Appeal No. 2004-1621 Page 6
Application No. 08/653,425
Figure 11 of the reference, on which the examiner relies, "shows [an]
embodiment for controlling the force required to move the ball 64. The basic principle is
shown in the Figure. The mouse ball 64 contains internally a core 65 (another ball)
made of iron or similar magnetic sensitive material. A magnet 66 is placed in the mouse
housing outside the ball 64. The magnet will attract the iron core 65 of the ball 64." Col.
4, ll. 61-66. "The distance between the magnet 66 and the ball 64 is adjustable with a
screw 67 mounted on a support 68 or similar means. . . ." Id. at ll. 66 - col. 5, l. 1. "A
force is required to rotate the ball, the force increasing as the magnet is moved closer to
the ball." Col. 5, ll. 2-4.
Although Figure 11 shows a magnet 66, we are unpersuaded that Solhjell
replaces the free roller 18 shown in Figure 5 with that magnet. To the contrary, we
agree with the appellants that “there is no explicit discussion of the replacement of the
free [roller] in the description of Fig. 11." (Appeal Br. at 4.) We also agree with them
that, because "[t]he rolling force and the third wheel are not mutually exclusive," (Appeal
Br. at 4), "controlling the rolling force does not mean that the third wheel is replaced."
(Id.) To control the force required to move the mouse's ball, the magnet could easily be
added to the assembly shown in Figure 5.
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