Ex Parte Branton et al

Patent Trial and Appeal Board

Mar 14, 2013

11192619 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVE B. BRANTON, JEFFREY R. BAKER,
DAVID LEE STALLARD, and DUSTIN J. LUCK
____________________

Appeal 2010-010717
Application 11/192,619
Technology Center 2600
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 5-24. Claims 3 and 4 have been canceled (App. Br. 2). We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2010-010717
Application 11/192,619

2
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to interface devices allowing
humans to provide control input (Spec.1:7-8). Particularly, a scroll sensor
enables a plurality of functions chosen bases on the location of a first contact
with the scroll sensor. This allows different control functionalities without
requiring pressing a button, choosing from a menu, or other discrete steps.
Rather, choosing functionality “requires only that the rotational motion be
initiated at a specific location.” (Spec. 3:21-26)
Independent claim 1, reproduced below, is illustrative.
1. A method comprising:

dividing an annular touch pad into a plurality of regions;

assigning each of the plurality of regions to one of a
plurality of control functions;

receiving a touch on the touch pad initiated at a given
point on the touch pad; and

if the given point falls within one of the regions, selecting
the control function assigned to the one of the regions and
receiving the touch as parametric control input for the selected
control function;

wherein selecting the control function requires that the
touch has rotational motion initiated at the given point.

Appeal 2010-010717
Application 11/192,619

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REFERENCES and REJECTIONS
The Examiner rejected claims 1, 2, and 5-19 under 35 U.S.C. § 103(a)
based upon the teachings of Zadesky (US 7,046,230 B2) and Murasaki (US
5,867,158).1
The Examiner rejected claims 20-24 under 35 U.S.C. § 103(a) based
upon the teachings of Zadesky, Murasaki, and Grady (US Pat. App. Pub. No.
2007/0086724 A1).

ANALYSIS
Appellants contend the Examiner is incorrect in combining Zadesky
and Murasaki as both disclose selecting a function based on a button being
pressed (App. Br. 9; Reply Br. 4). Further, Appellants assert, “Zadesky does
not teach or suggest assigning different portions of touch pad (110) with
corresponding functions” as claimed (App. Br. 9). Thus, Appellants contend,
Zadesky and Murasaki, alone or in combination, do not teach or suggest
selecting a function assigned to a portion of the touch pad, initiated only if
the touch has rotational motion (emphasis added) (App. Br. 9; Reply Br. 4).
Rather, “[M]odifying Zadesky with Murasaki results in Zadesky’s buttons
112 which are not part of touch pad 110 being replaced with Murasaki’s
buttons 16, 17 which are part of a touch pad” (Reply Br. 4).
The Examiner finds “in response to applicant’s arguments against the
references individually, one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of

1 As noted above claims 3 and 4 have been canceled, thus claims 1, 2, and 5-
19 are under this rejection.
Appeal 2010-010717
Application 11/192,619

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references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co.,
800 F.2d 1091 (Fed. Cir. 1986)” (Ans. 7, 8) (parallel citations omitted).
We find the Examiner is unresponsive to Appellants’ contentions.
Appellants, as noted above, have not argued the references separately, they
have asserted how each of the cited references does not have the feature
relied upon by the Examiner and thus contend the combination would not
result in Appellants’ claimed invention. The Examiner bears the initial
burden of presenting a prima facie case of obviousness, and Appellants have
the burden of presenting a rebuttal to the prima facie case. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have met their burden. The
Examiner’s response is unavailing. Thus, we find the weight of the evidence
does not support the Examiner’s ultimate legal conclusion of obviousness.
Therefore, the Examiner’s rejection of claims 1, 2, and 5-19 is not sustained.
The Examiner’s rejection of claims 20-24 is also not sustained for the same
reasons since the Examiner has not identified how Grady remedies the noted
deficiency.

DECISION
The Examiner’s decision rejecting claims 1, 2 and 5-24 is reversed.

REVERSED

Vsh/peb