Ex Parte Umezu et al

Patent Trial and Appeal Board

Feb 24, 2017

13049581 (P.T.A.B. Feb. 24, 2017)

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.
13/049,581 03/16/2011 Ryuji UMEZU AC-723-3031 1953
27562 7590 02/28/2017
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HE, WEIMING
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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 RYUJIUMEZU, HIDEKI KONNO, KENICHI SUGINO, and
YUSUKE AKIFUSA
Appeal 2016-007833
Application 13/049,581
Technology Center 2600
Before LARRY J. HUME, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—30 and 32-41, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
The disclosed and claimed inventions relate to hand-held electronic
devices. See generally Spec. 1.
Claim 1 is exemplary:
Appeal 2006-007833
Application 13/049,581
1. A hand-held electronic device comprising:
a first housing and a second housing that are configured so as to be
foldable with respect to each other;
a stereoscopic display that is integrated into the first housing and
configured to display an image which is stereoscopically visible;
a parallax adjustment portion disposed on either the first or second
housing, the parallax adjustment portion physically movable between at least
first and second positions so as to adjust a parallax of the stereoscopic
display in accordance therewith; and
a processing system that includes at least one processor, the
processing system configured to:
adjust a distance between two virtual cameras, which are located in a
virtual space, in accordance with position of the physically moveable
parallax adjustment portion; and
switch the stereoscopic display to a non-stereoscopic display mode in
response to determining the parallax adjustment portion is at the second
position.
References and Rejections
Claim 1—12, 14, 15, 22, 23, 29—30, 32, 38, 39, and 41 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Nagamine (US
2003/0203747 Al; Oct. 30, 2003), Mashitani (US 2005/0089212 Al; Apr.
28, 2005), Uomori (US 6,175,379 Bl; Jan. 16, 2001), and Raghunath (US
2007/0113228 Al; May 17, 2007).
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Appeal 2006-007833
Application 13/049,581
Claim 13, 16—21, and 24—28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nagamine, Mashitani, Uomori, Raghunath, and
Kuwahara (US 2009/0278764 Al; Nov. 12, 2009).
Claims 33—35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuwahara, Mashitani, Uomori, and Raghunath.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in determining Nagamine, Mashitani,
Uomori, and Raghunath collectively teaches “a parallax adjustment portion
disposed on either the first or second housing, the parallax adjustment
portion physically movable between at least first and second positions so as
to adjust a parallax of the stereoscopic display in accordance therewith . . .
switch the stereoscopic display to a non-stereoscopic display mode in
response to determining the parallax adjustment portion is at the second
position,” as recited in independent claim 1 (emphasis added).1 See App. Br.
12—19; Reply Br. 2-4.
In rejecting claim 1, the Examiner cites Nagamine as the primary
reference, and modifies Nagamine’s device to incorporate the teachings of
Mashitani, Uomori, and Raghunath. See Final Act. 4—7. With respect to the
“physically movable” feature, the Examiner finds:
Raghunath further teaches the interchange between the
physical switch and software control switch. Raghunath
discloses, in [0018], “Instead of a physical hardware switch, if
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
3
Appeal 2006-007833
Application 13/049,581
the mobile device that performs the PSD’s native function, has
its own base functionality and therefore has user interface
controls, the hardware switch 106 can simply be a selection
from a menu using the UI controls”. Thus, it have been obvious
to one of ordinary skill in the art at the time of the invention to
replace physical hardware switch with the software control
switch in GUI to obtain a device with a small display screen,
like mobile phone etc.
Final Act. 7 (emphasis added; original emphasis omitted).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see
also Metalcraft Of Mayville, Inc., v. The Toro Company, No. 2016-2433,
2016-2514, 2017 WL 631749, at *4 (Fed. Cir. Feb. 16, 2017). (“Without any
explanation as to how or why the references would be combined to arrive at
the claimed invention, we are left with only hindsight bias that KSR warns
against. ... we cannot allow hindsight bias to be the thread that stitches
together prior art patches into something that is the claimed invention.”).
We agree with Appellants that the Examiner’s above reasoning would
not have resulted in the proposed the combination, as the proposed
combination modifies Nagamine’s device to incorporate Raghunath’s
teaching of a “physically movable” switch. See App. Br. 18—19. In contrast,
the Examiner’s reasoning would have achieved the opposite result of
replacing a physical movable switch with a software control switch. See
App. Br. 18—19. Therefore, the Examiner has not provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,” as required by KSR. KSR, 550 U.S. at 418.
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Appeal 2006-007833
Application 13/049,581
In response to Appellants’ arguments, the Examiner does not provide
a new reasoning to support the legal conclusion of obviousness.
Because the Examiner fails to provide sufficient support for the legal
conclusion of obviousness, we are constrained by the record and the
controlling law to reverse the Examiner’s rejection of claim l.2
For each of independent claims 29, 30, 33, and 35, the Examiner cites
the same reasoning (discussed above for claim 1) for the legal conclusion of
obviousness. See Final Act. 15, 18, 29, 32. Therefore, for similar reasons,
we are constrained by the record to reverse the Examiner’s rejection of
independent claims 29, 30, 33, and 35.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2—28, 32, 34, and 36-41.
DECISION
We reverse the Examiner’s decision rejecting claims 1—30 and 32—41.
REVERSED
2 In the event of further prosection or review for allowance, we recommend
the Examiner consider adding an articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness for the
proposed combination. We note the Examiner finds—and Appellants do not
dispute—Raghunath teaches a “physically movable” switch. See Final
Act. 7.
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