Ex Parte Francz et al

Board of Patent Appeals and Interferences

Feb 14, 2012

11480662 (B.P.A.I. Feb. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN FRANCZ, DANIEL S. SIMPKINS,
FRANK J. WROBLEWSKI, FRIEDRICH GECK,
NEGAR MOSHIRI, CHARLES W.K. GRITTON, and
ARVIND KUMAR GUPTA
____________________

Appeal 2010-004011
Application 11/480,662
Technology Center 2600
____________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-16 and 33-42. Claims 17-32 were cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
Appellants’ invention relates to “3D pointing devices, as well as
systems and methods which include 3D pointing devices.” (Spec. 1,
¶ 0002]).
Illustrative Claim
1. A remote control device comprising:

A hand-held, ring-shaped housing; and

at least one inertial sensor mounted within said ring-
shaped housing for sensing movement of said remote control
device.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Lear
Miller
Aubuchon
Armstrong
US 5,355,147
US 5,675,427
US 5,973,757
US 6,906,700 B1
Oct. 11, 1994
Oct. 7, 1997
Oct. 26, 1999
June 14, 2005
Bohn
Nieminen
US 2005/0117130 A1
US 2007/0135225 A1
June 2, 2005
June 14, 2007

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REJECTIONS
1. Claims 2, 10, 13-15, 33, 34, 37, and 38 stand rejected under 35
U.S.C. § 112, second paragraph, as being indefinite. Ans. 4.
2. Claims 1-16, 33, and 341 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Armstrong and Lear. Ans. 5-12.
3. Claims 35 and 36 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Armstrong, Lear, and Bohn. Ans. 12-13.
4. Claim 37 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Armstrong, Lear, Bohn, and Miller. Ans. 13-14.
5. Claim 38 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Armstrong, Lear, and Aubuchon. Ans. 14-15.
6. Claim 39-42 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Armstrong, Lear, and Nieminen. Ans. 15-16.

Rejection under 35 U.S.C. §112, second paragraph
Claims 2, 10, 13-15, 33, 34, 37, and 38

The Examiner concludes that Appellants’ use of the terms
“substantially,” “proximate,” and “approximately” renders these claims
indefinite. (Ans. 4). However, for essentially the same reasons argued by
Appellants’ (App. Br. 9-10), we agree that the use of these terms does not
render the claims indefinite. In particular, we agree with Appellants that the
use of the aforementioned claim terms (“substantially,” “proximate,” and
“approximately”) “merely permit[s] a reasonable variance associated with

1 The Examiner omits claim 34 from the heading of the first-stated
obviousness rejection on page 5. However, the Examiner provides a detailed
statement of rejection for claim 34 on page 12 of the Answer.
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the terms which they modify.” (App. Br. 10).2 Therefore, we reverse the
Examiner’s § 112, second paragraph, rejection of claims 2, 10, 13-15, 33,
34, 37, and 38.
Claims 1, 2, 4, 6-14, and 16
Appellants have argued the obviousness rejection of claims 1, 2, 4, 6-
14, and 16 as a single group. (App. Br. 10-21). We select independent
claim 1 as the representative claim for this group. See 37 C.F.R.
§ 41.37(c)(1)(vii). We address dependent claims 3, 5, and 15 separately,
infra.

ISSUE (1)
Under §103, did the Examiner err in finding that the
combination of Armstrong and Lear would have taught or
suggested “at least one inertial sensor mounted within said
ring-shaped housing for sensing movement of said remote
control device,” within the meaning of representative claim 1?
(Emphasis added).

Appellants contend:
[In] [r]eviewing the description in Armstrong regarding sensors
207 (see col. 18, line 52 - col. 19, line 42) it appears that
sensors 207 are activated by physical contact rather than by
sensing inertia. Additionally, this section (see col. 18, line 52 -

2 Our reviewing court guides that “t]he term ‘substantial’ implies
‘approximate’.” Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
442 F.3d 1322, 1329 (Fed. Cir. 2006) (citation omitted).

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col. 19, line 42) of Armstrong does not refer to the sensors 207
as being “inertial sensors” nor does the cited section (Figure 1)
of Lear.
(App. Br. 11).

However, based upon our review of the record, we agree with the
Examiner that the claimed “at least one inertial sensor mounted within said
ring-shaped housing for sensing movement of said remote control device”
(claim 1) would have been taught or suggested by Armstrong’s teaching of
“sensors 207 [that] are activated by . . . movements and rotations . . . .”
(Armstrong, col. 18, ll. 34-35). We note that the Examiner specifically
points to sensors 207 on page 5 of the Answer. A literal teaching of an
“inertial” sensor is not required .3

Combinability of Armstrong and Lear
Appellants additionally contend that “it would not have been obvious
to one of ordinary skill in the art to modify the invention of Armstrong to
include a ring shaped remote control as shown in Figure 1 of Lear.” (App.
Br. 12). Appellants further contend that the Examiner has engaged in
impermissible hindsight. (Id. at 13).
With regard to the Examiner’s proffered motivation to combine
Armstrong and Lear (Ans. 5), it is our view that the respective teachings of
the references (relied on by the Examiner) are merely familiar elements that,
when combined, would have yielded predictable results. The Supreme
Court guides that to be nonobvious, an improvement must be “more than the

3 Cf. Anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d
831, 832-33 (Fed. Cir. 1990)(citations omitted).
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predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007).
In KSR the U.S. Supreme Court also reaffirmed that “[a] factfinder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
US at 421. See also Graham v. John Deere Co., 383 U.S. 1, 36 (1966).
However, in KSR the Supreme Court also qualified the issue of hindsight by
stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 550 US at 421.
This reasoning is applicable here. Therefore, on this record, we are
not persuaded of error regarding the Examiner’s proffered reason for
combining Armstrong and Lear. (Ans. 5).
Accordingly, for essentially the same reasons articulated by the
Examiner in the Answer (Ans. 5, 11), as discussed above, we sustain the
obviousness rejection of representative claim 1 over the combination of
Armstrong and Lear. Dependent claims 2, 4, 6-14, and 16 (not argued
separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Independent Claim 33
ISSUE (2)
Under §103, did the Examiner err in finding that the
combination of Armstrong and Lear would have taught or
suggested “a grip, for allowing a portion of a said hand to grip
said remote control device, attached to a first inner side of an
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external portion of said approximately torus shaped housing,”
within the meaning of claim 33?

Appellants contend:
It is respectfully submitted that Figure 28 of Armstrong does
not show “a grip, for allowing a portion of a said hand to grip
said remote control device, attached to a first inner side of an
external portion of said approximately torus shaped housing.”
Instead Figure 28 of Armstrong shows “structuring within
handle 300 for support and activation of sensors 207 supported
on sensor membrane sheet 330” (see col. 23, lines 11-14)
which lacks the above stated element from Appellants’ claim 33
combination. Lear shows a mouse with a housing, but neither
Figure 1 of Lear nor the associated text for Figure 1 describe
the housing as having “a grip, for allowing a portion of a said
hand to grip said remote control device, attached to a first inner
side of an external portion of said approximately torus shaped
housing (emphasis added).”

(App. Br. 14).

The Examiner disagrees:

The broadest reasonable interpretation to the claimed grip, a
grip is a portion of the remote control attached to frame or part
of the enclosure that is being used to hold the remote control.
Lear explicitly shows external grip portion as part of the
enclosure in Fig 1 where a human hand wraps around the
mouse. The term “attached to” was interpreted to be “part of
enclosure.” Fig 2 further shows a switch 24 with finger imprint
attach to inner side of the external grip portion of the enclosure.
Applicant has a similar grip portion 602 in the specification
which applicant calls a grip portion. See Fig 7 of applicant and
¶ 40.
(Ans. 18-19).
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Based upon our review of the record, we find the weight of the
evidence supports the Examiner’s position. In particular, we do not agree
with Appellants that the Examiner’s claim construction of the disputed claim
term “grip . . . [that is] attached to a first inner side of . . . [the] housing”
(claim 33) is overly broad, unreasonable, or inconsistent with the
Specification. We find unavailing Appellant’s attempt to impute an overly
narrow construction to the claimed “grip. . . [that is] attached to a first inner
side of . . . [the] housing.” as set forth in claim 33. We conclude that under a
broad but reasonable interpretation, nothing in the plain language of
representative claim 1 precludes the Examiner’s broader interpretation (See
Ans. 18, last paragraph).4
Therefore, for essentially the same reasons articulated by the
Examiner in the Answer (Ans. 18-19), as discussed above, we sustain the
obviousness rejection of independent claim 33 over the combination of
Armstrong and Lear.
Dependent Claim 3
Regarding dependent claim 3, Appellants contend that “the associated
text (col. 23, lines 11-41) of Armstrong does not describe the housing as
acting as a grip.” (App. Br. 16). However, we find Appellants have not
traversed the Examiner’s rejection where the Examiner also finds that “Lear

4 During ex parte prosecution, the Patent & Trademark Office (PTO)
determines the scope of the claims by giving the language the “broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).

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shows a human hand griping around a doughnut-shaped mouse, i.e. [an]
external grip (See Lear, Fig 1)” (Ans. 6).
Therefore, for essentially the same reasons articulated by the
Examiner in the Answer (Ans. 18-19, re: claims 3 and 33), as discussed
above, we sustain the obviousness rejection of dependent claim 3 over the
combination of Armstrong and Lear.

Dependent Claim 5
Regarding dependent claim 5, Appellants contend:
[I]t is respectfully submitted that while Armstrong does
describe that the housing may be in "numerous shapes and
sizes" (for an embodiment with a joystick, see col. 15 lines 42-
46 and lines 54-56) or "correctly sized to interface with the
human hand or hands" (for an embodiment with a trackball, see
col. 8 lines 41-45 of Armstrong) there is not enough
information even when combined with Lear, which provides no
housing measurement values, to arrive at Appellants' claim 5
combination. Only through the use of impermissible hindsight
is the Official Action arriving at Appellants' claim 5
combination.
(App. Br. 18).
However, as pointed out by the Examiner (Ans. 19), our reviewing
court guides that where the only difference between the prior art and the
claims is a recitation of the relative dimensions of the claimed device, and a
device having the claimed relative dimensions would not perform differently
than the prior art device, then the claimed device is not patentably distinct
from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338,
1349 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984). See also M.P.E.P.
§ 2144.04(IV)(A).
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Appellants additionally contend that the Examiner has engaged in
impermissible hindsight. (App. Br. 18). We have fully addressed this issue
supra. On this record, we are not persuaded that the Examiner erred in
combining Armstrong and Lear, or in reaching the ultimate legal conclusion
of obviousness. Therefore, we sustain the Examiner’s rejection of
dependent claim 5.
Dependent Claim 15
Regarding dependent claim 3, Appellants contend:
Firstly, Figure 12 of Armstrong does not show a ring-shaped
housing. Additionally, the text associated with Figure 12 (col.
15, lines 43-57) has no description regarding the center of
gravity, much less “a center of gravity of said remote control
device is proximate a grip region of said remote control device”
which can be found, among other things, only in Appellants’
claim 15 combination.
(App. Br. 20.)
However, we observe that Lear clearly shows a ring-shaped housing
(figure 1) which the Examiner relied on in support of the rejection of claim
1, from which claim 15 depends. (See Ans. 5). We concur with the
Examiner that “[t]he broadest reasonable interpretation [of] the claim is that
the center of gravity, i.e. the average location of the weight] of the device is
in the proximate vicinity of the grip region, i.e. somewhere in the center.”
(Ans. 20). Thus, we agree with the Examiner’s finding that “Lear’s mouse
would have the center of gravity proximate to its grip.” (Ans. 21).
For essentially the same reasons articulated by the Examiner in the
Answer (Ans. 20-21), as discussed above, we sustain the obviousness
rejection of dependent claim 15 over the combination of Armstrong and
Lear.
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Claims 34-42
Regarding claim 34, Appellants present no arguments in the Briefs.
Arguments not made are considered waived. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir 2008).
Regarding the remaining §103 rejections of claims 35-42, Appellants
urge the patentability of these claims for the same reasons previously argued
with respect to independent claim 1 and/or independent claim 33. We do not
find these arguments persuasive for the same reasons discussed supra
regarding claims 1 and 33.
Moreover, we do not find persuasive the general form of argument
advanced by Appellants for claims 35-42. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
See also Hyatt, 551 F.3d at 1314.
For these reasons, we sustain the Examiner’s obviousness rejections
of claims 34-42.

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DECISION
We reverse the Examiner’s § 112, second paragraph, rejection of
claims 2, 10, 13-15, 33, 34, 37, and 38.
We affirm the Examiner’s decision rejecting claims 1-16 and 33-42
under § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).

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).

ORDER
AFFIRMED

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