Ex Parte Ohta

Patent Trial and Appeal Board

Feb 8, 2016

11521386 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111521,386 09/15/2006
27562 7590 02/10/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Keizo Ohta
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.
DSG-723-1987 9674
EXAMINER
MARINELLI, PATRICK
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
02/10/2016 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
Exparte KEIZO OHTA
Appeal2014-002979
Application 11/521,386
Technology Center 2600
Before, ST. JOHN COURTENAY, III, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejections of claims 1, 2, 5-14, 17-25, and 29-33, which
are all the claims pending in the present patent application. App. Br. 30-46.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The present patent application relates to a subject selecting apparatus
for selecting from a plurality of selection subjects displayed on a display
1 Appellant represents Nintendo Co., Ltd is the real party in interest. App.
Br. 3.
Appeal2014-002979
Application 11/521,386
device using a pointing device, and a storage medium storing a subject
selecting program which is executed by a computer of the subject selecting
apparatus. Spec. i-f 1.
Claim 1 is illustrative (lettering and emphases added):
1. A non-transitory computer readable storage
medium storing a subject selecting program which causes
a computer of an apparatus to perform a process of
selecting one from a plurality of selection subjects
displayed on a display screen using a pointing device for
outputting coordinate information by directly designating
coordinates on the display screen, [L 1] the pointing
device being configured to remotely designate the
coordinates on the display screen without a player's
button operation, and an input device for outputting,
depending on a player's button operation, an operation
signal indicating an operation button that has been
operated in the player's button operation,
the program causing the computer to execute:
displaying, on the display screen, a plurality of
selection subjects which are divided into groups under a
predetermined condition;
obtaining coordinate information indicating the
position output from the pointing device;
[L2] provisionally selecting one from the groups
into which the plurality of selection subjects are divided,
based on the position output from the pointing device;
[L3] assigning operation buttons that are different
from each other to selection subjects, respectively, the
selection subjects belonging to the one group that has
been provisionally selected;
obtaining an operation signal output from the input
device;
when the operation signal indicating an operation
button that has been operated is obtained in a state where
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Application 11/521,386
the one group has been provisionally selected, selecting
from selection subjects belonging to the provisionally
selected group, one selection subject having the operation
button assigned thereto that is the operation button that
has been indicated as operated by the operation signal;
and
performing a process, depending on the selected
selection subject, wherein
an appearance of the selection subjects is changed
to indicate a relationship between the assigned operation
button and the respective selection subject,
in provisionally selecting one from selection
subjects belonging to the selected group, one selection
subject displayed in a shape or at a position mimicking
an installed position of an input section of the input
device which outputs the obtained operation signal is
selected from the selection subjects belonging to the
selected group, and
provisionally selecting one from the groups into
which the plurality of selection subjects are divided
includes changing selection subjects belonging to the
selected group into shapes or positions mimicking
installed positions of input sections of the input device
when a group is selected, and displaying the resultant
selection subjects on the display screen.
The Rejections
1. Claims 1, 2, 5-14, 17-25, and 29-33 stand rejected under 35
U.S.C. § 112 first paragraph, as failing to comply with the written
description requirement.
2. Claims 1, 2, 6-14, 18-22, 25, and 32 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Scott (US 5,543,818; iss. Aug. 6,
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Application 11/521,386
1996), LinksBoks Release .99 'Marmitopter Edition' released on 4/17/2005
("LinksBoks")2, and Liberty, (US 7,158,118 B2; iss. Jan. 2, 2007).
3. Claims 1, 2, 6-14, 18-22, 25, and 32 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Scott, Krohn (US 6,593,913 Bl; iss.
July 15, 2003) and Liberty.
4. Claims 5, 17, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Scott, LinksBoks, Liberty, and Etheredge (US
5,990,890; iss. Nov. 23, 1999).
5. Claims 5, 17, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Scott, Krohn, Liberty, and Etheredge.
6. Claims 29-31 and 33 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Scott and Liberty.
ANALYSIS
Rejection No. 1: Written Description
The Examiner finds limitation L 1 of claim 1, which is also recited in
each of independent claims 13, 25, and 29-33, is a negative limitation
requiring "explicit support in the original specification." Final Act. 3.
Appellant contends the Specification adequately discloses claim 1.
App. Br. 21-22; Reply Br. 1-3. In support of this contention, Appellant
directs us to disclosure in the Specification that:
operations corresponding to a motion, an attitude, a position
and the like of the controller 7 can be performed by processing
data output from the controller 7 in a process in the game
apparatus 3, resulting in an intuitive operation input which is
2 http://www.xbox-hq.com/html/modules.php?name=Xbox_Homebrew
