Ex Parte 7,821,505 et al

Patent Trial and Appeal Board

Dec 6, 2013

95001761 (P.T.A.B. Dec. 6, 2013)

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.
95/001,761 09/29/2011 7,821,505 91223-820673(089500US) 2625
34018 7590 12/09/2013
GREENBERG TRAURIG, LLP (CHI)
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/09/2013 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
____________________

LOGITECH, INC.
Requester

v.

UNIVERSAL ELECTRONICS, INC.
Patent Owner and Appellant
____________________

Appeal 2013-009463
Reexamination Control 95/001,761
Patent No. US 7,821,505 B2
Technology Center 3900
____________________

Before JAMES T. MOORE, MARC S. HOFF, and JOHN A. JEFFERY,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner Universal Electronics, Inc. appeals under 35 U.S.C. §§
134(b) and 315(a) (2002) from the rejection of claims 1-101 as set forth in
the Right of Appeal Notice (RAN) mailed October 26, 2012. Requester
Logitech, Inc., did not file a respondent brief. The Examiner mailed an
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Examiner’s answer on May 3, 2013, which incorporated the RAN by
reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part.
The ‘505 patent issued to patentee (October 26, 2010), and is assigned
to assignee. The ‘505 patent concerns a universal controlling device
(“UCD”) having a processing device and a transmitter, and programmed to
distinguish between a first input type, indicative of an icon selection,
provided to a touch-sensitive surface and a second input type, indicative of a
moving touch, provided to the touch-sensitive surface. In response to the
first input type, the processing device causes the transmitter to transmit first
data representative of the selected icon. In response to the second input type,
the processing device causes the transmitter to transmit second data
representative of the moving touch (Abstract).
Claim 1 is exemplary of the claims on appeal:
1. A universal controlling device, comprising:
a display having a touch-sensitive surface in which is displayed a plurality
of graphical user interface icons;
a transmitter for transmitting data for commanding functional operations
of one or more appliances located remotely from the controlling device; and
a processing device for causing the transmitter to transmit data in response
to input provided to the touch-sensitive surface;
wherein, in response to the touch-sensitive surface of the universal
controlling device being provided a first input type indicative of a selection
of a one of the plurality of displayed graphical user interface icons, the
processing device causes the transmitter to transmit first data for
commanding at least a first functional operation of the one or more
appliances with the first data being representative of the one of the plurality
of graphical user interface icon selected by the first input type and, in
response to the touch-sensitive surface being provided a second input type
indicative of a motion made across the touch-sensitive surface, the
processing device causes the transmitter to transmit second data for
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commanding at least a second functional operation of the one or more
appliances with the second data being representative of the motion made
across the touch-sensitive surface provided by the second input type, and
wherein the processing device is programmed to distinguish the first input
type provided to the touch-sensitive surface from the second input type
provided to the touch sensitive surface.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Flowers US 4,578,671 Mar. 25, 1986
Asher US 5,327,160 Jul. 5, 1994
Goldstein US 5,410,326 Apr. 25, 1995
Hills US 5,506,572 Apr. 9 1996
Van Ryzin US 6,255,961 B1 Jul. 3, 2001
Mazza US 2002/0070915 Jun. 13, 2002
Yates US 2002/0118131 A1 Aug. 29, 2002
Hayes US 2002/0140571 A1 Oct. 3, 2002
Arling US 6,629,077 B1 Sep. 30, 2003
Hayes US 6,650,247 B1 Nov. 18, 2003
Yates US 6,750,803 B2 Jun. 15, 2004
Arling US 6,788,241 B2 Sep. 7, 2004
Segal US 6,765,557 B1 Jul. 20, 2004
Harris US 6,784,805 B2 Aug. 31, 2004
Suomela US 6,885,362 B2 Apr. 26, 2005
Yu US 6,980,120 B2 Dec. 27, 2005
Hayes US 7,046,161 B2 May 16, 2006
Wall US 6,989,763 B2 Jun. 24, 2006
Kim US 7,174,518 B2 Feb. 6, 2007
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Giger US 7,411, 515 B2 Aug. 12, 2008
Mears US 7,429,979 B2 Sep. 30, 2008
Dresti US 7,831,930 B2 Nov. 9, 2010

