Ex parte RHYNE

Board of Patent Appeals and Interferences

Aug 19, 1998

08158337 (B.P.A.I. Aug. 19, 1998)

Application for patent filed November 29, 1993.1
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not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GEORGE W. RHYNE
__________
Appeal No. 96-0196
Application 08/158,3371
__________
ON BRIEF
__________
Before HAIRSTON, JERRY SMITH, and TORCZON, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0196
Application 08/158,337
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 2-21, which constitute
all the claims remaining in the application.
The invention pertains to a hand-held portable
electronic device with a manually controllable cursor. The
device has a small real image of a complete frame of
alphagraphics and an enlarged virtual image which is viewed by
the operator. A manual control mounted on the hand-held
device allows control of the cursor in the virtual image.
Representative claim 2 is reproduced as follows:
2. Portable electronics equipment with manually
controllable cursor comprising:
a hand held electronic device;
a virtual display including display electronics having a
two-dimensional array of pixels providing a small real image
of a complete frame of alphagraphics and magnifying optics for
providing a magnified perceivable virtual image of the
complete frame of alphagraphics in the virtual display, the
virtual display being mounted in the hand held electronic
device for viewing of the magnified perceivable virtual image
by an operator;
cursor electronics mounted in the hand held electronic
device and connected to the display electronics for producing
a manually controllable cursor virtual image in the virtual
display; and
Appeal No. 96-0196
Application 08/158,337
3
manual controls mounted on the hand held electronic
device and externally accessible by the operator, the manual
controls being connected to the cursor electronics for
controlling the position and function of the cursor virtual
image within the magnified perceivable virtual image of the
complete frame of alphagraphics.
The examiner relies on the following references:
Bendig 4,451,701 May 29,
1984
Maeser et al. (Maeser) 4,803,652 Feb. 07,
1989
Becker 4,934,773 June 19,
1990
Tanielian et al. (Tanielian) 5,051,738 Sep. 24,
1991
Hacker et al. (Hacker) 5,123,064 June 16,
1992
Tanaka et al. (Tanaka) 5,130,838 July 14,
1992
Claim 5 stands rejected under 35 U.S.C. § 112, first
paragraph, as being based on an inadequate disclosure. Claims
2-21 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers the basic combination of
Becker in view of Maeser with respect to claims 2, 3, 8, 9,
11, 14 and 15. Bendig is added to the basic combination with
respect to claims 4-7 and 16-19. Tanielian is added to the
basic combination with respect to claims 10, 20 and 21.
Appeal No. 96-0196
Application 08/158,337
4
Hacker is added to the basic combination with respect to claim
12, and Tanaka is added to the basic combination with respect
to claim 13.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
Appeal No. 96-0196
Application 08/158,337
5
It is our view, after consideration of the record
before us, that the disclosure in this application describes
the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. We are also of the view
that the collective evidence relied upon would not have
suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in claims 2-21. Accordingly, we
reverse.
We consider first the rejection of claim 5 under the
first paragraph of 35 U.S.C. § 112. The rejection is based on
the written description requirement of Section 112 asserting
that the specification, as originally filed, does not provide
support for the invention as now claimed. Specifically, the
rejection states that “[t]here is no disclosure teaching that
the touch pad includes means for providing a control signal
continuously alterable in accordance with portions of the
touch pad being touched” [answer, page 4]. The examiner
reasons that the control signal could be discretely alterable
instead of continuously alterable [answer, page 12].
Appeal No. 96-0196
Application 08/158,337
6
Appellant points to several portions of the
specification and argues that the person skilled in this art
would have understood that the invention included a
continuously alterable control signal as recited in claim 5
[brief, pages 6-7]. We agree with appellant. The examiner’s
position seems to suggest that appellant is limited to the
generic description of cursor movement since neither
continuous movement nor discrete movement is specifically
identified. The person skilled in this art, however, would
have recognized that the invention included any type of
conventional cursor movement which could be effected by a
touch pad. Since continuously alterable cursor control
signals were a standard form of cursor control, we conclude
that appellant’s specification supports the language of claim
5 and is, therefore, in compliance with 35 U.S.C. § 112.
We now consider the various rejections of the
claims under 35 U.S.C. § 103. In rejecting claims under 35
U.S.C.
§ 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
Appeal No. 96-0196
Application 08/158,337
7
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hospital Systems, Inc. v. Montefiore
Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case
of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appeal No. 96-0196
Application 08/158,337
8
Independent claims 2 and 8 are rejected based on the
teachings of Becker and Maeser. Becker teaches a miniature
video display system in which a small real image is converted
into a larger virtual image. Becker successively energizes a
single row of real pixels and reflects these successive rows
to the virtual image at a rate which makes it appear as if a
full page of pixels has been used as the real image. Becker
contains no discussion of cursor electronics or manual cursor
control. Maeser teaches a portable terminal device which can
transmit and receive information. Maeser suggests that data
input can be by way of any suitable system for entering
alphanumeric or other data. It is the examiner’s position
that such suitable input systems for a computer are known to
inherently include manual cursor controls. The examiner
asserts that it would have been obvious to the artisan to
increase the size of the real image in Becker and eliminate
Becker’s vibrating mirror to reduce the cost of manufacturing
[answer, page 5]. The examiner also asserts that it would
have been obvious to the artisan to include Maeser’s manual
Appeal No. 96-0196
Application 08/158,337
9
cursor control in the device of Becker to enable display
updating [answer, page 6].
Appellant argues that Becker produces a real image
made up of a single row of pixels and does not teach the real
image of a complete frame of alphagraphics as recited in
independent claims 2 and 8 [brief, pages 7-8]. Appellant also
argues that nothing in Becker or Maeser suggests the use of a
manually controllable cursor mounted on a hand-held device for
controlling a cursor in the device [Id. pages 8-9]. We
basically agree with appellant that the prior art cited by the
examiner does not suggest the invention of independent claims
2 and 8 for reasons indicated by appellant.
At the outset we note that the examiner has not cited
a single piece of prior art which specifically suggests that
it was known to have manual cursor control means on hand-held
electronic devices. This is especially surprising when one
considers that the marketplace at the time this invention was
filed was inundated with hand-held computer games which
typically had a full page virtual display and a manually
controlled cursor. In our view any of these hand-held games
Appeal No. 96-0196
Application 08/158,337
10
would have been a more pertinent reference than any of the
references cited by the examiner. Although the examiner was
apparently looking for a hand-held communication receiver
(claim 8), we note that claim 2 was not so limited (hand-held
electronic device). Thus, we assume that there is better
prior art available than what the examiner has presented to
us.
Nevertheless, we are constrained to decide the
obviousness issue based on the evidence of record in this
case. The evidence applied by the examiner suffers all the
deficiencies observed by appellant. The real image of Becker
is limited to a single row of pixels. Information for
different rows of the page are sequentially fed to the same
row of pixels, and the successive rows are caused to create a
virtual complete frame of information by a mirror which
redirects the same real image source to different virtual
image locations. The examiner proposes to eliminate Becker’s
mirror and to replace the single row of the real image with a
full page of rows for the real image. This modification would
produce Becker’s effect in exactly the opposite manner from
Appeal No. 96-0196
Application 08/158,337
11
that disclosed by Becker. Such a modification is not
suggested by Becker, but comes only from the examiner’s effort
to meet the claimed invention in hindsight. Even though the
artisan could modify Becker in the manner suggested by the
examiner, such modification is not suggested by either Becker
or Maeser.
Maeser does not even rise to the level of suggesting
that manually controlled cursors were known in the art. The
examiner relies on Maeser to teach that generic computer input
devices were known and manually controlled cursor inputs were
inherently included within such known devices. Maeser
provides no teaching, however, with respect to placing such a
manually controlled cursor input on a hand-held electronic
device. Again, there is no specific suggestion in Maeser
which would have led the artisan to modify Becker in the
manner suggested by the examiner.
In summary, the rejection of independent claims 2 and
8 cannot be sustained based on the teachings of Becker and
Maeser. Although there is probably better prior art than that
Appeal No. 96-0196
Application 08/158,337
12
cited by the examiner, such prior art is not of record in this
case and, therefore, has not been considered by us.
With respect to each of the dependent claims, none of
the other applied references to Bendig, Tanielian, Hacker or
Tanaka overcomes the basic deficiencies of the Becker-Maeser
combination. Therefore, we do not sustain the rejection of
any of the dependent claims on appeal.
The decision of the examiner rejecting claims 2-21 is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
AND
Administrative Patent Judge ) INTERFERENCES
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-0196
Application 08/158,337
13
Vincent B. Ingrassia
Motorola, Inc., Intellectual Property Department
Suite R3108, P.O. Box 10219
Scottsdale, AZ 85271-0219