Ex Parte Fu

Patent Trial and Appeal BoardNov 15, 2012

10947621 (P.T.A.B. Nov. 15, 2012)

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. 10/947,621 09/21/2004 Peng C. Fu 5742P003 1236 8791 7590 11/15/2012 BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER NGUYEN, KEVIN M ART UNIT PAPER NUMBER 2697 MAIL DATE DELIVERY MODE 11/15/2012 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 PENG C. FU ____________________ Appeal 2010-011213 Application 10/947,621 Technology Center 2600 ____________________ Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and LARRY J. HUME, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011213 Application 10/947,621 2 STATEMENT OF CASE1 The Appellant seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-36, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. The Appellant invented the mapping of control functions to the input mechanism of the input device. Specification ¶ 0001. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]: 1. A device comprising: [1] a first input mechanism housed within the device, the first input mechanism to activate a function; and [2] a mapping mechanism housed within the device and coupled to the first input mechanism, the mapping mechanism to initiate and control mapping of a portion of an axis of a second input mechanism to the first input mechanism, the mapping being internal to the device and independent of external devices and software. 34. A device comprising: [1] a first non-standard input mechanism housed within the device, the first non-standard input mechanism to activate a function; and [2] a mapping mechanism coupled to the first non-standard input mechanism to initiate and control mapping of a function to the first non-standard input mechanism within the device and independent of external devices and software. 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Apr. 6, 2010) and Reply Brief (“Reply Br.,” filed Aug. 9, 2010), and the Examiner’s Answer (“Ans.,” mailed Jun. 14, 2010), and Final Rejection (“Final Rej.,” mailed Oct. 1, 2009). Appeal 2010-011213 Application 10/947,621 3 REFERENCES The Examiner relies on the following prior art: Karabed Sayler Akatsuka US 5,317,505 US 5,923,317 US 6,764,401 B1 May 31, 1994 Jul. 13, 1999 Jul. 20, 2004 Cheng Arling US 2001/0044338 A1 US 2004/0056789 A1 Nov. 22, 2001 Mar. 25, 2004 REJECTIONS Claim 34 stands rejected under 35 U.S.C. §102(e) as being anticipated by Arling. Claims 1-5, 72, 8, 9, 11-17, 19-27, 29, 30, 32, and 33 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Arling and Akatsuka. Claim 6 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Arling, Akatsuka, and Cheng. Claim 9 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Arling, Akatsuka, Karabed. Claims 10, 18, 28, and 31 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Arling, Akatsuka, and Sayler. Claims 35 and 36 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Arling and Sayler. 2 The Examiner omitted claim 7 from the summary of rejection. Ans 3. Nonetheless we consider claim 7 to be included in the rejection as the Examiner has provided an analysis specifically rejecting claim 7 under 35 U.S.C. 103(a) as unpatentable over Arling and Akatsuka. Ans. 8. Appeal 2010-011213 Application 10/947,621 4 ISSUES The issue of whether the Examiner erred in rejecting claims 1-36 turns on whether the cited prior art teaches or suggests various limitations argued for claims 1, 4-6, 10, 14, 16, 18, 19, 20, 22, 23, 28, 31, and 34. ANALYSIS Claim 34 The Appellant contends that Arling fails to describe “mapping on to any input mechanism a function that is already assigned.” App. Br. 9-10 and Reply Br. 6-7. We disagree with the Appellant. Claim 34 recites “a mapping mechanism . . . to initiate and control mapping of a function to the first non-standard input mechanism.” Claim 34 does not require mapping a function onto an input mechanism that has a function already assigned. As such, the Appellant’s argument is not persuasive because the Appellant’s argument is not commensurate with the scope of the claimed invention. Furthermore, as found by the Examiner, Arling describes mapping a series of activities or functions to a single input as a macro. Ans. 15-16 (citing Arling ¶¶ 0039-0041). That is, Arling describes mapping a function to a input mechanism. The Appellant further contends that Arling describes hard keys, which cannot be construed to be non-standard input mechanisms. App. Br. 10 and Reply Br. 7-8. We disagree with the Appellant. The Appellant generally alleges that Arling’s hard keys cannot be non-standard input mechanisms because home appliances are provided with remote controls that include hard keys. App. Br. 10. However, this argument fails to clearly illustrate how the claimed non-standard input mechanisms are distinguished from Appeal 2010-011213 Application 10/947,621 5 those described by Arling. As found by the Examiner, Arling describes several input mechanisms, including buttons for up, down, fast forward, rewind, etc. Ans. 15 (citing Arling Fig. 2b) and Arling Fig. 5. Absent a narrowing definition of “non-standard input mechanism” in the Specification or the claims, we agree with the Examiner that a “non-standard input mechanism” encompasses the input mechanisms described by Arling. The Appellant also contends that Arling fails to describe a “game controller.” App. Br. 10-11 and Reply Br. 7. We disagree with the Appellant. First, claim 34 does not require that the device is specifically limited to a game controller. As such, the Appellant’s argument is not persuasive because the Appellant’s argument is not commensurate with the scope of the claimed invention. Furthermore, we agree with the Examiner that Arling describes a universal remote controller that is capable of performing the functionality claimed and the requirement that the device is limited to a “game controller” would be nothing more than an intended use of the device. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As such, the Appellant’s argument is not found persuasive. Claim 1 The Appellant first contend that the combination of Arling and Akatsuka as proposed by the Examiner is technically not possible. App. Br. 12-13 and Reply Br. 9-11. The Appellant specifically argues that “there is no indication that the remote control of Arling would have the capabilities of executing the game software of Akatsuka” and the combination of the references would require “a complete reengineering of the references.” App. Br. 12-13. We disagree with the Appellant. First, claim 1 does not Appeal 2010-011213 Application 10/947,621 6 specifically require “game software.” As such, the Appellant’s argument is not commensurate with the scope of claim 1. Furthermore, the Appellant has not provided any specific evidence or rationale that the combination of a universal remote that has the capability of executing a function based upon an input mechanism with a game controller that executes a function based upon an input mechanism would yield anything more than predictable results. The Appellant merely asserts that such a combination would require a greater processing power than that available in Arling (Reply Br. 9-10), but fail to provide any evidence to support such an assertion. On the contrary, the Examiner has provided an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. As such, the Appellant’s argument is not found to be persuasive. The Appellant also contends that the combination of Arling and Akatsuka fails to teach or suggest “‘a mapping mechanism housed within a device’ that is capable of initiating and controlling the ‘mapping of a portion of an axis of a second input mechanism to a first input mechanism’ where that first input mechanism activates a function.” App. Br. 14-15. The Appellant specifically argues that the portions cited by the Examiner fail to teach or suggest the mapping mechanism of claim 1. App. Br. 14-15. We disagree with the Appellant. The Examiner relies Akatsuka to describe a “portion of axis” and Arling to describe the mapping mechanism. Ans. 4. The Appellant’s arguments regarding Alring’s failure to describe the mapping mechanism are the same as those presented supra in support of claim 34. As such, these arguments are not persuasive for the same reasons. The Appellant further contends that “the remote of Arling has not been shown to have any input mechanism with an axis such that a portion of Appeal 2010-011213 Application 10/947,621 7 the axis having a function assigned could be mapped to another input mechanism.” App. Br. 15-16. We disagree with the Appellant. Claim 1 requires mapping a portion of an axis of a second input mechanism to a first input mechanism. As noted supra, the Examiner has relied on Akatsuka to describe “an input mechanism with an axis such that a portion of the axis having a function assigned.” Ans. 4. As found by the Examiner and the Appellant, Akatsuka describes a game controller with a plurality of inputs, including a directional pad or a cross pad. Ans. 18 (citing Akatsuka 7:1-7 and Fig. 5) and App. Br. 15-16. The Examiner interpreted a “portion of an axis” to encompass sequentially pressing a key, as described by Akatsuka. Id. Akatsuka further describes the use of levers or joysticks to control functions. Akatsuka 10:51-54 and Fig. 17A. That is, Akatsuka describes a second input mechanism that includes an axis. As discussed supra, Arling describes mapping a function from a second input to a first input. As such, the combination of Arling and Akatsuka describes “the remote of Arling has not been shown to have any input mechanism with an axis such that a portion of the axis having a function assigned could be mapped to another input mechanism.” Furthermore, the Appellant’s argument that Arling has not been shown to have any input mechanism with an axis and therefore a portion of an axis having a function cannot be mapped to Arling (App. Br. 15-16) is not persuasive. The Appellant has not provided any evidence that demonstrates that the inputs of Arling cannot have an axis. Even assuming, arguendo, that Arling’s inputs do not include an axis, the Appellant has not provided any evidence that a portion of an axis cannot be mapped to the inputs of Appeal 2010-011213 Application 10/947,621 8 Arling. Absent any evidence to distinguish the claimed invention from the prior art, we do not find the Appellant’s arguments to be persuasive. Claims 2, 3, 7, 8, 11, 12, 13, 15, 17, 25, 26, 29, and 30 The Appellant contends that the Examiner erred in rejecting independent claims 15, 25, and 29 and dependent claims 2, 3, 7, 8, 11, 12, 13, 17, 26, and 30 for the same reasons asserted in support of independent claim 1. We disagree with the Appellant. The Appellant’s arguments in support of claim 1 were not found to be persuasive supra and are not persuasive here for the same reasons. Claims 4-6, 10, 14, 16, 18, 19, 20, 22, 23, 28, and 31 The Appellant presents arguments in support of claims 4-6, 10, 14, 16, 18, 19, 20, 22, 23, 28, and 31. App. Br. 16-29 and Reply Br. 11-14. We disagree with the Appellant. We find that the Examiner has fully responded to these arguments. Ans. 19-22. Accordingly, we adopt the Examiner’s findings and conclusions as our own. Ans. 4-11 and 19-22. As such, we sustain the Examiner’s rejection of claims 4-6, 10, 14, 16, 18, 19, 20, 22, 23, 28, and 31. Claims 9 and 35-36 The Appellant contends that claims 9 and 35-36 depend from independent claims 1 and 34 respectively, and the Examiner erred in rejecting these claims for the same reasons asserted in support of claims 1 and 34. We disagree with the Appellant. The Appellant’s contentions were Appeal 2010-011213 Application 10/947,621 9 not found to be persuasive supra and are not persuasive here for the same reasons. CONCLUSIONS The Examiner did not err in rejecting claims 1-36. DECISION To summarize, our decision is as follows.  The rejection of claims 1-36 is sustained. 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) (2011). AFFIRMED ke