Ex parte McPheters

Board of Patent Appeals and Interferences

Nov 14, 2000

08469770 (B.P.A.I. Nov. 14, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte R. DOUGLAS MCPHETERS
__________
Appeal No. 1998-0929
Application 08/469,770
___________
HEARD: October 11, 2000
___________
Before JERRY SMITH, FLEMING, and BLANKENSHIP, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 30-74, which
constitute all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for allowing an operator to control an electronic
device. More particularly, the invention generates a
Appeal No. 1998-0929
Application 08/469,770
2
holographic image of a conventional physical control panel for
the electronic device. The device is controlled by the
operator actuating a section of the holographic image in the
same manner as if the physical control panel had been
actuated.
Representative claim 30 is reproduced as follows:
30. A control arrangement for allowing an operator to
control an electronic device comprising:
an image generator for generating a holographic image of
a physical control panel of the electronic device;
an actuation detector for determining a section of the
holographic image which is selected by the operator; and
a signal generator for receiving the determinationof said
actuation detector and providing input signals to the
electronic device which correspond to input signals from said
physical control panel as a result of this determination.
The examiner relies on the following references:
Haugen 4,593,967 June 10,
1986
Sach et al. (Sach) 5,398,045 Mar. 14, 1995
(filed Aug. 24,
1990)
Ohkoshi et al. (Dainippon) 3-217925 Sep. 25,
1991
(Japanese)
Ward et al. (Ward) WO 92/09944 June 11,
1992
Appeal No. 1998-0929
Application 08/469,770
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Benton, “White-Light Transmission/Reflection Holographic
Imaging,” Applications Of Holography And Optical Data
Processing, Edited by Marom et al., 1977 by Pergamon Press,
pages 401-409.
The admitted prior art described in appellant’s specification.
The following rejections are before us on appeal:
1. Claims 30-34, 36, 38, 40-44, 46, 48, 50-52, 55, 57-
60, 63 and 65-74 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Dainippon in view of Ward
and the admitted prior art.
2. Claims 53 and 61 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Dainippon in
view of Ward and the admitted prior art, and further in view
of Benton.
3. Claims 35, 39, 45, 49, 54, 56, 62 and 64 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
teachings of Dainippon in view of Ward and the admitted prior
art, and further in view of Haugen.
4. Claims 37 and 47 stand rejected under 35 U.S.C. §
Appeal No. 1998-0929
Application 08/469,770
4
103 as being unpatentable over the teachings of Dainippon in
view of Ward and the admitted prior art, and further in view
of Sach.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 30-74. Accordingly, we affirm.
Appeal No. 1998-0929
Application 08/469,770
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In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
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Application 08/469,770
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presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only
those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
We consider first the rejection designated as 1.
above. The claims subject to this rejection stand or fall
together as a single group except that claims 36, 46, 58 and
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Application 08/469,770
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66 stand as one separate group, claims 38 and 48 stand as a
second separate group, claims 52 and 60 stand as a third
separate group, and claims 70-74 stand as a fourth separate
group [brief, pages 10-11]. We consider the rejection of
claim 30 as the representative claim for the large single
group.
With respect to independent claim 30, the examiner
cites Dainippon as a teaching of replacing a touch control
panel with a holographic image for inputting data into a
device. Ward is cited to teach the conventionality of
replacing a conventional electromechanical input device with a
touch panel. The examiner concludes that it would have been
obvious to replace the holographic image of Dainippon with a
holographic image of a keyboard because Ward suggests
replacing a keyboard with a touch panel and Dainippon teaches
replacing a touch panel with a holographic image [answer,
pages 4-5].
Appellant makes the following arguments: 1) appellant
argues that there is no way of knowing what is disclosed or
even contemplated in Dainippon without engaging in
Appeal No. 1998-0929
Application 08/469,770
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impermissible speculation, conjecture and hindsight; 2)
appellant argues that Dainippon has no teaching or suggestion
of controlling electronic devices from a holographic input
image; 3) appellant argues that Dainippon has no teaching as
to how or why a conventional control could or should be
replaced by a holographic display as claimed; and 4) appellant
argues that the applied prior art fails to teach or suggest
the actuation detector as claimed [brief, pages 16-25].
After a careful consideration of the record in this
case, we agree with the conclusion reached by the examiner.
Appellant’s arguments are not convincing. Dainippon is
clearly directed to the replacement of a touch panel input
with a holographic image input [translation, pages 2 and 3].
Dainippon also clearly teaches that the position of a user’s
finger within the holographic image is judged, and that this
information is inputted into a control device such as a
computer [id., pages 4 and 5]. Thus, Dainippon clearly
teaches the generation of some holographic image which is
“touched” by an operator, and the location of the touch is
sent to a computer as input data. The key question is whether
Appeal No. 1998-0929
Application 08/469,770
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it would have been obvious to the artisan for this holographic
image to have the appearance of a physical control panel.
Although Dainippon does not specifically identify the
appearance of the holgraphic image, it does state that the
image replaces a conventional touch panel and that the image
may have the appearance of a menu. We agree with the examiner
that these teachings would have suggested to the artisan that
the holographic image should have the appearance of a touch
panel input (menu) for a control device. As taught by Ward,
it was conventional for touch panel inputs to appear as
physical control panels for some devices. We note that
keyboards and touch panels were known as conventional input
devices for use with computers. Since the holographic image
of Dainippon generates input signals for a computer, we agree
with the examiner that it would have been obvious for this
image to take the form of a keyboard which was a known
physical control panel for inputting data into a computer.
Therefore, we sustain the rejection of claims 30-34, 40-44,
50, 51, 55, 57, 59, 63, 65 and 67-69 which have been grouped
together for purposes of this appeal.
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Application 08/469,770
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With respect to claims 36, 46, 58 and 66 which are
grouped together, appellant argues that the rejection does not
address the output interface of representative claim 36. The
personal computer 10 of Dainippon, however, clearly has an
output interface including a video display device as broadly
recited in claim 36 [note Figure 4]. Thus, we sustain the
rejection of claims 36, 46, 58 and 66.
With respect to claims 38 and 48, appellant argues
that there is no mention of acoustic waves in the references.
We agree with the examiner, however, that these claims are met
by prior art teaching either acoustic waves or electromagnetic
waves, and that the Dainippon actuation detector clearly uses
electromagnetic waves (light) for this purpose.
With respect to claims 52 and 60, appellant argues
that claim 52 recites not merely a transmission hologram but a
combined innovative free-floating holographic control
arrangement not shown in the applied references [brief, page
36]. Although there is nothing in claim 52 which limits the
image to a free-floating image, we agree with the examiner
that the holographic image of Dainippon is clearly a free-
Appeal No. 1998-0929
Application 08/469,770
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floating image as it exists at a certain distance from the
hologram.
With respect to claims 70-74, appellant argues that
the numerous applications of these claims are not disclosed by
the prior art. As noted above, however, the holographic image
input of Dainippon is sent to a personal computer for control
of the personal computer. Since a personal computer is one of
the devices recited in these claims, Dainippon clearly meets
the invention as broadly recited in these claims.
In summary, we have sustained the examiner’s rejection
of claims 30-34, 36, 38, 40-44, 46, 48, 50-52, 55, 57-60, 63
and 65-74 based on the teachings of Dainippon, Ward and the
admitted prior art.
With respect to the rejection of claims 53 and 61
using the additional teachings of Benton, and the rejection of
claims 35, 39, 45, 49, 54, 56, 62 and 64 using the additional
teachings of Haugen, appellant argues that neither Benton nor
Haugen overcomes the deficiencies of the basic combination
previously considered [brief, pages 44 and 45]. Since we have
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Application 08/469,770
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determined above that there is no deficiency in the basic
combination of references, we also sustain the rejection of
these claims.
With respect to the rejection of claims 37 and 47
using the additional teachings of Sach, appellant argues that
there is no teaching in Sach of generating a holographic image
of another physical control panel of a different electronic
device as claimed therein [brief, pages 45-47]. The examiner
responds that appellant’s arguments are not commensurate in
scope with the claimed invention [answer, page 17].
Claim 37 recites that “said image generator may
generate a holographic image of another physical control panel
of a different electronic device.” Claim 47 is similar. Sach
teaches the use of a single man/machine interface for
controlling a plurality of different subsystems. More
specifically, Sach teaches that touching different points on a
touch panel display can lead to different display panels which
permit the operator to control different subsystems. The
examiner’s position is that it would have been obvious to the
artisan to change the holographic display in Dainippon (which
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Application 08/469,770
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represents a touch panel) with a different holographic display
to control a different device as suggested by Sach.
We agree with the examiner’s conclusion. Claims 37
and 47 simply recite that the image generator may generate the
image for a different device to be controlled. Sach clearly
teaches that it was known in the use of touch panels to change
the panel image to permit the control of different devices
(subsystems). Since the holographic image of Dainippon is
intended to replace a conventional touch panel, the artisan
would have found it obvious to simulate all conventional type
of inputs permitted by touch panels. Since Sach teaches that
one conventional form of touch panel input is to display a
different image based on a given input, we agree with the
examiner that it would have been obvious for the artisan to
have the holographic image of Dainippon do the
same thing. Thus, the generation of different images for the
control of different devices is suggested by the collective
teachings of the applied prior art.
In conclusion, we have sustained the examiner’s prior
Appeal No. 1998-0929
Application 08/469,770
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art rejection of each of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 30-74 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS:pgg
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