Ex parte Wambach

Board of Patent Appeals and Interferences

Jan 12, 2000

08382926 (B.P.A.I. Jan. 12, 2000)

Application for patent filed February 02, 1995.1
According to appellant, this application is a division of
07/807,197, filed December 16, 1991.
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(2) is not binding precedent of the Board.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 MARK L. WAMBACH
________________
Appeal No. 1997-0800
Application 08/382,9261
________________
ON BRIEF
________________
Before THOMAS, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
Appeal No. 1997-0800
Application No. 08/382,926
2
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 21 through 30, all claims pending in this
application. The invention relates to a computer
mouse glove. In one embodiment of the invention, left-right
movement of the wrist controls the horizontal component of a
cursor movement in a video display, while up-down movement of
an index finger controls the vertical component of a cursor
movement. Additional sensors permit other fingers to control
“click” buttons on the hand-worn device for implementing the
select and drag functions.
Representative independent claim 21 is reproduced as
follows:
21. A computer mouse for controlling movement of a
cursor in a video display in at least first and second
opposing directions, comprising:
a glove-like apparel having at least one finger
joint and a finger, said finger being rotatable about said
joint from an initial rotational position in opposing first
and second directions through first and second rotated
positions respectively;
a microswitch apparatus mounted on said glove-
like apparel near said finger joint and having first and
second ON states occuring while said finger remains rotated
from said initial rotational position through at least a
Appeal No. 1997-0800
Application No. 08/382,926
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corresponding one of said first and second rotated positions;
a circuit connected to said microswitch
apparatus for converting an ocurring one of said first and
second ON states of said microswitch apparatus to a command
signal to move said cursor in a corresponding one of said
first and second directions for a duration of said ocurring ON
state.

The Examiner relies on the following references:
Robinson, II 4,613,139 Sep. 23, 1986
Kramer et al.(Kramer) 5,280,265 Jan. 18, 1994
(filed Dec. 10,
1990)
Darroch Canada No.1,245,782 Nov. 29, 1988

Claims 26 and 27 stand rejected under 35 U.S.C. §
103 as being unpatentable over Robinson in view of Darroch.
Claims 21 through 25 and 28 through 30 stand
rejected under 35 U.S.C. § 103 as unpatentable over Robinson
in view of Darroch and Kramer.
A 35 U.S.C. § 112, second paragraph, rejection of
claim 27 has been withdrawn by the Examiner upon entry of an
amendment. A rejection of all pending claims for obviousness-
type double patenting has been withdrawn due to the filing of
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Application No. 08/382,926
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a terminal disclaimer.
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief and answer for
the respective details thereof.
OPINION
After a careful review of the evidence before us, we
will not sustain the rejection of claims 21 through 30 under
35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions.
In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir.
1983). "Additionally, when determining obviousness, the
claimed invention should be considered as a whole; there is no
Appeal No. 1997-0800
Application No. 08/382,926
5
legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37
USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W. L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)).
With regard to the rejection of claims 26 and 27
under 35 U.S.C. § 103 as being unpatentable over Robinson in
view of
Darroch, Appellant argues on pages 4 and 5 of the brief that
Darroch does not allow a user to type on a keyboard when
wearing its device, that only Appellant uses velocity
commands, and that Appellant’s translation of commands is so
simple that command translation is done on the glove itself.
These arguments fail at the outset because they are
not based on limitations appearing in the claims. Thus,
ability to use a keyboard with the glove on, use of velocity
commands and where command translation is performed are
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Application No. 08/382,926
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immaterial. See
In re Self, 671 F.2d 1344, 1350, 213 USPQ 1, 5 ((CCPA 1982).
The Examiner has combined Robinson with Darroch
stating that Robinson teaches all the claimed elements, except
the sensing apparatus (16a-16e, 18a-18b) is not disposed near
a finger joint. And, since Darroch teaches an input device
with a finger direction sensor (10) near a finger joint, it
would have been obvious to have modified Robinson with Darroch
since they both control movement of a cursor with finger
movement and mounting the sensor near a finger joint would
allow an operator’s hand to remain in a typing position while
the operator moves a finger to control cursor movement.
(Answer-pages 2 and 3.)
Appellant argues:
Robinson teaches sensing whether individual
fingertips have been pressured to control mouse
movement direction. Darroch teaches sensing the
absolute position of a finger to control cursor
movement. The Examiner then makes a leap in logic
to say that fingertip contact sensing (Robinson)
plus absolute finger position sensing (Darroch)
equals finger direction or finger joint rotation
sensing. (Brief-page 5.)
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We agree with Appellant. The Examiner admits that
Robinson does not teach the claimed sensor at a finger joint.
Although Darroch may be interpreted as sensing movement of a
finger joint, by monitoring different finger positions, its
optical finger position sensor is totally different than
Robinson’s fingertip contacts. To use Darroch with Robinson,
one would have to through out just about everything on
Robinson’s glove and mount Darroch’s device on a glove finger.
We see no motivation to do so, without the hindsight of
Appellant’s disclosure. Even if one were to combine Robinson
and Darroch, we find that the following limitation of claim 26
would not be met,
sensing apparatus mounted on said glove-
like apparel near said finger joint and having first
and second states indicative of rotation of said
finger in a corresponding one of said first and
second directions; (emphasis added)
because Darroch does not have two states indicative of two
directions. Also, the combination of references would not
meet the following limitation of claim 21,
a microswitch apparatus mounted on said
glove-like apparel near said finger joint and having
first and second ON states occuring while said
finger remains rotated from said initial rotational
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Application No. 08/382,926
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position through at least a corresponding one of
said first and second rotated positions; (emphasis
added)

because Darroch does not have two ON states, an initial
position, and two corresponding rotated positions.
Kramer does not supply these missing limitations
since it was cited for its “direction sensor” (answer-page 4)
and it is unclear how one would combine Kramer with Robinson
and Darroch. Darroch has been used to replace Robinson’s
fingertip switches, 16a-16e, and now Kramer is proffered by
the Examiner to replace the same switches, 16a-16e. If Kramer
now replaces switches
16a-16e, what happens to Darroch?
The Federal Circuit states that "[t]he 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), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
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Application No. 08/382,926
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or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13.
As pointed out above, we see no motivation to
combine the cited references, nor how any resulting
combination would meet the limitations of Appellant’s two
independent claims. Thus
we will not sustain the Examiner’s rejection of claims 21 and
26. Likewise, since the remaining claims on appeal also
contain the above limitations, we will not sustain the
Examiner’s rejection of claims 22 through 25 and 27 through
30.
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Application No. 08/382,926
10
We have not sustained the rejection of claims 21
through 30 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED

James D. Thomas )

Administrative Patent Judge )
)
)
) BOARD OF
PATENT
Michael R. Fleming )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Stuart N. Hecker )
Administrative Patent Judge )
Appeal No. 1997-0800
Application No. 08/382,926
11
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