Ex Parte IshidaDownload PDFPatent Trial and Appeal BoardMar 22, 201712836250 (P.T.A.B. Mar. 22, 2017) Copy Citation 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. 12/836,250 07/14/2010 Yusuke Ishida CANO-1401 1820 37013 7590 03/24/2017 Rossi, Kimms & McDowell LLP 20609 Gordon Park Square Suite 150 Ashburn, VA 20147 EXAMINER LE, BAO-LUAN Q ART UNIT PAPER NUMBER 2882 NOTIFICATION DATE DELIVERY MODE 03/24/2017 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): mail@rkmllp.com EOfficeAction@rkmllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUSUKE ISHIDA Appeal 2016-002080 Application 12/83 6,25c1 Technology Center 2800 Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL2 1 Appellant identifies Canon Kabushiki Kaisha as the real party in interest. App. Br. 1. 2 In this decision, we refer to the Specification filed July 20, 2010 (“Spec.”), the Final Office Action mailed Oct. 1, 2014 (“Final Act.”), the Appeal Brief filed Apr. 27, 2015 (“App. Br.”), the Examiner’s Answer mailed Oct. 7, 2015 (“Ans.”), and the Reply Brief filed Dec. 7, 2015 (“Reply Br.”). Appeal 2016-002080 Application 12/836,250 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision to reject claims 1—4 as obvious under 35 U.S.C. § 103(a) over Nagayoshi3 in view of Miyasaka.4 App. Br. 1; Final Act. 2—8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal relates to “an image projection apparatus capable of shifting a projected image in a wide range by using an optical shifting function and a digital shifting function in response to a user’s simple operation.” Spec. 17. Claim 1 is illustrative (disputed matter italicized): 1. An image projection apparatus comprising: an image-forming element configured to form an original image and being illuminated with light from a light source; a projection optical system configured to project the light from the image-forming element onto a projection surface to form a projected image on the projection surface; an optical shifting part configured to shift the projection optical system with respect to the image-forming element in a first shift range; an image shifting part configured to shift an image forming area where the original image is formed on the image forming element in a second shift range; an operating part provided commonly for shifting of both the optical shifting part and the image shifting part to shift the projected image on the projection surface; and a controller configured to control the optical shifting part and the image shifting part in response to an operation of the operating part, 3 Nagayoshi, US 2005/0168698 Al, pub. Aug. 4, 2005 (“Nagayoshi”). 4 Miyasaka, US 2006/0187184 Al, pub. Aug. 24, 2006 (“Miyasaka”). 2 Appeal 2016-002080 Application 12/836,250 wherein, in a shift direction in which the projected image is shifted according to an instruction provided by the operation of the operating part, the controller causes the optical shifting part to shift the projection optical system in the first shift range in a state where the image-forming area is located closer to a center of the second shift range than an end of the second shift range, and then automatically switches to shifting of the image forming area of the image shifting part in a state where the projection optical system has been shifted to an end of the first shift range. App. Br. 11 (Claims App’x). OPINION The Examiner finds that claims 1—4 would have been obvious to one of ordinary skill in the art at the time of the invention for the reasons stated on pages 2—8 of the Final Action and 2—5 of the Answer. Appellant does not separately argue the patentability of claims 1—4. App. Br. 10. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 2—4 will stand or fall together with independent claim 1. Appellant argues that the Examiner erred in rejecting claim 1 over the combination of Nagayoshi and Miyasaka because “neither of the cited references teaches or suggests] controlling optical shifting part and [] digital shifting part functions by a common operation part, or automatically switching them.” App. Br. 8. Appellant contends that “Nagayoshi suggests that the digital shift and the optical shift are performed with different operators (i.e., different operating parts), and the switching of the shift function is performed by a user.” Id. at 7 (emphasis omitted). In addition, Appellant contends that “[Miyasaka] only describes, by a remote controller, that a user instructs a start of an image projection [0062], instructs a lens shift [0066], and operates a keystone correction [0068].” Id. at 7—8. 3 Appeal 2016-002080 Application 12/836,250 Appellant concedes that “controlling digital shifting and controlling optical shifting are known in the art” but contends that the references “do not teach or suggest shifting the position of a projected image by using the same operator for both an optical shifting function and a digital shifting function.” Id. at 9 (emphasis omitted). Additionally, Appellant contends that “not only does Nagayoshi not describe and not necessitate use of a single operator, but, in turn, Nagayoshi also does not describe automatically switching to shifting of the image-forming area of the image shifting (i.e., digital) part by way of use of a single operator” and Miyasaka does not remedy these deficiencies. Id. at 9 (emphasis omitted). The Examiner responds that “Nagayoshi explicitly teaches combining the optical shifting and digital shifting in one embodiment.” Ans. 3 (citing Nagayoshi || 75, 76). The Examiner also finds that switching “must occur at the end of the range of the first shifting before switching to the second shifting” in order to expand the range of the optical shifting or the digital shifting. Id. The Examiner further finds that Miyasaka’s5 remote control corresponds to the operating part and that “[t]he combination of Nagayoshi and [Miyasaka] would result in having the remote control controlling the image shifting, optical and digital, functions.” Id. at 5. The Examiner additionally finds that “[a] person of ordinary skill in the art would have recognized that the remote control may have two buttons or one button that [controls] both functions separately or together” and that “if the remote control has one button controlling the optical and digital shifting functions 5 Appellant recognizes that page 5 of the Answer contains a typographical error when it refers to Nagayoshi teaching a remote control rather than Miyasaka. Reply Br. 4. 