Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 15
"changing an orientation" or even just the word "orientation" are not in
the specification but were at least in the original claims. A standard
dictionary defines "ORIENTATION: noun, One's place and direction
relative to one's surroundings: bearing (often used in plural), location,
position, situation." In any case the combination of Kanamaru et al. and
McCambridge clearly read on "changing an orientation". [Answer, p. 10, ¶
3 - p. 11, ¶ 1, original emphasis.]
What is clear is that the examiner understood appellant's argument against
modifying Kanamaru with McCambridge. What is not clear is the examiner's rebuttal to
appellant's argument. The examiner has not rejected any of the appealed claims under
35 U.S.C. § 112, first and/or second paragraphs. In other words, the examiner evidently
finds that the appealed claims are not only clear and definite, but also supported by an
adequate written description of how to make and use appellant's invention throughout
its claimed scope. Moreover, the claim limitation to be addressed is not just "changing
an orientation", but rather "changing an orientation of the pointer responsive to said
compared pointer movement line with said barrier". Assuming arguendo that
Kanamaru changed the speed of pointer movement in response to one trigger, i.e.,
responsive to said compared pointer movement line (which requires at least two points
of reference) with said barrier, the examiner has failed to explain why one of ordinary
skill in the art would have used the cursor orientation of McCambridge which occurs in
response to a different trigger, i.e., responsive to current location (which is a single point
of reference), to modify Kanamaru. In other words, it is not simply a matter of what a
change in orientation does to a pointer, e.g., whether the pointer is rotated in place or
relocated from coordinate 1 to coordinate 2 on a display screen, but rather what triggers
the change in orientation to occur.
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