Takayasu, Masaaki et al.

Patent Trials and Appeals Board

May 4, 2021

2019005275 (P.T.A.B. May. 4, 2021)

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.
13/611,242 09/12/2012 Masaaki Takayasu SCEP
25.229(100809-00627)
4895
26304 7590 05/04/2021
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
BLAUFELD, JUSTIN R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
doreen.devito@katten.com
nycuspto@katten.com
samson.helfgott@katten.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAAKI TAKAYASU, SHINYA TANIGUCHI, and
HIROYUKI GOTO
____________

Appeal 2019-005275
Application 13/611,242
Technology Center 2100
____________

Before CAROLYN D. THOMAS, ERIC B. CHEN, and
IRVIN E. BRANCH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2019-005275
Application 13/611,242

2
INTRODUCTION
Appellant1 requests rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed February 25, 2021 (“Decision”), in which we
affirmed the rejection of claims 1, 2, 4–7, 9–12, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over at least Han (US 2004/0243306 A1,
Dec. 2, 2004) and Laffey (US 2003/0007017 A1, Jan. 9, 2003). The request
for rehearing is denied.
ANALYSIS
In the Request for Rehearing (“Request”), Appellant alleges that “the
Board’s decision is based upon a misunderstanding of Appellant’s argument
with respect to Han.” Req. 1. We disagree.
Specifically, Appellant states that Appellant is
not attempting to argue the references individually, but []
instead [is] attempting to argue that Han would not be modified
as suggested by the Examiner regardless of what any secondary
references teach or disclose[] . . . because the introduction of
variable sized decision regions in any manner into Han would
render Han inoperable.
Req. 3. To support Appellant’s contention, Appellant introduces a
hypothetical example whereby “icons far away from the selection region
(with large decision regions) would be varied while other icons close to the
selection region (with small decision regions) would not be varied.” Id. at 4.
In our Decision, our “Third” analysis explicitly addresses Appellant’s
contention regarding the modification rendering Han inoperable for its
intended use. See Decision 5–6. Specifically, we note in our Decision that

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Sony
Computer Entertainment Inc. Appeal Br. 2.
Appeal 2019-005275
Application 13/611,242

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Appellant fails to persuasively demonstrate that modifying Han
to move the icons based on the intersection of the cursor circle
with decision circles of icons, instead of the icons themselves,
would render Han’s system inoperable, or discourage the use of
decision circle. Instead, we find that “the prior art’s mere
disclosure of more than one alternative does not constitute a
teaching away from any of these alternative because such
disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .”
Id.
As such, we find unavailing Appellant’s contention that we
misunderstood Appellant’s “inoperable” argument with respect to Han,
given our explicit analysis in the Decision which clearly addresses whether
the proposed modification would render Han inoperable.
Regarding Appellant’s hypothetical example, i.e., “icons far away
from the selection region (with large decision regions) would be varied
while other icons close to the selection region (with small decision regions)
would not be varied” (Req. 4), we note that mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997). Appellant fails to show that Han actually teaches such a scenario.
Furthermore, as noted in our Decision, the Examiner imports Laffey
to teach “an icon provided with a region surrounding the icon, i.e., a halo”
and “Osga to teach a size of a region for a first icon is larger than a size of a
region of a second icon,” not Han. Decision 4. In other words, it is the
combined teachings of Han, Laffey, and Osga that the Examiner is relying
on to teach and/or suggest the recited decision region, selection region, and
movement of the detected GUI’s. Therefore, our Decision appropriately
emphasizes that “Appellant’s argument against Han separately from Laffey
Appeal 2019-005275
Application 13/611,242

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and Osga does not persuasively rebut the combination made by the
Examiner.” Decision 4–5.

DECISION SUMMARY
Accordingly, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1, 2, 5–7, 9–12,
14, 15
103 Han, Laffey, Osga 1, 2, 5–7,
9–12,
14, 15

1, 2, 5–7, 9–12,
15
103 Han, Laffey,
Zhang
1, 2, 5–7,
9–12, 15

4 103 Han, Laffey, Osga,
Lee
4
4 103 Han, Laffey, Zang,
Lee
4
Overall
Outcome
1, 2, 4–7,
9–12,
14, 15

Appeal 2019-005275
Application 13/611,242

5
Final Outcome of Appeal after Rehearing:
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–7, 9–12,
14, 15
103 Han, Laffey, Osga 1, 2, 5–7,
9–12, 14,
15

1, 2, 5–7, 9–12,
15
103 Han, Laffey,
Zhang
1, 2, 5–7,
9–12, 15

4 103 Han, Laffey, Osga,
Lee
4
4 103 Han, Laffey,
Zhang, Lee
4
Overall
Outcome
1, 2, 4–7,
9–12, 14,
15

This Decision on the Request for Rehearing incorporates our Decision
mailed February 25, 2021, and is final for the purpose of judicial review.
See 37 C.F.R. § 41.52(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED