Ex Parte Hayes et al

Board of Patent Appeals and Interferences

Oct 13, 2010

11078916 (B.P.A.I. Oct. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/078,916 03/11/2005 John Joseph Hayes JR. ERI-888RI 1137
7590 10/13/2010
Steven H Slater
Slater & Matsil LLP
17950 Preston Road
Suite 1000
Dallas, TX 75252
EXAMINER
LY, NGHI H
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
10/13/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN JOSEPH HAYES JR. and CURTIS WAYNE THORNTON
____________

Appeal 2010-008061
Application 11/078,916
Patent US 6,278,888 B1
Technology Center 2600
____________

Before ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge,
JOHN A. JEFFERY, and ROBERT E. NAPPI, Administrative Patent
Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/078,916

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-45, 48, and 51-73. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants seek to reissue U.S. Patent 6,278,888 which pertains to a
radiotelephone with a contact-sensitive transducer that enables the user to
use their finger to scroll displayed information. See generally Abstract;
Figs. 1-2. Claims 1 and 30 are illustrative:
1. A radiotelephone, comprising:
a housing having a front surface, a rear surface and first and second
side surfaces adjoining respective opposite edges of the front surface and
extending from the respective opposite edges of the front surface to
respective opposite edges of the rear surface, the housing configured to be
held in a user's hand such that the rear surface confronts the user's palm;
a radiotelephone communications transceiver, supported by the
housing;
a display, supported by the housing, that displays an image at the front
surface of the housing;
a contact-sensitive transducer, supported by the housing and having a
contact-sensitive surface disposed at at least one of the first and second side
surfaces, which produces an output signal in response to moving contact of
an object along the contact-sensitive surface of the contact-sensitive
transducer; and
a controller, responsive to the output signal and operatively associated
with the display and the radiotelephone communications transceiver, which
controls at least one of the display and the radiotelephone communications
transceiver and which scrolls displayed rows along an axis of the display
based upon the output signal of the contact-sensitive transducer.

30. An apparatus, comprising:
a housing having a front surface, a rear surface and first and second
side surfaces adjoining respective opposite sides of the front surface and
extending from the respective opposite sides of the front surface to
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respective opposite sides of the rear surface, the housing configured to be
held in a user's hand that the rear surface confronts the user's palm;
a display, supported by the housing, that displays an image at a front
surface of the housing;
a contact-sensitive transducer, supported by the housing, which
produces an output signal in response to moving contact of an object along
the contact-sensitive surface of the contact-sensitive transducer; and
a controller, responsive to the output signal and operatively associated
with the display, which scrolls displayed rows along an axis of the display
based on the output signal of the contact-sensitive transducer.

The Examiner relies on the following as evidence of unpatentability:
Moore US 4,566,001 Jan. 21, 1986
Gillespie US 5,889,236 Mar. 30, 1999
(filed Nov. 13, 1995)
O’Hagan US 6,424,830 B1 July 23, 2002
(filed June 2, 1997)

THE REJECTIONS
1. The Examiner rejected claims 1-45, 48, and 51-732 under 35 U.S.C.
§ 251 as being based on a defective reissue oath. Ans. 4.3
2. The Examiner rejected claims 1-45, 48, and 51-73 under 35 U.S.C.
§ 251 as being improperly broadened in a reissue application made
and sworn by the assignee—not the patentee. Ans. 4-5.

2 Although the Examiner erroneously indicates that claims 1-73 are rejected
(Ans. 4), claims 46, 47, 49, and 50 have been cancelled. See App. Br. 4
(indicating this claim status); see also Ans. 3 (acknowledging this status as
correct). We therefore present the correct claim listing for each rejection
here for clarity.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed July 17,
2009; (2) the Examiner’s Answer mailed March 4, 2010; and (3) the Reply
Brief filed May 3, 2010.
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3. The Examiner rejected claims 1-13, 15-27, 29-45, 48, and 51-73 under
35 U.S.C. § 103(a) as unpatentable over O’Hagan and Gillespie. Ans.
5-28.
4. The Examiner rejected claims 14 and 28 under 35 U.S.C. § 103(a) as
unpatentable over O’Hagan, Gillespie, and Moore. Ans. 28-29.

