Ex Parte Koizumi

Board of Patent Appeals and Interferences

Sep 17, 2008

11005694 (B.P.A.I. Sep. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID H. KOIZUMI
____________

Appeal 2008-2489
Application 11/005,694
Technology Center 2600
____________

Decided: September 17, 2008
____________

Before RICHARD TORCZON, SALLY C. MEDLEY and JAMES T.
MOORE, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2008-2489
Application 11/005,694

A. Statement of the Case
Intel Corporation (“Intel”), the real party in interest, seeks review under
35 U.S.C. § 134(a) of a Final Rejection of claims 1-19, the only claims
remaining in the application on appeal. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The application on appeal was filed 07 December 2004.
The Examiner relies on the following prior art in rejecting the claims on
appeal:
Skodlar 5,734,370 Mar. 31, 1998
Mumford 6,377,249 Apr. 23, 2002
Yasutake 6,597,347 Jul. 22, 2003

The Examiner rejected claims 1-10 under 35 U.S.C. § 112, ¶ 1 as failing
to comply with the enablement requirement.
The Examiner rejected claims 1-19 as being indefinite under
35 U.S.C. § 112, ¶ 2.
The Examiner rejected claims 1-2, 5-6 and 11-15 as anticipated under
35 U.S.C. § 102(b) by Skodlar.
The Examiner rejected claims 3-4 and 19 as unpatentable under
35 U.S.C. § 103(a) as obvious over Skodlar and Mumford.
The Examiner rejected claims 7-10 and 16-18 as unpatentable under
35 U.S.C. § 103(a) as obvious over Skodlar and Yasutake.
B. Issues
The first issue is whether Intel has sustained its burden of showing that
the Examiner erred in rejecting appealed claims 1-10 for failing to comply
with the enablement requirement under 35 U.S.C. § 112, ¶ 1.
1
Appeal 2008-2489
Application 11/005,694

The second issue is whether Intel has sustained its burden of showing that
the Examiner erred in rejecting appealed claims 1-19 as being indefinite
under 35 U.S.C. § 112, ¶ 2.
The third issue is whether Intel has sustained its burden of showing that
the Examiner erred in rejecting appealed claims 1-2, 5-6 and 11-15 as
anticipated under 35 U.S.C. § 102(b) by the prior art.
The fourth issue is whether Intel has sustained its burden of showing that
the Examiner erred in rejecting appealed claims 3-4 and 19 under
35 U.S.C. § 103(a) as obvious over the prior art.
The fifth issue is whether Intel has sustained its burden of showing that
the Examiner erred in rejecting appealed claims 7-10 and 16-18 under
35 U.S.C. § 103(a) as obvious over the prior art.
C. Findings of Fact (“FF”)
The record supports the following findings of fact as well as any other
findings of fact set forth in this opinion by at least a preponderance of the
evidence.
The Invention
1. The invention is related to a method and apparatus that enables a user to
interact with an image displayed on a display screen. Spec. Abs.
2. Referring to figure 2 below [numbers from figure 2 inserted], the
apparatus includes an element [10] that can be physically manipulated,
such as by utilizing handle [12] and trigger [24]. Spec. 2-4.
3. The image [30] on the display screen [28] is changed based on the
physical manipulation of element [10], such as through the movement of
the shaft portions [14, 16] and spring biased light pens [20]. Spec. 2-4.
4. A display screen is two dimensional as depicted in Intel’s figure 2.
2
Appeal 2008-2489
Application 11/005,694

Intel’s figure 2 is reproduced below.

Figure 2 depicts the interaction between the element
and image on display screen.

Claims on Appeal
5. Intel’s claims 1-19 are the subject of this appeal. App. Br. 5.
6. Claims 1 and 11 are independent. App. Br. 13-14.
7. Claims 2-10 and 12-19 are directly or indirectly dependent on claims 1
and 11 respectively. App. Br. 13-15.
8. Claims 1-10 stand or fall together with respect to the 35 U.S.C. § 112,
first paragraph rejection. App. Br. 10.
9. Claims 1-19 stand or fall together with respect to the 35 U.S.C. § 112,
second paragraph rejection. App. Br. 10.
10. Claims 1-2, 5-6 and 11-15 stand or fall together with respect to rejection
over the prior art. App. Br. 11.
11. Claims 3-4 and 19 stand or fall together with respect to rejection over
the prior art. App. Br. 11.
3
Appeal 2008-2489
Application 11/005,694

12. Claims 7-10 and 16-18 stand or fall together with respect to rejection
over the prior art. App. Br. 11-12.
13. Representative claim 1 [numbers from figure 2 inserted], which we
reproduce from the Claim Appendix of the Appeal Brief, reads as
follows:
1. A method comprising:
enabling the position of an element [10] on a display
screen [28] to be determined automatically; and
in response to physical manipulation of said element [10]
in three dimensions, enabling an image [30, 32] displayed on
said display screen [28] to be automatically altered in three
dimensions.

14. Representative claim 11 [numbers from figure 2 inserted], which we
reproduce from the Claim Appendix of the Appeal Brief, reads as
follows:
11. An article comprising a medium storing instructions that
enable a processor-based system to:
determine the position of an element [10] on a display
screen [28]; and
in response to physical manipulation of said element [10]
in three dimensions, alter an image [30, 32] displayed on the
display screen [28].

Prior Art
Skodlar
15. Referring to figure 6 below [numbers from figure 6 inserted], Skodlar
describes a control stick [2] and a control apparatus [60] and a monitor
display screen [75]. Col. 4, ll. 31-37.
16. Skodlar describes a display screen [75] showing a virtual cue [61] with
virtual cue tip [69] as a virtual extension of control stick [2]. Col. 4,
ll. 31-37.
4
Appeal 2008-2489
Application 11/005,694

17. Skodlar describes that a player will observe the virtual cue [61] on
screen [75] moving in accordance with movement of the control
stick [2]. Col. 4, ll. 37-39.
18. Skodlar describes that control stick [2] can be equipped with an optical
sensor [68] at the tip that provides exact pointing direction. Col. 4,
ll. 45-47.
19. The optical sensor [68] is connected to electronic circuit and provides a
signal relating to the cursor, virtual cue tip [69] of virtual cue [61] on the
screen, thereby allowing the displayed image including virtual cue [61]
to align with control apparatus [60]. Col. 4, ll. 47-52.
Figure 6 from Skodlar is reproduced below.

Figure 6 depicts a control apparatus, a control stick,
a virtual cue and a display.

Mumford
20. Referring to figure 10 below [numbers from figure 10 inserted],
Mumford describes a display screen [102], a light pen including a
5
Appeal 2008-2489
Application 11/005,694

colliminating lens [101], light pipe [103], multi-stranded fiber optic
cables [104a, 104b, 104c], photodiodes [106r, 106g, 106b], amplifiers
[107r, 107g, 107b] and a computer [108]. Col. 12, ll. 20-46.
21. Mumford describes that the electronic light pen measures red, green and
blue pixel values independently through color filtered independent
photodiodes. Col. 12, ll. 13-19.
22. Mumford describes that a mechanical assembly could maximize the
transmission of light from the display screen [102] to the electronic light
pen to adjust the angle of the lens [101] and light pipe [103] with respect
to display screen [102]. Col. 13, ll. 6-12.
23. Mumford describes that the mechanical assembly could support the
focusing of the electronic light pen onto a very few pixels to make the
localization of color or grey scale information very specific. Col. 13,
ll. 12-15.
Figure 10 from Mumford is reproduced below.

Figure 10 depicts a light pen including photodiodes and a display.

Yasutake
24. Referring to figure 1 below [numbers from figure 1 inserted], Yasutake
describes a force/touch sensitive 3D controller [105] with
6
Appeal 2008-2489
Application 11/005,694

force-sensitive sensor pads [110, 115, 120, 125, 130, 135] on each face
of the controller [105]. Col. 8, ll. 42-57.
25. Yasutake describes that signals responsive to the application of pressure
to the force-sensitive sensor pads [110, 115, 120, 125, 130, 135] are
input to the computer system. Col. 8, ll. 60-64.
26. Yasutake describes that the computer system can display a computer
generated object that can be manipulated in simulated space by
controller [105]. Col. 8, ll. 65-67.
27. Yasutake describes that a real or computer generated object will move
as if it is responding to the pressure (i.e., force) on controller [105]
Col. 9, ll. 14-34.
28. Yasutake describes that the controlled object will move in the X, Y and
Z directions in response to pressing on the force-sensitive sensor pads
[110, 115, 120, 125, 130, 135]. Col. 9, ll. 14-34.
29. Yasutake describes that the controller [105] offers the advantage that it
exhibits a zero neutral force, i.e., the controller does not require a force
on any sensors or mechanical members to maintain a neutral position.
Col. 9, ll. 35-37.
30. Yasutake describes that images on the display screen can be altered
automatically to appear to extend further into the display screen (along
z-axis) in response to an element (i.e., a thumb or forefinger) being
pressed harder against the force-sensitive sensor pads. Col. 19, ll. 51-
58; figs. 33d1-33d4.
31. Yasutake depicts manipulation of a computer generated object in
response to pressure on force-sensitive sensor pads in figs. 26a-26f, 28a-
28f, 33a1-a2, 33b1-b2, 33c1-c2, 33d1-d6 and 33e1-e2.
7
Appeal 2008-2489
Application 11/005,694

Figure 1 from Yasutake is reproduced below.

Figure 1 depicts a force/touch sensitive 3D
controller with force sensor pads.

Examiner’s Findings
35 U.S.C. § 112, ¶ 2 Rejection
32. The Examiner found that it is not clear whether the “element on the
screen to be determined automatically” refers to image [30] or physical
element [10] as described in Intel’s Specification. Final Rejection 31.
35 U.S.C. § 102(b) Rejection
33. The Examiner found that Skodlar describes a computer control
device [60] for controlling an image on an image display device that
includes enabling the position of an element [2] on the display
screen [67] to be determined automatically because the virtual cue [61]
appears on the screen when the stick [2] points to the display

1 The 35 U.S.C. § 112, ¶ 2 Rejection was included in the Final Rejection, but
not included in either of the Examiner’s Answers mailed 07 March 2007 and
15 May 2007. The Examiner indicated that this rejection is maintained in
the paper mailed 20 December 2007.
8
Appeal 2008-2489
Application 11/005,694

screen [67]. Final Rejection 3 and Ans. 2 4, citing Skodlar col. 4, ll. 45-
47; fig. 6.
34. The Examiner found that Skodlar describes that in response to physical
manipulation of the element [2] in three dimensions, enabling an image
displayed on the display screen to be automatically altered
in three dimensions since the optical sensor [68] is connected to
electronic circuit providing a signal relating to the cursor, virtual cue tip
[69] of virtual cue [61] on the screen, thereby allowing to alignment of
the display image including a virtual image of the control cue [61].
Final Rejection 4 and Ans. 4, citing Skodlar col. 2, ll. 29-35; col. 4,
ll. 48-52; col. 5, lines 42-45; fig 6.
35. The Examiner found that Skodlar also describes a medium storing
instructions that enable a processor based computer to perform the
method steps. Final Rejection 5 and Ans. 5, citing Skodlar fig. 5.
35 U.S.C. § 103(a) Rejections
Claims 7-10 and 16-18
36. The Examiner found that Skodlar does not describe enabling the image
on the display screen to be altered to appear to extend further into said
screen in response to the element being pressed harder against the
display screen. Final Rejection 6 and Ans. 7.
37. The Examiner found that the claimed “method for providing touch-
sensitive input” reads on Yasutake’s description of the controller [105]
having control harness [145] connected to force sensor pads and

2 The Examiner’s Answer referred to hereinafter is the Examiner’s Answer
mailed 15 May 2007.
9
Appeal 2008-2489
Application 11/005,694

providing signals in response to application of pressure to the pads.
Final Rejection 6 and Ans. 7, citing Yasutake fig. 1.
38. The Examiner found that Yasutake describes the signals are input to a
computer system that can display a computer-generated object that can
be manipulated in simulated space by the controller [105]. Final
Rejection 6 and Ans. 7, citing Yasutake col. 8, ll. 43-65; fig. 1.
39. The Examiner found that Yasutake describes the user interface is
intuitive since a computer object, i.e., image displayed on the screen,
will move further as if it responding to a pressure on controller [105].
Final Rejection 6 and Ans. 7, citing Yasutake col. 9, ll. 14-34.
40. The Examiner determined that “[i]t would have been obvious for one of
ordinary skill in the art at the time of the invention [to] provide the
teaching of enabling the generated object, i.e., image displayed on the
screen, to move as if i[n] response to pressure on the controller device in
the system of Skodlar because it would provide a controller that exhibits
a zero neutral force, i.e., the controller does not require a force on any
sensors or mechanical members to maintain a neutral position as taught
[by] Yasutake.” Final Rejection 6 and Ans. 7, citing Yasutake col. 9, ll.
34-36.
41. The Examiner found that Yasutake describes in figures 26a-26f the
appearance of the image on the display screen is physically connected to
the element by enabling the image to be altered in fashion that it would
be altered in response to the three dimensional manipulation of element
(controller [2500]) if the image were physically connected to the
element. Final Rejection 7 and Ans. 7, citing Yasutake col. 16, l. 59-
col. 17, l. 13.
10
Appeal 2008-2489
Application 11/005,694

42. The Examiner found that Yasutake describes in figures 28a-28f the
displayed image to appear to grasp another image in response to
manipulation of the controller [2820]. Final Rejection 7 and Ans. 7.
43. The Examiner found that Yasutake describes the image manipulated by
controller [2500] to appear to alter in three dimensions in response to a
corresponding manipulation of the controller [2500] in three
dimensions. Final Rejection 7 and Ans. 8, citing Yasutake figs. 26a -
26f.
44. The Examiner found that Skodlar also describes a medium storing
instructions that enable a processor based computer 5 to perform the
method steps. Final Rejection 7 and Ans. 8.
Claims 3-4 and 19
45. The Examiner found that Skodlar describes a control stick [2] with an
optical sensor [68] and found the claimed light pen to read on the optical
sensor [68]. Final Rejection 5 and Ans. 6.
46. The Examiner found that Skodlar does not provide a plurality of light
pens on the end of the control stick [2]. Final Rejection 5 and Ans. 6.
47. The Examiner found that Mumford discloses a plurality of lights [106r,
106g, 106b] at the end of an electronic light pen to determine the
position of the tip of the light pen with respect to the display screen.
Final Rejection 5 and Ans. 6, citing Mumford fig. 10; col. 12, ll. 34-37.
48. The Examiner determined it would have been obvious for one of
ordinary skill in the art at the time of the invention to modify Skodlar’s
optical sensor at the tip of the control stick to have three light sensors
because it would support the focusing of the cue tip onto a very few
pixels to make the localization of color or gray scale information very
11
Appeal 2008-2489
Application 11/005,694

specific as taught by Mumford. Final Rejection 6 and Ans. 6, citing
Mumford col. 13, ll. 13-15.
49. The Examiner found that Skodlar discloses a sensor to detect the
longitudinal movements of the control stick [2] relative to the display
screen, i.e.: physical extension of the tip portion having the light sensor
[68] is determined from the guide and shown in figure 2a as the
translational movement. Final Rejection 5 and Ans. 6, citing Skodlar
col. 3, ll. 19-21; fig. 2a.
Intel’s Arguments
Rejection of claims 1-19 under 35 U.S.C. § 112, ¶ 2
50. Intel argues that claim 1 requires the element to be physically
manipulated. App. Br. 10.
51. Intel argues that it is not seen how an image element on a display screen
could be physically manipulated. App. Br. 10.
52. Intel argues that the rejection is unfounded since one skilled in the art
would readily understand that the claim requires determining the
position of the physical element. App. Br. 10.
Rejection of claims 1-2, 5-6 and 11-15 under 35 U.S.C. § 102(b)
53. Intel argues that there is no way to read the claim so that the claim does
not require that the element must be on the screen to be automatically
determined. App. Br. 11.
54. Intel argues that the suggestion that the position of Skodlar’s control
stick [2] is automatically determined on the display screen [28] is not
supported because the control stick [2] never reaches or touches the
display screen [28]. App. Br. 11 and Reply Br. 2-3.
12
Appeal 2008-2489
Application 11/005,694

55. Intel argues that since the control stick [2] never reaches or touches the
display screen [28], it never automatically determines the position of an
element on the display screen [28]. Reply. Br. 3.
Rejection of claims 7-10 and 16-18 under 35 U.S.C. § 103(a)
56. Intel argues that neither Skodlar orYasutake teaches enabling the image
on the display screen to be altered automatically to appear to extend
further into the display screen in response to the element being pressed
harder against the display screen or any rationale to achieve it. App. Br.
11-12.
57. Intel argues that the image modifications that seem to correspond to
physical manipulation are nowhere suggested in either Skodlar or
Yasutake. App. Br. 12.
Rejection of claims 3-4 and 19 under 35 U.S.C. § 103(a)
58. Intel argues that there is no way that Skodlar’s optical sensor would
correspond to a light pen. App. Br. 11.
59. Intel argues that there is no teaching of putting the light pen on the end
of the element whose position is to be determined. App. Br. 11.
60. Intel argues that nothing in Mumford would suggest putting the light
pen on the end of the stick, as suggested by the Examiner. App. Br. 11.
61. Intel argues that there is no reason why Mumford could not put his light
pen directly on the screen without the presence of the stick.
App. Br. 11.
62. Intel argues that the addition of the element that is physically
manipulated and the attachment of the light pens to the end of the stick
is nowhere suggested by Mumford or any combination of Mumford with
any other reference. App. Br. 11.
13
Appeal 2008-2489
Application 11/005,694

D. Principles of Law
“[T]he definiteness of the language employed must be analyzed-not in a
vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
“When the meaning of claims is in doubt, especially when . . . there is
close prior art . . .” a finding of indefiniteness is proper. Amgen, Inc. v.
Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991).
The breadth of a claim is not to be equated with indefiniteness. In re
Miller, 441 F.2d 689, 693 (CCPA 1971).
If the metes and bounds of the claims are speculative, the rejection of the
claims over the prior art will not be addressed. In re Steele, 305 F.2d 859,
863 (CCPA 1962).
“In the patentability context, claims are to be given their broadest
reasonable interpretations.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citation omitted).
Once the PTO has established a prima facie case of anticipation, the
burden of production falls upon the applicant to establish entitlement to a
patent. In re Morris, 127 F.3d. 1048, 1054 (Fed. Cir. 1997) (citations
omitted).
“Under §103, the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background the obviousness or nonobviousness of the subject
14
Appeal 2008-2489
Application 11/005,694

matter is determined.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734
(2007).
In an obviousness analysis, it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc.,
127 S.Ct. 1727, 1741 (2007).
E. Analysis
Rejection of claims 1-19 under 35 U.S.C. § 112, ¶ 2
The Examiner found that it is unclear whether the “element on the
display screen”, as recited in independent claims 1 and 11, refers to an object
[30] (i.e., image) or to a physical element [10]. FF3 31.
Intel’s position is that the rejection is unfounded since the claims require
the “element” to be physically manipulated and it is unclear how an image
can be physically manipulated. FFs 50-52. While Intel’s argument has
merit with respect to claims 11-19, the same cannot be said with respect to
claims 1-10.
Claim 1 recites “in response to physical manipulation of said element in
three dimensions, enabling an image displayed on said display screen to be
automatically altered in three dimensions.” FF 13. We construe Intel’s
claimed “element” to correspond to element [10] including its component
parts such as light pens [20], shaft portions [14, 16] etc., depicted in Intel’s
figure 1. We also construe Intel’s “image displayed on said display screen”
to correspond to image [30] or image [32] displayed on display screen [28]
as depicted in Intel’s figure 1.

