UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`12/413,722
`
`03/30/2009
`
`Y ong-jin KANG
`
`2456.1058
`
`9676
`
`10/19/2016
`
`7590
`21171
`ST AAS & HALSEY LLP
`SUITE 700
`1201 NEW YORK A VENUE, N.W.
`WASHINGTON, DC 20005
`
`EXAMINER
`
`STEINBERG, JEFFREYS
`
`ART UNIT
`
`PAPER NUMBER
`
`2622
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/19/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`ptomail@s-n-h.com
`
`PTOL-90A (Rev. 04/07)
`
`CYWEE EX 2009 - 1
`
`

`

`Notice of Abandonment
`
`Application No.
`
`Applicant(s)
`
`12/413,722
`Examiner
`
`KANG ET AL.
`Art Unit
`
`2622
`Jeffrey S. Steinbera
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`
`Th is application is abandoned in view of:
`
`1. [gl Applicant's failure to timely file a proper reply to the Office letter mailed on 15 March 2016.
`(a) D A reply was received on __
`), which is after the expiration of the
`(with a Certificate of Mailing or Transmission dated __
`period for reply (including a total extension of time of __
`month(s)) which expired on __
`.
`(b) DA proposed reply was received on __
`, but it does not constitute a proper reply under 37 CFR 1.113 to the final rejection.
`(A proper reply under 37 CFR 1.113 to a final rejection consists only of: (1) a timely filed amendment which places the
`application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) if this is utility or plant
`application, a timely filed Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. Note that RC Es are not
`permitted in design applications.)
`(c) D A reply was received on __
`but it does not constitute a proper reply, or a bona fide attempt at a proper reply, to the non-final
`rejection. See 37 CFR 1.85(a) and 1.111. (See explanation in box 7 below).
`(d) [gl No reply has been received.
`
`2. D Applicant's failure to timely pay the required issue fee and publication fee, if applicable, within the statutory period of three months
`from the mailing date of the Notice of Allowance (PTOL-85).
`(a) D The issue fee and publication fee, if applicable, was received on __
`(with a Certificate of Mailing or Transmission dated
`__
`), which is after the expiration of the statutory period for payment of the issue fee (and publication fee) set in the Notice of
`Allowance (PTOL-85).
`(b) D The submitted fee of$ __
`is due.
`is insufficient. A balance of$ __
`The issue fee required by 37 CFR 1.18 is$ __
`. The publication fee, if required by 37 CFR 1.18(d), is$ __
`(c) D The issue fee and publication fee, if applicable, has not been received.
`
`.
`
`3.0 Applicant's failure to timely file corrected drawings as required by, and within the three-month period set in, the Notice of
`Allowability (PT0-37).
`(a) D Proposed corrected drawings were received on __
`the expiration of the period for reply.
`(b) D No corrected drawings have been received.
`
`(with a Certificate of Mailing or Transmission dated __
`
`), which is after
`
`4. D The letter of express abandonment which is signed by the attorney or agent of record or other party authorized under 37 CFR
`1.33(b). See 37 CFR 1.138(b).
`
`5. D The letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37 CFR
`1.34) upon the filing of a continuing application.
`
`6. D The decision by the Board of Patent Appeals and Interference rendered on __
`of the decision has expired and there are no allowed claims.
`
`and because the period for seeking court review
`
`7. [gl The reason(s) below:
`
`A message inquiring about Abandonment was left in the General Mailbox of ST AAS & HALSEY LLP at 12:45 ET on
`10/8/2016. At the time of this posting no reply has been received
`
`/ILANA SPAR/
`Supervisory Patent Examiner, Art Unit 2622
`
`/Jeffrey S Steinberg/
`Examiner, Art Unit 2622
`
`Petitions to revive under 37 CFR 1.137, or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize
`any neqative effects on patent term.
`U.S. Patent and Trademark Office
`PTOL-1432 (Rev. 07-14)
`
`Notice of Abandonment
`
`Part of Paper No. 20161008
`
`CYWEE EX 2009 - 2
`
`

