Ex Parte Berkel van

Patent Trial and Appeal Board

May 6, 2013

10516847 (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CORNELIS VAN BERKEL
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Appeal 2010-011241
Application 10/516,847
Technology Center 2600
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011241
Application 10/516,847

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The claims are directed to user input systems, or user input devices,
particularly those employing hand held pens or styluses. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A user input system, comprising:

means for generating an alternating magnetic field;

a user-holdable device comprising

a resonant circuit,

a coil for coupling to ground along substantially
the length of the user-holdable device, and

a conducting tip,

the coil for coupling to ground being coupled to a first
side of the resonant circuit and the conducting tip being coupled
to a second side of the resonant circuit, the resonant circuit
being operable to provide an alternating voltage induced from
the alternating magnetic field when positioned in the vicinity of
the means for generating an alternating magnetic field; and

means for sensing an output provided at the conducting
tip due to the alternating voltage source when the conducting
tip is in the vicinity of the means for sensing an output.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kable US 4,695,680 Sep. 22, 1987
Yamanami US 4,902,858 Feb. 20, 1990
Stein US 5,365,461 Nov. 15, 1994
Katabami US 5,528,002 Jun. 18, 1996
Teterwak US 5,777,898 Jul. 07, 1998
Makinwa US 5,889,237 Mar. 30, 1999
Colgan US 6,204,897 B1 Mar. 20, 2001
Ely US 6,667,740 B2 Dec. 23, 2003

REJECTIONS
R1. Claims 1, 2, 4, 9-15, 20-22, and 24-31 stand rejected under 35
U.S.C § 103(a) as being unpatentable over the combination of Katabami,
Kable, and Makinwa.
R2. Claims 33-35 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Katabami, Kable, Makinwa, and Stein.
R3. Claims 5 and 6 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Katabami, Kable, Makinwa, and
Yamanami.
R4. Claims 7, 8, 19, and 32 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over the combination of Katabami, Kable, Makinwa, and
Ely.
R5. Claims 3, 16, and 17 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over the combination of Katabami, Kable, Makinwa, and
Stein.
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R6. Claims 16 and 18 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over the combination of Katabami, Kable, Makinwa, and
Teterwak.
R7. Claim 23 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Katabami, Kable, Makinwa, and
Colgan.
ANALYSIS
We disagree with Appellant's contentions regarding the Examiner's
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellant's Appeal Brief. (Ans. 23-24). We
highlight and address specific findings and arguments below:
CLAIMS 1, 24 AND 33
Issue: Under § 103, did the Examiner err in finding that
the cited references, either alone or in combination, would have
taught or suggested "a coil for coupling to ground along
substantially the length of the user-holdable device," within the
meaning of claim 1 and the commensurate language of claims
24 and 33?
A.
Appellant contends "that just because [Makinwa's] coil 202 requires
an end to be connected to ground does not necessarily mean that the coil 202
itself performs the coupling to ground function." (Reply Br. 4). Appellant's
contention is not persuasive because Appellant's contention is not
commensurate with the broader scope of claims 1 and 24. Appellant's
claims 1 and 24 fail to positively recite that the coil "performs the coupling
to ground function" (e.g., the coil being coupled to ground).
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We agree with the Examiner that Makinwa's teaching that "one side
302 of the coil is capacitively coupled to ground" would have taught or
suggested the broadest reasonable interpretation of "a coil for coupling to
ground," as recited in claims 1 and 24, and the limitation of "providing
coupling to ground by a coil," as recited in claim 33. (col. 3, ll. 41-43
(emphasis added); Ans. 23). For these reasons, on this record, we are not
persuaded of Examiner error.
B.
Appellant also contends "a skilled person would not find it obvious to
replace the coupling means of Katabami and Kable with the coil of
Makinwa" (App. Br. 11) because "if a coil was used, Kable's stylus 10
would lose an important structural feature - a wall forming the body of the
stylus" (App. Br. 10) and would not be suitable for its intended purpose.
(App. Br. 10-11). Appellant's contentions are not persuasive because
Appellant is considering the teachings of the references separately.1 We also
find that one skilled in the art would have used common sense in substituting
Makinwa's stylus wall and coil (Fig. 2) for Katabami's and Kable's
conductive wall because the stylus wall is used to hold the stylus
components and provide an outer shape to grip.2 (Ans. 24). For these
reasons, on this record, we are not persuaded of Examiner error.

1 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
2 “[A]nalysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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C.
Appellant contends the Examiner’s conclusion of obviousness is
based on improper hindsight reasoning. (Reply Br. 5). Regarding
Appellant's hindsight argument, we are cognizant that our reviewing courts
have not established a bright-line test for hindsight.
In KSR, the U.S. Supreme Court guides that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of argument reliant upon ex post reasoning.” See KSR, 550 U.S. at
421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)).
Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 550 U.S. at 421.
Here, we see the question before us to be whether the Examiner’s
proffered modifications of the teachings of Katabami, Kable, and Makinwa
are merely “the predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417), consistent with common
sense, or would an artisan reasonably have modified Katabami, Kable, and
Makinwa in the manner proffered by the Examiner to formulate the claimed
stylus but for having the benefit of the claim to use as a guide (i.e.,
impermissible hindsight)?
It is our view that an artisan having knowledge of user input systems
using styluses and common sense at the time of Appellant's invention would
have been motivated to modify Katabami's conductive tip portion 4, by
specifically extending the conductive portion substantially along the length
of the stylus, as taught by Kable, to obtain the predictable result of a better
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connection with the user's hand. (Kable col 5, ll. 32-39; Ans. 5, 24). See
KSR, 550 U.S. at 417. One would have been further motivated to substitute
the conductive wall of Katabami's and Kable's stylus with the coil of
Makinwa because Makinwa teaches that a coil is an alternative means to
couple a circuit to an electrical ground reference point. (Makinwa col. 3, ll.
41-43; Ans. 5, 24). Thus, we find the Examiner’s proffered modification is a
mere substitution of known elements that would have yielded a predictable
result, i.e., Makinwa's coil would be capable of coupling to ground and
being connected to Katabami's resonant circuit. (Ans. 4-5, 24). See KSR,
550 U.S. at 417. For these reasons, on this record, we are not persuaded of
Examiner error.

REMAINING CLAIMS
Although Appellant presents nominal separate arguments for
dependent claims in rejections R1-R7, we affirm the Examiner's rejections
of these claims for the reasons set forth by the Examiner in the Answer and
for the reasons discussed above regarding commensurate limitations and
issues.

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DECISION
We affirm the Examiner's rejections R1-R7 of claims 1-35 under
§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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