Ex parte Taft

Board of Patent Appeals and Interferences

Apr 15, 1999

08196931 (B.P.A.I. Apr. 15, 1999)

Application for patent filed February 14, 1994,1
entitled "Input Device With Handle."
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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte FREDERICK D. TAFT

Appeal No. 96-1918
Application 08/196,9311

ON BRIEF

Before HAIRSTON, BARRETT, and GROSS, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1918
Application 08/196,931
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-10.
We affirm.
BACKGROUND
The disclosed invention is directed to an input device,
such as a mouse, having an upright handle to accommodate the
finger of a human hand curled about it.
Claim 1 is reproduced below.
1. An input device, comprising:
a base unit movable in an x direction and a y
direction;
a position detection mechanism for detecting movement
of said base unit in said x direction and said y
direction; and
a handle attached to the top of said base unit, said
handle having sufficient length and width to
accommodate at least three fingers of a human hand
curled about it when the wrist of said human hand is
positioned perpendicularly to said base unit.
The examiner cites the following prior art as relied
upon in the rejections of the claims:
Vanderheiden et al. (Vanderheiden) 3,854,131 December
10, 1974
Loffelholz 4,234,202 November 18,
1980
King et al. (King) 4,759,431 July 26,
1988
Appeal No. 96-1918
Application 08/196,931
Swinney is cited but has not been applied in any2
ground of rejection in the Final Rejection or the Examiner's
Answer.
McGonigal is cited but has not been applied in any3
ground of rejection in the Final Rejection or the Examiner's
Answer.
Our understanding of Nishiwaki is based upon a4
translation prepared by the Patent and Trademark Office, a
copy of which accompanies this decision.
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Swinney 4,769,517 September 6,2
1988
Selker 4,780,707 October 25,
1988
Gart 4,862,165 August 29,
1989
McGonigal et al. 5,012,048 April 30,3
1991
Clark 5,132,672 July 21,
1992
Burger et al. (Burger) 5,311,208 May 10,
1994
(filed October 3,
1991)
Nishiwaki et al. (Nishiwaki ) 60-126727 July4
6, 1985
(Japanese Kokai)
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nishiwaki and Clark. In the Examiner's
Answer the examiner entered a new ground of rejection of
claim 1 under § 103 over Clark alone.
Claims 2 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nishiwaki, Clark, and Burger.
Appeal No. 96-1918
Application 08/196,931
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Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nishiwaki, Clark, and Loffelholz.
Claims 4-7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nishiwaki, Clark, and King.
Claims 8 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nishiwaki, Clark, Vanderheiden, and
Gart.
We refer to the Final Rejection (Paper No. 6) and the
Examiner's Answer (Paper No. 13) (pages referred to as
"EA__") for a statement of the examiner's position and to
the Brief (Paper No. 12) (pages referred to as "Br__") and
the Reply Brief (Paper No. 14) (pages referred to as
"RBr__") for a statement of appellant's position.
OPINION
Appellant argues claims 1-10 to rise or fall together
as a single group (Br3). Therefore, the claims stand or
fall together with independent claim 1.
We find that the structure of Nishiwaki and Clark meets
the structural limitations of claim 1. The claim limitation
of "a handle attached to the top of said base unit, said
handle having sufficient length and width to accommodate at
Appeal No. 96-1918
Application 08/196,931
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least three fingers of a human hand curled about it when the
wrist of said human hand is positioned perpendicularly to
said base unit" defines an intended use for (i.e., a
handle), or a structure inherent in, the devices of
Nishiwaki and Clark. Statements of intended use do not
serve to distinguish structure over the prior art.
In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA
1974); In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706
(CCPA 1973); In re Casey, 370 F.2d 576, 580, 152 USPQ 235,
238 (CCPA 1967). Thus, because the devices of Nishiwaki and
Clark are capable of being used as broadly claimed, claim 1
does not define over these references. There is no need to
modify the structure of Nishiwaki or Clark to meet the
limitations of claim 1. Cf. In re Mills, 916 F.2d 680, 682,
16 USPQ2d 1430, 1432 (Fed. Cir. 1990) ("While Mathis'
apparatus may be capable of being modified to run the way
Mills' apparatus is claimed, there must be a suggestion or
motivation in the reference to do so."). A "new use of a
known process, machine, manufacture, composition of matter,
or material" must be claimed as a process. 35 U.S.C.
§ 100(b).
Appeal No. 96-1918
Application 08/196,931
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Clark discloses a housing 12, which detects
translational movement in an x direction and a y direction
like a mouse. A tower 62 is mounted on the housing 12 and
has a finger operated conveyor belt 64 with finger holes 74
for controlling the translation motion of an object on the
display of a computer with respect to a third translational
axis. Although it is difficult to judge scale, there are
five finger holes 74 illustrated in the conveyor belt 64,
which suggests that the tower 62 is "at least three fingers
of a human hand" in height. Since the tower 62 is upright,
the fingers may be curled around the tower when the "hand is
positioned perpendicularly to said base unit." The tower 62
could be used as a handle with three fingers wrapped around
it with the hand perpendicular to the base. Use limitations
do not impart structural features. Therefore, claim 1 does
not define structurally over Clark.
Nishiwaki, figure 6, discloses a grip case 35 attached
to a base plate 34 which contains a pickup coil 31 to sense
the coordinate position. The grip case 35 is described as
having a suitable width from 10 mm to 25 mm and a height
greater than its width to provide sufficient contact area
Appeal No. 96-1918
Application 08/196,931
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between the fingers of the hand and the lateral surfaces of
the grip case 35, thus reducing the force needed for
grasping (translation, page 8). The grip case 35
illustrated in figure 6 appears to have "sufficient length
and width to accommodate at least three fingers of a human
hand curled about it when the wrist of said human hand is
positioned perpendicularly to said base unit" as recited in
claim 1. The grip case 35 could be used as a handle with
the fingers wrapped around it with the hand perpendicular to
the base. Use limitations do not impart structural
features. Therefore, claim 1 does not define structurally
over Nishiwaki.
Appellant argues that "Clark does not teach or suggest
that his tower be used as a handle, where a user wraps at
least three fingers of his/her hand around it with his/her
wrist positioned perpendicularly to the housing, as
applicant is claiming" (Br4). It is true that Clark (and
Nishiwaki) do not teach that the tower 62 (or grip case 35
in Nishiwaki) were intended to be gripped with the fingers
as claimed. However, the "handle" limitation merely defines
an intended use for structure inherent in the devices of
Appeal No. 96-1918
Application 08/196,931
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Nishiwaki and Clark. Statements of intended use do not
serve to distinguish structure over the prior art when the
prior art structure can be used as claimed. Appellant does
not argue that the tower 62 of Clark and the grip case 35 of
Nishiwaki fail to meet the structural limitations of "having
sufficient length and width to accommodate at least three
fingers of a human hand curled about it when the wrist of
said human hand is positioned perpendicularly to said base
unit" or that the tower and grip case could not be used as a
handle as claimed. It is noted that claim 1 does not
recite: (1) any details of the shape of the handle; (2) the
amount of contact between the fingers and the handle; (3)
the placement of switches to be actuated by the fingers; or
(4) that gripping the handle with the wrist perpendicular is
the only way of gripping the device.
Appellant argues that the examiner erred in reasoning
that it would have been obvious to one of ordinary skill in
the art to use Clark's device "any way he want[s] such as
grab[bing] the tower with his right hand and insert[ing] the
index finger into the finger hole for controlling the
movement of the belt" (Advisory Action, Paper No. 8,
Appeal No. 96-1918
Application 08/196,931
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page 2). Appellant argues that the use of Clark's device in
this manner is physically impossible and "[a] physically
impossible use of a patented device, whether used alone or
in combination with another patented device (such as
Nishawaki [sic]), cannot properly be considered to be an
'obvious' use of a patented device" (Br5). We do not agree
with the examiner's reasoning, but this does not affect our
decision because the reasoning was unnecessary. Claim 1
does not require being able to manipulate the conveyor belt
or being able to operate switches. The tower 62 of Clark
and the grip case 35 of Nishiwaki are capable of being used
as handles with the fingers wrapped around them as claimed,
which is all that is required by claim 1.
Appellant argues (RBr2):
It is quite clear that Clark does not disclose, teach,
or suggest the use of tower 62 as a "handle", as
Appellant is claiming in claim 1. In fact, Clark
actually teaches away from such an interpretation, as
quoted above, since the user could only operate the
Clark device if his hand were parallel to base 12, and
could not therefore curl his fingers around tower 62.
If tower 62 were used as a "handle", as Appellant is
claiming in claim 1, the intended function of the Clark
device would be destroyed, as the user would be unable
to move the cursor in the third degree of freedom, and
would be unable to operate switch 52. Since the
intended function of the Clark device would be
destroyed with such a use, there is no technical
Appeal No. 96-1918
Application 08/196,931
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motivation for such a use, and a case of prima facie
obviousness cannot be made.
Claim 1 says nothing about operating the device or operating
a switch while the fingers are curled around the handle. As
long as the operator can use the tower 62 of Clark or the
grip case 35 of Nishiwaki as a handle, claim 1 is satisfied.
Appellant has not persuaded us of any error in the
examiner's rejection of claim 1. Accordingly, the rejection
of claims 1-10 is sustained.
Appeal No. 96-1918
Application 08/196,931
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 96-1918
Application 08/196,931
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