IP Law Daily Application’s claims for mode-switching handheld device improperly rejected
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Wednesday, October 16, 2019

Application’s claims for mode-switching handheld device improperly rejected

By Thomas Long, J.D.

Prior art that disclosed a device able to transition from one operational mode to another did not disclose all limitations of the applied-for claims and therefore did not anticipate them.

The Patent Trial and Appeal Board’s decision affirming an examiner’s rejection all pending claims of a patent application for a mode-switching handheld electronic device was not supported by substantial evidence, according to the U.S. Court of Appeals for the Federal Circuit. A prior art reference did not disclose all limitations of the rejected claims of the application at issue. Therefore, the Board’s decision affirming the rejection on anticipation and obviousness grounds was reversed (In re Gates, October 16, 2019, Moore, K.).

Application at issue. Applicants Stephen Gates and Jeremy Black submitted U.S. Patent App. No. 15/349,668 ("the ’668 application"), which was directed to an integrated handheld device that can operate in either of two modes (for example, as either a computer mouse or a remote control), depending on the device’s proximity to an object surface, such as a table. The device’s sensing mechanism automatically transitions from its first operational mode (computer mouse mode) to its second operational mode (remote control mode) when it detects that the device has been lifted off the table. The device is configured to transmit a signal using one transmission device (such as radio frequency) in the first operational mode and a different transmission device (such as infrared) in the second operational mode.

Examiner’s rejection. The USPTO’s examiner rejected the applicant’s only independent claim and two dependent claims as anticipated by U.S. Patent Pub. No. 2003/0028688 ("Tiphane"), and the application’s remaining eight dependent claims as obvious over Tiphane in view of U.S. Patent No. 6,794,992 ("Rogers") and/or U.S. Patent No. 6,882,334 ("Meyer"). Tiphane disclosed a device capable of operating as either a computer mouse or a hand-held presentation device, including an embodiment consisting of "[a]n automatic switching from a first mode (e.g., pointing device mode) to a second mode (e.g., presentation mode) ... when the device is lifted from the tabletop," configured to communicate "via a wired connection or alternatively via a wireless connection." Tiphane also disclosed an embodiment consisting of a combined wired and wireless device that was shifted from wired to wireless when it changed from one mode to the other.

PTAB decision. The applicants appealed to the Board, arguing that the embodiments in Tiphane did not disclose the limitations as arranged and claimed in the ’668 application. The Board affirmed the examiner’s rejections, finding that the handheld device in Tiphane had "the ‘same mechanical means’ for automatically transition[ing] from a second operational mode ... to a first operational mode." The Board also found that also found that Tiphane disclosed that the shift from a wired to a wireless device also switched the device from its first (mouse) mode to its second (presentation) mode.

Anticipation, obviousness. On appeal to the Federal Circuit, the applicants argued that Tiphane did not disclose two key limitations of the ’668 application in a single embodiment: (1) the device’s automatic transition from one operational mode to the other in response to changes in proximity to a surface (the "Mode-Switching Limitation") and (2) the device’s capacity to change from one transmission device to another depending on the operational mode (the "Wherein Clause"). According to the applicants, Tiphane’s second embodiment disclosed a specific mechanical means for causing the handheld device to transition between operational modes—physical disconnection of the device from the computer. They contended that Tiphane did not disclose the Mode-Switching Limitations because its second embodiment was limited to that specific mechanical means and did not include the proximity-sensing means disclosed in Tiphane’s first embodiment. They also contended that even if both embodiments employed the "same mechanical means" for causing the handheld device to transition between operational modes, Tiphane’s second embodiment did not meet the Wherein Clause because the handheld device switched transmission devices independently of its operational mode.

The court held that substantial evidence did not support the Board’s finding that Tiphane disclosed a device that would satisfy both the Mode Switching Limitation and the Wherein Clause, arranged as claimed. The court explained that the Mode Switching Limitation required the handheld device to have the mechanical means to switch operational modes based on proximity to a surface. And because the Wherein Clause required that the handheld device be configured to use one transmission device in the first operational mode and a different transmission device in the second operational mode, the claimed handheld device must also be configured to switch transmission devices in response to a change in the handheld device’s proximity to the surface.

"The only disclosure of a device in Tiphane that is capable of operating using two transmission devices—the combined wired and wireless device of Tiphane’s second embodiment—contemplates switching operational modes only when it is ‘disconnected from the [computer] bus,’" said the court. "Nothing in Tiphane indicates that the second embodiment would include the ‘same mechanical means’ as the first embodiment, i.e., a proximity sensor, nor does it indicate how the features of the two embodiments could be combined in a single device." Even if the embodiments did employ the "same mechanical means" for switching between the first and second operational modes, Tiphane did not disclose a device that switched transmission devices based on the handheld device’s proximity to a surface, but instead disclosed only that the transmission device could be switched by physically disconnecting the handheld device from the computer.

Accordingly, the Board’s decision affirming the examiner’s anticipation rejection was reversed and remanded. Because the Board’s decision to affirm the examiner’s obviousness rejection of the remaining eight claims was based on its finding that Tiphane disclosed every limitation of the ’668 applicant’s independent claim, that decision was also reversed and remanded.

This case is No. 2018-2331.

Attorneys: James J. Lukas (Greenberg Traurig, LLP) for Stepen Brian Gates. Mai-Trang Duc Dang, U.S. Patent and Trademark Office, for Andrei Iancu.

MainStory: TopStory Patent FedCirNews

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