Ex parte URE

Board of Patent Appeals and Interferences

May 24, 1999

08207469 (B.P.A.I. May. 24, 1999)

Application for patent filed March 7, 1994.1
1
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publication in a law journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. URE
__________
Appeal No. 96-1347
Application 08/207,4691
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ON BRIEF
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Before KRASS, LEE and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of Claims 4,
7-9, 12-14, and 16-19. The other claims remaining in the
application are Claims 10, 11, and 15, which have been
indicated as directed to patentable subject matter.
Claim 4 reads as follows:
Appeal No. 96-1347
Application 08/207,469
2
4. Using an input device having a touch-sensitive
stationary member, a method of interacting with a computer
having a display and displaying an icon, the method comprising
the step of:
moving a fingertip across said member while a user’s
thumb is applied to said member; and
sensing said fingertip and said thumb by means of said
touch-sensitive stationary member in order to drag said icon
across said display.
The examiner’s Answer cites the following prior art:
Bequaert et al. (Bequaert) 4,042,777 Aug. 16, 1977
Logan et al. (Logan) 5,327,161 Jul. 5, 1994
Savoy et al. (Savoy) 5,341,133 Aug. 23, 1994
OPINION
Claims 4 and 7 stand rejected under 35 U.S.C. § 103 as
unpatentable over Logan. Claims 8, 9, 12-14, and 16 stand
rejected under 35 U.S.C. § 102 as anticipated by Bequaert.
Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable
over Bequaert. Claims 18 and 19 stand rejected under 35
U.S.C. § 103 as unpatentable over Savoy in view of Bequaert.
We reverse.
Claim 4
Appeal No. 96-1347
Application 08/207,469
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Claim 4 requires “sensing said fingertip and said thumb.”
The examiner acknowledges that Logan does not teach sensing
the thumb, but offers alternative theories for obviousness.
First, the examiner posits that a skilled artisan would
have moved Logan’s button to avoid accidental actuation.
However, the examiner cites no basis in the prior art for such
a suggestion. The mere fact that the prior art may be
modified in the manner suggested by the examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). Finding no such suggestion in the prior art, we will
not adopt the examiner’s rationale.
Second, the examiner points to Logan’s disclosure of
using the opposite hand to hold down the device. The examiner
states that this suggests sensing the thumb. While this may
be a plausible interpretation of “sensing,” it is inconsistent
with the disclosure in this case, which describes sensing the
thumb as distinct from sensing any other finger. Thus, we
cannot sustain the examiner’s rejection of Claim 4.
Claim 7
Appeal No. 96-1347
Application 08/207,469
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Claim 7 recites varying the distance a cursor is moved in
accordance with the number of fingertips moved across the
device. The examiner dismisses that limitation as lacking in
criticality. To the contrary, the invention as a whole
includes the variable distance feature, which is not suggested
by Logan. Thus, the rejection of Claim 7 is not sustained.
Claims 8, 9, 12-14, 16, and 18-19
The inventions of claims 8, 9, 12-14, 16, and 18-19 sense
different numbers of fingers and/or combinations of fingers to
input different characters into a computer. Bequaert senses
different combinations of keys (or fixed positions in a touch
sensor) to input different characters. The examiner finds no
difference, whereas appellants argue that sensing fingers is
different than sensing key positions.
Claims undergoing examination are given their broadest
reasonable interpretation consistent with the specification,
and limitations appearing in the specification are not to be
read into the claims. In re Etter, 756 F.2d 852, 858, 225
USPQ 1, 5 (Fed. Cir. 1985) (in banc). In the present case,
the disclosure makes clear that sensing fingers is distinct
from sensing the depression of keys or positions. As shown in
Appeal No. 96-1347
Application 08/207,469
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Figure 3, it is the fingers themselves, not finger-actuated
buttons, that are sensed by appellants’ invention. In light
of the disclosure, we agree with appellants. The rejection
will not be sustained.
Claim 17
Claim 17 specifies that the touchpad is void of visual
indications indicating distinct keys. According to the
examiner, it would have been obvious to omit the labels on
Bequaert’s keys in order to reduce cost. This rationale is
not found in the prior art as required by Fritch, and would
seriously reduce the usefulness of Bequaert’s system.
Accordingly, the rejection will not be sustained.
CONCLUSION
The rejections are not sustained.
REVERSED
ERROL A. KRASS )
Appeal No. 96-1347
Application 08/207,469
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Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMESON LEE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
JTC/kis
Michael J. Ure
3000 Sand Hill Road
Building 4, Suite 160
Menlo Park, CA 94025