Ex Parte OHKI et alDownload PDFPatent Trial and Appeal BoardJun 23, 201613190854 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/190,854 07/26/2011 Y oshihito OHKI 22850 7590 06/27/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 380085US8 2959 EXAMINER TAYLOR JR, DUANE N ART UNIT PAPER NUMBER 2626 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIHITO OHKI, YUSUKE MIY AZA WA, and IKUO YAMANO Appeal2014-008268 Application 13/190,854 Technology Center 2600 Before MURRIEL E. CRAWFORD, ROMULO H. DELMENDO, and ROBERT E. NAPPI, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1, 3 through 9, 14, 16 through 18, and 20. Claims 2, 10 through 13, 15, and 19 are canceled. We affirm-in-part. INVENTION Appellants' invention relates to an information processing apparatus including: a detection unit for detecting pressure applied by user input performed on a touch screen; a determination unit for determining which of two or more input states the user input belongs to, in accordance with the Appeal2014-008268 Application 13/190,854 pressure detected by the detection unit. See Abstract. Claim 1 is illustrative of the invention and reproduced below: 1. An information processing apparatus comprising: circuitry configured to detect pressure applied by user input performed on a touch screen; determine which of two or more input states the user input belongs to by comparing the detected pressure with a threshold value; and enable or disable a limitation imposed on operation with a user interface displayed on the touch screen, in accordance with the determined state of the user input, wherein when the pressure is determined to be more than the threshold value, the circuitry determines that the user input belongs to a first input state, and thereafter, until a predetermined time lapses and even when the pressure is determined to be less than the threshold value, the circuitry determines that a subsequent user input also belongs to the first input state, and when the predetermined time lapses the circuitry determines that a subsequent user input belongs to a second input state. REJECTION AT ISSUE The Examiner has rejected claims 1, 3 through 9, 14, 16 through 18, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Rekimoto (US 2006/0284858 Al; Dec. 21, 2006), and Anson (US 7,629,966 B2; Dec. 8, 2009). Answer 3-7. 1 1 Throughout this Opinion, we refer to the Appeal Brief (filed March 6, 2014), Reply Brief (filed July 2, 2014), and the Examiner's Answer (mailed May 2, 2014). 2 Appeal2014-008268 Application 13/190,854 ANALYSIS Appellants argue the rejection of independent claims 1, 14 and 20 is reversible error as the combination of the references do not teach or suggest the limitation directed to determining that the applied pressure is more than a threshold value and that an input belongs to a first state and thereafter until a predetermined time lapses, even if the pressure is determined to be less than the threshold state and when the time lapse the circuitry determines that subsequent input belongs to a second input state as recited in each of the independent claims. App. Br. 5---6. Independent claim 1 is directed to an apparatus (a device), independent claim 14 is directed to a non-transitory computer readable medium (a manufacture) and independent claim 20 is directed to a method. Thus, the device and manufacture claims require circuitry and a programmed non-transitory computer-readable medium, respectively, that is either configured to determine or, when executed, determines that the input belongs to a first input state for a predetermined time when the pressure is greater than a threshold, and when the time lapses subsequent inputs are determined to be in a second state. For the reasons stated below, however, we do not consider this to be a requirement of the method claim. Each of the independent claims recites a limitation reciting when the pressure is determined to be more than a threshold value. The pressure on the touch screen cannot simultaneously be both more than and less than or equal to the threshold value, as the conditions are mutually exclusive. Based 3 Appeal2014-008268 Application 13/190,854 upon the broadest reasonable interpretation, the method of claim 20 ends when the pressure is determined to not be more than a threshold value. 2 The Examiner has found, and Appellants have not contested, that the combination of Rekimoto and Anson teach the other limitations of claim 20. Ans. 3--4. Thus, Appellants' arguments have not persuaded us the Examiner erred in rejecting independent claim 20. We reach a different conclusion, however, with respect to device and manufacture claims 1, 3 through 9, 14, and 16 through 18. The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure that is configured to perform the function should the condition occur. This interpretation of the system or programmed medium claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed. Unlike claim 20, which is written in a manner that does not require all of the steps to be performed should the condition precedent not be met, independent claims 1, and 14 are limited to the structure configured to perform or is capable of performing all the recited functions. In other words, in this case, the device and manufacture of claims 1, and 14 are narrower in scope than 2 The Board previously has construed similar method steps in this same manner. See, e.g., Ex parte Fleming, Appeal 2014-002849, 2014 WL 7146104 (PTAB Dec. 12, 2014) (expanded panel decision on rehearing), Ex parte Urbanet, Appeal 2011-002606, 2012 WL 4460637 (PTAB Sept. 19, 2012), and Ex parte Katz, Appeal 2010-006083, 2011 WL 514314 (BP AI Jan. 27, 2011). 4 Appeal2014-008268 Application 13/190,854 the method of claim 20. Thus, in order to reject a claim reciting structure that performs a function tied to a condition precedent, the Examiner must cite prior art that discloses or renders obvious such structure. The Examiner relies upon Arson to teach the limitation directed to determining that the applied pressure is more than a threshold value and that an input belongs to a first state and thereafter until a predetermined time lapses, even if the pressure is determined to be less than the threshold state. Ans. 14 (citing Arson figures 22-25, and columns 15-16). We have reviewed the cited portions of Arson and while it teaches determining if a touch pressure rises above a threshold a within a predetermined time period, we do not find that the cited sections of Arson teach determining that an input belongs to a first input state for a predetermined time and a subsequent input belongs to a second state as claimed. Accordingly, we do not sustain the Examiner's rejection of independent claims 1, 14 and the claims which depend thereupon. DECISION The decision of the Examiner to reject claims 1, 3 through 9, 14, 16 through 18, and 20 is affirmed in part. As our rationale for sustaining claim 20 differs from that presented by the Examiner, we designate this as a new ground of rejection. This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). This section provides that "[a] new ground of rejection ... shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 5 Appeal2014-008268 Application 13/190,854 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 6 Copy with citationCopy as parenthetical citation