Ex Parte Kitase et al

Patent Trial and Appeal Board

May 25, 2016

13052568 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/052,568 03/21/2011
27562 7590 05/27/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Hirotake KITASE
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.
MEN-723-3026 6708
EXAMINER
BIRKHIMER, CHRISTOPHER D
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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 HIROT AKE KIT ASE and YO I CHI OSHIMA
Appeal2014-007413
Application 13/052,568
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-19 and 21-26. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Nintendo Co., Ltd.
(App. Br. 3.)
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Application 13/052,568
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
1. An information processing apparatus, comprising:
a step count detector configured to detect step counts;
a step count storage configured to store step count data
corresponding to the step counts detected by said step count
detector in a first memory; and
a saver configured to automatically read the step count
data stored in said first memory at a predetermined timing and
configured to save the same in a second memory different from
said first memory, said first memory and said second memory are
provided inside a same housing of the information processing
apparatus.
REJECTIONS
The Examiner made the following rejections:
Claims 1, 10, 11, 13-19, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bozzone (US 2005/0033515 Al;
published Feb. 10, 2005) and Kim (US 2008/0162814 Al; published July 3,
2008). (Final Act. 2-11.)
Claim 2-9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bozzone, Kim, and Sony Ericsson (Sony Ericsson W7 l Oi
Manual (2006)). (Id. at 11-14.)
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bozzone, Kim, and Diehl (US 7,631, 139 B2; issued Dec.
8, 2009). (Id. at 14--15.)
Claims 21-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bozzone, Kim, and Webopedia NAND (Webopedia,
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NAND (Dec. 18, 2004),
http:! /web.archive.org/web/20041218033437 /http://webopedia.com/TERM/
N/NAND.html). (Id. at 15-19.)
ISSUES
Did the Examiner err by finding Bozzone teaches or suggests "step
count data corresponding to the step counts ... automatically read the step
count data ... [and] save the same in a second memory," as recited in
independent claims 1 and 16-19?
Did the Examiner improperly combine Bozzone and Kim?
Did the Examiner err by finding the combination of Bozzone and Kim
teaches or suggests "read the step count data ... and save the same in the
second memory during a stop," as recited in claims 18 and 19?
Did the Examiner err by finding Bozzone teaches or suggests reading
a step count at a predetermined timing where the "predetermined timing is
every lapse of a predetermined time," as recited in claim 1 O?
Did the Examiner err by finding Bozzone teaches or suggests "a
second mode for executing a program for another information processing
apparatus" and "not sav[ing] the step count data stored in said first memory
in said second memory in said second mode," as recited in claim 14?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the Final Action (Final Act. 2-21) from which this appeal is
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taken and the findings and reasons set forth in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 4--10). We highlight and address
specific findings and arguments for emphasis as follows.
Independent Claims 1 and 16--19
"step count data " (cl aims 1 and 16--19)
Appellants contend Bozzone does not teach or suggest "step count
data corresponding to the step counts ... automatically read the step count
data ... [and] save the same in a second memory," as recited in independent
claims 1 and 16-19. (App. Br. 11-15; Reply Br. 2-3, 5.) Specifically,
Appellants argue although Bozzone teaches saving position information
"derived, in part, using step count data," the position data is not "step count
data itself (e.g., the number of measured steps a user has walked)." (Reply
Br. 2-3 (emphasis omitted); App. Br. 12-14.)
We are not persuaded because Appellants' argument is not
commensurate in scope with the claims. "Step count data" is not expressly
defined in the Specification. Further, the claims recite "step count data
corresponding to the step counts," but do not specify how step count data
corresponds to step counts. In particular, the claims do not limit step count
data to the actual "number of measured steps a user has walked," as
Appellants argue (Reply Br. 3).
The Examiner finds, and we agree, Bozzone teaches a pedometer
which counts steps. (Ans. 4--5 (citing Bozzone i-fi-131-32).) Using the
pedometer's counted steps, position information is calculated and
transmitted to a server for storage in the server's memory. (Id.) We agree
with the Examiner's finding that this position data corresponds to step count
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data because the position data is calculated using (and thus, corresponds to)
counted steps. (Ans. 4--5 (citing Bozzone i-fi-131-32).) Accordingly, we are
not persuaded the Examiner erred in finding Bozzone teaches or suggests
"step count data corresponding to the step counts ... automatically read the
step count data ... [and] save the same in a second memory," within the
meaning of claims 1 and 16-19.
Intended Purpose (claims 1and16--19)
Appellants contend the combination of Bozzone and Kim is improper
because the modification would "render Bozzone unsatisfactory for its
intended purposes." (App. Br. 14--15; Reply Br. 4--5.) Specifically,
Appellants argue the combination "move[s] the 'second memory' from the
server in Bozzone into the portable device" and doing so would "result in a
system that lacks a remote 'back-up' in order to store information related to
a user's position and attempt to then locate the user." (Reply Br. 4; App. Br.
14.)
We are not persuaded. As discussed supra, Bozzone teaches counting
steps using a pedometer and calculating position information using the
counted steps. (Bozzone i-fi-131-32.) That position information is calculated
and stored in the memory of a pedometer. (Id.) The Examiner finds, and we
agree, Kim teaches a device which transfers data from a first volatile
memory to a second non-volatile memory when powering down. (Final Act.
3 (citing Kim i-fi-f 12, 42, Fig. 1); Ans. 5---6.) The Examiner combines
