Ex Parte Osato

Patent Trial and Appeal BoardAug 16, 2013

11346602 (P.T.A.B. Aug. 16, 2013)

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. 11/346,602 02/02/2006 Jerold Osato 1033-NW1075 1631 84326 7590 08/16/2013 AT & T LEGAL DEPARTMENT - Toler ATTN: PATENT DOCKETING ROOM 2A-207 ONE AT & T WAY BEDMINSTER, NJ 07921 EXAMINER TANK, ANDREW L ART UNIT PAPER NUMBER 2142 MAIL DATE DELIVERY MODE 08/16/2013 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 JEROLD OSATO ____________ Appeal 2010-012555 Application 11/ 346,602 Technology Center 2600 ____________ Before ST. JOHN COURTENAY, III, CARL W. WHITEHEAD, JR., and HUNG H. BUI, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012555 Application 11/ 346,602 2 Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-24 and 26-30. (App. Br. 1). Claim 25 was cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s claimed invention is directed to “[a] hand held device [which functions as] its own mouse, such that a virtual desktop may be navigated by moving the device itself to display desired portions of the virtual desktop on the screen of the device.” (Abstract ). Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A handheld device comprising: a housing, wherein the housing comprises a scroll wheel; a display screen embedded at a fixed position on a first side of the housing, wherein the display screen is adapted to display a portion of a virtual desktop window, wherein perimeter dimensions of the virtual desktop window exceed perimeter dimensions of the display screen; an input device embedded at a fixed position on a second side of the housing, the second side located on a different side of the housing than the first side, wherein the input device is in communication with the display screen and adapted to sense a change in position of at least a portion of the input device relative to a surface; and wherein the handheld device is selectable between a fixed window mode and a moving window mode, Appeal 2010-012555 Application 11/ 346,602 3 [L1] wherein the-portion of the virtual desktop window displayed on the display screen changes in response to the change in the position of at least the portion of the input device when in the moving window mode; and [L2] wherein movement of the scroll wheel in a first direction zooms in on the virtual desktop window when in the moving window mode. (Disputed limitation emphasized). REJECTIONS 1. The Examiner rejected claims 1-5, 8-24, 29, and 30 under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Parks (US 5,526,481) and Escamilla (US 6,724,365 B1). 2. The Examiner rejected claims 6, 7, and 26-28 under 35 U.S.C. § 103(a), as being unpatentable over the combined teachings and suggestions of Parks, Escamilla, and Bartlett, J.F., "Rock 'n' Scroll is Here to Stay [user interface]," Computer Graphics and Applications, IEEE, vol. 20, no. 3, pages 40-45, May/June 2000 (hereinafter "Bartlett"). ANALYSIS We disagree with Appellant’s contentions regarding the Examiner's obviousness rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken; and (2), the reasons set forth by the Examiner in the Answer in response to arguments made in Appellant’s Appeal Brief. (Ans. 14-15). We highlight and address specific findings and arguments below. Appeal 2010-012555 Application 11/ 346,602 4 Regarding independent claim 1, Appellant contends neither Parks nor Escamilla teaches or suggests zooming in on a virtual desktop window displayed on a display screen of a handheld device when the device is in moving window mode. (App. Br. 10-12; see also claim 1, limitation L2 supra ). Appellant contends that although Escamilla teaches a zoom function, the zoom function in Escamilla is directed to zooming in on a portion of a document, not on a portion of a virtual desktop window. Id. We do not find this argument persuasive. As pointed out by the Examiner, Parks is relied on for teaching or suggesting the virtual desktop window. (Ans. 3, 14). As an initial matter of claim construction, we observe that Appellant points to paragraph [0018] of the Specification as providing support for the disputed “wherein” clause L2 of claim 1. (App. Br. 3). Turning to paragraph [0018], the only mention of a display is a “virtual display:” “Rotation of the push button/scroll wheel may zoom in and out from the virtual display.” (Id.). We observe that Parks expressly teaches a “virtual display 400” (col. 4, l. 40), and “a mouse 200 built into the housing 14 on the underside of the PDA 10 [where] [t]he mouse 200 provides X and Y direction translation information to a memory controller (FIG. 3) within the PDA 10 as the mouse 200 is rolled across the surface 18. . . .” (Col. 3, ll. 50-54; Fig. 2). Thus, Appellant is arguing the references separately. As the Examiner points out in response, Escamilla need not teach zooming in on a virtual desktop in moving window mode because Parks teaches or suggests the claimed virtual desktop with a moving window mode. (Ans.14). Escamilla is only being relied on to teach the zooming limitation of the claim (Ans. 5), Appeal 2010-012555 Application 11/ 346,602 5 which we conclude also renders disputed limitation L1 obvious, when combined with the teachings and suggestions of Parks. (See Ans. 4-5, 14). The Supreme Court guides that “a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S. 2007). Here, we agree with the Examiner that it would have been obvious for a person of ordinary skill in the art to combine the zooming function of Escamilla with the virtual desktop of Parks to produce the predictable result of zooming in on a virtual desktop in a moving window mode. (Ans. 14). Regarding independent claims 13, 15, and 22, and associated dependent claims 14, 16-21 and 26-28, respectively, Appellant advances substantially the same arguments discussed above in regard to claim 1. (App. Br. 13-15). For the same reasons stated above, we do not find these arguments persuasive. Regarding the second-stated rejection of claims 6 and 7, Appellant again advances substantially the same arguments discussed above in regard to claim 1. (App. Br. 15-16). For the same reasons stated above, we do not find these arguments persuasive. In particular, claim 6 recites: “[t]he handheld device of claim 1, wherein the input device comprises an accelerometer position sensor.” As pointed out by the Examiner (Ans. 12), Bartlett expressly teaches “a small video liquid crystal display (LCD) with a two-axis accelerometer attached to the back.” (Bartlett, p. 43, left column, emphasis added). Regarding claim 7, Appellant additionally contends that the cited combination of Parks, Escamilla, and Bartlett does not teach or suggest the Appeal 2010-012555 Application 11/ 346,602 6 claimed GPS system. (App. Br. 16). Appellant specifically contends that each of the cited references describes input technologies “based on movement, not based on position” (App. Br. 17). However, claim 17 merely recites “the input device comprises a global positioning satellite (GPS) system.” Regarding the claimed GPS system, we agree with the Examiner’s proffered rationale and reasoning as articulated in the Answer: [I]t would have been obvious to one having ordinary skill in the art and the teachings of Parks, Escamilla and Bartlett before them at the time the present invention was made to substitute the trackball for measure changes between relative positions of the device, as disclosed by Parks, with any number of relative motion sensors such as accelerometers and GPS systems as suggested by Bartlett. One would have been motivated to do this in order to provide a developer with a number of sensor objects so that they may choose the one that is cheapest to develop with, as suggested by Bartlett (page 40 paragraph 3). (Ans. 12-13). Regarding the second-stated rejection of claims 26-28 (which each depend from claim 22), Appellant again asserts that the cited portions of Bartlett fail to overcome the deficiencies of Parks and Escamilla. (App. Br. 17-18). For the same reasons discussed above regarding claim 1, we do not find these arguments persuasive. Although Appellant additionally contends “the cited portion of Bartlett, when read in its entirety, describes using an interface to control non-display features of cell phones or digital music players” (App. Br. 18, emphasis omitted), we agree with the Examiner that “it would have been obvious to one having ordinary skill in the art and the teachings of Parks, Escamilla and Bartlett before them at the time the present invention was Appeal 2010-012555 Application 11/ 346,602 7 made to implement the scrolling method of Parks and Escamilla in any number of handheld device such as a cell phone, a digital music player, or a digital video player, as suggested by Bartlett.” (Ans. 13). We observe that claim 26 recites: “wherein the handheld machine comprises a cell phone.” Claim 27 recites: “wherein the handheld machine comprises a digital music player.” Claim 28 further recites: “[t]he machine-readable tangible storage medium of claim 22, wherein the handheld machine comprises a digital video player.” As pointed out by the Examiner (Ans. 13), Bartlett teaches “the same techniques could be used to control other personal electronics such as radios, MP3 players, or cellular telephones.” (p. 45, left column, second paragraph). We also find the display of Bartlett’s device (p. 41, Figs. 1-2), in combination with Escamilla’s video controller 22 (col. 2, l. 51) is at least suggestive of a digital video player. For at least the aforementioned reasons, on this record, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. For essentially the same reasons articulated by the Examiner in the Answer (14-15), as discussed above, we sustain the Examiner’s obviousness rejections of all claims on appeal. CONCLUSION OF LAW The Examiner did not err in rejecting claims 1-24 and 26-30 under 35 U.S.C. § 103(a). DECISION For the above reasons, we affirm the Examiner’s §103 rejections of claims 1-24 and 26-30. Appeal 2010-012555 Application 11/ 346,602 8 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). AFFIRMED Vsh