Ex parte Banerjee et al.

Board of Patent Appeals and Interferences

Oct 27, 2000

08300500 (B.P.A.I. Oct. 27, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BISWA R. BANERJEE, S. CHRISTOPHER GLADWIN, ARIF
MASKATIA and ALAN SOUCY
____________
Appeal No. 1998-0943
Application No. 08/300,500
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-13, all of the claims pending in the present
application. An amendment after final rejection filed March
5, 1999, was entered by the Examiner. In the Examiner’s
Answer, the Examiner indicated that claims 2, 3, and 5 were
allowable. Accordingly, only the rejection of claims 1, 4,
Appeal No. 1998-0943
Application No. 08/300,500
2
and 6-13 is before us on appeal.
The disclosed invention relates to a mobile interface
device which operates to remotely control application programs
running on a host computer. An input subsystem, including a
stylus, provides positional data representing spatial
positions of the stylus. A further embodiment includes a pen-
based graphical interface which communicates with an operating
system on the host computer having handwriting recognition
capability.
Claim 1 is illustrative of the invention and reads as
follows:
1. A mobile user interface device for controlling a
host computer, comprising:
a graphical display subsystem, including a graphical
display, for displaying an image;
an input subsystem, including a stylus, for receiving
from a user positional data representing spatial positions of
said stylus; and
a wireless communication subsystem for sending data to
and receiving data from said host computer over a wireless
communication link; and
means for controlling operations of said graphical
display subsystem, said input subsystem and said wireless
communication subsystem, said means for controlling (i)
causing said wireless communication link to be created; (ii)
causing an application program to be run on said host
Appeal No. 1998-0943
Application No. 08/300,500
Although the Examiner makes reference to the Weiser1
publication in the “Response to argument” portion of the
Answer, the statement of the grounds of rejection relies on
McCain alone.
3
computer; (iii) receiving from said input subsystem said
positional data, providing a response to said user in
acknowledgment of said positional data, and transmitting over
said wireless communication link said positional data to said
application program; and (iv) receiving over said wireless
communication link from said application program data
representing said image, and causing said graphical display
subsystem to display said image on said graphical display.
The Examiner’s Answer cites the following prior art:
More et al. (More) 5,194,852 Mar. 16,
1993
McCain et al. (McCain) 5,309,351 May 03,
1994
Kannan et al. (Kannan) 5,423,045 Jun. 06,
1995
(Filed Apr. 15,
1992)
Mark Weiser (Weiser), “The Computer for the 21st Century,”
Scientific American, pages 94-104 (September 1991).
Claims 1 and 6-11 stand finally rejected under 35 U.S.C.
§ 102(e) as being anticipated by McCain. Claims 4, 12, and1
13 stand finally rejected under 35 U.S.C. § 103. As evidence
of obviousness, the Examiner offers McCain in view of More
with respect to claims 4 and 12, and McCain in view of Kannan
with respect to claim 13.
Appeal No. 1998-0943
Application No. 08/300,500
The Appeal Brief was filed July 21, 1997. In response2
to the Examiner’s Answer dated October 9, 1997 (remailed
January 11, 1999), Appellants submitted a Reply Brief on March
5, 1999 which was entered by the Examiner as indicted in the
communication dated March 31, 1999.
4
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ 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 McCain fully meets the invention as
recited in claims 1, 6, 7, 9, and 11. We reach the opposite
conclusion, however, with respect to claims 8 and 10. We are
Appeal No. 1998-0943
Application No. 08/300,500
5
also of the view that the evidence relied upon and the level
of skill in the particular art would not have suggested to one
of ordinary skill in the art the obviousness of the invention
set forth in claims 4, 12, and 13. Accordingly, we affirm-in-
part.
We consider first the rejection of claims 1 and 6-11
under 35 U.S.C. § 102(e) as anticipated by McCain.
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 Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claim 1, the Examiner’s
analysis (Answer, pages 4 and 7) suggests how the various
limitations are disclosed by McCain. In particular, the
Examiner points to a discussion beginning at column 6, line 56
Appeal No. 1998-0943
Application No. 08/300,500
6
in McCain relating to the interactive operation between the
hand-held unit and the host computer.
In response, Appellants’ primary argument (Brief, pages
10 and 11) centers on the alleged failure of McCain to
disclose that the hand-held unit provides a response to the
user in acknowledgment of received positional data from the
input subsystem as recited in appealed claim 1. We do not
find such argument to be persuasive. Positional information
is received by McCain’s hand-held unit through operation of a
touch screen input feature. As discussed at col. 1, line 66
to col. 2, line 2 of McCain, “[a] Display Touch Scanner is
used to scan the surface of the display to determine where and
when the display has been touched, to provide touch input to
the system, and to control the operation sequence for various
applications of the invention” (emphasis added). McCain does
not provide an explicit disclosure of an acknowledgment to a
user in response to the input of positional data. We note,
however, that, although McCain may not spell out every detail
of the claimed invention, a reference anticipates a claim if
it discloses the claimed invention “such that a skilled
artisan could take its teachings in combination with his own
Appeal No. 1998-0943
Application No. 08/300,500
7
knowledge of the particular art and be in possession of the
invention.” In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697,
1701 (Fed. Cir. 1995), quoting from In re LeGrice, 301 F.2d
929, 936, 133 USPQ 365, 372 (CCPA 1962). In our view, the
skilled artisan would appreciate that any touch screen input
device would require an acknowledgment feature to verify, for
example, that actual contact was made with the screen. McCain
is not required to specifically disclose such acknowledgment
feature in order to be an anticipatory reference because such
a user notification feature would be present in any system
with a touch screen input feature. As further evidence of the
recognition to a skilled artisan of the inclusion of user
acknowledgment features in touch screen input devices, we cite
the following excerpt from Computer Dictionary, Second
Edition, published by Microsoft Press (copy enclosed) in which
“touch screen” is defined in part as “[a] computer screen
designed or modified to recognize the location of a touch on
its surface. By touching the screen, the user can make a
selection or move a cursor.” Even in the limited example
provided by this definition, the movement of the cursor would
provide an acknowledgment to the user of positional input data
Appeal No. 1998-0943
Application No. 08/300,500
The use of a dictionary definition of a standard3
reference work cited to support a fact judicially noticed is
not considered a new ground of rejection. In re Boon, 439 F.
2d 724, 7227, 169 USPQ 231, 234 (CCPA 1971). With respect to
the Weiser publication discussed by the Examiner in the
“Response to argument” portion of the Answer, we, along with
Appellants, are puzzled as to the relevance attributed to this
reference by the Examiner. Since we find, however, that
McCain discloses all of the limitations of appealed claim 1,
any discussion of the merits of Weiser is moot.
8
provided by the location of the “touch” on the screen. We
further point to the example provided at column 8, lines 10-20
in McCain in which the display of operating parameters of a
“touched” part of displayed diagram of a process would serve
as an acknowledgment to the user of the location (position) of
the “touch”.
For the reasons discussed above, we sustain the
Examiner’s rejection of independent claim 1 as being
anticipated by the disclosure of McCain.3
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(e) rejection of independent claims 6 and 11 as being
anticipated by McCain, we sustain the rejection of these
claims as well. The limitations of claims 6 and 11 are
directed to the wireless transfer of positional information
from the hand-held interface device to the host computer with
Appeal No. 1998-0943
Application No. 08/300,500
9
claim 6 additionally reciting the modification of images on
the display of the hand-held device by the host computer.
After reviewing the McCain reference, we agree with the
Examiner’s position (Answer, pages 8 and 9) that all of the
limitations of appealed claims 6 and 11 are disclosed by
McCain. In our view, McCain’s disclosure of the wireless
communication of touch screen positional data from the hand-
held unit to the host computer and the subsequent control of
the presentation of input menu choice screen images on the
display of the hand-held unit (e.g. McCain, column 7, lines
11-13) meets all of the requirements of claims 6 and 11.
After reviewing Appellants’ arguments with respect to the
Examiner’s rejection of claims 6 and 11 at page 13 of the
Brief, it is our opinion that such arguments are not
commensurate with the scope of claim 1. It is axiomatic that,
in proceedings before the PTO, claims in an application are to
be given their broadest reasonable interpretation consistent
with the specification, and that claim language should be read
in light of the specification as it would be interpreted by
one of ordinary skill in the art. In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Moreover,
Appeal No. 1998-0943
Application No. 08/300,500
The recitations “said host computer” at line 6 of claim4
11 and “said positional and selection data” at line 3 of claim
13 lack clear antecedent reference.
10
limitations are not to be read into the claims from the
specification. In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Appellants contend that McCain does not disclose the provision
of a response to a user’s positional input “prior to receiving
subsequently image modification generated by the application
program running on the host computer.” In our view, even
assuming, arguendo, that such response sequence language would
distinguish over McCain, no such language exists in the
claims. In view of the above, since all of the limitations of
independent claims 6 and 11 are disclosed by McCain, the
Examiner’s 35 U.S.C. § 102(e) rejection of claims 6 and 11 is
sustained. 4
Dependent claims 7 and 9 have not been separately argued
by Appellants. Accordingly, these claims will be treated as
falling with their parent claim 6. See In re Young, 927 F.2d
588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re
Appeal No. 1998-0943
Application No. 08/300,500
11
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); and In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140
(CCPA 1978). Thus, it follows that the examiner's rejection
of claims 7 and 9 under 35 U.S.C. § 102(e) is also sustained.
After considering the entirety of the Appellants’
comments directed to the McCain reference, however, we find
Appellants’ arguments to be persuasive with respect to
dependent claim 8. We note that the limitations of dependent
claim 8 are directed to the queuing of plural positional data
points in a pen event buffer in the hand held interface
device. Like Appellants, we do not find such a feature
disclosed by McCain. While the Examiner suggests (Answer,
page 9) the inherent nature of buffers for queuing data
points, no support on the record has been provided to support
such a conclusion. To establish inherency, evidence must make
clear that the missing descriptive matter is necessarily
present in the thing described in the reference and would be
recognized as such by persons of ordinary skill. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999) citing Continental Can Co. v. Monsanto Co., 948
F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
Appeal No. 1998-0943
Application No. 08/300,500
12
“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.”
Id. citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
Accordingly, the Examiner’s 35 U.S.C. § 102(e) rejection
of dependent claim 8, as well as claim 10 dependent on claim
8, is not sustained.
Turning to the obviousness rejection of claims 4, 12, and
13, we note that in rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the Examiner to establish a factual basis
to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why
one
having ordinary skill in the pertinent art would have been led
to
Appeal No. 1998-0943
Application No. 08/300,500
13
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
Appeal No. 1998-0943
Application No. 08/300,500
14
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to dependent claims 4 and 12, the Examiner,
as the basis for the obviousness rejection, proposes to modify
the wireless communication system disclosure of McCain by
relying on More to supply the missing teaching of providing
handwriting recognition to the host computer “so detailed user
input may be detected by the system” (Answer, page 5).
In response, Appellants assert (Brief, page 16) that the
Examiner has failed to establish a prima facie case of
obviousness since proper motivation for the Examiner’s
proposed combination has not been set forth. We agree. It is
our opinion that the Examiner has combined the general
teachings of the handwriting recognition system of More with
the touch screen input system of McCain in some vague manner
without specifically describing how the teachings would be
combined. This does not persuade us that one of ordinary
skill in the art having the references before her or him, and
using her or his own knowledge of the art, would have been put
in possession of the claimed subject matter.
Appeal No. 1998-0943
Application No. 08/300,500
15
Further, we are cognizant of the Examiner’s assertion
(Answer, page 5) as to the conventionality of using
handwriting input and recognition techniques as display user
interface features. Notwithstanding the merits of this
contention, however, we find no convincing reasoning supplied
by the Examiner as to how and why the skilled artisan would
apply such handwriting recognition features to the system
described in McCain. The mere fact that the prior art may be
modified in the manner 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). We are
left to speculate why the skilled artisan would modify the
touch screen input subsystem of McCain with the handwriting
recognition teachings of More. The only reason we can discern
is improper hindsight reconstruction of Appellant’s claimed
invention. Accordingly, the Examiner’s 35 U.S.C. § 103
rejection of dependent claims 4 and 12 is not sustained.
Further, we find the Examiner’s line of reasoning to be
similarly deficient with respect to the power conservation
features of claim 13 and, therefore, we also do not sustain
Appeal No. 1998-0943
Application No. 08/300,500
16
the obviousness rejection of this claim. In our view, any
combined structure resulting from the Examiner’s proposed
combination of the generalized power conservation features of
Kannan and the wireless communication system of McCain would
not address the specific limitations of claim 13 which set
forth specific “out-of-range” criteria for input positional
and selection data.
In summary, we have sustained the Examiner’s 35 U.S.C.
§ 102(e) rejection of claims 1, 6, 7, 9, and 11, but have not
sustained the 35 U.S.C. § 102(e) rejection of claims 8 and 10.
Further, we have not sustained the Examiner’s 35 U.S.C. § 103
rejection of claims 4, 12, and 13. Therefore, the Examiner’s
decision rejecting claims 1, 4, and 6-13 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 1998-0943
Application No. 08/300,500
17
§ 1.136(a).
AFFIRMED-IN-PART

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
lp
Appeal No. 1998-0943
Application No. 08/300,500
18
EDWARD C. KWOK
SKJERVEN MORRILL MACPHERSON FRANKLIN & FRIEL, LLP
25 METRO DRIVE, SUITE 700
SAN JOSE, CA 95110
Leticia
Appeal No. 1998-0943
Application No. 08/300,500
APJ RUGGIERO
APJ HAIRSTON
APJ THOMAS
DECISION: AFFIRMED-IN-PART
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: October 16, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT