Ex Parte Abrams

Board of Patent Appeals and Interferences

Jul 17, 2006

09842471 (B.P.A.I. Jul. 17, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ROGER KENNETH ABRAMS
_______________

Appeal No. 2006-1093
Application No. 09/842,471
_______________

ON BRIEF
_______________

Before THOMAS, JERRY SMITH, and HOMERE, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-55, which constitute all the claims pending in this
application.
The invention pertains to improving the use of pointing devices (e.g., a
mouse) and selection of icons on graphical user interfaces by physically impaired
users. Specifically, the invention includes a method and system that acquires
data corresponding to the motion of a pointing cursor of a pointing device used to
move the cursor from a first source position to a first destination position on a
Appeal No. 2006-1093
Application No. 09/842,471

display. A set of motion vectors corresponding to such motion is generated and
stored along with the first destination position referenced to the first source
position. In one embodiment, a destination point icon is predicted by comparing
a motion vector imparted by a user to the cursor to a previously acquired motion
vector. The destination point icon is then highlighted until the user actuates the
icon.

Representative claim 1 is reproduced as follows:

1. A method for improving a selection of a graphic user interface (GUI)
icon with a pointing device, comprising the steps of:
acquiring data corresponding to a motion of a pointing cursor on a display,
said motion of said pointing cursor corresponding to a pointing device used to
move said pointing cursor from a first source position to a first destination
position on said display;
generating a set of motion vectors corresponding to said motion of said
pointing cursor from said first source position to said first destination position;
and
storing said set of motion vectors and said first destination position
referenced to said first source position.

The examiner relies on the following reference:

Robertson et al.
(Robertson)
5,598,183 Jan. 28, 1997

The following rejection is on appeal before us:
Claims 1-55 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Robertson.

2
Appeal No. 2006-1093
Application No. 09/842,471

Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation relied upon by the
examiner as support for the rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant's arguments set forth in
the briefs along with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the
disclosure of Robertson does not fully meet the invention as set forth in claims 1-
46, 48, 51, and 54. We reach the opposite conclusion, however, with respect to
claims 47, 49, 50, 52, 53, and 55. Accordingly, we affirm-in-part.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468
U.S. 1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). Only those arguments actually made by appellant have been considered
3
Appeal No. 2006-1093
Application No. 09/842,471

in this decision. Arguments which appellant could have made but chose not to
make in the brief have not been considered and are deemed to be waived [see
37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how the claimed invention is deemed to be
fully met by the disclosure of Robertson [answer, pages 3-7]. Regarding
independent claims 1, 17, and 33, appellant argues that Robertson does not
disclose generating a set of motion vectors corresponding to the motion of the
pointing cursor from the first source position to the first destination position [brief,
page 6]. Appellant argues, among other things, that Robertson discloses a
correction vector that is generated when the cursor is in proximity to a control
and such a correction vector is not the same as generating a set of vectors
corresponding to the motion of the pointing cursor from a source position to a
destination position [brief, page 6].
The examiner responds that Robertson inherently generates a set of
motion vectors corresponding to the cursor’s motion. According to the examiner,
during cursor movement, the system stores all positions that the cursor passes
through and generates a set of vectors from all these positions from the first
position to the destination position [answer, page 8].
Appellant also argues that Robertson does not disclose storing the set of
motion vectors and the first destination position referenced to the first source
position as claimed [brief, page 7]. Appellant notes that Robertson teaches
storing the X and Y coordinates of the cursor’s current and intended positions.
4
Appeal No. 2006-1093
Application No. 09/842,471

Such a technique, according to appellant, is not the same as storing vectors
[brief, pages 7 and 8; reply brief, page 4]. The examiner responds that the
limitation is fully met because Robertson stores all positions to which the cursor
moves as the cursor moves from a first source position to the intended
destination position [answer, page 10].
We will not sustain the examiner’s rejection. In our view, the disclosure of
Robertson does not disclose storing a set of motion vectors and the first
destination position referenced to the first source position as claimed in
independent claims 1, 17, and 33 [emphasis added].
In Robertson, the most relevant embodiment is that shown in Figs. 6-8. In
that embodiment, once the cursor enters the control region 152, a correction
vector with X and Y coordinates is calculated and added to the cursor control
signals. The correction vector 156 causes the cursor to move toward the center
point of control 150 while the cursor is within the control region 152 (i.e., in
proximity with the control) [Robertson, Fig. 6 and col. 11, lines 8-50]. As shown
in Fig. 7, the cursor’s position is continually updated in this manner so that the
cursor appears to move across the display with a smooth motion [Robertson, Fig.
7 and col. 12, lines 27-40].
Although we agree with the examiner that Robertson inherently generates
a set of motion vectors corresponding to the cursor’s motion as explained on
5
Appeal No. 2006-1093
Application No. 09/842,471

Pages 7 and 8, infra, of this opinion,1 Robertson does not reasonably teach nor
suggest storing the set of motion vectors and the first destination position
referenced to the first source position as claimed. Calculating a deviation in a
cursor’s X and Y coordinates derived from the X and Y components of a
correction vector to update the cursor’s X and Y coordinates in Robertson does
not necessarily entail storing a set of motion vectors and the first destination
position referenced to the first source position as claimed.
Furthermore, we disagree with the examiner that Robertson inherently
stores a set of motion vectors as the cursor moves from one position to another.
Rather, the X and Y coordinates of such motion are stored in Robertson’s
system. Although motion vectors can be calculated from a cursor’s X and Y
coordinates as the cursor moves,2 there is no express or implied teaching in
Robertson to store the generated vectors and the first destination position
referenced to the first source position as claimed.3
Consequently, Robertson fails to disclose -- expressly or inherently --
every limitation recited in independent claims 1, 17, and 33. Accordingly, we will
not sustain the examiner’s anticipation rejection of those claims. Since we do not
sustain the examiner's rejection of independent claims 1, 17, and 33, we likewise

1 See also Robertson, Fig. 6 (showing a set of correction vectors 156 that point to the center of
control 150).
2 See Pages 7 and 8, infra, of this opinion.
3 We note, however, that the question of whether storing motion vectors corresponding to cursor
movement in lieu of storing the cursor’s X and Y coordinates corresponding to such movement
would have been obvious to the skilled artisan at the time of the invention constitutes an
obviousness issue under 35 U.S.C. § 103(a) that is not before us.
6
Appeal No. 2006-1093
Application No. 09/842,471

do not sustain the examiner's rejection of dependent claims 2-16, 18-32, and 34-
46.
We reach an opposite conclusion, however, with respect to independent
claims 47, 50, and 53. These claims call for, in pertinent part, predicting a
destination point icon by comparing a motion vector imparted by a user to a
pointing cursor to a previously acquired motion vector acquired from the user
moving the cursor. Claims 47, 50, and 53, however, do not require storing a set
of motion vectors and the first destination position referenced to the first source
position as discussed above in connection with independent claims 1, 17, and
33.
At the outset, we note that merely moving a cursor from one point to
another fully meets the limitation reciting a “motion vector imparted by a user to a
pointing cursor.” That is, when a user moves a cursor from one point to another
(i.e., from a source to a destination), it is necessarily vector movement because
vectors with a definite magnitude and direction are established between at least
two successive points along the cursor’s path of travel. Thus, as a user moves
the cursor along a path, new vectors are continually created using the cursor’s
current coordinate and its immediately-preceding coordinate. Moreover,
determining a change in direction of a particular path taken by the cursor
necessarily requires comparing not only coordinates along the path, but also
vectors created between those coordinates.
7
Appeal No. 2006-1093
Application No. 09/842,471

In view of this analysis, we conclude that the scope and breadth of the
claim language does not preclude the disclosure of Robertson. In Fig. 4, for
example, the motion vector resulting from the user's moving the cursor from one
point to another would be necessarily compared to a previously-acquired motion
vector to predict the "destination point icon" (i.e., control).4
Furthermore, in Fig. 6 of Robertson, the motion vectors acquired while the
user moves the cursor along paths 158 and 164 are considerably different than
those acquired in the control region 152 in proximity with control 150. That is, the
vectors created along the straight path 158 have at least a substantially constant
direction, unlike the vectors created along curved path 162. Thus, the existence
of the “destination point icon” (control 150) would necessarily be predicted by
comparing the respective motion vectors from path 162 to path 158.
In fact, such a result follows from comparing the successive vectors
created in path 162 alone. In this case, as the user moves the cursor along the
curved path 162 in the vicinity of control 150, each successive vector will have at
least a different direction. The existence of the control 150 would necessarily be
predicted by comparing the respective motion vectors.
In short, claims 47, 50, and 53 are fully met by the disclosure of
Robertson. Accordingly, the examiner’s rejection of independent claims 47, 50,
and 53 is sustained.

4 The limitation “destination point icon” fully reads on the control given the limitation's broadest
reasonable interpretation.
8
Appeal No. 2006-1093
Application No. 09/842,471

We will also sustain the examiner’s rejection of claim 49 because the
claim also fully reads on Robertson. Specifically, the claim merely broadly
recites that motion of the pointing cursor is "modified" as a user moves a pointing
device from a source point icon to the predicted destination point icon. The
claim, however, does not specify how such modification is achieved. The scope
and breadth of the claim does not preclude mere cursor movement from one
control to another in Robertson (i.e., the cursor's motion is "modified" at least
when the user starts and stops moving the cursor). Accordingly, the examiner’s
rejection of claim 49 is therefore sustained.
We will not, however, sustain the examiner’s rejection of dependent claims
48, 51, and 54. The examiner indicates that the “NEW,” “OPEN,” and “CLOSE”
buttons constitute destination point icons that are highlighted when the cursor
moves to them [answer, page 13]. We disagree with the examiner that this
feature reasonably constitutes highlighting a destination point icon responsive to
the prediction step in the manner claimed essentially for the reasons noted by the
appellant. Accordingly, the examiner's rejection of claims 48, 51, and 54 is
therefore reversed.
In summary, we have not sustained the examiner's rejection with respect
to claims 1-46, 48, 51, and 54 on appeal. We have, however, sustained the
9
Appeal No. 2006-1093
Application No. 09/842,471

examiner's rejection of claims 47, 49, 50, 52, 53, and 55. Therefore, the decision
of the examiner rejecting claims 1-55 is affirmed-in-part.5
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

JS/jaj/rwk

5 As an ancillary observation, we note that (1) no antecedent basis exists for "said PROM" in
claims 33 and 53, and (2) no period exists at the end of claim 51. Because the parties did not
raise these issues on appeal, they are therefore not before us. In an ex parte appeal, "the Board
is basically a board of review − we review…rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (Bd. Pat. App. & Int. 2001). Consequently, we leave the issue
of whether the appellant has satisfied the requirements of MPEP §§ 2173.05(e) and 608.01(m) to
the examiner and the appellant.

10
Appeal No. 2006-1093
Application No. 09/842,471

KELLY K. KORDZIK
WINSTEAD SECHREST & MINICK PC
PO BOX 50784
DALLAS TX 75201

11