Ex Parte Kono et alDownload PDFPatent Trial and Appeal BoardDec 11, 201713812435 (P.T.A.B. Dec. 11, 2017) Copy Citation 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. 13/812,435 02/12/2013 Kenji Kono 005000-K00052 5360 78198 7590 12/18/2017 StiiHehaker & Rraokett PP EXAMINER 8255 Greensboro Drive AZARI, SEPEHR Suite 300 Tysons, VA 22102 ART UNIT PAPER NUMBER 2691 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): info@ sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENJI KONO, TAKASHI MIYAKE, TAKAYUKI SHINOZAKI, MEGUMI KUWABARA, and JUN TAKEDA Appeal 2017-006242 Application 13/812,435 Technology Center 2600 Before ALLEN R. MACDONALD, BRADLEY W. BAUMEISTER, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—3. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1—3 are rejected under 35 U.S.C. § 103(a) as obvious over Maruyama (US 2008/0122315 Al; May 29, 2008). Final Act. 4—9. Claims 1—3 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as obvious over Application No. 13/812,382 and Maruyama. Final Act. 10-14; see also Ans. 3. We affirm. Appeal 2017-006242 Application 13/812,435 STATEMENT OF THE CASE Appellants’ invention relates to “a tactile sensation providing apparatus having a touch sensor and a control method for the tactile sensation providing apparatus.” Spec. 12. Claim 1 is illustrative and reproduced below: 1. A tactile sensation providing apparatus comprising: a touch sensor; a load detection unit configured to detect a pressing load on the touch sensor for providing a tactile sensation; a tactile sensation providing unit configured to vibrate a touch face of the touch sensor; a tactile sensation provision control unit configured as a first chip to control drive of the tactile sensation providing unit; and a main control unit configured as a second chip to control an application, wherein the tactile sensation provision control unit starts detecting the pressing load in response to receiving a pressing load detection instruction from the main control unit, and transmits the pressing load to the main control unit, the main control unit performs application process based on an output of the touch sensor and the pressing load received from the tactile sensation provision control unit, and the tactile sensation provision control unit stops detecting the pressing load in response to receiving a pressing load stop instruction from the main control unit. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 2 Appeal 2017-006242 Application 13/812,435 THE OBVIOUSNESS REJECTION OVER MARUYAMA Contentions The Examiner finds Maruyama’s CPU 32 (Fig. 13) teaches the recited (claim 1) “tactile sensation provision control unit” and the recited (claim 1) “main control unit.” See Final Act. 4. The Examiner finds Maruyama’s steps G3, G4 (“Which Mode?” “Button Icon Input Mode,” “Detect Press Force F”) (Fig. 17) teach the recited (claim 1) “the tactile sensation provision control unit starts detecting the pressing load in response to receiving a pressing load detection instruction from the main control unit, and transmits the pressing load to the main control unit.” See Final Act. 4—5; see also Ans. 2. The Examiner finds Maruyama’s step G12 (“Terminate?”) (Fig. 17) teaches the recited (claim 1) “the tactile sensation provision control unit stops detecting the pressing load in response to receiving a pressing load stop instruction from the main control unit.” See Final Act. 5; see also Ans. 2. The Examiner finds “Maruyama does not teach that the tactile sensation provision [control] unit is configured as a first chip and the main control unit is configured as a second chip.” Final Act. 5. However, the Examiner reasons it would have been obvious to a person having ordinary skill in the art at the time of the invention to provide different chips for different functions. The examiner takes official notice that every chip contains at least an integrated circuit which performs at least one function. Maruyama teaches that the control means 15 performs all the functionality of the first and second chips as provided by the applicant, therefore one would [have been] motivated to separate or combine the functionality of different units into one chip or separate them into different ones since one with ordinary skill in the art would [have] immediately realize [d] 3 Appeal 2017-006242 Application 13/812,435 that any function may be assigned to any one or plurality of chips. Final Act. 6. In the Answer, the Examiner further reasons Since the CPU of Maruyama performs all the tasks of the tactile sensation provision control unit [(TSPCU)], similar to the CPU/GPU example provided above [(provisioning graphics functionalities of a CPU to a GPU in a separate chip)], one would have been motivated to provide a dedicated chip for the CPU and the TSPCU in order to reduce the processing load of the CPU regarding tactile sensing[,] which leads to a reduction of power consumption and improper heating of the CPU chip. Upon creating a CPU/TSPCU configuration, all the commands previously internal to the CPU regarding tactile sensing would necessarily be transmitted to the external TSPCU similar to the CPU/GPU configuration. Ans. 3. Appellants present the following principal arguments: i. “[S]tep G3 is not a command from a main control unit (CPU 32) to a tactile sensation provision control unit. To the contrary, Maruyama discloses that the CPU 32 (not some other circuitry) directly reads and processes the D2 force input.” App. Br. 5. ii. “[S]tep G12 is not a stop command issued from CPU 32, but an internal process decision node whereby the CPU 32 may or may not perform other tasks.” App. Br. 6. iii. “[T]he Examiner improperly attempts to assert that the CPU 32 of Maruyama is both a main control unit and tactile sensation provision control unit, which is improper under U.S. claim construction practices.” App. Br. 6. 