Ex Parte Skaug

Patent Trial and Appeal Board

May 28, 2014

10501676 (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/501,676 02/22/2005 Terje Skaug 915-001.036 2315
10945 7590 05/29/2014
NOKIA CORPORATION
c/o Ware, Fressola, Maguire & Barber LLP
Building Five, Bradford Green
755 Main Street, PO Box 224
Monroe, CT 06468
EXAMINER
KARIMI, PEGEMAN
ART UNIT PAPER NUMBER
2691
MAIL DATE DELIVERY MODE
05/29/2014 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 TERJE SKAUG
____________________

Appeal 2011-010185
Application 10/501,676
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010185
Application 10/501,676
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-6 and 10-14. Claims 7-9 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

The claims are directed to a pointing device. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An apparatus, comprising:

an already existing electronic communication or player
device having a screen display, and

one or more pointing device components integrated into
the already existing electronic communication or player device,

wherein said one or more pointing device components
are configured to give the already existing electronic
communication or player device, in addition to its main
functions, an auxiliary function as a pointing device with
respect to an external electronic screen display device, thus
enabling the already existing electronic communication or
player device to act together with the external electronic screen
display device, and said pointing device being configured to
operate independent of a functionality of the existing electronic
communication or player device, and

wherein the external electronic screen display device is
other than the screen display of the already existing electronic
communication or player device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Appeal 2011-010185
Application 10/501,676
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Steele US 6,201,534 B1 Mar. 13, 2001
Lee US 2003/0016417 Al Jan. 23, 2003
Miyashita US 6,909,906 B1 June 21, 2005
(filed July 24, 2000)

REJECTION
The Examiner made the following rejection:
Claims 1-6 and 10-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyashita in view of Steele, and further in view of Lee.

ANALYSIS
Appellant has not filed a Reply Brief to respond to the Examiner’s
further clarifications of the combination of prior art teachings in the
obviousness rejection. (Ans. 8-18).
Appellant relies on the arguments advanced with respect to
independent claim 1 for claims 2-6 and 10-14. (App. Br. 6). 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, we select independent claim 1 as the
representative claim for the group and address Appellant’s arguments
thereto.
Appellant presents arguments to the Miyashita and Steele references
individually. (App. Br. 4-6). Appellant additionally maintains that the
Examiner’s motivation for combining these two references is based upon
“impermissible hindsight” based upon page 1 of Appellant’s Specification.
(App. Br. 5).
The Examiner maintains that both the Miyashita and Steele references
teach and suggest the use of both a main functionality and an auxiliary
functionality where the functionalities are independent from one another.
Appeal 2011-010185
Application 10/501,676
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(Ans. 18). We agree with the Examiner that the Miyashita and Steele
references teach and fairly suggest a main functionality and an auxiliary
functionality which are independent and do not overlap each other.
Additionally, the Examiner maintains that the mouse and laser guide
of Lee may similarly be combined with the Miyashita and Steele references.
(Ans. 18-19). We, therefore, find the Examiner’s reason to combine the
teachings of the cited references supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion.
Here, we find the Examiner’s proffered modification of Miyashita
with the teachings of Steele and Lee would have been a predictable use of
prior art elements according to their established functions in accordance with
what the Supreme Court considers “common sense.”
Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
With regards to the Appellant’s argument regarding impermissible
hindsight (App. Br. 5), in KSR, the U.S. Supreme Court reaffirmed that “[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421. See also Graham v. John Deere Co., 383 U.S. at 36.
Nevertheless, in KSR, the Supreme Court also qualified the issue of
hindsight by stating that “[r]igid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.” KSR, 550 U.S. at 421.
Appeal 2011-010185
Application 10/501,676
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In KSR, the Supreme Court further stated:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

KSR, 550 U.S. at 417.
This reasoning is applicable here. We find the Examiner’s proffered
combination of references is proper under § 103 because the combination is
merely a predictable use of known elements. Accordingly, we sustain the
Examiner’s obviousness rejections of representative claim 1, and claims 2-6
and 10-14 not separately argued fall with representative claim 1.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-6 and 10-14 based
upon obviousness.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-6 and 10-
14 is sustained.

Appeal 2011-010185
Application 10/501,676
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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