Ex Parte Morris et al

Patent Trial and Appeal Board

Jun 23, 2015

11750611 (P.T.A.B. Jun. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/750,611 05/18/2007 Robert P. Morris I230C/US 1395
49277 7590 06/23/2015
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
MOORAD, WASEEM
ART UNIT PAPER NUMBER
2624
MAIL DATE DELIVERY MODE
06/23/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT P. MORRIS and STEPHEN G. SULLIVAN
____________

Appeal 2013-003815
Application 11/750,611
Technology Center 2600
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and DAVID M.
KOHUT, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention is a portable electronic imaging device, such as
a digital camera or cell phone, that implements navigation and selection
functions using a multipurpose navigation key. See generally Abstract;
Spec. ¶ 2. Claim 1 is illustrative:
1. A portable electronic imaging device, comprising:
a display screen for displaying objects including at least
one of digital still images, video clips, menu items, and icons;
and
a navigation controller comprising navigation keys for
allowing a user to navigate between the displayed objects by
pressing a portion of the navigation controller corresponding to
a navigation key last pressed to navigate between the displayed
objects, wherein the device is configured to allow the user to
select a currently displayed object without moving a finger
from the portion of the navigation controller corresponding to
the navigation key last pressed to navigate between the
displayed objects, thereby implementing navigation and select
functions on a single portion of the controller.

THE REJECTIONS
The Examiner rejected claims 1, 7, 8, 11–13, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Siedlikowski (US 6,741,232 B1;
May 25, 2004). Ans. 3–6.1
The Examiner rejected claims 2–6, 9, 10, 14–18, 21, and 22 under
35 U.S.C. § 103(a) as unpatentable over Siedlikowski and Walls (US
5,969,708; Oct. 19, 1999). Ans. 6–11.

1 Throughout this opinion, we refer to the Appeal Brief filed June 27, 2012
(“Br.”) and the Examiner’s Answer mailed October 25, 2012 (“Ans.”).
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THE OBVIOUSNESS REJECTION OVER SIEDLIKOWSKI
The Examiner finds that Siedlikowski’s portable electronic imaging
device includes a navigation controller with a “navigation key” (thumbwheel
140) allowing a user to (1) navigate between displayed objects by pressing a
portion of the controller corresponding to a navigation key last pressed,
namely by applying pressure to the wheel to scroll and navigate through
menus, and (2) select an item by depressing the wheel. Ans. 3–4, 12.
Although the Examiner acknowledges that Siedlikowski lacks multiple
thumbwheel-based navigation keys, the Examiner nonetheless concludes
that providing two thumbwheels in Siedlikowski to scroll vertically and
horizontally via a dedicated thumbwheel would have been an obvious
alternative design choice. Ans. 4, 13.
Appellants argue that Siedlikowski’s “navigation keys” do not
navigate and select as claimed because Siedlikowski’s navigation buttons
150 do not select: rather, the thumbwheel is used for that purpose. Br. 8–9.
According to Appellants, rotating Siedlikowski’s thumbwheel to navigate
between displayed objects differs from pressing a navigation key to achieve
that end. Br. 9–10. Appellants add that not only would adding a second
thumbwheel to Siedlikowski as the Examiner proposes render that system
unsuitable for its intended purpose of more compact, intelligent, and
efficient data presentation, but the Examiner used Official Notice improperly
in concluding that adding a thumbwheel to Siedlikowski would have been
obvious. Br. 9–11.

ISSUES
1. Under § 103, has the Examiner erred by finding that Siedlikowski
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would have taught or suggested a navigation controller comprising
navigation keys for allowing a user to (1) navigate between displayed
objects by pressing a portion of the controller corresponding to a navigation
key last pressed, and (2) select a currently-displayed object without moving
a finger from that portion, thereby implementing navigation and select
functions on a single portion of the controller as recited in claim 1?
2. Would adding a second thumbwheel to Siedlikowski as the
Examiner proposes render that system unsuitable for its intended purpose?

ANALYSIS
We begin by noting, as does the Examiner, that the Examiner maps
Siedlikowski’s thumbwheel 140—not the navigation buttons 150—to one of
the recited “navigation keys.” Ans. 3, 12. Nor is it disputed that
Siedlikowski’s thumbwheel can be used to (1) navigate between displayed
objects by rotating the wheel, and (2) select information by depressing the
wheel. See Br. 9–10; Ans. 12 (noting these functions).
The question, then, is whether this thumbwheel-based “navigation
key” can allow a user to navigate between displayed objects by pressing part
of the navigation controller corresponding to the last-pressed navigation key,
namely the thumbwheel. Although the user rotates the thumbwheel to scroll
or navigate between displayed objects, Appellants do not persuasively rebut
the Examiner’s position that the user must nevertheless apply at least some
pressure to the wheel to achieve this rotation, albeit less than the pressure
required to depress the wheel for selection. See Final Act. 4 (noting that
pressure is applied to the wheel to scroll and navigate through
Siedlikowski’s menus). Appellants’ arguments regarding pressing
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navigation buttons 150 to navigate in Siedlikowski (Br. 8–9) are, therefore,
inapposite to the Examiner’s position that is not based on pressing these
buttons to navigate, but rather pressing—but not depressing—the
thumbwheel to rotate it. Appellants’ contention, then, that rotating a
thumbwheel is not the same as pressing a navigation key to navigate
between displayed objects (Br. 9) is unavailing.
Nor are we persuaded that adding a second thumbwheel or
“navigation key” to Siedlikowski as the Examiner proposes would render
that system unsuitable for its intended purpose of more compact, intelligent,
and efficient data presentation as Appellants contend. Br. 9. Notably, there
is no evidence on this record that adding a second thumbwheel would
increase the overall footprint of Siedlikowski’s data-processing device
housing 110 even assuming, without deciding, that adding a second
thumbwheel requires more space between thumbwheels to prevent
simultaneous depression as Appellants contend. See id. In any event, any
disadvantage associated with such a placement may very well be offset by
the advantages noted by the Examiner of having a dedicated thumbwheel for
respective horizontal and vertical scrolling. Ans. 13. Therefore, weighing
the relative advantages and disadvantages of the Examiner’s proposed
modification amounts to an engineering trade-off—technical considerations
well within the level of ordinarily skilled artisans.
Lastly, as the Examiner indicates (Ans. 13), Appellants’ contention
that the Examiner’s using Official Notice for the first time in the final
rejection was improper is a petitionable—not appealable—matter and is,
therefore, not before us. See MPEP § 1201 (“The Board will not ordinarily
hear a question that should be decided by the Director on petition . . . .”).
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 7, 8, 11–13, 19, and 20 not argued separately with
particularity.

THE REJECTION OVER SIEDLIKOWSKI AND WALLS
Claims 2, 3, 4, 9, 10, 14–16, 21, and 22
We also sustain the Examiner’s rejection of claim 3 reciting, in
pertinent part, that the device is configured to interpret a current key press as
a navigation event if the time between previous presses of the same portion
of the navigation controller corresponding to the current key and the current
key press is greater than a predetermined double-press time.
Despite Appellants’ arguments to the contrary (Br. 11–12), we see no
error in the Examiner’s reliance on Walls’ query-selection functionality for
at least suggesting the recited feature, particularly when considered in light
of Siedlikowski. See Ans. 7 (citing Walls, col. 5, ll. 39–52). In Walls’
query-selection mode, after the user presses and holds down the mouse
button for a delay period longer than a double click, the user then moves a
cursor proximate various entities in a workspace to receive reports for those
temporarily-selected entities. Walls, col. 4, ll. 37–52; col. 5, ll. 45–50.
Nothing in the claim precludes enabling these cursor movement-based events
by pressing the mouse button for a predetermined time period as being
considered an interpreted “navigation event.”2 Providing this functionality
to enhance Siedlikowski’s navigation controller as the Examiner proposes

2 Appellants’ contention that “Walls does not disclose or suggest a fast
scrolling event” in the first sentence on page 12 of the Brief is not
commensurate with claims 3 and 15 which do not recite a fast-scrolling
event. Rather, claims 5 and 17 recite this feature.
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would not change Siedlikowski’s principle of operation of scrolling and
selecting as Appellants seem to suggest (see Br. 11), but would rather
enhance that capability with additional navigation-based functions. In short,
the Examiner’s proposed enhancement uses prior art elements predictably
according to their established functions—an obvious improvement. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 3, and claims 2, 4, 9, 10, 14–16, 21, and 22 not argued separately with
particularity.

Claims 5, 6, 17, and 18
We also sustain the Examiner’s rejection of claim 5 reciting, in
pertinent part, that the device is configured to interpret a current key press as
a fast-scrolling event if (1) the time between previous presses of the same
portion of the navigation controller corresponding to the current key and the
current key press is less than a predetermined double-press time, and (2) a
last predetermined plurality of presses of the navigation controller
correspond to a same portion of the navigation controller corresponding to
the current key.
The Examiner finds that Walls’ device interprets more than two
presses that are made in less than the time required for a double press “as a
single click event that was tapped really fast three times.” Ans. 9 (citing
Walls, col. 4, ll. 21–36). Based on this finding, the Examiner reasons that
when the wheel in Siedlikowski/Walls device is scrolled three times in a
time less than a predetermined double-press time, these actions are
interpreted as “a really fast scroll navigation event.” Ans. 9.
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Appellants do not squarely address—let alone persuasively rebut—
these findings. Appellants’ contentions regarding the alleged shortcomings
of Walls’ selection and report capability associated with “quick tap”
operation (Br. 12) do not persuasively rebut the Examiner’s position which
is not based solely on Walls, but rather the collective teachings of
Siedlikowski and Walls. Appellants’ contentions that Siedlikowski teaches
away from pressing the thumbwheel to navigate and interpreting such
actions as fast-scrolling events (id.) are likewise unavailing, for the
Examiner relies on Siedlikowski’s wheel-based scrolling—not key
pressing—for navigation. See Ans. 14.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 5, and claims 6, 17, and 18 not argued separately with particularity.

CONCLUSION
The Examiner did not err in rejecting claims 1–22 under § 103.

DECISION
The Examiner’s decision rejecting claims 1–22 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

ACP