Ex Parte Schultz et al

Patent Trial and Appeal Board

May 16, 2013

11225680 (P.T.A.B. May. 16, 2013)

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.
11/225,680 09/13/2005 Kevin L. Schultz ROC920050210US1 5237
46797 7590 05/16/2013
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
SUTEERAWONGSA, JARURAT
ART UNIT PAPER NUMBER
2692
MAIL DATE DELIVERY MODE
05/16/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN L. SCHULTZ and KELLY J. TIERNEY
____________________

Appeal 2010-008172
Application 11/225,680
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants disclose an input device for controlling an electronic
device. The input device includes concentric touch pads. Contact with the
touch pads include tapping and/or sliding movement in order to provide a
signal that is processed and sent to the electronic device, which performs an
operation based on the input (Abs.; Spec. ¶ [0007]).
Exemplary Claim
Exemplary independent claim 13 under appeal, with emphasis added
to the disputed portions of the claim, read as follows:
13. An electronic device configured with a program for
receiving and implementing control signals from an input
device, comprising:

1 On September 28, 2009, Appellants filed an Appeal Brief. On October 22,
2009, a notification of non-compliant Appeal Brief was mailed to Appellants
indicating that the Appeal Brief was missing a summary of claimed subject
matter for claim 22. In response to the notification of non-compliant Appeal
Brief mailed on October 22, 2009, Appellants filed a complete Appeal Brief
including a summary of claimed subject matter for claim 22 on November
23, 2009. No Reply Brief was filed in response to the Examiner Answer
mailed on February 19, 2010. Throughout our decision, we make reference
to the Appeal Brief filed November 23, 2009 (“Br.”); the Examiner’s
Answer mailed February 19, 2010 (“Ans.”); and the Final Rejection mailed
May 14, 2009 (“Final Rej.”).
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a processor and memory containing the program, wherein
the processor when configured with the program performs an
operation responsive to receiving signals from the input device,
the signals corresponding to interactions with a center touch
pad and an annular touch pad separate from the center touch
pad and disposed concentrically around the center touch pad,
the operation comprising:

adjusting a first function of the electronic device
based on receiving a first input signal due to direction of a first
rotational sliding motion on the center touch pad; and

adjusting a second function of the electronic
device based on receiving a second input signal due to direction
of a second rotational sliding motion on the annular touch pad.

Examiner’s Rejections
(1) The Examiner rejected claim 13 under 35 U.S.C. § 102(b) as being
anticipated by Wu (US 6,992,658 B2). Ans. 3-4.
(2) The Examiner rejected claims 1, 4, 6, 8-11, 17, 18, 20, and 22 as
being unpatentable under 35 U.S.C. § 103(a) over Wu and Hagermoser (US
Pat. App. Pub. No.: 2005/0052426 A1). Ans. 4-8.
(3) The Examiner rejected claims 2, 5, 7, 12, and 21 as being
unpatentable under 35 U.S.C. § 103(a) over Wu, Hagermoser and Zadesky
(US 7,333,092 B2). Ans. 8-10.
(4) The Examiner rejected claims 3 and 19 as being unpatentable
under 35 U.S.C. § 103(a) over Wu and Hagermoser further in view of
Lefkowitz (US 5,367,199). Ans. 10-11.
(5) The Examiner rejected claims 14-16 as being unpatentable under
35 U.S.C. § 103(a) over Wu in view of Zadesky. Ans. 11-12.

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Appellants’ Contentions
(1) With regard to claim 13, rejected under 35 U.S.C. § 102(b) as
being anticipated by Wu, Appellants make numerous arguments (Br. 10-11),
including:
(a) Wu does not teach a center touch pad as required by claim
13 because the disk 302 of Wu is not a touch pad (Br. 10-11); and
(b) The portions of Wu cited by the Examiner do not describe
any kind of “rotational sliding motion on the center touch pad,” as
recited in claim 13 (Br. 11).
(2) With regard to the independent claims 1 and 17, rejected under
35 U.S.C. § 103(a) as being unpatentable over Wu and Hagermoser,
Appellants argue that Wu does not disclose a center touch pad (Br. 11-12).
(3) With regard to the independent claim 22 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wu and Hagermoser, Appellants argue
that Wu does not teach “receiving input corresponding to contact on the
center touch pad with a first rotational sliding motion to provide a first input
signal to the electronic device to adjust a first function of the electronic
device based on direction of the first rotational sliding motion,” as recited in
independent claim 22.
(4) With regard to the rejections of claims 2-12 (depending from
claim 1), 14-16 (depending from claim 13) and 18-21(depending from claim
17) under 35 U.S.C. § 103(a) over various combinations of Wu,
Hagermoser, Zadesky, and Lefkowitz, Appellants rely (Br. 11-13) on the
arguments made with respect to their respective independent claims 1, 13,
and 17. In view of the foregoing, our analysis will only address the merits of
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claims 1, 13 and 17 from which claims 2-12, 14-16, and 18-21 respectively
depend.
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (Br. 10-13), the
following issues are presented on appeal:
Independent Claim 13
Did the Examiner err in rejecting independent claim 13 as being
anticipated by Wu because Wu fails to disclose the limitations at issue in
independent claim 13?
Independent Claims 1 and 17
Did the Examiner err in rejecting independent claims 1 and 17 as
being obvious over Wu and Hagermoser, because Wu does not disclose a
center touch pad, as set forth in independent claims 1 and 17?
Independent Claim 22
Did the Examiner err in rejecting independent claim 22 as being
obvious over Wu and Hagermoser, because Wu does not disclose “receiving
input corresponding to contact on the center touch pad with a first rotational
sliding motion to provide a first input signal to the electronic device to adjust
a first function of the electronic device based on direction of the first
rotational sliding motion,” as recited in independent claim 22?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 10-13) that the Examiner has erred. We
disagree with Appellants’ conclusions.
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We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Ans. 3-12), (2) the reasons set forth
by the Examiner in the Final Rejection in response to Appellants’ arguments
(Final Rej. 10-11), and (3) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 12-14).
We highlight and amplify certain teachings and suggestions of the reference
Wu, as well as certain ones of Appellants’ arguments as follows.
Independent Claim 13
We agree with the Examiner’s findings ( Final Rej. 2 and 10-11) that
Wu teaches (Wu, Fig. 3 and 4 and col. 5, ll.1-4 and 11-12) a disk 302 (i.e., a
center touch pad) and a scrolling device 108 in the form of a ring (i.e., an
annular touch pad separate from the center touch pad and disposed
concentrically around the center touch pad) around the disk 302(Wu, col. 4,
ll. 10-18). We also agree with the Examiner (Ans. 3-4 and 13) that Wu
teaches changing the mode of operation of the disk 302 (i.e., a function)
based on the change in orientation of the disk caused by rotational sliding on
disk 302 (Wu, difference in location of the arrows of disk 302 shown in
Figs. 3 and 4; col. 4, ll. 27-36).
Appellants contend (See Appellants’ contention (1) (a)) (Br. 10-11)
that the disk 302 of Wu is not a touch pad because there is no indication in
Wu that disk 302 is capable of sensing touch from an object such as a finger
or a stylus, or providing input to a computer. We agree with the Examiner’s
interpretation (Final Rej. 10-11; Ans. 12-13) that the disk 302 of Wu is a
touch pad because Wu teaches the disk 302 to accept touch inputs (Wu, col.
5, ll. 1-4 and 11-12). We further note that Wu teaches accepting touch
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inputs by a finger, thumb or other object (Wu, col. 3, ll. 10-16) to provide
input to an electronic device (Wu, col. 3, ll. 4-9).
Appellants contend (See Appellants’ contention (1) (b)) (Br. 11) that
the portions of Wu cited by the Examiner only teach rotation of the disk 302
and not a sliding motion thereon as required by claim 13. We agree with the
Examiner (Final Rej. 10-11; Ans. 13-14) that Wu teaches changing the mode
of operation of the disk 302 based on the change in orientation of the disk
302 caused by rotational sliding on disk 302 because the difference in the
location of the arrows on disk 302 in figures 3 and 4 of Wu for different
input modes suggest rotational sliding on disk 302 (Wu, Figs. 3 and 4; col. 4,
ll. 27-36) to change the mode from figure 3 to figure 4.
We sustain the rejection of independent claim 13 as being anticipated
by Wu. Although Appellants nominally argued the rejection of claims 14-16
depending from claim 13 separately (Br. 13), the arguments presented do not
point out with particularity or explain why the limitations of the claims are
separately patentable. Accordingly, we sustain the rejection of claims 14-16
under 35 U.S.C. § 103(a).
Independent Claims 1 and 17
With regard to the Appellants’ contention (2) that Wu does not teach a
center touch pad as required by independent claims 1 and 17, we agree with
the Examiner’s findings (Ans. 5-6 and 10-11) that the disk 302 of Wu is a
“center touch pad”, for the same reason as with respect to independent claim
13 above, because Wu teaches the disk 302 to accept touch inputs (Wu, Figs.
3 and 4; col. 5, ll. 1-4 and 11-12).
We sustain the rejection of independent claims 1 and 17 as being
obvious over Wu and Hagermoser. Although Appellants nominally argued
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the rejection of claims 2-12 (depending from claim 1) and 18-21 (depending
from claim 17) separately (Br. 11-13), the arguments presented do not point
out with particularity or explain why the limitations of the claims are
separately patentable. Accordingly, we sustain the rejection of claims 2-12
and 18-21 under 35 U.S.C. § 103(a).
Independent Claim 22
Appellants contend (See Appellants’ contention (3)) that Wu does not
teach “receiving input corresponding to contact on the center touch pad with
a first rotational sliding motion to provide a first input signal to the
electronic device to adjust a first function of the electronic device based on
direction of the first rotational sliding motion” as recited in independent
claim 22, for the same reasons as presented for claim 13. We find that the
Examiner addressed (Ans. 7, 14) the limitations of claim 22 (Wu, col. 3, l.
31 – col. 4, l. 51). We agree with the Examiner that Wu teaches these
limitations for the same reasons as with respect to independent claim 13
above.
We sustain the rejection of independent claim 22 as being obvious
over Wu and Hagermoser.
In view of the foregoing, we conclude that the inventions recited in
claims 1-22 have not been shown to be patentably distinguishable from the
teachings of the applied prior art.

CONCLUSIONS
(1) The Examiner has not erred in in rejecting independent claim 13
on appeal, since Wu teaches a “center touch pad” and the “rotational sliding
motion on the center touch pad” as set forth in independent claim 13.
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(2) The Examiner has not erred in in rejecting independent claims 1
and 17, since Wu teaches the “center touch pad” as set forth in independent
claims 1 and 17.
(3) The Examiner has not erred in in rejecting independent claim 22,
since Wu teaches “receiving input corresponding to contact on the center
touch pad with a first rotational sliding motion to provide a first input signal
to the electronic device to adjust a first function of the electronic device
based on direction of the first rotational sliding motion” as recited in
independent claim 22.
DECISION
The Examiner’s rejection of claim 13 under 35 U.S.C. § 102(b) is
affirmed.
The Examiner’s rejections of claims 1-12 and 14-22 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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