HONDA MOTOR CO., LTD.Download PDFPatent Trials and Appeals BoardNov 3, 20202019002178 (P.T.A.B. Nov. 3, 2020) 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. 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. Appeal 2019-002178 Application 14/897,508 2 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. Appeal 2019-002178 Application 14/897,508 3 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). Appeal 2019-002178 Application 14/897,508 4 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 Appeal 2019-002178 Application 14/897,508 5 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. Appeal 2019-002178 Application 14/897,508 6 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: Appeal 2019-002178 Application 14/897,508 7 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 Appeal 2019-002178 Application 14/897,508 8 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 Appeal 2019-002178 Application 14/897,508 9 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 Appeal 2019-002178 Application 14/897,508 10 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). Appeal 2019-002178 Application 14/897,508 11 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 Appeal 2019-002178 Application 14/897,508 12 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:” Appeal 2019-002178 Application 14/897,508 13 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 Appeal 2019-002178 Application 14/897,508 14 [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 Appeal 2019-002178 Application 14/897,508 15 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 Appeal 2019-002178 Application 14/897,508 16 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. Appeal 2019-002178 Application 14/897,508 17 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 Copy with citationCopy as parenthetical citation