
2390 CRENSHAW BLVD. STE 239
TORRANCE, CA 90501
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/27/2015 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 MAN MACHINE INTERFACE TECHNOLOGIES LLC
Appellant
____________________

Appeal 2014-010010
Reexamination Control 90/012,469
Patent 6,069,614
Technology Center 3900
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
Man Machine Interface Technologies LLC, the patent owner
(hereinafter "Patent Owner" or "Appellant") of the Patent under
reexamination (hereinafter the "'614 Patent"), appeals under 35 U.S.C.
§ 134(b) from a final rejection of claims 1, 4, 7–10, and 17. Claims 2, 3, 5,
6, and 11–16 are not subject to reexamination.1 We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1 Final Act. 1.
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STATEMENT OF THE CASE2
Background
Davidson, Davidson, & Kappel, LLC filed a third-party request on
September 6, 2012, for ex parte reexamination of the '614 Patent, which was
assigned Reexamination Control No. 90/012,469. The '614 Patent, entitled
"MAN MACHINE INTERFACE VIA DISPIAY PERIPHERAL," issued
May 30, 2000, to the sole inventor, Tara C. Singhal, based on Application
No. 08/710,388, filed September 16, 1996. The '614 Patent was previously
subjected to ex parte reexamination, resulting in an Ex Parte Reexamination
Certificate (US 6,069,614 C1) being issued on October 7, 2008. During that
previous reexamination, claims 1 and 8 were amended, and claim 17 was
added.
USPTO records indicate the required '614 Patent maintenance fees
have been paid; therefore, the '614 Patent appears to still be in force. The
'614 patent was assigned by the sole inventor to Patent Owner on
October 26, 2009, as recorded in USPTO assignment records at reel/frame
23419-696.

2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Dec. 12, 2013); Examiner's Answer ("Ans.," mailed June 20, 2014); Ex
Parte Reexamination Final Office Action ("Final Act.," mailed
Aug. 16, 2013); Request for Ex Parte Reexamination of '614 Patent ("Third-
Party Request," filed Sept. 6, 2012); and the original Specification ("Spec.,"
filed Sept. 16, 1996).
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The Invention
An embodiment of Appellant's invention relates to a "man machine
interface for computer, television, electronic games and appliances" which
allows "control and selections" by using
one multi-function thumb push switch, allowing cursor
movement, rate of movement and object selection to be
performed from this one thumb switch and an index finger slide
switch for mode control, whereas these switches are located in
the natural resting positions of thumb and finger when the
device is held in either the left or the right hand.
Abstract.
Exemplary Claim
Claim 1, reproduced below after amendment during the first
reexamination proceeding, is representative of the subject matter on appeal
(emphases and formatting added):
1. A remote control device adapted for use by a
human to control and select from a screen, the screen including
a plurality of choices and a cursor, the remote control device
comprising:
a body adapted to be held by the human hand, the body
having a top side and a bottom side;
a thumb switch positioned on the top side of the body, the
thumb switch being adapted for activation by a human thumb,
the thumb switch being adapted to perform multiple functions;
wherein the thumb switch includes a center
switch, an annular switch, and a cover plate,
the annular switch including only four switches
and the cover plate covers the four switches, wherein
the annular switch surrounds the center switch, the
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annular switch being adapted to operate independently
from the center switch;
wherein the annular switch is adapted to effect
movement of the cursor between the plurality of
choices and the center switch is adapted to effect
selection of one of the choices identified by the
cursor;
electronic means adapted to generate a signal upon
activation of one of the switches; and
transmitting means for transmitting the signal from the
electronic means.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Darbee US 5,228,077 July 13, 1993
Florin et al.
(hereinafter "Florin")
US 5,594,509 Jan. 14, 1997
International Business Machines, Inc.
