Ex Parte Miyazaki

Patent Trial and Appeal BoardOct 6, 2016

13179626 (P.T.A.B. Oct. 6, 2016)

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. 13/179,626 07/11/2011 Reiko MIYAZAKI 1946-0057 1907 60803 7590 10/06/2016 Paratus Law Group, PLLC 620 Herndon Parkway Suite 320 Herndon, VA 20170 EXAMINER GATTEW, ASTEWAY T ART UNIT PAPER NUMBER 2173 MAIL DATE DELIVERY MODE 10/06/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte REIKO MIYAZAKI1 ____________________ Appeal 2015-007702 Application 13/179,626 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, and enter A NEW GROUND OF REJECTION. 1 Appellant’s Appeal Brief (App. Br.) identifies the real party in interest as Line Corporation. Appeal 2015-007702 Application 13/179,626 2 CLAIMED SUBJECT MATTER The claims are directed to an information processing device which switches between two different types of operations depending upon the starting point and ending point of a user operation on a graphical user interface. In the first type of operation, a predetermined value is changed by an amount proportional to the amount of the user operation. The second type of operation sets a change of speed of the value according to the dragging, and continues to change the predetermined value at the change speed. (Specification, Abstract, Fig. 23.) Claim 1, reproduced below with the key limitations emphasized, is representative: 1. An information processing device comprising: a control unit configured to switch, when a user operation to shift a pointing position is performed which is an operation to change a predetermined value via an operating unit, between changing the value by an amount corresponding to the amount of the user operation, and setting a change speed of the value according to the user operation and continue to change the value at the change speed, according to positions of an ending point and a starting point of the user operation, where the control unit is implemented via a processor. Appeal 2015-007702 Application 13/179,626 3 REJECTIONS The Examiner rejects claims 1–3 and 5–20 under 35 U.S.C. § 102(b)2 as being anticipated by Ullmann et al. (U.S. Pat. No. 6,677,965 B1, issued Jan. 13, 2004 (“Ullmann”). Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious over Ullmann and Chaudhri (US 2008/0168365 A1, published July 10, 2008). ISSUE TO BE DECIDED Whether the Examiner erred in finding that Ullmann discloses a “control unit configured to switch” between “changing the value by an amount corresponding to the amount of [a] user operation” and “setting a change speed of the value according to the user operation and continue to change the value at the change speed” which is made “according to positions of an ending point and a starting point of the user operation” as recited in claim 1 and similarly recited in the other independent claims. ANALYSIS In rejecting claim 1, the Examiner finds that Ullmann discloses each and every limitation recited in the claim. (Final Act. 2–3.) Ullmann relates to a rubber band variable-rate GUI control for use in conjunction with GUI controls in which the farther the rubber band is extended, the faster a control operation, such as scrolling, is repeated. Ullmann Abstract. When the length of the rubber band is decreased, the scrolling or control operation 2 Appellant erroneously identifies the statutory basis for this rejection as Section 103(a) in the Appeal Brief. (App. Br. 11.) This incorrect identification of the relevant statute does not impact our analysis. Appeal 2015-007702 Application 13/179,626 4 repetition slows. Id. The Examiner cites Figures 4A and 4B, as well as the description provided at col. 5, ll. 44–58 and at col. 6, ll. 25–30. (Final Act. 2.) In explaining his application of Ullmann to claim 1, the Examiner finds: The information in the display area changes corresponding to the amount of the user operation which is the dragging of the virtual rubber band. The amount the information displayed in the display area changes depends on the length of the rubber. The length of the rubber determines the speed at which the information in the display area changes (i.e., setting a change speed of the value according to the user operation). As the length of the rubber increases, the information in the display area scrolls faster and as the length of the rubber decreases, the information in the display area scrolls slower (i.e., continue to change the value at the change speed). The different lengths of the rubber are calculated according to positions of an ending point and a starting point generated when the virtual rubber band is dragged. (Adv. Act. 2.) Appellant challenges the Examiner’s findings. Appellant argues Ullmann’s rubber band is only used to change the speed and direction of a control operation in Ullmann’s graphical user interface, and it is not used to change the amount of change corresponding to an amount of user operation. (App. Br. 3.) Appellant further contends that Ullmann does not disclose “changing the value by an amount corresponding to the amount of the user operation” because Ullmann never describes that length of his rubber band is correlated directly with a specific value or amount of a distance of movement of the scroll button. (Reply Br. 5.) Appellant also argues that Ullmann fails to disclose switching between the two types of operation based on the position of the ending point and starting point of the manipulated rubber band control. (App. Br. 4.) Appeal 2015-007702 Application 13/179,626 5 We agree with Appellant. Ullman does not disclose that his rubber band control ever “chang[es] the value by an amount corresponding to the amount of the user operation.” In all disclosed modes of operation, the Ullmann GUI control is designed only to control the speed of the control operation. See, e.g., Ullmann Abstract. Although Ullmann discloses that the rate of change can be either a linear rate of change or an increasingly greater, non-linear rate of change, see, e.g., id. col. 6, ll. 27–33, in both cases it is the rate of change, and not the amount of change, that is governed by the length of Ullmann’s rubber band. Because Ullmann does not disclose each and every element recited in claim 1, we reverse the rejection under 35 U.S.C. § 102(b). Independent claims 10 and 11 recite the same limitation discussed above. Accordingly, for the same reasons, we do not sustain the rejections of those claims. Claims 2, 3, 5–9, and 12–20 depend from the independent claims. (App. Br. 16–22.) By virtue of their dependency on the respective independent claims, we do not sustain the rejection of these claims. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious over Ullmann, in view of Chaudhri. Claim 4 ultimately depends from claim 1. (App. Br. 17.) The Examiner’s added reliance on Chaudhri does not remedy the deficiency in Ullmann discussed above. Accordingly, we do not sustain the rejection of claim 4. NEW GROUND OF REJECTION Claims 1–19 are rejected under 35 U.S.C. ¶ 112, first paragraph as lacking adequate written description under LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) (“LizardTech”). Under LizardTech, where claims are broader than the disclosed Appeal 2015-007702 Application 13/179,626 6 embodiments, and where the specification provides no evidence that a more generic way of practicing the invention is contemplated, those claims do not comply with the written description requirement set forth in 35 U.S.C. § 112, first paragraph. LizardTech, 424 F.3d at 1344–45. Here, claims 1–19 recite that “a user operation to shift a pointing position is performed which is an operation to change a predetermined value via an operating unit….” (Claims 1, 10, and 11.) However, the Specification discloses only a single type of user operation to shift a pointing position—a dragging operation. Here, as in LizardTech, there is no evidence the Specification contemplates a more generic user operation, as each and every disclosed embodiment specifically identifies a “dragging operation” as the user operation performed in the context of the embodiment.3 Accordingly, under LizardTech¸ claims 1–19 lack adequate written description.4 DECISION The Examiner’s rejection of claims 1–20 is reversed. We enter a new ground of rejection under 35 U.S.C. § 112, first paragraph against claims 1–19. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection 3 We note that the originally filed claims were directed to “switching, when dragging is performed which is an operation to change a predetermined value via [a/the] operating unit.” Specification p. 136–140, original claims 1, 10, and 11 (emphasis added). 4 We do not reject claim 20 under Section 112 because it specifies that “the user operation is a dragging operation performed across the operating unit.” (Claim 20.) Appeal 2015-007702 Application 13/179,626 7 pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 37 C.F.R. § 41.50(b)