Ex Parte Tokutake

Patent Trial and Appeal Board

Jun 6, 2018

13588300 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/588,300 08/17/2012 Kenji TOKUTAKE
22850 7590 06/08/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
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.
389500US8 7440
EXAMINER
STONE, ROBERT M
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEN JI TO KUT AKE
Appeal2016-008060
Application 13/588,300 1
Technology Center 2600
Before ROBERT E. NAPPI, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-11 and 13-20. Claim 12 has been "objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims." Final Act. 16. Oral arguments were heard on May 22,
2018. A transcript of the hearing will be added to the record in due course.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Sony Mobile Communications Japan, Inc. as the real
party in interest. App. Br. 1.
Appeal2016-008060
Application 13/588,300
THE INVENTION
The disclosed and claimed invention is directed to "an information
processing apparatus applied to an electronic device provided with an
operable unit that detects an operation mode on the basis of changes in the
capacitance of an operable surface, such as a touch panel, for example."
Spec. 1:10-14. 2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An information processing apparatus comprising:
a sensor that detects a contactless operation of an
operation element; and
circuitry configured to
determine whether an application activated at the
information processing apparatus supports contactless
operations; and
control the application based on contactless
operations detected at the sensor when it is determined
that the application supports contactless operations.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Hullender
Kolmykov-Zotov
Perski
Lemay
US 2005/0229117 Al Oct. 13, 2005
US 2006/0267958 Al Nov. 30, 2006
US 2008/0046425 Al Feb. 21, 2008
US 2008/0055269 Al Mar. 6, 2008
2 We herein refer to the Specification filed Aug. 17, 2012 ("Spec."); Final
Office Action, mailed May 20, 2015 ("Final Act."); Advisory Action, mailed
Aug. 27, 2015 ("Adv. Act."); Appeal Brief, filed Nov. 20, 2015 ("App.
Br."); Examiner's Answer, mailed Jun. 20, 2016 ("Ans."); and, the Reply
Brief, filed Aug. 18, 2018 ("Reply Br.").
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Application 13/588,300
Bernstein
Vaisanen
Alam eh
Oda
US 2009/0309851 Al Dec. 17, 2009
US 2010/0107067 Al Apr. 29, 2010
US 2010/0295781 Al Nov. 25, 2010
US 2010/0321334 Al Dec. 23, 2010
REJECTIONS
Claims 1-11, 18, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Oda in view Kolmykov-Zotov. Final
Act. 3-9.
Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Oda in view of Kolmykov-Zotov and Bernstein. Final
Act. 9-10.
Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Oda in view of Kolmykov-Zotov, Bernstein, and
Vaisanen. Final Act. 10-12.
Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Oda in view of Kolmykov-Zotov and Lemay. Final Act.
12-13.
Claim 16 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Oda in view of Kolmykov-Zotov and Alameh. Final Act.
13-14.
Claim 17 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Oda in view of Kolmykov-Zotov and Perski. Final Act.
14--15.
Claim 20 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Oda in view of Kolmykov-Zotov and Hullender. Final
Act. 15-16.
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Appeal2016-008060
Application 13/588,300
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant's arguments regarding claims 1-11 and 12-
20.
Claims 1-14 and 16--20
Appellant argues Kolmykov-Zotov does not "teach or suggest a
configuration that includes determining whether an application activated at
the information processing apparatus supports contactless operations and
controlling the application based on contactless operations detected at the
sensor when it is determined that the application supports contactless
operations," as recited in claim 1. See App. Br. 5---6; Reply Br. 1-3.
According to Appellant, Komykov-Zotov is directed to an application
determining a type of input device to determine the type of functionality to
provide to the user. Id. at 5---6; Reply Br. 1-3 (discussing Komykov-Zotov.
i-fi-1 84, 92). However, Appellant contends, "controlling the input
functionality provided by an application based on a type of input device
provided to a user is not analogous to circuitry determining whether the
application supports contactless operations." App. Br. 5 (emphasis omitted).
The Examiner finds Komykov-Zotov---combined with Oda's teaching
of contactless inputs-teaches the disputed limitations. Final Act. 3--4
( citing Komykov-Zotov i-fi-1 84, 92). The Examiner finds Komykov-Zotov
"teaches that an operating system or application may provide for different
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Application 13/588,300
types of input devices and methods where the type of touch device is
exposed to the developer via a device kind property accessible by a module
and forwarded to the operating system or application." Adv. Act. 2. The
Examiner further finds "the circuitry determines what types of input devices
are connected and exposed to the application where the type of input
functionality (including hover) is determined in accordance with the
connected device" and that "the circuitry clearly controls whether the