`

`UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`12/413,722
`
`03/30/2009
`
`Y ong-jin KANG
`
`2456.1058
`
`9676
`
`03/15/2016
`
`7590
`21171
`ST AAS & HALSEY LLP
`SUITE 700
`1201 NEW YORK A VENUE, N.W.
`WASHINGTON, DC 20005
`
`EXAMINER
`
`STEINBERG, JEFFREYS
`
`ART UNIT
`
`PAPER NUMBER
`
`2622
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/15/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`ptomail@s-n-h.com
`
`PTOL-90A (Rev. 04/07)
`
`CYWEE EX 2009 - 3
`
`

`

`Office Action Summary
`
`Application No.
`
`12/413,722
`
`Examiner
`
`Applicant(s)
`
`KANG ET AL.
`
`Art Unit
`
`2622
`Jeffrey S. Steinberg
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER
`IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED
`(35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`filed on 01 December 2015.
`1 )IZI Responsive to communication(s)
`2a)0 This action is FINAL.
`2b)[8J This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__
`; the restriction requirement and election have been incorporated into this action.
`4)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)1Zl Claim(s) 1-5.8-18.21-26.28-30.32.34-36.38 and 42 is/are pending in the application.
`5a) Of the above claim(s) __
`is/are withdrawn from consideration.
`6)0 Claim(s) __
`is/are allowed.
`7)[8J Claim(s) 1-5. 8-18. 21-26. 28-30. 32. 34-36. 38 and 42 is/are rejected.
`8)0 Claim(s) __
`is/are objected to.
`9)0 Claim(s) __
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)0 The specification is objected to by the Examiner.
`11 )IZI The drawing(s) filed on 30 March 2009 is/are: a)IZ! accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`12)0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`13)[8J Acknowledgment
`a)O All b)O Some * c)IZI None of:
`1.[8J Certified copies of the priority documents have been received.
`.
`2.0 Certified copies of the priority documents have been received in Application No. __
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment{s)
`1) [8J Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __
`.
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __
`.
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __
`.
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20160120
`
`CYWEE EX 2009 - 4
`
`

`

`Application/Control Number: 12/413,722
`
`Art Unit: 2622
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`Response to Arguments
`
`Applicant's arguments with respect to claims 1-5, 8-18, 21-26, 28-30, 32, 34, 36 and 38 have
`1.
`been considered but are moot because the arguments do not apply to all of the references or citations
`used in this rejection.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness
`rejections set forth in this Office action:
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth
`in section 102 of this title, if the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability
`shall not be negatived by the manner in which the invention was made.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are
`applied for establishing a background for determining obviousness under pre-A IA 35 U .S.C. 103(a) are
`summarized as follows:
`
`i. Determining the scope and contents of the prior art.
`ii. Ascertaining the differences between the prior art and the claims at issue.
`iii. Resolving the level of ordinary skill in the pertinent art.
`iv. Considering objective evidence present in the application indicating obviousness or nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the claims under pre-AIA
`35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly
`owned at the time any inventions covered therein were made absent any evidence to the contrary.
`Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of
`each claim that was not commonly owned at the time a later invention was made in order for the
`examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e),
`(f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`Claims 1, 14, 28-29 and 34 are rejected under pre-A IA 35 U .S.C. 103(a) as being unpatentable
`2.
`over by a US Patent to Liberty (7,158,118) (hereinafter "Liberty I") in view of a US Patent Application by
`FUJIOKA et al. (2007/0197284), and further in view of a US Patent to Liberty II (2005/0253806).
`
`Regarding Claims 1, 14, 28-29 and 34 (All Currently Amended), Liberty I discloses an input apparatus
`(Title), comprising:
`a motion detector(Abstract) which detects a movement of the electronic input apparatus (Col. 4, II. 28-
`31); an which is disposed on the input apparatus to receive user input by a user manipulation separate
`from the detected movement (Col. 13, II. 10-21 , respectively, where the scroll wheel is an optional input
`component that is rotated by a user), such that the received user input corresponds to a function and is
`not based on the movement detected by the motion detector (Fig. 2: 230 {Cable Broadcast Input}, 232
`
`CYWEE EX 2009 - 5
`
`

`

`Application/Control Number: 12/413,722
`
`Art Unit: 2622
`
`Page 3
`
`{Satellite Input} or 234 {VHF/UHF Input}, all three inputs not based on the motion detector); and a
`controller which selects the function among a plurality of functions based on the received user input, and
`controls the generated command to be transmitted to an external device. (Col. 6, II. 31-38) but fails to
`disclose any action in response to the movement of the input apparatus being detected within a
`predetermined amount of time after the user input is received.
`
`FUJIOKA et al. teaches action in response to the movement of the input apparatus being detected within
`a predetermined amount of time after the user input is received.(Pg. 3, ,-J[0031]).
`
`Liberty II teaches generation a command associated with the selected function by combining the detected
`movement and the received user input (Pg. 15, ,-J[0125]),
`
`Liberty I, FUJIOKA et al. and Liberty II et al. are analogous because they are both concerned with the
`same endeavor, Touch Screen Technology.
`It would have been obvious to one having ordinary skill in
`the art at the time the invention was made to modify the Display Device disclosed by Liberty I with the
`teachings of FUJIOKA et al. and Liberty 11 et al., since such a modification would have provided for action
`to be taken upon satisfaction of a condition precedent within a predetermined time and have been
`obvious as all the claimed elements were known in the prior art and one skilled in the art could have
`combined the elements as claimed by known methods with no change in their respective functions, and
`the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550
`U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453
`(1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673,675
`(1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303,306
`(1950).
`
`Regarding Claim 28 (Currently Amended), Liberty I discloses an electronic apparatus (Abstract)
`comprising:
`a motion detector (Col. 16, II. 38-46) to detect a movement of the electric apparatus for performing a
`function of an external device (Col. 6, II. 31-38) and to generate first signals corresponding
`to the detected
`movement, such that the received user input corresponds to a function and is not based on the
`movement detected by the motion detector (Col. 13, II. 15-17, where a button press is not considered a
`motion detector), for selecting the function among a plurality of functions based on the received user input
`and to generate second signals corresponding to the selected function; a controller to combine the first
`and second signals into a single command associated with the selected function to be transmitted to the
`external device in order to perform the selected function (Col. 13, II. 18-29 but fails to disclose any action
`in response to the movement of the input apparatus being detected within a predetermined amount of
`time after the user input is received or generation of signals reflective of a combined input.
`
`FUJIOKA et al. teaches action in response to the movement of the input apparatus being detected within
`a predetermined amount of time after the user input is received.(Pg. 3, ,-J[0031]).
`
`Liberty II teaches generation of second signals corresponding
`
`to a combined function (Pg. 15, ,-J[0125]).
`
`Liberty I, FUJIOKA et al. and Liberty 11 et al. are analogous because they are both concerned with the
`same endeavor, Touch Screen Technology.
`It would have been obvious to one having ordinary skill in
`the art at the time the invention was made to modify the Display Device disclosed by Liberty I with the
`teachings of FUJIOKA et al. and Liberty 11 et al., since such a modification would have provided for action
`to be taken upon satisfaction of a condition precedent within a predetermined time and have been
`obvious as all the claimed elements were known in the prior art and one skilled in the art could have
`combined the elements as claimed by known methods with no change in their respective functions, and
`the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550
`U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453
`(1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673,675
`
`CYWEE EX 2009 - 6
`
`

