CHEMAN SHAIK

Patent Trials and Appeals BoardOct 27, 2020

16692893 - (D) (P.T.A.B. Oct. 27, 2020)

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. 16/692,893 11/22/2019 CHEMAN SHAIK Shaik - 7 9550 27550 7590 10/27/2020 WALTER J. TENCZA JR. 100 Menlo Park Suite 210 Edison, NJ 08837 EXAMINER DICKE, CHAD M ART UNIT PAPER NUMBER 2693 MAIL DATE DELIVERY MODE 10/27/2020 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 CHEMAN SHAIK Appeal 2020-005303 Application 16/692,893 Technology Center 2600 Before BRADLEY W. BAUMEISTER, GREGG I. ANDERSON, and DAVID J. CUTITTA II, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.2 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Cheman Shaik. Appeal Brief filed March 13, 2020 (“Appeal Br.”), 1. 2 Oral arguments were heard on October 15, 2020. A transcript of the proceeding will be added to the record in due course. Appeal 2020-005303 Application 16/692,893 2 CLAIMED SUBJECT MATTER The claims are directed to a computer mouse that allows a user to move, rotate, and resize objects in a simulated three dimensional (3D) mode of operation. Spec.3 1. The 3D mouse “is very useful in gaming and virtual reality applications and three-dimensional simulation software.” Id. In addition to the top wheel, which already exists on a mouse, at least two more turn wheels may be located on a side of the mouse, a horizontal turn wheel and a lateral turn wheel. Id. at 11, Fig. 1 (depicting horizontal turn wheel 106, lateral turn wheel 108). In addition, first and second buttons are added to a left side of the mouse for translational motion and resizing. Id. at 11, Fig. 2 (first button 114, second button 116). The first button acts with each of the three wheels to control object movement in a vertical, horizontal, and a simulated direction. Spec. 1–2. The second button acts with each of the three turn wheels to control “object resizing in three different directions: vertical, horizontal, and a simulated direction which appears to be perpendicular to vertical and horizontal directions on a computer screen.” Id. at 2. A “toggle button is provided on the bottom side of the mouse to toggle between 2D and 3D modes of operation.” Spec. 2. The 3D mouse includes the two regular click buttons that every 2D mouse typically includes. Id. The toggle function can also be performed by “pressing one of the two buttons on the left side and the two click buttons simultaneously,” 3 We use “Spec.” to refer to the Specification filed November 22, 2019; “Final Act.” to refer to the Final Office Action mailed February 20, 2020; “Ans.” to refer to the Examiner’s Answer filed June 12, 2020; and “Reply Br.” to refer to the Reply Brief filed July 10, 2020. Appeal 2020-005303 Application 16/692,893 3 avoiding turning the mouse upside down to switch between 2D and 3D modes. Id. Apparatus claims 1 and 2, reproduced below, illustrate the claimed subject matter: 1. A computer mouse comprising means for controlling vertical direction movement in a first dimension of a visual object on a two dimensional computer screen during a three dimensional mode of operation; means for controlling horizontal direction movement in a second dimension of a visual object on a two dimensional computer screen during the three dimensional mode of operation; means for controlling movement of a visual object in a direction on the two dimensional computer screen, which appears to be in a third dimension, substantially perpendicular to the two dimensional computer screen during the three dimensional mode of operation; and means for changing between a two dimensional mode of operation and the three dimensional mode of operation. 2. A computer mouse comprising a housing; a lateral vertical turn wheel attached to the housing on a side wall of the housing and configured to rotate with respect to the housing and in a first plane to control simulated lateral vertical planar rotation of a visual object on a two dimensional computer screen during a three dimensional mode of operation; Appeal 2020-005303 Application 16/692,893 4 a horizontal turn wheel attached to the housing on a side wall of the housing and configured to rotate with respect to the housing and in a second plane which is perpendicular to the first plane to control simulated horizontal planar rotation of the visual object on the two dimensional computer screen during the three dimensional mode of operation; and a straight vertical turn wheel attached to the housing on a top of the housing and configured to rotate with respect to the housing and in a third plane