Takayasu, Masaaki et al.

Patent Trials and Appeals Board

Feb 25, 2021

2019005275 (P.T.A.B. Feb. 25, 2021)

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.
13/611,242 09/12/2012 Masaaki Takayasu SCEP
25.229(100809-00627)
4895
26304 7590 02/25/2021
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
BLAUFELD, JUSTIN R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
02/25/2021 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):
doreen.devito@katten.com
nycuspto@katten.com
samson.helfgott@katten.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAAKI TAKAYASU, SHINYA TANIGUCHI, and
HIROYUKI GOTO
____________

Appeal 2019-005275
Application 13/611,242
Technology Center 2100
____________

Before CAROLYN D. THOMAS, ERIC B. CHEN, and
IRVIN E. BRANCH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–7, 9–12, 14, and 15. See Final
Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Sony
Computer Entertainment Inc. Appeal Br. 2.
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The present invention relates generally to processing information and
simultaneously displaying the resulting images. See Spec. ¶ 1.
Claim 7 is illustrative:
7. A method for processing information, the method
comprising:
displaying, on a display, a plurality of GUIs (graphical
user icons) in a display image at initial positions,
wherein each GUI is assigned a decision region
surrounding the GUI,
wherein a size of a decision region of a first GUI is larger
than a size of a decision region of a second GUI,
wherein a size of each decision region is a fixed
predetermined value,
wherein a plurality of decision regions of the GUIs
overlap, and
wherein each decision region is a circle centered at a
corresponding GUI;
acquiring information regarding a specific position,
inputted by a user, in the display image,
wherein the specific position is assigned a selection
region having a predefined fixed size and a predefined fixed shape
surrounding the specific position,
detecting in the display image all GUIs whose decision
regions intersect the selection region; and
moving and displaying each of the detected GUIs on the
display image from the initial position to a final position,
wherein the selection region and each decision region are
less than a size of the display image and a size of the display.

Appellant appeals the following rejections:
R1. Claims 1, 2, 5–7, 9–12, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Han (US 2004/0243306 A1, Dec. 2,
2004), Laffey (US 2003/0007017 A1, Jan. 9, 2003), and Osga (US
5,757,358, May 26, 1998);
R2. Claims 1, 2, 5–7, 9–12, and 15 are rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over Han, Laffey, and Zhang (US
2006/0262145 A1, Nov. 23, 2006).
R3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han, Laffey, Osga, and Lee (US 2009/0100343 A1, Apr.
16, 2009).
R4. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han, Laffey, Zhang, and Lee.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under at least Han, Laffey and Zhang
The Examiner concludes that “Appellant defaulted on the second
ground . . . over the combined disclosures of Han, Laffey, and Zhang
[because] [t]he Appeal Brief’s arguments are limited to the first ground of
rejection . . . over the combined disclosures of Han, Laffey, and Osaga.” See
Ans. 4. We find that because Appellant argued both Han’s and Laffey’s
teachings in the Appeal Brief, and these arguments are equally applicable to
the aforementioned first (R1) and second (R2) rejections, we find that
contrary to the Examiner’s conclusions, Appellant has at least given a partial
rebuttal to the Examiner’s second rejection. As a result, we shall treat
Appellant’s arguments, in large part, as being applicable to all rejections in
this appeal.

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Rejection under at least Han, Laffey and Osga
First, Appellant contends that “claim 1 requires ‘each GUI is assigned
a decision region surrounding the GUI.’ . . . There is no equivalent of a
‘decision region’ in Han. Further, there is no disclosure in Han of decision
regions of varying size.” Appeal Br. 9 (emphasis added).
The Examiner points out, and we agree, that the Final Office Action
explicitly mapped the argued limitations to Laffey and Osaga, respectively,
not Han. See Ans. 5 (citing Final Act. 8–10). Specifically, the Examiner
relies upon Jeffey to teach an icon provided with a region surrounding the
icon, i.e. a halo. See Final Act. 8–9 (citing Laffey ¶ 26: “This distance may
then be considered as a halo or zone 47 around each icon 46. It should be
noted that each icon can be provided with such a halo 47.”). Further, the
Examiner relies on Osga to teach a size of a region for a first icon is larger
than a size of a region of a second icon. For example, Osga discloses “the
selection areas for two objects will differ depending upon their locations in
relation to other displayed objects.” Osga, 5:6–8.
As such, Appellant’s argument against Han separately from Laffey
and Osga does not persuasively rebut the combination made by the
Examiner. One cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 425–26 (CCPA 1981).
Specifically, Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner’s prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
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1981)(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”) (citations omitted). This reasoning is applicable here given that
Appellant is only arguing Han’s teachings and not what the combined
teachings of Han, Laffey, and Osga would have suggested.
Second, Appellant contends that “there is no suggestion or motivation
in Han that only some icons would be moved and other icons would not be
moved, especially those outside the cursor circle.” Appeal Br. 9.
In response, the Examiner finds, and we agree, that “Han’s FIGS. 6B–
6C unequivocally illustrate this feature . . . only icons inside the cursor 71
(Han’s version of the ‘selection region’) move [and] [t]he icons outside of
cursor 71’s range remain in place.” Ans. 6; see also Han’s Figs. 6B–6C.
As a result, we find Appellant’s contention regarding icons that move
unavailing given the above noted illustrations in Han.
Third, Appellant contends that “Han would not be modified to include
decision regions having varying sizes” (Appeal Br. 9), because “the
determination used to vary the icons in Han is based on the intersection of
the cursor circle with the icons (and not a decision region).” Appeal Br. 10.
Appellant adds that “[i]ntroducing variable sized decision regions would
lead to results which contradict the primary purpose of Han” (id.) and “the
Examiner’s proposed modification of Han would clearly destroy the main
purpose of Han.” Id. at 11. We disagree with Appellant.
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As an initial point, we note that Appellant’s argument above is
another form of a teaching away argument. See In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“a reference teaches
away from a combination when using it in that combination would produce
an inoperative result,” but the obviousness analysis must account for
“modifications that one skilled in the art would make to a device borrowed
from the prior art”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(finding no reason to modify a prior art device where the modification would
render the device “inoperable for its intended purpose”).
Here, Appellant has not persuasively shown that modifying Han as
outlined by the Examiner would render Han’s system inoperable for its
intended purpose. As noted by Appellant, “the determination used to vary
the icons in Han is based on the intersection of the cursor circle with the
icons.” Appeal Br. 10. However, Appellant fails to persuasively
demonstrate that modifying Han to move the icons based on the intersection
of the cursor circle with decision circles of icons, instead of the icons
themselves, would render Han’s system inoperable, or discourage the use of
decision circle. Instead, we find that “the prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternative because such disclosure does not criticize, discredit, or otherwise
discourage the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Accordingly, we find unavailing Appellant’s teaching away argument.

