Ex Parte Ishida

Patent Trial and Appeal Board

Mar 22, 2017

12836250 (P.T.A.B. Mar. 22, 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.
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):
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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”).
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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.
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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.
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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
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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.
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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.
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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
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