THE DEFECTIVE DECLARATION REJECTION
The Examiner finds Appellants’ reissue declaration4 defective since
(1) the claims are said to have been amended after the original reissue
declaration was filed thus necessitating a supplemental declaration, and (2)
the reissue declaration allegedly fails to identify at least one error relied
upon to support the present reissue application. Ans. 4.
Appellants argue that the Examiner’s rejection is erroneous since the
present reissue application was filed well after the purported amendment
date identified by the Examiner. App. Br. 11. Although Appellants
acknowledge amending the claims “to more comprehensively claim the
invention,” Appellants nonetheless maintain that the Examiner has not
shown that these amendments correct errors not covered by the
Supplemental Declaration filed July 14, 2006—a declaration that is said to
specifically identify at least one error relied upon as the basis for reissue.
App. Br. 12. The issue before us, then, is as follows:

4 Although the Examiner refers to both an oath and declaration in connection
with this rejection (Ans. 4), we nevertheless use the term “declaration” in
this context for clarity and consistency. See, e.g., Decl. filed Mar. 11, 2005.
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ISSUE
Under § 251, has the Examiner erred in rejecting claims 1-45, 48, and
51-73 by finding that Appellants’ reissue declaration is defective?
This issue turns on whether (1) claim amendments made after the
original reissue declaration was filed correct errors not covered by the
Supplemental Declaration filed July 14, 2006, and (2) the reissue declaration
identifies at least one error relied upon to support the present reissue
application.

FINDINGS OF FACT (FF)
1. The present reissue application was filed March 11, 2005, and
seeks to reissue U.S. Patent 6,278,888 which issued August 21, 2001 with
36 claims. Decl. In Support of Reissue Appl’n filed Mar. 11, 2005
(“Reissue Decl.”), at 1-2 (¶¶ 6-7); ‘888 Pat., col. 10, l. 29 – col. 14, l. 29
(listing patented claims 1-36).
2. On March 11, 2005, (1) claims 37 to 73 were added (claims 62 and
68 independent), and (2) independent claim 30 was amended, in pertinent
part, as follows:
30. (Amended) An apparatus, comprising:
a housing having a front surface, a rear surface and first and
second side surfaces adjoining respective opposite sides of the
front surface and extending from the respective opposite sides
of the front surface to respective opposite sides of the rear
surface, the housing configured to be held in a user’s hand such
that the rear surface confronts the user’s palm . . . .

Prelim. Amd’t filed Mar. 11, 2005, at 2-8 (underlining in original).

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3. Appellants’ Reissue Declaration identifies “[a]t least one error
upon which reissue is based” as follows: “Claim 30 of the patent is believed
to be wholly or partially invalid in that it claims more than patentee is
entitled to.” Reissue Decl. at 2 (¶ 12).
4. Appellants’ Reissue Declaration is signed by “John Han, Assistant
Secretary” who indicates that he is authorized to act on behalf of the
assignee, Ericsson, Inc., as the assignee’s Assistant Secretary. Reissue
Decl., at 1, 3 (¶¶ 2, 17).
5. An assignee statement filed March 11, 2005 signed by John Han
indicates that Ericsson, Inc. is the assignee of the entire right, title, and
interest in Patent No. 6,278,888 B1. Neither boxes “A” nor “B” on the Form
PTO/SB/96 is checked, but the form indicates that the assignment was
recorded in the United States Patent and Trademark Office at Reel 008951,
Frame 0747. Statement Under 37 C.F.R. 3.73(b) filed Mar. 11, 2005.
6. A Supplemental Declaration filed July 20, 2006 signed by John
Han identifies “[a]t least one error upon which reissue is based” as follows:
Claim 30 of the patent is believed to be wholly or partially
invalid in that it claims more than patentee is entitled to.
Specifically, originally issued claim 30 lacks the limitation of a
“housing configured to be held in a user’s hand such that the
rear surface confronts the user’s palm.” The absence of this
limitation constitutes an error.