(hereinafter EP '729)
EP 0622729 A2 Nov. 2, 1994
Japanese Patent Laid-Open No. Sho JP 58-219634
(hereinafter "JP '634")
Dec. 21, 1983
Japanese Patent Laid-Open No. Sho JP 63-54098
(hereinafter "JP '098")
Mar. 8, 1988
Japanese Patent Laid-Open No. JP 6-110638
(hereinafter "JP '638")
Apr. 22, 1994
Japanese Patent Laid-Open No. Hei JP 6-245268
(hereinafter "JP '268")
Sept. 2, 1994
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Rejections on Appeal
R1. Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by JP '634. Ans. 2; Final Act. 19.
R2. Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
obvious in view of JP '634. Ans. 2; Final Act. 20.
R3. Claims 1, 4, 8, and 10 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Florin and JP '634. Ans. 3; Final
Act. 20.
R4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Florin, JP '634, and JP '638. Ans. 3–4;
Final Act. 21.
R5. Claims 1, 7–9, and 17 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of JP '634 and JP '098. Ans. 4; Final
Act. 22.
R6. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of JP '634, JP '098, and Darbee. Ans. 5; Final
Act. 22.
R7. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of JP '634, JP '098, and EP '729. Ans. 5; Final
Act. 23.
R8. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of JP '634, JP '098, and JP '268. Ans. 6; Final
Act. 23.
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GROUPING OF CLAIMS
Based on Appellant's arguments (App. Br. 10–50), we decide the
appeal of Rejection R3 of claims 1, 4, 8, and 10 on the basis of
representative claim 1; and we decide the appeal of Rejection R5 of claims
1, 7–9, and 17 on the basis of representative claim 1.
We address separately argued Rejections R1 and R2 of claim 1, infra.
We also address claims 1, 7, 9, 10, and 17 in rejections R2, R4, R6–
R8, not separately argued, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant's arguments with respect to claims 1, 4,
7–10, and 17 which are subject to reexamination, and we incorporate herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellant's
arguments. We incorporate such findings, reasons, and rebuttals herein by
reference unless otherwise noted. However, we highlight and address
specific findings and arguments regarding the rejections of claim 1 for
emphasis as follows.
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1. § 102 Rejection R1 of Claim 1
Issue 1
Appellant argues (App. Br. 27–28, 39–50) the Examiner's rejection of
claim 1 under 35 U.S.C. § 102(b) as being anticipated by JP '634 is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a device
which includes, inter alia, "a body adapted to be held by the human hand,
the body having a top side and a bottom side; [and] a thumb switch
positioned on the top side of the body, the thumb switch being adapted for
activation by a human thumb," as recited in claim 1?
Analysis
Appellant contends claim 1 is directed: (1) to a handheld device, (2)
having ergonomic features of a thumb switch positioned on the handheld
device. App. Br. 27. Appellant contrasts the disclosure of JP '634 by
arguing the reference "does not disclose any of these two features and
instead is directed to a desktop mouse operable by a finger touching and
operating the many switches of this desktop mouse." Id. Appellant
continues by stating both the handheld feature and the thumb switch are
"integral and essential elements of [claim 1]," and neither are taught by the
reference. App. Br. 28.
Appellant further alleges the anticipation rejection of claim 1 is
"nonsensical because JP '634 is a desktop mouse." Id. In addition,
Appellant argues "[f]inger operable switches designed for a desktop mouse
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as in JP '634 have inherently different characteristics than those of a thumb
switch for a handheld body as in [claim 1]." Id.
Functional v. Structural Limitations
Appellant alleges the Examiner has ignored certain limitations such as
"a body adapted to be held by the human hand" (claim 1) and "hand held
device" (claim 17) because the Examiner deems such limitations to be
functional and not structural. App. Br. 40. Further in this regard, Appellant
contends:
The term "handheld" limits the structure of the device in shape,
form, size and weight and manner of holding it in a hand. In the
context in which the term "handheld" is used in the claims, it
limits the claim to a remote control device with a body
configured to be held in a human hand and operated by the
thumb of that hand.
