Ex Parte Brooks

Board of Patent Appeals and Interferences

Jun 23, 2004

08689526 (B.P.A.I. Jun. 23, 2004)

1 The application on appeal was received by the Board on August 6, 2002.
2 Application for patent filed August 9, 1996. The real party in interest is International Business
Machines Corporation.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 31
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________________
Ex parte ARTHUR P. BROOKS
______________________
Appeal No. 2002-20231
Application No. 08/689,5262
______________________
ON BRIEF
______________________
Before: LEE, SPIEGEL and MEDLEY, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
I. Introduction
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1, 8-10 and 13-16 and refusal to allow claims 2, 3, 6 and 7 as
amended subsequent to the final rejection, which are all of the claims pending in this
application. We reverse.
Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 2
II. The invention
Many computer users are familiar with graphic user interfaces ("GUIs") where
computer commands are given by using a pointing device, e.g., a mouse or joystick, to
point-and-click a pointer, e.g., a cursor, onto an icon or command button on a display
screen to activate a desired function. The claimed invention is directed to methods,
apparati and program products "for controlling pointer movement ... [to] assist computer
users in selecting desired operations or objects for minimizing potential for inadvertent
user selections or mistakes" (specification, p. 12), e.g., unintentionally clicking on the
wrong icon on a crowded display screen or on the erase, instead of save, button in word
processing program. Specifically, "[s]elected areas of a display screen are defined to
provide predetermined pointer movement control actions" (id., p. 2, ll. 31-32).
As illustrated in FIG. 3A, selected areas, represented by a barrier 302A of
the display screen 108 are defined to provide predetermined pointer
movement control actions. Barrier 302A is a screen space defined by line
coordinates B(X1,Y1), and B(X2,Y2). The barrier 302A can be defined as
any other screen element when the user interface 108 is defined, and
hidden, if desired. Or a new property of any screen can be defined as the
barrier property, also specified at screen element definition time, (and
programmatically manipulatable at run time to react to dynamic
conditions). At barrier 302A, the pointer 300 changes speed, such as
slows down, or stops so that screen space beyond barrier 302A cannot be
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Application No. 08/689,526 Page 3
entered from the direction of approach through the barrier 302A.
[Specification, p. 4, l. 25 - p. 5, l. 4.]
* * * * * *
... A preliminary check of whether the pointer movement line 301 and
barrier line 302A can possibly overlap is performed. ... If it is determined ...
that both lines do reach the X,Y point, then pointer 300 is placed at
location X,Y at the barrier 302A ... . If determined ... that the pointer
movement line 301 and barrier line 302A do not overlap or that both lines
do not reach the X,Y point ..., then the pointer is placed at the projected
new location P(X2,Y2) as normally done .... [Id., p. 5, ll. 15-33.]
* * * * * *
This technique can be used to effectively exaggerate the spacing
between screen elements, or prevent pointing at an element unless
entered only through one direction, such as through a door rather than just
coasting onto it from any direction (id., p. 6, ll. 2-6).
(See Brief, pp. 2-6, for a more detailed description of appellant's invention.)
III. Illustrative claims
Claims 1, 8 and 15 are the only independent claims on appeal and are directed
to a computer-implemented method for controlling pointer movement on a display
screen and an apparatus and computer program product therefore, respectively.
Claim 1 is illustrative and reads as follows (emphasis added).
1. A computer-implemented method for controlling pointer
movement on a user interface display screen in a computer system
comprising the steps of:
defining a selected area of the user interface display screen as a
barrier;
identifying a pointer movement line;
comparing said pointer movement line with said barrier;
providing predetermined pointer movement control actions
responsive to said compared pointer movement line with said barrier
including the steps of
changing a speed of pointer movement responsive to said
compared pointer movement line with said barrier; and
changing an orientation of the pointer responsive to said
compared pointer movement line with said barrier.
Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 4
IV. Claim construction
As the Federal Circuit has observed, "the name of the game is the claim," In re
Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Claim
interpretation begins with the claims themselves, the written description, and, if in
evidence, the prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366, 62 USPQ2d 1658, 1665-66 (Fed. Cir. 2002). See In re Bond, 910 F.2d
831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990) ("It is axiomatic that ... claims in an
application are to be given their broadest reasonable interpretation consistent with the
specification, ... and that claim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art.")
