12855339 (P.T.A.B. Jun. 6, 2016)

Ex Parte OHKI

Patent Trial and Appeal BoardJun 6, 2016

12855339 (P.T.A.B. Jun. 6, 2016)

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. 12/855,339 08/12/2010 Yoshihito OHKI 1946-0119 9690 60803 7590 06/06/2016 Paratus Law Group, PLLC 620 Herndon Parkway Suite 320 Herndon, VA 20170 EXAMINER AKHTER, SHARMIN ART UNIT PAPER NUMBER 2682 MAIL DATE DELIVERY MODE 06/06/2016 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 YOSHIHITO OHKI ____________ Appeal 2015-000494 Application 12/855,339 Technology Center 2600 ____________ Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and GARTH D. BAER, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-000494 Application 12/855,339 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows (emphasis added): 1. A user interface apparatus, comprising: a mobile display unit comprising an object display area, wherein: the mobile display unit displaying a remote controller virtual object in the remote controller virtual object display area, the remote controller virtual object comprises a plurality of control keys associated with different user interface functions for controlling a separate stationary display unit by the user pressing the plurality of control keys on the mobile display unit; a detection area control unit that: defines a detection area for the remote controller virtual object, wherein the detection area including the remote controller virtual object display area having a size and a location; and changes both the size and the location of the detection area to create a modified detection area, wherein the modified detection area enlarges and redistributes the plurality of control keys of the remote controller virtual object such that a user can control the stationary display unit by manipulating the plurality of enlarged and redistributed control keys on the mobile display unit with minimized user input error while the user is concurrent viewing the both the remote controller virtual object on the mobile display unit Appeal 2015-000494 Application 12/855,339 3 and associated content output on the stationary display unit; and an activation detection unit that detects a position of a user activation; wherein the detection area control unit changes the detection area after the activation detection unit detects the activation position as being within the detection area: and wherein both the size and location of the detection area are changed based on a location of the activation position within the detection area. Rejections on Appeal 1. The Examiner rejected claims 1–4, 7–8, 11–12, 14, 17–19, and 21– 22 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Casparian (US 2009/0183098 A1; July 16, 2009) and Kim (US 2009/0237359 A1; Sept. 24, 2009).1 2. The Examiner rejected claims 5–6 and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Casparian, Kim, and Figura (US 2009/0319935 A1; Dec. 24, 2009). 3. The Examiner rejected claims 9 and 15 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Casparian, Kim, and Gerpheide (US 6,473,069 B1; Oct. 29, 2002). 4. The Examiner rejected claims 10 and 16 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Casparian, Kim, and Griffin (US 8,139,026 B2; Mar. 20, 2012). 1 Separate patentability is not argued for claims 2–22. See Appeal Br. 13, 17–21. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2015-000494 Application 12/855,339 4 5. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Casparian, Kim, Gerpheide, and Griffin. Appellant’s Contentions 1. Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: The Final Office Action admits . . . that “[Casparian] does not teaches [sic] . . . changes both the size and location of the detection area to create a modified detection area, wherein the modified detection area enlarges and redistributes the plurality of control keys of the remote controller . . .” . . . The Final Office Action cites Figure [3A] through [3E] and paragraphs [0049], [0052], [005], and [0056] of Kim. However, notwithstanding these citations in Kim, there is no disclosure, teaching, or suggestion in Kim of a remote controller, as recited in the claims. … As observed from a review of [Figures 3A through 3E], there is no disclosure, teaching, or suggestion in Figures 3A through 3E of changing “ . . . both the size and the location of the detection area to create a modified detection area, wherein the modified detection area enlarges and redistributes the plurality of control keys of the remote controller.” In fact, there is nothing in Figures 3A through 3E that relates to a “remote controller” that can alleviate the admitted deficiencies of Casparian. Appeal Br. 13–14, emphasis added. Appeal 2015-000494 Application 12/855,339 5 2. In the Reply Brief, further as to above contention 1, Appellant also contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: The Examiner's Answer admits . . . that “Kim reference is used [only] to disclose details on changing both the size and the location of the detection area to create a modified detection area”. Accordingly, the Examiner's Answer admits that Kim is irrelevant in teaching any kind of remote controller and is not analogous prior art to [Casparian]. The Examiner's Answer reiterates that Casparian relates to a remote controller, but has repeatedly admitted (e.g. page 3 of the Final Office Action) that “[Casparian] does not teaches . . . changes both the size and location of the detection area to create a modified detection area, wherein the modified detection area enlarges and redistributes the plurality of control keys of the remote controller . . . “ Since Kim is irrelevant in teaching a remote controller, in the context of this patent application, Kim [cannot reasonably] accommodate for the admitted deficiencies of [Casparian]. Reply Br. 4–5, emphasis added. Issue on Appeal 1. Did the Examiner err in rejecting claim 1 as being unpatentable? PRINCIPLES OF LAW One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination Appeal 2015-000494 Application 12/855,339 6 with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). A prior art reference is analogous to an application if: (1) it is from the same field of endeavor as the application, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, it is nonetheless reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As indicated, these tests are in the alternative, i.e., a finding of either is sufficient. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. Except as noted herein, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which the appeal is taken (Final Act. 2–15); and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 4–7) in response to the Appellant’s Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following. As to Appellant’s above contention 1, we are not persuaded the Examiner erred. We agree with the Examiner that Appellant’s argument misinterprets the Examiner’s rejection, as the Examiner merely took the position that Casparian does not teach changing both the size and location of a detection area to create a modified detection area, where the modified detection area enlarges and redistributes a plurality of control keys of a remote controller virtual object, and did not take the position that Casparian Appeal 2015-000494 Application 12/855,339 7 fails to teach a plurality of control keys of a remote control virtual object. See Ans. 4–5. Thus, Appellant’s argument that Kim does not teach a “remote controller virtual object” does not address the Examiner’s combination of Casparian and Kim, and, instead, attacks the references individually, as the Examiner relied upon Casparian for teaching a “remote controller virtual object.”2 Further, Appellant has not established the Examiner erred in finding the combination of Casparian and Kim teaches all the limitations of claim 1. As to Appellant’s above contention 2, we decline to consider an argument raised for the first time in the Reply Brief. This argument was first set forth in the Reply Brief, and is neither related to the argument in the Appeal Brief (i.e., Appellant’s contention 1) nor responsive to the Examiner’s Answer.3 Thus, as the Examiner has not been provided a chance to respond, and in the absence of a showing of good cause by Appellant, this argument is deemed waived. See 37 C.F.R. § 41.41(b)(2) (“[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown”). Here, 2 Although Appellant argues that Casparian and Kim fail to teach a remote controller (Appeal Br. 13–14), claim 1 actually recites a “remote controller virtual object.” Thus, Appellant’s argument is also not commensurate with the scope of claim 1. 3 Contrary to Appellant’s argument, the Examiner did not admit in the Examiner’s Answer that Casparian and Kim are non-analogous art. See Ans. 4–5. Appeal 2015-000494 Application 12/855,339 8 Appellant has made no such showing. Accordingly, we will not consider this new argument in the Reply Brief.4 Accordingly, we sustain the rejection of claim 1. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1–22 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1–22 are not patentable. DECISION We affirm the Examiner’s rejections of claims 1–22 as being unpatentable under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 4 Assuming arguendo that Appellant had not waived this argument, we would not find this argument persuasive because Casparian and Kim are analogous art, as Casparian and Kim are both in the same field of endeavor as Appellant’s claimed invention (i.e., displaying touchscreen virtual keyboards), and are both relevant to the problem that Appellant’s claimed invention addresses (i.e., providing flexible layout and positioning of displayed virtual keyboards). See, e.g., Casparian ¶¶ 1, 21; Kim ¶¶ 3, 32; see also Spec. ¶¶ 5–6, 20.