The structure of the handheld device is dictated by the anatomy
of the human hand and the need to hold the device in the human
hand. The anatomy of the hand dictates that the device is held-
cradled in the hand being supported by the palm and the
fingers, that is, where the fingers are positioned underneath the
device or the backside of the device. This claim term is not
anticipated or rendered obvious by a wall, floor, or a desktop
device simply because a user could plausibly hold it in his or
her hand.
App. Br. 41.
Appellant also argues the Examiner ignored the structural recitation in
claim 1 of a "thumb switch," which purportedly "is not functional but a
structural limitation since the term 'thumb switch' does not recite what it
does, but rather what it is." App. Br. 43. "In a human hand, a thumb and
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fingers are entirely different based on relative orientation, length, and pad
size relative to, for example, a finger." Id.
In response, the Examiner finds, and we agree, the Examiner did not
ignore the structural implications of such functional claim limitations; rather
the interpretations of the phrases "adapted to be held by the human hand"
and "thumb switch" are the underlying issues. Ans. 8–14. The Examiner
finds the breadth of the recitations does not preclude the Examiner's
interpretation that various forms of grasp by a human hand, such as the
grasping of the mouse disclosed in JP '634 (Ans. 8), or that the descriptor
"thumb switch" describes a preferred mode of operation, but does not
preclude switch activation by another digit or item such as a pen (Ans. 9),
"so long as the switch of the device is capable of being enabled by a user's
thumb." Ans. 10; and see "Broadest Reasonable Interpretation," infra. We
agree with the Examiner's findings and resulting claim construction in this
regard.
Broadest Reasonable Interpretation
Appellant sets forth another argument that the "broadest reasonable
interpretation" (BRI) standard of claim construction "is not applicable to the
claims of an issued patent on a third party ex parte request for
reexamination." App. Br. 46. Appellant's argued inapplicability of the BRI
standard to ex parte reexamination, as pointed out by the Examiner, is both
factually and legally incorrect. Ans. 17 (citing In re Yamamoto, 740 F.2d
1569 (Fed. Cir. 1984); In re Etter, 756 F.2d 852 (Fed. Cir. 1985); and MPEP
§ 2258).
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Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Any special meaning assigned to a
term "must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel
meaning to a claim term, the words take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted). Also, while we interpret claims broadly but reasonably in
light of the Specification, we nonetheless must not import limitations from
the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303,
1316, 1323 (Fed. Cir. 2005) (en banc) (citations omitted).
Accordingly, we do not find Appellant's arguments concerning the
BRI of the contested limitations to be persuasive.
Appellant further contends "[t]he specification is clear in that the term
'handheld' means that it is configured to be held in the human hand, and not
merely touched by the hand. Further the specification is clear that the term
'thumb switch' is a thumb switch and not a finger switch." App. Br. 46.
However, we note Appellant has not cited to a definition of "a body
adapted to be held by the human hand" or "thumb switch" in the
Specification that would preclude the Examiner’s broader reading. We find
the recitation in claim 1 of "a body adapted to be held by the human hand"
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broadly but reasonably reads on the disclosure in JP '634 of a mouse grasped
or touched by a human operator's hand, as found by the Examiner. Ans. 11.
Similarly, we find the recitation of "thumb switch" broadly but reasonably
reads on the disclosure in JP '634 (p. 4; and Fig. 2) of "cursor moving key" 4
collectively with "cursor locking key" 5. Ans. 2; Third Party Request (Exh.
12).
Accordingly, we do not find Appellant's arguments concerning the
contested limitations to be persuasive.
Teachings of JP '634
Appellant contends, "[t]he claimed subject matter is limited to the
field of endeavor of a handheld remote control device and a multi-function
thumb switch positioned on the top of the device that is ergonomically
operated by the thumb." App. Br. 48. Further, Appellant alleges,
JP '634 teaches a desk-based mouse device operated by an
index finger . . . [and therefore] cannot be used for anticipation
as well as obviousness . . . [because t]he nature of the current
claims and their limitations — field of endeavor — The
ergonomic features inherent in the remote control device of the
current claims make them entirely different and distinguishable
over JP '634.
