Ex Parte Stromberg

Board of Patent Appeals and Interferences

Apr 28, 2011

10312959 (B.P.A.I. Apr. 28, 2011)

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.
10/312,959 07/07/2003 Rolf Stromberg STOCP0125US 9048
23908 7590 04/28/2011
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
PHAM, TAMMY T
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
04/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROLF STROMBERG
____________________

Appeal 2009-013308
Application 10/312,959
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013308
Application 10/312,959

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a non-final rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Exemplary Claims
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:
1. A pointing device comprising:
a base;
a pair of support members arranged at a mutual distance on the base,
with at least one of the support members being mounted for rotation about a
rotation axis and axial movement parallel to the rotation axis;
a belt member looped around said pair of support members for
circulatory forwards and backwards motion in a first direction perpendicular
to the rotation axis and for linear forwards and backwards motion in a
second direction perpendicular to the first direction and parallel to the
rotation axis, the belt member having an external face forming a pointing
surface that is movable within a pointing area of the device by means of a
finger or equivalent, whereby such movement of the pointing surface can
effect corresponding movement of a cursor or equivalent on a display
operatively connected to the pointing device; and wherein the belt member
includes a plurality of rods extending parallel to the rotation axis for
maintaining the shape of the pointing surface during movement of the
pointing surface; and
an optoelectronic sensor for detecting motion of the belt member.

Rejections
1. The Examiner rejected claims 1-15 under 35 U.S.C.
§ 112, first paragraph, as failing to provide an adequate written description
of the claimed invention. Because the Examiner has withdrawn the rejection
of claims 1-15 under 35 U.S.C. § 112, first paragraph, in the Answer (Ans.
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Application 10/312,959

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8), we do not reach the merits or otherwise review this rejection in our
decision.
2. The Examiner rejected claims 1-3, 5, 6, and 11-15 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Badarneh
(US 6,809,661 B1) and Appellant’s Admitted Prior Art found at Figure 17
and page 12, lines 4-10, of the Specification (hereinafter “AAPA”).
3. The Examiner rejected claims 4 and 7-10 as being unpatentable
under 35 U.S.C. § 103(a) over Badarneh alone.

Appellant’s Contentions1
1. Appellant contends that the Examiner erred in rejecting claims
1-3, 5, 6, and 11-15 under 35 U.S.C. § 103(a) (see supra second rejection)
for numerous reasons including: (1) Badarneh fails to disclose or suggest
that one of the support members is mounted for “rotation about a rotation
axis” and “axial movement parallel to the rotation axis,” as recited in claim
1; (2) Badarneh fails to perform axial movement, and instead moves cradle
160 by titling or moving pivotally in relation to the rotation axis of the
rollers 142 and/or 143 (i.e., the support members) in directions 161 and 162
(see Fig. 57); (3) Badarneh fails to disclose or suggest a belt including a
plurality of rods, as recited in claim 1; and (4) AAPA fails to teach an
optoelectronic sensor for detecting motion of a belt member (App. Br. 7-10;
Reply Br. 2-6).
2. Appellant contends that the Examiner erred in rejecting claims
4 and 7-10 under 35 U.S.C. § 103(a) (see supra third rejection) for numerous

1 Because claims 4 and 7-10 depend from claim 1 and therefore include all
of the limitations of claim 1, we consider Appellant’s arguments as to claims
4 and 7-10 to incorporate the arguments with regard to claim 1.
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reasons including: (1) there is no basis to conclude that it would have been
obvious to a person of ordinary skill in the art to substitute a magnet (as
recited in claim 4) for Badarneh’s spring 149; (2) Badarneh lacks any
disclosure or suggestion that springs 149 have a C-shape (as recited in claim
7) or an S-shape (as recited in claim 8) (App. Br. 10-11; Reply Br. 6).

Issue on Appeal
Did the Examiner err in rejecting claims 1-15 as being obvious
because Badarneh fails to teach or suggest the limitation of a support
member being mounted for “axial movement parallel to the rotation axis,” as
set forth in sole independent claim 1?

ANALYSIS
We agree with Appellant (App. Br. 7-9; Reply Br. 3) that the tilting
described in Badarneh at column 15, lines 45-49, and shown in Figure 57 as
directions 161 and 162 is a pivotal movement or tilting of the cradle 160,
and not axial movement parallel to the rotation axis of a support member, as
set forth in claim 1. Claims 4 and 7-10 ultimately depend from claim 1, and
therefore include the limitation of a support member being mounted for axial
movement parallel to the rotation axis. Accordingly, the Examiner erred in
determining that Badarneh teaches or suggests axial movement of the
support members, and in rejecting claims 1-15 as being unpatentable under
35 U.S.C. § 103(a).

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Application 10/312,959

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CONCLUSIONS
(1) Badarneh fails to teach or suggest the limitation of a support
member being mounted for “axial movement parallel to the rotation axis,” as
set forth in independent claim 1, and claims 2-15 depending therefrom.
(2) Appellant has established that the Examiner erred in rejecting
claims 1-15 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 1-15 have not been shown to be
unpatentable.

DECISION
The Examiner’s rejections of claims 1-15 are reversed.

REVERSED

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