Ex Parte Davenport et al

Board of Patent Appeals and Interferences

Jun 25, 2012

10876111 (B.P.A.I. Jun. 25, 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.
10/876,111 06/24/2004 Anthony G. Davenport 62104 1140
7590 06/25/2012
Howard Cohen
1105 The Alameda
Berkeley, CA 94707
EXAMINER
UNELUS, ERNEST
ART UNIT PAPER NUMBER
2181
MAIL DATE DELIVERY MODE
06/25/2012 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 ANTHONY G. DAVENPORT
and JOHN W. HYDE
____________________

Appeal 2010-002627
Application 10/876,111
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, ERIC S. FRAHM, and
KRISTEN L. DROESCH, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002627
Application 10/876,111

2
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 30 and 31. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-29 and 32-54 have been canceled.
We REVERSE.
Introduction
According to Appellants, the invention relates to a computer
peripheral, specifically, to a “smart”, user-programmable peripheral able to
provide a wide range of standard user inputs, such as mouse, keyboard,
game pad and joystick, including sequences, to a computer. (Spec. 1,
[0004]).

STATEMENT OF THE CASE

Exemplary Claim
Claim 30 is an exemplary claim and is reproduced below:
30. A peripheral device for a computer, including:
a microcontroller running a peripheral action language
program, said microcontroller having:
means for receiving input events generated by a user;
action lookup means for correlating input events with
dissimilar output actions;
said action lookup means including a library of
peripheral emulation functions stored in a non-volatile memory
and adapted to run under the peripheral action language
program;
output means for transmitting said output actions to the
computer;
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Application 10/876,111

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said device being adapted to be moved by a user on a
surface in an XY plane and including a movement sensor for
detecting movement of the device on the surface in the XY
plane, and one of said input events comprising a movement
signal from said movement sensor:
said movement sensor including an optical movement
detector, and said input event comprising a lift event in which
the user raises said device from said XY plane and lifts and
separates said device from said surface a sufficient distance so
that said optical movement detector breaks optical contact with
said surface in the XY plane.

References
Svancarek US 5,724,558 Mar. 3, 1998
Shahoian US 6,717,573 B1 Apr. 6, 2004
Rupert Goodwins, Gyration Ultra Cordless Optical Mouse & Mobile
Keyboard review, ZDNet.co.uk (Nov. 6, 2002),
http://reviews.zdnet.co.uk/hardware/inputdevices/0,1000001009,1000
2198,00.htm (“Gyration”)

Rejections
Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Svancarek, Shahoian, and Gyration.

ISSUE
35 U.S.C. § 103(a): claims 30 and 31
Appellants assert their invention is not obvious over Svancarek,
Shahoian, and Gyration because none of the references, taken alone or in
proper combination, teaches or suggest “the input event comprising a lift
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Application 10/876,111

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event.” (Br. 15-17). Specifically, Appellants contend Shahoian teaches
providing haptic feedback, which is not a lift event (Br. 14 and 15). Next,
Appellants contend Gyration teaches a mouse that when lifted “carries on
working as if it had not been lifted from the surface” (Br. 15). Again,
Appellants assert this is not a lift event (id.). Appellants then argue the three
references, taken singly or together, fail to teach the input even comprising a
lift event (Br. 16).

Issue: Has the Examiner erred in finding the combination of
Svancarek, Shahoian, and Gyration would have taught or suggested the
“input event comprising a lift event” as recited in claim 30?

ANALYSIS
We agree with Appellants’ conclusion. Appellants explicitly define
“lift event” in the Specification as “[a]n optical event…generated when the
invention is lifted from the desktop…used to create an action” (Spec. 12,
[0023]). The Examiner has not shown Svancarek, Shahoian, and Gyration,
taken alone or in proper combination, teach or suggest an action occurring
based on the device being lifted from the desktop. Although Gyration
teaches lifting a device up off the desktop, no action is created (Gyration, pg.
1). Instead, the current action is uninterrupted (carries on) (id.).
Accordingly, the Examiner erred in finding the combination of
Svancarek, Shahoian, and Gyration would have taught or suggested the
invention as recited in independent claim 30 and dependent claim 31, not
separately argued. Therefore, the Examiner erred in rejecting claims 30 and
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31 under 35 U.S.C. § 103(a) for obviousness over Svancarek, Shahoian, and
Gyration.

DECISION
The Examiner’s rejection of claims 30 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Svancarek, Shahoian, and Gyration is
reversed.
REVERSED

msc