NINTENDO CO., LTD.

Patent Trials and Appeals Board

Mar 1, 2022

2021001203 (P.T.A.B. Mar. 1, 2022)

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. 15/408,764 01/18/2017 Tomoyoshi YAMANE RYM-723-4413 1063 27562 7590 03/01/2022 NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER SHALU, ZELALEM W ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOYOSHI YAMANE and TAKAO SHIMIZU Appeal 2021-001203 Application 15/408,764 Technology Center 2100 Before JEAN R. HOMERE, AMBER L. HAGY, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-10, which are all the claims under consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nintendo Co., Ltd. Appeal Brief filed June 9, 2020 (“Appeal Br.”) at 2. Appeal 2021-001203 Application 15/408,764 2 CLAIMED SUBJECT MATTER Summary The subject matter of Appellant’s application relates generally to “changing an order of arrangement of a plurality of objects such as thumbnail images or icons in a screen” of a device such as a smartphone or portable gaming device. Spec. 1:13-14.2 In one example, the icons represent video games. Id. at 7:9-11. The claimed subject matter allows a user to sort a list of video games in different ways by toggling through a list of various sorting criteria. The games can be displayed laterally as icons on the smart phone screen according to the selected sorting order. Each time the user selects a predetermined key, the list of games displayed is toggled to the next sorting criterion in the list. Each time the user changes the order of the displayed games by selecting the predetermined key, a visible identification of the change in the current sorting order is displayed on the screen such as with a superimposed data element or icon. The icon may be programmed to disappear after the lapse of a prescribed period. Exemplary Claims Claims 1, 8, 9, and 10 are independent. Claims 1 and 2, reproduced below with disputed limitations italicized, exemplify the claimed subject matter: 1. A non-transitory storage medium encoded with a computer readable information processing program executed by a computer of an information processing apparatus connected to 2 In addition to the Appeal Brief noted above, we refer to: (1) the originally filed Specification filed January 18, 2017 (“Spec.”); (2) the Non-Final Office Action mailed January 10, 2020 (“Non-Final Act.”); (3) the Examiner’s Answer mailed October 5, 2020 (“Ans.”); and (4) the Reply Brief filed December 7, 2020 (“Reply Br.”). Appeal 2021-001203 Application 15/408,764 3 a display, the information processing program causing the computer to: accept a prescribed operation; change an order of arrangement of a plurality of contents in accordance with input of the accepted prescribed operation; and responsive to said changing the order of arrangement: show, on the display, the plurality of contents in the changed order of arrangement, and show for a prescribed period, on the display, information indicating the changed order of arrangement. 2. The non-transitory storage medium according to claim 1, wherein the information processing program causes the computer to further stop showing the information indicating the changed order of arrangement after lapse of the prescribed period since the accepted prescribed operation. Appeal Br. 18 (Claims Appendix). REFERENCES AND REJECTION The Examiner rejects claims 1-10 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Shellshear (US 2007/0270985 A1, published Nov. 22, 2007) and Ijichi et al. (US 2008/0018625 A1, published Jan. 24, 2008) (“Ijichi”). Non-Final Act. 3-12. OPINION We review the appealed rejection for error based upon the issues identified by Appellant and in view of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appeal 2021-001203 Application 15/408,764 4 Appellant does not persuade us that the Examiner errs in the obviousness rejections of claims 1-10. We adopt as our own the findings and reasons set forth by the Examiner for these claims to the extent consistent with our analysis herein. Non-Final Act. 3-12; Ans. 3-10. We add the following discussion primarily for emphasis. Obviousness Rejection of Claims 1 and 3-10 The Examiner finds “Shellshear teaches showing an indication of the change in order of arrangement in response to the said changing of order of arrangement,” as recited in claim 1. Non-Final Act. 5 (citing Shellshear ¶ 52, Fig. 1) (emphasis omitted). The Examiner notes Shellshear “fails [to] explicitly teach/disclose the system wherein in response to said changing the order of arrangement[,] showing for a prescribed period, on the display, information indicating the changed order of arrangement”; but finds Ijichi teaches “responsive to said changing the order of arrangement: show for a prescribed period, on the display, information indicating the changed order of arrangement,” as recited in claim 1. Id. at 5-6 (citing Ijichi ¶ 535, Fig. 43). The Examiner determines that sufficient motivation existed “to modify the medium, method and system of Shellshear, to include the system wherein responsive to said changing the displayed list of content showing for prescribed period, on the display, information indicating the changed order of arrangement as taught by ljichi.” Id. at 6. According to the Examiner: After the modification of Ijichi, the indication of the change in order of arrangement, taught by Shellshear, which is also a displayed message indicating changes to a displayed list of content, can also be displayed for a prescribed period in response to the user input changing the displayed list of content in the Appeal 2021-001203 Application 15/408,764 5 same manner as set forth in Ijichi. One would have been motivated to make such a combination in order to provide users useful, timed and temporary feedback and a reminder about user action in changing the display content so that contents won't be covered by the indication information. Id. (citing Ijichi ¶ 8). Appellant argues Ijichi fails to teach, “show[ing] for a prescribed period, on