Ex Parte Nelson et al

Board of Patent Appeals and Interferences

Jul 29, 2004

09071488 (B.P.A.I. Jul. 29, 2004)

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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today was not written for publication and is not
binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SCOTT A. NELSON, JAMES C. LEE
and MICHAEL A. HELGESON

Appeal No. 2002-1995
Application No. 09/071,488

ON BRIEF

Before KRASS, FLEMING and RUGGIERO, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-9, 14-18, and 21-24. Claim 19 stands withdrawn and
forms no part of this appeal.
The invention is directed to a handheld apparatus that is
part of a computer processing unit, able to receive information
from the processing unit. In particular, the device incorporates
Appeal No. 2002-1995
Application No. 09/071,488
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navigational input tools that comprise a mouse including a force
actuated pointer integrated within the housing of the device such
that a user may grasp the housing while simultaneously operating
the navigational input tools.
Representative independent claim 1 is reproduced as follows:
1. A computer apparatus comprising:
a computer processing unit, the computer processing unit
including a processor device for operating upon data and
providing data for display; and
a handheld input/output display unit, the display unit
comprising:
a housing sized to be grasped by a user’s single hand,
wherein the housing includes an upper surface, a lower surface,
and an eyepiece,
a computer display located within the housing at a position
to allow the user to view the computer display through the
eyepiece,
a display driver for presenting data from the processing
unit on the computer display, and
navigational input tools for navigating in computer program
applications integrated with the computer display in the housing
and operatively connected to provide user input to the processing
unit, wherein the navigational input tools comprise a mouse
including a force actuated pointer integrated within the housing
for operation at the upper surface thereof, and further wherein
the navigational input tools including the mouse are positioned
for operation by one or more fingers of the user’s single hand
such that the user’s single hand can simultaneously grasp the
housing and operate the navigational input tools.
Appeal No. 2002-1995
Application No. 09/071,488
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The examiner relies on the following references:
Matthews 5,432,510 Jul. 11, 1995
Michel et al. (Michel) 5,579,165 Nov. 26, 1996
Durrett 5,964,830 Oct. 12, 1999
(filed Aug. 20, 1996)
Claims 1-9, 14-18, and 21-24 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner cites Michel
with regard to claims 1-9, 15-18, and 21-23, adding Durrett with
regard to claims 2, 14, 16, and 24. The examiner further offers
Michel and Matthews with regard to claims 7-9, and 21-23.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
At the outset, we note that the invention of the instant
application is similar to the invention which was the subject
matter of our earlier decision in Application Serial No.
09/071,489 (Appeal No. 2003-0167). That decision was rendered on
Nov. 26, 2003.
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
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Application No. 09/071,488
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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 much stem from some teachings,
suggestions or implications 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 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, 1040, 228 USPQ
685, 687 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
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Application No. 09/071,488
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223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 146-147 (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 and are deemed
to be waived [see 37 CFR 1.192 (a)].
We have reviewed the evidence in the case, including the
arguments of appellants and the examiner and we conclude that,
unlike our decision in Application Serial No. 09/071,489, the
examiner in the instant case has not established a prima facie
case of obviousness with regard to the instant claimed subject
matter.
Similar to the issues in the previous case, appellants and
the examiner argue the “single hand” limitation.
While appellants argue that the device in Michel is not
operable with a single hand wherein a user simultaneously grasps
and operates a user input interface, the examiner urges that
Michel shows a user grasping the housing of the device in his
right hand in Figure 8 (see answer-page 3). While Figure 8 of
Michel appears to show a user employing both hands, this would
also entail the use of a single hand.
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It is appellants’ position that the examiner is arguing that
there is a missing element in Michel “(a handheld apparatus that
can be grasped by a single hand of a user, that has navigational
input tools integrated within the housing with the computer
display, and that has navigational input tools which are
positioned for operation by one or more fingers of the user’s
single hand such that the user’s single hand can simultaneously
grasp the housing and operate the navigational input tools to
navigate in computer program applications)” (principal brief-page
6) but since the reference does not prohibit this missing
element, it essentially shows the missing element. Appellants
state that “To assert that a reference shows a missing element by
indicating that the reference does not prohibit this element from
being carried out goes directly against the reason for having the
required teaching or suggestion requirement in the first place”
(principal brief-page 6).
We disagree. Figure 8 of Michel may show two hands holding
the device but artisans would have understood that one hand may
hold the device 32 of Figure 5b and simultaneously operate the
buttons on one side of the device, much like using two hands on a
steering wheel to steer a vehicle even though one hand on the
steering wheel is sufficient.
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Application No. 09/071,488
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The examiner is not suggesting that the lack of teaching of
the use of a single hand to hold the device in Michel actually
provides such a teaching. Rather, the examiner is urging, and we
agree, that the artisan viewing the teachings of Michel would
have found it obvious to hold device 32 in one hand and
simultaneously operate buttons on one side of the device with
that single hand.
Appellants argue that Michel is silent as to whether an
individual can grasp and navigate the prior art device with a
single hand (principal brief-page 7), but it is our opinion that
Michel clearly implies, from the drawing in Figure 5b, that the
device may be operated with one hand if only the buttons on one
side of device 32 are to be operated.
Appellants allege that Michel actually “teaches away” from
the claimed invention (principal brief-page 7). We disagree.
Michel discloses nowhere that only two hands must be used and
that a single hand could not hold and operate the device. If the
reference did have such a disclosure, this might be construed as
a teaching away. However, Michel contains no such disclosure.
Appellants argue that operating the device of Michel with a
single hand would change the principle of operation of the device
(principal brief-page 7). We disagree. It is not understood how
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operating the device with a single hand would change any
operation of the buttons, especially the buttons on one side of
the device still being operated by the single hand. While
appellants indicate that a single hand grasping Michel’s device
could not simultaneously grasp the device and operate the buttons
to navigate in computer program applications, it appears to us
that a user can grasp the binocular device in Michel’s Figure 5b
with a single hand with fingers on the buttons on one side of the
device.
Thus, for the same reasons we enunciated in the prior
decision of November 26, 2003, in Application Serial No.
09/071,489 (Appeal No. 2003-0167), we are not persuaded by
appellants’ arguments regarding the “single hand” limitation.
However, we are persuaded by appellants’ argument, at page 8
et seq. of the principal brief, regarding the “mouse” limitation.
Each of the instant independent claims 1 and 15, and hence
each claim on appeal, requires that the navigational input tools
comprise a “mouse including a force actuated pointer” integrated
within the housing.
Clearly, Michel discloses no such mouse, but the examiner
asserts that Michel “inherently includes...the claimed
navigational tools...including the claimed mouse (a user input
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device comprising buttons 44 and 45, see fig. 5b), which includes
the claimed force actuated pointer (a movement cursor button 44,
col. 8, line 54)” (answer-page 3).
The examiner further explains that the disclosed mouse is
not like the well-known mouse which has a rotatable ball and
buttons and moves in contact with a working surface in order to
navigate computer program applications. Accordingly, the
examiner takes the position that “any user input interface, which
includes an equivalent pointer actuator and an equivalent single-
button actuator, for navigating in computer program applications,
is considered to be a mouse of this pending application” (answer-
page 10).
In our view, the examiner takes an unreasonable position
regarding the claimed “mouse” in view of the instant disclosure.
It is clear from page 14, lines 14-16, and page 16, lines 19-21,
of the instant specification, that, contrary to the examiner’s
position, the “mouse” envisioned for use in the instant invention
is, indeed, a “well-known” mouse, i.e., it has the “look-and-
feel” similar to the conventional graphical user interfaces. The
instant specification even gives a specific embodiment, with the
citation of a Hula Point Hall effect mouse pointing device.
Moreover, Figure 7 shows the mouse at element 59. With such
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evidence in the instant disclosure buttressing the meaning of the
claimed “mouse including a force actuated pointer,” it is simply
unreasonable for the examiner to take the position that “any user
input interface, which includes an equivalent pointer actuator
and an equivalent single-button actuator, for navigating in
computer program applications, is considered to be a mouse of
this pending application.”
Still further, the examiner asserted that Michel
“inherently” includes the claimed mouse. Inherency may not be
established by probabilities or possibilities. In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). Inherency
requires that a thing must, necessarily occur or exist. There is
no reason that a mouse must necessarily exist in Michel.
Accordingly, the examiner’s reliance on inherency is misplaced.
Since Michel clearly fails to disclose or suggest the
claimed mouse including a force actuated pointer, and neither
Durrett nor Matthews is of any help in this regard, we will not
sustain the rejection of any of claims 1-9, 14-18, and 21-24
under 35 U.S.C. § 103.
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The examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
EK/RWK
Appeal No. 2002-1995
Application No. 09/071,488
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