Ex Parte Gruhlke

Patent Trial and Appeal Board

Oct 3, 2013

11334559 (P.T.A.B. Oct. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RUSSELL W. GRUHLKE
____________________

Appeal 2011-0028761
Application 11/334,559
Technology Center 2600
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Before JEAN R. HOMERE, LARRY J. HUME, and HUNG H. BUI,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Avago Technologies ECBU IP (Singapore) Pte.
Ltd. (App Br. 2.)
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-7, 9, and 11-21. Claims 8 and 10 have been
canceled. (App. Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a computer mouse (10) having a body (12)
containing a base (18) resting on an independent surface (5) upon which the
mouse (12) moves. The body (12) further contains a lens (30) with a large
depth of field greater than the distance between the lens (30) and the surface
(5) to thereby form an image of another surface (50). Upon receiving the
formed image of the second surface (50) detected by a light sensor (22), a
controller (24) contained within the body (12) uses the detected image to
determine a motion of the second surface (50). (Fig. 1 and Fig. 2, [0016]-
[0018], [0039].)
Illustrative Claim
Independent claim 1 illustrates the invention, and reads as follows:
1. An optical navigation module comprising:
a body having a base which rests on a surface with respect
to which the optical navigation module moves;
a lens disposed in the body and having a large depth of
field that is longer than a distance between the lens and the
surface so as to form an image of another surface other than the
surface;
a light sensor disposed in the body and which detects the
formed image of the another surface; and
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a controller to use the detected image to determine a
motion of the another surface relative to the optical navigation
module and which is independent of the surface on which the
base rests.
Prior Art Relied Upon
Piot U.S. 6,256,016 B1 Jul. 3, 2001
Son U.S. 6,741,234 B2 May 25, 2004
Hagen U.S. 2002/0010645 A1 Jan. 24, 2002
Walley U.S. 2003/0080282 A1 May 1, 2003
Theytaz U.S. 2005/0231482 A1 Oct. 20, 2005
Feldmeier U.S. 2006/0094331 A1 May 4, 2006
Agilent ADNK-3043-ND24 USB 2.4GHz RF Wireless Low-Power
Mouse Designer’s Kit, Product Overview, Agilent Technologies, Inc.
(2005) (hereinafter “Agilent”)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 7-12, 14, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Piot and
Walley.
2. Claims 2-4, 15, 16, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Piot, Walley, and
Son.
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Piot, Walley, and Hagen.
4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Piot, Walley, and Agilent.
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5. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Piot, Walley, Son, and
Feldmeier.
6. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Piot, Walley, Son, and
Theytaz.

ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 2-10, and the Reply Brief, pages 4-11.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Piot and Walley teaches or suggests a “lens
having a large depth of field greater than the distance between the lens and
a surface upon which the lens rests,” as recited in claim 1?

Appellant argues that the combination of references does not teach or
suggest the disputed limitations emphasized above. (App. Br. 5-8; Reply Br.
4-6.) According to Appellant, Piot discloses an optical pointing device for
imaging a spot of a surface upon which the device is operating. (App. Br. 6.)
Appellant argues that Walley discloses using lenses with a large depth of
field to image far away objects. (Id. at 7.) Therefore, Appellant submits that
Walley’s far away depth lenses would render Piot’s system unsuitable for its
intended purpose because it would no longer be suitable to image objects on
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a surface closely located thereto. (Id. 8; Reply Br. 5.) Further, Appellant
argues that the Examiner has not articulated a sufficient reasoning with a
rationale underpinning to incorporate Walley’s lens into the mouse body of
Piot. (App. Br. 7, Reply Br. 6.)
In response, the Examiner concludes that it would have been obvious
to incorporate Walley’s lenses with a large depth of field for far away
objects into the body of Piot’s mouse so that the mouse body can have “a
large depth of field (i.e. infinity) that is longer than a distance between the
lens and the surface so as to form an image of another surface other than the
surface,” thereby obtaining “a suitable image with high proficiency optical
data transmission in the input device.” (Ans. 5, 8.)
Based upon our review of the record before us, we find no error with
the Examiner’s obviousness rejection regarding claim 1. We note at the
outset that there is no material dispute as to the above teachings of Piot and
Walley as stipulated by both Appellant and the Examiner. Rather, Appellant
disputes the Examiner’s reasons to incorporate Walley’s far depth of field
lenses into the body of Piot’s mouse. Therefore, the pivotal issue before us
turns on whether Piot and Walley are properly combinable within the
context of obviousness. We answer this inquiry in the affirmative. The U.S.
Supreme Court has held that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). The Court further instructs that:
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[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.

Id. at 418.
Additionally, the Court instructs that:
[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.… [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted).
We find that an ordinarily skilled artisan would have been able to fit
the teachings of Piot and Walley (including established knowledge in the art)
together like pieces of a puzzle to predictably result in the disputed
limitations. In particular, we agree with the Examiner that the proffered
combination of Piot and Walley would predictably result in a mouse system
capable of imaging far away objects (as well as nearby objects). (Ans. 8.)
While it may be necessary for an Examiner to identify a reason for
modifying the familiar elements obtained from the prior art in establishing a
prima facie case of obviousness, the identification of such a reason is not a
sine qua non requirement. So long as the Examiner provides an articulated
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reasoning with some rational underpinning to substantiate the obviousness
rejection, such a conclusion is proper.
In this case, the Examiner provides more than just a mere conclusory
statement. The Examiner notes that at the time of the claimed invention, an
ordinarily skilled artisan would have recognized that the use of Walley’s far
depth of field lens would allow users of Piot’s mouse system to obtain “a
suitable image with the high proficiency optical data transmission in the
input device.” (Ans. 8.) In our view, such a statement suffices as an
articulated reason with a rational underpinning to support the proffered
combination. As noted above, the case law allows the Examiner to look to
the state of the prior art, including the knowledge of the ordinarily skilled
artisan to arrive at such a reason for combining the known elements of the
prior art. Consequently, the Examiner’s reliance upon widely available
knowledge in order to arrive at an articulated reason with a rational
underpinning to support the proffered combination is proper.
Further, we do not agree with Appellant that the proposed
incorporation of Walley’s far depth of field lenses into the body of Piot’s
mouse would render Piot’s system unsuitable for its intended purpose. (App.
Br. 6.) We note that the combination proposed by the Examiner would
result in supplementing Piot’s mouse with Walley’s far field depth lenses, as
opposed to using such lenses as a substitute for the lenses disclosed in Piot.
Consequently, the proposed combination would predictably result in a
mouse capable of imaging both nearby objects as well as far away objects.
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Separately, we also note that because Walley’s disclosure of imaging
far away objects is not criticism or discouragement from Piot’s disclosure of
imaging nearby objects, Walley does not teach away from the invention.
Rather, Walley’s approach is a viable alternative for imaging far away
objects, which when coupled with Piot’s teaching would allow the imaging
of both near and far away images. Therefore, we find unavailing Appellant’s
argument that Walley’s disclosure would render Piot’s solution unsuitable
for its intended purpose or that it teaches away from the same.2 We are
satisfied that because the proposed combination would predictably result in a
system that can image both nearby and far away images, it teaches or
suggests the disputed limitations. It follows that Appellant has not shown
error in the Examiner’s rejection of claim 1.
Regarding the rejection of claims 2-7, 9, and 11-21, because
Appellant has not presented separate patentability arguments or has simply
reiterated the same arguments as those previously discussed for patentability
of claim 1 above, claims 2-7, 9, and 11-21 fall therewith. See 37 C.F.R. §

2 An argument that the system is rendered “inoperable for its intended
purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, “French teaches away
from the board's proposed modification” because “if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose”). The Federal Circuit has held “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed.Cir.1994)).
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41.37(c)(1)(vii). Further, while Appellant raised additional arguments for
patentability of some of the cited claims (App. Br. 9), we find that the
Examiner has rebutted in the Answer each and every one of those arguments
by a preponderance of the evidence. (Ans. 18-21.) Therefore, we adopt the
Examiner’s findings and underlying reasoning incorporated herein by
reference. Consequently, we find no error in the Examiner’s rejection of
claims 2-7, 9, and 11-21.

DECISION
We affirm the Examiner’s rejection of claims 1-7, 9, and 11-21 as set
forth above.
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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