Ex Parte 6791536 et al

Patent Trial and Appeal Board

Jun 30, 2015

95002315 (P.T.A.B. Jun. 30, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,315 09/14/2012 6791536 6620-90249-03 9710
7590 06/30/2015
Joseph T. Jakubek
One World Trade Center
121 SW Salmon Street, Suite 1600
Portland, OR 97204
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2015 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
________________

MOTOROLA MOBILITY LLC.
Third Party Requester

v.

MICROSOFT CORPORATION
Patent Owner
____________

Appeal 2015-003464
Reexamination Control 95/002,315
Patent US 6,791,536 B2
Technology Center 3900
________________

Before BRADLEY W. BAUMEISTER, ANDREW J. DILLON, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
The Invention
This proceeding arose from a request by MOTOROLA MOBILITY
for an inter partes reexamination of US Patent 6,791,536 B2, entitled
“SIMULATING GESTURES OF A POINTING DEVICE USING A
STYLUS AND PROVIDING FEEDBACK THERETO” (issued to Leroy B.
Keely et al. on Sept. 14, 2004 from Application 09/815,272, filed Mar. 23,
2001) (“the ’536 Patent”). We have jurisdiction under 35 U.S.C. §§ 134 and
315.
1

The ’536 Patent describes the invention as follows:
A method and apparatus for simulating at least one
gesture of a pointing device such as a mouse. A
left click, right click, left drag, right drag, and/or
mouse movement may be simulated using a stylus
in conjunction with a touch-sensitive display
surface. For example, a computer having the
display surface may detect whether a stylus is
being held down on a touch-sensitive display
surface for at least a threshold amount of time.
The computer may further detect whether the
stylus is then removed from the touch-sensitive
display surface after at least the threshold amount
of time. Responsive to the stylus being removed,
the computer may generate at least one event
representing a right mouse button being pressed.
Abstract.
Independent claim 1 is illustrative of the claimed subject matter on
appeal:

1
Google Inc. is asserted to be a real party in interest. Comm. Regarding
Real Party in Interest (dated November 3, 2014).
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1. In a computer, a method for simulating at
least one gesture of a pointing device having at
least a primary switch and a secondary switch, the
method comprising the steps of:
first detecting whether a stylus is being held
down on a touch-sensitive display surface for at
least a threshold amount of time;
second detecting whether the stylus is then
removed from the touch-sensitive display surface
after at least the threshold amount of time; and
responsive to the stylus being removed as
detected in the step of second detecting, generating
at least one event representing the secondary
switch of the pointing device being activated.

Statement of Rejections
Claims 1–3, 7, 12-22, 28, and 30-47 are being reexamined. RAN 2.
2

Patent Owner, Microsoft Corporation (“Owner”), appeals under 35 U.S.C.
§§ 134(b) and 315(a) from the following adopted rejections (see PO App.
Br. 24-25):

