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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.
16/256,320 01/24/2019 Christopher Pate 086947-1121145-100320US 7179
20350 7590 06/20/2022
Kilpatrick Townsend & Stockton LLP - West Coast
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
JANSEN II, MICHAEL J
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
06/20/2022 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER PATE, CORMAC O CONAIRE,
MARTEN HELWIG and JAMES LYNCH
Appeal 2021-002955
Application 16/256,320
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
ADAM J. PYONIN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40. Claims 1–20 have been
cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Logitech Europe S.A. Appeal
Br. 3.
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Application 16/256,320
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STATEMENT OF THE CASE2
The claimed subject matter is directed to an “INPUT DEVICE WITH
CONTOURED REGION.” See Spec. (Title). Appellant’s disclosed
embodiments and claimed invention relate “to methods and systems for
utilizing an input device capable of providing greater functionality through
two groups of buttons embedded on a side of an input device in the form of a
computer mouse.” Spec. ¶ 6.
Exemplary Claim
Claim 21, reproduced below, is representative of the subject matter on
Appeal (emphasis added to dispositive prior-art limitation):
21. A computer input device comprising:
a housing including:
a side portion; and
a plurality of buttons disposed on the side portion,
wherein each of the plurality of buttons includes a top
surface,
wherein the top surface of each of the plurality of buttons
is contoured such that the plurality of buttons forms a bowl
shape with a common center.
2
Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Feb. 19, 2021); Reply Brief (“Reply Br.,” filed Mar. 30, 2021); Examiner’s
Answer (“Ans.,” mailed Mar. 16, 2021); Final Office Action (“Final Act.,”
mailed Apr. 22, 2020); and the original Specification (“Spec.,” filed
Jan. 24, 2019).
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Application 16/256,320
3
REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Gruhl US 6,717,569 B1 April 6, 2004
Caplan US 2007/0258747 A1 Nov. 8, 2007
Chaumont US 2008/0101840 A1 May 1, 2008
Tang US 2011/0028194 A1 Feb. 3, 2011
REJECTIONS
R1. Claims 21–27, 30–37, and 40 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Tang and Chaumont.
Final Act. 9.
R2. Claims 28, 29, 38, and 39 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Tang, Chaumont, and Gruhl.
Final Act. 24–25.
ISSUE
Appellant argues (Appeal Br. 10–20; Reply Br. 2–8) the Examiner’s
rejection of claim 21 under 35 U.S.C. § 103 as being obvious over the
combination of Tang and Chaumont is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a plurality of buttons “wherein the top surface of each of the
plurality of buttons is contoured such that the plurality of buttons forms a
bowl shape with a common center,” as recited in claim 21 (emphasis added),
and as commensurately recited in independent claim 34?
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Application 16/256,320
4
PRINCIPLES OF LAW
The USPTO advises Examiners on particular rationales that may
support a conclusion of obviousness. These exemplary rationales are
excerpted from KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
and include:
(A) combining prior art elements according to known
methods to yield predictable results;
(B) simple substitution of one known element for another
to obtain predictable results;
(C) use of known technique to improve similar devices
(methods, or products) in the same way;
(D) applying a known technique to a known device
(method, or product) ready for improvement to yield
predictable results;
(E) “obvious to try” — choosing from a finite number of
identified, predictable solutions, with a reasonable expectation
of success;
(F) known work in one field of endeavor may prompt
variations of it for use in either the same field or a different one
based on design incentives or other market forces if the
variations are predictable to one of ordinary skill in the art; and,
(G) some teaching, suggestion, or motivation in the prior
art that would have led one of ordinary skill to modify the prior
art reference or to combine prior art reference teachings to
arrive at the claimed invention.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 416; see also Manual for Patent
Examining Procedure (MPEP) § 2141(III).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
In addition, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to claim 21 for the specific reasons discussed below. We highlight and
address specific findings and arguments regarding claim 21 for emphasis as
follows.
Claim 21 recites “wherein the top surface of each of the plurality of
buttons is contoured such that the plurality of buttons forms a bowl shape
with a common center.” Claims App. (emphasis added).
Appellant argues the cited combination of Tang and Chaumont relied
upon by the Examiner (see Final Act. 10) does not teach or suggest a
plurality of buttons contoured to form “a bowl shape with a common
center.” Appeal Br. 15, (emphasis added). Appellant first argues Tang does
not teach a bowl shape. Id. Appellant next argues the button layouts in
Chaumont, while displaying a trough or a wave shape, do not form a bowl
shape. Appeal Br. 15–16.
In response, the Examiner finds Chaumont’s group of buttons depict a
wave-shape. Ans. 12–13. Although not invoked in the rejection or presented
as a new ground of rejection, the Examiner provides an extrinsic reference,
Caplan, as evidence supporting the finding that a continuous wave shape and
a bowl shape are synonymous terms of art. Ans. 13. The Examiner explains
that Caplan shows that one of ordinary skill in the art would have understood
Chaumont’s wave shape to teach or suggest a bowl shape as recited in
claim 21. Ans. 12.
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Under the broadest reasonable interpretation standard, we interpret
Appellant’s claims in light of the Specification — we decline the Examiner’s
invitation to interpret Appellant’s claims in light of an extrinsic reference.
See Morris, 127 F.3d at 1054.
We disagree with the Examiner’s broad interpretation that the claimed
bowl shape is taught by the references — specifically Chaumont — in the
rejection. We find the Examiner’s reasoning to be unreasonable in light of
the Specification because the Specification describes that a group of buttons
is contoured both left/right and top/bottom in a concave shape, forming a
bowl. See, e.g., Spec. ¶¶ 9, 28, 41, Fig. 3B. We find Chaumont teaches a
subset of buttons form a trough, not a bowl, as those terms would be
understood by a person of ordinary skill in the art. Chaumont ¶ 18.
3
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the dispositive limitation of claim 21, such that we find
error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we do not sustain the Examiner’s obviousness rejection of
independent claim 21, and independent claim 34, that recites the dispositive
3 The rejection before us does not include Caplan as a cited reference. We
decline to enter a new ground of rejection. However, in the event of further
prosecution, we leave it to the Examiner to consider whether adding Caplan
to the rejection of these claims would render the claims obvious under 35
U.S.C. § 103. Caplan appears to teach or suggest that a bowl-shaped
configuration of keys may be considered in the art to be equivalent to a
wave-shaped configuration. See Caplan ¶ 55. While the Board is authorized
to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.
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limitation in commensurate form.4
Because we have reversed both
independent claims, we reverse all claims that depend therefrom.
CONCLUSION
We REVERSE the Examiner’s rejections.
More specifically, Appellant has persuasively argued that the
Examiner erred with respect to the obviousness rejection R1 of claims 21
and 34 under 35 U.S.C. § 103 over the cited prior art combination of record,
and we do not sustain Rejection R1 of claims 21–27, 30–37, and 40. We
also do not sustain Rejection R2 of dependent claims 28, 29, 38, and 39 that
depend therefrom.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
21–27, 30–37,
40 103 Tang,
Chaumont
21–27, 30–37,
40
28, 29, 38, 39 103
Tang,
Chaumont,
Gruhl
28, 29, 38, 39
Overall
Outcome 21–40
REVERSED
4
Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).