Ex Parte 8010313 et al

Patent Trial and Appeal BoardMar 17, 2015

95000645 (P.T.A.B. Mar. 17, 2015)

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. 95/000,645 09/15/2011 8010313 1084.05 7821 8685 7590 03/17/2015 DERGOSITS & NOAH LLP Three Embarcadero Center Suite 410 SAN FRANCISCO, CA 94111 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/17/2015 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 ____________ MOVEA SA. Patent Owner and Appellant v. HILLCREST LABORATORIES, INC. Requester and Respondent ____________ Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 Technology Center 3900 ____________ Before MARC S. HOFF, JENNIFER L. McKEOWN, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 2 DECISION ON APPEAL Patent Owner Movea SA. (“Movea” or “Patent Owner”) appeals the Examiner’s decision to reject claims 1–21. App. Br. 6.1 We have jurisdiction under 35 U.S.C. §§ 134 and 315. We heard the case on February 11, 2015. A transcript of the hearing will be made of record in due course. We affirm. STATEMENT OF THE CASE Hillcrest Laboratories, Inc. (“Hillcrest” or “Requester”) filed a request for inter partes reexamination on September 15, 2011, of claims 1–21 of United States Patent 8,010,313 B2 (the “’313 Patent”), which issued to Michael Mathews and Walter Mason on August 30, 2011. The ’313 Patent pertains to a handheld pointing device (e.g., a mouse) that is usable in three dimensions. The pointing device uses algebraic algorithms to calculate roll compensated cursor signals. See, generally, Abstract and 1:54–67. Claim 1, which is illustrative of the appealed subject matter, reads as follows: 1. A pointing device for controlling movement of a cursor on an electronic display comprising: 1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed June 25, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed Sept. 24, 2013 (“App. Br.”); (3) Requester’s Respondent Brief filed Oct. 24, 2013 (“Req. Resp. Br.”); (4) the Examiner’s Answer mailed Aug. 8, 2014 (“Ans.”); and (5) Patent Owner’s Rebuttal Brief filed Sept. 8, 2014 (“Reb. Br.”). Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 3 a first rotational sensor providing a first rotational velocity signal Rx for rotational movement about a first axis; a second rotational sensor providing a second rotational velocity signal Rz for rotational movement about a second axis; a first accelerometer providing a first acceleration signal Ax in response to a gravitational acceleration in a first direction along the first axis; a second accelerometer providing a second acceleration signal Az in response to a gravitational acceleration in a second direction along the second axis; a processing unit that (a) receives Rx, Rz, Ax and Az from the respective rotational sensors and accelerometers, (b) calculates a vector sum Axz of Ax and Az, (c) calculates roll- compensated cursor movement signals by solving: Xcomp = [Az * Rx + Ax * Rz]/ Axz Ycomp = [Ax * Rx – Az * Rz]/ Axz, and (d) transmits the roll-compensated cursor movement signals to a receiver associated with movement of the cursor on the electronic display. RELATED PROCEEDINGS We are informed that there are no proceedings related to the ’313 Patent. THE PRIOR ART Liberty (US 7,158,118; issued Jan. 2, 2007). Ang, Active Tremor Compensation in Handheld Instrument for Microsurgery, Carnegie Mellon University, (May 2004) (herein “Ang”). Bronshtein et al., Handbook of Mathematics, (5 th ed. 2007) (herein “Bronshtein”). Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 4 Turkowski et al., The use of Coordinate Frames in Graphics in Graphics Gems (Andrew S. Glassner ed. 1990) (herein “Turkowski”). Haynes et al., Computer Graphics Tools for the Visualization of Spacecraft Graphics, Naval Postgraduate School (Dec. 1993) (herein “Haynes”). Mikami et al., A Wireless-Interface SoC Powered by Energy Harvesting for Short- Range Data Communication, IEEE (2005) (herein “Mikami”). Chen et al., Development of Stereoscopic Haptic Acoustic Real-Time Computer (SHARC), SPIE, vol. 3295 (Jan. 1998) (herein “Chen”). Lottman (US 6,634,207; issued Oct. 21, 2003). Wayne H. Wolf, Hardware-Software Co-Design of Embedded Systems,” Proceedings of the IEEE, VOL 82, NO. 7 967-989 (July 1994) (herein “Wolf”). THE EXAMINER’S REJECTIONS Patent Owner appeals the Examiner’s