Bozzone and Kim by incorporating Kim's non-volatile second memory into
Bozzone's pedometer, resulting in a pedometer which saves position
information in non-volatile memory in the event of a system shutdown.
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(Ans. 5---6; Final Act. 3.) Accordingly, we are not persuaded the
combination of Bozzone and Kim renders Bozzone unsatisfactory for its
intended purpose.
"during a stop" (claims 18 and 19)
Appellants contend Bozzone does not teach or suggest "read the step
count data ... and save the same in the second memory during a stop," as
recited in claims 18 and 19. (App. Br. 15-16; Reply Br. 5---6.) Specifically,
Appellants argue Bozzone does not teach or suggest "writing to a second
memory during a shutdown (or device stop) sequence." (App. Br. 15; Reply
Br. 5---6.)
We are not persuaded. The Examiner finds, and we agree, Kim
teaches storing data from a first volatile memory to a second non-volatile
memory during device shutdown. (Final Act. 8-9 (citing Kim i-fi-f 12, 42,
Figs. 1, 3--4, 6); Ans. 7.) The Examiner combines Bozzone and Kim,
resulting in a system which copies step count data from volatile memory into
non-volatile memory during device shutdown. (Ans. 7-8; Final Act. 8-9.)
Appellants' arguments against Bozzone individually are not
persuasive because the Examiner's rejection is based on the combination of
Bozzone and Kim. Accordingly, we are not persuaded the combination of
Bozzone and Kim fails to teach or suggest "read the step count data ... and
save the same in the second memory during a stop," as recited in claims 18
and 19.
For the reasons discussed above, we sustain the Examiner's decision
to reject claims 1 and 16-19.
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Dependent Claim 10
Appellants contend Bozzone does not teach reading step count data at
a predetermined timing where the "predetermined timing is every lapse of a
predetermined time," as recited in claim 10. (App. Br. 16-17; Reply Br. 6-
7.) Specifically, Appellants argue Bozzone discloses "periodically
generating a position request" but "the requested periodic polling" does not
occur at every lapse of a predetermined time. (App. Br. 16-17; Reply Br. 6-
7.)
We are not persuaded. The Examiner finds, and we agree, Bozzone
sends position information to its server "automatically within a prescribed
time limit." (Ans. 9 (citing Bozzone i-f 26).)
We disagree with Appellants' arguments that Bozzone' s "periodic"
position information transmittal would not at least suggest to one of ordinary
skill in the art, transmitting position information at every predetermined
interval of time. Bozzone "automatically" transmits position information at
certain times (Bozzone i-f 26); Appellants do not persuasively show that
repeating that process and transmitting position information at every
predetermined interval of time would have been "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we are not persuaded
Bozzone fails to teach or suggest reading step count data at a predetermined
timing where the "predetermined timing is every lapse of a predetermined
time," as recited in claim 10.
For the reasons discussed above, we sustain the Examiner's decision
to reject claim 10.
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Dependent Claim 14
Appellants contend Bozzone does not teach "a second mode for
executing a program for another information processing apparatus" and "not
sav[ing] the step count data stored in said first memory in said second
memory in said second mode," as recited in claim 14. (App. Br. 17-18;
Reply Br. 7-8.) Specifically, Appellants argue "Bozzone's user-worn
device is not executing a program for another information processing
apparatus." (App. Br. 17 (emphasis omitted); Reply Br. 7.) Appellants
further argue Bozzone does not "forego saving step count data." (App. Br.
17 (emphasis omitted); Reply Br. 8.)
We are not persuaded. The Examiner finds, and we agree, that
Bozzone' s system discloses separate devices performing different functions,
i.e., modes. (Ans. 9-10 (citing Bozzone Fig. 3).) In particular, the
Examiner finds (see id.) Bozzone teaches a pedometer device collecting user
steps to determine position information (Bozzone i-f 31) and a separate
wireless communication device which transmits position information to a
server (id. at i-f 26).
We disagree with Appellants' argument that Bozzone' s transmission
of position information does not teach or suggest another device operating in
a second mode (Reply Br. 7; App. Br. 17-18) because Bozzone's wireless
communication device, which transmits position information, is a separate
device from Bozzone' s pedometer, which collects and determines position
information (Bozzone i-f 26, Fig. 3). Further, the wireless communication
device does not save position information in a second memory; rather, it is a
conduit transmitting position information. (See id.) Accordingly, we are not
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persuaded the Examiner erred by finding Bozzone teaches or suggests "a
second mode for executing a program for another information processing
apparatus" and "not sav[ing] the step count data stored in said first memory
in said second memory in said second mode," as recited in claim 14.
For the reasons discussed above, we sustain the Examiner's decision
to reject claim 14.
Claims 2-9, 11-13, 15, and 21-26
Appellants do not argue separate patentability for dependent claims 2-
9, 11-13, 15, and 21-26 which depend directly or indirectly from claims 1
or 16-19. (See App. Br. 11-18.) For the reasons set forth above, therefore,
we are not persuaded the Examiner erred in rejecting these claims.
Accordingly, we sustain the Examiner's rejections of claims 2-9, 11-13, 15,
and 21-26. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, the Examiner's decision to reject claims 1-19
and 21-26 is affirmed.
In the event of further prosecution, including any review for
allowance, the Examiner should consider whether claim 14 is indefinite
under section 112, second paragraph. Claim 14 recites a mode switcher, but
only a single mode on each of two information processing apparatuses.
Thus, it is potentially unclear what the mode switcher is configured to
switch.
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) (2009).
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AFFIRMED
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