Ex Parte Nurmi

Patent Trial and Appeal Board

Jan 22, 2013

11191152 (P.T.A.B. Jan. 22, 2013)

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.
11/191,152 07/27/2005 Mikko Nurmi 846A.0040.U1 (US) 3548
10948 7590 01/22/2013
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
SHAPIRO, LEONID
ART UNIT PAPER NUMBER
2699
MAIL DATE DELIVERY MODE
01/22/2013 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 MIKKO NURMI
_____________

Appeal 2010-009130
Application 11/191,152
Technology Center 2600
______________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009130
Application 11/191,152

STATEMENT OF CASE
Introduction
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Invention
The invention is a method, device, and computer program product for
controlling software functions in a portable electronic device using a control
wheel having selection areas associated with individual software functions
(Spec. ¶¶ [0001], [0004]-[0009], and [0015]; Abs.; Fig. 2A and Fig. 2B).
More specifically, the disclosed and claimed invention pertains to a method
of controlling software functions of an electronic device using a control
wheel that has a turning function, includes selection areas that are associated
with software functions that are performed “on the basis of from which
given selection area the turning function is detected to start” (claim 1).
Claim 1 is representative of the invention and is reproduced below
with (emphasis added):
1. A method of controlling software functions of an electronic
device, the method comprising:

determining more than one selection area on a control
wheel;

associating the selection areas with given software
functions;

detecting from which selection area the turning function
starts when a turning function of the control wheel is detected;
and
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Application 11/294,821

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performing predetermined software functions on the
basis of from which given selection area the turning function is
detected to start.

Examiner’s Rejection
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Reed (US 7,254,785 B2, filed May 22, 2003) and Berg
(US Pat. App. Pub. No.: 2006/0155441 A1, filed Sept. 30, 2005). Ans. 3-4.
Examiner’s Findings and Conclusions
The Examiner admits that “Reed does not disclose selection areas on
the control wheel” (Ans. 3), and relies upon Berg as disclosing a control
wheel (the steering wheel 10 and/or the controller 28 shown in Figures 1 and
2 and described in paragraphs [0026] and [0028]) having selection areas
represented by buttons 38, 40, 42, and 44 (Ans. 3-5). The Examiner relies
upon Berg’s steering wheel 10 and controller 28, and not scroll wheel 34, as
teaching or suggesting the control wheel of claims 1-18 (Ans. 5). The
Examiner finds that “[b]oth Reed and Berg teach that a dial/wheel is used to
scroll through a selected category after a category is selected using push
buttons (414a-k in Reed and 38-44 in Berg) not located on the dial/wheel”
(Ans. 5).
Appellant’s Contentions
(1) Appellant contends (App. Br. 9-10; Reply Br. 3-5) that the
Examiner erred in rejecting independent claims 1, 6, 13, 15, and 17 under
§ 103(a) for numerous reasons, including:
(a) neither Reed nor Berg teach determining more than one
selection area on a control wheel, as recited in each of the independent
claims 1, 6, 13, 15, and 17 (App. Br. 9);
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Application 11/294,821

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(b) items 414a-k of Reed are toggle push buttons that are not
located on a control wheel (App. Br. 9);
(c) Berg’s selector buttons 38, 40, 42, and 44 are also not
located on a control wheel, because the wheel in Berg that acts like a control
wheel is scroll wheel 34 and the selector buttons are supported in a housing
30 that is adjacent the scroll wheel 34 as set forth in Berg’s paragraph
[0026] (App. Br. 9);
(d) Berg’s scroll wheel 34 has only one button, and thus fails to
disclose more than one selection area as claimed (App. Br. 9);
(e) Berg’s item 10 in Figure 1 described in paragraph [0023]
cannot be a control wheel as recited in the claims on appeal, and only Berg’s
scroll wheel 34 can correspond to the claimed control wheel because:
(i) controller 28 is Berg’s control wheel (i.e., that
causes software functions to be selected); and
(ii) Berg’s element 10 is a steering wheel of a vehicle
that turns the vehicle and not the software
functions (Reply Br. 3-4); and
(f) neither Reed nor Berg teach or suggest detecting a selection
area on a control wheel from which a turning function starts and performing
a predetermined software function on the basis of such a selection area, as
recited in independent claims 1, 6, 13, 15, and 17 (Reply Br. 5).
(2) Appellant contends (App. Br. 11) that the Examiner erred in
rejecting dependent claims 2, 7, 9, 14, and 18 under § 103(a) because:
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Application 11/294,821

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(a) Berg’s buttons are separate from the display 26 which is on
a dashboard; and
(b) none of Berg’s selector buttons indicate software functions
associated with a selection area of a control wheel (i.e., Berg’s scroll wheel
34).
(3) Appellant contends (App. Br. 12) that the Examiner erred in
rejecting dependent claims 4, 5, 11, and 12 under § 103(a) because:
(a) the portions of Berg cited by the Examiner fail to teach a
touch screen; and
(b) element 50 in Berg’s Figure 4 is just a highlighted portion
on the display 26 which is activated when a button on the controller 28 is hit,
as opposed to when a touch screen is touched.

ISSUE1
Based on Appellant’s arguments enumerated above, the principal and
dispositive issue presented on appeal is:
Did the Examiner err in rejecting claims 1-18 because the
combination of Reed and Berg fails to teach or suggest the control wheel
with a turning function and selections areas associated with given software
functions, as recited in representative claim 1, and as similarly recited in
independent claims 6, 13, 15, and 17?

1 We recognize that Appellant’s arguments present additional issues. Some
of the arguments presented by the additional issues are not persuasive;
nonetheless we were persuaded of error by the issue stated above and as
such we do not reach the additional issues as the issue stated above is
dispositive of the appeal.
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Application 11/294,821

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments in the Appeal Brief (App. Br. 9-13) and the Reply Brief (Reply
Br. 3-5) that the Examiner has erred. We agree with all of Appellant’s
specifically enumerated contentions above relating to the claims on appeal,
and highlight and address specific findings regarding Berg for emphasis as
follows.
Berg and the Recited “Control Wheel”
Claims 1, 6, 13, 15, and 17 each require a “control wheel” (see input
device 104 in Figure 2A) having “more than one selection area” and a
“turning function” (see description of the turning function at Spec. ¶ [0022])
for selecting/controlling a given software function to be performed when the
turning function of the control wheel is detected to start (see claims 1, 6, 13,
15, and 17). Berg, on the other hand, merely discloses a scroll wheel 34
with a turning function and only one selection area to select a software
function, a steering wheel 10 for steering a vehicle, and a controller 28
having category selector buttons 38, 40, 42, and 44 for selecting categories
of modes of operation (Berg, ¶ [0026]). Berg’s scroll wheel 34 that selects
the software functions using a turning function does not have more than one
selection area.
In view of the foregoing, we are persuaded by Appellant’s arguments
that the Examiner has not shown that Reed or Berg teaches a control wheel,
as recited in claim 1, and as similarly recited in claims 6, 13, 15, and 17.
Accordingly, we will not sustain the Examiner’s rejection of independent
claims 1, 6, 13, 15, and 17, and claims 2-5, 7-12, 14, 16, and 18, depending
respectively therefrom.
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Application 11/294,821

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Examiner’s Reliance on Berg’s Priority Date of March 4, 2004
A claim is entitled to priority from the filing date of an earlier filed
application, but only if the earlier filed application describes the subject
matter of the claim as required by § 112. 35 U.S.C. § 120. Section 112
requires a patent specification to contain a “written description of the
invention and the manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use
the same.” 35 U.S.C. § 112. Thus, if the later filed application’s claims are
not set forth in the earlier filed application with the specificity that § 112
requires, the later filed application cannot claim the earlier filing date for
those claims. 35 U.S.C. § 120.
Compliance with the written description requirement is a question of
fact. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc). To satisfy the written description requirement, a
patent’s specification must reasonably convey to a person having ordinary
skill in the art that the inventor had possession of the later-claimed subject
matter as of the earlier filing date. Id. While the earlier filed application
need not describe the later filed claims verbatim, a description that merely
renders the later filed invention obvious is insufficient. Id. at 1352.
A continuation-in-part application may include matter not
disclosed in the prior-filed application. See MPEP § 201.08.
Only the claims of the continuation-in-part application that are
disclosed in the manner provided by the first paragraph of 35
U.S.C. 112 in the prior-filed application are entitled to the
benefit of the filing date of the prior-filed application. If there is
a continuous chain of copending nonprovisional applications,
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each copending application must disclose the claimed invention
of the later-filed application in the manner provided by the first
paragraph of 35 U.S.C. 112, in order for the later-filed
application to be entitled to the benefit of the earliest filing date.

(MPEP § 201.11(I)(B), Claiming the Benefit of Nonprovisional
Applications) (emphasis added).
Berg (US 2006/0155441 A1) was filed on September 30, 2005, and
was published on July 13, 2006. In order to be prior art to the instant
application on appeal which has a filing date of July 22, 2005, prior to
Berg’s filing date of September 30, 2005, Berg must have priority back to
the March 4, 2004 filing date of its parent application from which Berg is a
continuation-in-part. The Examiner does not present findings or reasoning
showing that the cited portions of the U.S. Patent Publication No.
2006/0155441 A1 to Berg (Berg, ¶¶ [0026] and [0028]),2 are supported by
the requisite written description support in the Berg parent application
having the priority filing date of March 4, 2004 (Application No.
10/793,193). We find that Berg’s paragraphs [0026] and [0028] (found in
the continuation-in-part application US 2006/0155441 A1, and relied on by
the Examiner in rejecting claims 1-18 on appeal), were not part of the
originally filed parent application (U.S. Patent Application No. 10/793,193),
and therefore do not have written description support and are not deserving
of the priority date of March 4, 2004. Therefore, Berg is not prior art to

2 U.S. Patent Publication No. 2006/0155441 A1 to Berg was filed September
30, 2005, published July 13, 2006, and is a continuation-in-part application
of U.S. Patent Application No. 10/793,193 filed March 4, 2004.
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Appellant’s claims 1-18 and the Examiner erred in relying on Berg as
evidence for the obviousness rejection.
Accordingly, for this additional reason, we will not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-18 which relies on
Berg.
CONCLUSIONS
The combination of Reed and Berg fails to teach or suggest the
control wheel with a turning function and selections areas associated with
given software functions, as recited in representative claim 1, and as
similarly recited in independent claims 6, 13, 15, and 17. Appellant has
persuaded us of error in the Examiner’s decision to reject claims 1-18 under
35 U.S.C. § 103(a) as being unpatentable over Reed and Berg.

ORDER
The decision of the Examiner to reject claims 1-18 is reversed.

REVERSED

Vsh