Here, all of the claims on appeal require a step of or a means for providing
predetermined pointer movement control actions "including the steps of changing a
speed of pointer movement responsive to said compared pointer movement line with
said barrier; and changing an orientation of the pointer responsive to said compared
pointer movement line with said barrier." We begin by construing these two phrases.
A. Claim construction of the phrase "changing a speed of pointer
movement responsive to said compared pointer movement line with
said barrier."
According to appellant's specification, changing speed includes a change in
actual speed, e.g., slowing down a moving cursor, as well as stopping the pointer's
movement all together, e.g., preventing the cursor from crossing a barrier line (see e.g.,
p. 5, ll. 1-4). Furthermore, dependent claims 6, 13 and 16 are directed to a method and
apparatus and computer program product, respectively, wherein the predetermined
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pointer movement control actions further include a step of or means for stopping
pointer movement at a pointer location relative to the barrier. Therefore, we interpret
the phrase "providing predetermined pointer movement control actions responsive to
said compared pointer movement line with said barrier including the steps of changing
a speed of pointer movement responsive to said compared pointer movement line
with said barrier" to include pointer movement control actions which not only change
the speed at which the pointer is traveling, but also stopping its movement at the barrier.
Such an interpretation is consistent with both appellant's specification and claims.
B. Claim construction of the phrase "changing an orientation of the
pointer responsive to said compared pointer movement line with
said barrier."
According to appellant's specification, "pointer 300 is optionally oriented along
the direction of movement as indicated at a block 202 [in logic flow diagram Figure 2]"
(sentence bridging pp. 5-6). "[T]his technique can be used to effectively exaggerate the
spacing between screen elements, or prevent pointing at an element entered only
through one direction, such as through a door rather than just coasting onto it from any
direction. This completes the sequential steps as indicated at a block 214 [in Figure 2]."
[Id., p. 6, ¶ 1.] In addition, original dependent claims 5 and 12, respectively, broadly
recited a step of and apparatus means for "providing predetermined pointer movement
control actions responsive to said compared pointer movement line with said barriers
[which] includes the step of changing an orientation of the pointer" (id., pp. 9 and 10).
Original dependent claim 16 similarly recited a computer program product "wherein said
predetermined pointer movement control actions include[d] changing an orientation of
Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 6
3 See the AMENDMENT filed August 20, 1999 (Paper 10, pp. 2-3).
4 See the Final office action mailed February 5, 2001 (Paper 20). In essence, in the Final office
action, the examiner relied on McCambridge to "show changing the orientation" of a pointer, Keyson to
"show changing the speed" of a pointer, and Kanamaru to show "comparing a pointer movement line with
a selected area or barrier (Paper 20, p. 8, last ¶).
the pointer" (id., p. 11). Thus, the original claim language "changing an orientation of
the pointer" did not specify what triggered the change and broadly encompassed both
rotating the pointer in place, i.e., changing the direction in which the pointer pointed
(e.g., effectively exaggerating the spacing between screen elements), and changing the
direction in which the pointer was heading (e.g., preventing the pointer from coasting
onto an element from any direction). Independent claims 1, 8 and 15 were later
amended to recite "changing an orientation of the pointer responsive to said
compared pointer movement line with said barrier,"3 thereby clearly specifying what
triggered a change in orientation. Since at least two points are needed to define a
"movement line", changing the orientation of the pointer "responsive to said compared
pointer movement line with said barrier" precludes using the current pointer (i.e., only
one point) of the cursor in relation to the barrier to trigger changing the orientation of the
pointer. This interpretation is not inconsistent with the plain meaning of the term or with
its use in appellant's specification. Moreover, this interpretation is consistent with
statements made by both the examiner and appellant during prosecution. For example,
in the Final office action,4 the examiner stated
Leah et al. (5,808,601) implements a similar barrier (or boundary)
and cursor function but it does it in a different way for example applicant
claims in independent claims 1, 8 and 15 to summarize that he identifies
and compares the pointer movement line with the barrier to determine
movement control actions in contrast to Leah et al. to summarize identifies
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5 Use of at least two points to determine pointer movement is inherent in the step of "changing a
speed of pointer movement responsive to said compared pointer movement line with said barrier" because
the pointer is moving.
and uses only the current position of the cursor in relation to the
barrier as a means of determining cursor control actions and does not
determine the pointer movement line (note you need at least two points to
determine "line of movement") (Paper 20, ¶ bridging pp. 6-7, emphasis
added).
