Ex parte Richard et al.

Board of Patent Appeals and Interferences

Jun 9, 1998

08158342 (B.P.A.I. Jun. 9, 1998)

Application for patent filed November 29, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FRED V. RICHARD and RONALD J. NELSON
__________
Appeal No. 95-4151
Application 08/158,3421
__________
ON BRIEF
__________
Before JERRY SMITH, BARRETT and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 21, all of the claims pending in the
application.
Appeal No. 95-4151
Application 08/158,342
2
The invention relates to the generation of virtual images
in portable communication receivers such as radios, cellular
and cordless telephones, pagers and the like. Appellants
disclose on page 2 of the specification that because of finger
size and visual perception, the keyboard and its display are
often the limiting factor in determining the size of the
receiver. Appellants disclose on page 3 of the specification
that the problem is at least partially solved by providing a
virtual display which provides a virtual control panel image
and a manually controllable cursor virtual image. Appellants
disclose on pages 5, 15 and 16 of the specification that
Figure 8 is a view in perspective illustrating a typical view,
including a virtual image control panel, as seen by operator
of the portable communication receiver.
The independent claim 1 is reproduced as follows:
1. In combination with portable electronics
equipment including a virtual display, electronics
coupled to the virtual display for producing a
manually controllable virtual cursor image viewable
in the virtual display when activated and a virtual
control panel image including alpha-numeric keys
viewable in the virtual display when activated, and
the electronics being connected so that the
alpha-numeric keys of the virtual control panel
Appeal No. 95-4151
Application 08/158,342
3
image are operable with the virtual cursor image and
the electronics are further connected to operate the
portable electronics equipment in response to
operation of the alpha-numeric keys of the virtual
control panel image with the virtual cursor image.
The Examiner relies on the following references:
Spooner et al. (Spooner) 4,340,878 Jul. 20,
1982
Wells 5,003,300 Mar. 26,
1991
Krakower WO 92/11623 Jul. 09,
1992
(World Patent)
Jeff Wright, "Altered States", Computer Graphics World, issued
Dec., 1989, pages 77, 78, 81-83.
Jakob Nielsen, "HyperText and Hypermedia", published 1990 by
Academic Press, Inc., pages 5-8, 87-93, 120-121.
Claims 1 through 21 stand rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as
their invention. Claims 1 through 14 and 16 through 21 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Wright, Nielsen, Krakower and Wells. Claim 15 stands rejected
under 35 U.S.C. § 103 as being unpatentable over Wright,
Nielsen, Krakower and Wells further in view of Spooner.
Rather than reiterate the arguments of Appellants and the
Appeal No. 95-4151
Application 08/158,342
Appellants filed an appeal brief on February 24, 1995. We will refer2
to this appeal brief as simply the brief. Appellants filed a reply appeal
brief on April 10, 1995. We will refer to this reply appeal brief as the
reply brief. The Examiner stated in the Examiner’s letter mailed May 2, 1995
that the reply brief has been entered and considered but no further response
by the Examiner is deemed necessary.
4
Examiner, reference is made to the briefs and answer for the2
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 21
under 35 U.S.C. §§ 103 or 112.
Analysis of 35 U.S.C. 112, second paragraph, should
begin with the determination of whether claims set out and
circumscribe a particular area with a reasonable degree of
precision and particularity; it is here where definiteness of
the language must be analyzed, not in a vacuum, but always in
light of teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977).
The Examiner argues that the language, "virtual display"
as recited in Appellants' claims is vague and indefinite
Appeal No. 95-4151
Application 08/158,342
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because the term "virtual" means that the display is not an
actual display. The Examiner acknowledges that in the brief
the Appellants have argued that the term virtual display is
well recognized by those skilled in the art and is understood
to be a display in which the image to be viewed is a virtual
image. The Examiner argues that this argument should be
dismissed on page 3 of the answer because the Appellants have
not set forth in the claims how a virtual image can be
controlled by a virtual control panel.
On pages 2 and 3 of the reply brief, Appellants argue
that reading the claims as a whole and in light of the
specification the term "virtual display" would be clear and
concise to those skilled in the art. In particular,
Appellants argue that the term clearly claims an electronic
device and not a virtual image.