3 FF denotes Finding of Fact.
15
Appeal 2008-2489
Application 11/005,694

The limitations of claim 1 require both three dimensional physical
manipulation of an element and three dimensional alteration of an image. In
the first instance, Intel uses the term “three dimensions” for a real object
(i.e., element [10]). While in the second instance, Intel uses the term “three
dimensions” for a virtual object (i.e., images [30] or [32]). Further, we note
that Intel’s images [30] or [32] are displayed on a display [28] that is two
dimensional. FFs 3-4.
In its arguments, Intel relies on three dimensional physical manipulation
to urge that the claimed “element” is a real object (i.e., element [10]) and not
a virtual object (i.e., images [30] or [32]). FFs 50-52. Yet, claim 1 also
requires three dimensional alteration of a virtual object (i.e., images [30] or
[32]). Since the image is displayed on a two dimensional display, three
dimensional alteration appears to have a non-standard meaning that includes
three dimensional alteration of a real object but also connotes three
dimensional alteration of a virtual object. It is not clear why three
dimensional physical manipulation should not have a similarly broad
meaning encompassing both three dimensional physical manipulation of a
real object but also three dimensional physical manipulation of a virtual
object, instead of its common meaning. Since the meaning of three
dimensional physical manipulation may include three dimensional physical
manipulation of an image (i.e., a virtual object), we are not persuaded by
Intel’s arguments. Further, since the meaning of three dimensional physical
manipulation can include manipulation of both a real object and a virtual
object, we agree with the Examiner’s finding that it is not clear whether the
element on the display screen refers to element [10] (i.e., real object) or to an
image [30] (i.e., virtual object).
16
Appeal 2008-2489
Application 11/005,694

We appreciate that ordinarily it is difficult to establish that a claim is
indefinite in light of the teachings of the prior art and the application
disclosure. However, a finding of indefiniteness is proper when there is
close prior art and the meaning of the claim is in doubt as is the case before
us. In other words, enhanced precision in claim drafting is essential when
the prior art is close. In this case, the Skodlar reference constitutes close
prior art because it describes an element that is physically manipulated and a
display screen in which images are altered. FFs 15-19, 33, 34. Moreover,
the Examiner’s and Intel’s arguments regarding the interaction of the
element that is physically manipulated and the display screen which displays
the image indicate that the prior art is close to what is covered by claim 1.
FFs 33-35, 54, 55.
For all these reasons, we find that Intel has not demonstrated that the
Examiner erred in rejecting claims 1-10 as indefinite.
Unlike independent claim 1, independent claim 11 does not recite
enabling an image displayed on a display screen to be automatically altered
in three dimensions. Claim 11 recites “alter an image displayed on the
display screen.” A display screen is two dimensional. FF 4. We agree with
Intel that the same image that is displayed on the display screen cannot be
physically manipulated in three dimensions. The Examiner’s interpretation
that claim 11 covers manipulation of either the displayed element or the
hand held device is not reasonable. To the extent that the Examiner finds
error in the breadth of the claim, breadth of a claim is not to be equated with
indefiniteness. For these reasons, Intel has sufficiently demonstrated that the
Examiner erred in rejecting claims 11-19 as indefinite.

17
Appeal 2008-2489
Application 11/005,694

Rejection of claims 1-10 under 35 U.S.C. § 112, ¶ 1
Since the Examiner’s rejection of claims 1-10 as indefinite under
35 U.S.C. § 112, ¶ 2 has been affirmed, as discussed above, we need not
address the rejection of claims 1-10 under 35 U.S.C. § 112 for failing to
comply with the enablement requirement.
Rejection of claims 1-10 over the prior art
Since the meets and bounds of claims 1-10 are speculative, as discussed
above, we do not address the prior art rejections with respect to those
claims.
Rejection of claims 11-15 under 35 U.S.C. § 102(b)
Claim 11 recites “an element on a display screen . . . ”. FF 14. The
Examiner and Intel disagree as to whether this limitation reads on the
Skodlar reference.
Skodlar describes a control stick [2] and a control apparatus [60] and a
monitor display screen [75]. FF 15. A player will observe the virtual cue
[61] with virtual cue tip [69] on display screen [75] moving in accordance
with movement of the control stick [2] as a virtual extension of control stick
[2]. FFs 16, 17.
The Examiner found that Skodlar describes enabling the position of an
element [2] on the display screen to be determined automatically because the
virtual cue [61] appears on the screen when the stick [2] points to the display
screen. FF 33. In other words, the Examiner interprets an “element” as
having both a physical portion and a virtual portion; the control stick [2] and
the virtual cue [61].
18
Appeal 2008-2489
Application 11/005,694

Intel argues that there is no suggestion that the position of Skodlar’s
control stick [2] on the display screen is automatically determined because
the control stick [2] never reaches or touches the display screen. FFs 53-55.
However, the claim language does not require the “element on a display”
to reach or touch the display screen physically. FF 14. According to the
Examiner’s interpretation, Skodlar describes that the virtual cue [61] (i.e. the
virtual portion of the element) is on the display screen. FFs 15-17. Intel has
not presented arguments that the Examiner’s interpretation of the term
“element” is unreasonable.
For all these reasons, we find that Intel has not demonstrated that the
Examiner erred in finding claims 11-15 anticipated by Skodlar.
Rejection of claims 16-18 under 35 U.S.C. § 103(a)
Claims 16-18 are each dependent on and include all the limitations of
claim 11. FF 7. Claims 16-18 stand or fall together. FF 12. Claim 16
recites “instructions that enable the processor-based system to alter an image
so that the image appears to extend further into said display screen in
response to said element being pressed against said display screen”. App.
Br. 15. The Examiner and Intel disagree as to whether Yasutake describes
this limitation.
The Examiner found that Yasutake describes signals responsive to
application of pressure to force sensor pads of controller [105] are input to a
computer system that can display a computer-generated object that can be
manipulated in simulated space by the controller. FFs 37, 38. The
Examiner found that Yasutake describes the user interface is intuitive since a
computer object, i.e., image displayed on the screen, will move further as if
responding to a pressure on controller [105]. FF 39. The Examiner
19
Appeal 2008-2489
Application 11/005,694

determined that it would have been obvious for one of ordinary skill in the
art at the time of the invention to provide the teaching of enabling the
generated object, i.e., image displayed on the screen, to move as if
responding to pressure on the controller device in the system of Skodlar
because it would provide a controller that exhibits a zero neutral force, i.e.,
the controller does not require a force on any sensors or mechanical
members to maintain a neutral position as taught by Yasutake. FF 40.
Intel argues that neither Skodlar nor Yasutake teaches enabling the image
on the display screen to be altered automatically to appear to extend further
into the display screen in response to the element being pressed harder
against the display screen or any rationale to achieve it. FF 56. Intel’s
arguments are not persuasive because they are contradictory to the
Examiner’s findings and the disclosure in the Yasutake reference. In
addition to the Examiner’s findings (FFs 38, 39), Yasutake describes in
figures 33d1-33d4 images on the display screen that can be altered
automatically to appear to extend further into the display screen (along z-
axis) in response to an element (i.e., a thumb or forefinger) being pressed
harder against the force-sensitive sensor pads. FFs 26-28, 30.
Intel also argues that the image modifications that seem to correspond to
physical manipulation are nowhere suggested in either Skodlar or Yasutake.
FF 57. Intel’s arguments are unpersuasive because they are inconsistent
with the Examiner’s findings and Yasutake’s disclosure. In addition to the
Examiner’s findings (FFs 38, 39), Yasutake describes image modifications
that correspond to physical manipulation in figures 26a-26f, 28a-28f, 33a1-
a2, 33b1-b2, 33c1-c2, 33d1-d6 and 33e1-e2. FFs 26-28, 31.
20
Appeal 2008-2489
Application 11/005,694

For these reasons, we find that Intel has not demonstrated that the
Examiner erred in rejecting claims 16-18 as obvious over the prior art.
Rejection of claim 19 under 35 U.S.C. § 103(a)
Claim 19 is dependent on claim 11 and includes all of the limitations of
claim 11. FF 7. Claim 19 recites “[t]he article . . . further storing
instructions that enable the processor-based system to detect the position,
with respect to said display screen of a light pen associated with said
element”. App. Br. 15.
The Examiner found that Skodlar describes a control stick [2] with an
optical sensor [68] and found the claimed light pen to read on the optical
sensor [68]. FF 45. The Examiner found that Mumford discloses a plurality
of lights [106r, 106g, 106b] at the end of an electronic light pen to
determine the position of the tip of the light pen with respect to the display
screen. FF 47. The Examiner determined it would have been obvious for
one of ordinary skill in the art at the time of the invention to modify
Skodlar’s optical sensor [68] at the tip of the control stick to have three light
sensors because it would support the focusing of the cue tip onto a very few
pixels to make the localization of color or gray scale information very
specific as taught by Mumford. FF 48.
Intel argues that Skodlar’s optical sensor does not correspond to a light
pen. FF 58. Intel has not directed us to evidence in support of its argument.
Moreover, Skodlar describes an optical sensor [68] that senses light from the
display screen and Mumford describes that the light pen includes three
photodiodes [106r, 106g, 106b] that sense different colors of light emitted
from a display screen. FFs 20-23. Thus, Skodlar’s optical sensor and
Mumford’s light pen both perform the function of sensing light from a
21
Appeal 2008-2489
Application 11/005,694

display, contrary to Intel’s argument that an optical sensor cannot
correspond to a light pen. As a result, we are unpersuaded by Intel’s
argument.
Next, Intel argues that Skodlar does not teach putting a light pen on the
end of the element whose position is to be determined (i.e., control stick [2]).
FF 59. Intel also argues that Mumford or any combination of Mumford and
the prior art does not suggest adding the element that is physically
manipulated (i.e., control stick [2]) to the light pen and attaching the light
pen(s) to the end of the stick. FFs 60-62. However, Intel’s arguments are
not commensurate in scope with the language of claim 19. Claim 19 does
not require the light pen to be located on the end of the element, but instead
merely requires “a light pen associated with said element”. Intel’s
arguments also fail because, as explained above, Skodlar describes a light
pen (i.e., optical sensor [68]) located at the end of the control stick [2].
For all these reasons, we find that Intel has not demonstrated that the
Examiner erred in rejecting claim 19 as obvious over the prior art.
F. Decision
Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that the decision of the Examiner rejecting claims 1-10 as
indefinite under 35 U.S.C. § 112, 2nd paragraph is affirmed.
ORDERED that the decision of the Examiner rejecting claims 11-19 as
indefinite under 35 U.S.C. § 112, 2nd paragraph is reversed.
ORDERED that the decision of the Examiner rejecting claims 11-15 as
anticipated under 35 U.S.C. § 102(b) over Skodlar is affirmed.

22
Appeal 2008-2489
Application 11/005,694

ORDERED that the decision of the Examiner rejecting claims 16-18 as
unpatentable under 35 U.S.C. § 103(a) over Skodlar and Yasutake 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).

AFFIRMED

23
Appeal 2008-2489
Application 11/005,694

ADDITIONAL VIEWS by MOORE, Administrative Patent Judge
I join with my colleagues in this decision, but write to express additional
and separate views about the language of claim 1.
Claim 1 recites as follows:
1. A method comprising:
enabling the position of an element on a display screen to
be determined automatically; and
in response to physical manipulation of said element in
three dimensions, enabling an image displayed on said display
screen to be automatically altered in three dimensions.

Specifically, the term “enabling” appears twice in this claim. The term
appears also in dependent claims 2, 4, and 5-10.
The Examiner and my colleagues have attempted to interpret this claim
and find themselves unable to because of imprecise language used relating to
the three dimensional manipulation. As best able, they find the claim to be
close to the prior art’s description of a computer object (image) displayed on
a screen moving further, as if responding to pressure on a controller. I agree
that such a prior art description is close to the scope of the claim and
accordingly precision in claim drafting is of utmost importance in this case
specifically.
But one other important function of a claim generally is to precisely
define the scope of the claimed invention, the so-called “metes and bounds”
of the property right. A potential infringer has the right to know where the
line is drawn, so to speak, before trespassing.
In this instance, I believe one of ordinary skill in the art cannot find the
outer limit of claims 1-10 as written even if the three-dimensional issues
discussed in the opinion are ultimately resolved.
24
Appeal 2008-2489
Application 11/005,694

The specification sheds no light on what the obfuscatory step of
“enabling” entails. Almost anything can “enable” a result. Claims 1-10, as
written, represent a desired end result or “wish” without any real steps for
achieving that end result. There are no concrete or tangible steps recited,
such as providing software which computes positional input and pressure
data and then periodically re-renders the screen.
Claims 1-10 represent a “black box” to me. Accordingly, they do not
give a potential infringer notice of what is inside them, and what the claim
covers. I would therefore find claims 1-10 to be unpatentable under 35
U.S.C. §112, second paragraph for this additional reason.

qsg

TROP PRUNER & HU, PC
1616 S. VOSS ROAD, SUITE 750
HOUSTON TX 77057-2631
25