HONDA MOTOR CO., LTD.

Patent Trials and Appeals Board

Nov 3, 2020

2019002178 (P.T.A.B. Nov. 3, 2020)

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.
14/897,508 12/10/2015 Keiichi Takikawa SHO-40359 7419
40854 7590 11/03/2020
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
LEIBY, CHRISTOPHER E
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIICHI TAKIKAWA and AKIRA IIHOSHI

Appeal 2019-002178
Application 14/897,508
Technology Center 2600
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART and, pursuant to 37 C.F.R. § 41.50(b), enter a
new ground of rejection.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Honda
Motor Co., Ltd. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims relate to controlling an information terminal, equipped
with a touch panel and installed in a vehicle, in a manner in which it can be
operated without affecting driving. Spec., Abstr. Claim 1, reproduced
below, is illustrative of the claimed subject matter:2
1. A computer-readable non-transitory storage medium
storing a program that causes an information terminal, which
includes a touch panel, controlling operations of applications in
first control based on a user’s operation received through the
touch panel to function as:
a connection detecting unit detecting a connection to a
vehicle; and
a function restricting unit controlling the operations of
the application in second control other than the first control
under a condition that the connection detecting unit detects the
connection to the vehicle, wherein
the second control restricts some operations set in
advance among the user’s operations that can be received in the
first control through the touch panel by invalidating display
associated with text inputs so that a text input operation which
requires watching of a display device is not possible, and
sets an application having a high use frequency while the
vehicle is in motion as a base application in advance, and
executes a basic display based on the application set as the base
application on the display device.

2 Other independent claims recite different limitations. We refer the reader
to Appellant’s Appeal Brief 21–30 for a full recitation of the claims.
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REFERENCES
The prior art relied upon by the Examiner is:
Nakashima
Vaughan
Ricci
Takikawa
Chaudhri
Narita
Ishihara
US 2008/0059902 A1
US 2009/0044117 A1
US 2013/0135118 A1
US 2013/0137489 A1
US 2014/0282208 A1
US 2015/0015520 A1
US 2017/0339344 A1
Mar. 6, 2008
Feb. 12, 2009
May 30, 2013
May 30, 2013
Sept. 18, 2014
Jan. 15, 2015
Nov. 23, 2017
REJECTIONS
Claims 1 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Takikawa, Ricci, and Nakashima. Final Act. 2.
Claims 2–4 and 6–8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Takikawa, Ricci, Nakashima, and Narita. Id. at 8.
Claims 9–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Narita and Ishihara. Id. at 14.
Claim 15 stands rejected under 35 U.S.C. § 102(a)(2) as anticipated
by Narita. Id. at 21.
Claims 16–17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Narita and Chaudhri. Id. at 23.
Claims 18–29 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Narita and Vaughan. Id. at 25.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv)
(2019).

Claims 1–8
Appellant contends that the combination of Takikawa, Ricci, and
Nakashima fails to teach or suggest “sets an application having a high use
frequency while the vehicle is in motion as a base application in advance,”
as recited in claim 1. Appeal Br. 12–14; Reply Br. 2–3. Appellant advances
two arguments: first, that Nakashima fails to teach or suggest “sets an
application having a high use frequency . . . as a base application in
advance” and second, that Takikawa fails to teach or suggest “while the
vehicle is in motion.” Appeal Br. 12–13; Reply Br. 2–3. The Examiner
finds that Takikawa discloses “sets an application . . . while the vehicle is in
motion as a base application in advance” and that Nakashima discloses “sets
an application having a high use frequency as a base application in
advance.” Final Act. 3–5.
We cannot reach the merits of the arguments presented because where
a claim, such as claim 1, is so indefinite that “considerable speculation as to
the meaning of the terms employed and assumptions as to the scope of such
claims” is needed, it would be imprudent for us to pass judgment on such a
rejection under § 103. See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(holding that the Examiner and the Board were wrong in relying on what at
best were speculative assumptions as to the meaning of the claims and
basing a rejection under 35 U.S.C. § 103 thereon). Claim 1 is indefinite
because it is amenable to multiple plausible claim constructions. See Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a
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claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.”); see also In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious—the claim becomes indefinite.”). Claim 1’s limitation, “sets an
application having a high use frequency while the vehicle is in motion as a
base application in advance,” may be interpreted to require (1) setting the
application while the vehicle is in motion, where the application has a high
use frequency; or (2) setting the application, where the application has the
high use frequency while the vehicle is in motion. These multiple plausible
interpretations render the claim indefinite. The phrase “in advance” is also
indefinite because it is recited without any reference to the thing to which it
is in advance. The claim begs the question—“in advance of what?”
Therefore, under our authority under 37 C.F.R. § 41.50(b), we newly
reject independent claim 1, similar independent claim 5, and respective
dependent claims 2–4 and 6–8, as indefinite under 35 U.S.C. § 112, second
paragraph (pre-AIA).
Accordingly, we are constrained to reverse, pro forma, the Examiner’s
rejection of claims 1–8 under 35 U.S.C. § 103. We note that this is a
procedural reversal rather than one based upon the merits of the § 103
rejection.

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Claims 9–14
Appellant contends that the combination of Narita and Ishihara fails to
teach or suggest “an AP operating unit executing an operation related to a
function possessed by the active application displayed on the display device
based on the swiping operation received through the touch panel without
changing the active application’s displayed area on the display device in a
case when the multi-touch is determined by the determination unit,” as
recited in claim 9. Appeal Br. 14–15 (emphasis added); Reply Br. 3–4.
Appellant first contends that Ishihara fails to teach or suggest “without
changing the active application’s displayed area,” as Ishihara’s
Fig. 10a depicts receiving a long press input therein, and
afterwards Fig. 10d depicts a vertical direction swipe, depicted
with two fingers, performing the function of turning on the
flash, which results in changing the displayed application’s
display area. Fig. 10b depicts receiving a two finger swipe in a
horizontal direction, which results in changing the displayed
application’s display area. Therefore, Fig. 10b and 10d cannot
be considered to disclose this feature of claim 9.
Id. at 14.
Figures 10a–10e of Ishihara are depicted below:

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Figures 10(a)–10(e) are schematic diagrams showing an example of an
imaging condition change and a flashlight setting change. Ishihara ¶ 183.
Ishihara explains that when a flick to the right is performed on the touch
panel shown in Figure 10(b), a gradual change from an image shown in
“normal mode” to an image shown in “sepia mode” (Figures 10(b)–10(c))
occurs. Id. On the other hand, when an upward flick is performed (Figure
10(d)), a flash is turned on and “an animation showing ‘flash ON’ is
displayed” (Figs. 10(d), 10(e)). Id. ¶ 184.
The Examiner finds that in Figures 10d–10e of Ishihara, “a ‘flash
operation is performed due to a two finger swipe. Take note that the display
area 3 does not change during the swipe or output of the flash operation.”
Ans. 5. The Examiner further finds, “[t]he interpretation of adjusting
display area regards prior art Narita’s length/width of the virtual display area
changing. Therefore, the display area 3 of prior art Ishihara figure 10 does
not change/adjust the display area in view of the multitouch swipe.” Id.
(emphasis added). The Examiner concludes, “[e]ven though images are
displayed on top of the display area[,] the length/width of the display area is
not changed or adjusted due to the swipe gesture.” Id. (emphasis added). In
other words, the Examiner appears to interpret the claimed “without
changing the active application’s display area” to mean “without changing
the length or width of the active application’s display area,” relying on the
mathematical notion of “area.”
Appellant responds that “[i]t can clearly be seen that from Fig. 10a to
Fig. 10d to Fig. 10e [of Ishihara], that the flash operation increases a display
area associated with flash, while reducing the background display area.”
Reply Br. 3–4 (emphasis added). Appellant’s reference to “increases a
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display area” appears to use the same mathematical notion of “area” used by
the Examiner, except that Appellant focuses on the display area of the “flash
on” box while the Examiner’s finding refers to the “length/width” of
Ishihara’s entire display area. As Appellant does not squarely address the
Examiner’s specific finding, and as we agree with the Examiner’s finding
under the broadest reasonable interpretation of “displayed area,” we find
Appellant’s argument unpersuasive.
Appellant also contends that Ishihara does not disclose “multi-touch”
because Ishihara’s Figures 10a–10b relate to a flick operation, not a two-
finger swipe. Appeal Br. 15; Reply Br. 4. And Appellant contends that
Narita merely discloses a flick operation “in a case where a plurality of
fingers are detected simultaneously, rather than a swipe operation.” Id.
(citing Narita ¶¶ 207–208).
The Examiner relies on Narita for the “multi-touch” claim language,
finding that paragraph 144 and figure 11b disclose a “multi-touch swipe
gesture.” Final Act. 15. In the Answer, the Examiner clarifies that Ishihara
discloses a “flick,” which is a “sub-class of a swipe,” which constitutes “a
drag gesture or a gesture in which the user’s finger/stylus/input remains on
the screen as it is moved (normally linearly or slightly curved fashion)
across the screen.” Ans. 5. Addressing this Ishihara argument in reply,
Appellant contends Ishihara’s “two fingers are understood to be drawn to
represent an afterimage due to a fast finger movement in the flick operation
and NOT to a two finger swipe operation, unlike claim 9, which requires a
multi-touch to be determined.” Reply Br. 4.
We find that Appellant concedes that Narita disclose “a plurality of
fingers are detected simultaneously,” see Appeal Br. 15, which constitutes a
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multi-touch. We also agree with the Examiner’s finding that Ishihara’s
“flick” is a “sub-class of a swipe.” See Ans. 5. We agree that the
combination of Nahira and Ishira discloses a swiping operation that is multi-
touch and thus teaches or suggests the disputed limitation.
We sustain the rejection of claim 9, along with the rejection of
independent claim 12 argued collectively with claim 9 and their respective
dependent claims 10, 11, 13, and 14, which Appellant does not argue
separately. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).

Claims 15–17
Appellant contends that Narita does not disclose claim 15’s “function
restricting unit invalidating the user’s operation in case when the operation is
determined not to be the swiping operation.” Appeal Br. 17–18; Reply Br.
7. The Examiner finds that Narita discloses this limitation in paragraph 86,
which states:
When a signal indicating that the operation on the screen
of the display section 120 is performed by the user is input from
the operation detection section 102, the operating body
position/shape specification section 104 specifies the shape of
the operating body, such as the finger. By specifying the shape,
it is intended to distinguish a normal touch from a touch for
performing a fat swipe.
Narita ¶ 86 (emphasis added), quoted in Final Act. 21–22. Appellant
contends that “Narita discloses distinguishing between a normal touch from
a touch for performing a fat swipe,” not invalidating the user’s operation.
Appeal Br. 18.
The Answer expands upon the Final Action’s position, finding that the
disputed limitation constitutes “means for” language such that “disclosing a
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means for enabling the system to determine non-swiping inputs so as to
function without error is found to properly reject the claim language and be
interpreted as ‘invalidating.’”3 Ans. 9. The Examiner further finds,
“[i]nvalidating is interpreted by the office action as normal in the art means
of interpreting touch inputs. When a tap input is determined to be input to
the touch sensor it is invalidated as a swipe input.” Id.
Appellant persuades us of Examiner error. Narita’s operation
“distinguish[es] a normal touch from a touch for performing a fat swipe.”
Narita ¶ 86. Even if Narita determines that the shape of the finger is a
normal touch, not a fat swipe, Narita’s “distinguishing” does not disclose
“invalidating” a user’s operation, as claimed. The Examiner’s interpretation
of invalidating “as normal in the art means of interpreting touch inputs [so
that w]hen a tap input is determined to be input to the touch sensor it is
invalidated as a swipe input” is an unreasonably broad interpretation of the
claim.
The Examiner has not relied on any of the other cited references to
teach this element. Accordingly, we do not sustain the Examiner’s rejection
of claim 15 and its corresponding dependent claims.

Claims 18–29
Appellant contends that the combination of Narita and Vaughan fails
to teach or suggest “displaying . . . a second application having a curved
boundary line on a designated radius from a specific position on the first
application . . . wherein the curved boundary line overall has only a singular

3 We take no position on whether claim 15 invokes 35 U.S.C. § 112(f).
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partial circular shape which has a singular constant radius from the specific
position on the first application,” as recited in claim 18. Appeal Br. 16–17;
Reply Br. 4–6. The Examiner finds “Vaughan discloses a curved boundary
line for applications,” although Vaughan does not specifically disclose “only
a singular partial circular shape.” Final Act. 26. Rather, the Examiner relies
on design choice to supply the missing limitation:
It would have been obvious to try for one skilled in the
art before the effective filing date of the current application to
enable Vaughan curved boundary to comprise only a singular
partial circular shape instead of a plurality of partial circular
shapes yielding the predictable results of design preference
effecting aesthetics only and having no bearing to the operation
of the current invention.
Id. at 27 (emphasis added).
Appellant explains that the claimed language derives from the
Specification’s description of Figure 8B, reproduced below. Appeal Br. 16
(citing ¶ 162 of the published application).

Figure 8B “illustrates the shape of a widget of a sub application drawn on
the right side of a navigation application in which an icon representing the
position of the user’s own vehicle is displayed at the center.” Spec. 26–27.
Appellant also relies on a passage in the Specification, which describes
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Figure 8B as depicting a widget that “has a shape of which a part forms a
part of a circle on the side that is not in contact with the side face of the
screen. This ‘side’ forms a circle having a constant radius from a position
located near the center of the screen.” Spec. 55, cited in Appeal Br. 16 (as
¶ 162 of the published application). In view of this disclosure and the
disputed claim language, Appellant contends the claim provides a “technical
effect of the user’s constant acquisition of neighboring information (e.g.,
roads, traffic congestion, facilities) within a certain range from the position
(e.g., the constant radius feature) of the user’s own vehicle.” Appeal Br. 16–
17. As such, Appellant contends the claim does not recite “merely an
aesthetics only design choice.” Id. at 17.
In the Answer, the Examiner finds that “applicant argues intended use
and limitations which are not claimed.” Ans. 6. The Examiner further finds
that the claim refers to “an aesthetic border.” Id. Referring to Figure 8B of
the Specification, relied upon by Appellant, the Examiner finds,
“[t]echnically the widget border comprises a plurality of partial circular
shapes such as the example of three shown below:”

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Ans. 6–7. The above Figure 8B is annotated by the Examiner to depict
“‘specific positions’ . . . each at the center of one of the three circles
depicted above wherein each of which his in some unclaimed manner ‘based
on a user’s first type touch swiping operation.’” Id. at 7. The Examiner also
annotates Figure 9 of Vaughan (below) to show alleged similarity with the
Examiner’s annotations of Appellant’s Figure 8B:

Id. at 7–8. Figure 9 above illustrates a schematic display of a frame,
annotated by the Examiner to depict “curved circles,” so as to allegedly
show that “Vaughan discloses a border with a plurality of partial curved
components/circles.” Id. at 8; Vaughan ¶ 17. The Examiner summarizes,
“[t]his interpretation is further supported in view of the obviousness rational
rejection wherein only a single curve throughout the entire border is found to
be obvious without any experimentation to perform such yielding no bearing
to the current application from the aesthetics only design.” Id.
Referring to the Examiner’s annotated Vaughan Figure 9 in its Reply,
Appellant contends that “the Examiner has ignored the limitation of
‘wherein the specific position on the first application represents the current
user’s position.’” Reply Br. 5. Thus, Appellant contends, “it is clear that
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[the Examiner’s added circles in Figure 9 of Vaughan] cannot be considered
in this regard.” Id.
The Board has instructed, “[w]e discourage examiners from relying on
‘design choice’ because it is generally a mere conclusion, which is no
substitute for obviousness reasoning based on factual evidence.” Ex parte
Maeda, Appeal No. 2010-009814, 6 (PTAB Oct. 23, 2012) (informative).
“Nonetheless, ‘design choice’ may be appropriate where the applicant fails
to set forth any reasons why the differences between the claimed invention
and the prior art would result in a different function or give unexpected
results.” Id. at 6–7. Here, Appellant explains there is a functional difference
between what is claimed and the prior art. Appeal Br. 16–17; Reply Br. 4–6.
Unlike Vaughan, which focuses on the aesthetics of a frame (disclosing an
“irregular frame [or] any other suitable approach for providing a visually
pleasing frame,” Vaughan ¶ 65), Appellant’s claimed “curved boundary
line” has a constant radius from a “specific position” that “represents the
current user’s position” on the display. We agree with Appellant that the
claim recites a functional improvement (Appellant’s “technical effect”). Id.
Contrary to the Examiner’s findings (Ans. 6–9), Appellant’s reference to the
Specification does not improperly import limitations into the claim because
Appellant merely uses the Specification to rebut the Examiner’s finding that
the purpose of the claimed curve is aesthetic (Appeal Br. 16–17).
As we agree with Appellant that the claimed limitation, “wherein the
curved boundary line overall has only a singular partial circular shape which
has a singular constant radius from the specific position on the first
application,” would result in a different function from the prior art, we do
not sustain the Examiner’s design choice-based obviousness rejection of
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claim 18 and its dependent claims. Each of claims 22 and 26 recites similar
language to the above-quoted limitation of claim 1. Accordingly, we also do
not sustain the Examiner’s rejections of claims 22 and 26 and their
corresponding dependent claims.
We do not reach Appellant’s further allegations of error with respect
to these claims because we find the issue discussed above to be dispositive
of the rejection of these claims.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 5 103 Takikawa,
Ricci,
Nakashima
1, 5
2–4, 6–8 103 Takikawa,
Ricci,
Nakashima,
Narita
2–4, 6–8
9–14 103 Narita,
Ishihara
9–14
15 102(a)(2) Narita 15
16–17 103 Narita,
Chaudhri
16–17
18–29 103 Narita,
Vaughan
18–29
1–8 112(b) Indefiniteness 1–8
Overall
Outcome
9–14 1–8, 15–
29
1–8

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Section 41.50(b) provides “[a] new ground of rejection 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 MPEP § 1214.01.
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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 IN PART