Ex Parte Colmenarez et al

Board of Patent Appeals and Interferences

Mar 28, 2012

09746045 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANTONIO J. COLMENAREZ, ERIC COHEN-SOLAL,
DAPHNA WEINSHALL, and MI-SUEN LEE
____________________

Appeal 2010-001945
Application 09/746,045
Technology Center 2600
____________________

Before LANCE LEONARD BARRY, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001945
Application 09/746,045

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention relates to a wireless pointing system that
determines the location of a pointing device and maps the location into a
computer to display a cursor or control a computer program (Spec. 1, ll. 5-
7).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:

1. A system, comprising:

at least one light source in a movable hand-held device,
the movable hand-held device being capable of sending control
signals to a remotely controllable device;

at least one light detector that detects light from said light
source; and

a control unit that receives image data from the at least
one light detector, wherein the control unit detects the position
of the hand-held device relative to a position of a user of the
movable hand-held device in at least two dimensions from the
image data from the at least one light detector and translates the
position to control a feature on a display, wherein a change of
said feature corresponds to a movement of the movable
hand-held device relative to the user.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fitts US 5,175,601 Dec. 29, 1992
Livits US 5,661,505 Aug. 26, 1997
Bowling US 5,746,261 May 5, 1998
Rice US 5,973,672 Oct. 26, 1999
Arita US 6,188,388 B1 Feb. 13, 2001
(filed Apr. 16, 1998)
McTernan US 2001/056477 A1 Dec. 27, 2001
(effectively filed Feb. 15, 2000)
Lin US 6,346,933 B1 Feb. 12, 2002
(filed Sep. 21, 1999)
Kim US 6,424,335 B1 Jul. 23, 2002
(filed Sep. 02, 1998)
Girod US 6,677,987 B1 Jan. 13, 2004
(filed Dec. 03, 1997)

Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod and Livits.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod, Livits and Lin.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod, Livits and Kim.
Claims 11-16 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod, Livits and Fitts.
Claims 17-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod, Livits and Arita.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rice, Girod and Livits.
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Claims 24-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rice, Girod, Livits and Kim.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rice, Girod, Livits, Kim and Fitts.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod, Bowling and Livits.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Girod, McTernan and Livits.

II. ISSUE
The main issue before us is whether the Examiner has erred in
determining that the combination of Girod and Livits teaches or would have
suggested a control unit that “detects the position of the hand-held device
relative to a position of a user of the movable hand-held device” wherein “a
change of said feature corresponds to a movement of the movable hand-held
device relative to the user” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Girod
1. Girod’s Figure 1 is reproduced below:
App
App

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e
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Application 09/746,045