App. Br. 22–23, 48–49.
The Examiner finds, and we agree, Appellant's arguments are not
commensurate with the scope of the claims because the claims do not
require or otherwise implicate any ergonomic considerations which are
allegedly inherent to Appellant's claimed invention. See Ans. 19–20.
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on JP '634 to disclose each
limitation of claim 1, nor do we find error in the Examiner's resulting finding
of anticipation.
§ 103 REJECTIONS R2–R8 — COMMON ARGUMENTS
Before addressing each rejection R2–R8 in turn, we note, as an initial
matter, Appellant advances four common arguments with respect to each
§ 103 obviousness, along with alleged separate arguments. App. Br. 29–33.
These four common arguments A1–A4 center on purported deficiencies of
the JP '634 reference, wherein the arguments and our respective responses to
the arguments are as follows:
A1. "Under both In re Clay and the In re Klein two-part test, JP
'634, not being analogous art, thus cannot be considered for any obviousness
analysis . . . ." App. Br. 29–31 (citing In re Clay, 966 F.2d 656, 658-9 (Fed.
Cir. 1992)). Appellant argues preclusion as an available reference is
required because the reference
teaches a desktop mouse and the '614 claims [on appeal] teach
features of a thumb switch in a handheld remote control device .
. . [which] are entirely different types of art and, under the In re
Klein two part test, are not analogous art and thus JP '634
cannot be used for any obviousness analysis.
App. Br. 29.
Response to A1
As the Examiner points out (Ans. 14–16), the test for analogous art
involves a determination that the prior art reference is either (a) in the field
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of Appellant's endeavor, or in the alternative, (b) the reference must be
reasonably pertinent to the particular problem with which Appellant is
concerned, and does not require both prongs of the test being satisfied, as
argued by Appellant, as cited above. See In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992).
The Examiner finds, and we agree, both JP '634 and the claims of the
present Reexamination may be characterized as being concerned with a
man-machine interface device, such that they may reasonably be considered
in the same field of endeavor, such that we, therefore, agree with the
Examiner's findings that JP '634 is analogous art. Ans. 15.
A2. "There is misuse of the disclosed subject matter of the [present
Reexamination] in arguing obviousness. Specifically, one would have to
ignore the intended purpose of or misuse the desktop mouse of JP '634 for it
to be held in the hand." App. Br. 32. Appellant further contends the
"proposed modifications cannot change the principle of operation of a
reference [and t]his is what the Examiners have done." Id.
Response to A2
We note Argument A2 is closely related to construction of the term "a
body adapted to be held by the human hand," discussed with respect to Issue
1, supra. For the same reasons, we do not find Appellant's Argument A2 to
be persuasive. In addition, we note Appellant's contention that the principle
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of operation would be changed is mere attorney argument, unsupported by
any evidence of record.3
A3. Appellant argues JP '634 teaches away from the claimed
invention by teaching a desktop mouse. App. Br. 32. Teaching away of the
reference is alleged because key 5 of JP '634 is finger operated and
positioned where finger contact occurs less frequently. Id. Appellant
contrasts this teaching with the claimed invention which recites "adapted to
be held by the hand" (claim 1), and argues "with the thumb inherently
always at or near the central switch of the multi-function thumb switch
[such that n]o person of ordinary skill would read this in JP '634 and, as a
result, find my very different invention obvious." App. Br. 32–33 (emphasis
added).
Response to A3
We note Argument A3 is also related to construction of the term "a
body adapted to be held by the human hand," discussed with respect to Issue
1, supra.
We further note, "[a] reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." Ricoh
Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)

3 No extrinsic evidence was submitted by Appellant in support of Argument
A2. See App. Br. 52 ("9. EVIDENCE APPENDIX . . . Attached Appendix
A for JP '634; Japanese Patent Sho 58-219634, (JP SHO '634) patent date
12/21/1983, Application date: 6/15/1982"
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(citations omitted). A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
available to the ordinarily skilled artisan, and the reference does not discredit
or discourage investigation into the invention claimed. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Further, it is irrelevant that the prior art
and the present invention may have different purposes. See Nat'l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir.2004) ("A
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from
another.").
