Ex Parte Tai et al

Patent Trial and Appeal Board

Feb 11, 2013

11136883 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LI CHONG TAI, CHIANG SUN CHEAH, and
HUN KWANG LEE
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Appeal 2010-009943
Application 11/136,883
Technology Center 2600
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 4-21. Claim 3 has been canceled, and claim 18
is objected to as being allowable but dependent upon a rejected claim (see
Advisory Action mailed December 29, 2009, Section 7 of action cover
sheet).2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appellants’ Disclosed Invention
Appellants disclose a user input device such as a mouse, joystick,
puck, or other pointing device that re-centers the device using magnetic
forces instead of a mechanical spring (Spec. ¶¶ [0001], [0002], [0004]-
[0007]; Abs.; Title).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. An apparatus, comprising:

a base;

a puck movably disposed in an area of the base, the puck
movable in a generally planar region within the area of the base
in directions lateral to an axis perpendicular to the planar
region;

1 Throughout our decision, we make reference to the Appeal Brief filed
March 11, 2010 (“App. Br.”), the Examiner’s Answer mailed April 22, 2010
(“Ans.”), and the Reply Brief filed June 22, 2010 (“Reply Br.”).
2 Appellants incorrectly state that no claims are objected to (see App. Br. 4),
since claim 18 is objected to in the Advisory Action mailed December 29,
2009. The obviousness rejection of claim 18 has been withdrawn by the
Examiner (Ans. 3).
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a first magnet system fixedly coupled to the puck,
wherein the first magnet system comprises a first magnet;

a second magnet system fixedly coupled to the base,
wherein the second magnet system comprises a second annular
magnet, wherein the first magnet is disposed within a center of
the second annular magnet and within a plane of the second
annular magnet, the first and second magnet systems to
generate mutually repulsive forces in a lateral direction
substantially parallel to the planar region, the first and second
magnet systems interacting with each other with a resultant
lateral magnetic force of zero exerted upon the puck with
respect to the base when the puck is centered within the area
and with a resultant non-zero centrally-directed lateral repulsive
magnetic force exerted upon the puck when the puck is not
centered within the area, wherein the resultant lateral repulsive
magnetic forces tend to maintain the puck centered within the
area; and

a transducer system responsive to movement of the puck
with respect to the base, wherein the transducer system is
located below the plane of the second annular magnet and at
least partially directly below the first magnet so that the first
magnet moves over the transducer system in response to
movement of the puck.

Examiner’s Rejections
(1) The Examiner rejected claims 1, 2, 4-7, and 17, 19, and 20 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Maatta
(US 2002/0093328 A1), Takatsuka (WO 2004/066138 A1), and Endo (US
6,670,946 B2).3 Ans. 5-12.

3 Although the Examiner indicates that claim 3 is rejected (Ans. 2 and 5),
claim 3 has been canceled, therefore we consider this to be harmless error
and treat the obviousness rejection over Maatta, Takatsuka, and Endo as
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(2) The Examiner rejected claims 8-16 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Maatta, Takatsuka, and Harley
(US 2005/0110754 A1). Ans. 12-14.
(3) The Examiner rejected claim 21 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Maatta, Takatsuka, Endo, and
Harley. Ans. 15.
Appellants’ Contentions4
As to claim 1, Appellants argue in the Appeal Brief that the
Examiner’s rejection lacks a rational underpinning (App. Br. 11-17).
Appellants also contend that the Examiner erred in rejecting claim 1
for numerous reasons, including:
(1) Takatsuka’s repulsive force magnet arrangement cannot be used in
Maatta’s device to facilitate perpendicular movements because (a) it is not
related to perpendicular movement, and (b) Takatsuka’s projection 26 and

