Ex Parte Furuta et al

Patent Trial and Appeal Board

Feb 14, 2018

12856865 (P.T.A.B. Feb. 14, 2018)

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.
12/856,865 08/16/2010 Norikatsu Furuta MEN-723-2880 2972
27562 7590 02/16/2018
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PAGE, EVAN RANDALL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/16/2018 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
Ex parte NORIKATSU FURUTA, MAKOTO YOSHIZAWA,
TOMOYUKI YAMBE, and NORIHIRO SUGITA
Appeal 2016-002160
Application 12/856,865
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants1 filed a Request for Rehearing (“Request) on January 15,
2018, of our Decision (“Decision”) mailed November 14, 2017. In the
Decision, although we reversed the Examiner’s rejection of the claims under
35 U.S.C. § 103(a), we affirmed the Examiner’s rejection of claims 1—8
and 17—27 under 35 U.S.C. § 101 as reciting patent-ineligible subject matter.
See, e.g., Decision 5.
1 Appellants identify the real party in interest as Nintendo Co., Ltd. Appeal
Br. 3.
Appeal 2016-002160
Application 12/856,865
In accordance with 37 C.F.R. § 41.52(a)(1), the Request for Rehearing
includes certain points, in particular, which Appellants believe the Board
misapprehended or overlooked in reaching its Decision to affirm the
Examiner’s Section 101 rejection. See Request 1—6. For the following
reasons, we deny Appellants’ Request, except to the extent necessary to
consider the Request. Therefore, we do not modify the portion of our
Decision affirming the Section 101 rejection of claims 1—8 and 17—27.2
ANALYSIS
Independent claim 1 recites the following:
1. A computer-readable non-transitory storage
medium having stored thereon an information processing
program executed by a computer of an information processing
apparatus, the information processing program causing the
computer to perform:
a first object enlarging or reducing process that repeatedly
performs alternate enlargements and reductions of a first object
defining a circular path;
a second object moving process that causes a second
object to be situated at a predetermined position on the first
object at the beginning of the repeated enlargement or reduction
of the first object, causes the second object to move on a
predetermined path during the repeated enlargement or reduction
of the first object, and causes the seconds object to return to be
situated at the predetermined position at the end of the repeated
enlargement or reduction of the first object; and
a path determination process that determines the
predetermined path such that the second object moves on the
2 We also do not modify the portion of our Decision reversing the
Examiner’s obviousness rejection of claims 1—8 and 17—27. See, e.g.,
Decision 7.
2
Appeal 2016-002160
Application 12/856,865
circular path defined by the first object while the diameter of the
circular path alternately enlarges and reduces.
Appellants argue that our Decision errs in characterizing the
above claimed processes as “nothing more than the display of shapes
(i.e., the outputting of data).” Request 2 (quoting Decision 4). Based
on our review, we disagree with Appellants.
Although the claimed processes recite shapes that appear to move and
change size to represent certain data or changes in the data, the claimed
processes still are nothing more than the display of shapes representing data.
For example, with respect to claim 1, the claimed “first object enlarging or
reducing process” is the display of a shape (i.e., the claimed “first object”)
appearing to travel in a circular path, while appearing to enlarge and reduce
in size. Each of the differently-sized and differently-located first objects is
nothing more than the display of a particular shape, with a particular size,
and at a particular location. As Appellants explain in their Specification, the
first object, its apparent movement, and its apparent change in size are
representative of inspiration and expiration periods. See, e.g., Specification
1 6; see also Request 3^4. Thus, the fact that this shape and the other shapes
recited in claim 1 appear to change size and move does not negate our
conclusion that nothing more than shapes, representative of data, are being
displayed by each of the claimed processes. Conversely, Appellants’ do not
establish persuasively that any of the claimed processes are anything more
than the display of shapes.
Appellants cite Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Request 2. In Enfish, “the claims . . . [were] directed to a
specific improvement to computer functionality.” Enfish, 822 F.3d at 1336.
However, Appellants’ claim 1 offers no such improvement in computer
3
Appeal 2016-002160
Application 12/856,865
functionality, but, instead, at most provides an improved respiratory
instruction program that is executed by computer hardware, which is used as
a tool in its ordinary capacity.
Appellants also cite McRO, Inc. v. Bandai Namco Games America,
Inc., 837 F.3d 1299 (Fed. Cir. 2016). Request 2. In McRO, the Court
warned that we ‘“must be careful to avoid oversimplifying the claims’ by
looking at them generally and failing to account for the specific
requirements of the claims .... [We] must look to the claims as an ordered
combination, without ignoring the requirements of the individual steps.”
McRO, 837 F.3d at 1313 (citations omitted). In this case, our analysis was
based on the specific recitations of claim 1, and none of Appellants’ claimed
processes that are recited in the claim are anything other than an abstract
idea—i.e., the display of shapes representing data. See, e.g., Decision 3—5.
Appellants further cite Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299 (Fed. Cir. 2018). Request 1, 2-4. In Finjan, the claimed method
“scans a downloadable and attaches the virus scan results to the
downloadable in the form of a newly generated file.” Finjan, 879 F.3d
at 1304. Thus, Finjan’s and Appellants’ claims differ from one another,
inasmuch as Appellants’ claim 1 does not scan a downloadable, or attach a
file providing scanning results to a downloadable. Additionally, the Court
determined that Finjan’s claimed method “constitute [d] an improvement in
computer functionality.” Id. As discussed above, however, we determine
that Appellants’ claim 1 does not offer an improvement in computer
functionality, but, instead, at most provides a respiratory instruction program
that is executed by computer hardware that is used as a tool in its ordinary
capacity.
4
Appeal 2016-002160
Application 12/856,865
DECISION
Based on the foregoing, we deny Appellants’ Request for Rehearing,
except to the extent necessary to consider the Request. As a result, we
decline to modify the portion of our Decision affirming the rejection of
claims 1—8 and 17—27 under 35 U.S.C. § 101.
DENIED
5