We find a person of ordinary skill in the art would have understood JP
'634's teaching of a handheld desktop mouse arrangement to be an
alternative approach to "[a] remote control device adapted for use by a
human to control and select from a screen, the screen including a plurality of
choices and a cursor." Claim 1.
Further, Appellant has provided no evidence (see FN 3) that
combining such teachings was "uniquely challenging or difficult for one of
ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007), nor have Appellant presented evidence
that this incorporation yielded more than expected results. Rather, we find
that Appellant’s invention is simply a combination of known teachings that
realize a predictable result. The Supreme Court has determined that the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
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person having ordinary skill in the art. KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007).
Therefore, in the absence of persuasive evidence to the contrary, we
find JP '634 does not teach away from the claimed invention.
A4. Appellant argues secondary considerations of non-obviousness,
specifically, commercial success and long-felt need:
There is considerable commercial success that had
addressed a long-felt need in the industry that is now being
interfered with through this reexamination request. There is an
active licensing program since dozens of companies have
licensed the Singhal '614 patent.
The companies that have taken a license are: Logitech,
Panasonic, Phillips, Mitsubishi, Funai, Motorola, Nokia,
Uniden, SMK-Link Electronics, Coby USA, NIKON, FUNAI,
and Dell.
These companies had knowledge of any relevant JP
patents in the area of claimed subject matter and would not
have taken a license.
App. Br. 33.
Response to A4
The ultimate issue of obviousness is a matter of law that turns on four
underlying factual determinations: (1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) objective indicia of
nonobviousness (secondary considerations). See Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), as reaffirmed by KSR, 550 U.S. at 406.
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While a prima facie case for obviousness may be rebutted by evidence
showing secondary considerations such as commercial success, as alleged by
Appellant in Argument A4, such arguments must be supported by evidence
on the record which demonstrates a nexus between the purported
commercial success and the claimed invention. See Pro-Mold & Tool Co.,
Inc. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996)
(noting that fact finders must ascertain whether a nexus connects
commercial success to a claimed invention and determine the probative
value of secondary-considerations evidence for rebutting a prima facie case
of obviousness); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851
F.2d 1387, 1391–94 (Fed. Cir. 1988) (noting that secondary-considerations
evidence must be considered despite a strong case for obviousness based on
prior art, and laying out an “evidentiary routine” where a patentee must
establish a prima facie case of a nexus between commercial success and the
claimed invention); Simmons Fastener Corp. v. Ill. Tool Works, Inc., 739
F.2d 1573, 1575 (Fed. Cir. 1984) (explaining that the weight accorded to
secondary-considerations evidence depends on a demonstration of “[a]
nexus between the merits of the claimed invention and the evidence of
secondary considerations”). However, we further note evidence of
commercial success without proof that sales are the direct result of unique
characteristics of the invention does not demonstrate nonobviousness. In re
DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008).
Accordingly, given the lack of any evidence on this record supporting
Appellant's argument for nonobviousness based upon the secondary
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consideration of commercial success, we do not find Appellant's argument to
be persuasive.
§ 103 REJECTIONS R2–R8 — SPECIFIC ARGUMENTS
2. § 103 Rejection R2 of Claim 1
Issue 2
Appellant argues (App. Br. 34 and 50) the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious in view of JP '634 is in
error. These contentions present us with the following issues:
(a) Did the Examiner err by finding the cited prior art
discloses a device which includes, inter alia, "a body adapted to
be held by the human hand, the body having a top side and a
bottom side; [and] a thumb switch positioned on the top side of
the body, the thumb switch being adapted for activation by a
human thumb," as recited in claim 1?
(b) Did the Examiner err in rejecting claim 1 because JP '634
is allegedly non-analogous art to the claimed invention?
(c) Did the Examiner err by stating an improper motivation
to modify JP '634 in the manner suggested, purportedly because
the intended purpose of JP '634 must be ignored to make the
modification necessary to render claim 1 obvious?
(d) Did the Examiner err in relying upon JP '634 in the
manner suggested because this reference supposedly teaches
away from the claimed invention?
(e) Did the Examiner err in rejecting claim 1 as being
obvious over JP '634 because the claimed invention purportedly
enjoys considerable commercial success?
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Analysis
Appellant contends there are "[f]our different arguments [ ] provided
for these 103(a) rejections," (App. Br. 29), and "[t]he four . . . arguments . . .
are incorporated here by reference [against Rejection R2] as though fully set
forth." App. Br. 34.
For the reasons set forth above (see "§ 103 REJECTIONS R2–R8 —
COMMON ARGUMENTS" and our response therein to Arguments A1–
A4), we disagree with Appellant's arguments, and adopt as our own the
Examiner's findings and resulting legal conclusion of obviousness of
claim 1.
3. § 103 Rejection R3 of Claims 1, 4, 8, and 10
Issue 3
Appellant argues (App. Br. 34, 35, and 50) the Examiner's rejection of
claims 1, 4, 8, and 10 under 35 U.S.C. § 103(a) as being obvious over the
combination of Florin and JP '634 is in error. These contentions present us
with the following issue:
Did the Examiner err by finding the cited prior art combination
teaches or at least suggests the invention of claim 1 because
Florin purportedly cannot be combined with JP '634 because
Florin does not teach the cover plate limitation of claim 1?
Analysis
Appellant contends "[t]he cited prior art cannot be used for any
obviousness analysis under the court created doctrine of Analogous Art . . .
[as] JP [']634 [cannot] be considered prior art . . . [and] The four different 35
USC 103(a) arguments as provided above are incorporated here by reference
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as though fully set forth." App. Br. 35. For the reasons discussed above
with respect to R2, we do not find Appellant's arguments to be persuasive.
Appellant further contends, "Florin cannot be combined with JP '634
because Florin does not teach the cover plate elements of the claims." Id.
We note, however, Appellant's arguments are misplaced in this regard,
as the Examiner does not rely upon Florin for teaching this limitation.
Instead, the Examiner cites JP '634 as teaching or at least suggesting this
limitation. See Ans. 3 (citing Third-Party Request 25–32, 43; and Exh. 14).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness of claim 1, and claims 4, 8, and 10,
which fall therewith. See Grouping of Claims, supra.
4. § 103 Rejections R4–R8 of Claims 1, 7–10, and 17
In view of the lack of any separate arguments directed to obviousness
Rejections R4–R8 of claims 1, 7–10, and 17 under § 103 (see App.
Br. 35–38), we sustain the Examiner's rejection of these claims, as they fall
for the same reasons discussed, supra, with respect to Rejections R2 and R3.
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21
CONCLUSIONS4
(1) The Examiner did not err with respect to the anticipation
Rejection R1 of claim 1 under 35 U.S.C. § 102(b) over the cited prior art of
record, and we sustain the rejection.
(2) The Examiner did not err with respect to the obviousness
rejections of claims 1, 4, 7–10, and 17 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4, 7–10, and 17.
Extensions of time in reexamination proceedings are governed by 37
C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
rwk

4 We note the Examiner's findings and legal conclusions remain unrebutted
by Appellant, as the right to file a Reply Brief was waived. See "WAIVER
OF RIGHT TO FILE A REPLY BRIEF TO EXAMINER ANSWER" filed
June 27, 2014.
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22
Appellant:

TARA CHAND, C/O MAN MACHINE INTERFACE
TECHNOLOGIES LLC
2390 CRENSHAW BLVD. STE 239
TORRANCE, CA 90501

Third-party requester:

DAVIDSON, DAVIDSON & KAPPEL, LLC
485 7TH AVENUE
14TH FLOOR
NEW YORK, NY 10018