Ex Parte 7158118 et al

Patent Trial and Appeal Board

Dec 11, 2015

95002036 (P.T.A.B. Dec. 11, 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.
95/002,036 07/13/2012 7158118 10764.0004-00000 5036
22852 7590 12/14/2015
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
LIE, ANGELA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/14/2015 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
____________

MOVEA, INC.
Requester and Respondent

v.

HILLCREST LABORATORIES, INC.
Patent Owner and Appellant
____________

Appeal 2015-004773
Reexamination Control 95/002,036
United States Patent US 7,158,118 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 1–10 and 12–38. We have jurisdiction under
35 U.S.C. §§ 134 and 315, and we heard the appeal on December 2, 2015.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed on behalf of Requester, on July 13, 2012, of United States Patent
7,158,118 B2 (“the ’118 patent”), issued to Matthew G. Liberty on
January 2, 2007.
The ’118 patent describes enhancing usability of three-dimensional
(3D) pointing devices by transforming sensed motion data from a first frame
of reference (e.g., the pointing device body) to a second frame of reference
(e.g., a user’s frame of reference). In one embodiment, the invention
removes effects associated with a tilt orientation in which the pointing
device is held by a user. See generally Abstract. Claim 1 illustrates the
invention and is reproduced below:
1. A method for using a 3D pointing device comprising the steps of:
detecting movement of said 3D pointing device; and
compensating said detected movement by transforming said detected
movement from a body frame of reference associated with said 3D pointing
device into an inertial frame of reference by determining a tilt associated
with an orientation in which said 3D pointing device is held; and
compensating said detected movement to correct for said tilt;
wherein said step of compensating said detected movement to correct
for tilt further comprises the step of:
rotating first and second rotational outputs into said inertial frame of
reference by calculating:
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wherein Ɵ is the tilt, ay is said first rotational output and az is said
second rotational output.

RELATED PROCEEDINGS
This appeal is said to be related to two prior judicial proceedings, one
of which was before the International Trade Commission, and the other
before a Maryland District Court. App. Br. 1 (citing cases).
1

THE APPEALED REJECTIONS
Patent Owner appeals the Examiner’s rejecting the claims as follows:
Claims 1, 2, 4, 6–8, 12, 17, 23–25, 28–32, and 35–37 under 35 U.S.C.
§ 102(b) as anticipated by Ide (US 5,598,187; Jan. 28, 1997). RAN 7–28.
Claims 3, 5, 9, 10, 13, 16, 18, 19, 21,
2
and 22 under 35 U.S.C.
§ 103(a) as obvious over Ide in view of “one of ordinary skill in the art”
(“OSA”). RAN 28–36.

1
Throughout this opinion, we refer to (1) the Action Closing Prosecution
mailed May 1, 2013; (2) the Right of Appeal Notice mailed September 27,
2013 (“RAN”); (3) Patent Owner’s Appeal Brief filed December 27, 2013
(“App. Br.”); (4) Requester’s Respondent Brief filed January 27, 2014
(“Resp. Br.”); (5) the Examiner’s Answer mailed May 14, 2014 (“Ans.”)
(incorporating the RAN by reference); and (6) Patent Owner’s Rebuttal
Brief filed June 16, 2014 (“Reb. Br.”).
2
Although the Examiner omits claim 21 from the statement of this rejection,
the Examiner nonetheless includes this claim in the associated discussion.
Compare RAN 28 with RAN 36. Accordingly, we include claim 21 here to
clarify the record, and deem the Examiner’s error in this regard harmless.
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Claims 3, 9, 10, 13, 14, 16, 20, 27, 34, and 38 under 35 U.S.C.
§ 103(a) as obvious over Ide and ADXL202/ADXL210 Product Specification,
Analog Devices (1999) (“ADX”). RAN 37–45.
Claims 14–16 under 35 U.S.C. § 103(a) as obvious over Ide, ADX,
and Wei Tech Ang et al., Design of All-Accelerometer Inertial Measurement
Unit for Tremor Sensing in Hand-held Microsurgical Instrument, Inst. for
Software Res. (2003) (“Ang”). RAN 46–48.
Claims 14 and 15 under 35 U.S.C. § 103(a) as obvious over Ide in
view of OSA and further in view of Ang. RAN 70–71.
Claims 26 and 33 under 35 U.S.C. § 103(a) as obvious over Ide and
Ellenby (US 2002/0140745 A1; Oct. 3, 2002). RAN 70.
Claims 1–4, 6, 7, 9–13, 17, 23–26, 28–33, and 35–37 under 35 U.S.C.
§ 102(b) as anticipated by Ellenby. RAN 48–66.
Claims 5 and 14 under 35 U.S.C. § 103(a) as obvious over Ellenby in
view of OSA. RAN 66–68.
Claims 14 and 15 under 35 U.S.C. § 103(a) as obvious over Ellenby
and Ang. RAN 68–69.
Claims 27 and 34 under 35 U.S.C. § 103(a) as obvious over Ellenby
and Ide. RAN 69–70.