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Fourth, Appellant contends that “[t]here would be no motivation to
incorporate any concepts of decision regions (or those of Laffey) except
using hindsight region gleaned from Appellant’s own disclosure.” Appeal
Br. 11–12.
We note that “[a]ny judgment on obviousness is in a sense necessarily
a reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from [Appellant’s] disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner
directed our attention to specific teachings in Laffey (see Final Act. 8–9) that
disclose a technique “to help the user distinguish his target icon . . . by
selecting a predetermined minimum distance or spacing . . . considered as a
halo or zone 47 around each icon.” Laffey ¶ 23. It is this “halo” in Laffey
that the Examiner is equating with the claimed “decision region surrounding
the GUI.” See claim 1. As such, this knowledge of having a “region
surrounding the GUI” was not only gleaned from Appellant’s disclosure, but
came from the cited art itself.
Accordingly, we find unavailing Appellant’s contention regarding
hindsight.
Finally, Appellant contends that “Osga only teaches that the area used
for selection of an object by a user can be changed” (Appeal Br. 12), “‘the
selectable area’ in Osga is thus not relevant to the ‘decision regions’ at all.”
Id. at 13. In essence, Appellant is arguing that because Osga teaches
changing the size of a “selectable area” instead of a “decision region,” it is
inappropriate to rely on its teaching.
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However, we point out that the Examiner relies on Osga to teach
varying the sizes of regions around GUIs (see Final Act. 9–10), not decision
regions themselves. Indeed, Osga teaches that a region around an icon can
differ from another region. See Osga 5:2–8 (“the selection areas for two
objects will differ depending upon their locations in relation to other
displayed objects.”).
Here, the Examiner relies upon Han combined with Laffey to teach
the claimed “decision regions.” See Final Act. 6–9. As such, Appellant’s
aforementioned argument fails to address what the combined teachings of
Han, Laffey, and Osga would have suggested to one of ordinary skill in the
art. Thus, Appellant’s argument against Osga separately from Han and/or
Laffey does not persuasively rebut the combination made by the Examiner.
Again, one cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
Keller, 642 F.2d at 425–26. Accordingly, we find unavailing Appellant’s
contention regarding Osga’s region not being relevant to decision regions.
In view of the above discussions, because Appellant has not
demonstrated that the Examiner erred in finding the argued limitations in at
least the combined disclosures of Han, Laffey, and Osga, the Examiner’s 35
U.S.C. § 103(a) rejections R1 of representative independent claim 1, as well
as claims 2, 4–7, 9–12, 14, and 15 (i.e., rejection R3 for claim 4) not
separately argued by Appellant, are sustained.
We also note that Appellant failed to separately argue the rejections
R2 and R4 under at least Han, Laffey, and Zhang. Accordingly, all
rejections under appeal are sustained.
CONCLUSION
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The Examiner’s rejections of claims 1, 2, 4–7, 9–12, 14, and 15 as
being unpatentable under 35 U.S.C. § 103 are affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–7, 9–12,
14, 15
103 Han, Laffey, Osga 1, 2, 5–7,
9–12, 14,
15

1, 2, 5–7, 9–12,
15
103 Han, Laffey,
Zhang
1, 2, 5–7,
9–12, 15

4 103 Han, Laffey, Osga,
Lee
4
4 103 Han, Laffey,
Zhang, Lee
4
Overall
Outcome
1, 2, 4–7,
9–12, 14,
15

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED