Ex Parte Kobashi

Patent Trial and Appeal Board

Jun 30, 2014

11706206 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HIROMICHI KOBASHI
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Appeal 2011-012946
Application 11/706,2061
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–24. (App. Br. 2.)2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed February 15, 2007 claiming benefit of Japanese Patent
Application No. JP2006-252864, filed September 19, 2006. The real party
in interest Fujitsu, Ltd.
2 We refer to Appellant’s Specification (“Spec.”), filed February 15, 2007,
and Appeal Brief (“App. Br.”), filed February 25, 2011. We also refer to the
Examiner’s Answer (“Ans.”) mailed May 6, 2011.
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Appellant’s Invention
The invention at issue on appeal concerns computer-readable
recording media, apparatus, and methods for controlling image information
scrolling on a display, in particular, stopping scrolling of image information
when a specific image reaches a predetermined display position. (Spec.
1:12–14, 2:26–3:29; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A non-transitory computer-readable recording medium
that stores therein a scroll control program causing a computer
to execute:
starting scrolling image information in response to an
input operation for scrolling;
continuing to scroll the image information until a specific
image reaches a predetermined line or just before the
predetermined line on a screen of a display unless an operation
for ending the scrolling is conducted; and
stopping the scrolling even if there exists further image
information following displayed image information that is
displayed on the screen when the specific scrolled image
reaches the predetermined line or just before the predetermined
line, a scrolling amount from the starting to the stopping being
variable in accordance with the position of the specific image in
the image information.
Rejections on Appeal
1. The Examiner rejects claims 2–10 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
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distinctly claim the subject matter which the applicant regards as his
invention.3
2. The Examiner rejects claims 1–4, 6, 8, 11, 13, 15–18, 20, and
22 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
7,308,653 B2, issued Dec. 11, 2007 (filed Jan. 19, 2002) (“Lin-Hendel”) and
U.S. Patent No. 6,771,284 B1, issued Aug. 3, 2004 (“Anderson”).
3. The Examiner rejects claims 5, 7, 9, 10, 12, 14, 19, 21, 23, and
24 under 35 U.S.C. § 103(a) as being unpatentable over Lin-Hendel,
Anderson, and U.S. Patent App. Pub. No. 2006/0250372 A1, published Nov.
9, 2006 (filed Nov. 16, 2005) (“Lii”).

ISSUES
Based upon our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in rejecting claims 2–10 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as his
invention?

3 While Appellant presents arguments traversing the Examiner’s 35 U.S.C.
§ 112 rejection (App. Br. 5), Appellant filed an Amendment on July 5, 2011,
after filing of the present Appeal, proposing to amend claims 2–10 —
revising “the computer-readable recording medium” (see, e.g., claim 2) to
read “the non-transitory computer-readable recording medium” (see
Amendment filed July 5, 2011). Accordingly, Appellant’s arguments (App.
Br. 5) are moot. Nevertheless, we briefly address this rejection and
Appellant’s arguments thereto for clarity and consistency.
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2. Does the Examiner err in concluding that the combination of
Lin-Hendel and Anderson collectively would have taught or suggested
“stopping the scrolling even if there exists further image information
following displayed image information that is displayed on the screen when
the specific scrolled image reaches the predetermined line or just before the
predetermined line” within the meaning of Appellant’s claim 1 and the
commensurate limitations of claims 11, 13, and 15?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed July 6, 2010, as our own, except as to those findings that we
expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellant’s arguments (App. Br. 5–29), we select
independent claim 1 and dependent claim 2 as representative of Appellant’s
arguments and groupings with respect to claims 1–24. 37 C.F.R.
§ 41.37(c)(1)(vii) (2004). We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken (Ans.
3–10), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 10–14) in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner, and we provide the following
for emphasis.

