Ex Parte Berthaud

Board of Patent Appeals and Interferences

Oct 7, 2010

09631413 (B.P.A.I. Oct. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/631,413 08/03/2000 Christophe Berthaud ICB0184 9595
24203 7590 10/08/2010
GRIFFIN & SZIPL, PC
SUITE PH-1
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204
EXAMINER
WANG, JIN CHENG
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
10/08/2010 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 CHRISTOPHE BERTHAUD
_____________

Appeal 2009-015438
Application 09/631,413
Technology Center 2600
______________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015438
Application 09/631,413

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 5, 7, 8, and 10 through 18.
We reverse and enter a new rejection.

INVENTION
The invention is directed to a watch with a control device for a
computer cursor. Specification 1.
Claim 1 is reproduced below:
1. A watch including display means for at least one item of time
related data and having an at least partially transparent outer element
covering said display means or forming an outer portion of the display
means, said watch including first control means for controlling the
movement of a cursor on a computer screen, said first control means
being formed of a plurality of touch sensitive sensors with each touch
sensitive sensor having a touch sensitive pad being at least partially
transparent and the touch sensitive pads are supported at least partially
by said outer element such that the display means are at least partially
visible through the touch sensitive pads and the outer element,
wherein the touch sensitive sensors are of the capacitive type and
sensitive pads are formed by electrodes deposited underneath the
outer element, and wherein it further includes means for detecting the
speed of a user's finger over said outer element or the actuation
frequency of successive sensors.

REFERENCES
Olsen US 6,137,479 Oct. 24, 2000
Terés US 6,184,871 B1 Feb. 6, 2001
Ferrari US 6,392,636 B1 May 21, 2002

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Application 09/631,413

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 5, 7, 8, and 10 through 18
under 35 U.S.C. § 103(a) as being unpatentable over Terés in view of Olsen
and Ferrari. Answer 3-13.2

ISSUES
Appellant argues on pages 8 through 21 of the Appeal Brief3 that the
Examiner’s rejection of independent claims 1, 10, and 13 under 35 U.S.C.
§ 103(a) is in error. Appellant argues that none of the three references
applied by the Examiner in rejecting the claims teaches:
(i) the "means for detecting the speed of a user's finger over said outer
element or the actuation frequency of successive sensors" as recited in
claim 1 ; (ii) "the direction of movement of said cursor depends on the
concentric zones actuated or two adjacent concentric zones which are
actuated simultaneously" as recited in claim 11; and (iii) the "second
control means for selecting an object shown on said screen or carrying
out a command relating to said object, and wherein said second
control means are also formed by a touch sensitive sensor performed
by means of a capacitive sensor supported by the outer element and
located in the central region thereof' as recited in claim 13.

Brief 10-11, 14, and 15.

Thus, Appellant’s arguments with respect to claim 1 present us with
the issue: Did the Examiner err in finding that the combination of Terés,

2 Throughout this decision we refer to the Answer dated April 29, 2009.
3 Throughout this decision we refer to the Appeal Brief dated May 25, 2006,
and the Reply Brief dated August 21, 2006, and the Supplemental Reply
Brief Dated June 29, 2009.
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Application 09/631,413

Olsen, and Ferrari teaches a means for detecting the speed of a user’s finger
as recited in claim 1?
Appellant’s arguments with respect to claim 10 present us with the
issue: Did the Examiner err in finding that the combination of Terés, Olsen,
and Ferrari teaches that the direction of movement of said cursor depends on
the concentric zones actuated or two adjacent concentric zones which are
actuated simultaneously as recited in claim 10?
Appellant’s arguments with respect to claim 13 present us with the
issue: Did the Examiner err in finding that the combination of Terés, Olsen,
and Ferrari teaches a second control means for selecting an object shown on
said screen or carrying out a command relating to said object as recited in
claim 13?

ANALYSIS
Independent claim 1
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination of Terés, Olsen, and Ferrari teaches a means for
detecting the speed of a user’s finger. Claim 1 recites a watch with a display
and a control means for controlling a cursor on a computer screen which
includes “means for detecting the speed of a user’s finger over said outer
element or the actuation frequency of the successive sensors.” As discussed
infra, we now reject claim 1 as indefinite under 35 U.S.C. § 112, second
paragraph as no structure is disclosed to perform the claimed function.
Nonetheless, claim 1 includes a recitation that an indefinite item performs
the function of detecting the speed of a user’s finger or actuation frequency
of successive sensors.
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In response to Appellant’s arguments that this function is not taught in
the combined references the Examiner states:
Ferrari discloses in Fig.5A-5G, 6-7, and column 11 the actuation
frequency of sensors as the user's finger or fingertip
actuates/deactuates on a plurality of sensors wherein the X and Y
outputs depend upon the displacement and pressure of the user's finger
or fingertip on the touch-sensitive pads. The actuation frequency of
sensors depends upon the user's rate of lifting/pushing sensors by a
fingertip or moving the finger away/towards the sensors. Therefore,
the cursor movement on a computer screen is controlled by the
actuation frequency by the user's rate/speed/frequency of
lifting/pushing fingertip, i.e., the user's speed of movement of a
fingertip.

Answer 12.
We have reviewed the cited sections of Ferrari and while column 11
lines 32-40 does discuss sensing two sets of x-y coordinates of the finger tip,
we do not find a discussion, in column 11 or Figures 5A-5G, 6, and 7, of
measuring speed or frequency (nor do we find that the time between the two
sets of coordinates is monitored to determine some form of rate of change of
position). Thus, we do not find that the combination of Terés, Olsen, and
Ferrari teaches the function of detecting the speed of a user’s finger or
actuation frequency of successive sensors. Thus, as the scope of the claim is
indefinite (as to what device performs the function of detecting speed or
frequency), and the art cited by the Examiner does not teach performing the
claimed function, we will not sustain the Examiner’s rejection of
independent claim 1 and dependent claims 2 through 5, 7, 8, 11, 12, and 14
through 18.

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Independent claim 10
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination of Terés, Olsen, and Ferrari teaches that the
direction of movement of said cursor depends on the concentric zones
actuated or two adjacent concentric zones which are actuated
simultaneously. Claim 10 recites “wherein said sensitive pads are arranged
in concentric zones, the direction of movement of said cursor being
determined by the orientation of the pad or pads actuated relative to the
centre of said concentric zones, and wherein the speed of movement of said
cursor depends on the concentric zone actuated or two adjacent concentric
zones which are actuated simultaneously.” Thus, the scope of claim 10
includes that there are concentric zones and that the speed of the cursor
depends upon which zone is actuated.
The Examiner finds that Terés teaches a wristwatch having concentric
zones as shown in Figure 3. Answer 9, 18. We concur with this finding.
With regard to the speed of movement, the Examiner cites to Figures 4 and 5
and finds that Olsen discloses cursor movement. Answer 9. While we
concur with the Examiner’s finding that Olsen discloses controlling the
movement of the cursor (see e.g. col. 2. ll. 8-14), the Examiner has not
identified where Olsen teaches that the speed of the cursor depends upon
which zone is actuated. Further, the Examiner in responding to Appellant’s
arguments states “Ferrari discloses the direction of movement of said cursor
depends on the concentric zones actuated or two adjacent concentric zones
which are actuated simultaneously because fingertip or finger's movement
may cover two adjacent sensors among a plurality of sensors arranged in
concentric zones which are actuated simultaneously.” Answer 12. As with
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Olsen, we find that Ferrari discloses controlling the movement of the cursor
(see e.g. col. 4. ll. 33-41), but the Examiner has not identified where Ferrari
teaches that the speed of the cursor depends upon which zone is actuated.
Thus, the Examiner has not shown, nor do we find, any teaching in Terés,
Olsen, and Ferrari that the direction of movement of said cursor depends on
the concentric zones actuated or two adjacent concentric zones which are
actuated simultaneously. Accordingly, we will not sustain the Examiner’s
rejection of independent claim 10.

Independent claim 13
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination of Terés, Olsen, and Ferrari teaches a second
control means for selecting an object shown on said screen or carrying out a
command relating to said object. Claim 13 recites a second control means
for selecting an object shown on a screen or carrying out a command relating
to the object where the second touch means is formed of a capacitive sensor
located in a central region of an the outer element. The Examiner finds that
Terés, in Figures 1-5 and columns 1-5, teaches a second control means
located in a central region thereof. Answer 13. We concur with the finding
that Terés teaches a touch sensor located in a central region of an outer ring
of touch sensors (see section S of Figure 3, which is central to the regions A-
L and M-R, and col. 2, ll. 40-43). However, the Examiner has not shown
that this sensor is used to select an object on a screen or carry out a
command relating to the object on the screen. We recognize that Olsen
teaches separate switches to generate signals to select items displayed on a
screen. Col. 3, ll. 49-50. However, the Examiner has not shown, nor do we
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find, that using this teaching of Olson in conjunction with the central
capacitive sensor of Terés would have been obvious. Accordingly, we will
not sustain the Examiner’s rejection of independent claim 13.

New Rejection of claims 1 through 5, 7, 8, 11, 12, and 14 through 18
under 35 U.S.C. § 112, second paragraph.
Claim 1 recites a “means for detecting the speed of a user’s finger
over said outer element or the actuation frequency of the successive
sensors.” Thus, claim 1 invokes 35 U.S.C. § 112, sixth paragraph as it
recites “means for.” In accordance with 37 C.F.R. 41.37(c)(1)(v), Appellant
has stated that the corresponding structure for the means for detecting speed
is disclosed on pages 4 and 5, Figure 1, and Figure 4 of the Specification.
Brief 7. We note that Appellant’s Specification on page 4 describes using
tracking the movement of the user’s finger over the crystal and using this to
determine the frequency or speed of the user’s finger over the sensor. The
Specification further states that “the means for detecting the speed of the
finger movement of the actuation frequency of the successive sensor may be
imagined by those skilled in the art without any major difficulty.”
Specification 5: 6-8. Thus, Appellant’s Specification does not actually
identify the specific structure which performs the function of determining
speed or frequency and as such, claim 1 is indefinite under 35 U.S.C. § 112,
second paragraph. “[I]f one employs means-plus-function language in a
claim, one must set forth in the specification an adequate disclosure showing
what is meant by that language. 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
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§ 112.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)(en banc).
see also Aristocrat Technologies, Inc. v. International Game Technology,
521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, we enter a new rejection of
independent claim 1 and dependent claims 2 through 5, 7, 8, 11, 12, and 14
through 18.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s rejection of
claims 1 through 5, 7, 8, and 10 through 18.

ORDER
The decision of the Examiner to reject claims 1 through 5, 7, 8, and 10
through 18 is reversed. A new rejection is entered against claims 1 through
5, 7, 8, 11, 12, and 14 through 18.

NEW GROUNDS OF REJECTION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, 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. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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)(iv) (2007).

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Appeal 2009-015438
Application 09/631,413

REVERSED
37 C.F.R. § 41.50(b)

ELD

GRIFFIN & SZIPL, PC
SUITE PH-1
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204

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