4 Appeal 2016-002080 Application 12/836,250 together, the switching from optical to digital functions is performed automatically by the projector.” Id. In the Reply Brief, Appellant argues that “Nagayoshi describes manually performing optical shifting and, separately, digital shifting.” Reply Br. 2. Appellant also argues that “Miyasaka does not remedy the shortcomings of Nagayoshi as Miyasaka only describes, by a remote controller, that user instructs a start of an image projection (see paragraph [0062]), instructs a lens shift (see paragraph [0066]), and operates a keystone correction.” Id. at 3. According to Appellant, “by describing separate manual controls for optical shifting and digital shifting, Nagayoshi teaches away from automatic switching from optical shifting to digital shifting.” Id. Appellant argues that. Id. Thus the combination “at most. . . would yield a system for manually switching between control of optical shifting and digital shifting by different remote controls, or manually switching between control of optical shifting and digital shifting by different portions of a remote control.” Id. at 4, emphasis omitted. We are not persuaded by Appellant’s arguments that the Examiner reversibly erred in rejecting claim 1 for the reasons stated by the Examiner. We add the following for emphasis. The Examiner’s finding that Nagayoshi discloses a single embodiment in which both optical shifting and digital shifting are used to “adjust the size and position of the projected picture over a wider range” is supported by the record. Nagayoshi 176; Ans. 3. Appellant does not dispute the Examiner’s finding that, based on Nagayoshi’s disclosure of making both optical and digital adjustments to achieve an expanded range, switching “must occur at the end of the range of the first shifting before switching to the second shifting” (Ans. 3). Instead, Appellant argues that Nagayoshi does not 5 Appeal 2016-002080 Application 12/836,250 “require automatic switching from optical shifting to digital shifting.” Reply Br. 3 (emphasis added). Appellant’s argument regarding “automatic shifting” is unpersuasive because providing an automatic means to replace a manual activity to accomplish the same result is not sufficient to distinguish over the prior art. See In re Venner, 262 F.2d 91, 95 (CCPA 1958) (claims to a permanent mold casting apparatus for molding trunk pistons not patentable over cited art where the claimed invention combined “old permanent-mold structure together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed.”). Appellant’s argument that Nagayoshi “teaches away from automatic switching from optical shifting to digital shifting” (Reply Br. 3) is also unpersuasive because Appellant does not direct us to any evidence that Nagayoshi either discourages or disparages automation of the optical and digital shift operations. 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 Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). It is insufficient to establish a teaching away from automatically switching based on Nagayoshi’s disclosure that “[t]he user manually operates an adjusting device (not shown), such as a dial, for controlling the shifting mechanism” (Nagayoshi 171). Such a disclosure provides a means for performing the function, but does not suggest manual operation is the only means by which the adjusting can be performed. This is particularly true in view of Miyasaka’s disclosure of a remote control for optical shifting. 6 Appeal 2016-002080 Application 12/836,250 Appellant’s arguments distinguishing the teachings of Nagayoshi and Miyasaka as being limited to manual switching because Nagayoshi discloses manual operation of shifting and Miyasaka discloses manual/user initiation of a lens shift and operation of an image correction program also are unpersuasive because “[t]he 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.” In re Keller, 642 F.2d413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Appellant does not adequately explain why it would have been beyond the skill of one of ordinary skill in the art to apply Miyasaka’s teaching of a remote to operate shifting, on the one hand, to Nagayoshi’s embodiment of shifting each of the optical shift and the digital shift to expand the projection range, on the other hand, to suggest a single button remote as described by the Examiner (Ans. 5). Moreover, claim 1 does not preclude manual/user initiation of shifting. Indeed, claim 1 recites “the projected image is shifted according to an instruction provided by the operation of the operating part.” App. Br. 11 (Claims App’x). In sum, we affirm the Examiner’s rejection of claim 1 as obvious over the combination of Nagayoshi in view of Miyasaka. 7 Appeal 2016-002080 Application 12/836,250 CONCLUSION We affirm the Examiner’s rejections of claims 1—4 as obvious under 35 U.S.C. § 103(a). DECISION The Examiner’s decision is affirmed. 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)(1). AFFIRMED 8 Copy with citationCopy as parenthetical citation