Ex Parte Miyashita et al

Patent Trial and Appeal Board

Aug 28, 2017

12536104 (P.T.A.B. Aug. 28, 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.
1946-0216 2693
EXAMINER
LOWENBERGER, AARON J
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
12/536,104 08/05/2009
142241 7590 08/28/2017
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
Ken Miyashita
08/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEN MIYASHITA, TATSUSHINASHIDA,
and KOUICHI MATSUDA
Appeal 2015-005677
Application 12/536,104
Technology Center 2100
Before THU A. DANG, JUSTIN BUSCH, and JOYCE CRAIG,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—3 and 5—21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2015-005677
Application 12/536,104
CLAIMED SUBJECT MATTER
Claims 1, 9, and 10 are independent claims.1 The claims relate
generally to display units and methods that detect contact positions and
perform actions based on those contact positions. Spec. 9:9-13; 10:17—
11:13. More specifically, the claims are directed to concurrently moving a
focus area in response to a first contact and scrolling a display area in
response to a second contact. Id. at 25:18—22. Claim 1 is reproduced below:
1. A display apparatus comprising:
a display unit configured to display data including a
plurality of objects;
a focus-position control unit configured to control
an arrangement position of a focus area on the display unit,
where the focus area is provided to make an object enter a
selection state;
a contact-position detection unit configured to
detect contacting positions of a first contacting operator
and a second contacting operator; and
a display control unit configured to move the focus
area according to a movement of the first contacting
operator as the first contacting operator is moved starting
from a first position that coincides with the arrangement
position of the focus area, and at a same time, perform a
scrolling of the displayed data according to a movement of
the second contacting operator as the second contacting
operator is moved starting from a second position that does
not coincide with the arrangement position of the focus
area,
1 We note that each of the independent claims recites two very similar
limitations regarding what the control unit is configured to do. In the event
of further prosecution, we leave it to the Examiner to consider whether the
claims require further amendment to clarity the scope.
2
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Application 12/536,104
wherein the display control unit controls the focus
area to attach to the object when the focus area is moved
onto the object,
wherein the focus area is moved relative to the
plurality of displayed objects, and
wherein the display control unit is further
configured to move the focus area according to the
movement of the first contacting operator as the first
contacting operator is moved starting from the first
position that coincides with the arrangement position of
the focus area, while concurrently performing the scrolling
of the displayed data according to the movement of the
second contacting operator.
REJECTIONS2
Claims 1, 5, 9—13, and 15—17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Conklin (US 2006/0059437 Al; Mar. 16, 2006),
Pallakoff (US 2005/0012723 Al; Jan. 20, 2005), and Morris
(US 2007/0198942 Al; Aug. 23, 2007). Final Act. ^U17.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Conklin, Pallakoff, Morris, and Kennedy
(US 2006/0022955 Al; Feb. 2, 2006). Final Act. 19-20.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over of Conklin, Pallakoff, Morris, and Bull
(US 2009/0058801 Al; Mar. 5, 2009). Final Act. 20-22.
2 Claim 22 was rejected under 35 U.S.C. § 112 for reciting subject matter
without sufficient written description support. Final Act. 2—3. Appellants
canceled claim 22 in an amendment entered by the Examiner. See App. Br.
14. Accordingly, the Examiner withdrew the rejection. Ans. 27.
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Application 12/536,104
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over of Conklin, Pallakoff, Morris, and Kim
(US 2007/0022391 Al; Jan. 25, 2007). Final Act. 22.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over of Conklin, Pallakoff, Morris, and Grant
(US 2003/0164855 Al; Sept. 4, 2003). Final Act. 22-23.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over of Conklin, Pallakoff, Morris, and Moran (US 5,784,051;
July 21, 1998). Final Act. 23—24.
Claims 19—21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over of Conklin, Pallakoff, Morris, and Leah3 (US 5,808,601;
Sept. 15, 1998). Final Act. 25—29.
ANALYSIS
The Examiner finds the combination of Conklin, Pallakoff, and
Morris teaches or suggests the subject matter of independent claims 1, 9, and
10, and provides a rationale for combining the asserted teachings of Conklin,
Pallakoff, and Morris. Final Act. 4—13. Appellants argue the Examiner has
failed to demonstrate that the cited art teaches or suggests “a display control
unit configured to move the focus area . . . and at a same time, perform a
scrolling of the displayed data according ...” (hereinafter referred to as the
3 The Examiner inadvertently stated in the grounds of rejection that claims
19-21 were rejected as obvious in view of Conklin, Pallakoff, Morris, and
Kennedy. Final Act. 25. However, the body of the rejection repeatedly
referred to Leah as teaching the additional limitations recited in claims 19—
21. Id. at 25—29. Appellants acknowledged the correction, Reply Br. 4, and
had an opportunity to respond to the corrected statement of rejection.
Accordingly, the Examiner’s typographical in the Final Office Action was
harmless error.
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Application 12/536,104
“disputed limitation”), recited in claim 1. App. Br. 15—20; Reply Br. 4—6.
Appellants further assert an ordinarily skilled artisan would not have made
the proposed combination of Conklin and Pallakoff because it would require
“a further inventive step,” resulting in a proposed combination based only on
impermissible hindsight. App. Br. 15—16, 18—19; Reply Br. 4. Accordingly,
we address in order the only two issues before us: (1) whether the cited
disclosures of Conklin are properly combinable with the cited teachings of
Pallakoff; and (2) whether the combination of Conklin and Pallakoff teaches
