Satoshi Kira et al.

Patent Trials and Appeals Board

Oct 31, 2019

14078855 - (R) (P.T.A.B. Oct. 31, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/078,855 11/13/2013 Satoshi KIRA AC-723-3883 7650
27562 7590 10/31/2019
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ABAZA, AYMAN A
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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 SATOSHI KIRA, AKIHIRO UMEHARA
and TOSHIAKI SUZUKI
________________

Appeal 2018-004613
Application 14/078,855
Technology Center 2400
________________

Before: JENNIFER S. BISK, JUSTIN BUSCH, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant1 filed a paper under 37 C.F.R. § 41.52 requesting
reconsideration of our July 23, 2019, Decision (“Dec.”) in which we entered
a new ground of rejection for claims 1–10, 12–15, and 17–21 under
35 U.S.C. § 112(a) for lacking written description of the invention. Req.
Reh’g 1–5. Appellant also requests reconsideration of our Decision
affirming dependent claim 19. Id. at 6–7.
For the reasons stated below, however, we deny the request to modify
our Decision.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Nintendo Co., Ltd. is the real
party in interest. Appeal Br. 3.
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APPLICABLE REQUEST FOR REHEARING RULES
Appellant “may file a single request for rehearing within two months
of the date of the original decision of the Board.” 37 C.F.R. § 41.52(a)(1).
“Arguments not raised, and Evidence not previously relied upon . . . are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4).” Id. Permitted new arguments are limited to: (a) new
arguments based upon a recent relevant decision of either the Board or a
Federal Court; (b) new arguments responding to a new ground of rejection
designated pursuant to § 41.50(b); or (c) new arguments that the Board’s
decision contains an undesignated new ground of rejection. See
37 C.F.R. § 41.52(a)(2)–(4).
I. Appellant’s Argument and Our Analysis Pertaining To the New
Grounds of Rejection
Appellant argues a person having ordinary skill in the art at the time
of the invention (“PHOSITA”) would have understood that to track
something is “to observe or plot the moving path of (something, such as a
spacecraft or missile) often instrumentally” which is what paragraph 56,
Figure 6, and the remainder of the Specification support, and the Decision
overlooks. Req. Reh’g 3–5 (citing https://www.merriam-
webster.com/dictionary/track, retrieved Sept. 9, 2019). In addition,
Appellant argues paragraph 56 shows a current point being moved and path
point information is stored as a result of that movement and Figure 6 shows
a path that goes from starting point Ps to end point Pg. Req. Reh’g 4–5. We
disagree with Appellant.
As an initial matter, we note Appellant provides us a definition of
“track.” For purposes of this rehearing Decision, we adopt Appellant’s
definition of “track.” Moreover, claim 1 states:
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track a target point that is moved, based on operation(s)
performed by a user, over a map displayed on a display screen
of the transmission-side apparatus, the target point being along a
path from a first position of the map to a second position of the
map.
Emphases added. Appellant refers to two sentences in paragraph 56 that
state: “path point information on the current point (the starting point PS) at
the time when the storage start instruction is performed is stored” and
“[t]hen, path point information on a point that becomes a current point as a
result of the current point (target point) being moved by a moving operation
performed by the user, is stored.” Appellant also refers to Figure 6 to
support track, which we reproduce below.

Figure 6 shows a path, denoted by the dotted line, between starting point Ps
and end point Pg. While the two sentences in paragraph 56 and Figure 6
may support “track” in a vacuum, these sentences do not provide sufficient
written description support to show possession of the limitation “track a
target point that is moved . . . over a map displayed on a display screen . . .
the target point being along a path from a first position of the map to a
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second position of the map” recited in claim 1. In particular, Appellant’s
Specification is broad and arguably suggests at least two possible
interpretations: (A) generating a predetermined path; and (B) generating a
path in a post hoc manner. Appellant argues the Specification also supports
the recited limitation: (C) track a target point that is moved over a map
displayed on a display screen, the target point being along a path from a first
position of the map to a second position of the map. We discuss these
interpretations in turn.
A. Generating a Predetermined Path
Paragraph 69 of the Specification states “the transmission-side
apparatus 2 may select a starting point, points at intersections, and an end
point on a path as storage targets” (emphasis added), which suggests
generating a predetermined path––i.e., before any target point is moved––
similar to the path drawn in Figure 6 between starting point Ps and end point
Pg. Spec. ¶ 69. In addition, paragraph 56, Figure 6, and the remainder of
the Specification are broad enough that a PHOSITA could read the
Specification and reasonably ascertain that the path from starting point Ps to
end point Pg is a predetermined path. A PHOSITA reading the Specification
ascertaining this predetermined path (i.e., before any target point is moved)
scenario would recognize this fails to support the limitation “track a target
point that is moved . . . over a map displayed on a display screen . . . the
target point being along a path from a first position of the map to a second
position of the map” (emphases added) recited in claim 1. Moreover,
drawing a predetermined path before a point is moved is inconsistent with a
target point “being along a path” because the target point may not even be
along the path yet.
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B. Generating a path in a post hoc Manner
Another interpretation of paragraph 56, Figure 6, and the remainder of
the Specification a PHOSITA could take is generating the path from starting
point Ps to end point Pg in a post hoc manner––i.e., after a target point has
completed its journey from starting point Ps to end point Pg. A PHOSITA
reading the Specification ascertaining this post hoc path generation would
recognize this fails to support the limitation “track a target point that is
moved . . . over a map displayed on a display screen . . . the target point
being along a path from a first position of the map to a second position of
the map” (emphasis added) recited in claim 1. Drawing a post hoc path after
a target point has completed its journey does not comport with “being along
a path” because the target point may not even be along the path anymore
since completing its journey.
C. Generating a path According to Appellant’s Interpretation
Although paragraph 56, Figure 6, and the remainder of the
Specification do not exclude the ability to track a target point that is moved
over a map displayed on a display screen, the target point being along a path
from a first position of the map to a second position of the map, we disagree
with Appellant that the Specification provides written description support for
this embodiment. In other words, Appellant has not identified anything in
the written description, nor do we see anything, demonstrating the inventors
were in possession of tracking the target point being along a path. In
particular, neither the figures nor the written description depict or describe
displaying a map with a partially completed path along which a target point
currently is positioned. As noted above, Figure 6 merely depicts a complete
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path without identifying a location of a target point “being along [the] path.”
Nor do we see a description of displaying such a partially completed path.
D. We Discern no Error in our Finding that Appellant’s Specification
Lacks Written Description Support for the Tracking Step
Although the Specification is broad enough to arguably include
various interpretations, without articulating them, as discussed supra in
§§ I.A., I.B., and I.C., this demonstrates the written description may render
obvious the limitation “track a target point that is moved . . . over a map
displayed on a display screen . . . the target point being along a path from a
first position of the map to a second position of the map” recited in claim 1.
However, it is well settled that a description that merely renders the
invention obvious does not satisfy the written description requirement. See
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(en banc). As such, we discern no error in our finding that Appellant lacked
possession of the limitation “track a target point that is moved . . . over a
map displayed on a display screen . . . the target point being along a path
from a first position of the map to a second position of the map” recited in
claim 1 at the time of filing the application. Dec. 16–17.
Accordingly, we are still of the view that claims 1–10, 12–15, and 17–
21 lack written description under 35 U.S.C. § 112(a) for the reasons stated
above and in our Decision.
II. Dependent Claim 19
A. We Disagree with Appellant’s First Argument
Appellant argues the Decision misapprehends that Appellant waived
the argument “Zhu fails to teach transmitting line of sight direction in the
generated path information that is transmitted” because Appellant included
the last two paragraphs of claim 19 in the Appeal Brief and stated that Zhu
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and Ohashi fail to teach claim 19. Req. Reh’g 6 (citing Appeal Br. 26).
Appellant argued in the Appeal Brief only that Zhu’s camera position fails to
teach “line of sight.” Appeal Br. 26. Appellant did not argue in the Appeal
