Ex Parte Battles et al

Patent Trial and Appeal Board

Mar 26, 2013

11262584 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AMY E. BATTLES, NORMAN C. PYLE, and
MARK J. BIANCHI
____________________

Appeal 2010-011539
Application 11/262,584
Technology Center 2600
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Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
14–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Illustrative Claims
The disclosure relates to a viewing device in which a stylus is moved
relative to a touch pad.
Claims 14 and 18 are illustrative and are reproduced below:
14. A method of rotating an image displayed on a display
device, said method comprising:
displaying a reference line disposed at an angle selected
by a user on the display; and
moving a stylus relative to an annular touch pad located
on said viewing device,
wherein the amount of movement corresponds to the
amount of rotation of said image.

18. A method of viewing video on an imaging device, said
method comprising:
moving a stylus relative to a touch pad located on said
imaging device, wherein said touch pad is divided into a
plurality of sections based on a length of the video; and
changing a displayed video frame whenever said stylus
moves from one of said plurality of sections of said touch pad
to another of said plurality of sections of said touch pad.

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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Van De Streek
Fadell
Jarrett
Branton
Mussack
US 2002/0186234 A1
US 2004/0224638 A1
US 2005/0198590 A1
US 2006/0028454 A1
US 2006/0291717 A1
Dec. 12, 2002
Nov. 11, 2004
Sep. 8, 2005
Feb. 9, 2006
Dec. 28, 2006
Jogo US 7,209,149 B2 Apr. 24, 2007

Rejections
Claims 14–16 and 22 stand rejected under 35 U.S.C §103(a) as
unpatentable over Fadell in view of Jarrett (Ans. 3–6).
Claim 17 stands rejected under 35 U.S.C §103(a) as unpatentable over
Fadell in view of Jarrett and further in view of Jogo (Ans. 6–7).
Claims 18–20 stand rejected under 35 U.S.C §103(a) as unpatentable
over Fadell in view of Branton and further in view of Van De Streek (Ans.
7–10).
Claims 21 and 23 stand rejected under 35 U.S.C §103(a) as
unpatentable over Fadell in view of Jarrett and further in view of Mussack
(Ans. 11–12).

ANALYSIS
We have reviewed Appellants’ arguments in their Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellants’
arguments.

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Claims 14–17 and 21–23
Appellants argue on pages 4–11 of their Appeal Brief that the
Examiner’s rejections of claims 14–17 and 21–23 under 35 U.S.C. §103(a)
are in error. These arguments present us with the issue whether the
Examiner erred in finding that Fadell discloses the limitation “wherein the
amount of movement corresponds to the amount of rotation of said image.”
Fadell describes a media player with an annular touch pad “configured
to provide one or more control functions for controlling various applications
associated with the media player” (Fadell ¶48). Specific examples provided
by Fadell include those in which “the touch initiated control function [is]
used to move an object or perform an action on the display screen 104 or to
make selections or issue commands associated with operating the media
player” (¶48). While the Examiner asserts that paragraphs 46–49 and 118 of
Fadell teach this claim limitation (Ans. 13), we are unable to discern any
such disclosure. Rather, we agree with Appellants that “[t]he Fadell
reference, alone or in combination with the Jarrett reference, fails to teach or
suggest rotating any image displayed on the display” (App. Br. 6).
The Examiner correctly observes that Fadell teaches that “[t]he
number of signals in a given time frame [as a user moves his or her finger]
may indicate location, direction, speed and acceleration of the finger on the
touch pad” (Ans. 4, citing Fadell ¶49). But in the absence of a disclosure of
image rotation, we do not agree with the Examiner’s finding that Fadell
discloses “wherein the amount of movement corresponds to the amount of
rotation of said image” (emphasis added).
We accordingly do not sustain the Examiner’s rejection of
independent claim 14 under 35 U.S.C. §103(a) as unpatentable over Fadell
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in view of Jarrett, as well as the rejections of claims 15–17 and 21–23,
which are dependent thereon.

Claims 18–20
Appellants argue on pages 11–15 of their Appeal Brief that the
Examiner’s rejections of claims 18–20 under 35 U.S.C. §103(a) are in error.1
These arguments present us with the issues (1) whether the Examiner erred
in finding that Branton discloses the limitation of “changing a displayed
video frame whenever said stylus moves from one of said plurality of
sections of said touch pad to another of said plurality of sections of said
touch pad”; and (2) whether the Examiner erred in combining the teachings
of Fadell and Branton.
Branton describes “[a]n apparatus and method for using a scroll
sensor providing a touch sensitive control input surface for a plurality of
control functions” (Branton, abs.), including “control of video playback”
(¶93). In connection with its Fig. 14, Branton specifically teaches use of a
ring 100 in which “[s]crolling away from the top will jog the video, frame by
frame in either direction, at a speed that is proportional to the scrolling
speed” (¶93). Appellants note that certain sections of the ring have other
functions, such as to pause or stop the video, arguing that as a result “only
some of the sections of the ring 100 cause the displayed video frame to
change when touched” (App. Br. 13).

1 Patentability is argued collectively for claims 18–20. We accordingly treat
independent claim 18 as representative for dependent claims 19 and 20.
Except for our ultimate decision, those dependent claims are not discussed
further herein.
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While Appellants’ characterization of Branton is reasonable, we do
not find the overall argument persuasive. As the Examiner explains, “the
claim as presented recites ‘changing a displayed video frame whenever said
stylus moves from one of said plurality of sections of said touch pad to
another of said plurality of sections of said touch pad’” (Ans. 14–15).
Appellants assert that the “claim requires that the displayed video frame be
changed even when the ‘pause’ and ‘stop’ sections of the ring 100 are
touched” (App. Br. 13), but we disagree that the claim so requires.
We also find Appellants’ argument unpersuasive that the Examiner
fails to articulate an adequate reason with some rational underpinning to
combine the teachings of Fadell and Branton (App. Br. 13–15). The
Examiner’s rationale, namely that the combination “will provide a human
interface that immediately and intuitively allows for selection of
functionality and parametric input” (Ans. 8) is drawn from a broad
discussion in Branton (¶¶10–12) of applications that include an “annular
touchpad” (Branton ¶10) like that described by Fadell.
We accordingly sustain the Examiner’s rejections of claims 18–20.

CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner has erred in rejecting claims 14–16 and 22 under
35 U.S.C. §103(a) as unpatentable over Fadell in view of Jarrett.
(2) The Examiner has erred in rejecting claim 17 under 35 U.S.C.
§103(a) as unpatentable over Fadell in view of Jarrett and further in view of
Jogo.
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(3) The Examiner has not erred in rejecting claims 18–20 under 35
U.S.C. §103(a) as unpatentable over Fadell in view of Branton and further in
view of Van De Streek.
(4) The Examiner has erred in rejecting claims 21 and 23 under 35
U.S.C. §103(a) as unpatentable over Fadell in view of Jarrett and further in
view of Mussack.

DECISION
The Examiner’s decision rejecting claims 14–17 and 21–23 is
reversed.
The Examiner’s decision rejecting claims 18–20 is 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) (2009).

AFFIRMED-IN-PART

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