In re Man Mach. Interface Techs. LLC (Fed. Cir. Apr. 19, 2016) (Before Lourie, O’Malley, and Stoll, J.) (Opinion for the court, Stoll, J.)(The Federal Circuit reversed the Board’s finding that the patent was anticipated, but ruled the examiner properly relied on evidence from the request for reexamination showing a motivation to combine prior art.) Click Here for a copy of the opinion.
Man Machine owns a patent directed to a remote control device for making selections on a TV or computer. Claim 1 requires a multi-function thumb switch adapted for activation by a human thumb. The switch controls cursor movement and object selection on a screen, including an annular switch and four switches that surround a center switch. A third party requested ex parte reexamination of the patent. The examiner rejected the claims as anticipated and obvious over a Japanese Patent which disclosed a cursor locking key surrounded by four cursor moving keys on a deskbound mouse. Man Machine appealed to the Board, which affirmed the examiner. Man Machine appealed.
The Court first noted that the phrase “adapted to” generally means “made to” or “configured to” although it can be used more broadly to mean “capable of.” In this case, the Court said that the phrase was narrower, meaning that the remote control device is made to be held in the human hand and the thumb switch is made for a human thumb. The specification distinguishes the invention from a desk-bound device, stating that one of its benefits is its ease of use and capability of being held in more user convenient positions. Thus, the Court rejected the Board’s broader construction. The Court also found that the Board’s construction of “thumb switch” did not follow the specification. The Summary of the Invention stated that the thumb switch was slightly bigger than thumb size, and the specification stated that the multi-function thumb switch was sized to enable a human thumb to activate by pushing one of the switches without separating the thumb switch from the multi-function switch. Activation of the switch by another finger was not contemplated in the patent’s written description. The Court thus reversed the Board’s finding that the patent was anticipated by the prior art Japanese Patent.
However, the Court affirmed the obviousness rejection, noting that even under the proper claim construction, substantial evidence supported the Board’s factual findings underlying its obviousness determination. The examiner properly relied on evidence from the request for reexamination showing a motivation to combine prior art, by combining a base system combined with a known improvement. Man Machine did not introduce any objective indicia of nonobviousness. Thus, the Court affirmed the finding of obviousness.
Also contributing to this summary were Lindsay Henner and Puja Dave.
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