Brief that this information was not transmitted. Id.; Reply Br. 8 (arguing
“there is no discussion of including that information in the transmitted path
information as is set forth in claim 19” for the first time). We disagree.
We note that simply copying and pasting the last two paragraphs of
claim 19 does not constitute argument sufficient to demonstrate error. In
order to rebut a prima facie case of unpatentability, Appellant must point out
the supposed Examiner errors distinctly and specifically, and the specific
distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). In this case, although Appellant reproduced
the last two paragraphs of claim 19, Appellant only distinctly and
specifically developed the argument that Zhu’s “position of the camera”
does not teach “line of sight direction” for that camera. Appeal Br. 26.
Therefore, Appellant’s argument regarding the transmission aspect of the
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limitation was raised belatedly because it was raised for the first time in the
Reply Brief.
We further note that our Decision held that only Appellant’s argument
regarding the transmission aspect, not the “line of sight” aspect, of claim 19
was waived. Dec. 15–16. Furthermore, we addressed the merits of all
aspects of Appellant’s argument, including the waived transmission
argument. Id.
B. We Disagree with Appellant’s Second Argument
Appellant argues the Decision overlooks a shift in the Examiner’s
finding that prompted Appellant’s argument in the Reply Brief. Req. Reh’g
6–7 (citing Final Act. 15; Ans. 31). We disagree.
In particular, Appellant’s argument that the Examiner makes a new
finding when the Examiner states Zhu’s position of the camera and
geographic or map location teaches “line of sight direction” as Appellant
alleges (Req. Reh’g 6–7(citing Final Act. 15; Ans. 31)) is unpersuasive
because it takes the Examiner’s findings out of context.
Specifically, Appellant’s argument focuses only on the response to
arguments in the Answer while ignoring the actual rejection of claim 19 in
the Answer. Compare Final Act. 15 (citing Zhu 5:48–60; stating a position
of the camera teaches the limitation “line of sight direction” recited in claim
19 and stating geographic or map location teaches “one of the multiple
points” recited in claim 19) with Ans. 8–9 (citing Zhu 5:48–60; stating a
position of the camera teaches the limitation “line of sight direction” recited
in claim 19 and stating geographic or map location teaches “one of the
multiple points” recited in claim 19).
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Moreover, although the Examiner states “[g]iven location of the
camera and the location of the image on the map, this information clearly
present[s] the direction ‘line of sight’ from the camera to the image,” it is
clear the Examiner is saying that Zhu’s position/location of the camera (i.e.,
“line of sight” recited in claim 19) is linked to Zhu’s location of the image
(i.e., “one of the multiple points” recited in claim 19). This is even more
apparent when reading claim 19, which states “a corresponding line of sight
direction is linked to each one of the multiple points” (emphasis added).
Therefore, reading page 31 of the Answer in combination with pages 8 and 9
of the Answer provides context that the Examiner did not make a new
finding as Appellant alleges (Req. Reh’g 6–7).
Even if the Examiner made a new finding, which the Examiner did
not, Appellant’s argument should focus on why Zhu’s position of the camera
and geographic or map location fails to teach “line of sight direction.”
Particularly, Appellant’s argument strays outside the metaphorical
boundaries by arguing the limitation “transmitted” recited in claim 19.
Thus, Appellant’s new argument regarding the transmitted aspect “is not
responsive to an argument raised in the examiner’s answer” pursuant to
37 C.F.R. § 41.41(b)(2).
C. We Disagree with Appellant’s Third Argument
Appellant argues the Decision overlooks that position and direction
are different and a PHOSITA would understand that a position at which an
image is taken does not provide a teaching for “line of sight direction” into
metadata. Req. Reh’g 7. We disagree.
Appellant states “[i]f the Decision’s affirmance for claim 19 rests on
an interpretation that transmitting an image in combination with a position of
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that image reads on the claimed line of sight direction features, then it
should state as such to allow [Appellant] to propose further amendments to
address such a claim interpretation.” Req. Reh’g 7, n.1. However, that is
the interpretation we took in our Decision (Dec. 12–13, 15–16), which we
discuss in the subsequent paragraph.
We respectfully note that Appellant overlooked our analysis on pages
12–13 and 15–16 of the Decision. As explained on pages 15–16 of the
Decision, Zhu teaches line of sight direction and, as stated on pages 12–13
of this Decision, Zhu teaches “generating path information” and Ohashi
teaches “transmitting.” Dec. 12–13, 15–16. Therefore, as stated on page 16
of the Decision “the combination of Zhu and Ohashi teach ‘transmitting the
generated path information.’” Id.
Accordingly, we have considered Appellant’s arguments raised in the
Request, but these arguments do not persuade us that the portion of the
Decision affirming dependent claim 19 was in error.
CONCLUSION
Claims 35 U.S.C. § Reference(s)/Basis Denied Granted
1–10, 12–
15, 17–21
112(a) Written
Description
1–10, 12–
15, 17–21

19 103 Zhu, Ohashi 19
Overall
Outcome
1–10, 12–
15, 17–21

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Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–5, 8–
12, 14,
15, 21
103 JPREF, Ohashi 11 1–5, 8–10,
12, 14, 15, 21

6, 7, 13,
17–20
103 JPREF, Ohashi,
Lynch
6, 7, 13, 17–
20

12, 15,
19
103 Zhu, Ohashi 12, 15, 19
1–10,
12–15,
17–21
112(a) Written Description 1–10,
12–15,
17–21
11 112(a) Written Description 11
11 112(b) Indefiniteness 11
Overall
Outcome
11, 12,
15, 19
1–10, 13, 14,
17, 18, 20, 21
1–15,
17–21
Accordingly, Appellants’ Request for Rehearing is granted to the
extent the Decision is reconsidered, but is denied with respect to modifying
the Decision.

DENIED