Ex Parte Koarai et al

Patent Trial and Appeal BoardFeb 28, 2019

13135555 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/135,555 07/08/2011 54072 7590 03/04/2019 SHARP KABUSHIKI KAISHA C/0 KEA TING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 FIRST NAMED INVENTOR Shoji Koarai 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 70404.2337/kh 6281 EXAMINER TSUI, WILSON W ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 03/04/2019 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): JKEATING@KBIPLA W.COM uspto@kbiplaw.com epreston@kbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHOJI KOARAI and YOSHIHIRO MIZOGUCHI 1 Appeal2017-003995 2 Application 13/135,555 Technology Center 2100 Before BRADLEY W. BAUMEISTER, HUNG H. BUI, and SHARON PENICK, Administrative Patent Judges. PENICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1, 3, and 5-10. Appeal Br. 1. Claims 2 and 4 are 1 Appellants indicate the real party in interest is Sharp Kabushiki Kaisha. Appeal Br. 2. 2 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed March 4, 2016) and Claims Appendix ("Claims Appx.," filed June 27, 2016), and the Examiner's Answer ("Answer," mailed Oct. 6, 2016) and Non-Final Office Action ("Non-Final Action," mailed Oct. 23, 2015). Appeal2017-003995 Application 13/135,555 canceled. Claims Appx. 1, 2. We have jurisdiction under 35 U.S.C. Â§ 6(b )(1 ). We AFFIRM. Invention Appellants' Specification relates to displaying preview images of pages of a document, where the preview images correspond to output data, for example, drawing data for a printer. Spec. 1: 10-12, 20-23, 2:6-21, 10: 19--23. Appellants describe the prompt display of preview images such that a preview image of a page is displayed before completion of image data generation for preview images of all pages in the document. Id. at 2: 14--21, 10:14--19. Pages may be displayed in sequential order, with each page displayed at the time image data generation for a preview image has been completed. Id. at 13:12-14:19, Fig. 2. Representative Claim Representative claim 1 under appeal reads as follows: 1. A display apparatus, comprising: a preview driver for sequentially generating image data in each page for preview image corresponding to output data of a plurality of pages; and an image display section for sequentially displaying a preview image based on the sequentially generated image data by the preview driver as each image data is generated, the image display section initiating display of the preview image based on the sequentially generated image data in each page before image data generation in all pages is completed by the preview driver, wherein the preview image is displayed in the form of a display pane surrounding the preview image, and the image display section displays information of image data generation processing inside the display pane when generating image data for preview image. 2 Appeal2017-003995 Application 13/135,555 Rejection3 The Examiner rejected claims 1,4 3, and 5-10 under 35 U.S.C. Â§ I03(a) as obvious over Niles et al. (US 5,943,679; issued Aug. 24, 1999; hereinafter "Niles"), Ebuchi (US 2003/0103081 Al; published June 5, 2003), and Takagi (US 2008/0174597 Al; published July 24, 2008). Non- Final Action 4--16. Issues on Appeal I. Did the Examiner err in finding the combination of Niles, Ebuchi, and Takagi, teaches or suggests the limitation, in claim 1, of "an image display section for sequentially displaying a preview image based on the sequentially generated image data by the preview driver as each image data is generated, the image display section initiating display of the preview image based on the sequentially generated image data in each page before image data generation in all pages is completed by the preview driver"? II. Did the Examiner err in articulating a reason to combine Niles, Ebuchi, and Takagi in the rejection of claim 1? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief) that the Examiner has erred. 3 The Examiner previously rejected claims 1 and 3 under 35 U.S.C. Â§ 101 as not directed to statutory subject matter. Non-Final Action 3--4. However, the Examiner subsequently withdrew this rejection. Answer 15. 4 We select claim 1 as representative. Appellants present one set of arguments relating to the obviousness rejection of the pending claims. Except for our ultimate decision, we do not discuss further herein the Â§ 103 rejection of claims 3 and 5-10. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 3 Appeal2017-003995 Application 13/135,555 I. Did the Examiner err in finding claim 1, including the "image display section ... " limitation to be taught or suggested by the asserted combination of prior art? Appellants argue that the combination of Niles, Ebuchi, and Takagi does not teach or suggest the claimed "image display section for sequentially displaying a preview image based on the sequentially generated image data by the preview driver as each image data is generated, the image display section initiating display of the preview image based on the sequentially generated image data in each page before image data generation in all pages is completed by the preview driver," recited in claim 1. In particular, Appellants argue that Niles does not teach or suggest this claim limitation because Niles teaches that "after all of the resolution calculation for all of the pages have been calculated ... the pages are forwarded to the document display manager" for display. Appeal Br. 8. Thus, Appellants argue, Niles does not teach sequential display of sequentially generated image data, as per the disputed limitation. Id. Appellants also argue that, as Niles allows a user to view an electronically stored document, the pages in Niles are not "'preview images', as the term 'preview images' would have been understood to one of ordinary skill in the art, because the pages [in Niles] are not preliminarily viewed before being output to, e.g., another device." Id. at 9--10. Additionally, Appellants argue that: [P]aragraph [0090] of Takagi teaches that the thumbnail image selected by the cursor 63 is displayed first, and the remaining thumbnail images are then displayed starting from the thumbnail image closest to the position of the cursor 63. This is in contrast to Appellant[s'] claimed invention, in which the preview image is sequentially displayed as the image data is generated. 4 Appeal2017-003995 Application 13/135,555 With respect to these arguments, we agree with and adopt the Examiner's position and reasoning. Answer 16-20. Specifically, we note that the Examiner relies upon teachings of Takagi, not Niles, for the sequential rendering for display of images as they are generated. Non-Final Action 6-7 (citing Takagi Fig. 5); Answer 16-17 (citing Takagi Fig. 5 and related disclosure at ,r,r 92-94 describing the rendering of thumbnails "starting from the one closest to the [cursor] position," "display[ ing] them one after another," and describing successive rendering in sequence based on proximity to the cursor position). We agree with the Examiner that this teaching of Takagi was not addressed by the Appellants, and we are not persuaded by Appellants' arguments relating to Niles, of error in these findings. See In re Keller, 642 F.2d 413,426 (CCPA 1981). We also agree with the Examiner's determination that Niles does teach preview images. The Examiner finds the electronic document view of Niles teaches that a specific page of a document may be displayed in a first, smaller view if it is not a focus page, and then if that page is selected as a focus page, in an enlarged view. Answer 18-19 (citing Niles 10:50-62, 12:55---67, Figs. 3, 10). The Examiner also finds the page selected as a focus page in Niles may be displayed at a higher resolution than other pages displayed. Id. at 19 (citing Niles 7:10-23, 11:5-29). During prosecution, we give claim terms their broadest reasonable interpretation in light of the specification and as they would be interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although Appellants urge us to read into "preview images" that they are previews of "output to ... another device," we agree with the Examiner that the broadest reasonable interpretation of 5 Appeal2017-003995 Application 13/135,555 "preview image" does not exclude subsequent output on the same device, as in Niles. Thus we are also not persuaded by this argument of error in the Examiner's determination. Lastly, we agree with the Examiner's determination that Takagi' s generation of images in sequence, based on distance from a cursor, teaches or suggests sequential generation of images. Non-Final Action 6; Answer 24--25. We note that the originally filed Specification does not appear to contain the word "sequentially" or "sequence." Although Embodiment 1 of the Specification describes the generation of preview images in an N page document taking place in order from 1 to N, Embodiment 2 describes generating three pages at a time, starting with pages one through three, then four through six, etc. Spec. 12:6-20: 15. Thus, different sequences are contemplated, not only a strictly numerical, image-by-image sequence from a first to a last numbered image. We determine that the broadest reasonable interpretation of "sequentially" in light of the Specification encompasses Takagi's sequence of rendering of thumbnail images. See Takagi ,r,r 92-93, Fig. 5, cited in Non-Final Action 6-7, Answer 16-17). Thus we are not persuaded that the Examiner erred in finding that Takagi teaches or suggests "sequentially displaying a preview image based on the sequentially generated image data." Non-Final Action 11. II. Did the Examiner err in combining Niles, Ebuchi, and Takagi? Appellants argue that the Examiner erred in combining Niles, Ebuchi, and Takagi. First, Appellants argue that as Niles "has nothing to do with printing," and as "the invention of Ebuchi is unrelated to the invention of Niles," one of ordinary skill in the art would not have combined Niles and 6 Appeal2017-003995 Application 13/135,555 Ebuchi. Appeal Br. 9--10. Additionally, Appellants argue that Niles's viewed images are "documents that have already been generated'' and Takagi's preview driver generates its thumbnail images. Id. at 10. Thus, argue Appellants, one of ordinary skill would have not combined Niles, Ebuchi, and Takagi as in the rejection of claim 1. Initially, we note that Niles deals with the display of multiple pages of a multi-page document. Niles Abstract. Although Appellants argue that Niles has nothing to do with printing, we find that, even if Niles is not considered to be within the field of the inventor's endeavor, it is at least "reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We agree with the Examiner that one of ordinary skill would have considered Niles' s teachings regarding a document viewer for previewing pages in separate panes. See Answer 20. Also, Niles does describe the images being output as a display of areas to be "subsequently marked using an image output terminal such as an electronic printing system" and that the prior art cited during examination includes a reference concerning "Previewing a Document Before Printing." Niles 6:17-21, [56]. Thus, we do not agree with Appellants' implicit argument that Niles is not analogous art to the invention. The Examiner provides specific motivation for the combination of the teachings of Takagi and Ebuchi with Niles. Non-Final Action 6, 7. Excepting the statement that Niles "has nothing to do with printing," Appellants do not dispute the particulars of the motivation provided. Answer 9. With respect to Takagi, Appellants argue that the preview driver in Takagi would be redundant to functionality in Niles. Id. at 10. However, 7 Appeal2017-003995 Application 13/135,555 the wholesale incorporation of an element from Takagi was not contemplated by the Examiner. See Keller, 642 F.2d at 425 ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). "Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). We are not persuaded by Appellants' arguments of error in the Examiner's assertion that claim 1 is obvious over a combination of Niles, Takagi, and Ebuchi. DECISION We affirm the Examiner's decision rejecting claims 1, 3 and 5-10 as under 35 U.S.C. Â§ 103(a) as obvious over Niles, Ebuchi, and Takagi. Pursuant to 37 C.F.R. Â§ 1.136(a)(l )(iv), no time period for taking any subsequent action in connection with this appeal may be extended. AFFIRMED 8