the display, information indicating the changed order of arrangement,” as recited in claim 1: Ijichi fails to teach or even suggest that its “channel addition notification dialog 320”, which the Office Action alleges corresponds to information indicating the changed order of arrangement shown on the display for a prescribed period as recited in claim 1, is indeed shown “responsive to said changing the order of arrangement”. To the contrary, Ijichi’s “channel addition notification dialog 320” is shown in response to a function startup or a channel selection which occur well after the action of channel addition has taken place. Appeal Br. 11 (citing Ijichi ¶ 463). The Examiner responds by pointing out that in Ijichi, “the channel addition notification dialog 320 displays the notification dialog 320 for [a] prescribed period and automatically close[s] the dialog box after a predetermined time elapsed.” Ans. 5. The Examiner finds Ijichi “further discloses that ‘the music reproducing apparatus 310 notifies the user of the addition at the time of Music Station function start-up or ‘channel selection.’” Id. According to the Examiner, “[i]n other words, the channel addition notification dialog 320 that is displayed in response to user input of adding additional channels is displayed either during the Music station Appeal 2021-001203 Application 15/408,764 6 function start-up OR during the Music Station function channel selection.” Id. (citing Ijichi ¶ 463 and Fig. 43.). We are not persuaded by Appellant’s arguments. Ijichi discloses “if a selectable channel has newly been added, the music reproducing apparatus 310 displays a channel addition notification dialog 320 for notifying the user of the addition of a selectable channel, as shown in FIG. 43.” Ijichi ¶ 464. Ijichi further discloses that “[i]t is also practicable to automatically close the channel addition notification dialog 320 a predetermined period of time after the displaying of the channel addition notification dialog 320.” Ijichi ¶ 535. Appellant fails to show error in the Examiner’s finding that Ijichi teaches “responsive to said changing the order of arrangement: . . . show for a prescribed period, on the display, information indicating the changed order of arrangement,” as recited in claim 1. Non-Final Act. 4-5. Appellant’s argument that “Ijichi’s ‘channel addition notification dialog 320’ is shown in response to a function startup or a channel selection which occur well after the action of channel addition has taken place,” is not commensurate with the scope of claim 1. Appeal Br. 11 (emphasis added). Nothing in the claim requires that the information indicating the order of arrangement be displayed within a short time of changing the order. Rather, the claim simply requires that the information indicating the order of arrangement is displayed “responsive to said changing the order of arrangement.” Id. at 18. Motivation to Combine Appellant argues the Examiner’s proposed combination is based on impermissible hindsight because “[t]here is no motivation in either of the references to display the indication of the sort order information only for a predetermined time. Appeal Br. 12. Appeal 2021-001203 Application 15/408,764 7 This argument is not persuasive for several reasons. First, we are not persuaded because we agree with the Examiner’s finding that Ijichi teaches displaying the indication of the sort order information only for a predetermined time, as discussed above. Second, this argument fails to address the actual motivation to combine the teachings of the references provided by the Examiner. Non-Final Act. 6-7. Third, Appellant appears to argue that the Examiner must rely exclusively on the cited references for the motivation to combine. Id. This argument is misplaced because the Supreme Court has rejected the rigid application of the “teaching, suggestion, or motivation” test for obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 422 (2007). Instead, the Court has held that rather than being bound by the express teachings of the prior art, the Examiner “can consider the inferences and creative steps a person of ordinary skill in the art would employ” and that “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Here, the Examiner has provided reasoning to show that combining certain teachings of Shellshear and Ijichi to arrive at the claimed medium would have been well within the grasp of a person of ordinary skill in the relevant art “[b]ecause both Shellshear and ljichi are in the same/similar field of endeavor.” Ans. 8 (emphasis omitted). And the Examiner determines that the benefit of combining the teachings of the references would have been obvious, as discussed below. Id. at 400. Appellant’s hindsight argument fails to persuasively rebut the Examiner’s reasoning. Appeal 2021-001203 Application 15/408,764 8 In combining the teachings of the references, the Examiner determines that “[o]ne would have been motivated to make such a combination in order to provide users useful, timed and temporary feedback and a reminder about user action in changing the display content so that contents won’t be covered by the indication information.” Non-Final Act. 6. Appellant challenges the cited motivation, arguing that there is no “suggestion in Shellshear that its displayed information indicating the changed ordering, such as the ‘text indication 120’ in Fig. 1 covers the displayed contents.” Appeal Br. 13 (citing Shellshear Figs. 1, 3, 4, 14). We find this argument unpersuasive because Appellant provides insufficient evidence from Shellshear to demonstrate that there is no possibility of indicators, such as selection screen 120, covering displayed content. Furthermore, the Examiner notes additional benefits provided by displaying an indicator for only a predetermined time, in addition to not obscuring content, such as providing “temporary feedback.” Non-Final Act. 6. Such temporary feedback has advantages besides limiting the obscuring of content such as minimizing user distraction and required computing resources. Appellant argues that “there is no suggestion in Shellshear that the ‘text information 120’ is to be ‘temporary’ or that there is any advantage of having it ‘temporary.’” Appeal Br. 13. Even assuming this is so, this argument is not persuasive because the Examiner need not rely on Shellshear to expressly disclose the benefit of temporary notification. That is, rather than being bound by the express teachings of the prior art, the Examiner “can consider the inferences and creative steps a person of ordinary skill in the art would employ” or can rely on common sense to fit the teachings of the references together like a puzzle. KSR, 550 U.S. at 420. Appeal 2021-001203 Application 15/408,764 9 Next, Appellant argues that “one would also not be motivated to modify Shellshear’s ‘text information 120’ in accordance with Ijichi, because the Ijichi ‘channel add information’ is very different from Shellshear’s ‘text information 120.’” Appeal Br. 14. This argument is not persuasive because the Examiner, in combining the teachings of the references, has not proposed modifying “Shellshear’s text information 120 in accordance with Ijichi.” To the contrary, the Examiner proposes using the teachings of Ijichi to display Shellshear’s indicator, i.e., selection screen 120, for a prescribed period. Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of select teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR, 550 at 418 (the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art.). Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). We are, therefore, not persuaded by Appellant’s arguments attacking the stated motivation, because the Examiner has provided reasoning with some rational underpinning to support the legal conclusion of obviousness and Appellant fails to demonstrate error in the Examiner’s reasoning. Appeal 2021-001203 Application 15/408,764 10 For the reasons discussed, Appellant has not persuaded us of reversible error in the Examiner’s obviousness rejection of independent claim 1. Accordingly, we sustain the Examiner’s rejection of that claim, as well as the rejection of independent claims 8, 9, and 10, and dependent claims 3-7, which Appellant does not argue separately with particularity. Appeal Br. 8-15. Obviousness Rejection of Claim 2 The Examiner finds Ijichi teaches or suggests “wherein the information processing program causes the computer to further stop showing the information indicating the changed order of arrangement after lapse of the prescribed period since the accepted prescribed operation,” as recited in dependent claim 2. Non-Final Act. 7 (citing Ijichi ¶ 535, Fig. 3). Appellant argues, “[a]s already described above in relation to claim 1, Ijichi’s ‘channel addition dialog box 320’ is not shown on the display in a manner that is ‘responsive to said changing the order of arrangement’ as recited in claim 1.” Appeal Br. 15. We find this argument unpersuasive for the same reasons provided above in our discussion of claim 1. Appellant next argues that Ijichi merely teaches that its channel addition dialog box is displayed for a predetermined period since the start of the displaying of the channel addition box: Ijichi’s “channel addition dialog box 320”, which is displayed starting at a time unrelated to the user action of actual channel addition, i.e. when function starts up or when a channel is selected (see para. [0463]), and moreover is closed “a predetermined period of time after the displaying of the channel addition notification dialog 320” (para. [0535], emphasis added), does not teach or suggest “stop[ping] showing the information indicating the changed order of arrangement after lapse of the Appeal 2021-001203 Application 15/408,764 11 prescribed period since the accepted prescribed operation. More specifically, whereas claim 2 requires the information regarding the changed order of arrangement to be shown for a prescribed period starting from the prescribed operation that causes the changing of the order of arrangement to be performed, Ijichi merely teaches that its channel addition dialog box is displayed for a predetermined period since the start of the displaying of the channel addition box.” Appeal Br. 15-16. The Examiner responds by finding that, the channel addition notification dialog 320 that is displayed in response to user input to add additional channels to the Music Station occurs either at the Music Station function start-up or during the ‘channel selection.’” time. (Emphasis added). The channel addition dialog box 320 is displayed after accepted prescribed operation provided by a remote controller RM (see Fig. 28, paragraph [0320]) of the music reproducing apparatus. Furthermore, the notification dialog window will stop showing the channel addition information after a predetermined time as Ijichi’s, reference discloses in Fig. 43, paragraph 535. Ans. 10. We agree with the Examiner’s findings, as set forth above. As the Examiner explains, in Ijichi, “the channel addition notification dialog 320 [] is displayed in response to user input.” Id. Then, the channel addition notification dialog 320 is automatically closed after a predetermined period. Appellant’s claim does not recite the duration of the predetermined period. Accordingly, we agree that Ijichi teaches, or at least suggests, that a predetermined period elapses from the time of user input to the closing of dialog box 320. Appeal 2021-001203 Application 15/408,764 12 Moreover, Appellant’s arguments fail to address the Examiner’s additional findings provided in the Answer and are, therefore, not responsive to the rejection. See generally Reply Br. 2-6. We sustain, therefore, the Examiner’s rejection of dependent claim 2. CONCLUSION We sustain the Examiner’s rejection of claims 1-10 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10 103 Shellshear, Ijichi 1-10 TIME PERIOD FOR RESPONSE 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