Ex Parte MATSUMOTO et al

Patent Trial and Appeal Board

Feb 5, 2016

13096487 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/096,487 04/28/2011
63652 7590 02/09/2016
DISNEY ENTERPRISES, INC.
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
TSUYOSHI MATSUMOTO
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.
06-DIS-103-DIMG-US-UTL-CO 4650
EXAMINER
HARPER, TRAMAR YONG
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI MATSUMOTO and MASARU KURIBA Y ASHI
Appeal2013-010812
Application 13/096,487
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tsuyoshi Matsumoto and Masaru Kuribayashi (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1,
2, and 4-22, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2013-010812
Application 13/096,487
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "electronic games having
tangible overlay card[s]." Spec. para. 2. Claims 1, 8, 14, and 19 are
independent claims. Claim 1 is illustrative of the subject matter on appeal
and is reproduced below.
1. A game system, comprising:
a game console having a touch-sensitive pointing device
including a touch screen, wherein the touch screen concurrently
operates as a display displaying game content for a game and an
input device receiving user input affecting the game;
a computing device within the game console;
processes executing on the computing device for
detecting use of the touch sensitive pointing device;
an overlay card having a pattern therein, wherein the
pattern on the card guides use of the touch-sensitive pointing
device wherein the overlay card physically overlays the touch
screen defining portions of the touch screen that may be user
activated; and
processes executing on the computing device for taking
responsive action to affect the game based on the detected use
of the touch-sensitive pointing device including the portions of
the touch screen activated by a user, wherein the affecting of
the game includes modifying a portion of the game displayed
on the touch screen at least partially in an area spaced apart
from the defined portions of the touch screen that may be user
activated.
Br. 16, Claims App. Independent claim 8 is directed to a method of
implementing a computer-implemented game, independent claim 14 is
directed to a card for use in a game system, and independent claim 19 is
directed to a game system. Id. at 17-19.
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Application 13/096,487
REJECTIONS
Appellants appeal from the Final Action, dated November 8, 2012
("Final Act."), which contained the following rejections:
1. Claims 1, 2, 4-7, 14-18, and 22 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1, 2, and 4-7 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
3. Claims 1, 2, and 5-21under35 U.S.C. § 103(a) as unpatentable
over Mcllvain (US 2007/0298387 Al; published December 27,
2007), Aiken (US 2006/0050061 A 1; published March 9, 2006),
Schneider (US 2002/0156866 Al; published October 24, 2002),
and Rehkemper (US 6,572,378 Bl; issued June 3, 2003).
The Examiner subsequently withdrew the rejection of claims 1, 2, and
5-7 under 35 U.S.C. § 103(a) in the Examiner's Answer, dated June 7, 2013
("Ans."). Ans. 12-13.
ANALYSIS
First Ground of Rejection: Written Description
The Examiner found that the original disclosure fails to evince that
Appellants had possession of the invention as called for in claims 1, 2, 4-7,
14-18, and 22, and, specifically, the limitation of claim 1 "wherein the
affecting of the game includes modifying a portion of the game displayed on
the touch screen at least partially in an area spaced apart from the defined
portions of the touch screen that may be user activated," the limitation of
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claim 14 "wherein material of the card defines portions of the touch screen
that cannot be activated by the user and the pattern, when placed over the
touch screen, defines portions of the touch screen that can be activated
corresponding to the programmed pattern," and the limitation of dependent
claim 22 1 wherein "the active areas being less than all of an exposed area of
the touch screen." Final Act. 2--4; Advisory Action, dated December 5,
2012, at 2. Appellants contend that the original disclosure is sufficient, and
specifically point to paragraphs 30 and 33, the "Background" section, and
Figures 2A-2D and 4, with corresponding portions of the Specification
describing these Figures, as evidence of possession of the invention as set
forth in claims 1, 14, and 22. Br. 7-10; see also id. at 3, 5 (citing Spec.,
paras. 9-11, 22-24, 28, 29, and 33).
To satisfy the written description requirement, "the [original]
specification must describe an invention understandable to th[ e] skilled
artisan and show that the inventor actually invented the invention claimed."
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane). "[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. (citations omitted). "[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology."
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)).
1 Claim 22 depends from claim 1. Br. 20, Claims App.
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Based on the totality of the description provided in the Specification,
for the reasons that follow, we find that the original disclosure provides
adequate written description support for the limitations in claims 1, 14, and
22. The Specification describes, in the Summary of the Invention:
A card having a pattern defined therein is overlaid on the touch
screen. The defined pattern is used to activate portions of the
touch screen by guiding user interaction with a touch pad or
touch screen. The activated portions of the touch pad or touch
screen launch responsive activity in a computer program
implemented on the game console.
