Ex Parte Sato

Patent Trial and Appeal Board

Feb 27, 2014

11740041 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YASUHIRO SATO
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Appeal 2012-002702
Application 11/740,041
Technology Center 3700
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Before, JOHN C. KERINS, NEIL T. POWELL, and
JILL D. HILL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s decision to reject claims 1-4, 9, 12-14, 29, and 30.
We have reviewed Appellant’s arguments, the Examiner’s rejection,
and the Examiner’s response to Appellant’s arguments. Appellant has
persuaded us that the Examiner has not supported by a preponderance of the
evidence that Kobayashi and Itou would have rendered obvious the claim 1
limitation “a maximum time point value subtractor that subtracts the special
effect value from the maximum time point value when the special effect
Appeal 2012-002702
Application 11/740,041

2

specification receiver receives the specification of the special effect.” See
App. Br. 33-35; Reply Br. 8-12; Ans. 8-9, 14-18.
The Examiner provides no reasoning or evidence to support the
interpretation of this language as merely requiring “subtracting a value from
a gauge.” See Ans. 16-18. Consistent with Appellant’s arguments, in the
context of claim 1 as a whole, the plain meaning of the “maximum time
point value” appears to be a limit to which the “accumulated time point
value” can accumulate, not the accumulated time point value itself. See
App. Br. 33, 39-40 (Claims App’x.); Reply Br. 9-10. Thus, absent further
evidence or explanation, it appears that the portion of Itou (US 6,354,940
B1, iss. Mar. 12, 2002) cited by the Examiner as disclosing subtracting from
an accumulated time value does not suggest subtracting from a “maximum
time point value,” as required by claim 1. See Ans. 8-9, 15-18; Itou, col. 15,
ll. 9-34, figs. 19, 23A, 23D; App. Br. 33-34; Reply Br. 9-12. Likewise, it
appears that the portion of Kobayashi (US 6,488,586 B1, iss. Dec. 3, 2002)
cited by the Examiner as disclosing clearing performed actions does not
suggest subtracting from a “maximum time point value,” as recited in claim
1. Ans. 14-15, 18; Kobayashi, col. 5, l. 54-col. 6, l. 4, figs. 3, 4; App. Br.
34-35; Reply Br. 9, 10, 12. Accordingly, we do not sustain the rejection of
independent claim 1, or the rejection of claims 3, 4, 9, and 12-14, which
depend from claim 1.
The dispute regarding independent claims 2, 29, and 30 involves the
same substantive contentions regarding similar claim limitations. See Ans.
5, 8-9, 18-20; App. Br. 35-36. Accordingly, we do not sustain the rejection
of claims 2, 29, and 30.
Appeal 2012-002702
Application 11/740,041

3

The rejection of claim 13 does not contain evidence or explanation
that cures the above-discussed deficiencies in the rejection of claim 1, from
which claim 13 depends. See Ans. 11-12; App. Br. 37. Accordingly, we do
not sustain the rejection of claim 13.

DECISION
The Examiner’s decision to reject claims 1-4, 9, 12-14, 29, and 30 is
reversed.

REVERSED

mls