Ex Parte Thomas

Board of Patent Appeals and Interferences

Feb 28, 2003

08960236 (B.P.A.I. Feb. 28, 2003)

1 The Oral Hearing scheduled for July 10, 2002 was waived by appellants
in a communication, received via facsimile, on June 3, 2002.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERIC ANTHONY THOMAS
____________
Appeal No. 2001-0526
Application No. 08/960,236
____________
ON BRIEF1
____________
Before FLEMING, BLANKENSHIP, and LEVY, Administrative Patent
Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-10 and 13-15, which are
all of the claims pending in this application.

Appeal No. 2001-0526
Application No. 08/960,236
Page 2
BACKGROUND
Appellant's invention relates to a method, apparatus, and
computer program product for providing user input to an
application using a contact-sensitive surface. An understanding
of the invention can be derived from a reading of exemplary claim
1, which is reproduced as follows:
1. A method of providing user input to an application
resident on a data processing system, the method
comprising the steps of:
contacting a contact-sensitive surface of a user
input device with an implement configured to produce a
contact point configuration including at least one
contact point;
identifying the contact point configuration;
identifying a user input mode based on the
identified contact point configuration; and
processing the at least one contact point in the
application based on the identified user input mode.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Verrier et al. (Verrier) 5,475,401 Dec. 12, 1995
Claims 1-10 and 13-15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Verrier.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejection,
Appeal No. 2001-0526
Application No. 08/960,236
Page 3
we make reference to the examiner's answer (Paper No. 12, mailed
June 1, 2000) for the examiner's complete reasoning in support of
the rejection, and to appellant's brief (Paper No. 11, filed May
1, 2000) and reply brief (Paper No. 14, filed July 14, 2000) for
appellant's arguments thereagainst. Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered. See 37 CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of anticipation relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer. Upon consideration
of the record before us, we reverse.
We note at the outset that the arguments presented by
appellant (brief, pages 3, 4, 6, and 7) with respect to
Appeal No. 2001-0526
Application No. 08/960,236
Page 4
obviousness are misplaced as the sole ground of rejection applied
against all of the claims on appeal is under 35 U.S.C. § 102(b).
Appellant states (brief, page 4) that the arguments focus on
the following recitations from claim 1:
contacting a contact-sensitive surface of a user
input device with an implement configured to produce a
contact point configuration;
identifying the contact point configuration[;]
identifying a user input mode based on the
identified contact point configuration;[emphasis
original.]
It is argued (brief, page 5) that tablet 22 of Verrier is not
sensitive to contact because the tablet detects a data stream
transmitted from the antenna 48 of the stylus 20 to the tablet.
It is further argued (id.) that Verrier does not disclose or
suggest identifying a contact point configuration because Verrier
does not produce contact point configurations and does not
disclose the ends of the stylus as having different
configurations.
The examiner's position (answer, page 3) is that Verrier
discloses contacting a tablet of a digitizing display with a
stylus by pressing the tip of the stylus on the tablet where the
tablet is configured to produce pressure sensing data and has a
writing end and an erasing end. The examiner additionally (id.)
takes the position that the contact point configuration is
Appeal No. 2001-0526
Application No. 08/960,236
Page 5
identified by identifying the signals from the erasing or writing
pressure detector, and that the write and erase modes are
identified by the received pressure signal.
From our review of Verrier, we find that Verrier is directed
to a pen-based computer system including a stylus having a
contact detection mechanism and a radiative pickup position
detector on both ends of the stylus (col. 3, lines 9-11). The
first end of the stylus is used for writing data into the system.
The opposite end of the stylus is used for erasing data (col. 3,
lines 11-13). The stylus includes a mechanical contact detecting
branch 24 and a position detecting branch 26 (col. 5, lines 12-
16). A digitizing display includes an electrostatic tablet 54
which radiates electromagnetic radiation which is detected by the
first X-Y position sensing transducer in the stylus when it is
oriented proximate the tablet (col. 3, lines 32-36). The signals
radiated from conductors 56, 58 of the tablet 54 are detected by
antenna 29 of the position detecting branch 26 (col. 6, lines
5-8). Signal strength detector 32 receives X-Y position
information and Z separation from antenna 29 (col. 6, lines
51-53). As shown in figures 7A and 7B (See also col. 11,
lines 5-58), the calibration process for the embodiment of
Appeal No. 2001-0526
Application No. 08/960,236
Page 6
figure 2C includes performance of a touch down of the write tip 4
on the display at a predetermined location X0, Y0, Z0 during
calibration. In step 232 the user touches down the erase tip 4'
on the display 54. In step 236, the output from the sphere
antenna 29' is recorded. Verrier further discloses (col. 12,
lines 27-30) “measuring a first radiative pickup signal strength
in said first set of input signals from said first antenna in
said write end while mechanically contacting said digitizing
display.”
From the disclosure of Verrier that the signals radiated
from the conductors 56, 58 represent the relative X-Y position of
the stylus and the Z separation over the tablet 54, we find a
suggestion that the tablet is sensitive to position over the
tablet, as opposed to being sensitive to contact with the tablet.
However, from the disclosuree of Verrier that the tablet
conductors can detect a touch down of the stylus 20 on the tablet
54, and radiate electromagnetic signals which can be picked up by
antenna 29 of the position detecting branch, we find that the
surface of the tablet (see figure 5) is contact sensitive to a
touch down of the stylus. In addition, we find that the contact
point configuration is the configuration of the contact of the
stylus contact portions 38, 38' with the surface of the tablet at
Appeal No. 2001-0526
Application No. 08/960,236
Page 7
a X-Y location. We further find that the contact point
configuration is identified because Verrier discloses that during
initialization of the writing end of the stylus, the X-Y location
and the Z separation values for the stylus for the writing end of
the stylus 20 have their measured values depend on the particular
stylus geometry and the overlay geometry of the tablet (col. 10,
lines 22-31). Since the position detection is based in part upon
the stylus geometry, the contact point configuration during a
touch down of the stylus is inherently identified in order for
the position signals to be radiated from the conductors of the
tablet, which in turn are picked up by antenna 29.
With respect to the limitation “identifying a user mode
based on the identified contact point configuration" we note that
the user modes disclosed by Verrier are “write" and “erase." In
Verrier, the user modes are determined by the signals supplied to
antenna 62 by the write and erase circuitry of the stylus.
Because the shape of the contact portions 38, 38' for the write
and erase contact portions of the stylus have the same
configuration, the user input mode cannot be based upon the
identified contact point configuration.
We are not persuaded by the examiner's assertion (answer,
page 4) that the limitation is met by Verrier's identifying the
Appeal No. 2001-0526
Application No. 08/960,236
Page 8
erase and write modes based on which pressure signal is received.
We agree that the identification of the different pressure
signals identifies a user mode based upon the identified contact
point. However, the claim requires more. The claim requires
that the user input mode is identified based upon the identified
contact point configuration. Although the contact point
configuration is identified by the stylus geometry producing
measured values of the X-Y position and Z separation, the
configuration of the contact point cannot determine the user mode
as the contact point configurations are the same for both the
write and erase modes; i.e., because there is only one contact
point configuration and two different user input modes, the user
input mode cannot be identified by the contact point
configuration.
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of claim 1.
Independent claims 8 and 13 similarly require identifying a user
input mode based on the identified contact point. Accordingly,
the rejection of claims 1-10 and 13-15 under 35 U.S.C. § 102(b)
is reversed.
Appeal No. 2001-0526
Application No. 08/960,236
Page 9
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-10 and 13-15 under 35 U.S.C. § 102(b) is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
SSL/vsh
Appeal No. 2001-0526
Application No. 08/960,236
Page 10
ROBERT M. MEEKS
MYERSBIGEL, SIBLEY & SAJOVEC
P.O. BOX 34728
RALEIGH, NC 27627