Ex Parte Penzias et al

Patent Trial and Appeal Board

Apr 30, 2018

14218156 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/218,156 03/18/2014
14868 7590 05/02/2018
Patent Docketing
200 Bellevue Parkway, Suite 300
Attention: Docketing
Wilmington, DE 19809
FIRST NAMED INVENTOR
Arno PENZIAS
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.
HCL60022US04 6116
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
docketing@interdigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNO PENZIAS and MATTHEW G. LIBERTY
Appeal2017-007339
Application 14/218,156
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hillcrest Laboratories, Inc. ("Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 4, 5, 9--11, 19, and
20. 2 See Appeal Br. 1. Claim 6 has been canceled. See id. at 19, Claims
App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Hillcrest Laboratories, Inc. is the applicant, as provided in 37 C.F.R.
§ 1.46, and is identified as the real party in interest. Appeal Br. 2.
2 See footnote 4, infra.
Appeal2017-007339
Application 14/218, 15 6
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to "user interfaces and
methods." Spec., p. 1, 1. 20. Claims 1 and 20 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A system comprising:
a user input device;
a display for reflecting motion and/or orientation of said
user input device;
a processor for receiving input data corresponding to said
motion and/or orientation of said user input device; and
an application configured to execute on the processor and
to receive data from said processor based on said input data
corresponding to said motion and/ or orientation of said user
input device,
wherein said data is used by the application to emulate
one of a plurality of different devices on said display, and
wherein said processor is configured to apply different
sets of movement processing equations for said plurality of
different devices such that a set of movement processing
equations for one of a plurality of different devices is applied
based on an inertia associated with said one of a plurality of
different devices.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Post by user SupremeOverlord on forum entitled Advantages and
Disadvantages for a mouse/keyboard using USB, Ars Technica Open
Forum (Oct. 20, 2001), available at https://arstechnica.com/civis/
viewtopic.php?f=l l&t=895076 (hereinafter "SupremeOverlord").
2
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Application 14/218, 15 6
John Anthony, Wireless Mouse and Keyboard, Computer Help A to Z
(Aug. 7, 2003), available at https://web.archive.org/web/
2 003 0807 07 513 2/http://computerhelpatoz.com/tech-wireless-
mouse.html (hereinafter "Anthony").
Erik Max Francis, Home> Counter-Strike> Tips, Bosskey.Net; A
Personal Guide to Online Multiplayer First Person Shooters (Oct. 2,
2003), available at https://web.archive.org/web/20031002090301/
http://www.bosskey.net/cs/tips.html (hereinafter "CS"3).
FJ de Kermadec, Apple Wireless Mouse and Keyboard Tips and
Tricks, O'Reilly Mac DevCenter (Oct. 14, 2003), available at http://
www.macdevcenter.com/pub/ a/mac/2 003 /10/14/wireless.html
(hereinafter "de Kermadec").
REJECTIONS
The following rejections are before us for review: 4
I. Claim 5 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3.
3 The Examiner and Appellant both refer to this reference as "CS." See,
e.g., Final Act. 8; Appeal Br. 4. For consistency, we likewise refer to this
reference herein as "CS."
4 We note that claims 1-5 and 7-21 are presently pending, with
claims 1, 4, 5, 9-11, 19, and 20 being subject to the rejections before us for
review, and claims 3, 17, and 18 standing objected to by the Examiner as
being dependent upon a rejected base claim, but indicated as being otherwise
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims. See Final Act. 1 (Office Action
Summary), 11 ( discussing claims containing allowable subject matter). A
rejection of claims 1, 2, 4, 5, 7-16, and 19-21 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter has been withdrawn by the
Examiner and thus is not before us for review as part of the instant appeal.
See Ans. 2; Final Act. 3-7. Thus, it is clear from the record that claims 2, 7,
8, 12-16, and 21 do not stand rejected, and therefore are not before us for
review as part of the instant appeal.
3
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Application 14/218, 15 6
II. Claims 1, 4, 5, and 20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by CS. Id. at 7-9.
III. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over CS and de Kermadec. Id. at 9-10.
IV. Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over CS and Anthony. Id. at 10.
V. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over CS and SupremeOverlord. Id. at 10-11.
ANALYSIS
Rejection I- Claim 5 as indefinite
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2173.05(e)).
Claim 5 depends from independent claim 1 and recites that "said
application is a training program for evaluating a user undergoing therapy."
Appeal Br. 18, Claims App. The Examiner determined that this language
renders the claim indefinite because "[i]t is unclear if this [language] is
intended to be a structural limitation or a statement of intended use." Final
Act. 3. According to the Examiner, "[t]here is no objective standard
provided to judge whether or not an application meets the limitation of being
a training program." Id.
Appellant argues that the language in claim 5 is not indefinite because
one of ordinary skill in the art would understand that it limits the general
4
Appeal2017-007339
Application 14/218, 15 6
application recited in claim 1 to being specifically a training program. See
Appeal Br. 5; Reply Br. 1-2. We agree with Appellant. Although we
appreciate the Examiner's position that the term "training program" is broad,
such that "anything capable of being used for training would meet the
limitations of the claim" (Final Act. 3 ), we note that it is well established
that breadth of a claim is not to be equated with indefiniteness (see In re
Miller, 441 F.2d 689,693 (CCPA 1971)). The Examiner does not
sufficiently explain why the identified claim language, when read in light of
the Specification, 5 would be unclear to one of ordinary skill in the art.
Accordingly, we do not sustain the rejection of claim 5 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Rejection II- Claims 1, 4, 5, and 20 as anticipated by CS
Independent claim 1 recites, inter alia, a system that receives data
corresponding to motion and/or orientation of a user input device, "wherein
said data is used by the application to emulate one of a plurality of different
devices on said display." Appeal Br. 18, Claims App. Independent claim 20
recites, inter alia, a method that includes a step of "emulating one of a
plurality of different devices on said display based on said application
program and the input data corresponding to said motion and/or orientation
of said user input device." Id. at 20, Claims App. Appellant argues that CS
fails to disclose that motion and/or orientation data from the input device is
5 The Specification describes that, although "the description focuse[ s]
on a gaming environment, exemplary embodiments may be equally
applicable in a training or visual acuity for physical therapy." Spec., p. 26,
11. 15-17.
5
Appeal2017-007339
Application 14/218, 15 6
used to emulate a device on the display. See id. at 13; Reply Br. 4--5. We
agree.
In rejecting claims 1 and 20, the Examiner found that CS discloses "a
user input device (keyboard and mouse connected to computer running the
application as is inherently required to run the Counter[-]Strike game
application); [and] a display device for reflecting motion and/or orientation
of said user input device ( computer display required to play the game
application)." Final Act. 8. The Examiner also found that CS discloses an
application that "receive[ s] data from said processor based on said input data
corresponding to said motion and/ or orientation of said user input device
(CS application), wherein said data is used by the application to emulate one
of a plurality of different devices on said display (guns in game)." Id.; see
also Ans. 4 (the Examiner explaining that, "[i]n CS, a player is emulating
carrying a weapon to fight other players"). According to the Examiner, the
CS application
alters the movement of the game character, which include[ s] the
looking left and right, based on the encumbrance or inertia of the
different weapons such that a player must move the mouse or
press the keys longer in order to move a heavier weapon the same
distance as a lighter weapon exactly as Appellant describes.
Ans. 4.
However, Appellant persuasively asserts that there is insufficient
evidence on the record to support the Examiner' finding that CS discloses
using movement data from the mouse input device to emulate a weapon on
the display. See Appeal Br. 13; Reply Br. 4 (asserting that "CS clearly does
not disclose that movement and/or orientation of the input device can result
in the movement and/or orientation of a device on the display"). CS
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Application 14/218, 15 6
discloses "using the mouse to navigate ... menus." CS 16; see also id. at 3
( disclosing that "having to hit the weapons category key and then the left
mouse button takes time"). CS also discloses "holding down the crouch key
while moving up or down" and "us[ing] the strafe keys to get some added
speed when moving on the ladder." Id. at 3.
Nevertheless, although CS appears to disclose the use of keyboard
keys to control player avatar movement, the Examiner does not identify, nor
do we discern, any disclosure in CS with respect to using mouse movement
data specifically to emulate the weapon's movement. Thus, the Examiner
has not established a finding supported by a preponderance of the evidence
that CS discloses, either expressly or inherently, using motion and/or
orientation data from the input device to emulate a device on the display, as
required by independent claims 1 and 20. 7
Accordingly, based on the record before us-because an anticipation
rejection requires a finding in a single reference of each and every limitation
6 We note that CS does not provide page numbers. For convenience,
we designate the first page of the reference as page 1 and number the pages
consecutively therefrom.
7 We note that any consideration of what one of ordinary skill in the art
may deem obvious regarding the use of input device motion and/or
orientation data to emulate a weapon in the display of CS is immaterial to
the anticipation rejection before us for review. We further note that the
Patent Trial and Appeal Board is a review body, rather than a place of initial
examination, and we therefore decline to make a determination of what one
of ordinary skill in the art may conclude; rather, we leave it to the Examiner
to determine the appropriateness of any further course of action based on
such a conclusion should there be further prosecution of this application.
See Ex Parte Frye, 94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential).
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Appeal2017-007339
Application 14/218, 15 6
as set forth in the claims-we do not sustain the rejection of independent
claims 1 and 20, and of dependent claims 4 and 5, as anticipated by CS.
Rejections 111-V- Claims 9, 10, 11, and 19 as unpatentable over
CS and one of de Kermadec, Anthony, and SupremeOverlord
Regarding Rejections III-V, we note that these rejections are
premised on the same purported disclosure from CS discussed above for
Rejection II, and that the Examiner relied on de Kermadec, Anthony, and
SupremeOverlord for teaching additional features, but not to cure the above-
noted deficiency of CS. See Final Act. 9-11. Consequently, we likewise do
not sustain these rejections.
DECISION
We REVERSE the Examiner's decision rejecting claim 5 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We REVERSE the Examiner's decision rejecting claims 1, 4, 5, and
20 under 35 U.S.C. § 102(b) as anticipated by CS.
We REVERSE the Examiner's decision rejecting claims 9 and 10
under 35 U.S.C. § 103(a) as being unpatentable over CS and de Kermadec.
We REVERSE the Examiner's decision rejecting claims 9 and 11
under 35 U.S.C. § 103(a) as being unpatentable over CS and Anthony.
We REVERSE the Examiner's decision rejecting claim 19 under
35 U.S.C. § 103(a) as being unpatentable over CS and SupremeOverlord.
REVERSED
8