Claims 1-4, 72-75, 85, and 87-91 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Yates ‘131.
Claims 1-4, 72-75, 85, and 87-91 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Yates ‘803.
Claims 1-12, 21, 23-28, 30, 31, 69-75, 85, and 87-92 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Yates ‘131 in view of
Segal.
Claims 1-4, 72-75, 85, and 87-91 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Yates ‘131 in view of Yates ‘803.
Claims 1-4, 72-75, 85, and 87-91 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Yates ‘131 in view of Wall.
Claims 1-4, 72-75, 85, and 87-91 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Yates ‘131 in view of Kim.
Claims 1-4, 72-75, 85, and 87-91 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Yates ‘131 in view of Asher.
Claims 1-6, 9-12, 21, 23-27, 69, 72-75, 85, and 87-91 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Yates ‘131 in view of
Mears.
Claims 5, 6, 9-12, 21, and 23-27 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Yates ‘131 in view of Mears.
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Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131 in view of Mears and Suomela, or Yates ‘803
in view of Mears and Suomela.
Claims 14, 77, and 79 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yates ‘131 in view of Segal, or Yates ‘131 in view
of Mears.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘803 in view of Mears.
Claims 77 and 79 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, or Yates ‘803, or Yates ‘131 in view of Segal,
or Yates ‘131 in view of Yates ‘803, or Yates ‘131 in view of Wall, or Yates
‘131 in view of Kim, or Yates ‘131 in view of Asher, or Yates ‘131 in view
of Mears, or Yates ‘803 in view of Mears.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131 in view of Segal and Flowers, Hills, or Giger;
Yates ‘131 in view of Mears and Flowers, Hills, or Giger; and Yates ‘803 in
view of Mears and Flowers, Hills, or Giger.
Claims 17 and 22 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Yates ‘131, Segal and Mazza: Yates ‘131, Mears and
Mazza and Yates ‘803, Mears and Mazza .
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131 in view of Segal, Mazza, and Yu; Yates ‘131
in view of Mears, Mazza, and Yu; and Yates ‘803 in view of Mears, Mazza,
and Yu.
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Claim 19 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Yates ‘131, in view of Segal, Arling ‘077, Yates ‘131,
Mears, and Arling ‘077 and Yates or Mears and Arling ‘077.
Claim 20 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Yates ‘131, Segal, and Hayes ‘571, Yates ‘131, Mears and
Hayes ‘161 or Hayes ‘571 and Yates ‘803, Mears and Hayes ‘161 or Hayes
et al. ‘571.
Claim 96 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ’131 and Goldstein, Yates ‘803 and Goldstein;
Yates ‘131, Yates ‘803 and Goldstein; Yates ‘131, Wall and Goldstein;
Yates ‘131, Kim and Goldstein and Yates ‘131, and Asher and Goldstein.
Claims 24, 33 and 96 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yates ‘131, Segal and Goldstein; Yates ‘131, Mears
and Goldstein.
Claims 24 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘803, Mears and Goldstein.
Claim 101 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131 and Dresti, Yates ‘803 and Dresti, Yates ‘131,
Yates ‘803 and Dresti, Yates ‘131, Wall and Dresti ,Yates’131, Kim and
Dresti and Yates ‘131, Asher and Dresti.
Claims 26, 27, 38, 41-48, 51, 52, 58, 60-64, 65, 67 and 101 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates ‘131,
Segal and Dresti.
Claims 26, 27,38,41,42,45-48,51,52,58, 60-64 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yates ‘131, Mears and Dresti.
Claims 26, 27, 38,41,42,45-48, 51, 52, 58, 60-64 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Yates ‘803, Mears and Dresti.
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Claims 26, 27, 38, 41-48, 51, 52, 58, 60-65, 67 and 101 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Segal and Dresti.
Claims 28 and 92 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal and Van Ryzin.
Claim 65 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal, Dresti and Van Ryzin.Claims 29 and
93 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view
Yates ‘131,Segal and Harris.
Claim 66 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal, Dresti and Harris.
Claim 93 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131 and Harris; Yates, ‘803 and Harris, Yates
‘131, Yates, ‘803 and Harris, Yates ‘131, Wall and Harris, Yates’131, Kim
and Harris, Yates ‘131, Asher and Harris, Yates ‘'131, Mears and Harris, and
Yates ‘803, Mears and Harris.
Claims 31 and 94 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Yates ‘131, Mears and Segal.
Claim 32 stands rejected under 35 U.S. C. § 103 (a) as being
