Ex Parte Mcardle

Patent Trial and Appeal BoardJan 30, 2014

11538489 (P.T.A.B. Jan. 30, 2014)

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. 11/538,489 10/04/2006 JAMES MCARDLE AUS920060128US1 2114 45440 7590 01/31/2014 Street & Steele-IBM Corporation 13100 Wortham Center Drive, Suite 245 HOUSTON, TX 77065 EXAMINER MERKOULOVA, OLGA VLADIMIROVNA ART UNIT PAPER NUMBER 2692 MAIL DATE DELIVERY MODE 01/31/2014 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 JAMES McARDLE ____________ Appeal 2011-012731 Application 11/538,489 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012731 Application 11/538,489 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1, 3-7, 9, 11-14, 20, 23, and 24. Claims 2, 8, 10, 15-19, 21, and 22 have been canceled. (Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Invention The invention at issue on appeal concerns a computer input (pointing) device comprising a cantilever shaft with a rotatable free end, movement sensors to sense lateral movement of the shaft and a rotational sensor to sense the rotation of the free end. (Spec. 3, ¶¶ [0008]-[0010]; Abstract.) Exemplary Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 2. A pointing device for providing input to a computer, comprising: a pointing member coupled to a computer keyboard, the computer keyboard having a plurality of keys, the pointing member including a cantilevered shaft extending below the keys and having a supported end secured to a base beneath the keys and a free end accessible by hand, the free end freely rotatable 360 degrees relative to the supported end about an axis of the shaft; and a plurality of sensors coupled to the pointing member and electronically coupled to a central processing unit on the computer for sensing the movement of the shaft and outputting an electronic signal to the central processing unit representative of the movement, the plurality of sensors including at least one rotational sensor configured for sensing rotational movement of the free end of the shaft relative to the supported end of the Appeal 2011-012731 Application 11/538,489 3 shaft about an axis of the shaft and at least one translational sensor configured for sensing lateral displacement of the shaft. Rejections on Appeal 1. The Examiner rejects claims 1, 6, 7, 9, 23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent App. Pub. No. 2002/0057257 A1, published May 16, 2002 (“Hoggarth”), U.S. Patent No. 6,573,885 B1, issued Jun. 3, 2003 (“McVicar”), and U.S. Patent No. 5,821,920, issued Oct. 13, 1998 (“Rosenberg”). 2. The Examiner rejects claims 3-5 and 11-14 under 35 U.S.C. § 103(a) as being unpatentable over Hoggarth, McVicar, Rosenberg, and U.S. Patent No. 5,798,748, issued Aug. 25, 1998 (“Hilton”). 3. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Hoggarth, McVicar, Rosenberg, and U.S. Patent No. 5,889,507, issued Mar. 30, 1999 (“Engle”). ISSUE Based upon our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that Hoggarth, McVicar, and Rosenberg collectively teach or would have suggested a “pointing member including a cantilevered shaft . . . having a supported end secured to a base . . . and a free end accessible by hand, the free end freely rotatable 360 degrees relative to the supported end about an axis of the shaft” and “at least one rotational sensor configured for sensing rotational movement of the free Appeal 2011-012731 Application 11/538,489 4 end of the shaft relative to the supported end of the shaft about an axis of the shaft” as recited in Appellant’s claim 1? ANALYSIS The Examiner rejects independent claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Hoggarth, McVicar, and Rosenberg. (Ans. 4-6, 11-14.) Appellant contends that Hoggarth, McVicar, and Rosenberg do not render the claims obvious. (Br. 5-10.) We agree with Appellant that the portions of Hoggarth and McVicar identified by the Examiner do not teach or suggest the disputed features of independent claim 1. (Br. 6-9.) Specifically, we agree with Appellant that Hoggarth, cited by the Examiner as describing a shaft with a freely rotating end (Ans. 5-6, 11-12 (citing Hoggarth, ¶¶ [0019], [0026], [0031]; Figs. 1-4)), fails to describe a “free end freely rotatable 360 degrees relative to the supported end about an axis of the shaft” as recited in claim 1. (Br. 6-9.) In particular, we cannot agree with the Examiner’s interpretation of the disputed claim language. The Examiner seems to construe the limitation to mean the free end of the shaft is rotatable 360 degrees in the horizontal (X-Y) plane. (Ans. 11-12.) Specifically, the Examiner explains that “any lateral force applied to an object having a point of maximum stability (axis, fulcrum, or pivot) can thought of as a twist/rotation” (Ans. 11) and “[t]herefore, the Hoggarth statement that ‘the pointing device ... can be engaged by the tip of the user’s index finger and lateral forces over a 360- degree range in the general horizontal plane of the keyboard unit’, describes a rotation of the pointing device in horizontal plane in 360 degrees” (Ans. 12). This interpretation, however, is overly broad. The “free end” of the Appeal 2011-012731 Application 11/538,489 5 recited “shaft” is not just rotatable in the horizontal plane – as is the entire shaft. Rather, the “free end” is “freely rotatable 360 degrees relative to the supported end about an axis of the shaft” (claim 1) – i.e., the free end rotates on the end of the shaft about the shaft itself. While Hoggarth describes a pointing device comprising a vertical post and force transducers (sensors) and the post can move freely in the X and Y directions (¶¶ [0019], [0026]; Figs. 1, 2, 4), Hoggarth does not describe any end of the post being rotatable about itself. Consequently, we are constrained by the record before us to conclude that Hoggarth does not disclose, teach, or suggest the recited “free end freely rotatable 360 degrees relative to the supported end about an axis of the shaft” and the combination of Hoggarth, McVicar, and Rosenberg fails to teach or suggest the recited features of Appellant’s claim 1. Thus, the rejection of claim 1 fails to establish a prima facie case of obviousness. Appellant’s dependent claims 3-7, 9, 11-14, 20, 23, and 24 depend on and stand with claim 1. The Examiner does not explain, and we do not find, that the addition of Hilton and/or Engle cures the deficiencies of the Hoggarth-McVicar-Rosenberg combination. Accordingly, we reverse the Examiner’s obviousness rejections of claims 1, 3-7, 9, 11-14, 20, 23, and 24. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1, 3- 7, 9, 11-14, 20, 23, and 24 under 35 U.S.C. § 103(a). Appeal 2011-012731 Application 11/538,489 6 DECISION We reverse the Examiner’s rejections of claims 1, 3-7, 9, 11-14, 20, 23, and 24. REVERSED msc