Ex parte NIITSUMA et al.

Board of Patent Appeals and Interferences

Oct 23, 1998

08188629 (B.P.A.I. Oct. 23, 1998)

Application for patent filed January 28, 1994. 1
According to the appellants, this application is a
continuation of Application 07/914,271, filed July 15, 1992,
now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HIROBUMI NIITSUMA and
DAISUKE SHIRAI

_____________
Appeal No. 96-1305
Application 08/188,6291
______________
ON BRIEF
_______________
Before URYNOWICZ, THOMAS and JERRY SMITH, Administrative
Patent Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 96-1305
Application 08/188,629
The notice of appeal filed on May 15, 1995 does not2
include claim 10. Since claim 10 is argued in the brief and
the entire prosecution history indicates appellants intend to
pursue this claim, we consider this omission to be
inadvertent.
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s2
final rejection of claims 10, 12 to 14 and 17 to 19. The
examiner has allowed claim 11 and has indicated that claims 20
to 22 are objected to as being dependent upon a rejected base
claim. Claims 1 to 9, 15 and 16 have been canceled.
Representative claim 10 is reproduced below:
10. A coordinate input device comprising:
a housing including a semi-spherical wall having a
concave surface located on a first side and a convex surface
located on a second side, said housing defining a plurality of
holes formed through said semi-spherical wall;
a plurality of cylinders, each of said plurality of
cylinders having a fixed end integrally connected to said
convex surface and a free end located on said second side,
each cylinder including a central passage extending from an
opening formed in said free end to one of said plurality of
holes;
a plurality of ball supporting members, each ball
supporting member being received in one of said central
passages of said plurality of cylinders such that a portion of
said ball supporting member extends from one of said holes,
and wherein an outer diameter of said each of said plurality
Appeal No. 96-1305
Application 08/188,629
3
of ball supporting members is larger than a diameter of said
plurality of holes;
means for retaining said plurality of ball supporting
members in said central passages such that the portion of each
of said plurality of ball supporting members extends from an
associated one of said plurality of holes; and
a ball rotatably disposed on said first side against the
extending portions of each of said plurality of ball
supporting members.
The following reference is relied on by the examiner:
Mimlitch et al. (Mimlitch) 5,171,978 Dec. 15,
1992
(filed Nov. 22, 1991)
Claims 10, 12 to 14 and 17 to 19 stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the examiner relies
upon appellants’ admitted prior art as to claims 18 and 19,
with the addition of Mimlitch as to claims 10, 12 to 14 and
17.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the brief and the answer
for the respective details thereof.
OPINION
Appeal No. 96-1305
Application 08/188,629
4
Generally for the reasons expressed by the appellants in
the brief, we reverse both rejections of all claims on appeal.
Turning first to the rejection of claims 18 and 19, with
respect to independent claim 18, the reasoning advanced by the
examiner in the answer appears to be misplaced since the
statement of the rejection at pages 2 and 3 of the answer
indicates a reference to appellants’ disclosed invention in
Fig. 2. However, in context with the responsive remarks
portion of pages 5 and 6 of the answer, the examiner is
referring to appellants’ prior art Fig. 12 as a basis for the
rejection in addition to certain portions of the background of
the invention at specification pages 2 and 3.
Although we would agree with the examiner’s position that
it would have been obvious that the claimed semi-spherical
surface of a supporting member may be read upon two semi-
spherical surfaces of ball 2 in appellants’ Fig. 12, the
examiner’s position presumes that the remaining portions of
Fig. 12 meet the rest of the claim recitations in claim 18.
The examiner’s position misreads and therefore misapplies the
teachings and showings associated with this figure against
claim 18. The claimed relationship of the various elements of
Appeal No. 96-1305
Application 08/188,629
5
the first and second sides recited in claim 18 is not found in
appellants’ prior art Fig. 12. Therefore, we do not sustain
the rejection of independent claim 18 as well as its dependent
claim 19.
For the same reasons we reverse the rejection of
independent claim 18, we reverse the rejection of independent
claim 10 and the more specific version of it found in
independent claim 17. Mimlitch does not cure the deficiencies
of appellants’ prior art Fig. 12. For the sake of simplicity,
we assume for the sake of argument that it would have been
obvious within 35 U.S.C. § 103 to have combined the teachings
of Mimlitch and appellants’ admitted prior art Fig. 12.
However, the resulting combination does not yield the subject
matter of independent claims 10 and 17 on appeal for the
reasons argued by appellants in their brief.
In view of the foregoing, we have reversed the rejection
of each independent claim 10, 17 and 18 on appeal and,
therefore, the rejection of their respective dependent claims.
Therefore, the decision of the examiner is reversed.
Appeal No. 96-1305
Application 08/188,629
6
REVERSED
)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES D. THOMAS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
sd
Appeal No. 96-1305
Application 08/188,629
7
Guy W. Shoup
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