10914466 (P.T.A.B. May. 14, 2013)

Ex Parte Inoue et al

Patent Trial and Appeal BoardMay 14, 2013

10914466 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HIROTO INOUE, HIROYASU OKADA, TAMOTSU YAMAMOTO, MASAKI SAWADA, and KEIJI KAIZAKI ____________________ Appeal 2010-012372 Application 10/914,466 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012372 Application 10/914,466 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 23, 25, 26, 31, and 36-43. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. INVENTION The claims are directed to a multidirectional input device and an electronic apparatus using the same. Claim 23, reproduced below, is illustrative of the claimed subject matter: 23. A multidirectional input device comprising: an insulating substrate; a ring-shaped resistance element layer formed on said insulating substrate, said ring-shaped resistance element layer having at least three terminals electrically coupled thereto, wherein said ring-shaped resistance element layer is continuously circular and each one of the at least three terminals extends radially from said ring-shaped resistance element layer to a position along a perimeter of the said insulating substrate and at 90 degree intervals; a plane substrate spaced from said ring-shaped resistance element layer by an insulating space; a conductive section disposed on said plane substrate; an operating section operable to bring said ring-shaped resistance element layer into partial contact with said conductive section; and a controller, said controller operable to perform: Appeal 2010-012372 Application 10/914,466 3 a selection of a first pair of terminals from said at least three terminals, an application of a given voltage to said ring-shaped resistance element layer by applying the given voltage between the first pair of terminals, a first recognition of at least two contacted sections between said ring-shaped resistance element layer and said plane substrate based on the given voltage applied between the first pair of terminals, a selection of a second pair of terminals from said at least three terminals, an application of the given voltage between said second pair of terminals selected, a second recognition of the at least two contacted sections between said ring-shaped resistance element layer and said plane substrate based on the given voltage applied between the second pair of terminals, a comparison between a result of the first recognition with a result of the second recognition, and a determination of an agreed upon contacted position between said ring-shaped resistance element layer and said plane substrate based on said comparison. (Disputed limitation emphasized). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Yamamoto US 5,191,641 Mar. 2, 1993 Van Zeeland US 6,069,552 May 30, 2000 Appeal 2010-012372 Application 10/914,466 4 DeVolpi US 6,087,925 Jul. 11, 2000 Nakagawa US 7,034,806 B2 Apr. 25, 2006 (filed Jan. 13, 1998) REJECTIONS R1. Claims 23, 25, 26, 31, and 36-41 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Van Zeeland, Nakagawa, and DeVolpi. R2. Claims 42 and 43 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over the combination of Van Zeeland, Nakagawa, DeVolpi, and Yamamoto. ANALYSIS Issue: Under Â§ 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested "said ring-shaped resistance element layer is continuously circular," (emphasis added) within the meaning of claim 23 and the commensurate language of claim 31? Appellants contend: Van Zeeland does not disclose a continuously circular resistive element in Fig. 3. As described in column 4, line 31-33 of Van Zeeland, the resistive element (electrode) is the same as electrode 14 in Fig. 1, which is a broken circle. To this end, the device of Van Zeeland works to detect a pressed portion by applying variable voltage around the circumference of the resistive element, and applying different voltages to the terminals. If the electrode (resistive element) disclosed in Van Zeeland was continuously circular, the device would not work as intended. (App. Br. 6). Appeal 2010-012372 Application 10/914,466 5 Appellants' contentions are persuasive. We conclude that the broadest reasonable interpretation of a "continuously circular" ring-shaped layer excludes Van Zeeland's broken (discontinuous) circular shaped resistive element 50 because resistive element 50 has a gap between its two ends. (Van Zeeland Fig. 3; see Fig. 1; App. Br. 6). Moreover, the Examiner has not established that it would have been obvious to modify Van Zeeland's discontinuous circular shaped resistive element to meet Appellants' claimed "continuously circular" ring-shaped resistance element layer. (Ans. 4, 13). We also agree with Appellants that it would not have been obvious to modify Van Zeeland's resistive element 50 to a continuous circular shape because the modification would render Van Zeeland's device unsatisfactory for its intended purpose.1 (App. Br. 6). Specifically, Van Zeeland teaches that "[t]he resistive element is not a complete circle" (col. 2, ll. 17-18) because Van Zeeland requires a variable voltage around the circumference of the resistive element. (Col. 2, ll. 24-25; col. 4, ll. 53-55; App. Br. 6). For these reasons, we are persuaded of Examiner error. We reverse the rejection of independent claim 23 and independent claim 31, which recites commensurate limitations. We also reverse the rejections of dependent claims 25, 26, 36-38, and 40, which depend from claim 23, and dependent claims 39 and 41-43, which depend from claim 31. 1 If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Appeal 2010-012372 Application 10/914,466 6 DECISION We reverse the Examiner's rejection R1 of claims 23, 25, 26, 31, and 36-41 under Â§ 103. We reverse the Examiner's rejection R2 of claims 42 and 43 under Â§ 103. REVERSED tkl