Ex Parte Jensfelt

Board of Patent Appeals and Interferences

Jul 14, 2011

11312211 - (D) (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/312,211 12/20/2005 Henrik Jensfelt PS05 0514US1 5612
58342 7590 07/15/2011
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
PECHE, JORGE O
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
07/15/2011 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 HENRIK JENSFELT
____________

Appeal 2009-012706
Application 11/312,211
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. MCCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012706
Application 11/312,211

2
STATEMENT OF THE CASE
Henrik Jensfelt (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-3, 5-7, and 12-27. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellant’s claimed invention relates to joining of a display and
navigation device in electronic equipment. Spec. 1, ll. 5-7. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. Electronic equipment, comprising a display and a
physical navigation device, the display and navigation device
merged such that the navigation device physically is within a
viewable area of the display, wherein the display comprises an
opening, and the physical navigation is mounted through the
opening
THE EVIDENCE
The Examiner relies upon the following evidence:
Tobey US 5,510,811 Apr. 23, 1996
Eliasson US 2005/0162398 A1 Jul. 28, 2005
Muramatsu US 2005/0228638 A1 Oct. 13, 2005
White US 2007/0001005 A1 Jan. 4, 2007
Vogel US 2007/0159460 A1 Jul. 12, 2007
Appeal 2009-012706
Application 11/312,211

3
THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1, 3, 5, 7, 15-20, 24, and 26 under
35 U.S.C. § 103(a) as being unpatentable over Tobey and Vogel.
2. The Examiner rejected claims 2, 6, 12-14, 23, and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Tobey, Vogel, and White.
3. The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Tobey, Vogel, White and Eliasson.1
4. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over Tobey, Vogel, White, Eliasson, and Muramatsu.2
ISSUES
Appellant argues that the combination of Tobey and Vogel does not
render the claims obvious because neither Tobey nor Vogel discloses a
physical navigation device within a viewable area of the display, wherein the
display comprises an opening, and the physical navigation device is mounted
through the opening. App. Br. 5. The Examiner acknowledges that Tobey
fails to disclose this feature, but found that Vogel discloses a physical

1 The Examiner states the rejection as being over Tobey in view of White
“as applied to claims above” and further in view of Eliasson. Ans. 11. We
understand this rejection to be based on the combination of Tobey, Vogel,
White, and Eliasson.
2 The Examiner states the rejection as being over Tobey in view of Eliasson
“as applied to claims above” and further in view of Muramatsu. Ans. 12.
We understand this rejection to be based on the combination of Tobey,
Vogel, White, Eliasson, and Muramatsu.
Appeal 2009-012706
Application 11/312,211

4
navigation device in the form of a rotating knob 20 that is mounted in an
opening in display 22/32. Ans. 4-5.
The issue presented by this appeal is whether Vogel discloses a
physical navigation device “within a viewable area of the display, wherein
the display comprises an opening, and the physical navigation is mounted
through the opening” as called for in independent claim 1 or a method of
using electronic equipment comprising operating at least a part of such a
physical navigation device that is mounted through the opening of the
display, as called for in independent claim 15.
ANALYSIS
Vogel relates to a device for entering values with a screen for
displaying values and with at least one element for manual entry of the
values provided in front of the screen. Vogel 1, para. [0003]. Vogel
describes a prior art device3 that includes control elements, e.g., rotating or
sliding knobs, provided in front of a flat screen, which are connected to a
transformer , which is mounted on a carrier, where the carrier is positioned
behind the flat screen and the connection to the control elements occurs via
openings in the flat screen. Vogel 1, para. [0009]. Vogel describes that the
drawbacks to such a device are that a monitor containing a cathode ray tube
cannot be used and an overall large amount of space is necessary and
construction is expensive due to the use of separate control elements and
transformers. Vogel 1, para. [0010]. Vogel, thus, discloses a device in

3 See US 5,572,239 issued to Jaeger on November 5, 1996.
Appeal 2009-012706
Application 11/312,211

5
which “a carrier for the elements for manual entering is positioned in front
of the screen” and “[t]he elements are connected by way of connections in
front of the screen to the computer.” Vogel 1, para. [0012]. In particular,
Vogel shows an embodiment of the device in which a rotating knob 20 is
positioned in a pivotable manner on a carrier 21 which is positioned in front
of a screen 22. Vogel 2, para. [0026]; fig. 3. Vogel shows another
embodiment of the device in which a touch screen 32 is mounted with its
side wall 31 immediately next to a carrier 33. Vogel 3, para. [0029]; fig. 4.
In the first embodiment, the rotating knob 20 and carrier 21 are mounted
entirely in front of screen 22 and not through an opening in screen 22.
Vogel, fig. 3. In the second embodiment, the rotating knob 20 and carrier 33
are mounted adjacent the side wall 31 of touch screen 32 and not through an
opening in touch screen 32. Vogel, fig. 4. Based on this disclosure in which
the knob of Vogel is mounted either in front or adjacent a screen, we cannot
find by a preponderance of the evidence that Vogel discloses a physical
navigation device mounted through an opening in the display, as called for
in claims 1 and 15. Accordingly, we cannot sustain the Examiner’s rejection
of claims 1, 3, 5, 7, 15-20, 24, and 26 as being unpatentable over Tobey and
Vogel.
The Examiner relies on White for the teaching of a mobile telephone
comprising a transceiver, a processor and a touch sensitive screen. Ans. 8-
10. This teaching does not cure the deficiency in Vogel. Accordingly, we
cannot sustain the Examiner’s rejection of claims 2, 6, 12-14, 23, and 27 as
being unpatentable over Tobey, Vogel, and White.
Appeal 2009-012706
Application 11/312,211

6
The Examiner relies on Eliasson for the teaching of a method to move
a joystick and operate a touch pad mounted on a display. Ans. 11-12. This
teaching does not cure the deficiency in Vogel. Accordingly, we cannot
sustain the Examiner’s rejection of claims 21 and 22 as being unpatentable
over Tobey, Vogel, White, and Eliasson.
The Examiner relies on Muramatsu for the teaching of a method to
change the language of function on a cellular phone. Ans. 12. This teaching
does not cure the deficiency in Vogel. Accordingly, we cannot sustain the
Examiner’s rejection of claim 25 as being unpatentable over Tobey, Vogel,
White, Eliasson, and Muramatsu.
NEW GROUND OF REJECTION
As noted supra, Vogel’s discussion of the prior art (Jaeger) describes
an apparatus which appears to anticipate at least independent claims 1 and
15 of the present application. Jaeger discloses an operator and electrical
circuit interfacing apparatus having at least one circuit component which
enables operator interaction with the circuit and has an electrically-
controlled display screen, where at least a portion of the circuit component is
situated within an opening that extends into the image display area of the
screen. Jaeger, col. 2, l. 51 – col. 3, l. 7. In particular, Jaeger discloses a
control panel 11 which supports electromechanical controls or data input
devices 12, 13, 14, and 16 for enabling operator interaction with electrical
apparatus. Jaeger, col. 6, ll. 44-49; figs. 1, 2. Jaeger discloses that the
devices 12, 13, 14, and 16 are integrated with an electrically-controlled flat
panel display 34 of the type which has a screen 36 at which changeable
Appeal 2009-012706
Application 11/312,211

7
visible images are produced, and that the devices 12, 13, 14, and 16 extend
through openings 37 in the screen 36. Jaeger, col. 7, ll. 23-28; fig. 2. Jaeger
discloses that “[t]he actuators, such as switch cap 19 and rotary knobs 27
and 28, are situated directly in front of the screen 36 or, as in the case of
switch cap 23, protrude from the screen” while “[t]he housings 18, 21, 24
and 31 of devices 12, 13, 14, and 16 are behind the screen 36.” Jaeger, col.
7, ll. 28-33; fig. 2.
Based on this disclosure, we find that Jaeger anticipates independent
claims 1 and 15 and enter a new ground of rejection of claims 1 and 15
under 35 U.S.C. § 102(b) as being anticipated by Jaeger. As to claim 1, we
find that Jaeger discloses electronic equipment comprising a display (34, 36)
and a physical navigation device (12, 13, 14, and/or 16), the display and
navigation device merged such that the navigation device physically is
within a viewable area (36) of the display (fig. 1), wherein the display
comprises an opening (37), and the physical navigation device (12, 13, 14,
and/or 16) is mounted through the opening (37). Similarly, as to claim 15,
we find that Jaeger discloses a method of using electronic equipment,
comprising operating a physical navigation device (12, 13, 14, and/or 16)
located within a viewable area (36) of a display (34, 36) of the electronic
equipment to point to a selection that is shown on the display, wherein the
display comprises an opening (37) and the physical navigation device (12,
13, 14, and/or 16) is mounted through the opening (37) of the display (34,
36), and said operating comprises operating at least a part of the physical
Appeal 2009-012706
Application 11/312,211

8
navigation device (19, 23, 27, and/or 28) that is mounted through the
opening (37) of the display (34, 36).
As a board of appeal, we are primarily a tribunal of review, and, as
such, we have not considered the patentability of the dependent claims in
view of the art of record. We leave it to the discretion of the Examiner to
reconsider the patentability of the dependent claims in light of the prior art
and this new ground of rejection.
CONCLUSIONS
Vogel does not disclose a physical navigation device “within a
viewable area of the display, wherein the display comprises an opening, and
the physical navigation is mounted through the opening” as called for in
independent claim 1 or a method of using electronic equipment comprising
operating at least a part of such a physical navigation device that is mounted
through the opening of the display, as called for in independent claim 15.
Jaeger anticipates independent claims 1 and 15.
DECISION
The decision of the Examiner to reject claims 1-3, 5-7, and 12-27 is
REVERSED. Claims 1 and 15 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Jaeger.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
Appeal 2009-012706
Application 11/312,211

9
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

hh