Ex Parte Fahlman

Patent Trial and Appeal Board

Jun 24, 2013

10283587 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SCOTT E. FAHLMAN
________________

Appeal 2010-012256
Application 10/283,587
Technology Center 2600
________________

Before ELENI MANTIS MERCADER, DAVID M. KOHUT, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012256
Application 10/283,587

2
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 22, 23, 32, 36, and 42. Claims 1 – 21, 24 – 31, 33 – 35,
and 38 – 41 are cancelled or withdrawn from consideration. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Invention
Appellant invented a mouse with a set of force sensors that measure
vertical force with respect to the surface on which the mouse moves and that
pass information to the computer system in question. See Abstract.
Exemplary Claims (Emphases Added)
22. A sensing system for providing input to a computer and
comprising:
a body having an upper shell and a base adapted for
relative vertical motion therebetween enclosing sensing means
for sensing translation in a horizontal plane;
at least one force sensor between said upper shell and
said base oriented to sense vertical force perpendicular to the
horizontal; and
a plurality of direction restrictors for restricting relative
motion of said upper shell and said base to be substantially
parallel to a vertical axis.
32. A sensing system according to claim 23, further
comprising means for indicating the magnitude of said vertical
force, said magnitude being divided into at least two steps.
Appeal 2010-012256
Application 10/283,587

3
Rejections
The Examiner rejects claim 32 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Ans. 3.
The Examiner rejects claims 22, 23, 32, 36, and 42 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Ans. 3 – 5.
The Examiner rejects claim 32 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Ans. 5.
The Examiner rejects claims 22, 23, 36, and 42 under 35
U.S.C. § 102(e) as being anticipated by Farag (US 7,233,318 B1; June 19,
2007; filed July 30, 2002). Ans. 5 – 7.
The Examiner rejects claims 22, 23, 36, and 42 under 35 U.S.C.
§ 102(e) as being anticipated by Shaw (US 6,727,889 B2; Apr. 27, 2004;
filed Sept. 14, 2001). Ans. 7 – 9.
ISSUES
1. Did the Examiner err in finding that the claim 32 recitation of “said
magnitude being divided into at least two steps” is indefinite and is not
enabled by the Specification?
2. Did the Examiner err in finding that the Specification does not
reasonably convey to an artisan of ordinary skill that, at the time the
application was filed, Appellant had possession of a sensing system
comprising “at least one force sensor” and “a plurality of direction
restrictors,” as recited in claim 22?
Appeal 2010-012256
Application 10/283,587

4
3. Did the Examiner err in finding that either Farag or Shaw discloses
“a plurality of direction restrictors for restricting relative motion of said
upper shell and said base to be substantially parallel to a vertical axis,” as
recited in claim 22?
ANALYSIS
Claim 32 — 35 U.S.C. § 112, first and second paragraphs
Dependent claim 32 recites a sensing system “further comprising
means for indicating the magnitude of said vertical force, said magnitude
being divided into at least two steps” (emphasis added). The Examiner
rejects claim 32 under 35 U.S.C. § 112, second paragraph, as being
indefinite “[s]ince it is not clear what ‘at least two steps’ are so that how the
magnitude of the vertical force is divided into at least two steps.” Ans. 3.
Similarly, the Examiner rejects claim 32 under 35 U.S.C. § 112, first
paragraph, as not being enabled by the Specification because “since the
magnitude of the vertical force is a numerical value and steps are normally
preferred [sic] as stages in a process (see the Merriam Webster’s Collegiate
Dictionary, 10
th
Edition), the skilled person in the art can’t recognize how a
numerical value is divided into stages of a process.” Id. at 5; see also Ans. 9
– 11. In other words, the Examiner construes “said magnitude being divided
into at least two steps” to mean dividing the magnitude using a process
having two or more steps.
Appellant contends the Examiner erred because “[c]laim 32, read as a
whole, clearly recites that the magnitude of the vertical force sensed by each
of said sensors is divided into at least two steps.” App. Br. 4 – 5. Appellant
further argues that the Specification “clearly describes how the magnitude of
Appeal 2010-012256
Application 10/283,587