&op=view&gid=108 (last visited 6/16/2011)
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Application 11/521,386
different from pushing down of an operation button or an
operation key.
Ans. 22 (citing, Spec. i-f 69) (emphasis added).
The Examiner responds that none of the examples in the cited portion
of the Specification "explicitly excludes the possibility of it being without a
player's button operation." Ans. 4.
We agree with the Examiner that limitation L 1 constitutes a negative
limitation. In re Schechter, 205 F.2d 185, 186 (CCPA 1953) (finding the
limitation "R is an alkenyl radical other than 2-butenyl and 2,4-pentadienyl"
to be a negative limitation). We disagree, however, that limitation LI lacks
adequate support in the Specification. Contrary to the Examiner's findings,
the portion of the Specification cited by Appellant discloses input via
motion, attitude, and position as "different from pushing down of an 15
operation button or an operation key." Spec. i-f 69. Absent from the
Examiner's findings is sufficient evidence that one of ordinary skill in the art
could not reasonably conclude, given the original disclosure, that Appellant
had possession of the claimed pointing device being configured to remotely
designate the coordinates on the display screen without a player's button
operation. See Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306,
1319, (Fed. Cir. 2003); Lockwoodv. Amer. Airlines, Inc., 107F.3d1565,
1572, (Fed. Cir. 1997).
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 13, 25, and 29-33, nor their dependent claims 2, 5-12,
14, and 17-24.
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Application 11/521,386
Rejection No. 2: Obviousness
In rejecting independent claim 1 as unpatentable over the combination
of Scott, LinksBoks, and Liberty, the Examiner relies on Scott as teaching or
suggesting limitations L2 and L3 of claim 1. Final Act. 5. Independent
claims 13, 25, and 32 stand rejected over the same combination of art, recite
similar limitations, and are mapped by the Examiner to Scott for those
limitations in the same manner as in claim 1. Id. 14, 22, and 27-28.
Appellant contends the Examiner errs because "Scott selects the
groups by using the navigation keys on the controller and [therefore] is not
pointing to a group using the pointing device." App. Br. 24; Reply Br. 4.
The Examiner responds, "the claim does not recite 'pointing to a group using
the pointing device' and therefore because the claim does not recite that
limitation, the examiner believes that Scott teaches the cited claim
limitations." Ans. 5.
We disagree with the Examiner. Limitation L2 requires selecting one
of the groups of subjects "based on the position output from the pointing
device." As earlier recited in limitation L 1, the pointing device outputs
position information designated "without a player's button operation."
Reading these limitations together, claim 1 requires selecting one of the
groups of subjects based on the position output designated without a player's
button operation. Thus, we agree with Appellant that Scott's selection of a
group using the navigation keys does not meet the claimed selection based
on position output.
Accordingly, we do not sustain the Examiner's rejections of
independent claims 1, 13, 25, and 32, nor their dependent claims 2, 6-12, 14,
and 18-22.
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Application 11/521,386
Rejection No. 3: Obviousness
In rejecting independent claim 1 as unpatentable over the combination
of Scott, Krohn, and Liberty, the Examiner relies on Scott as teaching or
suggesting limitations L2 and L3 of claim 1. Final Act. 41. Independent
claims 13, 25, and 32 stand rejected over the same combination of art, recite
similar limitations, and are mapped by the Examiner to Scott for those
limitations in the same manner as in claim 1. Id. 50, 56-58, and 61---63.
The Examiner makes no findings in Krohn to remedy the deficiencies
of Scott discussed above in the context of Rejection No. 2. Final Act. 43-
44; Ans. 4--5. Accordingly, for the same reasons discussed above, we do not
sustain the Examiner's rejections of independent claims 1, 13, 25, and 32,
nor their dependent claims 2, 6-12, 14, and 18-22.
Rejection Nos. 4 and 5: Obviousness
In rejecting dependent claims 5, 17, 23, and 24 as unpatentable over
the combination of Scott, LinksBoks, Liberty, and Etheredge, the Examiner
makes no findings in Etheredge to remedy the deficiencies of Scott
discussed above in the context of Rejection No. 2. Final Act. 32-38.
Similarly, in rejecting dependent claims 5, 17, 23, and 24 as
unpatentable over the combination of Scott, Krohn, Liberty, and Etheredge,
the Examiner makes no findings in Etheredge to remedy the deficiencies of
Scott discussed above in the context of Rejection No. 2. Id. 66-74.
Accordingly, for the same reasons discussed above, we do not sustain
the Examiner's rejections of dependent claims 5, 17, 23, and 24.
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Application 11/521,386
Rejection No. 6: Obviousness
In rejecting independent claims 29-31 and 33, along with dependent
claim 28, as unpatentable over the combination of Scott and Liberty, the
Examiner relies on Scott as teaching or suggesting limitations similar to
limitations L2 and L3 of claim 1. Final Act. 7 4--86.
The Examiner makes no findings in the context of this rejection to
remedy the deficiencies of Scott discussed above in the context of Rejection
No. 2. Id. Accordingly, for the same reasons discussed above, we do not
sustain the Examiner's rejection of independent claims 29-31 and 33, nor
dependent claim 28.
DECISION
We reverse the Examiner's decision to reject claims 1, 2, 5-14, 17-
25, and 29-33.
REVERSED
Klh
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