In view of the Appellants' arguments and in light of the
teaching of Appellants' disclosure as it would be interpreted
by one possessing ordinary skill in the art, we find that the
language "virtual display" sets out and circumscribes a
particular area with a reasonable degree of precision and
Appeal No. 95-4151
Application 08/158,342
6
particularity. Therefore, we will not sustain the rejection
on the basis of 35 U.S.C. 112 second paragraph.
In regard to the 35 U.S.C. § 103 rejection, the Examiner
has failed to set forth a prima facie case. It is the burden
of the Examiner to establish why one having ordinary skill in
the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In
re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
The Examiner states on page 3 of the answer that Wright
Appeal No. 95-4151
Application 08/158,342
7
suggests on page 81 the use of a virtual display with
telephone and hyper media means and suggests the use of a
control means. The Examiner notes however that Wright does
not give a full description of his display and control means.
The Examiner cites Nielsen for the teaching of a cursor that
controls a control panel, Wells for the teaching of a head-
mounted unit and Krakower for the teaching of the
interchangeability of a mouse, trackball and a touch screen.
Appellants argue in the brief and the reply brief that
neither of these references teaches or suggests a portable
apparatus incorporating a virtual display with a virtual
control panel image including alpha-numeric keys and a virtual
cursor image as recited in Appellants' claims. Appellants
further argue
that Wright is simply surmising about the possibilities of
virtual reality throughout the article and does not actually
teach or suggest to one skilled in the art controlling a
virtual control panel image with a virtual cursor image.
Upon reviewing Wright, we note that the subtitle of the
Appeal No. 95-4151
Application 08/158,342
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article is "a software developer's vision of the future of
virtual reality." On page 79, Wright states that the recent
demonstrations of virtual reality only give a small glimpse of
the potential of future developments of the technology.
Wright then proceeds to describe what he envisions as possible
future developments using the technology. On page 81, Wright
speculates that future development of the technology could be
used to provide familiar tools such as a calendar, an
appointment book, a journal, a thesaurus, a telephone book, a
journal, a map or an instruction manual. Wright states only
in one sentence that virtual reality could be used to control
and present complex hyper media consisting of mixed text,
graphics, videodisk images
and sound. Wright further speculates that virtual realities
could be use for simulating structure of the human body or
virtual realities could be use to provide speaking articles
that
provide you information to suit your learning style. Wright
even speculates that virtual reality could be use for
Appeal No. 95-4151
Application 08/158,342
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interspecies communication in which a virtual reality could
translate body images and experiences between humans and
dolphins. However, we note that Wright is only speculating on
future possible research. Furthermore, Wright does not teach
or suggest electronics coupled to a virtual display for
producing a manually controllable virtual cursor image and a
virtual control panel image including alpha-numeric keys which
are operable with the virtual cursor image to operate the
portable electronics equipment as recited in Appellants'
claims.
We note that Nielsen discusses hypermedia and multimedia
hypertext. Further, we note that Krakower teaches a
conventional laptop computer having a display screen and a
keyboard in which a cursor is used to allow the user to select
computer functions.
Finally, we note that Wells teaches a head mounted display and
Spooner teaches a visual display apparatus for ground based
craft-flight simulators. However, we fail to find that any of
these references cited by the Examiner teach or suggest elec-
tronics coupled to a virtual display for producing a manually
Appeal No. 95-4151
Application 08/158,342
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controllable virtual cursor image and a virtual control panel
image including alpha-numeric keys which are operable with the
virtual cursor image to operate the portable electronics
equipment as recited in Appellants' claims.
We have not sustained the rejection of claims 1 through
21 under 35 U.S.C. §§ 103 or 112. Accordingly, the Examiner's
decision is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4151
Application 08/158,342
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Vincent B. Ingrassia
Motorola, Inc.
Intellectual Property Dept.
Suite R3108
P.O. Box 10219
Scottsdale, AZ 85271-0219