Appeal No. 2006-2255
Application No. 10/183,994
We agree with appellants that the applied prior art fails to support the
combination proposed by the rejection. The above-quoted column 7 section of Schein
is a teaching that does support, to some degree, the combination that is contemplated.
Schein suggests that a keyboard, a mouse, and a remote control device as described in
the reference could be combined into a single device. However, Schein discloses,
expressly, how one might combine the three devices: with keys, a trackball, pointing
device, scrolling mechanism, voice activation, or a combination thereof. On this record,
a trackball (e.g., Suzuki Fig. 1) serves to move a cursor vertically and horizontally, but
does not serve to detect movement of the housing relative to a support surface, as does
a tracking assembly contained within a mouse as known in the prior art. We do not find
suggestion for combining a tracking assembly and the scroll mechanisms described by
Schein in a common housing. In view of the evidence provided, we conclude that such
combination could only arise from an improper hindsight reconstruction of appellants’
invention.
We therefore do not sustain the rejection of claims 1-26 under 35 U.S.C. § 103
as being unpatentable over Schein and APA, as independent claims 1, 9, 13, 18, and
23 are drawn to combinations that include members and actuators that may read on
corresponding elements of Schein, but each claimed combination includes a tracking
assembly for detecting movement of the housing relative to a support surface. Nor do
we sustain the rejection of claims 1-26 under 35 U.S.C. § 103 as being unpatentable
over Schein and Armstrong, because Armstrong’s teachings (e.g., col. 1, ll. 31-45) with
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