Kunihito Sawai et al.

Patent Trials and Appeals Board

Jun 12, 2020

2018007970 (P.T.A.B. Jun. 12, 2020)

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.
14/572,884 12/17/2014 Kunihito Sawai S1459.70692US01 7277
23628 7590 06/12/2020
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
VU, TOAN H
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
06/12/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIHITO SAWAI and KAZUYUKI YAMAMOTO
Appeal 2018-007970
Application 14/572,884
Technology Center 2100
Before JASON V. MORGAN, IRVIN E. BRANCH, and
ADAM J. PYONIN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5, 7–12, and 14–22, which are all of

1 We refer to the Specification, filed December 17, 2014 (“Spec.”); Final
Office Action, mailed June 1, 2017 (“Final Act.”); Appeal Brief, filed
February 8, 2018 (“Appeal Br.”); Examiner’s Answer, mailed June 4, 2018
(“Ans.”); and Reply Brief, filed July 31, 2018 (“Reply Br.”).

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sony Corporation.
Appeal Br. 2.
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Application 14/572,884

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the pending claims. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to operating a GUI (Graphical User Interface)
control apparatus for controlling the GUI in accordance with information
transmitted from the input apparatus, a control system including those
apparatuses, an electronic apparatus, and a control method. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An information processing apparatus comprising:
a processing unit and a memory containing instructions
that, when executed by the processing unit, implement:
an input unit configured to receive a mode selection
input from a user and to receive a movement input based
on movement of the user in three-dimensional space;
a switching unit configured to switch between a
pointing mode and a scroll mode based on the mode
selection input; and
a scroll control unit configured to scroll in a scroll
direction in the scroll mode, wherein the scroll direction is
a horizontal direction based on horizontal hand movement
of the user.
REFERENCES AND REJECTION
Claims 1–5, 7–12, and 14–22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Wroblewski (US 2006/0250358 A1;
Nov. 9, 2006) and Marks (US 2007/0139443 A1; June 21, 2007). Final Act.
2–6.

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ANALYSIS3
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Final Act. 2–6) and (2) the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 2–5)4 and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
35 U.S.C. § 103(a)
The Examiner finds Wroblewski teaches all limitations of claim 1,
except that “Wroblewski does not teach: Wherein the scroll direction is a
horizontal direction based on horizontal hand movement of the user.” Final
Act. 3. The Examiner finds the missing limitation is taught by Marks,
concluding “it would have been obvious to a person having ordinary skill in
the art at the time the invention was made to add the teaching as seen in
Marks’[s] content into Wroblewski’s invention because it would allow user
to use hand gesture to control content.” Id. at 4; see id. at 3 (citing Marks

3 Because Appellant argues all claims based on claim 1 (see Appeal Br. 13),
we review claim 1, and, except for our ultimate Decision, do not mention the
other claim.
4 Because the Examiner’s Answer numbers all pages as “1,” we refer to the
pages as if consecutively numbered. See generally Answer.
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¶ 55 (“Marks [teaches] . . . scrolling in a horizontal direction in response to
the movements of the user’s hand”)).
Appellant does not dispute that the cited references teach or suggest
all elements of claim 1. See generally Appeal Br. and Reply Br. Rather,
Appellant challenges the Examiner’s reasons for combining the references,
arguing “the combination of Wroblewski and Marks is improper because the
combination renders the Wroblewski system unsatisfactory for its intended
purpose, contrary to MPEP §2143.0l(V).” Appeal Br. 11; Reply Br. 2–3.
Appellant contends as follows:
In particular, the Wroblewski system, as modified by Marks,
would perform:
1. control of scrolling by operation of the scroll wheel per
Wroblewski,
2. control of a cursor by hand movement of the pointing
device per Wroblewski, and
3. control of scrolling by recognition of hand movement
in an image of the user per Marks.
Appeal Br. 11.
Appellant contends the combination of Wroblewski and Marks is
improper for the following reasons:
1. Wroblewski already provides a scroll function using the
scroll wheel. Thus, the skilled person would not be
motivated by Marks to provide scrolling by hand
movement in the Wroblewski system, absent an advantage
provided by the Marks scrolling method.
2. Use of the scroll function of Marks in the Wroblewski
system would conflict with the pointer control function of
Wroblewski. Both functions rely on hand movement of
the user. Wroblewski differentiates between modes based
on movement of the pointing device (pointing mode) or
scroll wheel rotation (scroll mode) (Fig. 4 and paragraphs
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0070, 0072 and 0074). In the modified Wroblewski
device, the mode would be indeterminate based on user
movement.
3. Use of the scroll function of Marks in the Wroblewski
system would result in redundancy with the scroll wheel
of Wroblewski. In particular, the modified Wroblewski
system would have redundant scroll functions, in which
scrolling would be provided both by hand movement of
the user and by operation of the scroll wheel.
4. Use of the scroll function of Marks in the Wroblewski
pointing device would require addition to the Wroblewski
system of a camera and image processing software to
provide a scroll function, even though the scroll function
is already present in the Wroblewski system.
Id. at 12 (emphasis omitted); see Reply Br. 2–3.
We are unpersuaded of error. Initially, Appellant’s description of the
structure that would result from the combination of Wroblewski and Marks
amounts to a “bodily incorporation” of Marks’s structure into Wroblewski.
See Appeal Br. 11. This premise, however, undermines Appellant’s ensuing
arguments because “[c]ombining the teachings of references does not
involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) (emphasis omitted); see In re Keller, 642 F.2d
413, 425 (CCPA 1981) (citations omitted) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.”).
Beyond that, Appellant does not persuasively establish that “the
combination of Wroblewski and Marks is improper because the combination
renders the Wroblewski system unsatisfactory for its intended purpose.”
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Appeal Br. 11. The argument that a proposed combination of references
would render one of the references unsuitable for its intended purpose or
would change its principle of operation is a teaching away argument. See In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). The Federal Circuit has held
“[a] reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).5
Here, Appellant does not persuasively establish that either
Wroblewski or Marks discourages, criticizes or otherwise discredits the path
taken by Appellant such that the Examiner’s proposed combination would
render Wroblewski unsuitable for its intended purpose.
Further, Appellant’s arguments do not persuasively challenge the
Examiner’s proposed reasoning for combining the references. In the Final
Office Action, as quoted above, the Examiner reasons that “it would have
been obvious to a person having ordinary skill in the art at the time the
invention was made to add the teaching as seen in Marks’[s] content into
Wroblewski’s invention because it would allow user to use hand gesture to

5 “If references taken in combination would produce a ‘seemingly
inoperative device,’ . . . such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness.”
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)
(citation omitted); see also In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007) (“[A] reference teaches away from a
combination when using it in that combination would produce an inoperative
result,” but the obviousness analysis must account for “modifications that
one skilled in the art would make to a device borrowed from the prior art”).
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control content.” Final Act. 4. In the Answer, the Examiner adds that “it
would have been obvious to a person having ordinary skill in the art at the
time the invention was made to modify Wroblewski’s teaching to allow user
to use the left and right hand to display content horizontally.” Ans. 5.
Rather than address the Examiner’s reasons for combining, Appellant
reasserts the unpersuasive “bodily incorporation” argument. Reply Br. 2–3;
see infra. Accordingly, we are unpersuaded of error in the Examiner’s
rejection of claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–5, 7–12,
14–22
103(a) Wroblewski, Marks

1–5, 7–12,
14–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED