Ex parte AUBER et al.

Board of Patent Appeals and Interferences

Sep 18, 1997

08038424 (B.P.A.I. Sep. 18, 1997)

Application for patent filed March 29, 1993.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROLAND J. AUBER and
JOSEPH M. MOSLEY
____________
Appeal No. 95-3158
Application 08/038,4241
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1 and 4-7. No claim has
been allowed. Claims 1 and 6 are independent claims. Claim 4
depends from claim 1. Claim 5 depends from claim 4. Claim 7
depends from claim 6.
Reference Relied on by the Examiner
Aoki U.S. Patent No. 5,078,019 Jan. 7, 1992
Appeal No. 95-3158
Application 08/038,424
-2-
Haskins U.S. Patent No. 4,718,085 Jan. 5, 1988
Kirchgessner U.S. Patent No. 4,927,987 May 22, 1990
The Rejection on Appeal
Claims 1 and 4-7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Aoki, Haskins and Kirchgessner.
The Invention
The invention is directed to a handheld trackball pointing
device for use with a data processing apparatus. It includes
structure which permits a user to readily change the cable
position to reduce cable interference with user manipulation of
the device.
Claim 1 is representative and reads as follows:
1. A hand-held, finger-operated trackball pointing
device comprising:
a housing for housing electrical components of
said device, said housing being box shaped and having a
top wall, a bottom wall, and side walls extending
between said top wall and said bottom wall, said
housing being of a size adapted to be held in a user’s
hand and having cursor controls mounted thereon which
are adapted to be manipulated by a user while said
housing is being held in the user’s hand;
said curser controls comprising a trackball
mounted in said housing and having a portion projecting
upwardly from said top wall, for manipulation by a
user’s finger;
said cursor controls further comprising
selectively actuated button means mounted said top wall
Appeal No. 95-3158
Application 08/038,424
-3-
adjacent to said trackball, for actuation by a user’s
finger;
a cable for attaching said pointing device to a
computer, said cable passing downwardly through said
bottom wall of said housing;
said bottom wall having two recessed
channels extending orthogonally relative to each other
between said sides of said housing, said channels
intersecting where said cable passes through said
bottom wall, each of said channels having a U-shaped
cross section opening downwardly from said bottom wall,
each channel having a depth at least as great as the
thickness of said cable so that said cable can be
positioned vertically within said channel and lie
wholly within said channel without projecting
downwardly beyond said bottom wall;
said cable being flexible allowing a user to
selectively position said cable in any one of said
channels so as to direct said cable away from said
housing in a direction selected by the user and
minimize interference between the cable and the user’s
hand during operation of said pointing device; and
tab means located in said channels for
frictionally holding said cable in place in the one of
said channels where said cable is positioned by the
user.

Opinion
We do not sustain the rejection of claims 1 and 4-7 under
35 U.S.C. § 103 as being unpatentable over Aoki, Haskins and
Kirchgessner.
The claimed invention is directed to a handheld trackball
pointing device for use with a computer. A cable is included for
Appeal No. 95-3158
Application 08/038,424
-4-
attaching the pointing device to the computer. Aoki discloses a
trackball pointing device. Kirchgessner discloses a handheld
pointing device. Haskins is a reference specifically identified
in the background portion of the appellants' specification
Appeal No. 95-3158
Application 08/038,424
-5-
wherein the appellants assert their belief that Haskins belongs
to the category of non-analogous art. Haskins discloses a groove
and cord retaining means for a desk or wall mounted telephone.
The appellants argue that Haskins is outside the field of
applicable prior art for trackball pointing devices, and that
even if it is assumed to be analogous art, the teachings from
Aoki, Haskins and Kirchgessner [do] would not have reasonably
suggested the appellants' claimed invention. On both of these
points, we agree with the appellants.
Given two useful devices of whatever type, if one can
broaden or generalize the inventive field to whatever extent
subjectively desired, at some point the two devices will
inevitably be in the same field of endeavor no matter how
different they originally may be. If that happens, the inquiry
of whether two devices are within the same field of endeavor
becomes meaningless. Certainly, a rule of reason must apply.
The examiner defines the relevant field of endeavor as
anything concerning the "cable of an input device" (answer at 8).
In our view, that is unduly broad. The claimed invention
specifically concerns a hand-held trackball-type pointing device
having cursor controls for use with a computer. Defining the
field of the inventors' endeavor as any input device with a cable
Appeal No. 95-3158
Application 08/038,424
-6-
is unreasonably broad. Haskins discloses a desk or wall mounted
telephone. Moreover, to the extent that Haskins' telephone is an
input device, it provides input to a telephone network or
exchange, not a computer or anything which provides a
controllable cursor through the input.
In our view, Haskins is also not reasonably pertinent to the
particular problem with which the appellants were involved. It
should be noted that the problem with which the appellants were
involved concerns the position of the cable extending from the
housing of the device. A plurality of user selectable positions
are provided so that the user may place the cable in a position
most suitable for him or her and minimize the resulting
interference with user manipulation of the hand-held device.
See the appellants' specification at pages 3-4. The examiner has
not pointed to anything which indicates or otherwise explained
why a desk or wall mounted telephone suffers or experiences a
problem in which the position of the line cord connection would
interfere with one's usage of the telephone. It is true that
Haskins' Figure 1 shows a telephone with two line cord grooves
(one for desk mounting and one for wall mounting), but they are
intended for accommodating different length line cords (column 1,
lines 15-23). The appellants' problem concerns reorienting the
Appeal No. 95-3158
Application 08/038,424
-7-
same cable to different selectable positions. In Haskins'
telephone, each cable has only one fixed position.
Because Haskins is not within the appellants' field of
endeavor or reasonably pertinent to the problem with which the
appellants were involved, it constitutes non-analogous art and
thus is not applicable in a rejection under 35 U.S.C. § 103.
However, even assuming that Haskins is analogous art and
therefore is applicable against the appellants' claims, the
appellants are correct that the combination of Aoki, Haskins, and
Kirchgessner would not have reasonably suggested the appellants'
claimed invention. The following discussion assumes that Haskins
constitutes analogous art.
Neither Aoki nor Kirchgessner discloses recessed channels on
the wall of the housing through which the cable passes. There is
no need for such recessed channels in Aoki and Kirchgessner
because in both Aoki and Kirchgessner the cable does not extend
through the bottom housing of the device. However, we find that
the basic skill intrinsically possessed by one with ordinary
skill in the art encompasses the knowledge that the cable can be
made to pass through any wall of the housing, including the
bottom wall, albeit with associated disadvantages. But even if
Aoki and Kirchgessner's cable were to extend through the bottom
Appeal No. 95-3158
Application 08/038,424
-8-
of the housing, in our view there would have been insufficient
motivation for one with ordinary skill in the art to use Haskins'
multiple recessed grooves in either Aoki or Kirchgessner.
In Haskins, the multiple grooves are designed for
alternative line cords. A long line cord for desk mounting would
go into the long groove, and a short line cord for wall mounting
would go into the shorter groove (column 1, lines 15-23). Where
the same cable is used as in the pointing devices of Aoki and
Kirchgessner, one with ordinary skill in the art would not have
been led to use Haskins' multiple grooves.
Even assuming that Haskins' multiple grooves for the line
cord (not the handset cord) would have been reasonably suggested
for use with the cable of Aoki or Kirchgessner, Haskins would not
have reasonably suggested the specific arrangement of the
multiple channels as required by the claimed invention.
According to claim 1, the recessed channels must (1) extend
orthogonally relative to each other, and (2) intersect where the
cable passes through the bottom wall of the housing.
In Haskins' Figure 3 embodiment, the optional groove for
wall mounting is not shown and thus to say that the channels
would meet the requirements of claim 1 amounts to mere
speculation and is improper. In Haskins' Figure 1 illustration
Appeal No. 95-3158
Application 08/038,424
-9-
of the prior art, the long groove 15 and the short groove 19
do not intersect at where the cable or line cord is connected or
attached to the housing. To dismiss these differences as being
routine design choices for one with ordinary skill in the art
would be arbitrary, without support on this record, and
tantamount to ignoring the features of the claimed invention.
Accordingly, we conclude that orthogonal channels intersecting at
where the cable passes through a wall of the housing would not
have been suggested by Haskins or any combination of Haskins,
Aoki and Kirchgessner.
The features of claim 1 as discussed above are also included
in independent claim 6. Claim 6 additionally requires two more
recessed channels and all four channels would intersect at where
the cable emerges from the housing. For similar reasons as those
discussed above, the four channel version also would not have
been reasonably suggested by the prior art. The appellants are
correct that the mere fact that the prior art may be modified in
the manner as suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
For the foregoing reasons, the rejection of claims 1 and 4-7
Appeal No. 95-3158
Application 08/038,424
-10-
under 35 U.S.C. § 103 as being unpatentable over Aoki, Haskins
and Kirchgessner cannot be sustained.
Appeal No. 95-3158
Application 08/038,424
-11-
Conclusion
The rejection of claims 1 and 4-7 under 35 U.S.C. § 103 as
being unpatentable over Aoki, Haskins and Kirchgessner is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-3158
Application 08/038,424
-12-
IBM Corporation
Intellectual Property Law,
Department 9CCA, Bldg. 205/2
P.O. Box 12195
Research Triangle Park, NC 22709