Ex Parte YamamotoDownload PDFPatent Trial and Appeal BoardJun 22, 201712531177 (P.T.A.B. Jun. 22, 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. 12/531,177 09/14/2009 Kazuyuki Yamamoto 3712174-1411 7499 29175 7590 06/26/2017 K&T Oates T T .P-Phiraan EXAMINER P.O.BOX 1135 CHICAGO, IL 60690 NGO, TONY N ART UNIT PAPER NUMBER 2622 NOTIFICATION DATE DELIVERY MODE 06/26/2017 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUYUKI YAMAMOTO Appeal 2015-006852 Application 12/531,1771 Technology Center 2600 Before JUSTIN BUSCH, JAMES W. DEJMEK, 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 27—43, which are all pending claims. Oral Argument was heard before this panel on June 15, 2017. A copy of the Hearing Transcript will be placed in the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant’s Brief (“App. Br.”) identifies the real party in interest as Sony Corporation. App. Br. 4. Appeal 2015-006852 Application 12/531,177 CLAIMED SUBJECT MATTER The claims are directed to an input apparatus, control apparatus, control system, control method, and handheld apparatus. Claim 27, reproduced below with the key limitation in italics, is illustrative of the claimed subject matter: 27. An input apparatus for controlling a movement of a pointer on a screen, the input apparatus comprising: a casing; a movement signal output means for detecting a movement of the casing and outputting a signal corresponding to the movement of the casing; an attenuation means for attenuating, by a predetermined scale factor, an output value of a signal of a predetermined frequency range out of an output value output from the movement signal output means; and a control means for controlling a velocity of the pointer on the screen that corresponds to the movement of the casing by controlling the predetermined scale factor based on the signal corresponding to the movement of the casing, wherein the control means in conjunction with the attenuation means controls the predetermined scale factor by: i) selecting a control pattern among a plurality of control patterns based on the output value of the signal of the predetermined frequency range, each control pattern relating predetermined scale factors to frequencies of the output value of the signal within the predetermined frequency range, ii) determining a frequency of the output value of the signal of the predetermined frequency range output from the movement signal output means, and iii) determining the predetermined scale factor for the selected control pattern based on the determined frequency. App. Br. 33 (Claims Appendix). 2 Appeal 2015-006852 Application 12/531,177 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Claims 27—30, 32, 35, and 37-40 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Liberty. Final Act. 3. Claims 31, 33, 34, 36, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Liberty and Sato. Final Act. 30. Claims 41 and 43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Liberty, Sato, and Maruyama. Final Act. 39. Has the Examiner erred in finding Liberty discloses “selecting a control pattern among a plurality of control patterns based on the output value of the signal of the predetermined frequency range, each control pattern relating predetermined scale factors to frequencies of the output value of the signal within the predetermined frequency range” (hereinafter referred to as the “disputed limitation”), as recited in each independent claim?2 2 Each of independent claims 27 and 37—43 recite the disputed limitation, and the Examiner’s findings with respect to the disputed limitation are the same in each instance. Sato Maruyama Liberty US 5,453,758 Sept. 26, 1995 US 2007/0080951 A1 Apr. 12, 2007 US 2007/0252813 A1 Nov. 1, 2007 REJECTIONS ISSUE FOR DECISION 3 Appeal 2015-006852 Application 12/531,177 ANALYSIS Rejection Under 35 U.S.C. § 102(b) In rejecting the claims, the Examiner addresses the disputed limitation in two parts. First, the Examiner finds Liberty’s description of determining user profiles based on tremor data discloses “selecting a control pattern among a plurality of control patterns based on the output value of the signal of the predetermined frequency range.” Final Act. 4 (citing Liberty 174); Ans. 2 (citing Liberty 172). The Examiner further finds Liberty’s description of addressing “challenges posed by coarse mode clicking” discloses “each control pattern relating predetermined scale factors to frequencies of the output value of the signal within the predetermined frequency range.” Final Act. 4, 53—54 (citing Liberty Fig. 10A—10B, || 104, 111), Ans. 3^4 (citing Liberty || 104, 111). Appellant offers several arguments in favor of reversal, but we need only address one here. Appellant contends the rejection is flawed because the Examiner “us[es] two separate and disparate concepts from Liberty to disclose the control patterns” recited in the disputed limitation. More specifically, Appellant contends the Examiner errs because he finds Liberty’s “user classes” correspond to the recited “control pattern” in the context of “selecting a control pattern,” but then relies on Liberty’s adaptive filter used to address coarse mode clicking in the context of “each control pattern relating predetermined scale factors . . . .” Final Act. 28. We agree. Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top- U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the strict identity test for anticipation, all elements must be disclosed in the same way as they are arranged or combined in the claim. Therasense, Inc. v. 4 Appeal 2015-006852 Application 12/531,177 Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). The requirement for an identical arrangement “means that claims cannot be ‘treated ... as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Id. (citing Lindemann Maschinenfabrik GMBHv. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). Here, in addressing the first part of the disputed limitation, the Examiner finds “Liberty teaches selecting a control pattern (user or classes) among a plurality of [control] patterns (different users) based on the output value of the signal of the predetermined frequency range.” Ans. 2 (citing Liberty 172), as disclosed in the section of Liberty entitled “Tremor.” Thus, according to the Examiner’s theory of anticipation, the selected “control pattern” is a “set of features which best represent the feature set for purposes of differentiating between classes (users).” Ans. 2 (quoting Liberty 172). Put more simply, the Examiner finds “control patterns” are associated with user-specific tremor patterns. Addressing the remaining part of the disputed limitation, the Examiner looks to Liberty’s discussion of a “human factors processing [function],” which is used to address problems related to coarse mode clicking.3 Ans. 3—5. There, Liberty discloses adding an adaptive low-pass filter “that attenuates sharp, high-frequency button presses.” Liberty | 104. It is not apparent to us, nor does the Examiner adequately explain, how Liberty discloses the adaptive low-pass filter described in the context of 3 Liberty describes “course mode clicking” as mouse clicks which occur when “the target is large and the user anticipates the next action . . . [by] clicking] on the target ‘on the fly.’” Liberty 1103. 5 Appeal 2015-006852 Application 12/531,177 course mode clicking is applied to each identified class or user, i.e., how it is applied to the control patterns. Rather, the Examiner’s rejection appears to be premised upon a finding that the low-pass filter could be applied to the identified users or classes (instead of coarse mode click as actually described by Liberty). Such a finding, even if correct, is insufficient to demonstrate anticipation because it does not meet the requirement that the reference disclose the invention identically arranged as in the claim. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Accordingly, we do not sustain the rejections of independent claims 27 and 37 40. Nor do we sustain the rejections of claims 28—30, 32, and 35, which depend ultimately from claim 27. Rejections Under 35 U.S.C. § 103(a) As noted above, claims 31,33, 34, 36, and 41—43 are rejected under 35 U.S.C. § 103(a) as being obvious over Liberty in view of Sato (with respect to claims 31, 33, 34, 36, and 42), and further in view of Maruyama (with respect to claims 41 and 43). Final Act. 35—50. By virtue of their dependency on independent claim 27, we do not sustain the rejections of claims 31, 33, 34, and 36. In setting forth the remaining rejections under 35 U.S.C. § 103(a), the Examiner makes an identical finding with respect to the disputed limitation, a finding we have found supra to be unsupported by the evidence. Unlike the strict identity test for anticipation, the test for obviousness under 35 U.S.C. § 103(a) is not so limited. Eurand, Inc. v. Mylan Pharms., Inc. (In re Cyclobenzaprine Hydrochloride Extended- Release Capsule Patent Litig.), 676 F.3d 1063, 1069 (Fed. Cir. 2012) (“obviousness inquiry must be expansive and flexible”). Nevertheless, any conclusion of obviousness must be supported by explicit analysis which 6 Appeal 2015-006852 Application 12/531,177 provides “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). Here, in finding Liberty expressly discloses the disputed limitation, the Examiner provides no such analysis. As we discussed above, the Examiner finds “control patterns” are associated with user-specific tremor patterns, but relies on Liberty’s adaptive filter used to address coarse mode clicking in the context of “each control pattern relating predetermined scale factors . . . .” The Examiner does not propose modifying Liberty to additionally apply the adaptive filter to the user-specific tremor patterns, nor is any explanation provided for why a skilled artisan would seek to make such a modification. Although such a finding, were it made, may well be supported by a preponderance of evidence, it is not the finding made in the record before us.4 Accordingly, the findings made by the Examiner do not support a conclusion of obviousness, and we do not sustain the rejections of claims 31, 33, 34, 36, and 41—43 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 27—43. REVERSED 4 In the event of further prosecution, the Examiner may wish to consider whether the disputed limitation, while not expressly disclosed by Liberty, is nevertheless rendered obvious by Liberty, a question we leave to the Examiner to consider in the first instance. 7 Copy with citationCopy as parenthetical citation