Ex Parte Miyazaki

Patent Trial and Appeal Board

Oct 6, 2016

13179626 (P.T.A.B. Oct. 6, 2016)

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.
13/179,626 07/11/2011 Reiko MIYAZAKI 1946-0057 1907
60803 7590 10/06/2016
Paratus Law Group, PLLC
620 Herndon Parkway
Suite 320
Herndon, VA 20170
EXAMINER
GATTEW, ASTEWAY T
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
10/06/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte REIKO MIYAZAKI1
____________________

Appeal 2015-007702
Application 13/179,626
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, 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 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and enter A NEW GROUND OF REJECTION.

1 Appellant’s Appeal Brief (App. Br.) identifies the real party in interest as
Line Corporation.
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CLAIMED SUBJECT MATTER
The claims are directed to an information processing device which
switches between two different types of operations depending upon the
starting point and ending point of a user operation on a graphical user
interface. In the first type of operation, a predetermined value is changed by
an amount proportional to the amount of the user operation. The second
type of operation sets a change of speed of the value according to the
dragging, and continues to change the predetermined value at the change
speed. (Specification, Abstract, Fig. 23.)
Claim 1, reproduced below with the key limitations emphasized, is
representative:
1. An information processing device comprising:
a control unit configured to switch, when a user operation
to shift a pointing position is performed which is an operation to
change a predetermined value via an operating unit, between
changing the value by an amount corresponding
to the amount of the user operation, and
setting a change speed of the value according to the
user operation and continue to change the value at the
change speed,
according to positions of an ending point and a starting point
of the user operation,
where the control unit is implemented via a processor.

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REJECTIONS
The Examiner rejects claims 1–3 and 5–20 under 35 U.S.C. § 102(b)2
as being anticipated by Ullmann et al. (U.S. Pat. No. 6,677,965 B1, issued
Jan. 13, 2004 (“Ullmann”).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ullmann and Chaudhri (US 2008/0168365 A1, published July 10,
2008).

ISSUE TO BE DECIDED
Whether the Examiner erred in finding that Ullmann discloses a
“control unit configured to switch” between “changing the value by an
amount corresponding to the amount of [a] user operation” and “setting a
change speed of the value according to the user operation and continue to
change the value at the change speed” which is made “according to positions
of an ending point and a starting point of the user operation” as recited in
claim 1 and similarly recited in the other independent claims.

ANALYSIS
In rejecting claim 1, the Examiner finds that Ullmann discloses each
and every limitation recited in the claim. (Final Act. 2–3.) Ullmann relates
to a rubber band variable-rate GUI control for use in conjunction with GUI
controls in which the farther the rubber band is extended, the faster a control
operation, such as scrolling, is repeated. Ullmann Abstract. When the
length of the rubber band is decreased, the scrolling or control operation

2 Appellant erroneously identifies the statutory basis for this rejection as
Section 103(a) in the Appeal Brief. (App. Br. 11.) This incorrect
identification of the relevant statute does not impact our analysis.
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repetition slows. Id. The Examiner cites Figures 4A and 4B, as well as the
description provided at col. 5, ll. 44–58 and at col. 6, ll. 25–30. (Final Act.
2.) In explaining his application of Ullmann to claim 1, the Examiner finds:
The information in the display area changes corresponding to the
amount of the user operation which is the dragging of the virtual
rubber band. The amount the information displayed in the
display area changes depends on the length of the rubber. The
length of the rubber determines the speed at which the
information in the display area changes (i.e., setting a change
speed of the value according to the user operation). As the length
of the rubber increases, the information in the display area scrolls
faster and as the length of the rubber decreases, the information
in the display area scrolls slower (i.e., continue to change the
value at the change speed). The different lengths of the rubber
are calculated according to positions of an ending point and a
starting point generated when the virtual rubber band is dragged.
(Adv. Act. 2.)
Appellant challenges the Examiner’s findings. Appellant argues
Ullmann’s rubber band is only used to change the speed and direction of a
control operation in Ullmann’s graphical user interface, and it is not used to
change the amount of change corresponding to an amount of user operation.
(App. Br. 3.) Appellant further contends that Ullmann does not disclose
“changing the value by an amount corresponding to the amount of the user
operation” because Ullmann never describes that length of his rubber band is
correlated directly with a specific value or amount of a distance of
movement of the scroll button. (Reply Br. 5.) Appellant also argues that
Ullmann fails to disclose switching between the two types of operation
based on the position of the ending point and starting point of the
manipulated rubber band control. (App. Br. 4.)

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We agree with Appellant. Ullman does not disclose that his rubber
band control ever “chang[es] the value by an amount corresponding to the
amount of the user operation.” In all disclosed modes of operation, the
Ullmann GUI control is designed only to control the speed of the control
operation. See, e.g., Ullmann Abstract. Although Ullmann discloses that the
rate of change can be either a linear rate of change or an increasingly greater,
non-linear rate of change, see, e.g., id. col. 6, ll. 27–33, in both cases it is the
rate of change, and not the amount of change, that is governed by the length
of Ullmann’s rubber band.
Because Ullmann does not disclose each and every element recited in
claim 1, we reverse the rejection under 35 U.S.C. § 102(b). Independent
claims 10 and 11 recite the same limitation discussed above. Accordingly,
for the same reasons, we do not sustain the rejections of those claims.
Claims 2, 3, 5–9, and 12–20 depend from the independent claims. (App. Br.
16–22.) By virtue of their dependency on the respective independent claims,
we do not sustain the rejection of these claims.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ullmann, in view of Chaudhri. Claim 4 ultimately depends from claim
1. (App. Br. 17.) The Examiner’s added reliance on Chaudhri does not
remedy the deficiency in Ullmann discussed above. Accordingly, we do not
sustain the rejection of claim 4.

NEW GROUND OF REJECTION
Claims 1–19 are rejected under 35 U.S.C. ¶ 112, first paragraph as
lacking adequate written description under LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) (“LizardTech”).
Under LizardTech, where claims are broader than the disclosed
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embodiments, and where the specification provides no evidence that a more
generic way of practicing the invention is contemplated, those claims do not
comply with the written description requirement set forth in 35 U.S.C.
§ 112, first paragraph. LizardTech, 424 F.3d at 1344–45.
Here, claims 1–19 recite that “a user operation to shift a pointing
position is performed which is an operation to change a predetermined value
via an operating unit….” (Claims 1, 10, and 11.) However, the
Specification discloses only a single type of user operation to shift a pointing
position—a dragging operation. Here, as in LizardTech, there is no evidence
the Specification contemplates a more generic user operation, as each and
every disclosed embodiment specifically identifies a “dragging operation” as
the user operation performed in the context of the embodiment.3
Accordingly, under LizardTech¸ claims 1–19 lack adequate written
description.4

DECISION
The Examiner’s rejection of claims 1–20 is reversed.
We enter a new ground of rejection under 35 U.S.C. § 112, first
paragraph against claims 1–19.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection

3 We note that the originally filed claims were directed to “switching, when
dragging is performed which is an operation to change a predetermined
value via [a/the] operating unit.” Specification p. 136–140, original claims
1, 10, and 11 (emphasis added).
4 We do not reject claim 20 under Section 112 because it specifies that “the
user operation is a dragging operation performed across the operating unit.”
(Claim 20.)
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pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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
37 C.F.R. § 41.50(b)