Ex Parte Hotelling et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612189030 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/189,030 08/08/2008 69753 7590 06/02/2016 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 Steve HOTELLING 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. 106842024212 (P3116USD3) CONFIRMATION NO. 6171 EXAMINER BOLOTIN, DMITRIY ART UNIT PAPER NUMBER 2623 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): EOfficeLA@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE HOTELLING, and BRIAN HUPPI Appeal2014-008302 Application 12/189,030 Technology Center 2600 Before JEAN R. HOMERE, CAROLYN D. THOMAS, and JOHN KENNY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-16, all the pending claims in the present application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to an ambidextrous mouse. See Abstract. Appeal2014-008302 Application 12/189,030 Claim l is illustrative: 1. A user configurable mouse, comprising: a buttonless touch sensitive surface divided into an array of sensing points, each sensing point being configured to generate a signal when the sensing point detects that an object is touching the sensing point, the signal including information identifying the particular location of the sensing point, wherein signals from one or more sensing points of the array of sensing points are combined to form a hand signal that defines an image of an object in contact with the mouse; and a processor configured to receive the hand signal and determine from the hand signal which touch zone amongst one or more touch zones in the touch sensitive surface was selected, the processor further configured to generate a function signal based on the selected touch zone, wherein each touch zone corresponds to a particular function. Appellants appeal the following rejections: RI. Claims 1, 3-6, 9, and 11-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inkster (US 2005/0084138 Al, Apr. 21, 2005), Zenz (US 5,841,425, Nov. 24, 1998), and Kao (US 2002/0140676 Al, Oct. 3, 2002); R2. Claims 2 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inkster, Zenz, Kao, and Hinckley (US 2001/0011995, Al, Aug. 9, 2001); and R3. Claims 7, 8, 15, and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inkster, Zenz, Kao, and Lo (US 6,072,471, June 6, 2000). 2 Appeal2014-008302 Application 12/189,030 AlVALYSIS Claims 1-16 Issue: Did the Examiner err in finding that the combined teachings of cited art teach or suggest a buttonless touch sensitive surface and determining which touch zone amongst one or more touch zones was selected, as set forth in claim 1? Appellants contend "Zenz provides no disclosure about combining signals from one or more sensing points of the array of sensing points on a buttonless touch sensitive surface to form a hand signal that defines an image of an object in contact with the mouse" (App. Br. 4). Appellants further contend that in Zenz "the processor does not use the buttonless hand signal, i.e. input from thumb sensors 42, 44, to determine which touch zone amongst one or more touch zones in the touch sensitive surface was selected" (id. at 5). Appellants also contend that "Zenz too fails to use the buttonless hand signal" (App. Br. 7). In response, the Examiner highlights that Zenz alone was not cited to teach many of the limitations argued by Appellants (see Ans. 3). We agree with the Examiner. We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. For example, the Examiner finds that "Zenz discloses determining, by the processor, which touch zone ... amongst one or more touch zones" (Ans. 3), "Inkster discloses combining signals ... to form a hand signal" (id.), and "Kao discloses a buttonless mouse" (id. at 4), therefore, the 3 Appeal2014-008302 Application 12/189,030 combination of Zenz, Inkster, and Kao teach a mouse compnsmg a buttonless touch sensitive surface, as set forth in the claimed invention (id.). In essence, Appellants' arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 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, emphasis added). This reasoning is applicable here because, for example, the Examiner relies upon Inkster to teach combining signals on a touch sensitive surface to form a hand signal (see Final Act. 3), not Zenz as argued by Appellants (see App. Br. 4); and the Examiner relies upon Kao to teach a buttonless mouse (see Final Act. 5), not Zenz's button as argued by Appellants (although the Examiner further finds that Zenz's discloses input from thumb sensors 42 and 44 can determine which zone amongst one or more zones (see Ans. 5)). As such, we find that Appellants have not demonstrated error in the Examiner's combination of references to form the claimed invention. Appellants also argue that the combination of references is improper (see App. Br. 5-7). Specifically, Appellants contend that "Inkster and Zenz are not from the same field of endeavor [and] there is no motivation to combine the references as Inkster is directed to identifying a person to safeguard access to a system whereas Zenz is directed to configuring 4 Appeal2014-008302 Application 12/189,030 mechanical buttons in an ambidextrous mouse" (id. at 5). Appellants further contend that "Inkster does not have any need for determining from the hand signal which touch zone amongst one or more touch zones in the touch sensitive surface was selected" (id. at 6), and "Zenz would not need to receive a buttonless hand signal and determine from the buttonless hand signal which touch zone amongst one or more touch zones in the touch sensitive surface was selected" (id.). Appellants also contend that "Kao provides no disclosure about using touch signals for any purpose ... [and] there is no need to assign functionality based on handedness and therefore no need to determine handedness" (id. at 7). In response, the Examiner finds that "both Inkster and Zenz are in the field of input devices" (Ans. 5), in Inkster, "knowing which touch zone is selected and how much pressure applied to a particular touch zone is necessary to identify a particular user" (id. at 6), and the "Kao reference is only used to disclose buttonless mouse" (id.). We agree with the Examiner. There are two separate tests for determining whether a prior art reference is analogous as follows: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the inventors' endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventors are involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, Appellants' contentions compare Inkster and Zenz. However, the first test noted supra, directed to field of endeavor, is not a comparison between a prior art reference, e.g., Inkster, and another prior art reference, e.g., Zenz. Rather, the first test is a comparison between the prior art reference, i.e., Inkster, and the Appellants' field of endeavor. See In re Deminski, 796 F.2d 436, 442 5 Appeal2014-008302 Application 12/189,030 (Fed. Cir. 1986); see also In re vVood, 599 F.2d 1032, 1036 (CCPA 1979). When merely comparing prior art references, one of ordinary skill in the art can look in the same or different field of endeavor when combining prior art teachings. KSR Intl. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (stating "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one"). Thus, we find unavailing Appellants' contention that "Inkster and Zenz are not from the same field of endeavor," because such references need not be in the same field of endeavor. In any case, we agree with the Examiner that both Inkster and Zenz are related to input devices (see Inkster's and Zenz's Abstract). Regarding Appellants' contention that there is no motivation to combine the cited art, we note that there is no requirement that the problem solved by the secondary reference be discussed by the primary reference to apply the teachings of the secondary reference in a rejection under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider "the background knowledge possessed by a person having ordinary skill in the art" and "the inferences and creative steps that a person of ordinary skill in the art would employ." See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401, 418 (2007). To be nonobvious, an improvement must be "more than the predictable use of prior art elements according to their established functions," and the basis for an obviousness rejection must include an "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. Furthermore, "[t]he test for obviousness is not whether the features of a secondary reference may be 6 Appeal2014-008302 Application 12/189,030 bodily incorporated into the structure of the primary reference," but rather "what the combined teachings of those references would have suggested." In re Keller, 642 F.2d 413, 425 (CCPA 1981). As noted supra, Appellants have not demonstrated error in the Examiner's combination of the references to form the claimed invention. Here, the Examiner has found actual teachings in the prior art and has provided a rationale for the combination, i.e., "such that a function signal is determined based on a touch zone ... with motivation to automatically change handedness of the device" (see Final Act. 5). Further, the teachings suggest that the combination involves the predictable use of prior art elements according to their established functions. Accordingly, we find that the Examiner has provided sufficient motivation for combining Inkster and Zenz with the teachings of Kao, and we will sustain the obviousness rejection of claims 1-16. DECISION We affirm the Examiner's§ 103(a) rejections Rl-R3. 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 7 Copy with citationCopy as parenthetical citation