which is perpendicular to the first plane and the second plane to control rotation of the visual object on the computer screen in a vertical plane which appears on the computer screen to be substantially perpendicular to the two dimensional computer screen during the three dimensional mode of operation. Appeal Br. 30–31. REFERENCES The Examiner relies on the following references. Name4 Reference Date Kim US 2014/0085205 A1 Mar. 27, 2014 Wang ’612 US 5,936,612 Aug. 10, 1999 Wang ’663 US 2002/0060663 May 23, 2002 Gibbons “X-Mouse Button Control User Guide” 2005 4 All reference citations are to the first named inventor only. The “Phoenix” reference is to the publisher. Appeal 2020-005303 Application 16/692,893 5 Name Reference Date Von Schroeter US 2006/0212154 Sept. 21, 2006 Phoenix https://www.youtube.com/watch?v= E9IKFv9nQC0 Sept. 2018 Kujawski US 2013/0169424 A1 July 4, 2013 REJECTIONS5 Claim 1 is rejected under 35 U.S.C. § 103 over Kim and Wang ’612. Final Act. 4–5. Claims 2, 5, 6, 10, and 15 are rejected under 35 U.S.C. § 103 over Kim and Wang ’663. Id. at 5–10. Claims 3 and 7 are rejected under 35 U.S.C. § 103 over Kim, Wang ’663, and Gibbons. Id. at 10–12. Claims 4 and 8 are rejected under 35 U.S.C. § 103 over Kim, Wang ’663, and Von Schroeter. Id. at 12–14. Claims 9, 13, 14, and 18 are rejected under 35 U.S.C. § 103 over Kim, Wang ’663, and Wang ’612. Id. at 14–16. Claims 11 and 16 are rejected under 35 U.S.C. § 103 over Kim, Wang ’663, Gibbons, and Von Schroeter. Id. at 16–19. Claims 12 and 17 are rejected under 35 U.S.C. § 103 over Kim, Wang ’663, Gibbons, Von Schroeter, and Phoenix. Id. at 19–20. Claim 19 is rejected under 35 U.S.C. § 103 over Kim, Wang ’663, Wang ’612, and Gibbons. Id. at 20–21. 5 The Examiner initially objected to claims 3 and 5 for various informalities (Final Act. 2), but Appellant alleges that objections to claim 2, 3, and 5 have been overcome by the Amendment After Final Office Action, dated March 13, 2020 (“Amendment”). Appeal Br. 2; see also Amendment 2–4 (amending claim 2, from which claim 3 depends, and claim 5). Appeal 2020-005303 Application 16/692,893 6 Claim 20 is rejected under 35 U.S.C. § 103 over Kim, Wang ’612, and Kujawski. Id. at 21–22. STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv). CONTENTIONS AND ANALYSIS 1. Does the combination of Kim and Wang ’612 disclose “means for changing between a two dimensional mode of operation and the three dimensional mode of operation” (“change of mode limitation”) as recited in claim 1?6 The Examiner finds Kim teaches a mouse for “3D movement and rotational input” in addition to “well-known” movement in a two dimensional plane. Final Act. 4–5 (citing Kim ¶¶ 3, 57, 107, 109, Fig. 87). For the change of mode limitation, the Examiner relies on Wang ’612, which teaches a button to “enable or disable the transfer of rotation information.” Id. at 5 (quoting Wang ’612, 7:56 (“mouse 20 and/or its interface to a host 6 Because they include the terminology “means for,” the Examiner interprets claims 1, 9 and 20 under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. Final Act. 3. The Examiner therefore interprets the means for claims as covering “the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.” Id. Appellant does not respond to this assertion, so for purposes of our analysis, we presume the recitation of “means for” invokes section 112(f). 7 “Figure 8 is a concept diagram to generate 3D control signals.” Kim ¶ 57. Appeal 2020-005303 Application 16/692,893 7 computer system may be constructed to toggle between 2-D and 3-D modes when a user clicks middle button 28 of mouse 20.”)); Ans. 4. The Examiner further finds a person of ordinary skill would have reason to combine Wang ’612 with Kim to provide a means for a user to switch between the 2D and 3D modes taught by Kim. Id. Appellant argues that, because Kim expressly describes 2D operation and provides no means for switching to 3D operation, Kim teaches away from the change of mode limitation. Appeal Br. 13–14 (citing Kim ¶¶ 111– 112). Appellant argues that Wang ’612 does not teach the change of mode limitation because the disclosed switching means “disables the transfer of rotation information from an encoder 50 (from ring 40 or 40A) in a 2D mode.” Id. at 14 (citing Wang ’612, 7:32–50). Appellant does not address the change of mode limitation in its Reply. See generally Reply Br. The Examiner asserts that the ability to disable the encoder 50 does not mean the switching function is not operable and does not teach away from making the combination. Ans. 