Appeal No. 2004-1641
Application No. 09/764,388
any motivation for combining the features of Garland with
Kiyohara. Appellants argue that Kiyohara’s pointing device is
taught in only two places in the patent (in column 5 and in
column 9), and neither place mentions sufficiently the pointing
device. Appellants conclude that one of ordinary skill in the art
would not have found it obvious to have combined Garland with
Kiyohara because Kiyohara at best “vaguely discloses” what his
pointing device is and how it works in conjunction with the
remainder of his invention. Brief, page 5. Appellants also
argue that it would therefore not have been obvious to have
substituted a mouse for Kiyohara’s pointing device. Brief, page
5.
Beginning on page 5 of the answer, the examiner rebuts and
states that Kiyohara discloses a pointing device in column 5 at
lines 36-40. The examiner acknowledges that this pointing device
is not a mouse, but the examiner correctly points out that it
functions like a mouse by moving a cursor on a display screen to
indicate a selected position on the display screen. The examiner
then states that Garland teaches that a pointing device (the
disclosed electronic pen, e.g.) and a mouse can be
interchangeable or they can be used together, and refers to
column 1, lines 66-67.
In view of the above, a person of ordinary skill in the art
would have reasonably expected that the devices regularly used
for pointing would have been suitable for use in the invention of
Kiyohara. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
While appellants argue that Kiyohara’s disclosure is not
specific enough regarding the pointing device used, we are not
convinced that one of ordinary skill in the art would not have
readily appreciated that Kiyohara’s disclosed stylus is of the
kind described in Garland (e.g., an electronic pen).
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