UNITED STATES PATENT AND TRADEMARK OFFICE

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1 UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,036 07/13/ /14/2015 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC ART UNIT 3992 EXAMINER LIE, ANGELA M PAPER NUMBER MAIL DATE DELIVERY MODE 12/14/2015 PAPER 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. PTOL-90A (Rev. 04/07)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MOVEA, INC. Requester and Respondent v. HILLCREST LABORATORIES, INC. Patent Owner and Appellant Appeal United States B2 Technology Center 3900 Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge.

3 DECISION ON APPEAL Patent Owner appeals under 35 U.S.C. 134 and 315 the Examiner s decision to reject claims 1 10 and We have jurisdiction under 35 U.S.C. 134 and 315, and we heard the appeal on December 2, We affirm. STATEMENT OF THE CASE This proceeding arose from a request for inter partes reexamination filed on behalf of Requester, on July 13, 2012, of United States Patent 7,158,118 B2 ( the 118 patent ), issued to Matthew G. Liberty on January 2, The 118 patent describes enhancing usability of three-dimensional (3D) pointing devices by transforming sensed motion data from a first frame of reference (e.g., the pointing device body) to a second frame of reference (e.g., a user s frame of reference). In one embodiment, the invention removes effects associated with a tilt orientation in which the pointing device is held by a user. See generally Abstract. Claim 1 illustrates the invention and is reproduced below: 1. A method for using a 3D pointing device comprising the steps of: detecting movement of said 3D pointing device; and compensating said detected movement by transforming said detected movement from a body frame of reference associated with said 3D pointing device into an inertial frame of reference by determining a tilt associated with an orientation in which said 3D pointing device is held; and compensating said detected movement to correct for said tilt; wherein said step of compensating said detected movement to correct for tilt further comprises the step of: rotating first and second rotational outputs into said inertial frame of reference by calculating: 2

4 wherein Ɵ is the tilt, ay is said first rotational output and az is said second rotational output. RELATED PROCEEDINGS This appeal is said to be related to two prior judicial proceedings, one of which was before the International Trade Commission, and the other before a Maryland District Court. App. Br. 1 (citing cases). 1 THE APPEALED REJECTIONS Patent Owner appeals the Examiner s rejecting the claims as follows: Claims 1, 2, 4, 6 8, 12, 17, 23 25, 28 32, and under 35 U.S.C. 102(b) as anticipated by Ide (US 5,598,187; Jan. 28, 1997). RAN Claims 3, 5, 9, 10, 13, 16, 18, 19, 21, 2 and 22 under 35 U.S.C. 103(a) as obvious over Ide in view of one of ordinary skill in the art ( OSA ). RAN Throughout this opinion, we refer to (1) the Action Closing Prosecution mailed May 1, 2013; (2) the Right of Appeal Notice mailed September 27, 2013 ( RAN ); (3) Patent Owner s Appeal Brief filed December 27, 2013 ( App. Br. ); (4) Requester s Respondent Brief filed January 27, 2014 ( Resp. Br. ); (5) the Examiner s Answer mailed May 14, 2014 ( Ans. ) (incorporating the RAN by reference); and (6) Patent Owner s Rebuttal Brief filed June 16, 2014 ( Reb. Br. ). 2 Although the Examiner omits claim 21 from the statement of this rejection, the Examiner nonetheless includes this claim in the associated discussion. Compare RAN 28 with RAN 36. Accordingly, we include claim 21 here to clarify the record, and deem the Examiner s error in this regard harmless. 3

5 Claims 3, 9, 10, 13, 14, 16, 20, 27, 34, and 38 under 35 U.S.C. 103(a) as obvious over Ide and ADXL202/ADXL210 Product Specification, Analog Devices (1999) ( ADX ). RAN Claims under 35 U.S.C. 103(a) as obvious over Ide, ADX, and Wei Tech Ang et al., Design of All-Accelerometer Inertial Measurement Unit for Tremor Sensing in Hand-held Microsurgical Instrument, Inst. for Software Res. (2003) ( Ang ). RAN Claims 14 and 15 under 35 U.S.C. 103(a) as obvious over Ide in view of OSA and further in view of Ang. RAN Claims 26 and 33 under 35 U.S.C. 103(a) as obvious over Ide and Ellenby (US 2002/ A1; Oct. 3, 2002). RAN 70. Claims 1 4, 6, 7, 9 13, 17, 23 26, 28 33, and under 35 U.S.C. 102(b) as anticipated by Ellenby. RAN Claims 5 and 14 under 35 U.S.C. 103(a) as obvious over Ellenby in view of OSA. RAN Claims 14 and 15 under 35 U.S.C. 103(a) as obvious over Ellenby and Ang. RAN Claims 27 and 34 under 35 U.S.C. 103(a) as obvious over Ellenby and Ide. RAN THE ANTICIPATION REJECTION OVER IDE The Examiner finds that Ide s method of using a 3D pointing device compensates detected device movement by transforming detected movement from an associated body frame of reference into an inertial frame of reference by determining tilt associated with an orientation in which the 4

6 device is held. RAN 7 8. According to the Examiner, Ide compensates detected movement to correct for tilt by rotating first and second rotational outputs, namely the x and y outputs whose values are said to depend on a rotational shift angle (θm) in the equations in Ide s column 21, lines 51 to 55, into the inertial frame of reference. RAN Requester concurs with the Examiner s findings. Resp. Br Patent Owner argues that Ide lacks an inertial frame of reference, namely a reference frame where at least one coordinate axis has a time- and user-independent orientation. App. Br , 23 32; Reb. Br According to Patent Owner, Ide s system not only uses a body frame whose coordinate axes are tied to a handheld mouse s orientation, but also requires user adjustment for proper operation. App. Br ; Reb. Br This user-dependent aspect of Ide is said to differ from the requisite userindependent aspects of an inertial frame of reference that is defined relative to an external, absolute field that the user cannot control, such as gravity or magnetic North. App. Br ; Reb. Br Patent Owner further contends that Ide does not determine tilt, namely a rotation from an absolute reference, such as gravity or magnetic North, but rather discloses a rotation amount (θm) between horizontal and vertical directions of those of Ide s arbitrarily tilted screen. App. Br ; Reb. Br ; Patent Owner adds that Ide does not rotate first and second rotational outputs into the inertial frame of reference, but rather the rejection relies on equations using linear mouse movements in horizontal and vertical directions. App. Br ; Reb. Br. 22. Patent Owner argues other recited limitations summarized below. 5

7 ISSUES Under 102, has the Examiner erred by finding that Ide discloses: (1) (a) transforming detected movement of a 3D pointing device from a body frame of reference to an inertial frame of reference by determining a tilt associated with an orientation in which the device is held, and (b) compensating detected movement to correct for tilt by rotating first and second rotational outputs into the inertial frame of reference as recited in claim 1? in claim 23? (2) an inertial frame of reference defined relative to gravity as recited (3) measuring tilt relative to gravity as recited in claim 25? ANALYSIS Claims 1, 2, 4, 6 8, 12, and 17 As noted above, this dispute turns on the meaning of an inertial frame of reference. We, therefore, begin by construing that term and the related body frame of reference. The 118 patent defines a body frame as referring to a set of axes associated with the body of an object being moved. 118 patent, col. 4, ll Therefore, a body frame of reference is with respect to the axes of a movable object s body when interpreted in light of this definition. The 118 patent, however, lacks such a concrete definition for an inertial frame of reference, but rather describes an inertial frame of reference in broad and exemplary terms. For example, an inertial frame of reference can be defined with respect to an orientation substantially parallel 6

8 to a room s floor as shown in Figure 6(a) or, notably, can be defined as any other orientation. 118 patent, col. 11, ll Based on this broad and exemplary description, Patent Owner s proffered definition of inertial frame of reference, namely a reference frame where at least one 3 coordinate axis has at least one time- and userindependent orientation is overly limiting, despite Dr. Riviere s testimony in this regard. App. Br. 23 (citing Declaration of Dr. Cameron N. Riviere Under 37 C.F.R , Exh. DECL-1 ( Riviere Decl. ), at 14). Although we appreciate Dr. Riviere s insights in this regard, we nevertheless see no reason why an inertial frame of reference cannot be interpreted more broadly, but reasonably, as a frame of reference associated with a screen s orientation. See Request for Inter Partes Reexamination filed July 13, 2012 ( Request ), at 40 (articulating this interpretation). This screen-based interpretation is reasonable, for the associated reference frame is inertial at least in the sense that, as a practical matter, the screen s vertical orientation (and associated frame of reference) does not change when in its operating position, such as the arrangement shown in Ide s Figure 33 as the Examiner indicates. RAN (noting that the default reference frame in Ide s Figure 33 is not to be modified because the monitor is not intended to be moved, rather only the pointing device). Because Ide s screen is positioned substantially vertically in Figures 33, 3 Although Dr. Riviere limits an inertial frame of reference as having one coordinate axis with time- and user-independent orientation, Patent Owner broadens this characterization to a reference frame with at least one such axis. Compare Riviere Decl. 14 with App. Br

9 35A, and 35B, the display unit is at least substantially aligned with gravity as the Examiner indicates. RAN 78. Accord Resp. Br. 21. Although Ide does not indicate the direction of gravity or detail explicitly how the display is mounted in Figures 33, 35A, and 35B as Patent Owner indicates (Reb. Br. 13, 18), Ide s display unit 202 is nonetheless not floating in thin air: it is subject to the same gravitational force as that applied to all other objects on Earth regardless of how the display unit is mounted. Accord Resp. Br. 20 ( Gravity is inherent in all inventions intended to be used on Earth, such as Ide. ). Notably, this gravitational force is directed towards the Earth s center, and represented with respect to typical coordinate systems. 4 Therefore, regardless of the specific manner in which Ide s display unit 202 in Figures 33, 35A, and 35B is mounted, it is nonetheless depicted as oriented substantially vertically and, therefore, the unit s screen is aligned substantially with gravity given the three-dimensional perspective view in these figures. In reaching this conclusion, we recognize that our reviewing court has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification. Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012). But here, we see no error in the Examiner s reliance on Ide s three-dimensional perspective views in Figures 33, 35A, and 35B at least to the extent of what they reasonably convey regarding the relative orientation of the display 4 See generally US 6,940,940 B2, at Fig. 2 (showing direction of gravity g in downward vertical direction with respect to x- and y-directions); see also Ron Kurtis, GRAVITY AND GRAVITATION: DERIVATIONS, EQUATIONS AND APPLICATIONS 34 (2011). 8

10 screen with respect to the vertical and horizontal directions. And while the laptop computer in Ide s Figure 3 has a screen that appears to be angled with respect to the direction of gravity (but nonetheless has a substantial vertical component in that direction), Patent Owner s arguments based on this embodiment (Reb. Br ) are inapposite to the Examiner s position that is based principally on the embodiments of Figures 33, 35A, and 35B. See RAN Accord Resp. Br (distinguishing Ide s Figure 3 embodiment from other embodiments). We also find unavailing Patent Owner s contention that Ide lacks an inertial frame of reference due to Ide s user-dependent features that require manual operation. App. Br ; Reb. Br In short, nothing in the claim precludes such manual operation, nor will we import user- or timeindependent aspects into the recited inertial frame of reference as Patent Owner proposes. Although claims are given their broadest reasonable interpretation in light of the Specification as it would be interpreted by skilled artisans, this interpretation must not import limitations from the Specification into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc). Therefore, we see no error in the Examiner s findings that Ide compensates detected movement of a 3D pointing device by transforming detected movement from a body frame of reference to an inertial frame of reference, namely that associated with the screen s orientation. RAN 8, 73 75, Nor do we find error in the Examiner s position that this transformation is performed by determining a tilt as claimed in view of Ide s sensing the amount of rotation (θm) due to twisting of the operator s wrist. 9

