Ex Parte Robinson

Board of Patent Appeals and Interferences

Sep 10, 2012

10835174 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IAN N. ROBINSON
____________________

Appeal 2010-003200
Application 10/835,174
Technology Center 2600
____________________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 8, and 10.1 Claims 6-7, 9, 11-12, 19-23, and 29 have been
cancelled. Claims 5, 13-18, and 24-26 are allowed.2 We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Appellant’s Disclosed Invention
Appellant discloses a portable storage device (PSD) that is a computer
mouse (Fig. 4A) shaped to fit in a user’s hand (Spec. 12:24-25) that has a
display to view captured information files stored in the PSD (Spec. 13:4-6).
The purpose is to save the user a great deal of user intervention by
permitting the user to store pieces of information for future reference in the
PSD without having to record the information on a loose piece of paper or
electronic file and then having to convert the information to a proper
electronic format so the information can be accessed by another device
(Spec. 1:4-23).

1 In the Final Rejection mailed January 26, 2009, claims 27 and 28 were
rejected under § 101 as nonstatutory for encompassing signals, and under
§ 112, first paragraph, for lacking written description of the term “tangible.”
The Examiner, in the Advisory Action mailed May 1, 2009, has withdrawn
the § 101 and § 112, first paragraph, rejections of claims 27-28 and indicated
claims 27-28 as allowable. The Examiner has also withdrawn the § 112,
first paragraph, rejection of claims 1-4, 8, and 10 (Ans. 3). Accordingly,
only the § 102(b) rejection of claims 1-4, 8, and 10 is before us for review.
2 We note that the claims are sequenced out of order. It is reminded that
dependent claims must refer to a preceding claim. See e.g., MPEP
608.01(n)(IV). Presently, dependent claim 13 depends from subsequent
independent claim 14 as opposed to a preceding claim. For purposes of this
appeal, we treat this informality as harmless error.
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Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases added:
1. A system for storing information, comprising:

a computing device having a computing device (CD)
display and a processor for controlling the CD display;

a portable storage device (PSD) configured to
communicate with the computing device, said PSD being a
computer mouse shaped to fit in a user’s hand and to function
as an input mechanism for the computing device through
movement of the user’s hand, said PSD further having a PSD
display, a PSD processor configured to control the PSD
display, and a PSD memory, wherein the PSD includes a PSD
interface configured to enable communication with at least one
of another computing device, a camera, a printer, and a
projector; and

an input mechanism configured to enable selection of
information displayed on at least a portion of the CD display
and to activate an information capture application, wherein the
information capture application is configured to assign a visual
cue to the selected information, and wherein the information
capture application is further configured to store the selected
information and the assigned visual cue in the PSD memory in
response to activation of the input mechanism.

The Examiner’s Rejection
The Examiner rejected claims 1-4, 8, and 10 under 35 U.S.C. § 102(b)
as being anticipated by Natoli (US 6,388,657 B1). Ans. 3-5.
Appellant’s Contentions
Appellant contends (App. Br. 7-9; Reply Br. 4-6) that the Examiner
erred in rejecting claims 1-4, 8, and 10 under 35 U.S.C. § 102(b) for
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numerous reasons, including:
(i) Natoli’s glove is not a computer mouse shaped to fit in a user's
hand as required by claim 1 (App. Br. 8-9; Reply Br. 4-6); and
(ii) Natoli’s glove does not further have a PSD display, a PSD
processor configured to control the PSD display, and a PSD memory as
required by claim 1 (App. Br. 8-9)
Issue on Appeal
Did the Examiner err in rejecting the claims because Natoli neither
shows nor discloses the PSD being a computer mouse shaped to fit in a
user’s hand, the PSD further having a PSD display, a PSD processor
configured to control the PSD display, and a PSD memory, as set forth in
claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 8-9) and the Reply Brief (Reply
Br. 4-6) that the Examiner has erred.
We agree with Appellant’s above contention that Natoli neither shows
nor discloses the PSD being a computer mouse shaped to fit in a user’s hand,
the PSD further having a PSD display, a PSD processor configured to
control the PSD display, and a PSD memory, as required by claim 1.
(i) Natoli’s glove is not a computer mouse shaped to fit in a user’s hand,
because the user’s hand fits in the glove
The Examiner asserts that in Natoli the user’s hand controls a
configuration of a glove in which the glove is curved with a finger extended
so as to be in position for mouse use and thus meets the limitation, “said
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PSD being a computer mouse shaped to fit in a user’s hand,” at issue in
claim 1 (Ans. 5, 7). We disagree.
Appellant point out that Natoli’s glove (see Fig. 2) is not a computer
mouse (App. Br. 8-9). Appellant also point out that the glove fits over the
hand, not in the hand (Reply Br. 5). In other words, the hand fits in the
glove, which at very least is opposite to that which is claimed.
The Examiner asserts, specifically, that “‘[the] PSD being a computer
mouse shaped to fit in a user’s hand’ is not narrow and specific” and could
be met by the VR glove because the VR glove can “[be] position[ed] for a
mouse use, in which the VR glove is curved with the fingers extending about
and/or surrounding at least a portion of a mouse” (Ans. 7).
While we agree that the glove, by way of bending fingers of the user’s
hand, may be shaped so as to simulate or facilitate holding a mouse, we
disagree that the glove is a mouse shaped to fit in the user’s hand.
We, therefore, agree with Appellant that Natoli neither shows nor
discloses the PSD being a computer mouse shaped to fit in a user’s hand as
required by claim 1.
(ii) Natoli’s glove does not further have a PSD display, a PSD processor
configured to control the PSD display, and a PSD memory
The Examiner asserts that Natoli discloses a virtual reality system
comprising VR gloves, a VR headset having an LCD display, a
microprocessor, and a memory and thus meets the limitation, “said PSD
further having a PSD display, a PSD processor configured to control the
PSD display, and a PSD memory,” at issue in claim 1 (Ans. 4, 6-7). We
disagree. The Examiner asserts that since Figures 1 and 31 show a display,
processor, and memory, these required claim limitations are anticipated
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(Ans. 6).
Appellant point out that neither the VR gloves nor the VR mouse have
a PSD display, a PSD processor configured to control the PSD display,
and/or a PSD memory (App. Br. 9).
We disagree with the Examiner because: (1) the display (Fig. 1, VR
headset) is not a PSD display that the glove has; (2) the processor (Fig. 1,
first processor) is not a PSD processor, that the glove also has, to control the
PSD display that the glove has; and (3) the memory, included with the first
processor, (not shown, but necessarily present) is not a PSD memory that the
glove further has.
We agree with Appellant that Natoli neither shows nor discloses the
PSD, which is a computer mouse shaped to fit in a user’s hand, further
having a PSD display, a PSD processor configured to control the PSD
display, and a PSD memory as required by claim 1.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting 1-4,
8, and 10 as being anticipated under 35 U.S.C. § 102(b) because Natoli fails
to show or disclose:
(i) the PSD device being a computer mouse shaped to fit in a
user’s hand as required by claim 1; and
(ii) the PSD device further having a PSD display, a PSD
processor configured to control the PSD display, and a PSD memory
as required by claim 1.
(2) On this record, claims 1-4, 8, and 10 have not been shown to be
unpatentable.
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DECISION
The Examiner’s rejection of claims 1-4, 8, and 10 is reversed.

REVERSED

msc