Supp. Decl. In Support of Reissue Appl’n, filed July 20, 2006 (“Supp.
Decl.”), at 2 (¶ 12).
7. On December 21, 2007, Appellants amended claims 1, 16, and 30,
in pertinent part, as follows:

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1. (Once amended) A radiotelephone, comprising:

* * *
a contact-sensitive transducer . . . which produces an
output signal that characterizes in response to moving contact
of an object along the contact-sensitive surface of the contact-
sensitive transducer; and

a controller . . . which controls at least one of the display
and the radiotelephone communication transceiver and which
scrolls displayed rows along an axis of the display based upon
according to the output signal of the contact-sensitive
transducer.

* * *

16. (Once amended) An apparatus, comprising:

* * *
a contact-sensitive transducer . . . which produces an
output signal that characterizes moving contact of an object
along the contact-sensitive surface of the contact-sensitive
transducer; and

a controller . . . which is configured to scroll displayed
rows along an axis of control the display based on according to
the output signal of the contact-sensitive transducer.

* * *

30. (Twice amended) An apparatus, comprising:

a housing;

a display, supported by the housing, that displays an
image at a front surface of the housing;

a contact-sensitive transducer, supported by the housing,
which produces an output signal in response to moving that
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characterizes contact of an object along the contact-sensitive
surface of the contact-sensitive transducer . . . .

Amd’t filed Dec. 21, 2007, at 2, 6 (underlining and strike-through in
original).
8. On December 21, 2007, Appellants cancelled claims 46, 47, 49,
and 50. Amd’t filed Dec. 21, 2007, at 9.
9. In the Remarks accompanying the Amendment filed December 21,
2007, Appellants note the following:
[C]laim 1 recites that (1) the contact-sensitive transducer
“produces an output signal in response to moving contact along
the contact-sensitive surface of the contact-sensitive
transducer;[”] and that (2) the controller “scrolls displayed rows
. . . of the display based on the output signal” (emphasis added).
In other words, the displayed rows are scrolled in response to
moving contact along the contact-sensitive transducer.

* * *

[C]laim 16 recites that (1) the contact-sensitive transducer
“produces an output signal that characterizes moving contact of
an object along the contact-sensitive surface of the contact-
sensitive transducer;” and that (2) the controller configured to
“scroll displayed rows along an axis of the display based on the
output signal” (emphasis added). These elements are analogous
to the elements discussed in detail above with respect to claim
1.

* * *

Claim 30, as amended, recites the combination of a (a) a
display, (b) a contact-sensitive transducer “which produces an
output signal in response to moving contact of an object along

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the contact-sensitive transducer;” and (c) a control which scrolls
displayed rows along an axis of the display based on the output
signal of the contact-sensitive transducer.”

Amd’t filed Dec. 21, 2007, at 13, 17 (emphasis in original).
10. Appellants’ Appeal Brief reproduces claim 30, in pertinent part,
as follows:
30. An apparatus, comprising:

a housing;

a display, supported by the housing, that displays
an image at a front surface of the housing . . . .

App. Br. 31 (Claims App’x).
11. Appellants’ Reply Brief reproduces claim 30, in pertinent part, as
follows:
30. An apparatus, comprising:

a housing having a front surface, a rear surface and
first and second side surfaces adjoining respective
opposite sides of the front surface and extending from the
respective opposite sides of the front surface to
respective opposite sides of the front surface to
respective opposite sides of the rear surface, the housing
configured to be held in a user’s hand such that the rear
surface confronts the user’s palm;

a display, supported by the housing, that displays
an image at a front surface of the housing . . . .

Reply Br. 9 (Corrected Claims App’x).
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12. Claims 37-61 depend directly or indirectly from independent
claim 30. Also, (1) claims 63-67, and (2) claims 69-73 depend directly or
indirectly from independent claims 62 and 68, respectively. Reply Br. 11-14
(Corrected Claims App’x).
13. Independent claims 30, 62, and 68 are directed to an apparatus
with (1) a housing; (2) a display; (3) a contact-sensitive transducer supported
by the housing which produces an output signal; and (4) a controller that is
responsive to the output signal which scrolls displayed rows along an axis of
the display. Claims 62 and 68, however, contain additional limitations that
are not present in originally-issued claim 30. Compare Reply Br. 14-16
(Claims 62 and 68 reproduced in Corrected Claims App’x) with ‘888 patent,
col. 13, ll. 1-33 (claim 30).

ANALYSIS
We first address whether Appellants’ reissue declaration is defective.
To that end, we first note that, Appellants’ initially-filed and supplemental
reissue declarations indicate that the error upon which the reissue was based
is that patented claim 30 recites more than Appellants are entitled to. FF 3, 6
(emphasis added). In other words, Appellants characterize the present
application as a narrowing—not broadening—reissue application.
This point is critical, for were we to accept the Examiner’s opposite
position in this regard (i.e., that the present application is a broadening
reissue) (Ans. 4-5, 29-30), the present reissue application would be
statutorily barred as untimely since it was filed well after two years from the
patent’s issuance. See 35 U.S.C. § 251; FF 1.
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We agree with Appellants, however, that the present application is a
narrowing reissue application, particularly in light of (1) the narrowing
amendments made to the independent claims (FF 7); (2) independent claims
62 and 68 added via reissue which recite features that generally correspond
to those in originally-issued claim 30, but which also recite additional
features which are not in originally-issued claim 30 as Appellants indicate
(Reply Br. 14-16; FF 13); and (3) the features of dependent claims 37-61,
63-67, and 69-73 (added via reissue), which only further narrow the scope of
their respective independent claims 30, 62, and 68 (FF 12).
We therefore find no claim in the present reissue application that is
broader than the patented claims, for they do not contain within their scope
any conceivable product or process that would not infringe the patented
claims. See Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed.
Cir. 1987).5
We reach this conclusion notwithstanding the fact that Appellants
concede that they “inadvertently omitted” various limitations further limiting
the housing from claim 30 in an amendment filed December 21, 2007.
Reply Br. 1-2.
To be sure, the version of claim 30 when it was amended on
December 21, 2007 omits the limitations regarding various housing details
that were added to the claim when the present reissue application was filed
on March 11, 2005. Compare FF 2 (adding limitations to claim 30 further
narrowing the housing limitation when the reissue application was filed)

5 See also MPEP § 1412.03(I) (“A claim would be considered a broadening
claim if the patent owner would be able to sue any party for infringement
who previously could not have been sued for infringement.”).
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with FF 7 (listing claim 30 in an amendment filed December 21, 2007, but
omitting these previously-added housing limitations). The Examiner’s point
in this regard (Ans. 29) is well taken.
But as Appellants indicate (Reply Br. 1-2), Appellants did not express
their intention to omit these limitations, neither in the remarks
accompanying the amendment nor the amendment itself. See FF 7, 9. The
latter point is telling in this regard, for the listing of claim 30 in that
amendment contains no formatting or other indicia that would express
Appellants’ intention to delete the previously-added housing limitations—
formatting that was used to delete other limitations in that claim. See FF 7.6
Although it is unclear from this record why the previously-added
housing limitations were omitted from the December 21, 2007 amendment
to claim 30—an omission that was repeated in the Claims Appendix of the
Appeal Brief (FF 10)—we nonetheless consider this inconsistency an
inadvertent scrivener’s error, and therefore harmless based on the record
before us. That Appellants provide a corrected version of claim 30 in the
Reply Brief’s “Corrected Claims Appendix” that includes the previously-
omitted housing limitations (FF 11) only reinforces our conclusion that the
error was inadvertent and therefore harmless.
Nevertheless, we agree with the Examiner (Ans. 4) that the reissue
declaration is defective insofar as it does not account for Appellants’
correcting additional defects or errors after the Supplemental Declaration
was filed on July 14, 2006, namely the amendments to the claims on

