Ex Parte Hayashi et alDownload PDFPatent Trial and Appeal BoardMay 24, 201613402026 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/402,026 02/22/2012 27562 7590 05/26/2016 NIXON & V ANDERHYE, P,C 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Yugo Hayashi 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SJP-723-3361 7990 EXAMINER GUO,XILIN ART UNIT PAPER NUMBER 2616 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUGO HAYASHI, KAZUY A SUMAKI, KEIZO OHTA, and JUN ITO Appeal2015-000723 Application 13/402,026 Technology Center 2600 Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and MONICA S. ULLAGADDI Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm-in-part. Invention The invention on appeal relates to techniques for calculating "a direction of rotation and an amount of rotation of [a] portable display apparatus about a predetermined direction in real space." (Abstract). Appeal2015-000723 Application 13/402,026 Related PTAB Appeals Appeal No. 2015-000566 (co-pending Application No. 13/401,054) is also on appeal pending a decision from the Board. 1 Appeal No. 2015-001101 (co-pending Application No. 13/400,944), decided May 24, 2016 (Examiner Reversed). Illustrative Claim 1. A non-transitory computer-readable storage medium having stored thereon an information processing program to be executed by a computer of an information processing apparatus capable of displaying an image on a portable display apparatus that outputs at least data based on an attitude and/or a motion of the portable display apparatus body, the information processing program causing the computer to perform features comprising: calculating, on the basis of the attitude and/ or motion data output from the portable display apparatus, at least a direction of rotation and an amount of rotation of the portable display apparatus about a predetermined direction in real space; calculating a corrected amount of rotation by correcting the calculated amount of rotation by a predetermined factor; 1 Appellants represent to the Board they "are not aware of any related appeals" (App. Br. 4), but less than two hours after filing the instant appeal, Appeal No. 2015-000566 was filed, for related Application No. 13/401,054. We note both the instant appeal and Appeal No. 2015-000566 are signed by the same attorney of record. We further note the two appeals: (1) identify the same Real Party in Interest, (2) are pending before the same Examiner, (3) are each provisionally rejected for obviousness-type double patenting in view of the other, and (4) have nearly identical appeal briefs. 2 Appeal2015-000723 Application 13/402,026 calculating, with respect to a direction that corresponds to the predetermined direction and is set in a virtual world, an operation indication direction based on the direction of rotation and the corrected amount of rotation; performing predetermined processing on the virtual world in accordance with the operation indication direction; generating a first image including at least a part of the virtual world subjected to the processing; and displaying the first image on the portable display apparatus. (Emphasis added with respect to the contested limitation) Rejections 2 A. Claims 1, 2, 4, 7, 8, 19, and 26-29 are rejected under 35 U.S.C. § 102(a) as anticipated by Ichiyanagi (US 2011/0039618 Al; pub. Feb. 17, 2011 ). (Final Act. 20-31 ). 2 In the event of further prosecution, we direct the Examiner's attention to the question of whether the claims are patent-eligible under 35 U.S.C. § 101. See MPEP § 2106. Abstract ideas have been identified by the courts by way of example, as including fundamental economic practices, certain methods of organizing human activities, an idea "of itself," and mathematical relationships/formulae. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355-56 (2014). Regarding at least claim 1, a question arises as to whether a person would also be capable of performing the contested steps or acts as mental steps, or with the aid of pen and paper. See Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson"). Moreover, "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under§ 101." CyberSource, 654 F.3d at 1373. We leave further consideration of this § 101 issue to the Examiner. Although the Board is authorized to reject 3 Appeal2015-000723 Application 13/402,026 B. Claim 3 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Yonemori (US 2010/0302238; pub. Dec. 2, 2010). (Final Act. 32-33). C. Claim 5 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Shimizu (US 2003/0216176 Al; pub. Nov. 20, 2003). (Final Act. 33-35). D. Claim 6 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Onodera (US 2010/0245685 Al; pub. Sept. 30, 2010). (Final Act. 35-36). E. Claim 9 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Ikeda (US 2010/0279770 Al; pub Nov. 4, 2010). (Final Act. 36-37). F. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Takahashi (US 2008/0062198 Al; pub Mar. 13, 2008). (Final Act. 37- 39). G. Claim 12 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Itoi (US 2005/0014543 Al; pub. Jan. 20, 2005). (Final Act. 39--40). H. Claims 13, 14, and 17 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Itoi and further in view of Ikeda. (Final Act. 40--44). claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. 4 Appeal2015-000723 Application 13/402,026 I. Claims 15 and 16 are rejected under 3 5 U.S. C. § 103 (a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Ohta (US 2007/0008298 Al; pub. Jan. 11, 2007). (Final Act. 44--46). J. Claim 18 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Nishimoto (US 2009/0069096 Al; pub. Mar. 12, 2009). (Final Act. 46-48). K. Claim 20 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Abou- Samra (US 6,416,410 Bl; pub. July 9, 2002). (Final Act. 48--49). L. Claims 21, 23, and 24 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Miyamoto (US 6,712,703 B2; pub. Mar. 30, 2004). (Final Act. 50-52). M. Claim 22 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Miyamoto, and further in view of Abou-Samra. (Final Act. 52-55) N. Claim 25 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Ichiyanagi in view of Miyamoto, and further in view ofEto (US 2008/0102951 Al; pub. May 1, 2008). (Final Act. 55-56). 0. Claims 1-5, 7, and 18-29 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting (OTDP) over claims 1---6 and 11-22 of copending Application No. 13/401,054. 5 Appeal2015-000723 Application 13/402,026 ANALYSIS Rejection A of Claims 1, 2, 4, 7, 8, 19, and 26--29 under§ 102 Issue: Did the Examiner err in finding Ichiyanagi discloses "calculating ... at least a direction of rotation and an amount of rotation of [a] portable display apparatus," within the meaning of claim 1? Appellants contend "Ichiyanagi' s input device 20 does not comprise a display and thus Ichiyanagi fails to calculate an attitude and/or motion of a portable display apparatus. Instead, Ichiyanagi plays a game using a conventional handheld controller." (App. Br. 16) (Emphasis added). Both Appellants and the Examiner agree Ichiyanagi discloses an embodiment where "the main device 10 (game device or portable game device)[] is integrated with the input device 20 .... " (Ichiyanagi i-f 85). However, Appellants contend this disclosure is insufficient to support the Examiner's finding of anticipation: At best, Ichiyanagi provides a blanket disclosure indicating that the input device 20 can encompass the main device 10. But, even assuming this combination of devices, as can be seen from Fig. 1, the combination of main device 10 and input device 20 still fails to yield a display (display 190 is separatefrom both devices) (App. Br. 16, emphasis added). According to the Examiner, because "Ichiyanagi discloses the input device and main device can be integrated as a single device and portable[,] such as a portable telephone," such an embodiment "would [comprise a] display based on Figure 1, display 190." (Ans. 4) (Emphasis added). Although we agree the "portable telephone" example described by Ichiyanagi (i-f85) likely includes a display, our reviewing court guides: "[i]nherency ... may not be established by probabilities or possibilities. The 6 Appeal2015-000723 Application 13/402,026 mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999) (internal citations omitted). We also find Ichiyanagi's disclosure (i-f73) that the game system of Figure 1 "may have a configuration in which some of the sections shown in FIG. 1 are omitted," casts further doubt on the inherency of display device 190 as being integral to input device 20. Therefore, we find a preponderance of the evidence supports Appellants' contention (App. Br. 16) the Examiner has failed to establish a prima facie case of anticipation for independent claim 1. 3 Because Appellants have persuaded us the Examiner erred, we reverse Rejection A under§ 102 of claim 1. For the same reasons, we also reverse substantially similar independent claims 27-29, also rejected under Rejection A. Likewise, we reverse dependent claims 2, 4, 7, 8, 19, and 26, which depend from independent claim 1, and were also rejected under anticipation Rejection A. Rejections B-N of Claims 3, 5, 6, 9-18, and 20--25 under§ 103 Regarding Rejections B-N under§ 103, the Examiner has not shown how the additionally cited references overcome the deficiencies of 3 Because we are a board of review, and not a place of initial examination, we will not engage in the de nova examination required to determine whether it would have been obvious to integrate Ichiyanagi's display device 190 with input device 20 (Fig. 1 ). Since a § 103 rejection of claim 1 is not before us on appeal, we express no opinion as to whether at least claim 1 would have been obvious over Ichiyanagi, considered alone, or in combination with additional references. We leave any such further consideration to the Examiner. Although the Board is authorized to reject the claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. 7 Appeal2015-000723 Application 13/402,026 Ichiyanagi, as discussed above regarding claim 1. Therefore, we reverse the obviousness rejections of dependent claims 3, 5, 6, 9-18, and 20-25, which the Examiner rejected under Rejections B-N. Rejection 0 of Claims 1-5, 7, and 18-29 for Nonstatutory OTDP The Examiner provisionally rejected claims 1-5, 7, and 18-29 on the ground of nonstatutory obviousness-type double patenting. Appellants request that this rejection be held in abeyance until allowable subject matter has been indicated. (App Br. 15). Because Appellants do not contest the merits of provisional OTDP Rejection 0, we proforma sustain the Examiner's Rejection 0 on the ground of nonstatutory obviousness-type double patenting. DECISION We reverse the Examiner's Rejection A of claims 1, 2, 4, 7, 8, 19, and 26-29 under § 102. We reverse the Examiner's Rejections B-N of claims 3, 5, 6, 9-18, and 20-25 under§ 103. We affirm the Examiner's provisional OTDP Rejection 0 of claims 1-5, 7, and 18-29, on the ground of nonstatutory obviousness-type double patenting. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation