Ex parte WEINBLATT

Board of Patent Appeals and Interferences

May 28, 1998

08309544 (B.P.A.I. May. 28, 1998)

Application for patent filed September 20, 1994. 1
According to the appellant, this application is a continuation
of Application 08/003,327, filed January 12, 1993.
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not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LEE S. WEINBLATT

_____________
Appeal No. 96-3288
Application 08/309,5441
______________
ON BRIEF
_______________
Before THOMAS, KRASS and JERRY SMITH, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-3288
Application 08/309,544
2
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 and 3 to 16, which constitute all
the claims remaining in the application.
Representative claim 1 is reproduced below:
1. A finger-mounted computer interface device for use
with a touch-screen type of monitor, comprising:
a stylus; and
ring means for mounting said stylus on a finger of a
person such that said stylus is positioned above the finger in
a manner that does not interfere with a typing operation of
the finger on a keyboard, said stylus being connected with
said ring means so as to permit engagement of said stylus with
a touch-screen type of monitor of a computer when said
mounting finger is moved toward said monitor screen;
wherein said ring means has a center longitudinal axis
and said stylus has a center longitudinal axis which is spaced
from and substantially parallel to the center longitudinal
axis of said ring means.
The following references are relied on by the examiner:
Narayanan 3,835,453 Sep.
10, 1974
Garwin et al. (Garwin) 4,845,684 Jul. 04,
1989
Levine 4,954,817 Sep. 04,
1990
Gilchrist 5,144,594 Sep.
01, 1992
All claims on appeal stand rejected under 35 U.S.C. §
103. As evidence of obviousness, the examiner relies upon
Appeal No. 96-3288
Application 08/309,544
3
Garwin in view of Levine as to claims 1, 3, 4 and 7 to 16,
with the addition of Gilchrist as to claim 5, and with a
separate addition of Narayanan as to the original combination
for claim 6.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for
the respective details thereof.
OPINION
We reverse all rejections.
At page 4 of the answer, the examiner asserts that it
would have been obvious for the artisan to have included the
ring means taught by Levine in the device of Garwin so that
the stylus [in Garwin?] could have been mounted on a finger
and would not have interfered with a typing operation. In
reality, there are two ring means in Levine’s figures 1 and 2,
that of the stylus ring 10 with its stylus ring point 12 and
that of the finger palette 20 and its associated ring 24. We
are not sure how this combination would be achieved.
We agree with one of appellant’s views that Levine’s
device appears to be self contained and would not require the
user to remove a hand from a keyboard to enable a certain data
Appeal No. 96-3288
Application 08/309,544
4
entry operation with the finger palette 20-stylus ring 10
combination. Thus, we do not understand why the artisan would
have found it obvious within 35 U.S.C. § 103 to have modified
Levine in view of Garwin’s teaching.
We also do not understand why the artisan would have
found it obvious within 35 U.S.C. § 103 to have modified
Garwin’s teachings in light of Levine. The examiner’s
approach may be based upon the general, broad teaching of
Levine that this reference indicates it was known in the art
to have devices attached to the thumb and fingers of users
typing information on a keyboard as shown in Levine’s Fig. 2
such that, on this basis, the examiner took the view that it
would have been obvious for the artisan to have modified the
stylus of Garwin in view of Levine. The self-contained nature
of Levine’s teachings leads away from this interpretation. If
we were to assume, for the sake of argument, that the artisan
would have so combined a general teaching from Levine of hand
or finger mounted data entry means with the stylus of Garwin,
the examiner’s position does not come to grips with the
majority of the limitations of each independent claim on
appeal other than to dismiss them as “design choice”. Why the
Appeal No. 96-3288
Application 08/309,544
5
stylus would be positioned above the finger as in independent
claim 1 is allegedly a design choice to the examiner. The
examiner specifically argues at page 4 of the answer that the
center longitudinal axis of the ring being parallel to that of
the stylus as well as the specific orientations set forth in
claims 8 to 14 were considered by the examiner to have been a
matter of design choice. Design choice arguments, while valid
per se, have limited applicability and persuasiveness.
Furthermore, the examiner views method claim 16 as
setting forth how to use the apparatus allegedly specified in
claim 1. The examiner apparently views that since the device
of Garwin as modified by Levine meets the apparatus claim 1
limitations,
the method of claim 16 is inherently met. This and the design
choice line of reasoning advanced by the examiner as to the
initial claims on appeal essentially beg the question within
35 U.S.C. § 103. Substantially all or major portions of each
independent claim on appeal are left unexplained as to why
they would have been obvious other than on the basis of such
weak arguments. Certainly, there is little evidence in the
applied prior art of Garwin and Levine to suggest to the
Appeal No. 96-3288
Application 08/309,544
6
artisan the obviousness of the subject matter of at least the
independent claims on appeal. As such, and since Gilchrist
and Narayanan fail to cure the deficiencies of Garwin and
Levine as to dependent claims 5 and 6, the respective
rejections under 35 U.S.C. § 103 of all claims on appeal are
reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JERRY SMITH )
Administrative Patent Judge )
FRISHAUF, HOLTZ, GOODMAN & WOODWARD, P.C.
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Appeal No. 96-3288
Application 08/309,544
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