Similarly, appellant stated that
[i]n McCambridge et al., a cursor is displayed with one or several
different cursor orientations depending on the current cursor position. ...
McCambridge et al. do not teach or suggest the steps of changing an
orientation of the pointer responsive to the compared pointer movement
line with said barrier, as taught and claimed by Applicant in claim 1. ...
McCambridge et al. do not disclose or remotely suggest providing
predetermined pointer movement control actions responsive to the
compared pointer movement line with a barrier. McCambridge et al. do
not disclose or remotely suggest ... changing an orientation of the pointer
responsive to the comparing a pointer movement line with a selected area
of the user interface display screen defined as the barrier. [Brief, ¶
bridging pp. 16-17, original emphasis.]
Therefore, we interpret the phrase "changing an orientation of the pointer
responsive to said compared pointer movement line with said barrier" to preclude using
only the current position (i.e., one point) of the pointer in relation to the barrier as a
means of orienting the pointer.5
V. Issues on appeal
The references relied on by the examiner are:
Kanamaru et al. (Kanamaru) 5,298,890 Mar. 29, 1994
McCambridge et al. (McCambridge) 5,657,050 Aug. 12, 1997
(filed Jan. 30, 1996)
Keyson 5,703,620 Dec. 30, 1997
(filed Oct. 26, 1995).
Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 8
Claims 1-3, 6-10 and 13-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kanamaru in view of Keyson and McCambridge.
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims and to the respective positions articulated by the
appellant and the examiner. We make reference to the examiner's answer ("Answer,"
Paper 25, mailed August 27, 2001) for the examiner's reasoning in support of the
rejection and to the appellant's brief ("Brief," Paper 24, filed June 13, 2001) and reply
brief ("Reply," Paper 26, filed January 11, 2002) for the appellant's arguments
thereagainst.
VII. The prior art
A. Kanamaru
Kanamaru discloses a cursor moving system, the cursor being moved by a
pointing device such as a mouse, which is capable of (i) reducing the distance the
mouse must travel to move the cursor, (ii) moving the cursor into either an adjacent or a
separated designated area and (iii) stopping the cursor when it reaches a boundary of a
designated area (c. 1, ll. 7-23; c. 3, ll. 30-32; c. 6, ll. 4-55). Kanamaru Figure 4
illustrates a screen display of a computer/data processing system 2a showing three
separate overlapping windows numbered 1, 2 and 3 from front to back in the body of the
display and five icons numbered 1-5 in a vertical row on the right hand side of the
display. Kanamaru Figure 4 is said to illustrate the cursor moving system using three
examples or "cases" (c. 6, ll. 4-11), assuming "that an operator has previously made a
request for the discontinuous traveling of the cursor" (c. 6, ll. 11-13). Kanamaru
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defines "continuous traveling of the cursor" to mean "that the cursor travels on the
screen corresponding to travel of the mouse", i.e., "the conventional cursor movement
system" (c. 4, ll. 42-46). Kanamaru defines "discontinuous traveling of the cursor" to
mean that "where the cursor travels between the windows that are separated from each
other, the cursor is shifted at a stroke from one window to [the] other, regardless of [the]
travel of the mouse" (c. 4, ll. 36-41). In Kanamaru case 1, cursor K is on icon 1.
Clicking on icon 1 shifts the cursor to window 3, i.e., the cursor "discontinuously travels
between two separated designated areas on
the screen (c. 6, ll. 14-20). The cursor
moving system determines that the cursor is
on icon 1 and moves it to window 3 (c. 6, ll.
