Ex Parte Yoon

Board of Patent Appeals and Interferences

Mar 11, 2008

10318217 (B.P.A.I. Mar. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SUNG-MIN YOON
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Appeal 2007-2991
Application 10/318,217
Technology Center 2600
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Decided: March 11, 2008
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Before ANITA PELLMAN GROSS, MAHSHID D. SAADAT,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-25, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant invented a computer system and a method of controlling the
same, in which a remote controller can be used as a wireless mouse without
any additional elements. (Spec. ¶0002). Appellant’s invention provides for
receiving the remote signals, determining whether a mouse mode is selected
Appeal 2007-2991
Application 10/318,217

for the remote controller, and changing the received remote signal into a
mouse message for performing the preset mouse function. (Spec. ¶0011).
Independent claims 1 and 21 are representative and read as follows:
1. A method of controlling a computer system, the
computer system comprising a remote controller having a plurality of
selection buttons and producing different remote signals according to
a selection of a user, and a system controller controlling the system in
response to the remote signal produced by the remote controller, the
method comprising:

setting up, by the system controller, a mouse function according
to the remote signals corresponding to the selection buttons of the
remote controller;

receiving, by the system controller, the remote signals from the
remote controller;

determining, by the system controller, whether the mode of the
remote controller is selected for a mouse mode; and

changing, by the system controller, the received remote signal
into a mouse message for performing the preset mouse function and
providing the mouse message to the system controller, upon
determining that the remote controller is employed in the mouse
mode.

21. A method, comprising:

receiving remote control signals from a remote controller;

converting the remote control signals into mouse signals when
in a mouse mode; and

controlling computer operations responsive to the mouse
signals.

The Examiner relies on the following prior art in rejecting the claims:
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Application 10/318,217

Partridge US 5,659,335 Aug. 19, 1997
Frederick US 5,990,868 Nov. 23, 1999

The Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Frederick and claims 21-25 under 35 U.S.C. § 102(b) as being
anticipated by Partridge.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of the Appellant and the
Examiner.
We reverse.

ISSUES
1. Under 35 U.S.C § 102(b), does Frederick have a disclosure
which anticipates the invention set forth in claims 1-20?
2. Under 35 U.S.C § 102(b), does Partridge have a disclosure
which anticipates the invention set forth in claims 21-25?

FINDINGS OF FACT
Frederick
1. Frederick shows a remote control input device in Figure 3
having a typical keypad layout similar to that of the standard television
remote control (col. 3, ll. 60-66).
2. Frederick provides for a four-directional keypad 42, a trackball
device 44, and mouse keypads 46 and 48 (col. 4, ll. 1-8).
3. In operating the remote as shown in Figure 4, Frederick
describes that when a mouse button has been pressed, the system transmits a
mouse button IR packet in block 66 to the computer 12 (col. 5, ll. 9-14).
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Application 10/318,217

Partridge
4. Partridge provides for a computing interface system including a
mouse with a keypad, and a computer display that displays a group of icons
having a one-to-one correspondence and the same relative positioning to the
keys composing the mouse’s keypad (Abstract).
5. Partridge shows the details of the keypad and the other keys on
mouse 16 in Figures 2 and 3 and discloses that if mouse 16 is to be used in a
conventional point and click mode, switches 42 of the keypad are interpreted
in the same manner as a conventional mouse, that is, the activation of keys
labeled “1”, “2,” and “3” are interpreted as the left, center, and right buttons,
respectively, of a conventional mouse (col. 2, ll. 20-25).
6. Partridge discloses that pressing keys 44 and 46 simultaneously
changes the way computer 10 interprets keys 42 so that mouse 16 may be
used in the keypad mode, wherein pressing keys 44 and 46 simultaneously
again causes computer 10 to interpret keys 42 such that mouse 16 may be
used in a conventional point and click mode (col. 2, ll. 26-36).

PRINCIPLES OF LAW
A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference. See In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).