11 RAN 8 (citing Ide, col. 21, ll ). Accord Request 40 (mapping Ide s roll angle (θm) to the recited tilt). First, the term tilt is not defined in the 118 patent; accordingly, we construe the term with its plain meaning. Patent Owner contends that the term tilt means a rotation from an absolute reference, such as gravity or magnetic North, that the user cannot control. App. Br ; Reb. Br The 118 patent, however, does not define the term tilt explicitly, let alone with Patent Owner s proffered definition of the term. At best, the 118 patent refers to tilt generally, and in one implementation, refers to tilt as variations in x-axis roll of a 3D pointing device based on the manner in which it is held by a user. 118 patent, col. 17, ll Based on this description, we see no error in the Examiner s reliance on Ide s sensing the amount of rotation (θm) due to twisting of the operator s wrist as determining tilt as claimed. RAN 8 (citing Ide, col. 21, ll ). Accord Request 40 (mapping Ide s roll angle (θm) to the recited tilt). Patent Owner s contention that Ide does not determine tilt because it allegedly must be measured by sensing an absolute external field that the user cannot control, such as gravity or magnetic North (App. Br. 34), is unavailing and not commensurate with the scope of the claim. Nor do we find error in the Examiner s mapping Ide s values of x and y in the equations in column 21, lines 51 to 55 to the recited rotational outputs, for these outputs depend on rotational shift (θm) and, therefore, are rotational at least in that sense. RAN We reach this conclusion despite the values of x and y representing linear movements as Patent Owner contends (App. Br ; Reb. Br. 22), for nothing in the claim 10

12 precludes the Examiner s interpretation that is based reasonably on the x and y values dependence on rotational shift. Patent Owner s arguments are, therefore, unavailing and not commensurate with the scope of the claim. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 4, 6 8, 12, and 17 not argued separately with particularity. Claims 23, 24, 28 32, and We also sustain the Examiner s rejection of independent claim 23 that recites limitations commensurate with claim 1, but adds that the inertial frame of reference is defined relative to gravity. As discussed above, we see no error in the Examiner s reliance on the functionality of Ide s Figure 35A (RAN 16, 78 79) for teaching the recited inertial frame of reference that is effectively defined relative to gravity, particularly in view of the vertical orientation of the display screen as noted previously. Patent Owner s arguments (App. Br ; Reb. Br. 11, 13 16, 18 20) are unavailing and not commensurate with the scope of the claim for the reasons previously discussed. Even assuming, without deciding, that the vertical orientation of Ide s display screen is not perfectly vertical, it would nonetheless have a substantial vertical component as shown in the perspective view in Figure 35A and, therefore, be at least substantially aligned with gravity in that vertical direction. To the extent that Patent Owner contends that the claimed invention requires perfect alignment with gravity, such an argument is not commensurate with the scope of the claim and, in any event, even the gravitational-alignment example cited by Dr. 11

13 Riviere in his declaration contemplates at least some variation in this alignment to allow for substantial alignment. See Riviere Decl. 14 ( [T]he 118 patent explains that the inertial frame of reference can [be] that in which the 3D device has its bottom substantially parallel to a floor of a room ( 118 patent, 11:47-49). In this example, because the floor is defined relative to (i.e., perpendicular to) the direction of gravity, the inertial frame of reference is aligned to gravity. ) (emphasis added). For the foregoing reasons, then, we are not persuaded that the Examiner erred in rejecting claim 23, and claims 24, 28 32, and not argued separately with particularity. Claim 25 We also sustain the Examiner s rejection of claim 25 reciting that tilt is measured relative to gravity. RAN 19, For the reasons noted previously, we see no error in the Examiner s position that pointing-device tilt would effectively be measured relative to the vertical direction (i.e., the direction of gravity) given the three-dimensional perspective view in Ide s Figure 35A, and the relative orientations of the pointing device and the display screen. THE OBVIOUSNESS REJECTION OVER IDE AND OSA In rejecting claim 3, the Examiner acknowledges that Ide does not determine tilt using an accelerometer as claimed, but rather uses a gyroscope-based rotation sensor. RAN 28 29, The Examiner, however, reasons that because accelerometers were commonly used to sense 12

14 rotation, it would have been obvious to use an accelerometer to sense rotation in Ide. RAN 29. The Examiner adds that doing so would also be a simple substitution of one known element for another to obtain predictable results. Id. Requester concurs with these findings and conclusions. Resp. Br Patent Owner argues that not only would replacing Ide s rotation amount sensing element 236 with an accelerometer render Ide unsatisfactory for its intended purpose of enabling pointer operation in any imaginary plane, Ide teaches away from such a replacement. App. Br ; Reb. Br. 23. Patent Owner adds that, based on Dr. Riviere s experimental data, using an accelerometer rather than a gyroscope would render Ide unsuitable for its intended purpose of correcting user movements in both cursor control and motion pattern input modes. App. Br ; Reb. Br Lastly, Patent Owner contends that the Examiner not only summarily dismissed Dr. Riviere s opinions and associated factual underpinnings, but also failed to properly consider the evidence of objective indicia of non-obviousness, namely commercial success, praise in the industry, long-felt need, and licensing of the 118 patent. App. Br ; Reb. Br. 23. ISSUES I. Under 103, has the Examiner erred in rejecting claim 3 by finding that Ide and OSA collectively would have taught or suggested determining tilt based on output from an accelerometer? II. Is the Examiner s proposed combination supported by articulated reasoning with some rational underpinning to justify the Examiner s 13

15 obviousness conclusion? This issue turns on (1) whether using an accelerometer in Ide as the Examiner proposes would render Ide unsuitable for its intended purposes of (a) enabling pointer operation in any imaginary plane, and (b) correcting user movements in both cursor control and motion pattern input modes; and (2) whether Ide teaches away from the proposed modification. III. Did the Examiner properly consider the evidence of secondary considerations of non-obviousness in concluding that the claimed invention would have been obvious? ANALYSIS We begin by noting that it is undisputed that it was known in the art at the time of the invention to use accelerometers to measure rotation and tilt. See Reb. Br. 12 (noting that accelerometers measure absolute tilt relative to gravity). Accord Riviere Decl. 17 ( [A]ccelerometers are used to determine rotation away from the coordinate axis that is defined relative to the gravitational field. ). Nor is it disputed that Ide uses a gyroscope not an accelerometer to sense rotation. See RAN The question, then, is whether the Examiner erred by concluding that it would have been obvious to use an accelerometer to determine tilt in Ide as proposed. On this record, we find no error in the Examiner s determination. To be sure, if the Examiner s proposed modification renders the prior art unsatisfactory for its intended purpose, the Examiner has failed to make a prima facie case of obviousness. See In re Gordon, 733 F.2d 900, 902 (Fed. 14

16 Cir. 1984). Although the submitted evidence is probative in this regard, it is nevertheless insufficient to show error in the Examiner s position. First, we find unavailing Patent Owner s contention that replacing Ide s rotation amount sensing element 236 with an accelerometer would render Ide unsatisfactory for its intended purpose of enabling pointer operation in any imaginary plane. App. Br According to Patent Owner, such a replacement would restrict Ide s plane of operation such that at least one coordinate axis of the plane is fixed, thus introducing a rigidity in design choice that is said to run counter to Ide s seeking pointing operation in any arbitrary imaginary plane. App. Br But as Requester indicates, the term any imaginary plane in Ide merely means that the device operates in the air, as opposed to on a desk. Resp. Br. 23. Because accelerometer tilt detectors are compatible with operation in the air, Patent Owner has not shown persuasively that using an accelerometer in Ide would render that system unsuitable for in the air operation. Nor are we persuaded that using an accelerometer would render Ide s system unsuitable for correcting user movements in both cursor control and motion pattern input modes as Patent Owner contends. App. Br ; Reb. Br We reach this conclusion despite Dr. Riviere s testing using an accelerometer as a rotation amount detector 237 of Ide that, according to Dr. Riviere, produces a grossly erroneous motion correction result, unlike a gyroscope. Riviere Decl Dr. Riviere s testing was performed 15

17 for a particular dynamic situation, 5 and he concludes from that testing that an accelerometer is a suitable tilt sensor only for quasi-static applications not for a dynamic situation, such as motion pattern input. Our emphasis underscores the fact that Dr. Riviere s testing was not only limited to a particular dynamic situation, but he actually acknowledges the suitability of accelerometer tilt sensors in quasi-static applications. Although Dr. Riviere does not explain what a quasi-static application means, given the context in which the term is used, such an application is apparently distinct from the dynamic applications involving, for example, motion pattern input. See Riviere Decl. 27. Nevertheless, we see no reason why Ide s system could not be used in such quasi-static applications even for cursor control. That Dr. Riviere acknowledges that the tilt estimated using an accelerometer eventually approaches the same value indicated by a gyroscope as indicated in Figure 3 and paragraph 31 of his declaration only further bolsters this conclusion. As shown in Dr. Riviere s Figure 3, the point at which these tilt values converge is just after one second. Even assuming, without deciding, that this approximately one-second interval before tilt-value convergence is when the user moves the device and, consequently, when the associated motion pattern is generated as Dr. 5 Dr. Riviere refers repeatedly to a particular dynamic situation in connection with the test procedure. See Riviere Decl ( Because of the large error in the accelerometer-based tilt estimate for this dynamic situation.... ); see also id. ( [T]he accelerometer is not a suitable substitute for a gyroscope for this sort of application.... The gyroscope produces a far better estimate of the roll angle in this dynamic situation. ) (emphases added). 16

18 Riviere declares (Riviere Decl. 32), that does not mean that such performance would necessarily render Ide s device unsuitable for other dynamic situations, particularly for cursor control applications and those situations involving less frequent movements. Notably, the Examiner relies on Ide only for cursor control applications not Ide s independent and distinct motion pattern input aspects. RAN Accord Resp. Br. 24 (noting this point and citing ACP 73). Therefore, even assuming, without deciding, that accelerometers are unsuitable for dynamic situations involving motion pattern input as Dr. Riviere declares (Riviere Decl. 27), such unsuitability is not germane to the Examiner s reliance on Ide s independent and distinct cursor control aspects. Nevertheless, to the extent that Dr. Riviere s opinions are relevant to Ide s particular cursor control aspects on which the Examiner relies, Patent Owner has still not shown persuasively that accelerometers would be unsuitable in Ide for situations other than the particular dynamic situation involved in Dr. Riviere s testing, let alone quasi-static situations. The latter situations are notable, for we see no reason why Ide s system could not be used in such situations for cursor control, particularly in light of their acknowledged suitability in quasi-static situations. Although these situations may be less common than dynamic situations, or have drawbacks in terms of speed, efficiency, or performance, such factors may very well be outweighed by the advantages of using accelerometers in lieu of gyroscopes to determine tilt under those conditions an engineering tradeoff well within the level of ordinarily skilled artisans. 17

19 Nor are we persuaded that Ide teaches away from using accelerometers as rotation sensors. Although Ide may sense linear motion with accelerometers, and sense rotation with a gyroscope in various embodiments as Patent Owner indicates (App. Br ), nothing on this record shows that Ide criticizes, discredits, or otherwise discourages investigation into the invention claimed as required for teaching away. See Norgren Inc. v. Int l Trade Comm n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). And even assuming, without deciding, that an accelerometer would be inferior to, or less desirable than, a gyroscope in sensing rotation in Ide, that alone is insufficient to teach away from the ostensibly inferior accelerometer alternative where, as here, the disclosure does not criticize, discredit, or otherwise discourage that alternative. See In re Fulton, 391 F.3d 1195, (Fed. Cir. 2004). In short, the Examiner s proposed combination uses prior art elements predictably according to their established functions an obvious improvement. See KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Lastly, as Requester indicates, the Examiner considered all evidence of secondary considerations of non-obviousness in concluding that the claimed invention would have been obvious. RAN 91 92; Resp. Br. 25 (citing ACP 69 70). Despite Patent Owner s arguments to the contrary (App. Br. 44), the Examiner finds and we agree that the secondary considerations evidence, namely regarding commercial success, praise in the industry, long-felt need, and licensing of the 118 patent, collectively fails to outweigh the countervailing evidence of obviousness on this record. This 18

20 evidence is based on the statements of Mr. Chad Lucien, Senior Vice President of Sales and Marketing at Hillcrest Laboratories the company assigned as the current Patent Owner. See Declaration of Mr. Chad Lucien Under 37 C.F.R , Exh. DECL-2 ( Lucien Decl. ). Although we appreciate Mr. Lucien s insights in this regard, this evidence is nevertheless uncorroborated a factor which further reduces its probative value. Nor has Patent Owner shown a sufficient nexus between the secondary considerations evidence and the claimed invention as the Examiner indicates. RAN In short, the Examiner does not find this evidence, considered collectively, sufficient to overcome the countervailing evidence of obviousness. Nor are we persuaded of error in that determination. Therefore, we are not persuaded that the Examiner erred in rejecting claim 3 as obvious over Ide and OSA, and claims 5, 9, 10, 13, 16, 18, 19, 21, and 22 not argued separately with particularity. THE OTHER OBVIOUSNESS REJECTIONS BASED ON IDE We also sustain the Examiner s obviousness rejections of (1) claims 3, 9, 10, 13, 14, 16, 20, 27, 34, and 38 over Ide and ADX; (2) claims over Ide, ADX, and Ang; (3) claims 14 and 15 over Ide, OSA, and Ang; and (4) claims 26 and 33 over Ide and Ellenby. RAN 37 48, Patent Owner reiterates similar arguments made previously, and alleges that the additional cited references fail to cure those purported deficiencies. App. Br , We are not persuaded by these arguments, however, for the reasons previously discussed. 19

21 THE REMAINING REJECTIONS Because our decision is dispositive regarding patentability of all appealed claims based on the foregoing prior art references, we need not reach the merits of the Examiner s decision to also reject (1) claims 1 4, 6, 7, 9 13, 17, 23 26, 28 33, and as anticipated by Ellenby; (2) claims 5 and 14 as obvious over Ellenby and OSA; (3) claims 14 and 15 as obvious over Ellenby and Ang; and (4) claims 27 and 34 as obvious over Ellenby and Ide. RAN See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC s determination based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). CONCLUSION The Examiner did not err in rejecting claims 1, 2, 4, 6 8, 12, 17, 23 25, 28 32, and under 102(b) as anticipated by Ide. Under 103, the Examiner did not err in rejecting (1) claims 3, 5, 9, 10, 13, 16, 18, 19, 21, and 22 as obvious over Ide and OSA; (2) claims 3, 9, 10, 13, 14, 16, 20, 27, 34, and 38 as obvious over Ide and ADX; (3) claims as obvious over Ide, ADX, and Ang; (4) claims 14 and 15 as obvious over Ide, OSA, and Ang; and (5) claims 26 and 33 as obvious over Ide and Ellenby. We do not reach the rejections citing Ellenby as a base reference. DECISION The Examiner s decision to reject claims 1 10 and is affirmed. 20

22 Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R See 37 C.F.R In the event neither party files a request for rehearing within the time provided in 37 C.F.R , and this decision becomes final and appealable under 37 C.F.R , a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R and AFFIRMED 21

23 PATENT OWNER: FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON DC THIRD PARTY REQUESTOR: PIERRE R. YANNEY STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY