Ex Parte Osato

Patent Trial and Appeal Board

Aug 16, 2013

11346602 (P.T.A.B. Aug. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/346,602 02/02/2006 Jerold Osato 1033-NW1075 1631
84326 7590 08/16/2013
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
TANK, ANDREW L
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
08/16/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEROLD OSATO
____________

Appeal 2010-012555
Application 11/ 346,602
Technology Center 2600
____________

Before ST. JOHN COURTENAY, III, CARL W. WHITEHEAD, JR., and
HUNG H. BUI, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012555
Application 11/ 346,602

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Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24 and 26-30. (App. Br. 1). Claim 25 was cancelled during
prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s claimed invention is directed to “[a] hand held device
[which functions as] its own mouse, such that a virtual desktop may be
navigated by moving the device itself to display desired portions of the
virtual desktop on the screen of the device.” (Abstract ). Independent claim
1, reproduced below, is representative of the subject matter on appeal:
1. A handheld device comprising:

a housing, wherein the housing comprises a scroll
wheel;

a display screen embedded at a fixed position on a
first side of the housing, wherein the display screen is
adapted to display a portion of a virtual desktop window,
wherein perimeter dimensions of the virtual desktop
window exceed perimeter dimensions of the display
screen;

an input device embedded at a fixed position on a
second side of the housing, the second side located on a
different side of the housing than the first side, wherein
the input device is in communication with the display
screen and adapted to sense a change in position of at
least a portion of the input device relative to a surface;
and
wherein the handheld device is selectable between
a fixed window mode and a moving window mode,
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[L1] wherein the-portion of the virtual desktop
window displayed on the display screen changes in
response to the change in the position of at least the
portion of the input device when in the moving window
mode; and
[L2] wherein movement of the scroll wheel in a
first direction zooms in on the virtual desktop window
when in the moving window mode.

(Disputed limitation emphasized).

REJECTIONS

1. The Examiner rejected claims 1-5, 8-24, 29, and 30 under 35 U.S.C.
§103(a) as being unpatentable over the combined teachings and
suggestions of Parks (US 5,526,481) and Escamilla (US 6,724,365 B1).

2. The Examiner rejected claims 6, 7, and 26-28 under 35 U.S.C. § 103(a),
as being unpatentable over the combined teachings and suggestions of
Parks, Escamilla, and Bartlett, J.F., "Rock 'n' Scroll is Here to Stay [user
interface]," Computer Graphics and Applications, IEEE, vol. 20, no. 3,
pages 40-45, May/June 2000 (hereinafter "Bartlett").

ANALYSIS
We disagree with Appellant’s contentions regarding the Examiner's
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken; and (2), the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellant’s Appeal Brief. (Ans. 14-15). We
highlight and address specific findings and arguments below.
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Regarding independent claim 1, Appellant contends neither Parks nor
Escamilla teaches or suggests zooming in on a virtual desktop window
displayed on a display screen of a handheld device when the device is in
moving window mode. (App. Br. 10-12; see also claim 1, limitation L2
supra ). Appellant contends that although Escamilla teaches a zoom
function, the zoom function in Escamilla is directed to zooming in on a
portion of a document, not on a portion of a virtual desktop window. Id.
We do not find this argument persuasive. As pointed out by the
Examiner, Parks is relied on for teaching or suggesting the virtual desktop
window. (Ans. 3, 14). As an initial matter of claim construction, we
observe that Appellant points to paragraph [0018] of the Specification as
providing support for the disputed “wherein” clause L2 of claim 1. (App. Br.
3). Turning to paragraph [0018], the only mention of a display is a “virtual
display:” “Rotation of the push button/scroll wheel may zoom in and out
from the virtual display.” (Id.). We observe that Parks expressly teaches a
“virtual display 400” (col. 4, l. 40), and “a mouse 200 built into the housing
14 on the underside of the PDA 10 [where] [t]he mouse 200 provides X and
Y direction translation information to a memory controller (FIG. 3) within
the PDA 10 as the mouse 200 is rolled across the surface 18. . . .” (Col. 3, ll.
50-54; Fig. 2).
Thus, Appellant is arguing the references separately. As the Examiner
points out in response, Escamilla need not teach zooming in on a virtual
desktop in moving window mode because Parks teaches or suggests the
claimed virtual desktop with a moving window mode. (Ans.14). Escamilla
is only being relied on to teach the zooming limitation of the claim (Ans. 5),
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which we conclude also renders disputed limitation L1 obvious, when
combined with the teachings and suggestions of Parks. (See Ans. 4-5, 14).
The Supreme Court guides that “a combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (U.S. 2007). Here, we agree with the Examiner that it would have been
obvious for a person of ordinary skill in the art to combine the zooming
function of Escamilla with the virtual desktop of Parks to produce the
predictable result of zooming in on a virtual desktop in a moving window
mode. (Ans. 14).
Regarding independent claims 13, 15, and 22, and associated
dependent claims 14, 16-21 and 26-28, respectively, Appellant advances
substantially the same arguments discussed above in regard to claim 1. (App.
Br. 13-15). For the same reasons stated above, we do not find these
arguments persuasive.
Regarding the second-stated rejection of claims 6 and 7, Appellant
again advances substantially the same arguments discussed above in regard
to claim 1. (App. Br. 15-16). For the same reasons stated above, we do not
find these arguments persuasive. In particular, claim 6 recites: “[t]he
handheld device of claim 1, wherein the input device comprises an
accelerometer position sensor.” As pointed out by the Examiner (Ans. 12),
Bartlett expressly teaches “a small video liquid crystal display (LCD) with a
two-axis accelerometer attached to the back.” (Bartlett, p. 43, left column,
emphasis added).
Regarding claim 7, Appellant additionally contends that the cited
combination of Parks, Escamilla, and Bartlett does not teach or suggest the
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claimed GPS system. (App. Br. 16). Appellant specifically contends that
each of the cited references describes input technologies “based on
movement, not based on position” (App. Br. 17). However, claim 17 merely
recites “the input device comprises a global positioning satellite (GPS)
system.” Regarding the claimed GPS system, we agree with the Examiner’s
proffered rationale and reasoning as articulated in the Answer:
[I]t would have been obvious to one having ordinary skill in the
art and the teachings of Parks, Escamilla and Bartlett before
them at the time the present invention was made to substitute
the trackball for measure changes between relative positions of
the device, as disclosed by Parks, with any number of relative
motion sensors such as accelerometers and GPS systems as
suggested by Bartlett. One would have been motivated to do
this in order to provide a developer with a number of sensor
objects so that they may choose the one that is cheapest to
develop with, as suggested by Bartlett (page 40 paragraph 3).

(Ans. 12-13).
Regarding the second-stated rejection of claims 26-28 (which each
depend from claim 22), Appellant again asserts that the cited portions of
Bartlett fail to overcome the deficiencies of Parks and Escamilla. (App. Br.
17-18). For the same reasons discussed above regarding claim 1, we do not
find these arguments persuasive.
Although Appellant additionally contends “the cited portion of
Bartlett, when read in its entirety, describes using an interface to control
non-display features of cell phones or digital music players” (App. Br. 18,
emphasis omitted), we agree with the Examiner that “it would have been
obvious to one having ordinary skill in the art and the teachings of Parks,
Escamilla and Bartlett before them at the time the present invention was
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made to implement the scrolling method of Parks and Escamilla in any
number of handheld device such as a cell phone, a digital music player, or a
digital video player, as suggested by Bartlett.” (Ans. 13). We observe that
claim 26 recites: “wherein the handheld machine comprises a cell phone.”
Claim 27 recites: “wherein the handheld machine comprises a digital music
player.” Claim 28 further recites: “[t]he machine-readable tangible storage
medium of claim 22, wherein the handheld machine comprises a digital
video player.”
As pointed out by the Examiner (Ans. 13), Bartlett teaches “the same
techniques could be used to control other personal electronics such as radios,
MP3 players, or cellular telephones.” (p. 45, left column, second paragraph).
We also find the display of Bartlett’s device (p. 41, Figs. 1-2), in
combination with Escamilla’s video controller 22 (col. 2, l. 51) is at least
suggestive of a digital video player.
For at least the aforementioned reasons, on this record, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness. For essentially the same reasons
articulated by the Examiner in the Answer (14-15), as discussed above, we
sustain the Examiner’s obviousness rejections of all claims on appeal.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-24 and 26-30 under 35
U.S.C. § 103(a).
DECISION
For the above reasons, we affirm the Examiner’s §103 rejections of
claims 1-24 and 26-30.
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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).

AFFIRMED

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