Ex Parte Banerjee et al

Board of Patent Appeals and Interferences

Mar 14, 2011

09909248 (B.P.A.I. Mar. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/909,248 07/19/2001 Biswa R. Banerjee 11465/491 9312
7590 03/14/2011
Patent Administrator
Suite 1600
525 West Monroe Street
Chicago, IL 60661-3693
EXAMINER
BRIER, JEFFERY A
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
03/14/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BISWA R. BANERJEE, S. CHRISTOPHER GLADWIN,
ARIF MASKATIA, and ALAN SOUCY

Appeal 2009-013621
Application 09/909,248
Technology Center 2600
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013621
Application 09/909,248

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 6, and 7. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
We REVERSE and ENTER NEW GROUNDS OF REJECTION
under 37 C.F.R. § 41.50(b).

THE INVENTION
Appellants’ invention is directed to the design of a mobile interface
device. (Spec. 1, ll. 10-14.)
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A mobile user interface device for interfacing with a remote
host computer having a wireless interface, comprising:
a graphical display subsystem including a digitizer
responsive to a passive stylus 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;
a wireless communication subsystem for establishing a
wireless communications link directly with said remote host
computer for sending data to and receiving data from said
remote host computer over a wireless communication link; and
a controller for controlling operations of said graphical
display subsystem, said input subsystem and said wireless
communication subsystem, said controller (i) causing said
wireless communication to be created; (ii) causing an
application program to be run on said remote host computer;
(iii) receiving from said input subsystem said positional data,
providing a response to said user in acknowledgement of said
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positional data, and transmitting 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, said
input subsystem having a pen mode and a mouse mode and
including means for monitoring pen down events of said passive
stylus and emulating the movement of a mouse and the clicking
of a mouse button in said mouse mode and means for translating
pen events in a pen mode and means for switching between a
pen mode and a mouse mode.

(Claim App’x, App. Br. 10.)

THE REJECTION
The Examiner rejected claims 1, 6, and 7 under 35 U.S.C. § 103 as
being unpatentable over McCain et al. (US 5,309,351, issued May 3, 1994)
in view of Applicants’ admission of Pen Windows. (Final Rejection mailed
April 23, 2004, hereinafter “Final Rejection,” 4-5; Examiner’s Answer
entered April 13, 2009, hereinafter “Ans.,” 3-10.)
In rejecting the claims on appeal, the Examiner appears to have
interpreted the corresponding structure to the “means for . . . emulating the
movement of a mouse and the clicking of a mouse button” as the Pen
Windows software disclosed in the Specification. (Final Rejection 3; Ans.
14-18.)
Appellants argue, to the contrary, that “the emulation of a mouse
mode is accomplished by [RC Manager].” (Reply Br. 3.)

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FACTUAL FINDINGS
The record supports the following findings of fact (FF) by a
preponderance of the evidence. Additional findings of fact may appear in
the Analysis that follows.
1. Appellants’ Specification page 20, lines 20-35 states:
RC Manager 350 examines each pen event in RC buffer
321, and according to the context of the pen event in its
possession, RC Manager 350 determines whether the stylus is
in the pen mode or in the mouse mode. In this embodiment, an
icon allows the user to use the stylus as a “mouse” device. The
icon, called “mouse button toggle”, allows the use to switch
between a “left” button and a “right” button as used in an
industry standard mouse device. The selected button is deemed
depressed, when the stylus makes contact with the pressure
sensitive digitizer panel. A rapid succession of two contacts
with the display is read by RC Manager 350 as a “double
click”, and dragging the stylus along the surface of the display
is read by RC Manager 350 as the familiar operation of
dragging the mouse device with the selected button depressed.

2. Appellants’ Specification describes RC Manager as “residing in
host computer 101” and as being located “on host computer 101.”
(Spec. 22, l. 4; 23, ll. 10-11.)

NEW GROUNDS OF REJECTION
Claims 1, 6, and 7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 6, and 7 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.

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ANALYSIS
A. Rejection of Claims 1, 6, and 7 under 35 U.S.C. § 112, Second
Paragraph
When a claim uses the term “means” to describe a limitation, a
presumption inheres that the inventor used the term to invoke section 112,
sixth paragraph. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed.
Cir. 2003). If one invokes section 112, sixth paragraph, “one must set forth
in the specification an adequate disclosure showing what is meant by that
language.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
banc).
Adequate disclosure for a section 112, sixth paragraph claim “for a
computer-implemented function is the algorithm disclosed in the
specification.” Aristocrat Tech. Inc. v Inter. Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008) (citations and internal quotations omitted). As the
Federal Circuit recently noted, “[t]he key inquiry is whether one of ordinary
skill in the art would understand the patent to disclose structure that
sufficiently corresponds to the claimed function, which in the case of a
specific function implemented on a general purpose computer requires an
algorithm.” In re Katz Interactive Call Processing Patent Litigation, Nos.
2009-1450, 2009-1451, 2009-1452, 2009-1468, 2009-1469, 2010-1017,
2011 WL 607381, at *8 (Fed. Cir. February 18, 2011) (citing Aristocrat, 521
F.3d at 1337). Thus, the Federal Circuit clarified in Katz, that an algorithm
is only required in the context of means-plus-function claims in which a
computer must be specially programmed to perform the recited function. In
re Katz, 2011 WL 607381, *8.
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If an applicant fails to set forth an adequate disclosure, the applicant
has in effect failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112. In re Donaldson Co., 16
F.3d at 1195; see also Datamize LLC v. Plumtree Software Inc., 417 F.3d
1342, 1347 (Fed. Cir. 2005) (noting that “[o]nly claims ‘not amenable to
construction’ or ‘insolubly ambiguous’ are indefinite.”).
In this case, independent claim 1 recites a “means for monitoring pen
down events of [a] passive stylus and emulating the movement of a mouse
and the clicking of a mouse button in [a] mouse mode . . . .” (hereinafter
referred to as “means for emulating a mouse mode”). Appellants have
identified “RC Manager” software as the corresponding structure for the
recited “means for emulating a mouse mode.” Specifically, Appellants
stated: “the emulation of a mouse mode is accomplished by [RC Manager],”
which is a “software program [that] emulate[s] the functionality [] associated
with the clicking of a conventional mouse button.” (Reply Br. 3, FF 1.)
Thus, Appellants acknowledge that the “means for emulating a mouse
mode” requires a specially programmed computer to perform the recited
function. Accordingly, Appellants’ Specification must disclose an algorithm
for “RC Manager” in order for the claims to comply with 35 U.S.C. § 112,
2nd and 6th paragraphs. See In re Katz, 2011 WL 607381, *7-8.
However, the portion of the Specification cited by Appellants does not
provide a specific algorithm by which RC Manager is able to perform the
function of emulating a mouse mode. In addition to the specific portion of
the Specification identified by the Appellants, we have thoroughly reviewed
the Appellants’ Specification and have not been able to locate an adequate
disclosure of a specific algorithm that could be implemented on the mobile
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interface device to emulate the movement of a mouse and the clicking of a
mouse button. Accordingly, the Specification fails to disclose the necessary
algorithms to perform the disclosed “means for emulating a mouse mode”
function recited in claim 1. See Aristocrat, 521 F.3d at 1333.
Thus, Appellants have failed to adequately describe sufficient
structure for performing the functions recited in the above referenced means
element contained in claim 1 so as to render the claim definite. Accordingly,
claim 1 is unpatentable under 35 U.S.C. § 112, second paragraph as being
indefinite. See Aristocrat, 521 F.3d at 1333. For similar reasons, claim 6 is
rejected as being indefinite, and claim 7 is likewise rejected due to its
dependency on claim 6.

B. Rejection of Claims 1, 6, and 7 Under 35 U.S.C. § 112, First
Paragraph
35 U.S.C. § 112, first paragraph states that “[t]he specification shall
contain a written description of the invention . . . .”
[T]he disclosure must … convey with reasonable clarity to
those skilled in the art that … [the inventor] was in possession
of the invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Put another
way, one skilled in the art, reading the original disclosure, must
immediately discern the limitation at issue in the claims.
Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556,
558, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994). That inquiry is a
factual one and must be assessed on a case-by-case basis. See
Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116.

Purdue Pharm. L.P. v. Faulding, Inc., 230 F.3d 1320, 1323-24 (Fed. Cir.
2000).
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Independent claim 1 is directed toward a “mobile user interface
device.” The above noted limitation, i.e., means for emulating a mouse
mode, is recited in claim 1 as part of the mobile user interface device. As
noted above, the Appellants have pointed to RC Manager as the structure for
this means plus function limitation. (FF 1.) However, the Specification
describes RC Manager as “residing in host computer” and as being located
“on host computer.” (FF 2.)
Therefore, claim 1 does not read on any embodiment contained in the
written description of the invention. A person of ordinary skill in the art,
reading the original disclosure, would not immediately discern the limitation
“means for emulating a mouse mode” as defined in the claims. See Purdue
Pharm., 230 F.3d at 1323-24. Accordingly, because a skilled artisan would
not recognize in the disclosure a description of the invention defined by
claim 1, we reject claim 1 under 35 U.S.C. § 112, first paragraph. Because
claim 6 is also directed toward a mobile device and recites similar means, it
is also rejected for lack of written description, and claim 7 is likewise
rejected due to its dependency on claim 6.

C. The Examiner’s 35 U.S.C. § 103 Rejection
We reverse, pro forma, the Examiner’s rejections of claims 1, 6, and 7
over the prior art, as the claims are indefinite under 35 U.S.C. § 112, second
paragraph because Appellants have failed to adequately describe sufficient
structure for performing “means for monitoring pen down events of [a]
passive stylus and emulating the movement of a mouse and the clicking of a
mouse button in [a] mouse mode” recited in the claims. Thus, the instant
claims are “not amenable to construction.” Datamize, 417 F.3d at 1347.
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Rejections of claims over prior art should not be based on speculation and
assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859,
862 (CCPA 1962).

CONCLUSION
Claims 1, 6, and 7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 6, and 7 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.

ORDER
We reverse the Examiner’s decision to reject claims 1, 6, and 7 under
35 U.S.C. § 103 as being unpatentable over McCain et al in view of
Applicants’ admission of Pen Windows.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).
REVERSED
NEW GROUNDS OF REJECTION (37 C.F.R. § 41.50(b))

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