Ex Parte Gates et al

Patent Trial and Appeal Board

Jun 27, 2018

15349668 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/349,668 11/11/2016 Stephen Brian Gates
34018 7590 06/29/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81230.97US9 2322
EXAMINER
DINH,DUCQ
ART UNIT PAPER NUMBER
2692
NOTIFICATION DATE DELIVERY MODE
06/29/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPEN BRIAN GATES and JEREMY K. BLACK
Appeal2018-001470
Application 15/349,668
Technology Center 3700
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and JENNIFER L.
MCKEOWN, Administrative Patent Judges
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001470
Application 15/349,668
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief ("App. Br.") filed (Aug. 24, 2017), the Answer
("Ans.") mailed (Oct. 6, 2017), and the Reply Brief ("Reply Br.") filed
(Nov. 20, 2017), for the respective details. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(vii).
Appellants 'Invention
Appellants' invention relates to an "integrated mouse and remote
control" hand-held device. See Specification, pages 2-3.
Claim 1 is illustrative of the invention and reads as follows:
1. A non-transitory, computer readable media having stored thereon
instructions for managing a hand-held device having a plurality of
input receiving elements, a first command transmission
device, a second command transmission device, and a sensor, the
instructions, when executed by a processing unit of the hand-held
device, performing steps comprising:
using signals received from the sensor to determine when the
hand-held portable device is positioned proximate to an object surface
and to determine when the hand-held portable device
1 The real party in interest is Universal Electronics Inc. App. Br. 2.
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Appeal2018-001470
Application 15/349,668
is removed from the object surface; and
causing the hand-held device to automatically transition from a
first operational mode to a second operational mode when it is
determined from a signal received from the sensor that the hand-held
portable device has been moved proximate to the object surface and to
automatically transition from the second operational mode back to the
first operational mode when it is determined from a signal received
from the sensor that the hand-held portable device has been
subsequently moved away from the object surface;
wherein, in the first operational mode, the hand-held device is
configured to use the first command transmission device when
transmitting one or more command communications in
response to an activation of one or more of the plurality of input
receiving elements and, in the second operational mode, the hand-held
device is configured to use the second command transmission device
when transmitting one or more command communications in response
to an activation of one or more of the plurality of input receiving
elements and wherein the first transmission device is different from
the second command transmission device.
The Examiner's Rejections
Claims 1 and 10-11 are rejected underpre-AIA 35 U.S.C. § 102(a) as
being anticipated by Tiphane (US 2003/0028688 Al; Feb. 6, 2003).
Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Tiphane in view of Meyer (US 6,992,334 Bl; Apr. 19,
2005).
Claims 3 and 5-9 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Tiphane in view of Rogers (US 6,794,992 Bl; Sept.
21, 2004).
Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Tiphane and Rogers in view of Meyer.
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Appeal2018-001470
Application 15/349,668
ANALYSIS
We have reviewed the Examiner's anticipation and obviousness
rejections of claims 1-11 in light of Appellants' contentions that the
Examiner has erred.
Further, we have reviewed the Examiner's response to Appellants'
arguments. The Examiner has provided a comprehensive response to each
argument presented by the Appellants on pages 2 through 4 of the Answer.
We have reviewed this response and concur with the Examiner's findings
and conclusions. 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 Final Action and
Answer in response to Appellants' Appeal Brief. Final Act. 2-9; Ans. 2--4.
We highlight and address specific findings and arguments for
emphasis as follows.
Section 102 rejection of claims 1 and 10-11 over Tiphane
Claim 1 recites, inter alia:
wherein, in the first operational mode, the hand-held device is
configured to use the first command transmission device when
transmitting one or more command communications in response to an
activation of one or more of the plurality of input receiving elements
and, in the second operational mode, the hand-held device is
configured to use the second command transmission device when
transmitting one or more command communications in response to an
activation of one or more of the plurality of input receiving elements
and wherein the first transmission device is different from the second
command transmission device.
(hereinafter "the disputed limitations").
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Appeal2018-001470
Application 15/349,668
The Examiner finds Tiphane explicitly discloses the disputed
limitations. Ans. 3--4. In particular, the Examiner finds, and we agree:
Tiphane(20030028688) discloses the handheld device (110) can be
function to use a first command transmission device (wireless
connection transmitter, i.e., Bluetooth TM Human Interface Device,
HID transmission device) (see [0034, 0035]) when transmitting one or
more command ( optical mouse, change in the intensity of light)
communications while in a first operational mode (handheld mode,
presentation mode) (see [0028]); and a second command
transmission device (wired connection) when transmitting one or
more command communication (mechanical mouse, mouse ball or
button) while in a second operational mode (table top mode, mouse
mode) (Tiphane' s paragraph [3 6] discloses the shift from a wired to a
wireless device, also switches the device from its first or mouse mode,
to its second (e.g.[,] handheld or presentation mode; see paragraphs
[28, 34-36]).
. . . . [T]he handheld device (110) in the first embodiment and the
second embodiment has the same mechanical means for automatically
transition from a second operational mode ( table top mode, mouse
mode) to a first operational mode (handheld mode, presentation
mode) ....
Ans. 3--4. (emphasis in orginal omitted, Panel's emphasis added)
Accordingly, we sustain the rejection of independent claim 1 and
dependent claims 10 and 11 not argued separately under 35 U.S.C. § 102(a)
as being anticipated by Tiphane.
We have considered Appellants' Reply Brief, but find it
unpersuasive to rebut the Examiner's responses.
Section 103 rejections of claims 2-9
Appellants have provided no separate arguments towards patentability
for claims 2-9. Therefore, the Examiner's§ 103 rejections of claim 2-9 are
sustained for similar reasons to those noted supra.
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Appeal2018-001470
Application 15/349,668
CONCLUSION
The Examiner did not err in rejecting claims 1 and 10-11 under
35 U.S.C. § 102(a) as being anticipated by Tiphane.
The Examiner did not err in rejecting claims 2-9 under 35 U.S.C.
§ 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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