4 Appeal 2017-006242 Application 13/812,435 iv. “There literally can be no transmitting of instructions by CPU 32 to a tactile sensation provision control unit as one doesn’t exist[] in Maruyama. Additionally, there is no disclosure in Maruyama of a tactile sensation provision control unit transmitting a pressing load to the main control unit.” App. Br. 6. v. There is no motivation to modify Maruyama. See App. Br. 7—8. While ordinarily there may be a general motivation making “that which is integrated, separable,” there is no motivation on record to modify the primary reference to include, for example, the specific pressing load detection and stop detection instructions of the present independent claims, which work to provide power advantages not found in the applied art of record. Applicants also observe that the Examiner has again overlooked the requirement that all claim limitations must be shown or suggested independent of providing a motivation to modify/combine, and that the Examiner has failed to provide any reference for the recited start and stop commands. Reply Br. 2. Analysis We do not see any error in the Examiner’s findings. Nor do we see any error in the Examiner’s conclusion of obviousness. Appellants’ arguments (i)—(iv) are unavailing because these arguments are directed to the specific disclosures of Maruyama, whereas the Examiner rejects the claims based on Maruyama as modified such that a tactile sensation provision control unit is configured as a separate chip from CPU 32. See Final Act. 6, Ans. 3. Regarding Appellants’ arguments (i) and (ii), Maruyama’s steps G3, G4 (“Which Mode?” “Button Icon Input Mode,” “Detect Press Force F”) 5 Appeal 2017-006242 Application 13/812,435 (Fig. 17) teach Marayama’s CPU 32 starts detecting the pressing load. When Maruyama is modified such that a tactile sensation provision control unit is configured as a separate chip from CPU 32, the separate chip starts detecting the pressing load in response to commands from CPU 32. Similarly, Maruyama’s step G12 (“Terminate?”) (Fig. 17) teaches Maruyama’s CPU 32 stops detecting the pressing load. When Maruyama is modified such that a tactile sensation provision control unit is configured as a separate chip from CPU 32, the separate chip stops detecting the pressing load in response to commands from CPU 32. Regarding Appellants’ argument (iii), the Examiner does not assert that CPU 32 is both control units. Instead, the argued claim limitations are taught when Maruyama is modified such that a tactile sensation provision control unit is configured as a separate chip from CPU 32. See Final Act. 6, Ans. 3. Regarding Appellants’ argument (iv), our analysis is similar. The argued claim limitations are taught when Maruyama is modified such that a tactile sensation provision control unit is configured as a separate chip from CPU 32. Thus, this appeal hinges on Appellants’ argument (v), which focuses on motivation to modify Maruyama. On the record before us, we find the Examiner’s reasoning is rational. See Final Act. 6; Ans. 3 (“reduce the processing load of the CPU regarding tactile sensing”). In passing, we note that a general desire for power savings is well-known and conventional to one of ordinary skill in that art. For example, Huang (US 7,774,629; issued Aug. 10, 2010) discloses “[a] method for power management of a CPU and a system thereof, which drive 6 Appeal 2017-006242 Application 13/812,435 the CPU to enter a more efficient power saving state.” Huang, Abstract. Further, in general, making separable that which is integrated is an obvious design choice when there is a reason (for example, reducing processing load) to make separable. See In re Dulberg, 289 F.2d 522, 523 (CCPA 1961). Weighing the Examiner’s findings and reasons in light of Maruyama, against Appellants’ arguments without further evidence, we find that on this record the Examiner has sufficiently established that Maruyama’s teachings would have rendered the claimed invention obvious to one of ordinary skill in the art at the time of the invention. We, therefore, sustain the Examiner’s rejection based on Maruyama of claim 1. We also sustain the Examiner’s rejection based on Maruyama of claims 2 and 3, which are not separately argued with particularity. THE PROVISIONAL OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION OF CLAIMS 1-3 First, we note that Application No. 13/812,382 issued as U.S. Patent No. 9,170,651 on October 27, 2015. As such, the provisional rejection has ripened into a non-provisional obviousness-type double patenting rejection. Appellants argue that the instant claims are patentably distinct from the claims of the ’382 application, and Maruyama does not cure the deficiencies of the claims of the ’382 application. See App. Br. 8—9. For reasons discussed above, the Examiner has sufficiently established that Maruyama’s teachings would have rendered the claimed invention obvious to one of ordinary skill in the art at the time of the invention. 7 Appeal 2017-006242 Application 13/812,435 We, therefore, sustain the Examiner’s rejection based on Application No. 13/812,382 and Maruyama of claims 1—3 in this proceeding. ORDER The Examiner’s decision rejecting claims 1—3 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 8 Copy with citationCopy as parenthetical citation