Ex Parte Meijer

Patent Trial and Appeal BoardJan 24, 2017

13761387 (P.T.A.B. Jan. 24, 2017)

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. 13/761,387 02/07/2013 Gerben Meijer 81230.162US1 6667 34018 7590 01/26/2017 GREENBERG TRAURIG, LLP 77 WEST WACKER DRIVE SUITE 3100 CHICAGO, IL 60601-1732 EXAMINER LUBIT, RYAN A ART UNIT PAPER NUMBER 2696 NOTIFICATION DATE DELIVERY MODE 01/26/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): j arosikg @ gtlaw .com chiipmail @ gtlaw .com escobedot@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERBEN MEIJER Appeal 2016-003431 Application 13/761,387 Technology Center 2600 Before LARRY J. HUME, CATHERINE SHIANG, and ALEX S. YAP, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—18, which are all the claims pending and rejected in application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-003431 Application 13/761,387 STATEMENT OF THE CASE Introduction According to the Specification, the disclosed and claimed inventions relate to providing orientation compensation in pointing devices. See generally Spec. 1. Claim 1 is exemplary: 1. A method for providing axis orientation compensation in a system in which movement of a controlling device is used to control navigational functions of a target appliance, comprising: determining which one of plural sides of the controlling device is an active side of the controlling device; and causing commands for controlling navigational functions of the target appliance made relative to at least one of an X, Y, and Z axis of the target appliance to be dynamically assigned to movements of the controlling device made relative to at least one of an A, B, and C axis of the controlling device as a function of the one of the plural sides of the controlling device that is determined to be the active side of the controlling device. References and Rejections Claims 1—18 are rejected under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. Claims 1—18 are rejected under 35 U.S.C. § 102(b) as being anticipated by Hatambeiki (US 2011/0279223 Al; Nov. 17, 2011). 2 Appeal 2016-003431 Application 13/761,387 ANALYSIS 35 U.S.C. § 112, First paragraph To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Id. (alteration in original) (internal quotations and citations omitted). The Examiner determines the limitation “causing commands ... to be dynamically assigned to movements of the controlling device made relative to at least one of an A, B, and C axis of the controlling device” of claims 1—9 (and similarly claim 10—18) does not comply with the written description requirement. See Final Act. 5; Ans. 2-4. In particular, the Examiner finds the Specification does not discuss “commands . . . dynamically assigned.” See Ans. 2—3. To the contrary, the Examiner finds one skilled in the art would understand the commands are permanently—not dynamically— assigned. See Ans. 3. Appellant fails to persuasively respond to such findings and, therefore, fails to show error in the Examiner’s findings. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued 3 Appeal 2016-003431 Application 13/761,387 by an appellant, looking for [patentable] distinctions over the prior art.”). In particular, Appellant fails to show the Examiner’s finding that the commands are “permanently assigned” (Ans. 3) is incorrect. Further, Appellant cites excerpts from pages 8—10 of the Specification. See App. Br. 5—6. However, Appellant has not shown the excerpts refer to “commands . . . dynamically assigned,” let alone “causing commands ... to be dynamically assigned to movements of the controlling device made relative to at least one of an A, B, and C axis of the controlling device,” as required by the claims. In short, Appellant has not persuasively shown the cited excerpts support the conclusion argued by Appellant. Because Appellant has not shown the Examiner erred, we affirm the Examiner’s rejection of claims 1—18 under 35 U.S.C. § 112, first paragraph. Anticipation We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner erred in finding Hatambeiki discloses causing commands for controlling navigational functions of the target appliance made relative to at least one of an X, Y, and Z axis of the target appliance to be dynamically assigned to movements of the controlling device made relative to at least one of an A, B, and C axis of the controlling device as a function of the one of the plural sides of the controlling device that is determined to be the active side of the controlling device, as recited in claim 1. See App. Br. 7—9; Reply Br. 3—5. The Examiner cites Hatambeiki’s Figures 2 and 5, and paragraphs 20, 24, and 35 for disclosing the disputed claim limitation. See Final Act. 6—7; 4 Appeal 2016-003431 Application 13/761,387 Ans. 5. We have examined the cited Hatambeiki portions, and they do not discuss causing commands for controlling navigational functions of the target appliance made relative to at least one of an X, Y, and Z axis of the target appliance to be dynamically assigned to movements of the controlling device made relative to at least one of an A, B, and C axis of the controlling device as a function of the one of the plural sides of the controlling device that is determined to be the active side of the controlling device, as required by the claim. See App. Br. 7—9; Reply Br. 3—5. Absent further explanation from the Examiner, we do not see how the cited Hatambeiki portions disclose the disputed claim limitation. Because the Examiner fails to provide sufficient evidence or explanation to support the anticipation rejection, we are constrained by the record to reverse the Examiner’s rejection of claim 1. Independent claim 10 recites a claim limitation that is substantively similar to the disputed limitation of claim 1. See claim 10. Therefore, for similar reasons, we reverse the Examiner’s rejection of independent claim 10. We also reverse the Examiner’s rejection of dependent claims 2—9 and 11—18, which depend from claims 1 and 10, respectively. DECISION We affirm the Examiner’s decision rejecting claims 1—18 under 35 U.S.C. § 112. We reverse the Examiner’s decision rejecting claims under 35 U.S.C. §102. 5 Appeal 2016-003431 Application 13/761,387 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1) (2012). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6