unpatentable over Yates ‘131, Segal and Hayes ‘247 or Arling ‘241: Yates
‘131, Mears and Hayes ‘247 or Arling ‘241 and Yates ‘803, Mears and
Hayes ‘247 or Arling ‘241.
Claims 34-37 and 97-100 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over Yates ‘131 and Arling ‘241; Yates ‘803 and Arling
‘241; Yates ‘131, Segal and Arling ‘241; Yates ‘131, Yates ‘803 and Arling
‘241; Yates’131,Wall and Arling ‘241; Yates ‘131, Kim and Arling ‘241;
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and Yates ‘131, Asher and Arling ‘241, Yates ‘131, Mears and Arling ‘'241.;
and Yates ‘803, Mears and Arling ‘241.
Claims 39 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Segal and Arling ‘241or Hayes ‘161: Yates ‘131, Segal and Arling
‘241 or Hayes’161: Yates ’131, Mears and Arling ‘241 or Hayes ‘161 and
Yates ‘803, Mears and Arling ‘241 or Hayes ’161.
Claim 40 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131, Segal, Arling ‘241 or Hayes’161, and Hayes ’161 , Yates
‘131, Mears, Arling ‘241 or Hayes ’161, and Hayes ’161; and Yates’80,.
Mears, Arling ’241 or Hayes ’161, and Hayes ’161.
Claims 76 and 78 stand rejected under 35 U.S.C. § 103 (a) as
unpatentable over Yates ‘131and Suomela; Yates ’803 and Suomela; Yates
‘131, Segal and Suomela; Yates ’131, Yates ‘803 and Suomela; Yates ‘131,
Wall and Suomela; Yates ‘131, Kim and Suomela; Yates ‘131, Asher and
Suomela; Yates ‘131, Mears and Suomela; and Yates ‘803, Mears and
Suomela.
Claims 49 and 50 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal, Dresti and Suomela; Yates ‘131,
Mears, Dresti and Suomela; and Yates ’803, Mears, Dresti and Suomela.
Claim 50 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal and Suomela, Yates ‘131, Mears and
Suomela: and Yates ‘803, Mears and Suomela.
Claim 80 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131 and Flowers, Hills or Giger; Yates ‘803 and Flowers, Hills
or Giger, Yates ‘131, Segal and Flowers, Hills or Giger, Yates ‘131, Yates
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'803 and Flowers, Hills or Giger; Yates ‘131, Wall and Flowers, Hills or
Giger; Yates’131, Kim and Flowers, Hills or Giger; Yates ’131, Asher and
Flowers, Hills or Giger; Yates ‘131, Mears and Flowers, Hills or Giger and
Yates ‘803, Mears and Flowers, Hills or Giger.
Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131. Segal, Dresti and Flowers. Hills or Giger:
Yates ‘131, Mears, Dresti and Flowers, Hills or Giger; and Yates ‘803,
Mears, Dresti and Flowers. Hills or Giger.
Claims 81 and 86 stand rejected under 35 U.S.C. § 103 (a) as
unpatentable over Yates ‘131and Mazza; Yates ‘803 and Mazza; Yates ‘131.
Segal and Mazza; Yates ‘131, Yates ‘803 and Mazza; Yates ‘131,Wall and
Mazza: Yates ‘131, Kim and Mazza, Yates ‘131, Asher and Mazza: Yates
‘131, Mears and Mazza; and Yates ‘803, Mears and Mazza.
Claims 54 and 59 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal, Dresti and Mazza; Yates ‘131, Mears,
Dresti and Mazza; and Yates ‘803, Mears,Dresti and Mazza.
Claim 82 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131, Mazza and Yu; Yates ’803, Mazza and Yu; Yates ‘131,
Segal, Mazza and Yu; Yates ‘131, Yates ‘803, Mazza and Yu; Yates ‘131,
Wall, Mazza and Yu; Yates ‘131, Kim, Mazza and Yu; Yates ‘131, Asher,
Mazza and Yu; Yates ‘131, Mears, Mazza and Yu; and Yates ‘803, Mears,
Mazza and Yu.
Claim 55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal ,Dresti, Mazza, and Yu; Yates ‘131,
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Mears, Dresti ,Mazza and Yu; and Yates ‘803, Mears, Dresti, Mazza, and
Yu.
Claim 83 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131 and Arling ‘'077; Yates ‘803 and Arling ‘077; Yates ‘131,
Segal and Arling ‘077; Yates ‘131, Yates ‘803 and Arling ‘077; Yates ‘131,
Wall and Arling ‘077, Yates ‘131, Kim and Arling ‘077, Yates ‘131, Asher
and Arling ‘077; Yates ‘131, Mears and Arling ‘077; and Yates ‘803. Mears
and Arling ‘077.
Claim 56 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal, Dresti and Arling ‘077; Yates ‘131,
Mears, Dresti and Arling ‘077; and Yates ‘803, Mearset, Dresti and Arling
‘077.
Claim 84 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131 and Hayes’161 or Haves ‘571; Yates ‘803 and Hayes’161 or
Hayes ‘571;Yates ‘131, Segal and Hayes’161 or Hayes ‘571; Yates
‘131,Yates ‘803 and Hayes ‘161 or Hayes ‘571; Yates ‘131, Wall and
Hayes ‘161 or Hayes ‘571; Yates ‘131, Kim and Hayes ‘161 or Hayes ‘571;
Yates ‘131, Asher and Hayes ‘161 or Hayes ‘571;Yates ‘131, Mears and
Hayes ‘161 or Hayes ‘571; and Yates ‘803, Mears and Hayes’161 or Hayes
’571.
Claim 57 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yates ‘131, Segal and Dresti and Hayes ‘161 or Hayes
‘571; Yates ‘131, Mears and Dresti and Hayes ‘161 or Hayes ‘571; and
Yates ‘803, Mears and Dresti and Hayes’161 or Hayes ‘571.

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Claim 67 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131, Mears, Dresti, and Segal; and Yates ‘803, Mears, Dresti
and Segal.
Claim 68 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131, Segal , Dresti and Hayes’247 or Arling ‘241; Yates ‘131,
Mears, Dresti and Hayes’247 or Arling ‘241; and Yates ‘803, Mears, Dresti
and Hayes’247 or Arling ‘241.

Claim 95 stands rejected under 35 U.S.C. § 103 (a) as unpatentable
over Yates ‘131 and Arling’241; Yates ‘803 and Arling’241; Yates’131,
Segal and Arling ‘241; Yates ‘131, Yates ‘803 and Arling ‘241; Yates ‘131,
Wall and Arling ‘241; Yates ‘131, Kim and Arling; ‘241;Yates ‘131, Asher
and Arling ‘241, Yates ‘131, Mears and Arlinq ‘241; and Yates ‘803, Mears
and Arlinq’241.
Claims 14, 15, 50-52, and 77-79 stand rejected under 35 U.S.C. § 112,
first paragraph.

ISSUES
Appellants argue, inter alia, that Yates ‘131 does not expressly or
inherently disclose a UCD that responds to a first input type indicative of a
selection of a one of a plurality of graphical user interface icons by causing a
transmitter of the UCD to transmit first data that is representative of the one
of the plurality of graphical user interface icons selected by the first input
type, that responds to a second input type indicative of a motion made across
the touch-sensitive surface by causing the transmitter of the UCD to transmit
second data that is representative of the motion made across the touch-
sensitive surface provided by the second input type, and wherein the UCD is
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capable of distinguishing the first input type from the second input type
(App. Br. 8-9).
Appellants’ contentions present us with the following issue:
Does Yates ‘131 expressly or inherently disclose a UCD that responds
to a first input type indicative of an icon selection, to a second input type
indicative of a motion across a touch-sensitive surface, and wherein the
UCD is capable of distinguishing the first input type from the second input
type?
PRINCIPLES OF LAW
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).

ANALYSIS
§ 102 REJECTION OF CLAIMS 1 AND 72 OVER YATES ‘131 OR YATES ‘803
The Examiner finds that Yates ‘131 teaches a universal controlling
device (“UCD”) which comprises, inter alia, a processing device
programmed to distinguish the first input type (i.e., indicative of a selection
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of one of a plurality of displayed graphical user interface icons) provided to
the touch-sensitive surface from the second input type (i.e., indicative of a
motion made across the touch-sensitive surface) provided to the touch-
sensitive surface, as claim 1 recites (Ans. 9-11). In the claim, the processing
device is recited as “causing the transmitter to transmit data in response to
input provided to the touch-sensitive surface.”
The Examiner reads remote control 12 of Yates ‘131 as corresponding
to the claimed UCD (Ans. 7). Because the claim recites that the UCD
comprises a processing device and a transmitter, remote control 12 must
include (either expressly or inherently) the claimed processing device and
transmitter for Yates ‘131 to anticipate the claimed invention.
We do not agree with the Examiner’s finding that remote control 12 of
Yates ‘131 inherently comprises a processing device that distinguishes the
first input type from the second input type. The Examiner acknowledges that
Yates ‘131 does not expressly disclose the claimed distinguishing, but
contends that “single control signal 30 must have some kind of information
thereon . . . to allow the controller 14 to discriminate the single control
signal 30 from various other possible single control signals to communicate
with the appropriate appliance device” (Ans. 8).
We agree with Appellants that remote control 12 of Yates ‘131 need
not necessarily “transmit . . . first data that is representative of the one of the
plurality of graphical user interface icons selected by the first input type and
second data that is representative of the motion made across the touch-
sensitive surface provided by the second input type distinguishable from the
first input type as is required of inherency” (App. Br. 9).
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Appellants argue, and we agree, that remote control 12 “does not and
need not necessarily transmit to the controller 14 anything more than the
expressly described data indicative of the location of a touch on the touch
pad 28 when input is provided to the touch pad 28” (App. Br. 11). The
Examiner notes that Yates teaches switch 76 “differentiates between
operating modes (i.e. relative versus absolute)” (Ans. 10). The Examiner
suggests that when switch 76 is in relative mode, the touch pad 28 of remote
control 28 operates like a computer mouse, and when switch 76 is in
absolute mode, touch pad 28 operates to select a GUI icon that is mapped to
the (absolute) location that is touched (Ans. 9).
The Examiner argues that the relative/absolute mode information is
necessarily part of the “single signal 30” transmitted by remote control 12
(Ans. 10). The Examiner states that nowhere does Yates ‘131 disclose a
separate signal being sent by remote control 12, in addition to signal 30, to
control at least one appliance or device (Ans. 10). The Examiner concludes
that since Yates ‘131 discloses only the “single signal 30 providing
information to the controller 14 and the controller 14 must differentiate
between mode and X/Y coordinate information simultaneously for operation
of the at least one appliance device” (Ans. 11), Yates teaches a “remote
control” in accordance with the claimed invention.
We do not agree with the Examiner’s position. Rather, we are
persuaded by Appellants that in Yates ‘131, “the same data – i.e., the data
that is representative if a location of a touch on the touch pad 28 – is
expressly described as being transmitted as appropriate in response to any
type of touch on the touch pad 28” (App. Br. 15). We further agree that in
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Yates, remote control 12 “does not distinguish between any different input
types provided to the touch pad 28. Rather, the controller 14 will respond to
the data that is ubiquitously transmitted in the signal 30, i.e., the data
indicative of the location of the touch on the touch pad 28, in a manner that
will depend upon the current operating mode of the system/controller 14”
(App. Br. 15; emphasis added).
Because we find that controller 14 of Yates ‘131, not remote control
12, is the component charged with distinguishing between modes of
operation, we find that Yates ‘131 does not teach all the limitations of
independent claim 1. We will not sustain the Examiner’s § 102 rejection of
claims 1 and 72 over Yates ‘131. Because Yates ‘803 results from the same
patent application as Yates ‘131, we will also not sustain the § 102 rejection
of claims 1 and 72 over Yates ‘803, for the same reasons.

§ 103 REJECTION OF CLAIMS 1, 5, 7, 9, 70, AND 72 OVER YATES ‘131 IN VIEW
OF SEGAL, WALL, KIM, ASHER, OR MEARS
As noted supra, we find that Yates ‘131 does not teach all the
limitations of independent claim 1. We find that Yates ‘131 also does not
teach all the limitations of independent claim 5, for the same reasons given
supra.
We have reviewed Segal and find that it does not supply the teachings
missing from Yates ‘131. Therefore, we will not sustain the § 103 rejection
of claims 1, 5, 7, 9, 70, and 72 over Yates ‘131 in view of Segal.
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We have reviewed Wall and find that it does not supply the teachings
missing from Yates ‘131. Therefore, we will not sustain the § 103 rejection
of claims 1 and 72 over Yates ‘131 in view of Wall.
We have reviewed Kim and find that it does not supply the teachings
missing from Yates ‘131. Therefore, we will not sustain the § 103 rejection
of claims 1 and 72 over Yates ‘131 in view of Kim.
We have reviewed Asher and find that it does not supply the teachings
missing from Yates ‘131. Therefore, we will not sustain the § 103 rejection
of claims 1 and 72 over Yates ‘131 in view of Asher.
We have reviewed Mears and find that it does not supply the
teachings missing from Yates ‘131. Therefore, we will not sustain the § 103
rejection of claims 1, 5, 9, and 72 over Yates ‘131 in view of Mears.

§ 103 REJECTION OF CLAIMS 1 AND 72 OVER YATES ‘131 IN VIEW OF YATES
‘803
Because Yates ‘131 and Yates ‘803 arise from the same application,
Yates ‘803 by definition fails to remedy the deficiencies of Yates ‘131 noted
supra. Therefore, we will not sustain the § 103 rejection of claims 1 and 72
over Yates ‘131 in view of Yates ‘803.

§ 103 REJECTION OF CLAIMS 5 AND 9 OVER YATES ‘803 IN VIEW OF MEARS
Because Yates ‘803 arises from the same application as Yates ‘131,
we find that it does not teach all the limitations of independent claim 5, for
the same reasons expressed supra with regard to Yates ‘131.
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17
We have reviewed Mears and find that it does not supply the
teachings missing from Yates ‘803. Therefore, we will not sustain the § 103
rejection of claims 5 and 9 over Yates ‘803 in view of Mears.

CLAIMS 2-4, 6, 8, 10-69, 71, AND 73-101
Each of these claims depends from independent claim 1 or
independent claim 5. As noted supra, we do not sustain the rejection of
independent claims 1 and 5. We have reviewed the further references
applied against these claims and we find that they do not remedy the
deficiencies of Yates ‘131 or Yates ‘803. Therefore, we will not sustain the
Examiner’s rejection of claims 2-4, 6, 8, 10-69, 71, and 73-101.

§ 112 REJECTION OF CLAIMS 14, 15, 50-52, AND 77-79
These claims stand rejected under 35 U.S.C. § 112, first paragraph.
Appellant presented no arguments contesting the rejection (App. Br. 7).
Accordingly, we will sustain pro forma the Examiner’s § 112 rejection of
claims 14, 15, 50-52, and 77-79.

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Reexamination Control 95/001,761
Patent No. 7,821,505 B2

18

CONCLUSIONS
Yates ‘131 does not expressly or inherently disclose a UCD that
responds to a first input type indicative of an icon selection, to a second
input type indicative of a motion across a touch-sensitive surface, and
wherein the UCD is capable of distinguishing the first input type from the
second input type.

ORDER
The Examiner’s rejection of claims 14, 15, 50-52, and 77-79 is
affirmed. The Examiner’s rejection of claims 1-13, 16-49, 53-76, and 80-101
is reversed.

AFFIRMED-IN-PART

Appeal 2013-009463
Reexamination Control 95/001,761
Patent No. 7,821,505 B2

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PATENT OWNER:

GREENBERG TRAURIG, LLP (CHI)
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CHICAGO IL 60601-1732

THIRD PARTY REQUESTER:

KILPATRICK TOWNSEND & STOCKTON LLP
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