Takayasu, Masaaki et al.Download PDFPatent Trials and Appeals BoardMay 4, 20212019005275 (P.T.A.B. May. 4, 2021) 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. 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 3 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 4 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 Copy with citationCopy as parenthetical citation