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Rejection Under 35 U.S.C. § 112
Appellant contends that “those skilled in the art would know that ‘the
computer readable recording medium’ recited in claims 2-10 refers to the
‘non-transitory computer readable recording medium’ recited in claim 1”
and “claims 2-10 are definite within the meaning of 35 U.S.C. § 112, second
paragraph.” (App. Br. 5.) We agree and reverse the Examiner’s
indefiniteness rejection of claims 2–10. As explained supra (with respect to
footnote 3), this rejection and Appellant’s response are moot in view of
Appellant’s Amendment filed on July 5, 2011.
Rejections Under 35 U.S.C. § 103
Appellant contends that Lin-Hendel and Anderson do not teach or
suggest the disputed features of claim 1. (App. Br. 6–11.) Specifically,
Appellant contends that “[n]either Lin-Hendel nor Anderson, for example,
disclose ‘stopping the scrolling even if there exists further image
information following displayed image information that is displayed on the
screen when the specific scrolled image reaches the predetermined line or
just before the predetermined line,’ as recited in independent claim 1.”
(App. Br. 6.) Appellant also contends that Anderson “displays the
navigational aid 120 proximally to a scroll box 122” (App. Br. 6) and
“provides the navigational aid 120 automatically in response to a
predetermined event” (App. Br. 7), instead of stopping the scrolling as
recited in claim 1. Appellant further asserts that “modifying Lin-Handel as
proposed by the Examiner would render Lin-Handel unsatisfactory for its
intended purpose” (App. Br. 9) and “the proposed modification would
change the principle of operation of Lin-Handel” (App. Br. 11).
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We initially note that the argued limitations fail to distinguish the
claimed invention from the prior art either structurally or functionally. The
argued limitations — “continuing to scroll the image information until a
specific image reaches a predetermined line or just before the predetermined
line on a screen of a display” and “stopping the scrolling even if there exists
further image information following displayed image information that is
displayed on the screen when the specific scrolled image reaches the
predetermined line or just before the predetermined line” (claim 1) —
consist of statements of intended use or purpose of certain data (“image
information”), which in this instance, does not further limit the scope of the
claim structurally or functionally. See Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a
statement of intended use “usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates”). Further, the recited data –“image information” – is
non-functional descriptive material.
Appellant cannot distinguish the claim by the content of the data
(image information) displayed – i.e., how the data appears or what the data
conveys, or whether additional image data remains undisplayed (see infra).
The content of the various data does not change the medium on which the
data is written (nor the functionality of starting, continuing, or stopping
scrolling the data (see, e.g., claim 13). The media and/or functionality
remain the same regardless of what the data constitutes, how the data may be
described or the relationship among the data and do not further limit the
claimed invention either functionally or structurally. The informational
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content of the data thus represents non-functional descriptive material,
which “does not lend patentability to an otherwise unpatentable computer-
implemented product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889
(BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003), aff’d, (Rule
36) (June 12, 2006) (“wellness-related” data in databases and communicated
on distributed network did not functionally change either the data storage
system or the communication system used in the claimed method). See also
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at
1887–90 (discussing non-functional descriptive material).
Even if we arguendo ascribe some patentable weight to the
limitations, as pointed out by the Examiner (Ans. 10–14), Lin-Hendel and
Anderson teach these limitations. Appellant’s Specification describes that
“[t]he predetermined position on the display screen can be determined in any
desirable manner” (Spec. 8:21–22) and Appellant’s Specification fails to
further describe how the stopping of scrolling is accomplished (beyond
reiterating the language in the claims) (App. Br. 3; Spec. 8–9, 13). In view
of the disclosures or lack thereof in Appellant’s Specification, we broadly
but reasonably construe “continuing to scroll the image information until a
specific image reaches a predetermined line or just before the predetermined
line on a screen of a display” and “stopping the scrolling even if there exists
further image information following displayed image information that is
displayed on the screen when the specific scrolled image reaches the
predetermined line or just before the predetermined line” (claim 1) to mean
stopping scrolling at a specified predetermined position (line) on the display,
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even if additional image data follows (is undisplayed) when the image
(image information) reaches the predetermined position (the beginning or
ending of the image reaches the line, depending on the direction of
scrolling). In other words, stopping scrolling at a predetermined position
when displayed image data reaches the predetermined position.
As pointed out by the Examiner (Ans. 11–14), Lin-Hendel describes
stopping scrolling of displayed information at a predetermined position (full
page, i.e., at bottom of page) when specified displayed information reaches
the position (end of page or end of particular content) (see Ans. 4–6, 11–14;
Lin-Hendel, col. 4, ll. 26–35). Anderson teaches detecting a marker of
content (Ans. 4–6, 11-14; Anderson, col. 3, ll. 24–26; col. 4, ll. 37–44; Figs.
1 and 5). Thus, we conclude that the combination of Lin-Hendel and
Anderson at least suggests stopping scrolling at a predetermined position
when displayed image data reaches the predetermined position.
With respect to Appellant’s combinability arguments, it appears that
Appellant has failed to appreciate the teachings of the combination of
references. Appellant’s arguments do not take into account what the prior
art would have suggested to one of ordinary skill in the art — “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 the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citations omitted, emphasis added).
We find that it would have been well within the skill of one skilled in
the art to combine the known technique of stopping scrolling when displayed
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information reaches a predetermined display position (as taught by Lin-
Hendel) with the known technique of marking content (as taught by
Anderson). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill” (citations omitted)). We are not
persuaded that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Further, Appellant failed to file a Reply Brief rebutting the findings
and responsive arguments made by the Examiner in the Answer.
Appellant presents nominal separate arguments with respect to
independent claims 11, 13, and 15. (App. Br. 11–27.) These arguments,
however, merely reiterate the arguments made with respect to claim 1
(supra). (Id.) Similarly, Appellant presents nominal separate arguments
with respect to dependent claims 5, 7, 9, 10, 12, 14, 19, 21, 23, and 24, but
merely reiterates the arguments made with respect to claim 1 (supra) (App.
Br. 27–29). Appellant does not present separate patentability arguments
with respect to dependent claims 2–4, 6, 8, 13, 16–18, 20, and 22. (App. Br.
6–27.) Thus, we find Appellant argues claims 1–24 together as a group and
does not separately argue with particularity claims 2–24. Therefore, for all
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the reasons supra, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1 or claims 2–24.

CONCLUSIONS
Appellant has shown that the Examiner erred in rejecting claims 2–10
under 35 U.S.C. § 112, second paragraph.
Appellant has not shown that the Examiner erred in rejecting claims
1–24 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1–24.
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)(iv).

AFFIRMED

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