THE ANTICIPATION REJECTION OVER IDE
The Examiner finds that Ide’s method of using a 3D pointing device
compensates detected device movement by transforming detected movement
from an associated body frame of reference into an inertial frame of
reference by determining tilt associated with an orientation in which the
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device is held. RAN 7–8. According to the Examiner, Ide compensates
detected movement to correct for tilt by rotating first and second rotational
outputs, namely the x’ and y’ outputs whose values are said to depend on a
rotational shift angle (θm) in the equations in Ide’s column 21, lines 51 to
55, into the inertial frame of reference. RAN 8–11. Requester concurs with
the Examiner’s findings. Resp. Br. 18–23.
Patent Owner argues that Ide lacks an inertial frame of reference,
namely a reference frame where at least one coordinate axis has a time- and
user-independent orientation. App. Br. 19–20, 23–32; Reb. Br. 9–15.
According to Patent Owner, Ide’s system not only uses a body frame whose
coordinate axes are tied to a handheld mouse’s orientation, but also requires
user adjustment for proper operation. App. Br. 26–30; Reb. Br. 9–12. This
user-dependent aspect of Ide is said to differ from the requisite user-
independent aspects of an inertial frame of reference that is defined relative
to an external, absolute field that the user cannot control, such as gravity or
magnetic North. App. Br. 23–24; Reb. Br. 13–15.
Patent Owner further contends that Ide does not determine tilt, namely
a rotation from an absolute reference, such as gravity or magnetic North, but
rather discloses a rotation amount (θm) between horizontal and vertical
directions of those of Ide’s “arbitrarily tilted” screen. App. Br. 33–35; Reb.
Br. 11–13; 20–22. Patent Owner adds that Ide does not rotate first and
second rotational outputs into the inertial frame of reference, but rather the
rejection relies on equations using linear mouse movements in horizontal
and vertical directions. App. Br. 35–36; Reb. Br. 22.
Patent Owner argues other recited limitations summarized below.
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ISSUES
Under § 102, has the Examiner erred by finding that Ide discloses:
(1) (a) transforming detected movement of a 3D pointing device from
a body frame of reference to an inertial frame of reference by determining a
tilt associated with an orientation in which the device is held, and (b)
compensating detected movement to correct for tilt by rotating first and
second rotational outputs into the inertial frame of reference as recited in
claim 1?
(2) an inertial frame of reference defined relative to gravity as recited
in claim 23?
(3) measuring tilt relative to gravity as recited in claim 25?

ANALYSIS
Claims 1, 2, 4, 6–8, 12, and 17
As noted above, this dispute turns on the meaning of an “inertial
frame of reference.” We, therefore, begin by construing that term and the
related “body frame of reference.”
The ’118 patent defines a “body frame” as referring to a set of axes
associated with the body of an object being moved. ’118 patent, col. 4, ll.
32–34. Therefore, a “body frame of reference” is with respect to the axes of
a movable object’s body when interpreted in light of this definition.
The ’118 patent, however, lacks such a concrete definition for an
“inertial frame of reference,” but rather describes an “inertial frame of
reference” in broad and exemplary terms. For example, an inertial frame of
reference can be defined with respect to an orientation substantially parallel
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to a room’s floor as shown in Figure 6(a) or, notably, can be defined as any
other orientation. ’118 patent, col. 11, ll. 44–53.
Based on this broad and exemplary description, Patent Owner’s
proffered definition of “inertial frame of reference,” namely “a reference
frame where at least one
3
coordinate axis has at least one time- and user-
independent orientation” is overly limiting, despite Dr. Riviere’s testimony
in this regard. App. Br. 23 (citing Declaration of Dr. Cameron N. Riviere
Under 37 C.F.R. § 1.132, Exh. DECL-1 (“Riviere Decl.”), at ¶ 14).
Although we appreciate Dr. Riviere’s insights in this regard, we nevertheless
see no reason why an inertial frame of reference cannot be interpreted more
broadly, but reasonably, as a frame of reference associated with a screen’s
orientation. See Request for Inter Partes Reexamination filed July 13, 2012
(“Request”), at 40 (articulating this interpretation).
This screen-based interpretation is reasonable, for the associated
reference frame is “inertial” at least in the sense that, as a practical matter,
the screen’s vertical orientation (and associated frame of reference) does not
change when in its operating position, such as the arrangement shown in
Ide’s Figure 33 as the Examiner indicates. RAN 78–79 (noting that the
“default” reference frame in Ide’s Figure 33 is not to be modified because
the monitor is not intended to be moved, rather only the pointing device).
Because Ide’s screen is positioned substantially vertically in Figures 33,

3
Although Dr. Riviere limits an inertial frame of reference as having one
coordinate axis with time- and user-independent orientation, Patent Owner
broadens this characterization to a reference frame with at least one such
axis. Compare Riviere Decl. ¶ 14 with App. Br. 23.
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35A, and 35B, the display unit is at least substantially aligned with gravity
as the Examiner indicates. RAN 78. Accord Resp. Br. 21.
Although Ide does not indicate the direction of gravity or detail
explicitly how the display is mounted in Figures 33, 35A, and 35B as Patent
Owner indicates (Reb. Br. 13, 18), Ide’s display unit 202 is nonetheless not
floating in thin air: it is subject to the same gravitational force as that applied
to all other objects on Earth—regardless of how the display unit is mounted.
Accord Resp. Br. 20 (“Gravity is inherent in all inventions intended to be
used on Earth, such as Ide.”). Notably, this gravitational force is directed
towards the Earth’s center, and represented with respect to typical coordinate
systems.
4
Therefore, regardless of the specific manner in which Ide’s
display unit 202 in Figures 33, 35A, and 35B is mounted, it is nonetheless
depicted as oriented substantially vertically and, therefore, the unit’s screen
is aligned substantially with gravity given the three-dimensional perspective
view in these figures.
In reaching this conclusion, we recognize that our reviewing court has
repeatedly cautioned against overreliance on drawings that are neither
expressly to scale nor linked to quantitative values in the specification.
Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012). But
here, we see no error in the Examiner’s reliance on Ide’s three-dimensional
perspective views in Figures 33, 35A, and 35B at least to the extent of what
they reasonably convey regarding the relative orientation of the display

4
See generally US 6,940,940 B2, at Fig. 2 (showing direction of gravity “g”
in downward vertical direction with respect to x- and y-directions); see also
Ron Kurtis, GRAVITY AND GRAVITATION: DERIVATIONS, EQUATIONS AND
APPLICATIONS 34 (2011).
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screen with respect to the vertical and horizontal directions. And while the
laptop computer in Ide’s Figure 3 has a screen that appears to be angled with
respect to the direction of gravity (but nonetheless has a substantial vertical
component in that direction), Patent Owner’s arguments based on this
embodiment (Reb. Br. 18–20) are inapposite to the Examiner’s position that
is based principally on the embodiments of Figures 33, 35A, and 35B. See
RAN 77–79. Accord Resp. Br. 20–21 (distinguishing Ide’s Figure 3
embodiment from other embodiments).
We also find unavailing Patent Owner’s contention that Ide lacks an
inertial frame of reference due to Ide’s user-dependent features that require
manual operation. App. Br. 26–28; Reb. Br. 14–15. In short, nothing in the
claim precludes such manual operation, nor will we import user- or time-
independent aspects into the recited “inertial frame of reference” as Patent
Owner proposes. Although claims are given their broadest reasonable
interpretation in light of the Specification as it would be interpreted by
skilled artisans, this interpretation must not import limitations from the
Specification into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1316,
1323 (Fed. Cir. 2005) (en banc). Therefore, we see no error in the
Examiner’s findings that Ide compensates detected movement of a 3D
pointing device by transforming detected movement from a body frame of
reference to an inertial frame of reference, namely that associated with the
screen’s orientation. RAN 8, 73–75, 77–79.
Nor do we find error in the Examiner’s position that this
transformation is performed by determining a tilt as claimed in view of Ide’s
sensing the amount of rotation (θm) due to twisting of the operator’s wrist.
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RAN 8 (citing Ide, col. 21, ll. 50–55). Accord Request 40 (mapping Ide’s
roll angle (θm) to the recited tilt). First, the term “tilt” is not defined in the
’118 patent; accordingly, we construe the term with its plain meaning.
Patent Owner contends that the term “tilt” means a rotation from an
absolute reference, such as gravity or magnetic North, that the user cannot
control. App. Br. 33–34; Reb. Br. 12–13. The ’118 patent, however, does
not define the term “tilt” explicitly, let alone with Patent Owner’s proffered
definition of the term. At best, the ’118 patent refers to tilt generally, and in
one implementation, refers to tilt as variations in x-axis roll of a 3D pointing
device based on the manner in which it is held by a user. ’118 patent, col.
17, ll. 50–52.
Based on this description, we see no error in the Examiner’s reliance
on Ide’s sensing the amount of rotation (θm) due to twisting of the operator’s
wrist as determining tilt as claimed. RAN 8 (citing Ide, col. 21, ll. 50–55).
Accord Request 40 (mapping Ide’s roll angle (θm) to the recited tilt). Patent
Owner’s contention that Ide does not determine tilt because it allegedly must
be measured by sensing an absolute external field that the user cannot
control, such as gravity or magnetic North (App. Br. 34), is unavailing and
not commensurate with the scope of the claim.
Nor do we find error in the Examiner’s mapping Ide’s values of x’
and y’ in the equations in column 21, lines 51 to 55 to the recited rotational
outputs, for these outputs depend on rotational shift (θm) and, therefore, are
“rotational” at least in that sense. RAN 8–11. We reach this conclusion
despite the values of x’ and y’ representing linear movements as Patent
Owner contends (App. Br. 35–36; Reb. Br. 22), for nothing in the claim
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precludes the Examiner’s interpretation that is based reasonably on the x’
and y’ values’ dependence on rotational shift. Patent Owner’s arguments
are, therefore, unavailing and not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 4, 6–8, 12, and 17 not argued separately with
particularity.

Claims 23, 24, 28–32, and 35–37
We also sustain the Examiner’s rejection of independent claim 23 that
recites limitations commensurate with claim 1, but adds that the inertial
frame of reference is defined relative to gravity. As discussed above, we see
no error in the Examiner’s reliance on the functionality of Ide’s Figure 35A
(RAN 16, 78–79) for teaching the recited inertial frame of reference that is
effectively defined relative to gravity, particularly in view of the vertical
orientation of the display screen as noted previously.
Patent Owner’s arguments (App. Br. 32–33; Reb. Br. 11, 13–16, 18–
20) are unavailing and not commensurate with the scope of the claim for the
reasons previously discussed. Even assuming, without deciding, that the
vertical orientation of Ide’s display screen is not perfectly vertical, it would
nonetheless have a substantial vertical component as shown in the
perspective view in Figure 35A and, therefore, be at least substantially
aligned with gravity in that vertical direction. To the extent that Patent
Owner contends that the claimed invention requires perfect alignment with
gravity, such an argument is not commensurate with the scope of the claim
and, in any event, even the gravitational-alignment example cited by Dr.
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Riviere in his declaration contemplates at least some variation in this
alignment to allow for substantial alignment. See Riviere Decl. ¶ 14 (“[T]he
’118 patent explains that ‘the inertial frame of reference can [be] that in
which the 3D device has its bottom substantially parallel to a floor of a
room’ (’118 patent, 11:47-49). In this example, because the floor is defined
relative to (i.e., perpendicular to) the direction of gravity, the inertial frame
of reference is aligned to gravity.”) (emphasis added).
For the foregoing reasons, then, we are not persuaded that the
Examiner erred in rejecting claim 23, and claims 24, 28–32, and 35–37 not
argued separately with particularity.

Claim 25
We also sustain the Examiner’s rejection of claim 25 reciting that tilt
is measured relative to gravity. RAN 19, 78–79. For the reasons noted
previously, we see no error in the Examiner’s position that pointing-device
tilt would effectively be measured relative to the vertical direction (i.e., the
direction of gravity) given the three-dimensional perspective view in Ide’s
Figure 35A, and the relative orientations of the pointing device and the
display screen.

THE OBVIOUSNESS REJECTION OVER IDE AND OSA
In rejecting claim 3, the Examiner acknowledges that Ide does not
determine tilt using an accelerometer as claimed, but rather uses a
gyroscope-based rotation sensor. RAN 28–29, 79–82. The Examiner,
however, reasons that because accelerometers were commonly used to sense
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rotation, it would have been obvious to use an accelerometer to sense
rotation in Ide. RAN 29. The Examiner adds that doing so would also be a
simple substitution of one known element for another to obtain predictable
results. Id. Requester concurs with these findings and conclusions. Resp.
Br. 23–25.
Patent Owner argues that not only would replacing Ide’s rotation
amount sensing element 236 with an accelerometer render Ide unsatisfactory
for its intended purpose of enabling pointer operation in any imaginary
plane, Ide teaches away from such a replacement. App. Br. 37–39; Reb. Br.
23. Patent Owner adds that, based on Dr. Riviere’s experimental data, using
an accelerometer rather than a gyroscope would render Ide unsuitable for its
intended purpose of correcting user movements in both cursor control and
motion pattern input modes. App. Br. 40–41; Reb. Br. 22–23. Lastly,
Patent Owner contends that the Examiner not only summarily dismissed Dr.
Riviere’s opinions and associated factual underpinnings, but also failed to
properly consider the evidence of objective indicia of non-obviousness,
namely commercial success, praise in the industry, long-felt need, and
licensing of the ’118 patent. App. Br. 43–44; Reb. Br. 23.

ISSUES
I. Under § 103, has the Examiner erred in rejecting claim 3 by finding
that Ide and OSA collectively would have taught or suggested determining
tilt based on output from an accelerometer?
II. Is the Examiner’s proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
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obviousness conclusion? This issue turns on (1) whether using an
accelerometer in Ide as the Examiner proposes would render Ide unsuitable
for its intended purposes of (a) enabling pointer operation in any imaginary
plane, and (b) correcting user movements in both cursor control and motion
pattern input modes; and (2) whether Ide teaches away from the proposed
modification.
III. Did the Examiner properly consider the evidence of secondary
considerations of non-obviousness in concluding that the claimed invention
would have been obvious?

ANALYSIS
We begin by noting that it is undisputed that it was known in the art at
the time of the invention to use accelerometers to measure rotation and tilt.
See Reb. Br. 12 (noting that accelerometers measure absolute tilt relative to
gravity). Accord Riviere Decl. 17 (“[A]ccelerometers are used to determine
rotation away from the coordinate axis that is defined relative to the
gravitational field.”). Nor is it disputed that Ide uses a gyroscope—not an
accelerometer—to sense rotation. See RAN 79–81.
The question, then, is whether the Examiner erred by concluding that
it would have been obvious to use an accelerometer to determine tilt in Ide
as proposed. On this record, we find no error in the Examiner’s
determination.
To be sure, if the Examiner’s proposed modification renders the prior
art unsatisfactory for its intended purpose, the Examiner has failed to make a
prima facie case of obviousness. See In re Gordon, 733 F.2d 900, 902 (Fed.
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Cir. 1984). Although the submitted evidence is probative in this regard, it is
nevertheless insufficient to show error in the Examiner’s position.
First, we find unavailing Patent Owner’s contention that replacing
Ide’s rotation amount sensing element 236 with an accelerometer would
render Ide unsatisfactory for its intended purpose of enabling pointer
operation “in any imaginary plane.” App. Br. 37–38. According to Patent
Owner, such a replacement would restrict Ide’s plane of operation such that
at least one coordinate axis of the plane is fixed, thus introducing a “rigidity
in design choice” that is said to run counter to Ide’s seeking pointing
operation in “any arbitrary imaginary plane.” App. Br. 37–38.
But as Requester indicates, the term “‘any imaginary plane’” in Ide
merely means that the device operates in the air, as opposed to on a desk.
Resp. Br. 23. Because accelerometer tilt detectors are compatible with
operation “in the air,” Patent Owner has not shown persuasively that using
an accelerometer in Ide would render that system unsuitable for “in the air”
operation.
Nor are we persuaded that using an accelerometer would render Ide’s
system unsuitable for correcting user movements in both cursor control and
motion pattern input modes as Patent Owner contends. App. Br. 40–41;
Reb. Br. 22–23. We reach this conclusion despite Dr. Riviere’s testing using
an accelerometer as a rotation amount detector 237 of Ide that, according to
Dr. Riviere, produces a “grossly erroneous” motion correction result, unlike
a gyroscope. Riviere Decl. ¶ 27–28. Dr. Riviere’s testing was performed
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for a particular “dynamic situation,”
5
and he concludes from that testing that
an accelerometer is a suitable tilt sensor only for quasi-static applications—
not for a dynamic situation, such as motion pattern input.
Our emphasis underscores the fact that Dr. Riviere’s testing was not
only limited to a particular “dynamic situation,” but he actually
acknowledges the suitability of accelerometer tilt sensors in “quasi-static”
applications. Although Dr. Riviere does not explain what a “quasi-static”
application means, given the context in which the term is used, such an
application is apparently distinct from the dynamic applications involving,
for example, motion pattern input. See Riviere Decl. 27.
Nevertheless, we see no reason why Ide’s system could not be used in
such “quasi-static” applications—even for cursor control. That Dr. Riviere
acknowledges that the tilt estimated using an accelerometer eventually
approaches the same value indicated by a gyroscope as indicated in Figure 3
and paragraph 31 of his declaration only further bolsters this conclusion. As
shown in Dr. Riviere’s Figure 3, the point at which these tilt values converge
is just after one second.
Even assuming, without deciding, that this approximately one-second
interval before tilt-value convergence is when the user moves the device
and, consequently, when the associated motion pattern is generated as Dr.

5
Dr. Riviere refers repeatedly to a particular “dynamic situation” in
connection with the test procedure. See Riviere Decl. ¶ 27–28 (“Because of
the large error in the accelerometer-based tilt estimate for this dynamic
situation . . . .”); see also id. (“[T]he accelerometer is not a suitable
substitute for a gyroscope for this sort of application. . . . The gyroscope
produces a far better estimate of the roll angle in this dynamic situation.”)
(emphases added).
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Riviere declares (Riviere Decl. ¶ 32), that does not mean that such
performance would necessarily render Ide’s device unsuitable for other
dynamic situations, particularly for cursor control applications and those
situations involving less frequent movements.
Notably, the Examiner relies on Ide only for cursor control
applications—not Ide’s independent and distinct motion pattern input
aspects. RAN 83–85. Accord Resp. Br. 24 (noting this point and citing
ACP 73). Therefore, even assuming, without deciding, that accelerometers
are unsuitable for dynamic situations involving motion pattern input as Dr.
Riviere declares (Riviere Decl. ¶ 27), such unsuitability is not germane to
the Examiner’s reliance on Ide’s independent and distinct cursor control
aspects.
Nevertheless, to the extent that Dr. Riviere’s opinions are relevant to
Ide’s particular cursor control aspects on which the Examiner relies, Patent
Owner has still not shown persuasively that accelerometers would be
unsuitable in Ide for situations other than the particular “dynamic situation”
involved in Dr. Riviere’s testing, let alone “quasi-static” situations. The
latter situations are notable, for we see no reason why Ide’s system could not
be used in such situations for cursor control, particularly in light of their
acknowledged suitability in “quasi-static” situations. Although these
situations may be less common than dynamic situations, or have drawbacks
in terms of speed, efficiency, or performance, such factors may very well be
outweighed by the advantages of using accelerometers in lieu of gyroscopes
to determine tilt under those conditions—an engineering tradeoff well within
the level of ordinarily skilled artisans.
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Nor are we persuaded that Ide teaches away from using
accelerometers as rotation sensors. Although Ide may sense linear motion
with accelerometers, and sense rotation with a gyroscope in various
embodiments as Patent Owner indicates (App. Br. 38–39), nothing on this
record shows that Ide criticizes, discredits, or otherwise discourages
investigation into the invention claimed as required for teaching away. See
Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir. 2012);
see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). And even
assuming, without deciding, that an accelerometer would be inferior to, or
less desirable than, a gyroscope in sensing rotation in Ide, that alone is
insufficient to teach away from the ostensibly inferior accelerometer
alternative where, as here, the disclosure does not criticize, discredit, or
otherwise discourage that alternative. See In re Fulton, 391 F.3d 1195,
1200–01 (Fed. Cir. 2004). In short, the Examiner’s proposed combination
uses prior art elements predictably according to their established functions—
an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007).
Lastly, as Requester indicates, the Examiner considered all evidence
of secondary considerations of non-obviousness in concluding that the
claimed invention would have been obvious. RAN 91–92; Resp. Br. 25
(citing ACP 69–70). Despite Patent Owner’s arguments to the contrary
(App. Br. 44), the Examiner finds—and we agree—that the secondary
considerations evidence, namely regarding commercial success, praise in the
industry, long-felt need, and licensing of the ’118 patent, collectively fails to
outweigh the countervailing evidence of obviousness on this record. This
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evidence is based on the statements of Mr. Chad Lucien, Senior Vice
President of Sales and Marketing at Hillcrest Laboratories—the company
assigned as the current Patent Owner. See Declaration of Mr. Chad Lucien
Under 37 C.F.R. § 1.132, Exh. DECL-2 (“Lucien Decl.”).
Although we appreciate Mr. Lucien’s insights in this regard, this
evidence is nevertheless uncorroborated—a factor which further reduces its
probative value. Nor has Patent Owner shown a sufficient nexus between
the secondary considerations evidence and the claimed invention as the
Examiner indicates. RAN 91–92. In short, the Examiner does not find this
evidence, considered collectively, sufficient to overcome the countervailing
evidence of obviousness. Nor are we persuaded of error in that
determination.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3 as obvious over Ide and OSA, and claims 5, 9, 10, 13, 16, 18, 19, 21,
and 22 not argued separately with particularity.