5
the vertical force sensed by the sensors may be divided into at least two
steps by A/D [analog to digital] converters.” Id. at 5 (citing Spec. 7, ll. 5 –
10). Thus, Appellant contends the Examiner’s construction of “said
magnitude being divided into two steps” is erroneous—that the disputed
recitation is directed to the number of steps of magnitude that are indicated,
rather than being directed to the number of steps taken to divide a
magnitude. We agree with Appellant.
Claim 32 recites “said magnitude being divided into” (emphasis
added). The preposition “into” is used in claim 32 “as a function word
indicating a state or condition assumed, brought into being (as by force), or
allowed to come about.” See WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY 1184 (1971). That is, “at least two steps” shows that, as a result
of being divided, the magnitude has at least two degrees, grades, or ranks
(i.e., steps). See id. at 2236. The recitation “at least two steps” does not
relate to how the division itself is carried out. Since the “at least two steps”
recitation merely establishes that the indicated magnitude has at least two
degrees, grades, or ranks, rather than being directed to actions in a division
process, we agree with Appellant that the meaning of “least two steps” is
definite within the meaning of 35 U.S.C. § 112, second paragraph. See App.
Br. 4 – 5.
Furthermore, the Specification discloses the use of at least one A/D
converter to digitize a force (i.e., to indicate a magnitude). See Spec. 7, ll. 5
– 7. The output from this force digitization is “a digital output signal in one
of N quantized levels.” See id. at 7, ll. 7 – 8. “For example, there may be a
‘dead zone’ of between 0 and C1 Newtons that counts as zero force and then
a number of levels at force intervals selected by the designer.” Id. at 7, ll. 8
Appeal 2010-012256
Application 10/283,587

6
– 10. That is, the Specification discloses that the indicated magnitude is
divided into at least two degrees, grades, or ranks—the levels at selected
force intervals—thus the magnitude is divided into steps. See WEBSTER’S at
2236. We therefore agree with Appellant that the Specification provides an
enabling disclosure for “said magnitude being divided into at least two
steps.” See App. Br. 8 – 9.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
and second paragraph rejections, of claim 32 with respect to these disputed
recitations.
Claims 22, 23, 32, 36, and 42 — 35 U.S.C. § 112, first paragraph
Claim 22 is directed to a sensing system comprising “at least one
force sensor” and “a plurality of direction restrictors.” The Examiner finds
that the Specification merely depicts a first embodiment “comprising a
SINGLE vertical force sensor 125 and a plurality of direction restrictors
122” and a second embodiment “comprising two or more vertical sensors
125, but no direction restrictors 122.” See Ans. 5 (citing Spec. figs. 1A – B
and 2). The Examiner finds that since “the original disclosure does not
explicitly describe a sensing system comprising BOTH ‘two or more
vertical force sensors’ (of the second embodiment) and ‘a plurality of
direction restrictors’ (of the first embodiment),” the Specification does not
“reasonably convey to one skilled in the relevant art that the inventor(s), at
the time the application was filed, had possession of the claimed invention.”
See id.
Appellant contends the Examiner erred because the Specification
“clearly contemplates the use of more than one force sensor in the
Appeal 2010-012256
Application 10/283,587

7
embodiment of Figs. 1A-1B at the time of filing by affirmatively stating
such when describing the embodiments of Figs. 1A and 1B.” App. Br. 7.
We agree with Appellant.
The factual inquiry for determining whether a Specification provides
sufficient written description for the claimed invention is whether the
Specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, Appellant was in possession of the invention as
currently claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 –
64 (Fed. Cir. 1991). Appellant may show possession of the claimed
invention by describing the invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. See Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997).
Here, the Specification provides a cross section of a mouse in which
only one force sensor 125 is visible. See Spec. 6, l. 3 and fig. 1B. However,
the Specification, in describing this cross section, explicitly states that the
mouse has “at least one force sensor 125 between the upper shell and the
lower platform of the mouse.” See id. at 6, ll. 12 – 13 (emphasis added).
That is, this particular embodiment is disclosed as having one or more force
sensors. As the Examiner correctly notes, the depicted cross section has a
plurality of direction restrictors. See Ans. 5; see also Spec. 6, ll. 6 – 10 and
fig. 1B. Since both the description of at least one force sensor and the
depiction of a plurality of direction restrictors are directed to the same
embodiment of the claimed invention, the Specification discloses a single
embodiment with “at least one force sensor” and “a plurality of direction
restrictors.” Therefore, we agree with Appellant that the Specification
Appeal 2010-012256
Application 10/283,587

8
reasonably conveys to an artisan of ordinary skill that, at the time the
application was filed, Appellant had possession of a sensing system
comprising “at least one force sensor” and “a plurality of direction
restrictors,” as recited in claim 22.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
and second paragraph rejections, of claim 22, or of dependent claims 23, 32,
36, and 42, with respect to these disputed recitations.
Claims 22, 23, 36, and 42 — 35 U.S.C. § 102(e)
Independent claim 22 recites “a plurality of direction restrictors for
restricting relative motion of said upper shell and said base to be
substantially parallel to a vertical axis.” The Examiner finds that Farag,
which is directed to a multi-button mouse, discloses this recitation. See Ans.
6 – 7. Specifically, the Examiner finds that slider 157 and slide support
158—depicted in Figure 9D, a side elevation view, in cross section, of a
unibody mouse—discloses a plurality of direction restrictors. See id. at 6.
Appellant contends the Examiner erred because Figure 9D depicts
only one combination of slider 157 and slide support 158, and thus only
depicts one slide restrictor instead of a plurality of slide restrictors as
claimed. See App. Br. 9 – 10. The Examiner responds that “Farag’s item
157 corresponds to one of the ‘claimed’ restrictors [and] Farag’s item 158
corresponds to another one of the ‘claimed’ restrictors.” Ans. 11. However,
neither the slider 157 nor the slide support 158 standing alone restricts acts
as a direction restrictor. Instead, it is the combination that “yields a body
that can . . . translate upwards and downwards.” Farag, col. 11, ll. 52 – 54.
Only one combination of slider 157 and slide support 158 is depicted in
Appeal 2010-012256
Application 10/283,587

9
Farag. See id at Fig. 9D. Therefore, we agree with Appellant that the
Examiner erred in finding that the embodiment depicted in Farag’s Figure
9D discloses “a plurality of direction restrictors for restricting relative
motion of said upper shell and said base to be substantially parallel to a
vertical axis” (emphasis added), as recited in claim 22. See App. Br. 9 – 10.
The Examiner also finds that posts 180 and optical switches 200A –
C—depicted in Farag’s Figure 10B, another side elevation view, in cross
section, of a unibody mouse—disclose a plurality of direction restrictors.
See Ans. 6 – 7. The Examiner finds that the switches 200A – C include light
sources 190 and light detectors 192, structured such that, with posts 180,
body 104 movements are restricted downwards and upwards. See id.
Appellant contends the Examiner erred because there “is no disclosure
in Farag that posts 180 restrict the relative motion of an upper shell and a
base to be substantially parallel to a vertical axis.” See App. Br. 10. We
agree with Appellant. Farag discloses that when the body 140 is moved to
the clicked position (i.e., through a downward force applied to the body
102), the post 180 is configured to be inserted between the light source 190
and the light detector 192. See Farag col. 12, ll. 59 – 63. However, Farag
merely shows that each post 180, with light source 190 and light detectors
192, detects movement of body 104; Farag does not show that these
elements actually restrict the movements of body 104. See id. at col. 12, l.
50 – col. 13, l. 6. Therefore, we agree with Appellant that the Examiner
erred in finding that the embodiment depicted in Farag Figure 10B discloses
“a plurality of direction restrictors for restricting relative motion of said
upper shell and said base to be substantially parallel to a vertical axis”
(emphasis added), as recited in claim 22. See App. Br. 10 – 11.
Appeal 2010-012256
Application 10/283,587

10
The Examiner alternatively finds that Shaw, which is directed to a
computer mouse input device with multi-axis palm control, discloses “a
plurality of direction restrictors for restricting relative motion of said upper
shell and said base to be substantially parallel to a vertical axis,” as recited in
claim 22. See Ans. 8. Specifically, the Examiner finds that the shaft 43 and
restricting means such as a hole or an opening restricts relative motion in the
claimed manner. See id. (citing Shaw Figs. 3 – 4 and col. 4, ll. 16 – 19).
Appellant contends the Examiner erred because there is only one
combination of shaft 43 and bushing 90 disclosed in Shaw, thus Shaw only
depicts a single direction restrictor, not a plurality of direction restrictors.
See App. Br. 11 – 12. The Examiner responds that shaft 43 discloses one of
the direction restrictors while the restricting mean (i.e., bushing 90) discloses
another direction restrictor. See Ans. 13 – 14. However, neither shaft 43
nor bushing 90 alone acts as a direction restrictor. Only together do these
elements restrict movement. See Shaw col. 6, ll. 17 – 20. Shaw only depicts
one combination of shaft 43 and bushing 90. See id. at Figs. 3 – 4.
Therefore, we agree with Appellant that the Examiner erred in finding
that Shaw discloses “a plurality of direction restrictors for restricting relative
motion of said upper shell and said base to be substantially parallel to a
vertical axis” (emphasis added), as recited in claim 22. See App. Br. 11 –
12.
Accordingly, we do not sustain the Examiner 35 U.S.C. § 102(e)
rejections of claim 22, and dependent claims 23, 36, and 42, which
incorporate the disputed recitations.
Appeal 2010-012256
Application 10/283,587

11
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
As discussed above, the Examiner erred in finding that the
embodiment show in Farag Figure 9D discloses “a plurality of direction
restrictors for restricting relative motion of said upper shell and said base to
be substantially parallel to a vertical axis” (emphasis added), as recited in
claim 22. However, mere duplication of parts has no patentable significance
unless a new and unexpected result is produced. See In re Harza, 274 F.2d
669, 774 (CCPA 1960). Here, we can discern no new and unexpected result
from the claimed use of a plurality of direction restrictors instead of a single
direction restrictor. Therefore, we find that it would have been obvious to an
artisan of ordinary skill to modify the embodiment shown in Farag Figure
9D by adding one or more sliders 157 and slide supports 158 (i.e., by using a
plurality of direction restrictors).
Appellant argues that “the slider 157 and slide support 158 do not
restrict relative motion of an upper shell and a base to be substantially
parallel to a vertical axis” because Farag’s body 104 can not only translate
upward and downwards, but also tilt right and left. See App. Br. 10 (citing
Farag col. 11, ll. 49 – 54 and fig. 9D). However, Farag’s slider 157 and
slide support 158, by providing for the upward and downward motion of
Farag’s body, restrict relative motion of the upper shell and base to be
substantially parallel to a vertical axis. See Farag col. 11, ll. 50 – 54 and Fig.
9D. Specifically, slider 157 and slide support 158 allow the body 104 to
move up and down, but not forward, backward, left, or right relative to the
base 102. See id. Additional elements—specifically those that comprise
Appeal 2010-012256
Application 10/283,587

12
pivot slider joint 150—provide for tilt right and left motion. See id. at ll. 46
– 53 and fig. 9D. That is, these additional elements allow for change in the
body’s orientation (e.g., its tilt). However, even with this change in
orientation, the relative motion of body 104 is still restrictive relative to the
base to be substantially parallel to a vertical axis. The orientation of the
body changes, but its position relative to the body does not change
substantially, except with respect to the vertical axis. Therefore, we find that
Farag’s slider 157 and slide support 158 teach or suggest “a plurality of
direction restrictors for restricting relative motion of said upper shell and
said base to be substantially parallel to a vertical axis,” as recited in claim
22.
Accordingly, we newly reject claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Farag. 37 C.F.R. § 41.50(b).
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. While we have made a new rejection regarding
independent claim 22 under 37 C.F.R. § 41.50(b), we have not reviewed the
remaining dependent claims 23, 32, 36, and 42 to the extent necessary to
determine whether these claims are unpatentable over Farag, alone or in
combination with other prior art. We leave it to the Examiner to determine
the appropriateness of any further rejections based on Farag or other
references. Our decision not to enter a new ground of rejection for all claims
should not be considered as an indication regarding the appropriateness of
further rejection or allowance of the non-rejected claims.
Appeal 2010-012256
Application 10/283,587

13
DECISION
We reverse the Examiner’s decision to reject claims 22, 23, 32, 36,
and 42.
We newly reject claim 22.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceedings (37 C.F.R. § 1.197 (b)) 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. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .
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).

REVERSED
37 C.F.R. § 41.50(b)

ke