functionality is available and therefore 'determines' which operations the
application is able to support (i.e. if the device kind property does not
indicate ability to detect hovers then the application will not provide hover
input)." Id.; see also Ans. 2.
Our reviewing court guides that "the question under 3 5 USC § 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made." Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807---08
(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Moreover, "[ e ]very patent application and reference relies to some extent
upon knowledge of persons skilled in the art to complement that [which is]
disclosed .... " In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re
Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons "must be
presumed to know something" about the art "apart from what the references
disclose." In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Additionally, the
skilled artisan is "a person of ordinary creativity, not an automaton." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Furthermore, there is no
requirement in an obviousness analysis for the prior art to "contain a
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Application 13/588,300
description of the subject matter of the appealed claim in ipsissimis verb is."
In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Komykov-Zotov teaches determining what type of input device is
connected to a computing system, such as the touch-enabled input discussed
in the reference or the contactless system taught by Oda. Komykov-Zotov
i-f 84. Accordingly, "an operating ... may determine that it wants to allow
touch input based on the type of input device available [to it]." Id.; see also
id. i-f 92 (a module will forward the type of input device to an operating
system or application). Komykov-Zotov further teaches that "[i]f the device
enables both stylus input using an active digitizer and touch input using a
passive stylus or finger, then the application may provide both sets of
functionality to the user." Id. i-f 92. Based on these teachings, we agree with
the Examiner that Komykov-Zotov provides a broad suggestion to determine
whether or not a specific type of input is available. A person of ordinary
skill in the art would apply that teaching to determine if an application could
use a certain type of input device, such as Oda' s contactless input, and if so,
to use it. Appellant has not argued that applying that suggestion would have
been "uniquely challenging or difficult for one of ordinary skill in the art."
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418). Therefore, we are not persuaded
that the Examiner erred in rejecting claim 1 as obvious over the prior art.
See KSR, 550 U.S. at 416 ("The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results."), 417 ("If a person of ordinary skill in the art can
implement a predictable variation, § 103 likely bars its patentability.").
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Application 13/588,300
Accordingly, we sustain the Examiner's rejection of claim 1, along
with the rejection of claims 18 and 19, which are argued on the same
grounds, and dependent claims 2-10, which are not separately argued.
With respect to dependent claims 11-14, 16, 17, and 20, Appellant
merely contends that because the additional references used in the rejections
of these claims do not cure the shortcomings of the other references applied
against claim 1, the Examiner failed to make a prima facie case of
obviousness for these claims. Because we determine that the rejection of
claim 1 is not erroneous for the reasons discussed above, we sustain the
rejections of these claims.
Claim 15
Appellant argues the Examiner erred in finding Lemay teaches the
additional limitations recited in claim 15. App. Br. 7-8. According to
Appellant, Lemay describes a messaging app which is navigated by user
contact, not a contactless operation as recited in claim 15. Id.
The Examiner finds Oda teaches "contactless operation detected [at]
the sensor" and Lemay teaches an electronic messaging app. Final Act. 12-
13. The Examiner further finds "it would have been obvious for a person of
ordinary skill in the art to have allowed the gesture operation to display and
scroll electronic messages as taught by Lemay in the touch system of Oda as
modified by Zolmykov-Zotov." Id. at 13; see also Ans. 4 (The "Examiner
notes that Lemay was not cited as disclosing contactless operations and
instead was included to teach the specifics of controlling of an electronic
messaging application with different input gestures for displaying and
scrolling [0176,0185] since Oda [0452,0460-0466] and Zolmykov-Zotov
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Application 13/588,300
[0084,0092] already disclosed the use of contactless operations to control a
user interface.").
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellant's argument addresses Lemay
individually and does not address Oda's teaching of a contactless operation,
we are not persuaded that the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claim 15.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-11 and 12-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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