Ex Parte Homma et alDownload PDFPatent Trial and Appeal BoardSep 20, 201612858140 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/858,140 08/17/2010 60803 7590 Paratus Law Group, PLLC 620 Herndon Parkway Suite 320 Herndon, VA 20170 09/21/2016 FIRST NAMED INVENTOR Fuminori Homma 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. 1946-0127 5271 EXAMINER OLIVER, GERALD L ART UNIT PAPER NUMBER 2624 MAILDATE DELIVERY MODE 09/21/2016 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 FUMINORI HOMMA and TATSUSHI NASHIDA Appeal2015-005899 Application 12/858,140 Technology Center 2600 Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and JEFFREYS. SMITH, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-005899 Application 12/858,140 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-15, 18, and 19. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claims 1 and 8 under appeal read as follows (emphasis and bracketing added): 1. An operation control device comprising: [(A)] a pressure detecting portion that is provided in a display portion that displays an input area in which character information is input, the pressure detecting portion detecting pressure with which an operation body depresses a display surface of the display portion to operate the input area; and [(B)] an operation control portion that switches an input mode of the character information based on a change in the pressure detected by the pressure detecting portion; [(C)] wherein the operation control portion determines an input of the character information that is selected by operation of the operation body that is in contact with the display surface, when it is detected that the pressure detected by the pressure detecting portion has decreased by greater than or equal to a predetermined percentage within a predetermined time period, [(D)] wherein subsequently, the operation control portion switches the input mode of the character information based on the change in the pressure detected by the pressure detecting portion and on the character information that is determined to be input, [ (E)] wherein, after switching the input mode of the character information, a navigation through a list of selectable characters is controlled by varying the pressure with which the operation body depresses the display surface while maintaining the contact of the operation body with the display surface, and 2 Appeal2015-005899 Application 12/858,140 [ ( F)] wherein the contact of the operation body is maintained with the display surface during a whole time period beginning from the determination of the character information to be input, through the navigation through the list of selectable characters. 8. A computer program that comprises instructions that command a computer to function as an operation control device compnsmg: [(A)] a pressure detecting device that detects pressure with which an operation body depresses a display surface of a display portion that displays an input area in which character information is input, the operation body operating the input area; and [(B)] an operation control device that switches an input mode of the character information based on a change in the pressure detected by the pressure detecting device; [(C)] wherein the operation control device determines an input of the character information that is selected by operation of the operation body that is in contact with the display surface, when it is detected that the pressure detected by the pressure detecting device has decreased by greater than or equal to a predetermined percentage \~1ithin a predetermined time period, [(D)] wherein, subsequently, the operation control device switches the input mode of the character information based on a change in the pressure detected by the pressure detecting device and on the character information that is determined to be input, [(E)] wherein, after switching the input mode of the character information, a navigation through a list of selectable characters is controlled by varying the pressure with which the operation body depresses the display surface while maintaining the contact of the operation body with the display surface, and [ (F)] wherein the contact of the operation body is maintained with the display surface during a whole time period beginning from the determination of the character information to be input, through the navigation through the list of selectable characters. 3 Appeal2015-005899 Application 12/858,140 Rejections on Appeal 1. The Examiner rejected claims 1, 2, and 6-14, as being unpatentable under 35 U.S.C. § 103(a) over the combination of Sadler et al. (US 2009/0046110 Al; published Feb. 19, 2009) and Kim et al. (US 2010/0017710 Al; published Jan. 21, 2010). 1 2. The Examiner rejected claims 3 and 4 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Sadler, Kim, and Raguseo (US 2007/0296615 Al; Dec. 27, 2007). The Examiner rejected claims 5, 15, 18, and 19 as being unpatentab le under 35 U.S.C. § 103(a) over the combination of Sadler, Kim, and Lee (US 6,686,902 B2; issued Feb. 3, 2004).2 Appellants' Contention3 Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: 1\.Jm does not cons10er, in the senmg of the function (i.e., mode), a character information that has already been previously determined to be input by having been selected by the operation of the operation body upon the display surface 1 As to this rejection, claim 1 is argued separately. Separate patentability is not argued for claims 2 and 6-14. Except for our ultimate decision, the Examiner's rejection of these claims is not discussed further herein. 2 As to the rejections of claims 3-5, 15, 18, and 19, Appellants merely recite the language of a particular claim and assert the cited prior art reference does not teach or suggest the claim limitation. Without more, this fails to constitute an argument on the merits. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Except for our ultimate decision, these claims are not discussed further herein. 3 This contention is determinative as to the rejections on appeal. Therefore, Appellants' other contentions are not discussed herein. 4 Appeal2015-005899 Application 12/858,140 .... Instead, Kim makes a selection merely based on a presently input criteria (not related to selection by meeting the condition of decreased detected pressure) that is being made by an initially-performed touch upon the touch screen 160. App. Br. 16. Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious because the cited references fail to describe the argued limitation? ANALYSIS As to the Appellants' above contention, we agree. At lines 7-11 of page 6 of the Final Action, the Examiner relied upon Kim to teach the claim limitation "[based] ... on the character information that is determined to be input." The above contention challenges that finding by the Examiner. At page 4 of the Answer, the Examiner restates this above portion of the Final Action without repeating the argued limitation. Rather, the Examiner substitutes "and in which the navigation through the list of selectable characters is controlled by varying the pressure with which the operation body depresses the display surface." We fail to see how the Examiner's response particularly addresses Appellants' argument. NEW GROUNDS OF REJECTION We reject claims 8, 11, and 14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. These claims are directed to information in the form of a "computer program" in the abstract without hardware and as such is not directed to one 5 Appeal2015-005899 Application 12/858,140 of the statutory categories of 35 U.S.C. § 101. See MPEP 2106; Ninth Edition (Nov. 2015). These claims "are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system. The claims are instead directed to information in its non-tangible form." Digitech Image Tech., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1349 (Fed. Cir. 2014). As with the claims in Digitech, we conclude the scope of claims 8, 11, and 14 includes subject matter that does not fall within any of the categories of eligible subject matter. Appellants' attention is also directed to 13 51 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Subject Matter Eligibility of Computer Readable Media. Claim 8 recites the computer program "comprises instructions that command a computer to function as an operation control device comprising: a pressure detecting device ... and an operation control device ... " (emphasis added). However, the computer, pressure detecting device, and operation control device are not hardware structures in claim 8, but rather describe the result when the instructions of the computer program are implemented in a computer at some later time. That is, the pressure detecting device and operation control device exist only at the time the computer program is executing. 37 C.F.R. § 41.50(b) This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 6 Appeal2015-005899 Application 12/858,140 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record .... CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1-15, 18, and 19 as being unpatentable under 35 U.S.C. § 103(a). (2) We reject claims 8, 11, and 14 as being unpatentable under 35 U.S.C. § 101. (3) On this record, claims 1-7, 9, 10, 12, 13, 15, 18, and 19 have not been shown to be unpatentable. ( 4) Claims 8, 11, and 14 are not patentable. 7 Appeal2015-005899 Application 12/858,140 DECISION The Examiner's rejections of claims 1-15, 18, and 19 are reversed. Claims 8, 11, and 14 are newly rejected. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation