Ex parte Chen
Appeal 2013-000463; Appl. No. 11/170,655; Tech. Center 2100
Decided: March 4, 2015
The application on appeal described "a portable device which may wirelessly interface with other personal electronic devices in order to provide increased data storage capacity." A representative claim on appeal read:
1. A personal portable storage device (PPSD) comprising:The Examiner rejected this claim as obvious over Ram, Gurevich, and Sackner. The primary reference, Ram, was directed to a computer peripheral (e.g., a mouse) with additional I/O devices contained within the peripheral's enclosure. Gurevich taught the simultaneous access without physical connections feature, and Sackner was used for the "stowed" feature. Sackner was directed to a cardiac/lung function monitor, "possibly hand-held, [and] it may also be carried on an individual normal clothing, for example, on a belt, or may be placed in a pocket provided on garment." The Examiner's rationale for combining Sackner with Ram and Gurevich was "it is easy to situate a PPSD [personal portablestorage device] on a belt."
a storage medium;
a wireless component coupled to said storage medium, said wireless component having multiple simultaneous connection capabilities;
a transfer management electronics coupled to said storage medium for allowing a plurality of host devices to access said PPSD simultaneously through said wireless component, without requiring physical connections between said PPSD and said plurality of host devices,
said PPSD remaining in a stowed location during said access;
a self-contained energy source coupled to said transfer management electronics; and
a housing of a size and shape well-suited to being carried on a person, said housing at least partially enclosing said storage medium, said wireless component, said transfer management electronics, and said self-contained energy source,
such that said PPSD is easily transported.
The Applicant argued that the combination was improper because it rendered the prior art being modified unsatisfactory for its intended purpose (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). More specifically, "keeping the computer apparatus of Ram stowed" would mean it wasn't available for use, "which is directly away from Applicants understanding of the intended purpose of Ram (a mouse apparatus)."
Maintaining the rejection, the Examiner noted that in addition to a mouse, Ram also taught a keyboard containing memory and a wireless adapter. "Since keyboards do not typically need to be in a constant state of motion to be used properly," the combination of Ram's keyboard as modified by Gurevich and Sackner could be stowed "without affecting the ability to use the device." In response, the Applicant asserted that operating a stowed keyboard would be difficult, then attacked the Examiner's statements as "extremely speculative and not supported by a preponderance of evidence." The Applicant requested that the Examiner provide an affidavit in support of his findings.
The Examiner kept the rejection, and in response to the Applicant's argument about the difficulty of using a stowed keyboard, the Examiner noted that the Applicant's own FIG. 6 depicted the storage device stowed in a pocket. The Applicant repeated the same render-inoperable argument and noted that no Examiner affidavit had been provided to support the Examiner's findings.
This time the Examiner maintained the obviousness rejection but switched focus once again. Sackner disclosed a heart monitor that was "stowable on one's belt or pocket," plus Ram disclosed a trackpoint or trackball "as part of the keyboard or mouse." Since a trackpoint/ball moves the cursor without moving the device around, it "can easily be manipulated to move the cursor while stowed, and keys can still be manipulated on a device that is in one's pocket or on a belt."
In the last response filed before appeal, the Applicant characterized these Examiner statements as "purely speculative and not supported by a preponderance of evidence." The Applicant also questioned the Examiner's new focus on Sackner. The Examiner's rejection modified Ram with Sackner (not vice versa), so whether or not Sackner was stowable was "not the question being raised or the argument being addressed." The Applicant restated the § 103 argument as follows:
[I]t is the utilization of Ram from a stowed location that is properly being addressed in Applicants arguments. With respect to Ram, the Office Action has not provided a prima facie case that overcomes Applicants arguments that keeping the computer apparatus (a mouse apparatus or a keyboard) of Ram stowed would result in Ram not being available for PROPER or INTENDED purpose of Ram.The Examiner issued one more Office Action before the Applicant appealed. The Examiner's position wasn't speculative, since a trackball or keyboard was easily manipulated "as long as it is reachable by the user." And although the Applicant characterized manipulation of Ram's device while stowed as "irrelevant and erroneous," "it is well-known that a keyboard or trackball can be manipulated on a device that is stowed in a fixed position."
[W]hether the computer apparatus of Ram can be manipulated while in one's pocket or on a belt is irrelevant and erroneous. It is merely a straw man argument to that does not provide any factual evidence to support the prima facie case for obviousness. That is, Applicants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
In contrast, Applicants submit that a proper prima facie rejection of obviousness must be supported by evidence rather than speculation and opinion. Specifically, Applicants note that attempting to utilize the computer apparatus of Ram from a stowed location would adversely affect the ability to use the device.
At that point, the Applicant appealed. The Applicant did a quick traversal of the obviousness rejection by arguing that the Examiner's modification of Ram by Sackner rendered Ram inoperable for its intended use. The remainder of the Appeal Brief focused on the Examiner's failure to make a prima facie case supported by evidence, as opposed to subjective opinion.
To this end, the Applicant attacked several assertions made by the Examiner in prosecution, including a trackball or keyboard is easily manipulated when in reach, and "it is well-known that a keyboard or a trackball can be manipulated on a device that is stowed in a fixed position." According to the Applicant, such statements were speculative and not supported by any actual evidence.
The Applicant then cited to several administrative law cases mentioned in the MPEP.
The "assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support" (MPEP 2144.03(a); In re Zurko, 258 F.3d 1379, 1385, (Fed. Cir. 2001)). Moreover, "the examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge" (MPEP 2144.03(B); see In re Soli, 317 F.2d 941, 946, (CCPA 1963); see also In re Chevenard, 139 F.2d 711, 713 (CCPA 1943)).The Applicant concluded the Appeal Brief with:
Appellants submit that the above well-known statement lacks any factual evidence to support the prima facie case for obviousness. In contrast, Appellants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.In the appeal decision, the Board first summarized the positions of the Applicant ("the mouse would not be available for its intended use as an input device if stowed in a pocket or a belt as in Sackner") and the Examiner ("being stowed would not inhibit the mouse from communicating with other devices"). The Board then reversed, explained its reasoning as follows:
Although the mouse includes a storage device, the Examiner has not shown that the storage device is capable of being accessed by host devices outside of the mouse for storing or retrieving data. Therefore, on this record, the sole intended use of the mouse does not depart from its conventional purpose as an input device. Thus, we agree with Appellants modifying the mouse with Sackner’s teaching to be stowed would not comport with its intended use as an input device, and would thereby render the mouse unsatisfactory for its intended purpose.3My two cents: First off .... why so long to appeal? The Applicant filed a total of 9 responses and 3 RCEs before appeal. And 4 of these 9 responses argued the very issue that went to appeal. Sure, the Applicant got more information each time (generally a good thing) but it also allowed the Examiner to switch position. Should have appealed much earlier. Definitely a bad idea to RCE without amending or entering evidence.
3 In the event of further prosecution, the Examiner should consider modifying Sackner’s microprocessor (3) with the teachings of Gurevich and Ram to reject claim 1.
But kudos to the Applicant for recognizing a good rationale-to-combine argument, and sticking to it. It's rare to appeal when the only issue is rationale-to-combine, as opposed to combination-doesn't-teach.
The Applicant's focus on Examiner evidence seemed to be unnecessary in this particular case. The way I read it, the Board reversed because it was persuaded by the Applicant's combination-unsatisfactory-for-intended-purpose argument, and not because the Examiner didn't provide evidence about manipulation of a trackball stowed in a pocket. The Board simply looked at the conventional purpose of an input device and found that stowing it away would frustrate this purpose. The Board then concluded that, since this was the case, a POSITA would not modify Ram's input device to be stowed away like Sackner's monitor.
In other words, the Applicant and Examiner focused on whether an input device could be used while stowed, but the Board focused on whether a POSITA would do this in the first place. And rightly so, as rationale/motivation to combine isn't about what a POSITA could do, but about what a POSITA has a reason to do. The Board didn't see a reason to stow the input device away.
This reasoning sidesteps the issue of whether or not the Examiner needed evidence. But say the Board did reach that issue ... isn't this question one that can be understood by any one with common knowledge and common sense? Neither side went into a lot of explanation as to why a trackball was or was not usable in this manner. The Examiner gave a couple of sentences explaining why usable, while the the Applicant made a naked assertion "not usable." Neither side offered evidence, but maybe evidence is overkill for this particular technology and use case.
Or is the Applicant right, and as a matter of administrative law, the Examiner needs evidence to support his position? Usually, the references themselves are used as evidence. I doubt Ram had anything to say about using the device while stowed, and the Examainer didn't cite to any such teachings in Ram.
Does it make a difference whether the combination uses Ram's keyboard, trackball, or mouse? Note that the Board's opinion said "render the mouse unsatisfactory for its intended use."
Was the Examiner's thinking colored by the fact that it's now common (in 2016) to use a smart phone without looking at the keyboard? Not such a stretch to envision texting on a smart phone that's stowed in a pants pocket.
Did you catch footnote 3 at the end of the Board's opinion? The Board suggested that using Sackner (the heart monitor) as the primary reference would be a better obviousness rejection. Looks like Sackner's heart monitor meets the storage, housing, stowed, and energy source limitations. Ram provides the transfer electronics and wireless, and Gurevich provides the simultaneous connections. I haven't thought about it enough to know what the two rationales for modification would be, but the combination certainly doesn't have the same weakness that the Examiner's combination did, since the base device is stowable.