Ex Parte Koncelik

Board of Patent Appeals and Interferences

Aug 26, 2008

10170094 (B.P.A.I. Aug. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LAWRENCE J. KONCELIK JR.
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Appeal 2008 -1029
Application 10/170,094
Technology Center 2100
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Decided: August 26, 2008
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Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

Appeal 2008-1029
Application 10/170,094

THE INVENTION
The disclosed invention relates to a method and apparatus concerning
devices for a computer mouse. (See Spec. 1).
Independent claim 1 is illustrative:
1. An apparatus comprising:

a computer mouse having a cursor location switch which when
activated by a user of the computer mouse causes a cursor on a
computer screen to be placed at a predetermined position on the
computer screen:

wherein the cursor is placed at the predetermined position
regardless of whether the computer mouse is moved; and

wherein the cursor is placed at the predetermined position
regardless of where the cursor was located prior to being placed at the
predetermined position.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Narisawa JP 08152972 Jun. 11, 1996
Yamada US 5,635,954 Jun. 3, 1997
(filed Jul. 19, 1991)
Kim US 5,910,798 Jun, 8, 1999
(filed Nov. 25, 1997)
Brooks US 6,867,790 B1 Mar. 15, 2005
(filed Aug. 9, 1996)

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Application 10/170,094

THE REJECTIONS
1. Claims 1, 3, 4, 6, and 9-10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yamada in view of Narisawa.

2. Claims 2 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamada, in view of Narisawa and Brooks.

3. Claims 7-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamada, in view of Narisawa and Kim.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Brief to show error in the
proffered prima facie case.
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Application 10/170,094

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Yamada
1. Yamada teaches a mouse cursor control system in which a display
screen is divided into a plurality of split screens. (Abst.).
2. Yamada teaches a mouse that is equipped with a switch which
moves a cursor among the plurality of split screens. (Id.).
3. Yamada teaches that the cursor is moved to a predetermined
position in the split screen if the mouse is moved from the first
position to a second position when the switch is released (Id.).

Narisawa
4. Narisawa is directed to a Dialogue Output Device which
automatically moves a mouse cursor to the position of the fixed
value button of dialogue to be outputted, regardless of the position
of the mouse cursor displayed at that time. (Abst.)

Brooks
5. Brooks is directed to conditional restraint of pointer movement on
a user interface display. (Abst.)
6. Brooks teaches isolation of the exit box of a predefined screen title
bar, whereas access to the exit box is limited to a pointer entry
window from below the exit box. (Col. 3, ll. 35-39).
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Application 10/170,094

7. Brooks teaches isolating the X button in order to prevent
inadvertent access to the adjacent buttons on the title bar. (Id. at ll.
35-37; see also col. 1, ll. 66-67).

Kim
8. Kim teaches fine movement buttons 103b-e, which are distinct
from the left and right mouse buttons 103a. (Fig. 2).

ANALYSIS
We decide the question of whether Appellant has shown the Examiner
erred in holding that the cited references render obvious the claimed subject
matter. After reviewing the record before us, we address the arguments
presented in the Brief only to the extent that Appellants’ arguments are
directed to claimed subject matter. Patentability is based upon the claims.
“It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec.
Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).
After reviewing the record before us, it is our view that Appellant has
not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-10, as
discussed infra.
Combinability under 35 U.S.C. § 103
Appellant contends that there is no suggestion to combine Yamada
and Narisawa. (Br. 6). More specifically, Appellant contends that Yamada
teaches away from moving the cursor to a predetermined position regardless
of whether the computer mouse is moved. (Id.). We disagree for the reasons
discussed below.
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Application 10/170,094

After considering the evidence before us, it is our view that
Appellant’s argument does not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is 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 in the present case.
We do not agree with Appellant’s assertion that the mere fact that
Yamada teaches using the mouse to predetermine where the cursor is to be
moved, teaches away from automatically moving the cursor regardless of the
movement of the mouse, as suggested by Narisawa. Yamada teaches that
once the switch is released, the cursor moves among the plurality of split
screens, depending on the direction of the mouse movement. (See col. 4, ll.
44-50; Fig 6A). The second cursor position (among the split screens) is not
marked by the mouse. Thus, we find Yamada suggests that there is some
automatic movement of the cursor that is independent of the mouse
movement. Therefore, based on the record before us, we conclude that the
Examiner has provided a sufficient motivation that would have reasonably
led an artisan to combine Yamada and Narisawa at the time of the invention
(see Ans. 4).
Appellant further contends that there is no suggestion to combine
Yamada, Narisawa and Brooks. (Br. 9). Likewise, Appellant contends that
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Application 10/170,094

there is no suggestion to combine Yamada, Narisawa and Kim. (Id.).
However, Appellant does not provide a basis for either of these assertions in
the Brief (Br. 9-10). Thus, we find that Appellant’s arguments are merely
conclusory and do not meet the burden of showing error in the Examiner’s
prima facie case of obviousness.

Elements under 35 U.S.C. § 103
Claims 1, 3, 4, 6, 9, and 10
We consider the Examiner’s rejection of claims 1, 3, 4, 6, 9, and 10 as
being unpatentable over Yamada in view of Narisawa. Since Appellant’s
arguments have treated these claims as a single group which stand or fall
together, we select independent claim 1 as the representative claim for this
rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that the cited references fail to teach a cursor
location switch which moves the cursor to a predetermined location
regardless of the prior position, and regardless of computer mouse
movement. (Br. 7). We disagree for the reasons discussed infra.
As noted above, we find that Yamada teaches a mouse switch, which
when activated, moves a cursor from a first position, to another predefined
position on the computer screen. (FF 1-3). Narisawa teaches that moving a
cursor regardless of the movement of the mouse is known in the art. (FF 4).
We further agree with the Examiner’s determination that according to
Narisawa, “since the mouse cursor is moved automatically to a position of
the fixed value button, the cursor movement must not depend entirely on
whether the mouse is moved.” (Ans. 12). We note that this finding by the
Examiner was not rebutted by Appellant.
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Therefore, based on the record before us, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s prima facie case of
obviousness. Accordingly, we sustain the Examiner’s rejection of
representative claim 1 (and claims 3, 4, 6, 9 and 10 which fall therewith) as
being unpatentable over Yamada and Narisawa.

Claims 2 and 5
We consider next the Examiner’s rejection of claims 2 and 5 as being
unpatentable over Yamada, in view of Narisawa and Brooks. We note that
each of claims 2 and 5 recite the limitations of “wherein the predetermined
position on the computer screen corresponds to an exit field in a computer
software application program.”
Appellant contends that these limitations are not taught by the cited
combination of references (Br. 8). More specifically, Appellant contends
that Brooks merely teaches preventing access to an exit box X of a title bar
and does not disclose placing a cursor on an exit box X in response to
activation of the cursor location switch, regardless of the prior position and
movement of the computer mouse. (Id.). We disagree.
As discussed above, we find that Brooks teaches isolating the exit box
X, by providing one direction of access to the button. (See FF 6). Further,
Brooks teaches isolating the X button in order to prevent inadvertent access
to the adjacent buttons on the title bar. (FF 7). Thus, according to the
teachings of Brooks, the X button is being specifically targeted. In light of
the aforementioned discussion, we agree with the Examiner’s reliance on
Brooks to suggest that the predetermined position can correspond to an exit
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field in a computer software application program. (Ans. 14). Thus, based
on the record before us, we conclude that Appellant has not shown error in
the Examiner’s prima facie case of obviousness. Accordingly, we sustain
the Examiner’s rejection of claims 2 and 5 as being unpatentable over
Yamada, in view of Narisawa and Brooks.

Claims 7 and 8
We consider next the Examiner’s rejection of claims 7 and 8 as being
unpatentable over Yamada, in view of Narisawa and Kim. Since
Appellant’s arguments have treated these claims as a single group which
stand or fall together, we select dependent claim 7 as the representative
claim for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that “Kim does not disclose a cursor location
switch on a computer mouse which places the cursor at a predetermined
position regardless of the cursor’s prior position and regardless of the
movement of the computer mouse.” (Br. 14).
We note that these limitations, as argued by Appellant, are actually
recited in claim 1. In response, we have fully addressed the Examiner’s
rejection of claim 1 supra. The Examiner has merely looked to the tertiary
Kim reference for the teaching of a switch that is distinct from the left and
right mouse buttons (i.e., left click device and right click device, as claimed).
As discussed above, Kim teaches fine movement buttons 103b-e, which are
distinct from the left and right mouse buttons 103a. (FF 8). The Examiner’s
rejection is based upon the combination of references.
As noted by the Examiner, one cannot show nonobviousness by
attacking references individually where the rejections are based on
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combinations of references. See In re Keller, 642, F.2d 413, 425 (CCPA
1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Therefore, we conclude that Appellant has not shown error in the
Examiner’s prima facie case of obviousness. Accordingly, we sustain the
Examiner’s rejection of representative claim 7 (and claim 8 that falls
therewith) as being unpatentable over Yamada in view of Narisawa and
Kim.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown the Examiner erred in rejecting claims 1-10 under
35 U.S.C. § 103(a) for obviousness.

DECISION
The decision of the Examiner rejecting claims 1-10 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

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