`

`Application/Control Number: 12/413,722
`
`Art Unit: 2622
`
`Page 4
`
`(1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303,306
`(1950).
`
`Regarding Claim 29 (Currently Amended), Liberty I discloses an electronic apparatus, comprising:
`a motion sensor to detect a translation of the electronic apparatus using an acceleration sensor (Col. 4, II.
`56-67) and detect a rotation of the electronic apparatus using an angular velocity sensor for performing a
`function of an external device, and to transmit the generated command to the external device. (Cols. 16-
`17, II. 65-23, respectively, where the user frame of reference is not assumed to be stationary); an input
`unit disposed on the electronic apparatus to receive user selection input of the function of the external
`device such that the user selection input is separate from the detected motion (Col. 13, II. 10-21,
`respectively, where the scroll wheel is an optional input component that is rotated by a user) but fails to
`disclose in response to the translation and rotation of the input apparatus being detected within a
`predetermined amount of time after the user selection input is received or a controller to generate a
`command to perform the selected function by combining the detected translation, the detected rotation
`and the user selection input .
`
`FUJIOKA et al. teaches action in response to the movement of the input apparatus being detected within
`a predetermined amount of time after the user input is received.(Pg. 3, ,-J[0031]).
`
`Liberty II teaches a controller to generate a command to perform the selected function by combining the
`detected translation, the detected rotation and the user selection input. (Pg. 15, ,-J[0125]).
`
`Liberty I, FUJIOKA et al. and Liberty 11 et al. are analogous because they are both concerned with the
`same endeavor, Touch Screen Technology.
`It would have been obvious to one having ordinary skill in
`the art at the time the invention was made to modify the Display Device disclosed by Liberty I with the
`teachings of FUJIOKA et al. and Liberty 11 et al., since such a modification would have provided for action
`to be taken upon satisfaction of a condition precedent within a predetermined time and have been
`obvious as all the claimed elements were known in the prior art and one skilled in the art could have
`combined the elements as claimed by known methods with no change in their respective functions, and
`the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550
`U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453
`(1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673,675
`(1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303,306
`(1950).
`
`Liberty I and FUJIOKA et al. are analogous because they are both concerned with the same endeavor,
`Touch Screen Technology.
`It would have been obvious to one having ordinary skill in the art at the time
`the invention was made to modify the Display Device disclosed by Liberty I with the teachings of
`FUJIOKA et al., since such a modification would have provided for action to be taken upon satisfaction of
`a condition precedent within a predetermined time and have been obvious as all the claimed elements
`were known in the prior art and one skilled in the art could have combined the elements as claimed by
`known methods with no change in their respective functions, and the combination yielded nothing more
`than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395;
`Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449,453
`(1976); Anderson's-Black Rock, Inc. v.
`Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673,675
`(1969); Great Atl. & P. Tea Co. v.
`Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
`
`Regarding Claim 30 (Previously Presented), the Liberty I-FUJIOKA et al. Combination discloses the
`electronic apparatus of Claim 29, and discloses it further comprising:
`a converter to receive a translation data signal and a rotation data signal. (Fig. 7: 812).
`
`Regarding Claim 42 (New), the Liberty I-Fujioka Combination discloses the input apparatus as claimed in
`Claim 1, and further discloses wherein the selected function is a volume adjustment function, wherein the
`
`CYWEE EX 2009 - 7
`
`

`

`Application/Control Number: 12/413,722
`
`Art Unit: 2622
`
`Page 5
`
`command associated with the selected function is a volume up or a volume down command. (Col. 6, II.
`41-45)
`
`Claims 2-5, 8-13, 15-18, 21-26, 32 and 38 are rejected under pre-A IA 35 U.S.C. 103(a) as being
`3.
`unpatentable over by a US Patent to Liberty (7,158,118) (hereinafter "Liberty I") in view of a US Patent
`Application by FUJIOKA et al. (2007/0197284), and further in view of a US Patent Application Publication
`by Liberty et al. (2005/0253806) (hereinafter "Liberty II").
`
`Regarding Claims 2 and 15 (Both Original), the Liberty 1-FUJ IOKA et al. Combination discloses the input
`apparatus as claimed in Claim 1, and is capable of performing the method as claimed in Claim 14,
`respectively, but fails to disclose wherein the controller generates a move command to move a pointer
`displayed on a screen using a motion detected by the motion detector and a user manipulation input to
`the input unit.).
`
`Liberty II discloses wherein the controller generates a move command to move a pointer displayed on a
`screen using a motion detected by the motion detector (Pg. 2, ,-J[0011] and a user manipulation input to
`the input unit. (Pg. 7, ,-J[0060], where a scroll wheel is manipulated by a user).
`
`The Liberty 1-FUJ IOKA et al. Combination and Liberty 11 are analogous because they are both concerned
`with the same endeavor, Handheld Devices It would have been obvious to one having ordinary skill in the
`art at the time the invention was made to modify the Display Device disclosed by the Liberty 1-FUJ IOKA et
`al. Combination with the teachings of Liberty 11 as all the claimed elements were known in the prior art
`and one skilled in the art could have combined the elements as claimed by known methods with no
`change in their respective functions, and the combination yielded nothing more than predictable results to
`one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425
`U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340
`U.S.147, 152, 87 USPQ303, 306 (1950).
`
`Regarding Claim 9 (Previously Presented) the Liberty 1-FUJ IOKA et al. Combination discloses the input
`apparatus as claimed in claim 1, but fails to disclose wherein the input unit includes a button unit having a
`plurality of buttons and further discloses wherein, if a button manipulation is input to the button unit and if
`a motion is detected by the motion detector simultaneously or within a predetermined time after the button
`manipulation is input, the controller generates a command by combining a button manipulation signal and
`a detected motion signal.
`
`Liberty II discloses wherein the input unit includes a button unit having a plurality of buttons (Pg. 7,
`,-J[0060]) where visual feedback occurs when a button is pressed and a different button on the 30 pointing
`device can be pressed) and further discloses wherein, if a button manipulation is input to the button unit
`and if a motion is detected by the motion detector simultaneously or within a predetermined time after the
`button manipulation is input, the controller generates a command by combining a button manipulation
`signal and a detected motion signal. (Pg. 8, ,-J[0066], where a button is depressed enabling visual
`feedback and the optional IR photo-detector detects rotational motion).
`
`The Liberty 1-FUJ IOKA et al. Combination and Liberty 11 are analogous because they are both concerned
`with the same endeavor, Handheld Devices It would have been obvious to one having ordinary skill in the
`art at the time the invention was made to modify the Display Device disclosed by the Liberty 1-FUJ IOKA et
`al. Combination with the teachings of Liberty 11 as all the claimed elements were known in the prior art
`and one skilled in the art could have combined the elements as claimed by known methods with no
`change in their respective functions, and the combination yielded nothing more than predictable results to
`one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425
`U.S. 273,282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396
`
`CYWEE EX 2009 - 8
`
`

`

`Application/Control Number: 12/413,722
`
`Art Unit: 2622
`
`Page 6
`
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340
`U.S.147, 152, 87 USPQ303, 306 (1950).
`
`Regarding Claims 11, 21 and 24 (All Previously Presented) the Liberty 1-FUJ IOKA et al. Combination
`discloses the input apparatus claimed in claim 1 and but fails to disclose that it is capable of methods as
`disclosed in Claim 14 and further wherein the input unit comprises a touch input unit which is input with a
`user touch, wherein, if a motion is detected by the motion detector and if a user touch is input to the touch
`input unit simultaneously or within a predetermined time after the motion is detected, the controller
`generates a command by combining a detected motion signal and an user touch signal.
`
`Liberty II discloses wherein it is capable of methods as disclosed in Claim 14 and further discloses
`wherein the input unit comprises a touch input unit which is input with a user touch, wherein, if a motion is
`detected by the motion detector and if a user touch is input to the touch input unit simultaneously or within
`a predetermined time after the motion is detected, the controller generates a command by combining a
`detected motion signal and an user touch signal. (Pg. 157, ,-J[0124], where a scroll wheel is manipulated
`by a user).
`
`The Liberty 1-FUJ IOKA et al. Combination and Liberty 11 are analogous because they are both concerned
`with the same endeavor, Handheld Devices It would have been obvious to one having ordinary skill in the
`art at the time the invention was made to modify the Display Device disclosed by the Liberty 1-FUJ IOKA et
`al. Combination with the teachings of Liberty 11 as all the claimed elements were known in the prior art
`and one skilled in the art could have combined the elements as claimed by known methods with no
`change in their respective functions, and the combination yielded nothing more than predictable results to
`one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425
`U.S. 273,282, 189 USPQ 449,453
`(1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340
`U.S.147, 152, 87 USPQ303, 306 (1950).
`
`Regarding Claims 12, 22 and 25 (All Previously Presented) the Liberty 1-FUJ IOKA et al. Combination is
`capable of performing the method as claimed in claims 1, 14, and 14, respectively, but fails to disclose
`wherein the input unit comprises a button unit having a plurality of buttons, wherein, if a motion is
`detected by the motion detector and if a button manipulation is input to the button unit simultaneously or
`within a predetermined time after the motion is detected, the controller generates a command by
`combining a detected motion signal and a button manipulation signal.
`
`Liberty II discloses wherein the input unit comprises a button unit having a plurality of buttons (Pg. 7,
`,-J[0060]), wherein, if a motion is detected by the motion detector and if a button manipulation is input to
`the button unit simultaneously or within a predetermined time after the motion is detected, the controller
`generates a command by combining a detected motion signal and a button manipulation signal. (Pg. 15,
`,-J[0124]).
`
`The Liberty 1-FUJ IOKA et al. Combination and Liberty 11 are analogous because they are both concerned
`with the same endeavor, Handheld Devices It would have been obvious to one having ordinary skill in the
`art at the time the invention was made to modify the Display Device disclosed by the Liberty 1-FUJ IOKA et
`al. Combination with the teachings of Liberty 11 as all the claimed elements were known in the prior art
`and one skilled in the art could have combined the elements as claimed by known methods with no
`change in their respective functions, and the combination yielded nothing more than predictable results to
`one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425
`U.S. 273,282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340
`U.S.147, 152, 87 USPQ303, 306 (1950).
`
`CYWEE EX 2009 - 9
`
`

`

`Application/Control Number: 12/413,722
`
`Art Unit: 2622
`
`Page 7
`
`Regarding Claims 3 and 16 (Both Original), the Liberty I-FUJIOKA et al. Combination discloses an input
`apparatus and is capable of the method disclosed as claimed in claims 2 and 15, respectively, but fails to
`disclose wherein the input unit comprises a touch input unit which is input with a user touch, wherein, if a
`motion is detected by the motion detector, the controller generates a move command to move the pointer
`in the same direction as that of the detected motion, and if a touch is input to the touch input unit, the
`controller generates a move command to move the pointer in the same direction as that of the input
`touch.
`
`Liberty II teaches wherein the input unit comprises a touch input unit which is input with a user touch,
`wherein, if a motion is detected by the motion detector, the controller generates a move command to
`move the pointer in the same direction as that of the detected motion, and if a touch is input to the touch
`input unit, the controller generates a move command to move the pointer in the same direction as that of
`the input touch. (Pg. 15, ,-J[0124]).
`
`The Liberty 1-FUJ IOKA et al. Combination and Liberty 11 are analogous because they are both concerned
`with the same endeavor, Handheld Devices It would have been obvious to one having ordinary skill in the
`art at the time the invention was made to modify the Display Device disclosed by the Liberty 1-FUJ IOKA et
`al. Combination with the teachings of Liberty 11 as all the claimed elements were known in the prior art
`and one skilled in the art could have combined the elements as claimed by known methods with no
`change in their respective functions, and the combination yielded nothing more than predictable results to
`one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425
`U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396
`U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340
`U.S.147, 152, 87 USPQ303, 306 (1950).
`
`Regarding Claims 4 and 17 (Both Original), the Liberty 1-FUJ IOKA et al.-Liberty 11 Combination discloses
`th