6 See also 37 C.F.R. 1.173(d)(1) (noting that matter omitted by reissue must
be bracketed); 37 C.F.R. 1.121(c)(2) (noting that deleted claim text must be
shown by strike-through).
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December 21, 2007 noted above. See FF 7-8 (noting amendments to claims
1, 16, and 30, and cancellation of four claims). See also FF 9 (quoting
Appellants’ reasons why the claims were amended).
Simply put, Appellants did not account for correcting these additional
errors after the first Supplemental Declaration via another Supplemental
Declaration—a crucial defect on this record.7 Although the Supplemental
Declaration filed July 14, 2006 (1) specifically identifies at least one error to
be corrected (FF 6), and (2) accounts for additional errors corrected up to
July 14, 2006, it fails to account for errors corrected thereafter, namely the
amendments filed December 21, 2007 noted above.
While these errors may relate to the error identified in Appellants’
Supplemental Declaration (id.), correcting these additional errors
nevertheless must be accounted for via an additional Supplemental
Declaration. See 37 C.F.R. § 1.175(b)(1); see also MPEP 1414.01. We
reach this conclusion emphasizing that these error corrections reflect
substantive amendments to the claims which materially alter their scope,8

7 See 37 C.F.R. § 1.175(b)(1) (“For any error corrected, which is not covered
by the oath or declaration submitted under paragraph (a) of this section,
applicant must submit a supplemental oath or declaration stating that every
such error arose without any deceptive intention on the part of the
applicant.”); see also MPEP 1414.01, 8th ed., Rev. 7, July 2008 (“If
additional defects or errors are corrected in the reissue after the filing of the
application and the original reissue oath or declaration, a supplemental
oath/declaration must be filed, unless all additional errors corrected are
spelling, grammar, typographical, editorial or clerical errors which are not
errors under 35 U.S.C. 251 . . . .”).
8 Accord App. Br. 12 (acknowledging amending the claims “to more
comprehensively claim the invention”).
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and therefore go well beyond merely correcting spelling, grammar,
typographical, editorial, or clerical errors (which are not errors under § 251).
See FF 7-9; see also MPEP 1414.01.
We are therefore not persuaded that the Examiner erred in rejecting
claims 1-45, 48, and 51-73 under 35 U.S.C. § 251 as being based on a
defective reissue oath.

THE IMPROPER BROADENING REJECTION
The Examiner finds that the claims on appeal were improperly
broadened in a reissue application that was made and sworn to by the
assignee—not the patentee. Ans. 4-5, 30. Appellants argue that the
Examiner’s position is erroneous since the application is not a broadening
reissue application. App. Br. 13-16; Reply Br. 2. The issue before us, then,
is as follows:

ISSUE
Under § 251, has the Examiner erred in rejecting claims 1-45, 48, and
51-73 by finding that these claims were improperly broadened in a reissue
application made and sworn to by the assignee—not the patentee?

ANALYSIS
As noted above, since we find the present application is a
narrowing—not broadening—reissue application, we find no error in the
present reissue declaration being made and sworn by John Han who, while
not an inventor, is nonetheless authorized to act on the assignee’s behalf. FF
4-5. This practice is permissible for narrowing reissues. See 37 C.F.R.
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§ 1.172 (“[A] reissue oath may be made and sworn to or declaration made by
the assignee of the entire interest if the application does not seek to enlarge
the scope of the claims of the original patent.”).
Although the Examiner is correct that the assignee statement in
connection with this reissue application contains a typographical error since
the box adjacent the assignment recordation information is blank (Ans. 5; FF
5), we nonetheless treat this error as harmless. Notably, the corresponding
recordation information (i.e., the reel and frame numbers) is readily apparent
from that document, all but indicating that Appellants intended to select the
corresponding option on the form (i.e., option “A”). See id.
We are therefore persuaded that the Examiner erred in rejecting
claims 1-45, 48, and 51-73 under § 251 by finding that these claims were
improperly broadened in a reissue application made and sworn to by the
assignee—not the patentee.

