Ex Parte Bomers

Board of Patent Appeals and Interferences

Jan 3, 2012

10699968 (B.P.A.I. Jan. 3, 2012)

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.
10/699,968 11/03/2003 Florian U. Bomers 5168-001 5026
24112 7590 01/03/2012
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
01/03/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FLORIAN U. BOMERS
____________

Appeal 2009-014994
Application 10/699,968
Technology Center 2100
____________

Before GREGORY J. GONSALVES, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014994
Application 10/699,968

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-4 and 6-24. (App. Br. 1.) Claim 5 was cancelled. (Id.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Disclosed Invention
Exemplary independent claim 1 follows:
1. A computer readable medium storing a computer program
configured for execution by a personal computer (PC) and comprising:
program instructions to create event translators that translate incoming
input events to said PC into translated input events according to user-defined
translation behaviors;
program instructions to associate each event translator with a type of
incoming input event responsive to user input; and
program instructions to configure a translation behavior for each event
translator responsive to user input, such that during execution of the
computer program by the PC the event translator generates a desired
translated input event responsive to receiving an incoming input event to
said PC of the type of incoming input event associated with the event
translator, including program instructions to define a translation function
that modifies incoming input events to said PC according to one or more
user-configured functions.

The Examiner rejected claim 23 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement. (Ans. 4.)
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The Examiner rejected claim 23 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
(Ans. 5.)
The Examiner rejected claims 1-4, 6-8, and 11-24 under 35 U.S.C.
§ 103(a) as being unpatentable based on Davenport (U.S. 2004/0263477 A1)
and Bear (U.S. 2004/0257341 A1). (Ans. 5-17.)
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a) as
being unpatentable based on Davenport, Bear, and King (U.S. 2003/0071842
A1). (Ans. 17-18.)

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that one of ordinary skill in the art, in
light of the teachings of Bear, would have implemented Davenport’s method
on a personal computer, as required by each of independent claims 1, 11, 12,
and 14?
2. Did the Examiner err in finding that Davenport teaches or suggests
“program instructions to determine whether the incoming input event is
swallowed or passed-through,” as recited in claim 6?
3. Did the Examiner err in finding that Davenport teaches or suggests “a
swallowing of the given input event to hide it from one or more other
computer processes,” as recited in claim 17, and as similarly recited in claim
24?
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4. Did the Examiner err in finding that Davenport teaches or suggests
“program instructions to time-delay input events of the selected type
according to a desired time-delay value,” as recited in claim 20?
5. Did the Examiner err in finding that claim 23 is invalid under either
the first or second paragraphs of § 112 for failing to satisfy the enablement
requirement or for failing to particularly point out the invention,
respectively?

ANALYSIS
Issue 1 – Obviousness Rejections of Claims 1-4, 6-16, 18, 19, and 21-23
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief) that the Examiner has erred. We disagree with
Appellant’s conclusion regarding the obviousness of claims 1-4, 6-16, 18,
19, and 21-23. 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 Examiner’s Answer (Ans. 3-11) in
response to the Appellant’s Appeal Brief. We concur with the conclusion
reached by the Examiner. But we highlight and address specific findings
and arguments regarding certain claimed limitations such as the
determination of “whether the incoming input event is swallowed or passed-
through,” the delay of “input events of the selected type according to a time-
delay value,” and a “mathematical function.”
Appellant contends that one of ordinary skill in the art would not have
implemented the method taught by Davenport on a personal computer
because “Davenport explicitly specifies implementation outside of and
independent from a PC or other computer.” (App. Br. 10.) As explained by
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the Examiner, however, when Davenport’s external device is connected to a
personal computer they operate “as a complete system.” (Ans. 19.) And it
would have been obvious to move the functionality relating to event
processing from the external device to the personal computer with
predictable results. (See e.g., Ans. 19.) In other words, “the functionality of
appellant’s invention being incorporated within the pc does not make the
invention novel.” (Ans. 19.) For these reasons and the reasons expressed in
the Examiner’s Answer, we sustain the Examiner’s obviousness rejections of
independent claims 1, 11, 12, and 14. We also sustain the Examiner’s
obviousness rejections of certain claims that depend from the independent
claims (i.e., claims 2-4, 7-10, 13, 15, 16, 18, 19 and 21-23) because
Appellant either did not set forth any separate patentability arguments for
those claims or set forth arguments that are similar to those expressed for
independent claims 1, 11, 12, and 14. (See App. Br. 7-19.)
Appellant also contends that claim 6 is not obvious because contrary
to the Examiner’s reasoning, Davenport’s event linking does not qualify as
“the claimed swallowing.” (App. Br. 13.) As explained by the Examiner,
however, the lack of any explicit definition for the claim term “swallowing”
indicates that the term “can take on many forms, for example making one
event appear as another….” (Ans. 20.) Accordingly, we find that the
Examiner, “giving the claim its broadest reasonable meaning consistent with
the Specification,” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997),
properly relies on the event linking as taught by Davenport to encompass the
claimed “swallowing.” For these reasons and the reasons expressed in the
Examiner’s Answer, we sustain the Examiner’s rejection of claim 6.

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Issue 2 – Obviousness Rejections of Claims 17, 20 and 24
Appellant asserts, like he did for claim 6, that claims 17 and 24 are not
obvious because Davenport’s event linking does not qualify as “the claimed
swallowing.” (App. Br. 13.) In response, the Examiner again reasons that a
broad construction of the term “swallowing” encompasses Davenport’s
event linking. (Ans. 20.) But unlike claim 6, each of claims 17 and 24
explicitly require a particular type of swallowing: the swallowing of an
input event to hide it from other computer processes. And the Examiner
fails to provide any meaningful explanation as to how the Davenport’s event
linking hides an event from other computer processes. (See Ans. 20.) For
these reasons and the reasons expressed in Appellant’s Brief, we reverse the
Examiner’s obviousness rejections of claims 17 and 24.
Appellant also asserts that claim 20 is not obvious because Davenport
does not teach or suggest “program instructions to time-delay input events of
the selected type according to a desired time delay value.” (App. Br. 18
(emphasis omitted).) Appellant argues that, contrary to the Examiner’s
reasoning, controlling a time delay between pressing and releasing a button
on a mouse does not meet this claim limitation because that delay is
controlled by the user and the claim requires program instructions to create a
time delay. (App. Br. 18-19.) We agree. For this reason, we do not sustain
the Examiner’s obviousness rejection of claim 20.

Issue 3 – Section 112 Rejections of Claim 23
The Examiner rejected claim 23 under both the first and second
paragraphs of Section 112 for failing to comply with the enablement
requirement and for failing to particularly point out the invention,
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respectively. (Ans. 4-5.) The Examiner reasons that Appellant has
“disclosed a mathematical function but do not disclose if mathematical
scaling is configured within this function.” (Ans. 4.) But Appellant reasons
that “the application of a mathematical scaling to one or more event
parameters of an incoming event is supported in the filed application at least
at paragraphs [0010], [0017], and [0020] (attenuating).” (App. Br. 8.) And
Appellant also reasons that “mathematical scaling is well understood by
those skilled in the art, and the filed specification underscores that meaning
by highlighting attenuation (which is understood to be a type of fractional
scaling) as an example.” (App. Br. 9.) We agree with Appellant’s
reasoning. Accordingly, we do not sustain the Examiner’s Section 112
rejections of claim 23.

DECISION
We affirm the Examiner’s decision rejecting claims 1-4, 6-16, 18, 19,
and 21-23 as obvious. But we reverse the Examiner’s decision rejecting
claims 17, 20, and 24 as obvious, and claim 23 as indefinite and not enabled.
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-IN-PART

ELD