Ex Parte Ohnishi

Patent Trial and Appeal Board

Sep 26, 2016

12255969 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/255,969 10/22/2008
27562 7590 09/28/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Naonori OHNISHI
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.
RYM-723-2444 4321
EXAMINER
AMIN, JW ALANT B
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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 NAONORI OHNISHI
Appeal2015-004456
Application 12/255,969 1
Technology Center 2600
Before JAMES R. HUGHES, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 6-11, 13-22, and 24. Claims 3-
5, 12, 23, and 25 were objected to by the Examiner. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Nintendo Co., Ltd.
App. Br. 3.
Appeal2015-004456
Application 12/255,969
THE CLAIMED fNVENTION
Appellant's claimed invention "relates to a storage medium storing an
image processing program for implementing controlled image display
according to a coordinate input through a user's operation." Spec. 1, 11. 9--
11. Claim 1 is illustrative of the subject matter of the appeal and is
reproduced below.
1. A non-transitory storage medium storing an image
processing program executed by a computer interacting with an
input portion and a display portion, said image processing
program causing said computer to perform features comprising:
displaying an object on said display portion;
detecting a series of coordinate values input through an
operation of said input portion; and
changing an orientation of said object displayed on said
display portion in accordance with variation in said series of
coordinate values in a first direction and changing a size of said
object in accordance with variation in said series of coordinate
values in a second direction.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1, 2, 6, 7, 9-11, 13, 14, 16-22,
and 24 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Tetsuya et al. (JP 2005/277891; published Oct. 6, 2005) (hereinafter
"Tetsuya") and Crockett et al. (US 2008/0044065 Al; published Feb. 21,
2008) (hereinafter "Crockett").
(2) The Examiner rejected claims 8 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Tetsuya, Crockett,
and Maxted (US 6,340,967 B 1; issued Jan. 22, 2002).
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Application 12/255,969
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellant.
We disagree with Appellant's arguments, and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in (1) the March 28, 2014 Final Office Action (Final Act. 2-14)
and (2) the January 7, 2015 Examiner's Answer (Ans. 2-12). We highlight
and address, however, specific findings and arguments below for emphasis.
(1) Input through an operation of said input portion
Appellant argues the combination of Tetsuya and Crockett, and
Tetsuya in particular, fails to teach or suggest (i) "detecting a series of
coordinate values input through an operation of said input portion" and
(ii) "changing an orientation of said object displayed on said display portion
in accordance with variation in said series of coordinate values in a first
direction and changing a size of said object in accordance with variation in
said series of coordinate values in a second direction," as recited in claim 1
- Appellant also contends that these limitations appear in similar forms in
claims 9, 10, and 21. App. Br. 10. Focusing first on claim language,
Appellant contends "said input portion" requires having a "single input
device" for changing size and orientation of an object based on the device's
movement because (i) the claim language refers to "an" and "the" input
portion and (ii) a single device is needed to achieve the advantages of the
invention. See App. Br. 5-7 (citing Spec. 1, 1. 17-2, 1. 6) (arguing
"[ c ]hanging the size and orientation of an object based on variation of
coordinate values of an input device is advantageous in that only a single
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Application 12/255,969
input device is required to perform two operations"), 11-12; Reply Br. 2.
Appellant then argues the combination, and Tetsuya in particular, teaches
having "two input devices to perform a change in rotation of an image object
and a change in the size of the image object." App. Br. 10-12 (citing
Tetsuya i-fi-165, 118-119; Fig. 12) (emphasis added).
The Examiner finds the combination, and Tetsuya in particular,
teaches this disputed limitation. See Final Act. 2--4; Ans. 5-7 (citing
Tetsuya i-fi-158, 65, 105, 118-119; Fig. 12) (teaching having input devices
perform a change in rotation and a change in the size of an image object).
As to the disputed claim language meaning, the Examiner finds "the input
portion" is not limited to a single input device, as Appellant argues. Ans. 5.
The Examiner further finds Appellant's Specification also does not dictate
such a narrow construction for "the input portion." See id. at 3 (citing
Spec. 16, 11. 1-3 (finding that the Specification describes the input portion as
comprising a touch panel 13 and buttons 14A to 14K).
We agree with the Examiner and adopt the Examiner's findings as our
own. We find "an" and "the" input portion claim terms not to be limited to a
single input device. Rather, in accordance with well-established Federal
Circuit precedent, "an" and "the" input portion means one or more input
portions. See OJ Communique Lab., Inc. v. LogMein, Inc., 687 F.3d 1292,
1297 (Fed. Cir. 2012) (quoting TiVo, Inc. v. EchoStar Comm. Corp., 516
F.3d 1290, 1303 (Fed. Cir. 2008) ("As a general rule, the words 'a' or 'an' in
a patent claim carry the meaning of 'one or more."')); see also id. (quoting
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir.
2008) ("The subsequent use of definite articles 'the' or 'said' in a claim to
refer back to the same claim term does not change the general plural rule,
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Application 12/255,969
but simply reinvokes that non-singular meaning.")). Furthermore, "[t]he
exceptions to this rule are extremely limited: a patentee must evince a clear
intent to limit 'a' or 'an' to 'one."' Id. (quoting Baldwin, 512 F.3d at 1342).
Appellant has not evinced a clear intent to limit "a" I "the" input portion to a
single input device. See, e.g., Spec. 16, 11. 1-3 (describing the input portion
as comprising a touch panel 13 and buttons 14A to 14K). Additionally, we
are unpersuaded that a single device is needed to achieve the advantages of
the invention. See, e.g., id.; cf SuperGuide Corp. v. DirecTV Enter., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) (finding a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment).
Our above reasoning and findings also apply to these same arguments
Appellant makes with respect to claim 16.
(2) Crockett's teachings
Appellant argues the combination of Tetsuya and Crockett, and
Crockett in particular, fails to teach or suggest (i) "detecting a series of
coordinate values input through an operation of said input portion" and
(ii) "changing an orientation of said object displayed on said display portion
in accordance with variation in said series of coordinate values in a first
direction and changing a size of said object in accordance with variation in
said series of coordinate values in a second direction," as recited in claim 1.
App. Br. 12-13; Reply Br. 3. Specifically, Appellant argues Crockett does
not teach or suggest "changing the size and/or orientation of the signature
using the series ofx-y coordinate pairs[, nor] the orientation of the signature
(i.e., 'object') based on a variation of the x-y coordinate pairs in a first
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Application 12/255,969
direction and change the size based on a variation in a second direction."
App. Br. 13 (citing Crockett i-f 8).
The Examiner finds that the combination, and Tetsuya in particular,
teaches or suggests these disputed limitations. Ans. 7-8; see also Final
Act. 2--4; Ans. 5-7 (citing Tetsuya i-fi-158, 65, 105, 118-119; Fig. 12)
(teaching input devices rotate and re-size an image object). As to Crockett,
the Examiner finds it teaches detecting a series of coordinate values (series
of x-y coordinate pairs) input through an operation of an input portion (e.g.,
user operating a stylus). Ans. 7-8 (citing Crockett i-f 8). The Examiner then
finds that the combination of Tetsuya and Crockett teaches or suggests these
disputed limitations.
We agree with the Examiner's findings and adopt them as our own.
Appellant's arguments amount to a piecemeal attack on Crockett, despite the
Examiner relying on the combined teachings of Crockett and Tetsuya. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.").
(3) Combining Tetsuya and Crockett
Appellant argues "it would not have been obvious to modify Tetsuya
with Crocket to change the size and orientation of an object based on
detected coordinate values in first and second directions." App. Br. 13-14.
Appellant also argues that such a modification would change the principle of
Tetsuya's operation and render it unsatisfactory for its intended purpose. Id.
at 14. Specifically, Appellant argues Tetsuya teaches improving ease of use
by having each separate touch pen assigned a separate function, which is
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contrary to having two different functions assigned to Tetsuya's input device
(i.e., a single input device). Id. (citing Tetsuya i-f 155, Fig. 14); Reply Br. 4--
5 (arguing "the modification would inherently reduce Tetsuya's system to
using a single input device").
The Examiner finds "it would have been obvious to one of ordinary
skill in the art ... to apply Crockett's knowledge into the system of Tetsuya
because such a system can generate stroke data from the detected series of
stylus input values." Final Act. 4 (citing Crockett i-f 8). As to the
combination being unsatisfactory for its intended use or having a changed
principle, the Examiner finds such arguments moot because they are
incorrectly premised on the input portion being limited to a single input
device. Ans. 8-9.
We find the Examiner provides "articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Further, we agree that
Appellant's arguments regarding a changed principle and unsatisfactory
intended use are premised on the input portion being limited to a single input
device, and thus, we also find these arguments unpersuasive.
CONCLUSION
Based on our above findings and reasoning, we sustain the rejections
of claims 1, 9, 10, 16, and 21, as well as the remaining claims on appeal for
which Appellant did not provide separate arguments for patentability.
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Application 12/255,969
DECISION
We affirm the Examiner's rejections of claims 1, 2, 6-11, 13-22, and
24.
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 )(iv).
AFFIRMED
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