Ex Parte Pilu

Patent Trial and Appeal Board

Mar 26, 2014

11243841 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MAURIZIO PILU
__________

Appeal 2011-009718
Application 11/243,841
Technology Center 2600
___________

Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
and TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 4, 5, and 7-23. Claims 3 and 6 were canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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STATEMENT OF THE CASE
The Rejections on Appeal
The Examiner rejected claims 1, 2, 4, 7, 8, 10-12, and 19 under
35 U.S.C. § 103(a) as unpatentable over Seki et al. (US 2004/0012559 A1;
published Jan. 22, 2004) and Zloof (US 5,489,922; issued Feb. 6, 1996).
Ans. 4-9.
The Examiner rejected claims 5 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Seki, Zloof, and Huang (US 2003/0048254 A1; published
Mar. 13, 2003). Ans. 9-10.
The Examiner rejected claims 13-18 under 35 U.S.C. § 103(a) as
unpatentable over Seki, Zloof, and Cho et al. (US 2004/0263473 A1;
published Dec. 30, 2004; filed Jun. 28, 2004). Ans. 10-13.
The Examiner rejected claims 20, 21, and 23 under 35 U.S.C. § 103(a)
as unpatentable over Seki, Zloof, and Latham (US 5,803,738; issued Sep. 8,
1998). Ans. 13-15.
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Seki, Zloof, Latham, and Nguyen (US 6,072,494; issued
Jun. 6, 2000). Ans. 16.

The Claimed Invention
The claimed invention is directed to providing computer input using
two finger-mounted positioning devices. Spec. 2. Appellant’s illustrative
Figure 3 is reproduced below:
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As shown above in Figure 3, Appellant’s Specification describes first device
100 attached to a user’s finger on one hand, second device 200 attached to a
user’s finger on the other hand, and that the devices are configured to
transmit input data to a remote computer by detecting movement of second
device 200 relative to first device 100. Spec. 3-5. Claim 1 is illustrative and
is reproduced below, with certain limitations emphasized:
1. Machine-human interface apparatus comprising:
a first device adapted to be substantially fixedly mounted
relative to a portion of a digit of a first hand of a user; and
a second device adapted to be substantially fixedly
mounted relative to a portion of a digit of the other hand of the
user, wherein the first device further comprises an infra-red
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emitter operable to generate an infra-red beam for emission
over a portion of the palm of the first hand of the user, and
wherein at least one of the first device and the second device is
configured to detect at least one of a position and movement of
the second device with respect to the emitted infra-red beam,
and wherein at least one of the first device and the second
device comprises a transducer operable to generate a signal
representative of the at least one of the detected relative
position and movement of the second device, wherein the signal
is to be used as input function by a remote device.

DISCUSSION
A. The Rejection of Claims 1, 2, 4, 7, 8, 10-12, and 19 as Obvious Over
Seki and Zloof
1. Claims 1, 2, and 4
The Examiner determined Seki discloses most of the limitations of
claim 1 including two devices mounted relative to opposite hands of a user
and configured to generate a signal to a remote device based on detected
relative movement or position of the devices. Ans. 4 (citing Seki, Figures 4-
5; ¶¶ [0057-0068]). Figure 4 of Seki is reproduced below:
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As shown above in Figure 4, Seki discloses a first input device including
magnetic sensors 3, 4 worn on a user’s wrist and configured to detect
movement of second magnetic device 1 worn on a finger of the user’s other
hand. Seki ¶¶ [0057-0058].
The Examiner found that Seki does not teach that the first device is
mounted on a digit of the user, or that the first device includes an infrared
emitter to generate an infrared beam over a portion of the palm. Ans. 4. The
Examiner relied upon disclosures in Zloof regarding these features when
concluding that claim 1 was obvious over Seki in view of Zloof. Id. at 4-5
(citing Zloof, Figure 1; col. 6, lines 3-15). Figure 1 of Zloof is reproduced
below:
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As shown above in Figure 1, Zloof discloses finger-mounted input devices
22 and 24 transmitting data to control cursor movement on remote computer
monitor 14. Zloof, col. 3, lines 29-38. The Examiner concluded it would
have been obvious to modify the sensor device of Seki to be mounted on a
finger as taught by Zloof as a matter of design choice. Ans. 4-5 (citing
Zloof, Figure 1). The Examiner also concluded it would have been obvious
to modify the sensor device of Seki to include an infrared emitter as taught
by Zloof as an alternative method of wireless communication. Id. (citing
Zloof, col. 6, lines 3-15). Appellant disagrees with the Examiner’s findings
with respect to claims 1, 2, and 4, and we address Appellant’s arguments
seriatim.
First, with respect to independent claim 1, Appellant argues it would
not have been obvious to one of ordinary skill in the art to modify the wrist-
band apparatus of Seki to be worn on a digit. App. Br. 11. Appellant notes
that one embodiment of Seki includes two magnetic sensors mounted on a
rigid wrist support and requires that the sensors be a fixed distance apart. Id.
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at 11-12. Appellant concludes the rigid support of Seki cannot be moved to
a finger because “the hinged movements of a finger would make the system
of Seki inoperable.” Rep. Br. 5. Accordingly, Appellant argues Seki
teaches away from placing the sensor device on a digit. App. Br. 12.
We disagree. As stated by the Federal Circuit, “a reference teaches
away from a combination when using it in that combination would produce
an inoperative result.” In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1382 (Fed. Cir. 2007) (citation omitted). As also noted by the court, “we do
not ignore the modifications that one skilled in the art would make to a
device borrowed from the prior art.” Id. (citation omitted). Specifically, we
must consider whether “[o]ne skilled in the art would size the components”
from the cited prior art “appropriately” for its modified application. Id.
Here, the Examiner sufficiently established that one of ordinary skill in the
art would have had reason to modify the sensor device of Seki appropriately
to be mounted on a digit as taught by Zloof, without rendering the device
inoperable for its purpose. See Ans. 4-5, 17.
Second, with respect claim 1, Appellant argues that Zloof does not
teach the limitations requiring the first device to include an infrared emitter
that generates an infrared beam over a user’s palm to detect the position or
movement of the second device. App. Br. 12-13. Appellant contends that
Zloof merely transmits infrared signals to a remote computer and thus does
not teach or suggest emitting an infrared beam over the user’s palm for
detecting movement or position of another device. Id.
The Examiner determined that Zloof disclosed a first input device
comprising an infrared transmitter that generated an infrared beam over a
user’s palm. Ans. 4-5 (citing Zloof, col. 6, lines 3-15). The Examiner
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further explained that Zloof was not cited to show the first and second
devices in communication, but instead to teach the concept of wireless
infrared communication. Id. at 17. Accordingly, the Examiner concluded
that the substitution of infrared communication of Zloof for the
electromagnetic communication of Seki met the limitations in question. Id.
at 17-18.
Appellant argues that even assuming that one of skill in the art would
combine Seki and Zloof, the proposed combination would fail to result in a
first device that “comprises an infra-red emitter operable to generate an
infra-red beam for emission over a portion of the palm of the first hand of
the user,” as required by claim 1. App. Br. 13. We agree with Appellant.
The embodiment of Seki cited by the Examiner relies solely on magnetic
detection of position and movement data. Zloof provides no teaching that its
infrared emitter may be used for position or movement detection, only that
infrared can be used for a wireless communication link. Therefore, we
determine that the combination of Seki and Zloof does not teach the
limitations of claim 1 including a first device comprising an infrared emitter
operable to generate an infrared beam over a portion of a palm of a user’s
hand to detect the position or movement of a second device. Therefore, we
do not sustain the Examiner’s rejection of claim 1, or claims 2 and 4, which
depend on claim 1.

