Ex Parte Grossman et al

Patent Trial and Appeal Board

Jun 28, 2016

12985308 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/985,308 01/05/2011
107456 7590 06/30/2016
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
FIRST NAMED INVENTOR
Tovi Grossman
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
AUT0/1206.04 4070
EXAMINER
LAM, VINH TANG
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
06/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
algdocketing@artegislaw.com
kcruz@artegislaw.com
mmccauley@artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOVI GROSSMAN, JUSTIN FRANK MATEJKA,
GEORGE FITZMAURICE, and XIAOJUN BI1
Appeal2014-008990
Application 12/985,308
Technology Center 2600
Before ST. JOHN COURTENAY, III, LINZY T. McCARTNEY, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20, which are all the pending claims. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Autodesk, Inc. App.
Br. 3.
2 Our decision refers to the Final Office Action mailed October 30, 2013
("Final Act."); Appellants' Appeal Brief filed May 5, 2014 ("App. Br."); the
Examiner's Answer mailed June 18, 2014 ("Ans."); Appellants' Reply Brief
filed August 18, 2014 ("Reply Br."); and the Specification filed January 5,
2011 ("Spec.").
Appeal2014-008990
Application 12/985,308
THE CLAHvIED TI'-JVENTION
According to the Specification, "[ t ]he invention relates generally to
input/output devices and, more specifically, to a multi-touch integrated
desktop environment." Spec. i-f 1. Independent claim 1 is directed to a
method, independent claim 8 is directed to a computer-readable storage
medium, and independent claim 15 is directed to a system. App. Br. 16-19
(Claims Appendix). Claim 1 recites:
A computer-implemented method for configuring a multi-
touch surface to display a digital mouse pad, the method
compnsmg:
defining a region on the multi-touch surface for displaying
the digital mouse pad, wherein the region is proximate to a
physical mouse device detected on the multi-touch surface and
configured to transmit user input signals to a processing unit;
generating one or more user interface elements that are
disposed within the digital mouse pad, wherein each user
interface element is configured to control a different operation
within an application window displayed via a display device;
displaying the digital mouse pad in the region on the multi-
touch surface;
detecting multi-touch input associated with a first user
interface element disposed within the digital mouse pad; and
performing a first operation within the application window
based on the multi-touch input.
App. Br. 16 (disputed limitation italicized).
REJECTION ON APPEAL
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burtner et al. (US 2010/0302144 Al, published Dec. 2,
2010) ("Burtner") and Chang et al. (US 2010/0315377 Al, published Dec.
16, 2010) ("Chang"). Final Act. 2.
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Appeal2014-008990
Application 12/985,308
ANALYSIS
We have reviewed the rejections of claims 1-20 in light of
Appellants' arguments presented in the Appeal Brief and Reply Brief. We
are not persuaded that Appellants identify reversible error. We agree with
and adopt the Examiner's findings, reasoning, and conclusions as set forth in
the Final Office Action (Final Act. 2-8) and the Examiner's Answer (Ans.
2---6). We highlight the following for emphasis.
Claim 1
Appellants argue the cited combination of references fails to teach or
suggest, "defining a region on the multi-touch surface for displaying the
digital mouse pad, wherein the region is proximate to a physical mouse
device detected on the multi-touch surface and configured to transmit user
input signals to a processing unit" as recited in independent claim 1. App.
Br. 11-12; Reply Br. 5---6. Specifically, Appellants argue, "Burtner does not
disclose generating a virtual mouse pad proximate to a physical mouse
device, as recited in claim 1." App. Br. 11; Reply Br. 5. The Examiner cites
Figure 3 and the related description in paragraphs 29 and 30 of Burtner. The
relevant portion of Figure 3 of Burtner is reproduced below .
•
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Appeal2014-008990
Application 12/985,308
Figure 3 of Burtner depicts "a system for creating a virtual mouse input
device in response to a card being placed on a touch surface." Burtner i-fi-1 6,
27. The Examiner finds Burtner teaches, "defining a region ([0030], FIG. 3,
i.e., area 347) on a multi-touch surface for displaying the digital mouse pad
([0029], FIG. 3), wherein the region is proximate to a mouse device ([0030],
FIG. 3, i.e. area 347) detected on the multi-touch surface ([0030], FIG. 3, i.e.
user taps one of their fingers on a virtual mouse button)." Ans. 2, 3; Final
Act. 2-3. These findings by the Examiner are well-supported by Burtner.
Appellants argue the card 348 of Burtner is not a "physical mouse" as
recited in claim 1. App. Br. 11; Reply Br. 5. This argument is misdirected.
The Examiner relies on Figure 9 and paragraph 50 of Chang as disclosing a
physical mouse. Ans. 2-3; Final Act. 3--4. This finding is well-supported
by Chang. Chang ,-r 50 ("the input device 500 can also be used as an
electronic mouse or a controller of games to co-operate with the touch panel
400."). We also note the card in Burtner is a physical device that functions
as a mouse as it is used to "transmit user input signals to a processing unit"
as recited in claim 1. See Burtner ,-r 30 ("When a user moves card 348, an
associated cursor (i.e. cursor 322) is moved along with the virtual mouse
moving on the display of the touch input device.") We are not persuaded
that the Examiner's findings that all of the elements of the disputed
limitation are taught by the combination of Burtner and Chang was in error.
Appellants argue paragraph 32 of Burtner teaches away from using a
physical mouse device to interact with a touch screen device. App. Br. 12-
13; Reply Br. 6-7. Paragraph 32 of Burtner states:
As opposed to a hardware input device, the virtual mouse
input device is only activated when a card is placed on the
touch surface. In this way, the virtual mouse is hidden when
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Appeal2014-008990
Application 12/985,308
not neeaea Dy a user. Additionally, using a virtual input mouse
allows a user to keep their hands on the touch surface without
having to reach for a hardware mouse.
Burtner does not teach away because it teaches an alternative to the claimed
invention and does not criticize, discredit or otherwise discourage what is
recited in claim 1. See, In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.")
Appellants argue that modifying the system of Burtner to replace the
card with the light pen of Chang would render the system of Burtner
inoperable for its intended purpose. App. Br. 13-14; Reply Br. 7-9. This
argument is not persuasive as it is not necessary for the light pen of Chang to
be able to be bodily incorporated into the system of Burtner for the
combination of references to teach or suggest the subject matter of claim 1.
See, In re Keller, 642 F .2d 413, 425 (CCP A 1981) ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art." (citations
omitted)).
We not are persuaded of error in the rejection of claim 1. To the
contrary, the challenged findings of the Examiner are well-supported and the
Examiner's conclusion of obviousness is quite reasonable in light of the
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Appeal2014-008990
Application 12/985,308
teachings of the cited references. For these reasons, we agree with and
affirm the obviousness rejection of claim 1.
Claims 2-20
With regard to claims 2-20, Appellants rely on the arguments
presented for representative claim 1. App. Br. 12, 14. For the reasons
discussed above in relation to claim 1, we affirm the rejection of claims 2-
20. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The rejection of claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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