rejecting claims 1–21 under 35 U.S.C. § 103(a) as obvious over Liberty. Patent Owner also appeals the Examiner rejecting claims 1–21 as obvious over Liberty with various combinations of Ang, Bronshtein, Turkowski, Haynes, Mikami, Chen, Lottman, and Wolf (30 additional grounds of rejection). App. Br. 12–14. CONTENTIONS AND ISSUE Patent Owner does not dispute that Liberty teaches or suggests each of the limitations of claim 1, except that Liberty does not teach or suggest an Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 5 algebraic method for calculating roll-compensated cursor movements. Patent Owner does not dispute that it was known in the art at the time of Patent Owner’s invention that trigonometry and algebra produce equivalent roll-compensated cursor movement results. Instead, Patent Owner asserts that calculating roll-compensated cursor movements using trigonometry and calculating roll-compensated cursor movements using algebra are not computationally equivalent and, therefore, it would not have been obvious to use algebra for computing roll-compensated cursor movements in place of Liberty’s use of trigonometry. Id. at 18. See also App. Br. 15–43; Reb. Br. 7–12 (asserting numerous reasons why the computational differences lead to non-obviousness). Patent Owner informs us that this appeal turns on two issues: 1) Did the Examiner err by incorrectly stating the problem to be solved by the claimed invention? 2) Did the Examiner err by engaging in impermissible hindsight reconstruction in finding the claims obvious over the prior art? See App. Br. 15. Patent Owner later states, however, that “[t]he definition of the problem to be solved is pivotal (and ultimately dispositive) to the propriety of the Examiner’s Rejections. Reb. Br. 7. (emphasis added). In view of the foregoing, we analyze as the dispositive issue: 1) Did the Examiner err by incorrectly stating the problem to be solved by the claimed invention? Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 6 THE OBVIOUSNESS REJECTION OVER LIBERTY Patent Owner argues the rejections as a group. App. Br. 15–43. We select claim 1 as representative of the issue on appeal. 37 C.F.R. § 41.67(c)(1)(vii). The Examiner cites Liberty for all elements of claim 1 but states that Liberty “does not specifically disclose that the processor calculates the vector sum Axz, or that the roll-compensation cursor movement signals are calculated by solving: XCOMP = [Az * Rx + Ax * Rx] / Axz YCOMP = [Ax * Rx – Az * Rz] / Axz.” RAN 11. The Examiner finds, however, that Liberty teaches that “the processor compensates for the roll (tilt) of the device by using the rotation matrix formula: 𝑅 = [ 𝑐𝑜𝑠𝜃𝑠𝑖𝑛𝜃 −𝑠𝑖𝑛𝜃𝑐𝑜𝑠𝜃 ] ∙ [ 𝛼𝑦 𝛼𝑧 ]” Id. The Examiner reasons that one skilled in the art would have appreciated that the equations taught by Liberty would have produced the equivalent result to the claimed equations. Id. The Examiner concludes that absent some degree of criticality, it would have been a routine and predictable design choice within the skill of a person of ordinary skill in the art to arrange for the processor to determine the X and Y roll-compensation values using formulas based on any of a variety of well-known alternative mathematical methods, such as an equivalent algebraic mathematical method instead of the trigonometric mathematical method. Id. We see no error. We find unpersuasive Patent Owner’s assertion that “[t]he Examiner provides no evidentiary support or common sense rationale for the incorrect conclusion that to the ordinary artisan, choosing or substituting algebraic Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 7 mathematical methods for trigonometric methods would have been routine and predictable.” App. Br. 19. It is undisputed that the trigonometric and algebraic forms of the methods produce predictably equivalent roll compensation results. To the extent Patent Owner argues that one skilled in the art would not have known this, we are unpersuaded. To the extent Patent Owner argues that one skilled in the art would not have known the algebraic method to be computationally more efficient, we note a lack of persuasive evidence to support the argument. But even assuming, without deciding, that the claimed invention does in fact result in material computational efficiencies, we find the argument irrelevant to the question of whether one skilled in the art would have found it obvious to make the substitution. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). Patent Owner asserts that the Examiner has defined the problem too broadly as “roll compensation” when the problem Patent Owner solved is “roll compensation under computational load that met the inventors’ hardware requirements.” App. Br. 17. Patent Owner does not cite persuasive authority for the proposition that the problem statement must be narrowed to the problem the inventors solved. To the contrary, as Requester correctly points out, the case law is clear that it is error to “look only to the problem the patentee was trying to solve” (KSR Int'l Co., 550 U.S. at 420). Hence, we are unpersuaded that the Examiner defined the problem over-broadly. Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 8 We accept Patent Owner’s assertion that “[t]he definition of the problem to be solved is pivotal (and ultimately dispositive) to the propriety of the Examiner’s Rejections.” Reb. Br. 7. Hence, because we find no error in the Examiner’s statement of the problem, we are unpersuaded the Examiner’s rejections are improper. To the extent Patent Owner’s remaining arguments (see App. Br. 15– 43; Reb. Br. 7–12) are not obviated by: 1) our decision that the Examiner did not err in defining the problem; and 2) Patent Owner’s admission that this issue is dispositive (supra), we adopt the Examiner’s response (Ans. (incorporating RAN); see RAN 44–52) to Patent Owner’s arguments. For emphasis, we note that we are unpersuaded that Liberty teaches away from the use of algebra to calculate roll-compensated cursor signals and are unpersuaded the Examiner engaged in impermissible hindsight reconstruction in finding the claims obvious. Patent Owner asserts that Liberty teaches away because Liberty uses low pass filtering to manage computational load, so an ordinarily skilled artisan would not have been motivated to look elsewhere. App. Br. 16; see also id. at 25–27. We are unpersuaded because a reference teaching a different way is not necessarily a teaching away from the claimed invention. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner has provided no persuasive evidence on this record to support Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 9 the assertion that Liberty teaches away from Patent Owner’s invention, apart from mere conclusory statements, which are unsupported by factual evidence and are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Regarding Patent Owner’s hindsight argument (App. Br. 15, 23, 31– 33), we are cognizant that our reviewing courts have not established a bright-line test for hindsight. However, in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court guides that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co.of Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court also qualified the issue of hindsight by stating that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Id. Our review of the record establishes that the Examiner’s case for obviousness is only based on knowledge which was within the level of ordinary skill at the time of the Appellants’ invention and does not include knowledge gleaned only from the Appellants’ disclosure. In view of the foregoing, we are unpersuaded of error in the Examiner’s rejection of claim 1 as obvious over Liberty. We sustain the Examiner’s rejection of claim 1 and of claims 2–21, which fall therewith. Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 10 CONCLUSION The Examiner has not erred in rejecting claims 1–21 as obvious under 35 U.S.C. § 103(a). Affirmance of the obviousness rejection over Liberty renders it unnecessary to reach the remaining rejections, as all claims subject to reexamination have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections). ORDER The Examiner’s decision to reject claims 1–21 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2015-001309 Reexamination Control 95/000,645 Patent 8,010,313 B2 11 Patent Owner: MICHAEL E. DERGOSITS DERGOSITS & NOAH LLP THREE EMBARCADERO CENTER SUITE 410 SAN FRANCISCO, CA 94111 Third Party Requester: RAJEEV GUPTA FINNEGAN HENDERSON FARABOW GARRETT & DUNNER, L.L.P. 901 NEW YORK AVENUE, N.W. WASHINGTON, DC 20001-4413