THE OTHER OBVIOUSNESS REJECTIONS BASED ON IDE
We also sustain the Examiner’s obviousness rejections of (1) claims 3,
9, 10, 13, 14, 16, 20, 27, 34, and 38 over Ide and ADX; (2) claims 14–16
over Ide, ADX, and Ang; (3) claims 14 and 15 over Ide, OSA, and Ang; and
(4) claims 26 and 33 over Ide and Ellenby. RAN 37–48, 70–71. Patent
Owner reiterates similar arguments made previously, and alleges that the
additional cited references fail to cure those purported deficiencies. App.
Br. 36–37, 41–42. We are not persuaded by these arguments, however, for
the reasons previously discussed.
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THE REMAINING REJECTIONS
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner’s decision to also reject (1) claims 1–4, 6,
7, 9–13, 17, 23–26, 28–33, and 35–37 as anticipated by Ellenby; (2) claims 5
and 14 as obvious over Ellenby and OSA; (3) claims 14 and 15 as obvious
over Ellenby and Ang; and (4) claims 27 and 34 as obvious over Ellenby and
Ide. RAN 48–70. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (approving ITC’s determination based on a single dispositive
issue, and not reaching other issues not decided by the lower tribunal).

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, 6–8, 12, 17, 23–
25, 28–32, and 35–37 under § 102(b) as anticipated by Ide.
Under § 103, the Examiner did not err in rejecting (1) claims 3, 5, 9,
10, 13, 16, 18, 19, 21, and 22 as obvious over Ide and OSA; (2) claims 3, 9,
10, 13, 14, 16, 20, 27, 34, and 38 as obvious over Ide and ADX; (3) claims
14–16 as obvious over Ide, ADX, and Ang; (4) claims 14 and 15 as obvious
over Ide, OSA, and Ang; and (5) claims 26 and 33 as obvious over Ide and
Ellenby.
We do not reach the rejections citing Ellenby as a base reference.
DECISION
The Examiner’s decision to reject claims 1–10 and 12–38 is affirmed.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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

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PATENT OWNER:

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON DC 20001-4413

THIRD PARTY REQUESTOR:

PIERRE R. YANNEY
STROOCK & STROOCK & LAVAN LLP
180 MAIDEN LANE
NEW YORK, NY 10038-4982