applying only to claims 1, 2, 4-7, 17, 19, and 20 (note also that the rejection
of claim 18 has been withdrawn by the Examiner at pages 3 and 4 of the
Answer.
4 Separate patentability is not argued for any of claims 2, 4-7, and 17, 19,
and 20. Appellants argue claims 1, 2, 4-7, 17, 19, and 20 as a group (App.
Br. 8-17; Reply Br. 4-13), relying on the arguments presented as to claim 1
for the patentability of claims 2, 4-7, 17, 19, and 20 (App. Br. 17).
Appellants argue claims 2, 4-7, and 17, 19, and 20, as well as the rejections
of claims 8-16 and 21, for the same reasons presented as to claim 1 (App.
Br. 17). Accordingly, we consider claim 1 to be representative of the group
of claims consisting of claims 1, 2, 4-7, 17, 19, and 20, and we will decide
the appeal of claims 8-16 and 21 on the same basis as claim 1. Our analysis
will only address the merits of claim 1, and claims 2, 4-17, 19, 20, and 21
will not be further addressed other than our ultimate conclusions.
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gap 27 cause the perpendicular movement, and not the magnets (App. Br.
11-13);
(2) Takatsuka’s repulsive force magnet arrangement does not allow
perpendicular movements and therefore cannot be used in Maatta’s device
(App. Br. 12-13);
(3) combining Takatsuka’s repulsive force magnets with Maatta’s
attractive force magnets would change Maatta’s operational principles and
would thus require substantial reconstruction and redesign because it would
cause Maatta’s puck to separate from the rest of the device (App. Br. 13-14);
(4) Maatta teaches away from the modification and from the use of
Takatsuka’s repulsive force magnets (App. Br. 14-15) (although Appellants
admit that Maatta does not explicitly teach away from using repulsive force
magnets – see App. Br. 15); and
(5) modifying Maatta would render Maatta’s device unsatisfactory for
its intended purpose, and would prevent its puck from staying centered thus
making it difficult for a user to input a navigational movement (App. Br. 15-
17).
For the first time in the Reply Brief, Appellants argue (Reply Br. 12-
13) the merits of Endo and the combination of Maatta and Takatsuka with
Endo.5 We consider such arguments to be untimely and not necessitated by

5 “Any bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam
Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.”) (citation omitted). Any
new arguments in the Reply Brief not presented in the Appeal Brief will not
be considered “absent a showing of good cause” why the arguments could
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any new findings or determinations in the Answer. Additionally, Appellants
present similar arguments in the Reply Brief as to contentions (2)-(5)
covered above with regard to the Appeal Brief, and added some additional
bases for these arguments (e.g., hindsight, Reply Br. 7; different flux
distribution, Reply Br. 9). These arguments and additional bases are also
untimely and are not necessitated by any new findings or determinations in
the Answer.
Issue on Appeal
Based on Appellants’ arguments, the following single issue is
presented for appeal:
Did the Examiner err in rejecting claims 1, 2, 4-7, 17, 19, and 20 as
being obvious because Maatta, Takatsuka, and Endo are (1) not properly
combinable, and/or (2) the combination of Maatta, Takatsuka, and Endo fails
to teach or suggest the limitations of representative claim 1 at issue?
The determination of the issue regarding representative claim 1 will
similarly determine the appeal with respect to the rejection of (1) claims 8-
16 as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Maatta, Takatsuka, and Harley, and (2) claim 21 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Maatta, Takatsuka, Endo, and
Harley.

not have been presented in the Appeal Brief. See Borden, 93 USPQ2d at
1477.

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
Common sense teaches that familiar items may have obvious uses
beyond their primary purposes, and persons of ordinary skill can often fit the
teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S.
at 420. Thus, it is not necessary that the references be physically
combinable, without change, to render obvious the invention under review.
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted). The
criteria instead is what these references “would have meant to a person of
ordinary skill in the field of the invention.” In re Gorman, 933 F.2d 982,
986 (Fed. Cir. 1991) (citation omitted).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 9-17) and the Reply Brief (Reply
Br. 6-15) that the Examiner has erred. We disagree with Appellants’
conclusions. With regard to claim 1, we adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Examiner’s
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Answer in response to Appellants’ Appeal Brief (see Ans. 5-22). We concur
with the conclusions reached by the Examiner.
We agree with the Examiner’s response at pages 17-21 of the Answer,
that bodily incorporation of the references is not required, and that
combining Maatta, Takatsuka, and Endo would have been obvious and
would teach or suggest the features of claim 1. We also agree with the
Examiner (Ans. 18-19) that replacing Maatta’s magnet systems with the
magnet arrangement taught by Takatsuka will provide perpendicular
movement and still allow the sensors to detect movement of the magnets in
order to provide input to the system (Ans. 19). We find the Examiner is also
correct that Maatta (i) does not teach away from the modification, (ii)
describes using attractive forces, and (iii) does not teach that repulsive forces
cannot be used6 (Ans. 20).
An obviousness determination does not require that the underlying
teachings of the references be physically combinable without modification.
Sneed, 710 F.2d at 1550. Specifically, it is not necessary to find precise
teachings in the prior art directed to the specific subject matter claimed
because inferences and creative steps that a person of ordinary skill in the art
would employ can be taken into account. KSR, 550 U.S. at 418. We find
the Examiner’s reasoning as to the obviousness of claim 1 to be credible.
One skilled in the art would have been able to replace Maatta’s attractive
force magnet arrangement with Takatsuka’s repulsive force magnet
arrangement. Further, one skilled in the art would have been able to (i)
center the modified puck using the repulsive magnetic forces as taught by

6 Notably, Appellants admit that “Maatta does not explicitly teach away from
the use of repulsive forces” (App. Br. 15).
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Takatsuka to increase functionality of input operations by allowing
perpendicular and lateral movement (Ans. 8-9), and (ii) locate the transducer
system below the magnets in view of Endo’s teachings “in order to allow for
more accurate movement detection which saves space” (Ans. 9).
We do not agree with Appellants’ arguments (App. Br. 13-17; Reply
Br. 8-11) that modifying the puck and magnet systems of Maatta in view of
Takatsuka’s centering magnetic puck with repulsive magnetic forces, and
Endo’s placement of a transducer system below a plane of the second
magnet, would destroy the essential function of Maatta’s puck which uses
attractive magnetic forces. The Examiner’s modification of Maatta with
Takatsuka’s repulsive force magnet arrangement is based on replacing
Maatta’s attractive force magnet arrangement with Takatsuka’s repulsive
force magnet arrangement (Ans. 17-19). Appellants’ argument (App. Br.
14) that using repulsive force magnets in a system having attractive force
magnets would require substantial reconstruction and redesign of Maatta’s
system/elements is misplaced, since the attractive force magnet arrangement
of Maatta would obviously be replaced by the repulsive force magnet
arrangement of Takatsuka. To the contrary, we agree with the Examiner
(Ans. 20-21) that Maatta’s modified puck input device would still allow
inputs to be generated as per its intended purpose, and would generate inputs
related to repulsive forces of magnets as taught by Takatsuka.
Assuming, arguendo, Appellants’ arguments in the Reply Brief
regarding Endo are properly before us, Appellants’ contentions (Reply Br.
12-13) that modifying Takatsuka with Endo “would deteriorate the
performance of the magnetic arrangement as taught by Takatsuka” and
reduce the accuracy of Takatsuka’s sensors are unpersuasive.
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In view of the foregoing, Appellants have not sufficiently shown that
the Examiner erred in finding that (i) it would have been obvious to modify
Maatta with the teachings of Takatsuka and Endo, or (ii) the combination of
Maatta, Takatsuka, and Endo teaches or suggests the apparatus recited in
claim 1. Accordingly, we will sustain the obviousness rejection of
representative claim 1 based upon the combined teachings and suggestions
of Maatta, Takatsuka, and Endo, as well as claims 2, 4-7, 17, 19, and 20
which all ultimately depend from claim 1.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claim 1 as being obvious,
because (a) Maatta, Takatsuka, and Endo are properly combinable, or (b) the
combination of Maatta, Takatsuka, and Endo teaches or suggests the
limitations of claim 1 at issue.
(2) Appellants have not established that the Examiner erred in
rejecting: (i) claims 1, 2, 4-7, 17, 19, and 20 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Maatta, Takatsuka, and Endo;
(ii) claims 8-16 as being unpatentable under 35 U.S.C. § 103(a) over the
combination of Maatta, Takatsuka, and Harley; or (iii) claim 21 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Maatta,
Takatsuka, Endo, and Harley.
(3) The Examiner has not erred in rejecting claims 1, 2, 4-17, and 19-
21 as being unpatentable under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejections of claims 1, 2, 4-17, and 19-21 under 35
U.S.C. § 103(a) are affirmed.
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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