2. Claims 7, 8, 10-12, and 19
With respect to independent claim 7, Appellant argues, similarly to
the way it argued claim 1, that Seki teaches away from placing the Seki
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sensor device on a user’s digit. App. Br. 14-15. We disagree with
Appellant’s arguments for reasons similar to those indicated above.
Also with respect to claim 7, Appellant argues that neither Seki nor
Zloof discloses the devices are in wireless communication with each other to
enable communication of data signals. Id. at 15. The Examiner found the
two devices of Seki are wirelessly coupled and enable communication of
position data via directional magnetic forces. Ans. 6 (citing Seki, Figures 4-
6; ¶¶ [0057-0068]). We agree with the Examiner. The limitations of claim 7
require only that the devices be “wirelessly coupled” and “enable
communication of data signals” and are thus met by Seki’s disclosure of a
first device wirelessly receiving magnetic directional data from a second
device. See Ans. 6. Therefore, we sustain the Examiner’s rejection of claim
7. Appellant does not argue dependent claims 10-12, and 19 separately and
therefore these claims fall with claim 7. 37 C.F.R. § 41.37(c)(1)(vii).
Third, with respect to claim 8, Appellant argues that neither Zloof nor
Seki teaches two devices wirelessly coupled using any of “short-range radio
frequency protocol connection, infra-red, fast infra-red, or ultrasound
wireless connection,” as recited in claim 8. App. Br. 17 (quoting claim 8).
The Examiner found that Zloof discloses wireless infrared communication.
Ans. 7. Appellant argues that although Zloof includes an infrared
transmitter, the two ring devices of Zloof do not communicate with each
other. App. Br. 17. We agree with Appellant for reasons similar to those
discussed above for claim 1. Zloof recites only communicating with a
remote computer via a wireless infrared communication link. Furthermore,
the embodiment of Seki cited by the Examiner includes only communication
between the devices using magnetic forces, and magnetic forces are not
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included in the enumerated communication formats of claim 8. Therefore,
we do not sustain the Examiner’s rejection of claim 8.

B. The Rejection of Claims 5 and 9 as Obvious Over Seki, Zloof, and
Huang
Appellant argues that claims 5 and 9 are distinguishable over Seki and
Zloof based on features recited in independent claims 1 and 7, as discussed
above. App. Br. 18. Furthermore, Appellant argues Huang does not remedy
the asserted deficiencies of the Seki and Zloof combination. Id. We find
Appellant’s argument for claim 5 persuasive for the same reasons indicated
above with respect to claim 1, and, therefore, we do not sustain the
Examiner’s rejection of claim 5. We find Appellant’s argument for claim 9
unpersuasive for the same reasons indicated above with respect to claim 7,
and, therefore, we sustain the Examiner’s rejection of claim 9.

C. The Rejection of Claims 13-18 as Obvious Over Seki, Zloof, and Cho
With respect to claim 13, the Examiner found Seki and Zloof do not
teach that the second device “includes a motion detector adapted to generate
motion data representative of a movement of the second device,” as recited
in claim 13. Ans. 10. The Examiner relied upon Seki and Zloof in view of
Cho as teaching a motion detector included on the second device. Id. (citing
Cho, Figure 1; ¶ [0035]). Figure 1 of Cho is reproduced below:
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As shown above in Figure 1, Cho discloses bracelet 52 including visual
sensor 54. Cho ¶ [0035]. The Examiner found the combination of Seki and
Zloof in view of Cho teaches an image capture device included on the
second device which generates image data from the standpoint of the device.
Ans. 10-11.
Appellant disagrees that Cho teaches a second device including a
motion detector adapted to generate motion data of the second device as
recited in claim 13. App. Br. 19. In particular, Appellant argues that Cho’s
visual sensor is located on a stationary bracelet and, thus, fails to disclose a
motion detector is included on a device configured to move. Id.
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Appellant’s arguments are not persuasive because one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA
1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). In independent
claim 7, the Examiner mapped the moveable fingertip device of Seki as
disclosing the “second device.” Ans. 6 (citing Seki, Figure 4, element 2). In
the rejection of dependent claim 13, the Examiner cited Cho in combination
with Seki and Zloof as teaching a second device including a camera. Id. at
10 (citing Cho, Figure 1, element 54). We agree with the Examiner that the
combination of Seki, Zloof, and Cho teaches the limitations of claim 13.
The combination of Seki, Zloof, and Cho teaches a moveable fingertip
device including a camera to take multiple pictures from the standpoint of
the moveable device and, thus, teaches a device that “includes a motion
detector adapted to generate motion data representative of a movement of
the second device.” See Id. Therefore, we sustain the Examiner’s rejection
of claim 13. Appellant does not argue dependent claims 17 and 18
separately, and therefore these claims fall with claim 13.1
With respect to claim 14, Appellant argues Cho fails to disclose an
image capture device included in the second device. App. Br. 19. Similar to
claim 13, Appellant argues that the image capture device of Cho is not
included on a device that is configured to move. Id. at 19-20. We agree, but
the argument is not commensurate with the scope of claim 14, which does
not require that the image capture device be included on a moveable device.

1 Appellant incorrectly identifies claims 17 and 18 as including an image
capture device. App. Br. 19. However, claims 17 and 18 are dependent on
claim 13 and are directed to a motion detector.
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Instead, claim 14 only requires the second device to include “an image
capture device adapted to generate image data representing an image
captured from a standpoint of the second device.” Claim 14.
Notwithstanding the breadth of claim 14, the Examiner rejected claim 14
over the combination of Seki, Zloof, and Cho, which included mapping the
moveable fingertip device of Seki to the “second device.” Ans. 6 (citing
Seki, Figure 4, element 2). Accordingly, for similar reasons as above with
respect to claim 13, we agree with the Examiner that Cho, in combination
with Seki and Zloof, teaches including an image capture device on the
second device. See Id. at 11. Therefore, we sustain the Examiner’s rejection
of claim 14. Appellant does not argue dependent claims 15 and 16
separately, and therefore these claims fall with claim 14.

D. The Rejection of Claims 20-21 and 23 as Obvious Over Seki, Zloof,
and Latham
Appellant argues that Seki, Zloof, and Latham do not teach the
limitations of claim 20. App. Br. 21. Appellant notes that claim 20 includes
placing a first device on a digit of a first hand of a user, placing a second
device on a digit of a second hand of the user, and wirelessly coupling the
devices to enable communication of data signals between the devices. Id.
Appellant argues that Seki and Zloof do not teach the limitations of claim 20
for similar reasons as argued with respect to claims 1 and 7 above regarding
the inability to place Seki’s first device on a digit. Id. Furthermore,
Appellant argues Latham does not cure the deficiencies of Seki and Zloof.
Id.
We disagree with Appellant’s arguments for similar reasons as
indicated above. As discussed above with respect to claim 1, Seki in view of
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Zloof teaches placing both devices on a user’s digits. Furthermore, as
discussed above with respect to claim 7, Seki discloses two devices
wirelessly communicating tracked movement information via magnetic force
data. Therefore, we sustain the Examiner’s rejection of claim 20. Appellant
does not argue dependent claims 21 and 23 separately, and therefore these
claims fall with claim 20.

E. The Rejection of Claim 22 as Obvious Over Seki, Zloof, Latham, and
Nguyen
Appellant argues that claim 22 is distinguishable over Seki, Zloof, and
Latham based on the features recited in independent claim 20, as discussed
above. App. Br. 22. Furthermore, Appellant argues Nguyen does not
remedy the deficiencies of the Seki, Zloof, and Latham combination. Id.
We find Appellant’s arguments for claim 22 unpersuasive for the same
reasons indicated above with respect to claim 20. Therefore, we sustain the
Examiner’s rejection of claim 22.

DECISION
The Examiner’s decision rejecting claims 7 and 9-23 is AFFIRMED.
The Examiner’s decision rejecting claims 1, 2, 4, 5, and 8 is
REVERSED.

AFFIRMED-IN-PART

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