4. The Examiner restates that Wang ’612 is relied on for the change of mode limitation. Id. We agree with the Examiner. Kim does not teach away from a change of mode because it does not discourage switching or changing from 2D to 3D mode. See, e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Indeed, Kim discloses both 2D and 3D operation. Final Act. 4–5 (citing Kim ¶¶ 3 (“Kim teaches moving an object in three dimensions (three dimensional mode) using a mouse and the well-known feature of a mouse able to move a pointer in a two-dimensional plane”), 57, 107, 109, Fig. 8). That Kim does not expressly teach how to change modes, does not mean it discourages changing modes. Appeal 2020-005303 Application 16/692,893 8 More generally, we are not persuaded that disabling the encoder of Wang ’612 is any different from changing modes. See Appeal Br. 14 (citing Wang ’612, 7:32–50). Wang ’612 expressly teaches “a control for switching between 2-D and 3-D modes” is the same as “i.e. enabling or disabling the transfer of ring rotation information.” See Wang ’612, 7:51–53 (parenthetical equating the two). Stated another way, ring rotation is the 3-D mode. Indeed, the portion of Wang ’612 relied upon by Appellant also equates the encoder to “rotation information.” Wang ’612, 7:34–37. Claim 20 depends from claim 1 and additionally recites “means for controlling vertical direction movement and horizontal direction movement of a visual object on a two dimensional computer screen during a three dimensional mode of operation include a finger pad (“finger pad limitation”).” The Examiner relies on Kim and Wang ’612 as above for claim 1 and Kujawaski for the “finger pad” limitation. Final Act. 22 (citing Kujawski ¶ 20). The Examiner’s rationale for the combination is that Kujawski teaches a finger pad on a mouse as providing for vertical and horizontal movement. Final Act. 22 (citing Kujawski ¶ 20). In addition, the Examiner asserts, as follows: The combination of Kim and Wang [’612] disclose a base process/product of a mouse [that] provide vertical and horizontal directional movement of a visual object on a two dimensional screen[,] which the claimed invention can be seen as an improvement in that the directional movement can be provided during a three dimensional mode of operation. Kujawski teaches a known technique of using a finger pad on a mouse [that] provides vertical and horizontal scrolling inputs (vertical and Appeal 2020-005303 Application 16/692,893 9 horizontal movement), [which] is comparable to the base process/product. Id. Appellant does not dispute this showing (Appeal Br. 28), and we find the Examiner’s findings regarding Kujawski persuasive. In addition to its arguments regarding claim 1, Appellant denies Kujawaski teaches the finger pad limitation. See Appeal Br. 28 (wherein Appellant only argues, “[t]he combination of limitations of claim 20 are not disclosed or suggested by the prior art cited.”). Mere attorney denials are insufficient to overcome the Examiner’s prima facie case that claim 20 would have been obvious over Kim, Wang ’612, and Kujawski. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument is not factual evidence required to rebut a prima facie case of obviousness). We, therefore, sustain the Examiner’s rejection of claims 1 and 20. 2. Does the combination of Kim and Wang ’663 teach “a lateral vertical turn wheel attached to the housing on a side wall of the housing” and “a horizontal turn wheel attached to the housing on a side wall of the housing” (side wall housing limitations”) as recited in claim 2? “Before considering the rejections . . ., we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). The plain meaning of the side wall housing limitations of claim 2 requires two turn wheels, one for the vertical turn wheel and one for the horizontal turn wheel. The Examiner cites to Kim as teaching multiple wheels for three dimensional movement, determining that the wheels “can be configured in a different position.” Final Act. 6 (citing Kim ¶ 86, Fig. 8). For the side wall housing limitations, the Examiner cites Wang ’663 as teaching “a wheel attached to a housing on a side wall of the housing as illustrated in Fig. 1A, Appeal 2020-005303 Application 16/692,893 10 wheel 126.” Id. (citing Wang ’663, Fig. 1A (ring 112 and flange 126); see also ¶¶ 51–55 (describing ring 112). Appellant argues Kim’s wheels control rotation in two of the recited three planes of claim 2. Appeal Br. 15 (citing Kim Fig. 3, wheels 131, 133, 135, 137). Appellant also argues the ring 112 of Wang ’663 