2
Throughout this opinion, we refer to (1) the Inter Partes Reexamination
Request for U.S. Patent No. 6,791,536 filed September 14, 2012
(“Request”); (2) the Action Closing Prosecution mailed May 14, 2013
(“ACP”); (3) the Right of Appeal Notice mailed September 27, 2013
(“RAN”); (4) Patent Owners’ Appeal Brief filed December 30, 2013
(“PO App. Br.”); (5) Requester’s Respondent Brief filed January 30, 2014
(“3PR Resp. Br.”); (6) the Examiner’s Answer mailed March 31, 2014
(incorporating the RAN by reference) (“Ans.”); (7) Patent Owner’s Rebuttal
Brief filed April 30, 2014 (PO Reb. Br.”); and (8) the Declaration of
Professor Robert L. Stevenson Pursuant to 37 C.F.R. § 1.132 (“Stevenson
Decl.”).
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1. The rejection of claims 1–3, 7, 12, 14–16, 18–20, 22, 28, 30–35, 37–41,
and 43–46 under §102(e) as being anticipated by Harada
(US 6,657,615 B2; issued Dec. 2, 2003) (referenced by Owner as
Issue 1);
2. The rejection of claims 13, 17, 21, 36, 42, and 47 under §103(a) as being
unpatentable over Harada in view of Buxton (EP 660 218 A1; published
June 28, 1995) (referenced by Owner as Issue 2);
3. The rejection of claims 14, 16, 17, and 37–42 under 35U.S.C. § 102(b) as
being anticipated by Buxton (referenced by Owner as Issue 3);
4. The rejection of claims 14, and 37–40 under 35 U.S.C. § 102(b) as being
anticipated by Fukuda (US 5,748,926 A; issued May 5, 1998)
(referenced by Owner as Issue 5);
5. The rejection of claims 16 and 41 under §103(a) as being unpatentable
over Fukuda in view of Applicant’s Admitted Prior Art (referenced by
Owner as Issue 6);
6. The rejection of claims 16, 17, 41, and 42 under §103(a) as being
unpatentable over Fukuda in view of Buxton (referenced by Owner as
Issue 7);
7. The rejection of claims 37–40 under 35 U.S.C. § 102(b) as being
anticipated by PENPOINT
TM
UI DESIGN GUIDELINES, GO Corporation,
1991 (referenced by Owner as Issue 9);
Related Litigation and Proceedings
According to Owner, “The ’536 Patent is also the subject of a pending
U.S. District Court case in the Western District of Washington, Motorola
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Mobility, Inc. v. Microsoft Corp., , Case No. 2:11-cv-01408, which is
presently stayed.” PO App. Br. 5.
Standard of Review and Decision
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

CONTENTIONS AND ANALYSIS
Issue 1
Issue 1, as enumerated by Owner, is whether claims 1–3, 7, 12, 14–16,
18–20, 22, 28, 30–35, 37–41, and 43–46 are anticipated by Harada. See PO
App. Br. 24. In support of this ultimate issue, Owner first argues that
Harada does not anticipate any of the independent claims because Harada
fails to disclose a key element—the “capability of detecting whether a stylus
is held against a touch-sensitive display surface without substantial (lateral)
movement (or “held down” on a display) for at least a threshold time, as
opposed to whether a stylus is dragged along a display beginning prior to
that threshold time.” PO App. Br. 30.
This argument is based on the premise that the claims require the
capability of distinguishing between a hold event and a drag or hold-and-
drag event. This argument is unpersuasive, then, because this premise is
inaccurate. Owner has not pointed to any language of the independent
claims that requires the ability to distinguish whether an event is a hold
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event or a drag event. Independent claim 1, for example, merely requires
“detecting whether a stylus is being held down on a touch-sensitive display
surface for at least a threshold amount of time.” As such, if a given prior art
device does detect when a stylus is being held down, it is immaterial for the
purposes of anticipating the claims whether the device additionally detects
when a stylus is being dragged. Restated, it is immaterial whether the device
functions identically or generically in response to detecting both hold and
drag events. Stated yet another way, the subjective belief that a response to
a drag event constitutes a false positive detection does not negate the fact
that the device does detect actual hold events. This detection is all that the
claims require.
This position was made reasonably clear by the Examiner during the
reexamination proceeding:
Examiner submits that claim 1, for example,
does not specifically recite detecting whether the
stylus is moving. Instead, the steps of “first
detecting” and “second detecting” a recited in
claim 1 are not solely directed to detecting a hold-
without-drag state, despite the “third detecting”
recited in claim 4 being directed to further
detecting the hold-and-drag state. The Keely
specification indicates that the “first detecting” and
“second detecting” would be positive for a hold
with or without movement. As shown in Figure 3
of Keely, when a user puts the stylus down (step
301) and does not lift it before the timeout (a “no”
after step 303, followed by a “stylus up” in step
308 or step 312), then both recited “first detecting”
and “second detecting” steps are positive. These
first and second detecting steps are positive
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regardless of whether the situation is a hold
without drag, or a hold and drag.
ACP 22–23.
Owner does not dispute Harada can detect a hold as claimed. In fact,
Owner’s expert witness expressly states “Harada is less discerning than
[Owner’s invention]. Harada cannot distinguish between hold down and
drag as can the ’536 Patent. Actions that the ’536 Patent would interpret
differently Harada would treat the same.” Stevenson Decl. ¶ 39. As such,
Owner is at least implicitly acknowledging that Harada’s invention would, in
fact, detect when a stylus is being held down on a touch-sensitive display
surface. Harada’s device additionally would distinguish between a hold that
is less that a threshold and a hold that is longer than a threshold. See, e.g.,
Harada, col. 5, ll. 52–59
The CPU 32a executes left click processing and right click
processing, selectively, in accordance with the touching time
period T thus detected. In other words, at step S107, if the
touching time period T is less than a first time period Tl, then
left click processing is selected (step S108), and if the touching
time period T is equal to or more than the first time period Tl,
then right click processing is selected (step S109).
Owner also presents related arguments, such as that
Harada [does not] teach a system that can detect whether pen
movement occurs prior to the timeout to simulate a left drag,
and in so doing preclude a right mouse movement. In fact, the
word “drag” apparently does not appear anywhere in Harada.
The system disclosed in Harada would not be capable of
differentiating between, e.g., a user’s intended “left drag” of a
pointing device. . . and a “right click”. . .
PO App. Br. 29–30. Again, though, these arguments are directed to features
of the Specification that are not set forth in the claims.
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Owner additionally argues that “Harada teaches away from the
solution provided in the specification and claims of the ’536 Patent for
simulating the various pointing device gestures.” PO App. Br. 30. This
argument is not persuasive because the concept of “teaching away” is only
relevant to obviousness rejections under 35 U.S.C. § 103(a). The concept is
not germane to anticipation rejections under 35 U.S.C. § 102, such as the
one before us.
In section B.1.a)(2) of the Appeal Brief, Owner argues that “Harada
neither discloses all elements of [dependent] claims 12, 16, 20, 35 or 41 nor
renders them obvious.” PO App. Br. 31 (font and type omitted). Each of
these dependent claims further recite “the pointing device comprises a
mouse, the primary switch comprises a left button of the mouse, and the
secondary switch comprises a right button of the mouse.” Owner’s
arguments regarding these claims are similar to those set forth in relation to
the independent claims:
since Harada is incapable of distinguishing some movements
corresponding to when the left button is pressed from
movements simulating a right button press (e.g., stylus
movement occurring prior to timeout, which yields a left mouse
button event, as opposed to holding the stylus in place until
after timeout, yielding a right mouse button event), Harada is
incapable of reliably simulating, e.g., the primary switch of a
mouse.
PO App. Br. 31-32.
This argument is not persuasive for reasons similar to those set forth
above. It is immaterial whether Harada can distinguish between a pre-
timeout hold from a pre-timeout hold-and-drag. The relevant question is
merely whether Harada’s device would distinguish between a hold that is
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maintained for shorter than a threshold amount of time and a hold that is
maintained for longer than a threshold amount of time. Owner does not
dispute that Harada would distinguish between these two events. See
generally PO App. Br.; PO Reb. Br. Moreover, Harada expressly states that
the period of time for which a pen is held against the screen dictates whether
the CPU executes a left mouse click or a right mouse click. Harada col. 5,
ll. 34–37. The representation of the events can also be reversed. Id. col. 6,
ll. 27–33.
In section B.1.a)(3) of the Appeal Brief, Owner argues that Harada
does not anticipate dependent claim 40. According to Owner,
Claim 40 recites that “the step of generating includes generating
an animated visual state change indicator at a location on the
touch-sensitive display surface.” Harada does not teach the
added limitation of claim 40. As previously stated, the icons
depicted in Figs. 9A and 10A-F cited by Examiner as
purportedly teaching the added “animated visual state change
indicator” required in claim 40 are not animated. Furthermore,
there is no obvious way to animate the icons in Harada, as
established in the unrebutted Stevenson Declaration at ¶ 46.
PO App. Br. 32.
This argument is not persuasive. Owner merely argues that none of
Harada’s individual icons are animated. However, we understand the
rejection to be based on the alternative rationale that changing among the
variously displayable icons (e.g., changing from the still arrow of FIG 10A
to the still arrows of FIG. 10B and FIG 10C) constitutes animation:
Regarding claim 40, Harada discloses that the step of
generating includes generating an animated visual state change
indicator on the touch-sensitive display surface (i.e., an icon is
displayed on the touch-sensitive display surface comprising
touch panel 10 and liquid crystal display 12 that changes as the
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touching time T surpasses various thresholds Tl, T2, T3, etc.;
Figures 9 and 10A–F; column 7, lines 48–67; column 8, lines
1–25).
RAN 11. Owner does not present persuasive arguments or evidence that this
alternative rationale is erroneous.
In section B.1.a)(4) of the Appeal Brief, Owner argues the
patentability of claims 2, 3, 7, 15, 19, 22, 30–34, 38, 39, and 44–46 based
solely upon these claims’ dependency from the independent claims
discussed above. PO App. Br. 32. For the reasons already stated, then,
Owner has not established that the Examiner erred in rejecting these claims.
Issue 2
Claims 13, 17, 21, 36, 42, and 47 depend from the independent claims
addressed above. Each of these dependent claims recites “wherein the
pointing device comprises a trackball, the primary switch comprises a left
button of the trackball, and the secondary switch comprises a right button of
the trackball.” These claims stand rejected as obvious over Harada in view
of Buxton.
Owner repeats the argument addressed above in relation to the
independent claims that Harada is incapable of detecting certain movements.
PO App. Br. 33. Owner further argues that “Harada is similarly incapable of
simulating the primary switch of a trackball, as distinguished from other
movements,” and that just like Harada, Buxton is incapable of properly
detecting such movements either. Id.
These arguments are not persuasive. We have already addressed
above why we disagree with Owner’s arguments regarding Harada.
Furthermore, Buxton is being relied upon solely for teaching that the
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pointing device represented by the event could constitute the left and right
buttons of a trackball. RAN 20–21. Owner does not present sufficient
arguments or evidence as to why Buxton fails to teach this feature, or why
the representation of trackball buttons would not constitute the substitution
of known components in a manner that yields predictable results.
Accordingly, Owner has not established that the Examiner erred in
rejecting claims 13, 17, 21, 36, 42, and 47 as obvious.
3

Issues 3, 5–7, and 9
In view of our sustaining the anticipation rejection of claims 1–3, 7,
12, 14–16, 18–20, 22, 28, 30–35, 37–41, and 43–46 by Harada, as well as
the obviousness rejection of claims 13, 17, 21, 36, 42, and 47 over Harada in

3
We fail to see why Harada does not anticipate claims 13, 17, 21, 36, 42,
and 47, as well as render these claims obvious. The language of these
additional claims merely describes a specific example of the pointing device
that is recited in the independent claims. The independent claims, though,
do not recite the pointing device affirmatively. Rather, the preamble of
independent claim 1, for example, initially recites “a method for simulating
at least one gesture of a pointing device…” (emphasis added). The last
limitation of claim 1 then merely recites the affirmative step of generating at
least one event responsive to the stylus being detected as being removed.
The claim does not set forth that any affirmative action is undertaken with
this generated at least one event. The additional claim language
“representing the secondary switch of the pointing device being activated”
merely describes what the generated events (or signals) are subjectively
intended to represent. As such, the representing language merely
constitutes functional language that does not limit the claim beyond
describing what the generated event must be capable of representing. We
see no reason why Harada’s signals—which represent left and right mouse
clicks—are not equally capable of representing trackball button clicks.
However, because the appealed rejection does not appear to be based upon
this rationale, we need not—and do not—reach any conclusions regarding
this broader interpretation of the claims.
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view of Buxton, we do not reach the remaining rejections appealed by
Owner. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not
reaching other rejections after upholding an anticipation rejection); see also
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a
single dispositive issue of numerous resolved by the presiding officer; there
is no need for the Commission to decide all issues decided by the presiding
officer).

DECISION
The Examiner’s decision rejecting claims 1–3, 7, 12–22, 28, and
30–47 is affirmed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

alw

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Patent Owner:

One World Trade Center
121 S.W. Salmon Street
Suite 1600
Portland, OR 97204

Third Party Requester:

Foley & Lardner LLP
3000 K Street, NW
Suite 600
Washington, DC 20007-5109