Ex Parte Beltz

Board of Patent Appeals and Interferences

Apr 29, 2004

09572674 (B.P.A.I. Apr. 29, 2004)

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not written for publication and is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM M. BELTZ
__________
Appeal No. 2004-1025
Application No. 09/572,674
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
William M. Beltz appeals from the final rejection of claims
1 through 15, all of the claims pending in the application.
THE INVENTION
The invention relates to “a device held in the mouth and
useful by individuals having limited or no use of their hands to
simulate mouse manipulation in Graphical User Interface (GUI)
applications” (specification, page 2). Representative claim 1
reads as follows:
1. A device for permitting a person with limited or no use
of the hands to operate and manually input data into a computer
that utilizes a graphical user interface application, said device
comprising:
a mouth-held unit comprising
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Application No. 09/572,674
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(a) a mouthpiece having an airway passage formed
therethrough,
(b) a shaft having one end secured within said
mouthpiece and a distal end configured for performing keyboard
entry, wherein said shaft includes a hollow portion aligned with
and fluidly connected to said airway passage, and
(c) a control module attached to said shaft,
wherein in said module includes,
i) a switching means fluidly connected to
said hollow portion, wherein said switching means generates a
first signal in response to an air pressure signal initiated by
the person at said air passage,
ii) at least one emitting means for
transmitting the first signal and a second signal; and
a reception unit with a first detector means for detecting
said first signal and a second detector means for detecting said
second signal.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
De Bruyne 4,758,691 Jul. 19, 1988
Sauer et al. (Sauer) 4,828,418 May 9, 1989
Koizumi et al. (Koizumi) 5,883,616 Mar. 16, 1999
THE REJECTION
Claims 1 through 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Koizumi, Sauer and De Bruyne.
Attention is directed to the brief (Paper No. 12) and answer
(Paper No. 13) for the respective positions of the appellant and
examiner regarding the merits of this rejection.
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Application No. 09/572,674
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DISCUSSION
Koizumi, the examiner’s primary reference, discloses a word
processing input apparatus “that allows those who are severely
physically handicapped . . . to enter characters by shifting
their heads and operating a breath-operated switch while looking
at an image display device on which entered characters are shown”
(column 1, lines 5 through 9). The apparatus comprises a headset
device 4 including an optical signal transmitter 1 and a breath-
operated switch 5, and an image display device 3 (e.g., a
personal computer) including an optical signal receiver 2. In
use, the operator dons the headset, sits opposite the image
display device which shows a virtual keyboard 17 and a cursor 18,
moves his or her head to shift the cursor to a desired key and
actuates the breath-operated switch to enter the character
designated by the selected key (see column 5, line 48, through
column 7, line 13).
The examiner (see pages 3 and 4 in the answer) concedes that
the Koizumi apparatus does not respond to the limitations in
independent claim 1, or the corresponding limitations in
independent claim 9, relating to the mouth-held unit or device.
As indicated above, the Koizumi apparatus embodies a head-held
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Application No. 09/572,674
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unit or device. To cure this shortcoming in Koizumi, the
examiner turns to Sauer.
Sauer discloses a mouthstick, a mouth-held device for use by
individuals having limited or no use of their hands. The
mouthstick 10 comprises a mouthpiece 11, a shaft 13 extending
from the mouthpiece and a functional implement on the distal end
of the shaft. The implement may be, for example, a soft rubbery
tip 14 (which can be used to turn pages), a pen, a pencil, a
brush or any similar device.
In proposing to combine Koizumi and Sauer to reject claims 1
and 9, the examiner submits that
Clearly, it would have been advantageous for a disabled
user to have a single device capable of performing
manual tasks and for operating a computer. In fact, it
would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the
relevant teachings of Sauer and Koizumi so that users
could conveniently perform routine tasks and input
computer data without having to constantly switch
devices [answer, page 4].
In response to the appellant’s argument that Koizumi and
Sauer would not have suggested this combination, the examiner
(see page 7 in the answer) cites In re Fine, 837 F.2d 1071, 5
USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21
USPQ2d 1941 (Fed. Cir. 1992) for the principle that motivation to
combine references need not be found explicitly in the references
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Application No. 09/572,674
5
themselves, but can also be found in the knowledge generally
available to one of ordinary skill in the art. The examiner then
applies this principle to the present case with the following
explanation:
A better understanding of what knowledge would have
been available can be obtained by examining the problem
that each reference solves. For instance, Sauer’s
invention allows individuals without use of their hands
to perform a great variety of manual tasks such as
turning the pages of a book. Koizumi’s invention, on
the other hand, provides the same individuals with a
much improved method and apparatus for keyboard input.
Accordingly, it would have been known that both
inventions greatly benefit severely handicapped
individuals. Furthermore, using both of them at various
times throughout the day, or even simultaneously, would
have provided the individuals with the freedom to
perform numerous activities without the help of
attendants. However, it would have been immediately
recognized that an individual could not in fact have
used the inventions simultaneously because it would
have been extremely uncomfortable to hold Sauer’s mouth
stick and Koizumi’s operating port in one’s mouth at
the same time. This conclusion is not based on
improper hindsight reasoning, but rather a logical
analysis of the functional capabilities of each
invention. One of ordinary skill in the art,
furthermore, would have drawn the same conclusion with
the two inventions before them. The problem would have
then remained as to how a handicapped individual could
operate a computer and still perform other routine, and
sometimes critical, activities. The obvious solution
would have been to combine the two inventions into one
[answer, pages 7 and 8].
Notwithstanding the examiner’s assertion to the contrary,
the foregoing rationalization is a classic example of improper
hindsight reasoning. The fair teachings of Koizumi and Sauer
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provide no evidentiary support for the examiner’s conjecture
regarding the purported benefits of simultaneously using the
devices respectively disclosed by these references or the
recognition of these benefits by a person having ordinary skill
in the art. Rejections based on 35 U.S.C. § 103(a) must rest on
a factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967). In making such a rejection, the
examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. Id. In the present case, the examiner’s unfounded
assumptions as to the knowledge generally available to a person
of ordinary skill in the art and undue speculation as to what
this purported knowledge would have suggested to such a person
are no substitutes for the evidence required by law to support a
conclusion of obviousness.
As the examiner’s application of De Bruyne fails to rectify
the foregoing evidentiary deficiencies in the Koizumi and Sauer
combination, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of independent claims 1 and 9, and dependent claims 2
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through 8 and 10 through 15, as being unpatentable over Koizumi,
Sauer and De Bruyne.
SUMMARY
The decision of the examiner to reject claims 1 through 15
is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
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