Ex Parte Nagaoka

Board of Patent Appeals and Interferences

Aug 12, 2003

08924681 (B.P.A.I. Aug. 12, 2003)

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not written for publication and is not binding precedent of the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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TOSHIMASA NAGAOKA
__________
Appeal No. 2003-0037
Application 08/924,681
___________
ON BRIEF
___________
Before COHEN, MCQUADE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Toshimasa Nagaoka originally took this appeal from the final
rejection (Paper No. 9) of claims 1 through 14 and 16 through 22,
all of the claims pending in the application. Upon consideration
of the appellant’s main brief (Paper No. 18), the examiner issued
an Office action (Paper No. 19) reopening prosecution and
entering new superseding rejections of claims 1 through 14 and 16
through 22. Pursuant to 37 CFR § 1.193(b)(2)(ii), the appellant
then filed a supplemental brief (Paper No. 20) and requested that
the appeal be reinstated. Implicitly granting the request, the
Appeal No. 2003-0037
Application 09/924,681
1 The above noted informality in claim 1 is deserving of
correction upon return of the application to the technology
center.
2
examiner entered an answer (Paper No. 23), noted a reply brief
(Paper No. 24) filed by the appellant and forwarded the
application to this Board for review of the new rejections.
THE INVENTION
The invention relates to “an input pen for use in a pressure
sensitive handwriting input unit” (specification, page 1).
Representative claim 1 reads as follows:
1. An input pen for use in a pressure sensitive handwriting
input unit, comprising:
a pen cylinder having a front end and a read [sic, rear]1
end;
a front input member disposed on said front end of said pen
cylinder and having an input portion used for input operations,
said front input member being made of a synthetic resin; and
a rear input member disposed on said rear end of said pen
cylinder and having an input portion used for input operations,
said rear input member being made of an elastic material softer
than said synthetic resin.
THE PRIOR ART
The references relied on by the examiner to support the
rejections on appeal are:
Verrier et al. (Verrier) 5,475,401 Dec. 12, 1995
Takahashi et al. (Takahashi) 5,638,093 Jun. 10, 1997
Yoshimura 5,850,059 Dec. 15, 1998
Appeal No. 2003-0037
Application 09/924,681
3
THE REJECTIONS
Claims 1, 4 through 13, 16, 17 and 19 through 22 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Verrier in view of Takahashi.
Claims 2, 3, 14 and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Verrier in view of Takahashi
and Yoshimura.
Attention is directed to the appellant’s main, supplemental
and reply briefs (Paper Nos. 18, 20 and 24) and to the examiner’s
answer (Paper No. 23) for the respective positions of the
appellant and examiner regarding the merits of these rejections.
DISCUSSION
Verrier, the examiner’s primary reference, discloses a
stylus 20 for use with a digitizing display 22 in a pen-based
computer system. The stylus 20 comprises a writing end
contacting portion 38 and an erasing end contacting portion 38'
having similar constructions. As shown in Figures 2A and 2B,
each end contacting portion includes a longitudinally
displaceable tip 4, 4' for making mechanical contact with the
digitizing display, an antenna 29, 29' for picking up
electromagnetic positional signals from the digitizing display, a
pressure transducer 10, 10' for sensing the pressure with which
Appeal No. 2003-0037
Application 09/924,681
4
the tip contacts the display, a printed circuit board 11, 11', a
tetrafluoroethylene bushing 8, 8', and a tip-loading rubber
gasket 6, 6'.
Applying Verrier against independent claim 1 (see page 3 in
the answer), the examiner finds that the tips 4 and 4' on
Verrier’s stylus constitute front and rear input members, and
that while tip 4 meets the claim limitation requiring the front
input member to be made of a synthetic resin, tip 4' does not
meet the claim limitation requiring the rear input member to be
made of an elastic material softer than the synthetic resin. To
overcome this deficiency, the examiner looks to Takahashi.
Takahashi discloses a touch panel input device which
includes an input pen 13 and a deletion pen 12 for contacting the
panel and attenuating acoustic waves traveling therethrough. The
input pen has a writing tip thickness W1 and the deletion pen has
a writing tip thickness W2, wherein W1 is less than W2. When the
touch panel is contacted by one of these pens, it determines the
width of the writing tip, and hence the identity (input or
deletion) of the pen, and functions accordingly in an input mode
or a deletion mode. Of particular interest is Takahashi’s
teaching that “[o]ne of the pens having a greater thickness
Appeal No. 2003-0037
Application 09/924,681
5
[i.e., the deletion pen], can be replaced with an eraser having
an elastic tip” (column 7, lines 6 through 8).
In proposing to combine Verrier and Takahashi to reject
claim 1 under § 103(a), the examiner concludes that it would have
been obvious at the time the invention was made to a person
having ordinary skill in the art
to substitute an elastic material softer than the
synthetic resin as taught by Takahashi et al. to the
rear input member on the input device as taught by
Verrier because this would help the user to easily
distinguish between writing or erasing based on the
different materials on each tip of the pen [answer,
page 3].
Even if the Verrier reference is assumed to be analogous art
(the appellant argues that it is not), the examiner’s position
here is unsound for at least two reasons.
To begin with, Verrier does not provide any factual basis
for the examiner’s finding that the “front” tip or input member 4
is made of a synthetic resin as required by claim 1. The passage
at lines 1 through 19 of column 9 in the Verrier reference, which
the examiner relies on to support this finding, specifies the
materials from which the bushings 8, 8' and gaskets 6, 6' are
made, but makes no mention of the material from which the tips 4,
4' are made.
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Application 09/924,681
6
Furthermore, the fair teachings of Verrier and Takahashi do
not justify the selective combination thereof proposed by the
examiner. Considered collectively, these references are devoid
of any indication that a user might encounter difficulty
distinguishing between Verrier’s writing and erasing ends, or
that the proposed modification of Verrier in view of Takahashi
would solve this problem even if it did exist. Moreover, the
respective styluses or pens disclosed by Verrier and Takahashi
are quite disparate in nature, with Verrier’s pressure-sensitive
erasing end contacting portion 38' being far more complex than
Takahashi’s rather simple wave-attenuating eraser with an elastic
tip. The two constructions have little practical relevance to
one another, and the proposed modification of Verrier’s “rear”
tip 4' by making it of an elastic material softer than the
material of the “front” tip 4 seemingly would hinder accurate
operation of the pressure-sensitive erasing portion 38'. In this
light, it is evident that the only suggestion for combining
Verrier and Takahashi so as to arrive at the subject matter
recited in claim 1 stems from hindsight knowledge impermissibly
derived from the appellant’s disclosure.
Thus, the combined teachings of Verrier and Takahashi do not
warrant a conclusion that the differences between the subject
Appeal No. 2003-0037
Application 09/924,681
7
matter recited in independent claim 1 and the prior art are such
that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in
the art. Accordingly, we shall not sustain the standing 35
U.S.C. § 103(a) rejection of claim 1, and dependent claims 4
through 13, 16, 17 and 19 through 22, as being unpatentable over
Verrier in view of Takahashi.
As Yoshimura does not cure the foregoing shortcomings of
Verrier and Takahashi relative to the subject matter recited in
parent claim 1, we also shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of dependent claims 2, 3, 14 and 18 as being
unpatentable over Verrier in view of Takahashi and Yoshimura.
SUMMARY
The decision of the examiner to reject claims 1 through 14
and 16 through 22 is reversed.
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Application 09/924,681
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REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
Appeal No. 2003-0037
Application 09/924,681
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RICHARD P. BERG
LADAS & PARRY
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