21-28). In Kanamaru case 2, the cursor is
within window 1 and is shifted to window 2 by
"ordinary continuous traveling of the cursor"
"between the mutually adjacent designated
areas" (c. 6, ll. 29-38). Kanamaru case 3
assumes the cursor is not set for
discontinuous travel. In case 3, "a cursor K
located within window 3 is moved in such a
direction that no windows or the like exist" (c.
6, ll. 39-43). The system "searches the other
designated areas which may lie in the cursor's
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traveling direction" and if it determines that the cursor is not moving toward a
designated area, it stops at the boundary of window 3,
even if the mouse is still moving (c. 6, ll. 44-55).
B. Keyson
Keyson relates to a method of controlling cursor
speed based on its direction of travel in relation to a
desired screen location or target area. Specifically, Keyson discloses a cursor/pointer
speed control method
characterized by decreasing an amount of movement of the moveable part
[e.g., a mouse, trackball or joystick], required to move the cursor a unit
distance, below a pre-specified level when the cursor is entering a target
area in the virtual space [e.g., computer/data processing system display];
and increasing the amount above the level when the cursor is leaving the
area. Preferably, the increasing and decreasing is done gradually to avoid
abrupt cursor movements. [Col. 3, ll. 25-32.]
"[D]ynamically varying the movement effort in this manner ... [is said to have] a catching
effect on the cursor, such that more user movement is required to leave than to enter
the target region" (c. 2, ll. 45-48). The method is said to "optimize user-interactivity" (c.
3, ll. 17-18).
C. McCambridge
McCambridge discloses a method which uses "cursor orientation", i.e., the
alignment of a cursor relative to an edge of a display screen, to keep the cursor visible
on the screen (abstract; c. 3, ll. 38-56). To wit, McCambridge determines the X,Y
coordinates of the cursor relative to the top, bottom, left and right corners of the screen
to detect whether the cursor has "disappeared" from the screen and, if so, selects a new
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"cursor orientation" to make the cursor "reappear" (c. 3, l. 57 - c. 4, l. 45). For example,
in McCambridge Figure 3, (right), when the cursor 304 points to a position in region 302
of the display screen 300, it is visible on the display screen. However, if the cursor is
positioned to point to another region, e.g., 306, 310 or 314, it may not be visible.
Therefore, upon detecting that the cursor is in one of these other regions, the method's
"cursor component" determines, e.g., that the cursor 308 in right edge region 306
should be aligned so that the cursor is visible on the screen. [See c. 4, l. 46 - c. 6, l. 6.]
VIII. Analysis
Obviousness is a question of law based on findings of underlying facts relating to
the prior art, the skill of the artisan, and objective considerations. See Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). To establish a prima facie case
of obviousness based on a combination of the content of various references, there must
be some teaching, suggestion or motivation in the prior art to make the specific
combination that was made by the applicant. In re Raynes, 7 F.3d 1037, 1039, 28
USPQ2d 1630, 1631 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). Obviousness cannot be established by hindsight
combination to produce the claimed invention. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991). As discussed in Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985), it is the prior art itself,
and not the applicant's disclosure, that must establish the obviousness of the
combination.
As to all of the independent claims, appellant argues that the prior art does not
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teach or suggest the steps of (1) "identifying a pointer movement line" (Brief, p. 14, ¶ 1);
(2) "comparing the pointer movement line with the barrier" (id.); and, (3) "providing
predetermined pointer movement control actions responsive to the compared pointer
movement line with the barrier" (id., ¶ 2), including the steps of "changing an orientation
of the pointer ... and changing a speed of pointer movement responsive to said
compared pointer movement line with said barrier" (id., p. 14, ¶ 2 and p. 16, ¶ 1) (see
also Brief, pp. 17-20).
First, as pointed out by the examiner, Kanamaru discloses the step of identifying
a pointer movement line at "figure 4, items A, B and C and figure 2, item 005
"TRAVELING DIRECTION" and column 4, lines 21-27" (Answer, p. 3, last ¶; p. 8, ¶ 3).