Spec., para. 9 (emphasis added). The Background of the Invention describes
that in the context of a game, responsive activity "may cause a character in
the game to take a particular action, load a new background, or any desired
programmed response." Id., para. 5 (emphasis added). Further, paragraph
33 of the Specification describes that a card overlay is useful for entering
information using touch screen input devices and that when the user
performs a desired operation, such as tracing a pattern or activing a sequence
of points on the touch screen, the computer might activate software or
activate features in a software program. Id., para. 33. Activating features,
such as loading a new background, would result in a modification to an
entire display on the touch screen, which would include modifications to a
portion of the game displayed on the touch screen at least partially in an area
spaced apart from the defined portions of the touch screen that are activated
by the pattern defined in the card, as called for in claim 1. As such, we
understand this original disclosure to convey to those skilled in the art that
Appellants had possession of the subject matter of claim 1.
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Figure 4 shows a touch screen writeable area segmented into an array,
and the corresponding text describes that, in operation, all areas of the array
may be active, or less than all areas may be active. Id., para. 29 (describing
an example in which "if a game is at a point where only a certain card can be
played, only elements corresponding to that card may need to be active").
Further, as noted above, the Specification describes that "[t]he defined
pattern is used to activate portions of the touch screen" and that activated
portions "launch responsive activity in a computer program." Id., para. 9.
We understand these cited portions of the Specification to describe that only
a portion of the elements of the touch screen array, which correspond to the
pattern on the card, are active at a particular point in the game. This
description conveys to those skilled in the art possession of a card in which
the material of the card defines portions of the touch screen that cannot be
activated by the user and the pattern, when placed over the touch screen,
defines portions of the touch screen that can be activated corresponding to
the programmed pattern, as called for in claim 14.
Similarly, the portions of the Specification cited above describe that
the overlay card defines portions of the touch screen that may be user
activated, and Figures 2A-2D, which show exemplary overlay cards 31
containing points, lines, and arcs defining patterns 201 in the cards, show
that the active areas of the touch screen are less than all of an exposed area
of the touch screen. Id., paras. 19-25 (describing Figures 2A-2D). This
description conveys to those skilled in the art possession of a game system,
as called for in claim 22. For these reasons, we do not sustain the
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Examiner's rejection of claims 1, 2, 4-7, 14-18, and 22 under 35 U.S.C.
§ 112, first paragraph.
Second Ground of Re} ection: Indefiniteness
The Examiner rejected claims 1, 2, and 4-7 as indefinite because
claim 1 calls for modifying a portion of the game displayed on the touch
screen "at least partially" in an area spaced apart from the defined portions
of the touch screen that may be user activated. Final Act. 4; Adv. Act. 2.
The Examiner explained that the phrase "at least partially" renders the scope
of the claim unascertainable "because the claim(s) include(s) elements not
actually disclosed (those encompassed by 'at least partially')." Final Act. 4.
This rejection is based on the Examiner's finding that this limitation
of claim 1 is not described in the Specification. For the reasons set forth
above for not sustaining the written description rejection, we likewise do not
sustain the Examiner's rejection of claims 1, 2, and 4-7 under 35 U.S.C.
§ 112, second paragraph.
Third Ground of Rejection: Obviousness
Due to the Examiner's withdrawal of the§ 103 rejection as to claims
1, 2, and 5-7, the claims remaining subject to this ground of rejection are
claims 8-21. Ans. 4-13.
Independent claims 8, 14, and 19
In the Appeal Brief, Appellants present arguments for patentability of
independent claim 1 (no longer rejected under § 103), and rely on these
same arguments for asserting patentability of independent claims 8, 14, and
19. Br. 11-13 (presented arguments for claim 1 ); id. at 14 (arguing that
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claims 8, 14, and 19 are believed allowable for the reasons provided for
claim 1 ). Appellants did not file a Reply Brief. We examine the arguments
raised by Appellants with respect to claim 1 to ascertain which of these
arguments applies to the claim language set forth in claims 8, 14, and 19.2
Appellants contend that the combined teachings of the references do
not show or suggest "an overlay card having a pattern and the card [being]
used to physically overlay the touch screen 'defining portions of the touch
screen that may be user activated. "'3 Br. 11. In particular, Appellants state
that Mcllvain teaches a touch screen in which a traceable template is
displayed electronically via the touch screen itself and argue that this
disclosure "teaches away" from use a physical overlay card. Id. at 12
(arguing that "[t]here is no motivation in Mcllvain to replace its template
with a physical one or to add a physical template"). There does not appear
to be any dispute that ivicilvain discloses an electronic template instead of a
physical overlay card. Final Act. 11-12; Br. 12; Mcllvain, paras. 24-25
(describing use of traceable templates 32 that are stored in electronic
member 30 and produced via GUI 14). The Examiner relied on Schneider to
teach using stencils to fit over computerized drawing tablets. Final Act. 13.
2 We do not address Appellants' argument on page 11 of the Appeal Brief
that the prior art fails to show "processes executing on the computing device
that modify a portion of the game displayed on the touch screen 'at least
partially in an area spaced apart from the defined portions of the touch
screen that may be user activated."' This limitation is not present in
independent claims 8, 14, or 19.
3 Each of independent claims 8, 14, and 19 recite similar limitations.
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As to the teaching away argument, Appellants appear to argue that a
teaching away is shown if no motivation for the proposed modification can
be found in Mcllvain. A lack of an explicit motivation in the reference itself
for the proposed modification does not amount to a teaching away. We do
not find a teaching away in Mcllvain from using a physical overlay card in
place of an electronic template by virtue of Mcllvain's silence as to this
possibility.
Appellants point out that "the template in Mcllvain encourages the
user to activate or draw in a particular portion but the entire screen remains
user activatable in contrast to the language of claim 1 where the overlay card
defines the limited portion that can be activated." Br. 12. Appellants do not
explain how this disclosure in Mcllvain of using electronic templates teaches
away from the Examiner's proposed modification of using a stencil over the
touchscreen, as taught by Schneider, which would result in the stencil
(overlay card) defining a limited portion of the touchscreen that can be
activated through the openings in the stencil. See Ans. 18 (finding that "one
skilled in the art recognizes that the use of a template (Mcllvain) or a
stencil/overlay card (Schneider in view of Rehkemper) both provide the
same function of guiding a user via a pattern of the template or stencil in
terms of affecting game play on a touch screen game").
As to Schneider, Appellants argue that "there is no teaching that [the]
touchscreen 110 [of Schneider] would be used with a stencil" and that "[a]
drawing tablet is not an equivalent for and does not suggest a touch screen
device as [claimed]." Br. 12. Appellants provide no evidence to support the
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argument that a drawing table is not equivalent to a touch screen device. In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence"). Further, Schneider provides
evidence to the contrary. Schneider discloses that it was known in the art at
the time of Appellants' invention that an input device suitable for providing
input to a computer includes "a stencil that fits over a computerized drawing
tablet." Schneider, para. 78. Schneider further discloses that "[a] display
device could be any suitable output device, such as a display screen" and
that the input device and the display device "could be combined; for
example: a display with an integrated touchscreen." Id. It is this paragraph
of Schneider on which the Examiner relied for the teaching of a drawing
tablet in the form of a touchscreen having a stencil overlay card. Final
Act. 13. See also Ans. 19 (finding that "it is recognized in the art that a
computerized drawing table (ivicilvain) comprises a touch screen");
Mcllvain, para. 38 (disclosing that display device 56d and affector position
detector 54d, which comprise GUI l 4d, may be an integral unit such as a
touch screen device).
Appellants further contend that "if Mcllvain were modified by
Schneider, the result would be an addition of a drawing tablet with a stencil,
and the touch screen shown in Figure 1 of Mcllvain would continue to be
used as taught in Mcllvain with an electronic template 32 and no overlay
card physically covering it or blocking the displayed template 32." Br. 12.
Appellants fail to explain why one having ordinary skill in the art would
have been led to continue to use the electronic templates with touch screen
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of Mcllvain in addition to a drawing tablet with a stencil, when it was well
known in the art that one could use a stencil over a touch screen, as
described in Schneider.
Appellants further contend that "[t]here is no suggestion that the card
180 [ofRehkemper] should be placed over a touch screen." Id. at 13
(arguing that "[t]he Rehkemper card 180 is placed on a pad of paper, and an
image is drawing with a pencil or crayon"). Although Rehkemper discloses
an embodiment in which a stencil card 180 is placed over a pad of paper
(col. 5, 11. 1-9), as noted by the Examiner (Final Act. 13; Ans. 20-21),
Rehkemper also discloses another embodiment in which the stencil card 180
is placed over a support surface l 72a that includes a sensing member. Id. at
col. 5, 1. 62 - col. 6, 1. 20. In this embodiment, when the user inserts a
drawing tool into a stencil slot 182 and draws the segment defined by the
slot, the sensors sense the pressure produced by the drawing tool, and the
corresponding segment is displayed on the LCD display 150. Id. at col. 6,
11. 6-15. The Examiner relied on Rehkemper to disclose that it was known
in the art that when using a stencil over a pressure-sensitive substrate, the
cutout pattern on the stencil forms portions of the underlying substrate that
can be activated by a user, and the remaining portions of the stencil that
block the touch region form portions of the underlying substrate that cannot
be activated by the user. Final Act. 13. The Examiner did not propose to
modify the apparatus of Mcllvain with the support surface of Rehkemper.
Rather, the Examiner proposed to substitute the stencil as taught by
Schneider for the electronic template of Mcllvain, and determined that such
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a substitution would have been an obvious substitution of one known
element for another to yield predictable results. Id. at 14.
For these reasons, we do not find Appellants' arguments persuasive of
error in the rejection of independent claims 8, 14, and 19 as unpatentable
under 35 U.S.C. § 103(a). As such, we sustain the Examiner's rejection of
claims 8, 14, and 19 under 35 U.S.C. § 103(a).
Dependent claims 9-12, 15-18, 20, and 21
Appellants do not present any additional arguments for the
patentability of dependent claims 9-12, 15-18, 20, and 21. Br. 14. As such,
for the same reasons discussed above with respect to independent claims 8,
14, and 19, we likewise sustain the Examiner's rejection of dependent claims
9-12, 15-18, 20, and 21under35 U.S.C. § 103(a).
Dependent Claim 13
Claim 13 depends from claim 8 and recites "displaying one or more
alignment images on the touch-sensitive pointing device allowing the
overlay card to be registered with the touch-sensitive pointing device,
wherein the pre-selected pattern of portions can be physically activated
when the overlay card is registered using the alignment images." Br. 18,
Claims App. Appellants contend that "[t]he Final Office Action fails to state
a prima facie case of obviousness as it fails to point to any of the references
for showing or teaching displaying alignment images on a touch screen."
Br. 14 (arguing that "[t]he Rehkemper stencil covers the entire pad not a
smaller portion defined by alignment images, and there is no need to align
any physical overlay component with the device of Mcllvain").
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The Examiner found that Rehkemper discloses a stencil card having
alignment tabs (identification tabs) with corresponding tab inserts that allow
the toy to determine which drawing task is to be enabled or displayed. Final
Act. 13-14 (citing Rehkemper, Figs. 6-8c, col. 2, 11. 31-48, col. 4, 11. 34-63,
col. 5, 11. 12-19, and col. 5, 1. 61 - col. 6, 1. 26). The Examiner interpreted
"alignment images" to be "anything visual on the actual touch-sensitive
device to allow alignment of the stencils/overlay cards." Ans. 21-22
(finding that "Rehkemper teaches the use of alignment tabs on the overlay
cards with corresponding visual holes on the touch-sensitive pointing device
to allow for proper alignment of the card with the touch-sensitive device").
The dispute appears to tum on the Examiner's interpretation of
"alignment images on the touch-sensitive pointing device." The
Specification describes that in one embodiment, "overlay card 31 may be
sized smaller than touch screen 32 and some other means of registering card
31 with screen 32 is used." Spec., para. 20. "For example, touch screen 32
may display one or more alignment marks or images allowing card 31 to be
aligned with touch screen 32 using the visible alignment marks." Id.
Appellants used the claim term "image," which, in the context of the
limitation overall, connotes a visual cue or symbol, used for alignment, and
displayed on the display screen of the touch-sensitive pointing device.
Further, the Specification describes the alignment images as being displayed
on the touch screen. We find that the Examiner's interpretation of
"alignment image" to encompass "visual holes on the touch-sensitive
pointing device" to be unreasonably broad in light of the use of the claim
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term "image" and the description provided in Appellants' Specification. For
these reasons, we do not sustain the Examiner's rejection of claim 13 under
35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1, 2, 4-7, 14-18, and 22
under 35 U.S.C. § 112, first paragraph, claims 1, 2, and 4-7 under 35 U.S.C.
§ 112, second paragraph, and claim 13 under 35 U.S.C. § 103(a) is
REVERSED.
The decision of the Examiner to reject claims 8-12 and 14-21 under
35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
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