Ex Parte Raynor

Patent Trial and Appeal Board

Sep 26, 2016

12964112 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/964,112 12/09/2010
117574 7590 09/28/2016
ADDMG - ST (foreign-originated only)
255 S Orange Avenue, Suite 1401
Orlando, FL 32801
FIRST NAMED INVENTOR
Jeffrey RAYNOR
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
52890 (09-EDI-180/US) 4168
EXAMINER
ELAHI, TOWFIQ
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
creganoa@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY RAYNOR
Appeal2015-005494
Application 12/964, 112
Technology Center 2600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005494
Application 12/964, 112
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
20, 24--40, 42--46, and 50-52. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The invention relates to a mobile communications device operable as
a computer pointing device, such as a mouse (Spec. i-fi-f 13-15). Claim 20,
reproduced below, is illustrative of the claimed subject matter:
20. A mobile communications device configured to operate in
a device mode and operate as a pointing device in a mouse mode
for a computer, and comprising:
a housing;
a display carried by a front surface of said housing;
a keypad carried by a front surface of said housing;
a low friction projection positioned on the front surface of
said housing at an end opposite said display, said low friction
projection protruding outwardly therefrom farther than said
keypad to inhibit the keypad from contacting a mouse surface
during use of the mobile communications device with the front
surface down in the mouse mode;
a navigation pad carried by the front surface of said
housing and protruding outwardly therefrom farther than said
keypad and said low friction projection, and configured to
selectively operate as a device pointer during contact with a
finger in the device mode, and as a computer pointer during
contact with the mouse surface in the mouse mode;
an antenna carried by said housing; and
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Application 12/964, 112
to
a signal processor carried by said housing and configured
detect motion of the mobile communications device
in the mouse mode via said navigation pad in contact with
the mouse surface and encode motion signals based
thereupon, and
transmit the encoded motion signals to the computer
via said antenna.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kirsch us 4,364,035 Dec. 14, 1982
Scholder us 5,805, 144 Sept. 8, 1998
Yeom us 5,943,625 Aug. 24, 1999
Hoshino US 2002/0030668 Al Mar. 14, 2002
Sun US 7 ,071,922 B2 July 4, 2006
Ho US 7 ,098,890 B2 Aug. 29, 2006
Rensberger US 2008/0030470 Al Feb. 7,2008
Machida US 7,696,985 B2 Apr. 13, 2010
REJECTIONS
The Examiner made the following rejections:
Claims 20, 24, 26, 27, 29-32, 34, 35, 40, 42, 46, and 50 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Yeom, Hoshino, and
Kirsch.
Claims 25, 43, 44, and 51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Y eom, Hoshino, Kirsch, and Ho.
Claims 28, 45, and 52 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Y eom, Hoshino, Kirsch, and Scholder.
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Application 12/964, 112
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Y eom, Hoshino, Kirsch, and Sun.
Claims 36, 37, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Y eom, Hoshino, Kirsch, and Machida.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Y eom, Hoshino, Kirsch, Machida, and Rensberger.
ANALYSIS
The Examiner finds the combination of Y eom, Hoshino, and Kirsch
discloses all the limitations of independent claim 20 (Final Act. 1 2-5).
Specifically, the Examiner finds Kirsch teaches "a low friction projection at
the housing surface of the optical mouse," and concludes that it would have
been obvious to combine Kirsch with Y eom and Hoshino to provide for the
ergonomic operation of a pointing device (Final Act. 5). Appellant contends
Kirsch does not:
[S]uggest a low friction projection is positioned on the
front surface of the housing at an end opposite the display, and
protrudes outwardly therefrom farther than the keypad to inhibit
the keypad from contacting a mouse surface during use of the
mobile communications device with the front surface down in
the mouse mode,
as recited in claim 20 (Br. 11-12). Further, Appellant contends "there is
no[] reason to selectively assemble the disjoint[ ed] pieces of the prior art in
an attempt to arrive at the claimed invention for providing ergonomic
operation" (Br. 12). We agree with Appellant.
Yeom teaches a "dual-purpose cordless telephone and wireless
mouse" (Yeom col. 4, 11. 22-23), and Hoshino teaches a "portable
1 The Final Action mailed July 28, 2014.
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Application 12/964, 112
information terminal using a pointing device" (Hoshino i-f 46), but neither
reference teaches "a low friction projection," as recited in claim 20. The
Examiner finds Kirsch's Figure 2 shows a mouse with low friction
projections (Final Act. 5). However, Kirsch does not teach implementing a
low friction projection on the front surface of a mobile communications
device. It is true that the obviousness "analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
[the Board] can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). But here, the Examiner's statement that
combining Kirsch with Y eom and Hoshino would provide for the ergonomic
operation of a pointing device (Ans. 31) does not explain why it would have
been obvious to combine Y eom, Hoshino, and Kirsch to achieve the claimed
device. That is, while ergonomic operation may be a desirable goal, that
goal alone does not identify the inferences and creative steps that would
have motivated one of ordinary skill in the art to make the specific
arrangement of a mobile communications device with a front surface having
a low friction projection protruding further than a keypad, and a navigation
pad protruding further than the low friction projection and the keypad, as
recited in claim 20.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 20, independent claims 40, 46, and 50
which recite commensurate limitations, and dependent claims 24--39, 42--45,
51, and 52 for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 20, 24--40, 42--46, and 50-52
under 35 U.S.C. § 103(a).
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Appeal2015-005494
Application 12/964, 112
DECISION
For the above reasons, the Examiner's rejection of claims 20, 24--40,
42--46, and 50-52 is reversed.
REVERSED
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