Ex Parte Yamamoto

Patent Trial and Appeal Board

Jun 22, 2017

12531177 (P.T.A.B. Jun. 22, 2017)

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).
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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
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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.
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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.
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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
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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.
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