Ex Parte Masuda et alDownload PDFPatent Trial and Appeal BoardMar 30, 201612333867 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/333,867 12/12/2008 27562 7590 04/01/2016 NIXON & V ANDERHYE, P,C 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Takumi Masuda 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MEN-723-2467 7158 EXAMINER BRADFORD, PETER ART UNIT PAPER NUMBER 2897 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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 Exparte TAKUMI MASUDA, RYOSUKE KANATA, YOSHINOBU NAKANO, and MASAHIKO NISHIMURA Appeal2014-004409 Application 12/333,867 Technology Center 2800 Before MARK NAGUMO, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-29. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants' invention is directed to a computer-readable storage medium for storing a game program of a game to be played using an input device such as a touch panel, touch pad or the like (Claim 1) and a game apparatus implementing the game program (Spec. i-f 1; Claims 22, 24, and 29). Claim 1 is illustrative: Appeal2014-004409 Application 12/333,867 1. A non-transitory computer-readable storage medium storing computer readable instructions to be executed by a computing system that includes an input device having a touch screen display that is configured to detect a touch operation that is performed by a user, and a microphone, the stored instructions comprising instructions that are configured to: output an image to the touch screen display; obtain, from the input device, an input position which corresponds to an input operation performed by a user at a touched position on the touch screen display while the image is displayed on the touch screen display; obtain, from the microphone, an operation sound based on the performed input operation; and perform a game process based on the obtained input position and the obtained operation sound, wherein the input position is a coordinate input position, wherein the input position is obtained independently of the operation sound. Appellants appeal the following rejection: Claims 1-29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Champagne et al. (US 2007/0077541 Al, published Apr. 5, 2007) (hereinafter "Champagne") in view of Hardie-Bick (US 2005/0083313 Al; published Apr. 21, 2005) and Van Genechten (US 2009/0002340 published Jan. 1, 2009) as evidenced by Cross et al. (US 2003/0234769 Al, published Dec. 25, 2003) (hereinafter "Cross") and Soss et al. (US 2006/0279553 Al, published Dec. 14, 2006) (hereinafter "Soss"). 1 1 The Examiner refers to a reference to Lafleur and Tan in the Response to Arguments section of the Answer in an attempt to provide "further evidence" to support the rejection (Ans. 4, 6). Appellants argue that Lafleur and Tan are newly cited in the Answer (Reply Br. 2). We shall not consider the Lafleur and Tan references in our analysis of the rejection because there is no excuse for the Examiner not positively including the references in the statement of the rejection. In re Hoch, 428 f.2d 1341, 1342 n.3 (CCPA 1970). 2 Appeal2014-004409 Application 12/333,867 FINDINGS OF FACT AND ANALYSES The Examiner finds that Champagne discloses a system that outputs an image to a touch screen display, where the user specifies an input position of a coordinate input position by touching the image on the touch screen (Final Act. 3). The Examiner finds that Champagne teaches that the input position is obtained independently of the operating sound (Final Act. 4--5). The Examiner finds that Champagne does not disclose an acoustic sensor positioning system. (Final Act. 3). The Examiner finds that Hardie-Bick discloses a touch pad that uses a microphone to obtain an operation sound based on the performed input operation using piezoelectric transducers. Id. The Examiner concludes that it would have been obvious to incorporate the touch location system of Hardie-Bick into the system of Champagne in order to further refine the location determination or to provide redundancy in the system (Final Act. 4). The Examiner finds that Van Genechten evinces that sometimes redundant systems are needed in touch screen applications. Id. The Examiner finds that combining Champagne's and Hardie-Bick's system would provide the sought after redundancy. Id. The Examiner further finds that Cross and Soss teach that it is known to incorporate piezo elements into touch screens for both sensing and actuation (Final Act. 4). Attacking the Examiner's reason for the combination, Appellants argue that redundant systems do not use both inputs in a subsequent process (Reply Br. 5). Accordingly, Appellants contend that redundant system would not use both separately provided inputs in an executed game process. Id. Appellants contend that if the reason for the combination is to provide a 3 Appeal2014-004409 Application 12/333,867 redundant system, then only one of the systems would use the input information to determine touch location (Reply Br. 5---6). Appellants contend that both input from the sound and resistive displays would not be used in the game process as required by claim 1 (i.e., "perform a game process based on the obtained input position and the obtained operation sound"). Put another way, we understand Appellants to argue that the combined teachings do not teach or suggest performing a game process based on the positional input from a touch screen and the obtained operation sound. We agree. The Examiner does not explain how the applied prior art teaches this claim limitation (Final Act. 3-5). Claim 1 requires that the input position be obtained from the input device (i.e., touch screen) as an input operation and obtaining an operation sound based upon the input operation (i.e., the operation sound is obtained from the same input operation). Claim 1 further recites performing a game process based on the obtained input position and the obtained operation sound. Claim 1, therefore, requires that both the acoustic sensor (i.e., microphone) and input device (i.e., touch screen) acquire information that is used in the game process. The Examiner has not shown where that limitation is taught or would have been suggested by the prior art (Final Act. 3-5). As all the features have not been shown to be taught or suggested by the prior art, we reverse the Examiner's § 103 rejection. DECISION The Examiner's decision is reversed. ORDER 4 Appeal2014-004409 Application 12/333,867 REVERSED 5 Copy with citationCopy as parenthetical citation