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IV. ANALYSIS
As for claim 1, although Appellants admit that “Girod teaches that
movement of the light source can be tracked within digital video data and
used to control computer-based applications” (App. Br. 6-7), Appellants
contend that Livits does not cure the deficiencies of Girod for failing to
disclose “a control unit that detects the position of a hand-held device
relative to a position of a user of the movable hand-held device” (App. Br.
7). In particular, Appellants contend that “functions of keys on a keyboard
of Livits change relative to a position of the keyboard with respect to a
surface without regard to a position of a user” (App. Br. 8). In the Reply
Brief, though Appellants admit that in Livits, “the position of the keyboard
is detected” (Reply Br. 2), Appellants repeat that “the position of the
keyboard with respect to a user has no bearing on the functions performed
by the keys” (Reply Br. 3).
However, the Examiner finds that, in Livits, “a change of feature
corresponds to a movement of the movable hand-held device relative to the
user” (Ans. 5). The Examiner explains that if there’s “change relative to a
position of the keyboard with respect to a horizontal surface, then position
relative to the user also will change with three stable positions to best suit
the comfort of the user” (Ans. 18).
We note that Appellants’ contention that “functions of keys on a
keyboard of Livits change relative to a position of the keyboard with respect
to a surface without regard to a position of a user” (App. Br. 8) is not
commensurate in scope with the recited language of claim 1. That is, claim
1 does not require that functions of keys on a keyboard change relative to a
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position of the keyboard with regard to the position of the user. Rather,
claim 1 recites a control unit that “detects the position of the hand-held
device relative to a position of a user of the movable hand-held device”
wherein a change of a “feature on a display … corresponds to a movement
of the movable hand-held device relative to the user” (emphasis added).
Girod discloses a positional light source in a hand-held device in
combination with a camera and signal processing that takes place in a set-top
box, wherein a button on the hand-held device may be used to direct
movement of a pointer as displayed on a television screen (FF 1). We find
Girod to disclose a light source in a movable hand-held device capable of
sending a control signal to a remotely controllable device (television), a light
detector (camera) that detects light from the light source, and a control unit
in the set-top box that receives image data from the camera/light detector.
Particularly, we find that Girod discloses that the set-top box detects the
position of the hand-held device and translates the position to control a
feature (pointer) on a display of the television, wherein the change of the
position of the pointer/feature corresponds to a movement of the hand-held
device. Thus, we find that the only feature of Appellants’ invention missing
from Girod is an explicit teaching that the detected position of the hand-held
device is “relative to a position of a user.”
However, Livits discloses a hand-controlled input device having a
movable housing with portions relative to the position of the user, wherein
one portion forms a surface suitable for the placement of the palm of the
user and defines a reference line generally parallel to the direction of the
hand and fingers of the user during use of the input device (FF 2). In Livits,
position of the housing is adjusted to best suit the comfort of the user (FF 3).
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We find Livits discloses a movable “position of the hand-held device” that is
“relative to a position of a user” wherein “a movement of the movable hand-
held device” is “relative to the user.” That is, in Livits, the movement of the
housing is relative to the position of the user’s hand and fingers to suit the
comfort of the user. Thus, contrary to Appellants’ contention (App. Br. 9),
changes to the position of the hand held device with respect to the surface is
also with regard to the position of the user.
We find no error in the Examiner’s finding that, in Livits, “a change
of feature corresponds to a movement of the movable hand-held device
relative to the user” (Ans. 5). We find no error in the Examiner’s finding
that if there is “change relative to a position of the keyboard with respect to a
horizontal surface, then position relative to the user also will change with
three stable positions to best suit the comfort of the user” (Ans. 18).
Since the Examiner rejects the claims as obvious over the combined
teachings of the references, the test for obviousness is not what each
reference shows but what the combined teachings would have suggested to
one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). As discussed above, Girod already teaches detecting the
position of the hand-held device and translating the position to control a
feature on a display of a television, wherein the change of the position of the
feature corresponds to a movement of the hand-held device. (FF 1).
Accordingly, we find no error in the Examiner’s conclusion that combining
Girod’s teachings to Livits’ teachings of detecting a position of the hand-
held device relative to the position of the user would have at least suggested
a control unit that “detects the position of the hand-held device relative to a
position of a user of the movable hand-held device” wherein “a change of
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said feature corresponds to a movement of the movable hand-held device
relative to the user” as required by claim 1.
We find that the artisan, upon reading Livits, would find it obvious
that controlling features on a display corresponding to movement of a
hand-held device would include the position of the hand-held device relative
to the position of the user. The Supreme Court has determined that the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). The skilled artisan would “be able to fit the teachings
of multiple patents together like pieces of a puzzle” since the skilled artisan
is “a person of ordinary creativity, not an automaton.” Id. at 420-21.
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 and claims 2-7 depending therefrom
over Girod and Livits. Since Appellants do not provide arguments for
claims 8-22 separate from those of claim 1 (App. Br. 8-9), we also find that
Appellants have not shown Examiner error in rejecting claims 8-9 over
Girod and Livits in further view of Lin, in rejecting claim 10 over Girod and
Livits in further view of Kim, in rejecting claims 11-16 and 22 over Girod
and Livits in further view of Fitts, and in rejecting claims 17-21 over Girod
and Livits in further view of Arita.
As for claims 23, 28 and 29, Appellants repeat that “Livits teaches
that functionality of a key on a keyboard is based upon a position of the
keyboard with respect to a surface, such as a desk, without regard for a
position of a user of the keyboard” (App. Br. 9 and similarly App. Br. 11).
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However, as discussed above, we find no error in the Examiner’s finding
that, if there is “change relative to a position of the keyboard with respect to
a horizontal surface [as taught by Livits], then position relative to the user
also will change with three stable positions to best suit the comfort of the
user” (Ans. 18). Accordingly, we also find no error in the Examiner’s
rejection of claim 23 over Rice, Girod and Livits, of claim 28 over Girod,
Bowling and Livits, and of claim 29 over Girod, McTernan and Livits.
Since Appellants do not provide arguments for claims 24-27 separate from
those of claim 23, we also find that Appellants have not shown Examiner
error in rejecting claims 24-26 over Rice, Girod, and Livits in further view
of Kim or in rejecting claim 27 over Rice, Girod, Livits, and Kim in further
view of Fitts.
Though Appellants also argue for claim 28 that “there is a lack of
motivation in connection with combining Girod, Bowling and Livits” (App.
Br. 11), we find no error in the Examiner’s conclusion that it would have
been obvious to combine the references “in order to improve remote control”
(Ans. 15) and “provide an improved input device” (Ans. 16). That is, all
three references are directed to controlling a position of a hand-held device.
The skilled artisan would “be able to fit the teachings of multiple patents
together” since the skilled artisan is “a person of ordinary creativity.” KSR
at 420-21 (2007).

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-29 under 35 U.S.C. § 103(a) is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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