is a single ring providing control input in only one dimension. Id. The Examiner responds by pointing out that Kim’s scroll wheels provide control in two planes perpendicular to each other and Wang ’663’s ring provides control in a different plane to the two planes of Kim. Ans. 5 (see Examiner’s annotation of Kim Fig. 3(a), Wang ’663 Fig. 1A, and a composite of the two with wheels of Kim added to the top of Figure 1A of Wang ’663). In its Reply, Appellant argues the X and Y input of Wang ’663 is not by use of wheels and is a different type of movement from the use of wheels and therefore “Wang ’663 [is] difficult to use for three dimensional operation.” Reply Br. 7. This distinction is argued by Appellant as a change to the principle of operation of the invention. Id. at 7–8 (citing MPEP § 2143.01).8 We agree with Appellant, as argued at the oral hearing, that the references do not teach the side wall housing limitations because neither Kim nor Wang ’663 teach two wheels mounted on the side of the housing. The Specification describes the claimed wheel configuration as advantageous in that it allows “movement in additional degrees of freedom.” 8 For the reasons discussed below, we need not decide whether the X and Y input in Wang ’663 is a different principal of operation than that recited in claim 2. Appeal 2020-005303 Application 16/692,893 11 Spec. 1. Further, this arrangement is “very useful in gaming and virtual reality applications and three-dimensional simulation software.” Id. The wheel arrangement and functionality claimed are in contrast to conventional mouse movements taught by Wang ’663. See, e.g., Wang ’663 ¶ 55 (users are provided “with a similar feeling to the conventional mouse for two- dimensional control”). Although Wang ’663 shows one wheel on the side of a housing, it does not show two wheels on the side of the housing, as required by the side wall housing limitations. See Wang ’663, Fig. 1A. Kim teaches multiple wheels on the top of a housing for movement in two planes that may be configured for “rotation related function,” i.e., 3-D function. Kim ¶¶ 85–86 (describing wheels shown in Fig. 3(a)), 106 (describing 3-D concepts for controller shown in Fig. 8). That Kim has multiple wheels and shows 3-D operation does not cure the lack of any teaching in either reference of two side wheels for controlling two separate planes of movement. We also are not persuaded that the Examiner has shown a reason to combine the teachings of Kim and Wang ’663 to show the side wall housing limitations. See Appeal Br. 15–16. The Examiner’s rationale for the combination is that it would have been predictable to use Wang ’663’s side wheel with Kim’s “known device (method, or product) that was ready for improvement.” Final Act. 7. The Examiner states one of ordinary skill would have been “able” to locate “wheels,” i.e., more than one wheel, “on a side housing which results in an improved process/product.” Id. The Examiner does not provide a reason why a person of ordinary skill would place two wheels on the side of the housing. The reasoning for Appeal 2020-005303 Application 16/692,893 12 why the combination would have been obvious is therefore conclusory and lacks sufficient factual support. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (a reason why a person of ordinary skill would combine the references must be articulated). Independent claims 5 and 6 also include the side wall housing limitations and have not been shown to be unpatentable for the same reasons discussed above in connection with claim 2. Dependent claims 3–4, and 7– 19 all depend from one of claims 2, 5, or 6 and, likewise, have not been shown to be unpatentable for the same reasons discussed above in connection with claim 2. For the above reasons, the Examiner has not carried the burden necessary to show that the side wall housing limitations would have been obvious to a person or ordinary skill. We, therefore, do not sustain the Examiner’s rejection of claims 2 through 19. Appeal 2020-005303 Application 16/692,893 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Kim, Wang ’612 1 2, 5, 6, 10, 15 103 Kim, Wang ’663 2, 5, 6, 10, 15 3, 7 103 Kim, Wang ’663, Gibbons 3, 7 4, 8 103 Kim, Wang ’663, Von Schroeter 4, 8 9, 13, 14, 18 103 Kim, Wang, ’663, Wang ’612 9, 13, 14, 18 11, 16 103 Kim, Wang ’663, Gibbons, Von Schroeter 11, 16 12, 17 103 Kim, Wang ’663, Gibbons, Von Schroeter, Phoenix 12, 17 19 103 Kim, Wang ’663, Wang ’612, Gibbons 19 20 103 Kim, Wang ’612, Kujawski 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART