Ex Parte Okamoto et al

Patent Trial and Appeal Board

Feb 23, 2016

12230934 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/230,934 09/08/2008
27562 7590 02/25/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Motoi Okamoto
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-723-2412 4659
EXAMINER
HU, KANG
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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 MOTOI OKAMOTO and SHIGEHIRO KASAMATSU
Appeal2013-008216
Application 12/230,9341
Technology Center 3700
Before JILL D. HILL, THOMAS F. SMEGAL, and
BRANDON J. WARNER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Motoi Okamoto and Shigehiro Kasamatsu (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner's final rejection under
35 U.S.C. § 103(a) of claims 1-9 under 35 U.S.C. 103(a) as unpatentable
over Nicolas (US 7,722,501 B2, iss. May 25, 2010) and Nashner (US
5,697,791, iss. Dec. 16, 1997). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Nintendo Co., Ltd.
Appeal Br. 3.
Appeal2013-008216
Application 12/230,934
CLAIMED SUBJECT MATTER
Claims 1 and 6-8 are independent claims. Claim 1 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A non-transitory computer readable storage medium
storing a load detecting program to be executed in a computer
of a load detecting apparatus provided with a support board
which has two or more load sensors spaced with each other, and
on which a player puts his or her foot, said load detecting
program causes said computer to execute:
detecting load values put on said support board measured
by said two or more load sensors;
calculating a ratio of said detected load values to a body
weight value of said player;
calculating a position of the center of gravity of said
detected load values; and
determining a motion performed on said support board
by said player on the basis of said ratio and said position of the
center of gravity.
ANALYSIS
Obviousness of claims 1-9 over Nicolas and Nashner
We are persuaded by Appellants' arguments that the Examiner fails to
establish a prima facie showing of obviousness in rejecting claims 1-9 over
Nicolas and Nashner. See Appeal Br. 13-21; Reply Br. 1---6.
In rejecting claim 1, the Examiner first finds that Nicolas discloses "a
device or load detecting apparatus [that] includes a digital processing unit
that is a data transmission device and data reception unit, inherent memory
for storing transmitted data, [and an] inherent processor of the digital
processing unit." Final Act. 7 (emphasis added). The Examiner then relies
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Application 12/230,934
on Nicolas for teaching "calculating a ratio of said detected load values to a
body weight value of said player," finding that Nicolas discloses "the force
placed on the block by a user weight is calculated as a ratio since the signals
transmitted to a digital processing unit are interpreted as a function of a
proportion or ratio of the force of a left or right leg on the block to the user's
total weight."2 Final Act. 7 (citing Nicolas, col. 9, 11. 48-57) (emphasis
added).
Appellants acknowledge that "[t]he device [ofNicolas] has pressure
sensitive surfaces that 'can relate to precise and pertinent information in the
context of gymnastic movements of the stepping type.'" Appeal Br. 13
(citing Nicolas, col. 6, 11. 28-57 and col. 7, 11. 45---67). However, Appellants
contend that because "Nicolas fails to disclose calculating a ratio of detected
load values to a body weight value of a player," that "Nicolas is only
estimating the weight of the user and not calculating a ratio of detected load
values to a body weight value of the player, as claimed." Id. at 15.
Furthermore, Appellants also point out that while "Nicolas detects when
impact is made to a surface to determine if the requisite stepping motion is
performed," that detection "falls far short of determining a motion based on
a calculated ratio of detected load values to a body weight value of a player."
Id. at 16. Appellants conclude that "the Examiner's reliance on Nicolas
boils down to nothing more than an incorrect assumption of the ability of
Nicolas'[s] system." Id.
The Examiner responds that Nicolas's system "discloses determining
a load per leg and a body weight," and also "discloses a feature which
2 Independent claims 6-8 recite the same or substantially same limitation.
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Application 12/230,934
requires determining a ratio of load per leg and body weight using the
aforementioned determinations." Ans. 3--4. The Examiner reasons that "the
system may 'estimate by means of the weight of the user when the user is on
the block whether said user is on one or the other of or in between said
surfaces."' Id. at 4 (citing Nicolas, col. 9, 1. 50-col. 10, 1. 1) (emphasis
added). From the foregoing, the Examiner concludes that "Nicolas uses the
determined weight of a user to calculate a ratio of leg load to weight in order
to measure 'precise and pertinent information in the content of gymnastic
movements' such as the manner of weight shift and leg placement." Id. at 5
(citing Nicolas, col. 6, 11. 44--4 7). The Examiner thus appears to be finding
that the ratio calculation is inherently, rather than explicitly, disclosed in
Nicolas.
"Inherency, however, 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) (citations omitted). "In relying upon the theory of inherency, the
examiner must provide a basis in fact and/ or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
Furthermore, inherency involves a burden-shifting framework
wherein the Examiner can shift the burden to an applicant to demonstrate
why the allegedly inherent characteristic is not necessarily present in the
prior art. MPEP § 2112(V). This is because an applicant is generally in the
best position to enter evidence pertaining to how a device actually works.
Nevertheless, before an applicant can be put to this burdensome task, the
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Application 12/230,934
Examiner must provide sufficient evidence or scientific reasoning to
establish that there is a sound basis for the Examiner's belief that an inherent
characteristic of the prior art process is that it produces the recited results.
See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (discussing the standard
for burden-shifting before the PTO); In re Cruciferous Sprout Litigation,
301F.3d1343, 1351 n.4 (Fed. Cir. 2002) (discussing the similar
applicability of inherency principles to both method and composition or
product claims).
Because the Examiner has not provided sufficient evidence or
scientific reasoning to establish that there is a sound basis for the Examiner's
belief that Nicolas inherently discloses the claimed ratio calculation, we do
not sustain the Examiner's decision rejecting claims 1-93 over Nicolas and
Hasher.
DECISION
We REVERSE the Examiner's rejection.
REVERSED
3 We note that claim 3, as currently drafted, appears to be misleading as it
contains the duplicate recitation of the phrase "in a past." See Appeal Br.
23, Claims App.
5