THE OBVIOUSNESS REJECTION OVER O’HAGAN AND GILLESPIE
Regarding representative claim 1, the Examiner finds that O’Hagan
discloses a radiotelephone with every recited feature except for a contact-
sensitive transducer, but cites Gillespie for this feature in concluding the
claim would have been obvious. Ans. 5-7, 31. Specifically, the Examiner
contends that it would have been obvious to replace O’Hagan’s scrolling
thumbwheel with a contact-sensitive transducer such as that disclosed by
Gillespie. Ans. 7, 31.
Appellants argue that the prior art does not teach or suggest (1) a
contact-sensitive transducer that produces an output signal responsive to
moving contact along the contact-sensitive transducer, and (2) a controller
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that scrolls displayed rows based on the output signal as claimed. App. Br.
16-18. Although Appellants acknowledge that Gillespie uses a contact-
sensitive transducer, Appellants nevertheless contend that Gillespie is silent
on how to use this transducer to scroll displayed rows. App. Br. 20. The
issue before us, then, is as follows:

ISSUE
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that O’Hagan and Gillespie collectively would have taught or
suggested (1) a contact-sensitive transducer that produces an output signal
responsive to moving contact along the contact-sensitive transducer, and (2)
a controller that scrolls displayed rows based on the output signal?

FINDINGS OF FACT
14. We adopt the Examiner’s findings regarding O’Hagan (Ans. 6-7,
31) as our own.
15. Gillespie discloses a pressure-sensitive scrollbar feature used for
cursor movement for computing devices and other applications. Gillespie’s
invention is especially useful for enhancing the scrollbar feature in
applications for computing devices. Gillespie, Title; col. 1, ll. 17-23.
16. Gillespie notes in the patent’s background section that the
scrolling feature (i.e., enabling a user to move through a document line by
line) is one of the most common controls in applications. This feature is
often accessed with an object position detector that is used to move the
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cursor over a scroll arrow. The document is then scrolled at a constant rate
by activating the scroll arrow, often with the object position detector (e.g.,
depressing and holding a mouse button). Gillespie, col. 4, ll. 37-48.
17. Gillespie’s position sensing system 6 includes a position-sensing
transducer comprising a touch-sensitive surface disposed on a substrate. The
system includes a matrix of conductive lines which are capacitively-coupled
to the user’s finger 8 placed on sensing plane 10. Position and touch-
pressure information is derived from detected capacitance changes.
Gillespie, col. 5, ll. 35-67; col. 8, ll. 40-56; Fig. 1.
18. The scroll rate is a function of the Z pressure information such
that the scroll rate varies in accordance with the pressure information.
Gillespie, col. 9, ll. 33-41.
19. In operation, a host computer 400 polls the object position
information supplied from the touch pad sensor. When the operating system
404 determines that the cursor is over a scroll arrow and a drag gesture has
been implemented, a scroll message is sent, and the scroll rate is modified
using the Z pressure information sensed by touchpad sensor 414. The
application 406 then links to the scrolling function DLL 410 to scroll the
document as a function of the Z pressure information. Gillespie, col. 31, l.
50 – col. 34, l. 49; Figs. 15-17.
20. Gillespie’s invention provides a very convenient and easy-to-use
cursor position solution that replaces a mouse or trackball. In mouse-type
applications, the sensor can be placed in a convenient location (e.g., below
the space bar key). In this location, the user’s thumb can be used as the
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position pointer on the sensor to control displayed cursor position. The
cursor may then be moved without the need for the user’s fingers to leave
the keyboard. Gillespie, col. 34, ll. 41-51.

ANALYSIS
Claims 1-13 and 15
We will sustain the Examiner’s obviousness rejection of
representative claim 1. In short, we see no reason why skilled artisans could
not have utilized a contact-sensitive transducer such as that disclosed by
Gillespie (FF 15-19) in lieu of O’Hagan’s rotatable switch 46 (FF 14) as the
Examiner proposes, particularly since both types of input devices enable
scrolling displays for their respective devices in accordance with input from
those devices. See FF 14-19.
Although Appellants contend that Gillespie is silent on how to use the
contact-sensitive transducer to scroll displayed rows (App. Br. 20), Gillespie
does, in fact, note that line-by-line scrolling is a common control scheme for
applications. FF 16. Since Gillespie’s system is intended to provide
commensurate functionality via a contact-sensitive transducer (i.e., to enable
positioning and scrolling with the user’s finger in lieu of a hardware input
device such as a mouse or trackball) (see FF 17-20), skilled artisans would
have recognized that the system’s ability to scroll displayed rows (i.e., lines)
via that functionality. See FF 16-20. To the extent that implementing this
transducer-based scrolling functionality to scroll displayed rows in O’Hagan
would require additional design or engineering considerations, Appellants
have provided no persuasive evidence on this record proving that such an
adaptation would have been beyond the level of ordinarily skilled artisans.
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Nevertheless, we see no reason why applying this technique to scroll
rows in O’Hagan’s system (FF 14) is not tantamount to the predictable use
of prior art elements according to their established functions. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 417 (2007). We reach this conclusion
noting—as did the Examiner (Ans. 31)—that replacing O’Hagan’s
thumbwheel with Gillespie’s contact-sensitive transducer would yield
predictable results, namely scrolling displayed rows using a transducer-
based input device in lieu of a rotatable wheel. Skilled artisans would have
recognized several benefits from such a substitution, namely reducing the
number of moving parts (which can wear out and fail over time), as well as
the convenience of enabling the user’s finger or thumb to be used as the
position pointer in lieu of a wheel. See FF 20. We therefore find the
Examiner’s reason to combine the teachings of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion. That both O’Hagan and
Gillespie use cursor-based scroll bars to scroll displayed information
(compare O’Hagan Figs. 7-8 with Gillespie Fig. 16) only bolsters our
conclusion that utilizing a contact-sensitive transducer such as that in
Gillespie to scroll information in O’Hagan would have been obvious.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-13 and 15 which fall therewith.9

9 Although Appellants arguments in connection with the obviousness
rejection also refer to Allard (U.S. Pat. 5,615,384) (App. Br. 19-21), we need
not address these arguments since the reference was not relied upon in the
rejection before us on appeal. Nor is this reference germane to the
Examiner’s position articulated in the Answer. See generally Ans. 5-32.
Appeal 2010-008061
Application 11/078,916

20
Claims 16-27 and 29-73
Although Appellants nominally argue (1) claims 16-27 and 29; (2)
claims 30-61; (3) claims 62-67; and (4) claims 68-73 separately (App. Br.
21-23), the arguments are commensurate with the arguments made in
connection with claim 1. Accordingly, we sustain the Examiner’s rejection
of claims 16-27 and 29-73 for reasons similar to those indicated in
connection with claim 1.

THE OBVIOUSNESS REJECTION OVER O’HAGAN, GILLESPIE, AND MOORE
We likewise sustain the Examiner’s rejection of claims 14 and 28 over
O’Hagan, Gillespie, and Moore (Ans. 28-29). Although Appellants argue
that Moore does not cure the previously-noted deficiencies of independent
claims 1 and 16, we are not persuaded by these arguments for the reasons
previously discussed. We are therefore not persuaded that the Examiner
erred in rejecting claims 14 and 28.

CONCLUSION
Under § 251, the Examiner did not err in rejecting claims 1-45, 48,
and 51-73 as being based on a defective reissue oath, but erred in rejecting
those claims as being improperly broadened in a reissue application made
and sworn by the assignee—not the patentee.
Under § 103, the Examiner did not err in rejecting claims 1-45, 48,
and 51-73.

Appeal 2010-008061
Application 11/078,916

21
ORDER
The Examiner’s decision rejecting claims 1-45, 48, and 51-73 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)(1)(iv).

AFFIRMED

pgc

Steven H Slater
Slater & Matsil LLP
17950 Preston Road
Suite 1000
Dallas, TX 75252