Kanamaru expressly describes supposing a half line or ray on the display screen
extending from the current cursor position in the direction the cursor is traveling (c. 4, ll.
21-27). Kanamaru Figure 4 illustrates the identification of pointer movement in lines A,
B and C. In other words, the claimed step of identifying a pointer movement line reads
on determining a cursor's "traveling direction" as described by Kanamaru.
Second, as pointed out by the examiner, Kanamaru discloses the step of
comparing the pointer movement line with the barrier at figure 2, items 003-006; figure
4, cases 1 and 3; and, c. 4, ll. 32-46 (Answer, p. 3, ¶ 3 - p. 4, ¶ 2; p. 8, ¶ 4). The
claimed barrier has been defined to include any selected screen area or property, such
that the pointer slows down or stops so that the screen space beyond the barrier cannot
be entered from the direction of approach through the barrier (specification, ¶ bridging
pp. 4-5). Kanamaru describes stopping the cursor "from traveling further ... at the
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6 At first, it appeared that both appellant and the examiner agreed that Kanamaru did not disclose
or suggest providing predetermined pointer movement control actions that included changing both the
speed of the pointer movement and the orientation of the pointer in response to comparing the
pointer/cursor travelling direction with the designated barrier/selected area (Brief, p. 14, ¶ 2 and p. 16, ¶ 1;
Answer, p. 4, ¶ 2 and p. 5, ¶ 1). However, upon further consideration, the examiner argued that, insofar
as appellant's specification at page 5, lines 1-2, defined "changing speed" as including stopping cursor
movement at the barrier, Kanamaru actually did describe the claimed step of changing the speed of the
pointer movement in response to said compared pointer movement line with said barrier. Appellant did
not specifically address this portion of the Answer in its response to asserted "new points of argument
raised by the Examiner" (see Reply). Furthermore, while appellant's Reply, at page 2, expressly
referenced pages 3-4 and 8-9 of the Answer as containing new points of argument raised by the examiner,
the Reply did not argue that any new points of argument had been raised on page 10 of the Answer.
Moreover, our decision does not require that we reach the alternative modification of Kanamaru by Keyson
proffered by the examiner as rendering obvious the claimed step of providing predetermined pointer
movement control actions including changing the speed of pointer movement. Therefore, we do not reach
this aspect of the examiner's rejection.
juncture where the cursor on the screen arrives at a boundary [i.e., barrier] of the
current designated area" (c. 4, ll. 32-35) (see also Figure 2, steps 003-006). Thus,
Kanamaru describes comparing the pointer movement line, i.e., the cursor's traveling
direction, with a designated barrier.
Third, as pointed out by the examiner (Answer, p. 10 ¶ 2),6 insofar as changing
the speed of pointer movement in response to comparing pointer movement line with
the barrier encompasses stopping cursor movement at the barrier, Kanamaru also
describes changing the speed of pointer movement as claimed. Specifically, in
Kanamaru Figure 4, case 3, "a cursor K located in a window 3 is moved in such a
direction that no windows or the like exist" (c. 6, ll. 39-43). The system "searches the
other designated areas which may lie in the cursor's traveling direction" and if it
determines that the cursor is not moving toward a designated area (i.e., after comparing
said pointer movement line with said barrier), it stops the cursor at the boundary of
window 3 (c. 6, ll. 44-55).
Thus, the dispositive question is whether the prior art discloses or suggests the
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step of "providing predetermined pointer movement control actions responsive to the
compared pointer movement line with the barrier including the steps of ... changing an
orientation of the pointer responsive to said compared pointer movement line
with said barrier." We think not. As pointed out by appellant (Brief, ¶ bridging pp. 16-
17), the cursor orientation in McCambridge depends on current cursor position, i.e., the
pointer orientation is changed responsive to comparing one point with a barrier, rather
than changing pointer orientation responsive to comparing at least two points
(necessary to define a pointer movement line) with said barrier, as claimed. Therefore,
the claimed invention would not "be produced by replacing the pointer in figure 4 of
Kanamaru et al. with the McCambridge pointer as illustrated in figure 3, items 304, 308,
312 or 316 and integrating all the respective software programs" as argued by the
examiner (Answer, p. 5, ¶ 2).
The examiner's entire rebuttal to this question reads as follows.
As to the arguments to McCambridge et al. (last two lines of page
16 to page 17) Appellant tries to argue that McCambridge et al. cursor
orientation depends on current cursor position rather than the changing an
orientation of the pointer responsive to the comparing a pointer movement
line. First, the specification is checked for the definition of "comparing a
pointer movement line with said barrier" and is checked for the definition of
"changing an orientation."
The phrase "comparing said pointer movement line with said
barrier" or event just the word "comparing" are not in the specification
but were at least in the original claims. The phrase "comparing said
pointer movement line with said barrier" at best only finds support in
applicants figure 2 and page 5 lines 13-33 since applicant has chosen
words and phrases in the claims that do not have direct recitation in the
specification, the broadest reasonable interpretation of the claim language
is given.
The claim phrase "changing an orientation" was originally
narrowly interpreted by the examiner to only mean a change in direction or
heading of the pointer relative to a compass, however the phrase
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"changing an orientation" or even just the word "orientation" are not in
the specification but were at least in the original claims. A standard
dictionary defines "ORIENTATION: noun, One's place and direction
relative to one's surroundings: bearing (often used in plural), location,
position, situation." In any case the combination of Kanamaru et al. and
McCambridge clearly read on "changing an orientation". [Answer, p. 10, ¶
3 - p. 11, ¶ 1, original emphasis.]
What is clear is that the examiner understood appellant's argument against
modifying Kanamaru with McCambridge. What is not clear is the examiner's rebuttal to
appellant's argument. The examiner has not rejected any of the appealed claims under
35 U.S.C. § 112, first and/or second paragraphs. In other words, the examiner evidently
finds that the appealed claims are not only clear and definite, but also supported by an
adequate written description of how to make and use appellant's invention throughout
its claimed scope. Moreover, the claim limitation to be addressed is not just "changing
an orientation", but rather "changing an orientation of the pointer responsive to said
compared pointer movement line with said barrier". Assuming arguendo that
Kanamaru changed the speed of pointer movement in response to one trigger, i.e.,
responsive to said compared pointer movement line (which requires at least two points
of reference) with said barrier, the examiner has failed to explain why one of ordinary
skill in the art would have used the cursor orientation of McCambridge which occurs in
response to a different trigger, i.e., responsive to current location (which is a single point
of reference), to modify Kanamaru. In other words, it is not simply a matter of what a
change in orientation does to a pointer, e.g., whether the pointer is rotated in place or
relocated from coordinate 1 to coordinate 2 on a display screen, but rather what triggers
the change in orientation to occur.
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The examiner may establish a case of prima facie obviousness based on a
combination of references "only by showing some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references." In re Fritch, 972 F.2d
1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The fact that the prior art could
have been modified in a manner consistent with appellant's claims would not have
made the modification obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In our view, the only suggestion for modifying Kanamaru in the manner proposed by the
examiner to meet the claimed method step of and apparatus/program product means
for "providing predetermined pointer movement control actions responsive to the
compared pointer movement line with the barrier including the steps of ... " stems from
hindsight knowledge derived from the appellant's own disclosure. The use of such
hindsight knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of
course, impermissible. See e.g., W.L. Gore and Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Therefore, for the reasons set forth above, the decision of the examiner to reject
claims 1-3, 6-10 and 13-16 under 35 U.S.C. § 103(a) as being unpatentable over
Kanamaru in view of Keyson and McCambridge is reversed.
IX. Conclusion
To summarize, the decision of the examiner to reject claims 1-3, 6-10 and 13-16
under 35 U.S.C. § 103(a) as being unpatentable over Kanamaru in view of Keyson and
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McCambridge is reversed.
REVERSED
___________________________)
JAMESON LEE )
Administrative Patent Judge )
)
)
)
___________________________)
CAROL A. SPIEGEL ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
___________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )
Joan Pennington, Esq.
535 North Michigan Avenue
Unit 1804
Chicago, Illinois 60611
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