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ANALYSIS
1. The Rejection of Claims 1-20
Appellant and the Examiner disagree as to whether the signal received
from the remote control input device of Frederick is changed into a mouse
message for performing the preset mouse functions, as recited in claim 1.
Appellant contends that Frederick has no “mouse mode” since Frederick
includes extra buttons on the remote control for the functions that are
associated with the mouse or the other computer functions in addition to the
regular buttons (App. Br. 9).
The Examiner argues that the claim is not specifically limited to
changing the remote signals into mouse data by pressing an alphanumerical
key rather than one having a mouse function (Ans. 8). The Examiner further
asserts that Frederick meets the limitation of changing the received remote
signal, as it teaches converting the remote signal from an IR signal into a
mouse message in the form of a digital signal to be applied to a computer for
performing mouse functions (id.).
Appellant responds that the incoming IR signal and the outgoing
digital signals would still both be mouse signals, but carried on different
kinds of waves. (Reply Br. 2). Appellant further argues that since the
remote control in Frederick sends mouse data packets, Frederick has no need
for changing the received remote signal into a mouse message (Reply Br. 2-
3).
We agree with Appellant that the remote control input device of
Frederick has dedicated mouse keys (FF 2) that are incorporated in a
standard configuration of the input device (FF 1). We also disagree with the
Examiner’s position that converting an IR mouse signal into a digital signal
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to be used by the computer system in Frederick is the same as the claimed
‘changing the received remote signal into a mouse message.’ Appellant’s
Specification describes the mouse mode as when “the remote controller 10
can be used as a wireless mouse” when the mode of the remote controller 10
is converted into a mouse mode (Spec. ¶0031). Thus, a signal sent by the
remote controller in the mouse mode will be a mouse message.
As argued by Appellant, the Examiner’s characterization of
converting signals from IR to electrical signals as “changing, by the system
controller, the received remote signal into a mouse message” is not
reasonable when the claims are considered as a whole and in light of the
Specification. The claims require changing the received remote signal into a
mouse message upon determining that a mouse mode is selected, which is
different from converting the carrier of the signal. We also agree with
Appellant that in Frederick there is no need to change to a mouse mode,
since dedicated keys (which always send mouse messages) are already
placed on the remote control input device (FF 2).
On the record before us, we find that the Examiner has failed to make
a prima facie case that Frederick anticipates claim 1 or other independent
claims 6, 9, 10, 12, and 19 which include similar limitations. Therefore, in
view of our analysis above, the 35 U.S.C. § 102(b) rejection of claims 1-20
as anticipated by Frederick cannot be sustained.

2. The Rejection of Claims 21-25
Appellant contends that Partridge does not rely on remote control
signals and merely uses a mouse with a key pad having a one-to-one
correspondence to a group of icons displayed on a computer display (App.
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Br. 29). Appellant further argues that Partridge has no need to convert the
remote control signals into mouse signals, since although they affect the way
the mouse signals are interpreted, the signals are still mouse signals and
already track the mouse movement (App. Br. 30).
The Examiner again interprets the conversion of the signal carrier to
digital signals for the computer as the claimed converting the remote signals
into mouse signals (Ans. 9). The Examiner argues that if Partridge does not
convert the remote control signals related to the activation of numerical keys
or the IR signal, the computer cannot perform a mouse function (id.).
Appellant argues that Partridge does not have remote signals and that
every signal sent to the computer is already a mouse signal which does not
need to be converted (Reply Br. 4). Appellant also points out that
converting a mouse signal from infrared format to other types of signals
does not amount to converting a remote signal into a mouse signal, and is
merely a change in the waveform or the signal carrier (Reply Br. 5-6).
Based on our review of Partridge, we again agree with Appellant that
the reference includes no remote control input device and is merely directed
to a mouse (FF 4). Whether the mouse is used in the conventional point and
click mode, or in keypad mode, the signals sent to the computer are mouse
signals (FF 5-6). Partridge merely changes the interpretation of the signal
sent from mouse 16 and requires no conversion to a mouse signal in either
mode, since both modes output mouse signals.
Similar to our analysis made above regarding Frederick, we also
disagree with the Examiner that converting the signal carrier from IR to
electrical or digital is the same as the claimed ‘converting the remote control
signal into a mouse signal.’ As such, Partridge cannot anticipate
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independent claim 21, as well as independent claims 23 and 25 which
include similar limitations. Therefore, the 35 U.S.C. § 102(b) rejection of
claims 21-25 as anticipated by Partridge cannot be sustained.

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ORDER
The decision of the Examiner rejecting claims 1-25 under 35 U.S.C.
§ 102 is reversed.

REVERSED

tdl/gw

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