Ex Parte Hayashi et al

Patent Trial and Appeal Board

May 25, 2016

13401054 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/401,054 02/21/2012
27562 7590 05/27/2016
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-723-3362 6552
EXAMINER
GUO,XILIN
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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, and
KEIZOOHTA
Appeal2015-000566
Application 13/401,054
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 1-23. 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).
Appeal2015-000566
Application 13/401,054
Related PTAB Appeals
Appeal No. 2015-000723 (co-pending Application No. 13/402,026),
decided May 24, 2016 (Examiner Affirmed-In-Part). 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 functionality
compnsmg:
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 offsetting the
calculated amount of rotation by a predetermined amount;
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;
1 Appellants represent to the Board they "are not aware of any related
appeals" (App. Br. 4), but less than two hours before filing the instant
Appeal Brief, the Appeal Brief for Appeal No. 2015-000723 was filed, for
related Application No. 13/402,026. We note both the instant Appeal Brief
and the Appeal Brief for Appeal No. 2015-000723 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.
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Application 13/401,054
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, 6, 12, and 19-23 are rejected under 35 U.S.C. § 102(a)
as anticipated bylchiyanagi (US 2011/0039618 Al; pub. Feb. 17, 2011).
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).
2 In the event of fi.1rther prosecution, \Y..fe 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
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.
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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).
D. Claims 7-10 are 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).
E. Claim 11 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).
F. Claim 13 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).
G. Claims 14, 16, 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 Miyamoto (US 6,712,703 B2; pub. Mar. 30, 2004).
H. Claim 15 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.
I. 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 Miyamoto,
and further in view ofEto (US 2008/0102951 Al; pub. May 1, 2008).
J. Claims 1---6 and 11-22 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting (OTDP) over claims 1-5, 7
and 18-29 of copending Application No. 13/402,026.
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ANALYSIS
Rejection A of Claims 1, 2, 4, 6, 12, and 19-23 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 separate from both devices)
(App. Br. 16).
According to the Examiner, because "Ichiyanagi discloses the input
device and main device can be integrated as a single device [that is]
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:
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"[i]nherency ... may not be established by probabilities or possibilities. The
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 we are persuaded the Examiner erred, we reverse Rejection
A under § 102 of claim 1. For the same reasons, we also reverse
substantially similar independent claims 20-22, also rejected under
Rejection A. Likewise, we reverse dependent claims 2, 4, 6, 12, 19, and 23,
which depend from independent claim 1, and were also rejected under
anticipation Rejection A.
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
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.
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Rejections B-1 of Claims 3, 5, 7-11, and 13-18 under§ 103
Regarding Rejections B-I under§ 103, the Examiner has not shown
how the additionally cited references overcome the aforementioned
deficiencies of Ichiyanagi, as discussed above regarding claim 1.
Therefore, we reverse the obviousness rejections of dependent claims 3, 5,
7-11, and 13-18, rejected under Rejections B-I.
Rejection J of Claims 1-6 and 11-22 for Provisional Nonstatutory OTDP
The Examiner provisionally rejected claims 1---6 and 11-22 on the
ground of nonstatutory obviousness-type double patenting. Appellants
request 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 J, we proforma sustain the Examiner's Rejection Jon the ground
of nonstatutory obviousness-type double patenting.
DECISION
We reverse the Examiner's Rejection A of claims 1, 2, 4, 6, 12, and
19-23 under§ 102.
We reverse the Examiner's Rejections B-I of claims 3, 5, 7-11, and
13-18 under§ 103.
We affirm the Examiner's provisional Rejection J of Claims 1---6 and
11-22 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
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