Ex Parte Law et al

Board of Patent Appeals and Interferences

Jun 30, 2010

10824243 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HO KEE LAW, SHENG DONG, AMAL PRABHU,
and TOSHIKI KIKUCHI
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Appeal 2009-007010
Application 10/824,2431
Technology Center 2600
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Decided: July 1, 2010
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Before ROBERT E. NAPPI, MARC S. HOFF,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is SONY Corporation.
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Application 10/824,243

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 10-16, 18-23, 25, and 26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ invention relates to an apparatus for interfacing with a
user that includes a joystick and a joy pad, wherein the joystick is positioned
in close proximity to the joy pad such that a user can depress both the
joystick and the joy pad simultaneously with a single digit. The joystick
includes a circular top having a radius that extends almost to the beginning
of the joy pad (Abstract).
Claim 10 is exemplary:
10. An apparatus for interfacing with a user comprising:
a first manipulandum to provide a first type of input from the user to a
computer program,
wherein the first manipulandum comprises a joystick and wherein said
joystick includes a circular top; and
a second manipulandum disposed in close proximity to the first
manipulandum to provide a second type of input from the user to the
computer program, wherein the second manipulandum comprises a joy pad,
wherein the joy pad includes one or more inputs, and the circular top
has a radius that extends almost to a beginning of the one or more inputs of
the joy pad, whereby a user can simultaneously move the joy stick and
depress one input of the joy pad with a single digit.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mak US 2004/0085289 A1 May 6, 2004
Motoki US 6,752,758 B2 Jun. 22, 2004
Fleck US 6,977,811 B1 Dec. 20, 2005
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Application 10/824,243

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Claims 10-16, 18-23, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mak in view of Motoki and Fleck.
Rather than repeat the Appellants’ arguments or the Examiner’s
positions, we make reference to the Appeal Brief (filed July 21, 2008), the
Reply Brief (filed October 21, 2008), and the Examiner’s Answer (mailed
August 21, 2008) for their respective details.

ISSUE
Appellants contend that since Motoki is directed to completely
nonanalogous art of an endoscope drive device, there is no motivation to
combine the teachings of Motoki and Mak (App. Br. 4-5). Appellants argue
further that the Examiner has used impermissible hindsight reasoning since
the Examiner’s recited motivation to combine relies solely upon the
Appellants’ very own teachings (App. Br. 5, 8). In addition, Appellants
contend that none of the references teaches a joy stick having a circular top
that extends in radius almost to a beginning of the one or more inputs of the
joy pad, whereby the user can move the joy stick and simultaneously depress
one input of the joy pad with a single digit (App. Br. 6-7). Specifically,
Appellants contend that Fleck recites a claim to “a same single fingertip to
actuate the mouse button OR one of the directional buttons” not both at the
same time (App. Br. 7). Finally, Appellants argue that the Examiner has
failed to establish a prima facie case since (i) there is no suggestion or
motivation to combine the alleged teachings of Mak, Motoki, and Fleck and
(ii) these references fail to teach or suggest all of the claim limitations (App.
Br. 8).
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Appellants’ contentions present us with the following issue:
Does the combination of references disclose a joystick having a
circular top disposed in close proximity to a joy pad, wherein the circular top
has a radius that extends almost to a beginning of one or more inputs of the
joy pad, whereby a user can simultaneously move the joystick and depress
one input of the joy pad with a single digit?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Mak
1. Mak discloses a hand-held device having a joystick 310 having
a circular top surrounded by directional keys 306a-306b and 308a-308b,
wherein navigation is achieved by depressing “directional keys 306a-306b
and 308a-308b, or the joystick 310, or both.” “[T]he joystick 310 can be
used in lieu of, or in addition to the directional key commands.” (Fig. 3, ¶
[0038]).
Motoki
2. Motoki discloses an operational remote controller for an
endoscope apparatus that integrates a joystick for controlling the bending
operation of the bending portion (col. 6, ll. 10-20). The joystick may
provide either an analog signal or a digital signal (col. 18, l. 64-col. 19, l.
12). The bending lever of the joystick includes various circular arrangements
(Figs. 19A-D).
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Fleck
3. Fleck discloses a mouse assembly including a mouse button and
a plurality of directional buttons that at least partially surround the mouse
button. The directional buttons are arranged in close proximity to the mouse
button “to permit a same single fingertip to actuate at least one of the mouse
button and one of the directional buttons.” (Fig. 3; col. 2, ll. 5-12).
4. Fleck discloses that the user can easily navigate through a user
interface on the display screen of a portable computer using a single
fingertip (such as a thumb). The user need only move his thumb slightly in
one direction or another, pressing the appropriate directional buttons and/or
the mouse button without repositioning his fingertip (col. 3, ll. 10-25; col. 5,
ll. 1-25, 35-49). In one embodiment, the buttons may be pressure sensitive
such that the “users may tend to press the mouse button 300 and/or
directional buttons 302-308 harder when they wish to speed up cursor
movement” (col. 6, ll. 1-4).
5. Fleck discloses a claim to a mouse assembly wherein “the
directional buttons being arranged in close proximity to the mouse button to
permit a same single fingertip to actuate the mouse button or one of the
directional buttons” (col. 8, ll. 61-66).
PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.
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“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. References are selected as being
reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006).

ANALYSIS
Claims 10-16, 18-23, 25, and 26
We select claim 10 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 10 recites the joy pad disposed in close
proximity to the joystick, “wherein the joy pad includes one or more inputs,
and the circular top has a radius that extends almost to a beginning of one or
more inputs of the joy pad, whereby a user can simultaneously move the joy
stick and depress one input of the joy pad with a single digit.”2
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 10. Mak and Motoki relate generally to a
joystick disposed in close proximity to directional buttons, wherein the
analog joystick includes a circular top (FF 1-2, emphasis added).
Appellants’ additional argument that Motoki is directed to non-analogous art
wherein no motivation to combine these references exist is without merit for
two reasons (App. Br. 4, 8). First, we do not agree that Mak and Motoki are

2 Independent claims 12 and 18 recite similar claim limitations.

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nonanalogous, because one skilled in the art would find that the joystick
having a circular top that is disclosed in Motoki is reasonably pertinent to
the problem solved by Appellants’ invention. See In re Kahn, supra.
Second, although Motoki was cited by the Examiner to disclose an analog
joystick having a circular top (Ans. 6 and 13; FF 2 (emphasis added)), Mak
discloses a joystick having a circular top as well (FF 1).
Further, Fleck was cited by the Examiner to show a first
manipulandum disposed in close proximity to a second manipulandum such
that a user can actuate both manipulandum simultaneously using one finger
(Ans. 7; FF 3-5 (emphasis added)). We agree with the Examiner’s findings.
We conclude that improving Mak (and Motoki) by adding Fleck’s
feature of being able to actuate both the joystick and the joy pad with one
finger or digit simultaneously is a predictable result of combining these prior
art elements according to their established functions. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416, 417 (2007).
Accordingly, for the reasons stated above, we sustain the Examiner’s
rejection of independent claims 10, 12, and 18 and that of dependent claims
11, 13-16, 19-23, 25, and 26 which are grouped with claims independent
claims 10, 12, and 18.

CONCLUSION
The combined references disclose a joystick having a circular top
disposed in close proximity to a joy pad, wherein the circular top has a
radius that extends almost to a beginning of one or more inputs of the joy
pad, whereby a user can simultaneously move the joystick and depress one
input of the joy pad with a single digit.
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ORDER
The Examiner’s rejection of claims 10-16, 18-23, 25, and 26 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

ELD

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