or suggests the disputed limitation.
Reason to Combine
Appellants assert the combination relies solely on impermissible
hindsight. App. Br. 18—19. The only explanation Appellants provide is that
there is no teaching of performing the relied upon functions of Conklin and
Pallakoff being performed concurrently, such that it would require a further
inventive step to result in the proposed combination. Id. at 15—16, 19; Reply
Br. 4; see also App. Br. 15—16 (“Pallakoff and Conklin are performing
separate and independent processes of manipulation of a UI.”).
The Examiner articulated a reason for the proposed combination
based on rational underpinnings. App. Br. 8. Furthermore, the Examiner
expanded on that rationale in the Answer, explaining that “Pallakoff
explicitly teaches using the touch screen on the front of the device
concurrently while scrolling by using the touch pad on the back of the
device,” which provides an explicit teaching of performing item selection in
response to a first contact and scrolling in response to a second contact.
Ans. 30—31. The Examiner states that the only aspect of the disputed
limitation not explicitly taught by Pallakoff is moving a focus area in
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Application 12/536,104
response to a first touch, which is taught by Conklin. Id. at 31. Thus, the
Examiner concludes substituting Conklin’s function of moving a focus area
for Pallakoff’s function of selecting an object would have been obvious. Id.
A modification that involves merely substituting one known
component into a well-known system, yielding predictable results, is a
sufficient rationale for combining the asserted teachings. See KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 401 (2007). The Examiner’s proposed
combination merely involves substituting one user interface command in
response to a user interface input for another. Although Appellants argue
the identified teachings are allegedly incompatible, the fact that the functions
and purposes of specific user interface inputs and functions are different,
without further evidence or explanation does not persuade us that the
identified disclosures in Conklin and Pallakoff are incompatible or that an
ordinarily skilled artisan would not have combined the different teachings.
Moreover, with respect to Appellants’ argument that there is no
teaching of performing the two recited functions (i.e., moving the focus area
and scrolling the displayed data) concurrently, the Federal Circuit in KSR
held that the analysis “need not seek out precise teachings directed to the
challenged claim’s specific subject matter, for a court can consider the
inferences and creative steps a person of ordinary skill in the art would
employ.” KSR Int’l, 550 U.S. at 401. Certainly, when the rejection relies on
two separate references for separate functions of a single limitation, there
can be no specific or explicit teaching of performing those separate functions
concurrently. In light of the Examiner’s findings, which we agree with and
adopt, Appellants have not presented persuasive evidence or explanation that
combining Conklin’s teaching of moving of a focus area with Pallakoff’s
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teaching of concurrent detection of two distinct touches to execute two
disparate functions would have been “uniquely challenging or difficult for
one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Intf 550 U.S. at 420).
Accordingly, and notwithstanding Appellants’ arguments to the
contrary, we determine the Examiner’s proposed combination is supported
by articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion, and not based solely on impermissible
hindsight. See KSR Int 7, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
The Disputed Limitation
The Examiner finds Conklin teaches moving a focus area in response
to a first contact and Pallakoff teaches scrolling displayed data in response to
a second contact while performing another operation in response to a first
contact, as claim 1 requires. Final Act. 5—7 (citing Conklin !49, Fig.4-4;
Pallakoff^ 115); Ans. 30 (citing Conklin Fig. 4-8; Pallakoff! 115, Figs. 18-
A—18-D). Furthermore, the Examiner explains that “Pallakoff explicitly
teaches using the touch screen on the front of the device concurrently while
scrolling by using the touch pad on the back of the device,” which provides
an explicit teaching of performing item selection in response to a first
contact and scrolling in response to a second contact. Ans. 30-31 (citing
Pallakoff! 115).
Appellants argue “the combination of Conklin, Pallakoff, and Morris
does not teach or suggest any configuration in which a focus area is moved
. . . while concurrently performing the scrolling of the displayed data,” as
recited in the disputed limitation. App. Br. 15—16 (emphasis omitted); see
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id. at 17—19. Appellants contend “the disclosure of Pallakoff seems to only
indicate that selection can only be performed while scrolling is stopped, in
the configuration of Pallakoff.” Reply Br. 6. Appellants provide no citation
to Pallakoff or further explanation why Pallakoff would only be able to
perform selection when scrolling is stopped. See id.
It is, of course, true that no single reference discloses moving a focus
area while concurrently scrolling because the Examiner relies on Conklin to
teach moving a focus area and Pallakoff to teach scrolling. Nonobviousness,
however, cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “[T]he
test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art.” In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d 413, 425
(CCPA 1981). Thus, to the extent Appellants argue no single reference
teaches the disputed limitation as arranged, that argument is unavailing.
Furthermore, we disagree with Appellants’ argument that the
combination does not teach such a configuration. We agree with and adopt
the Examiner’s findings with respect to the specific teachings in Conklin and
Pallakoff. See Final Act. 4—8; Ans. 30—31. Furthermore, Pallakoff teaches
“[t]he touch pad on the back of the device can be used to scroll or pan
content while the touch screen on the front of the device can be used to
select displayed items.” Pallakoff 1115. Other than attorney argument,
Appellants do not present support for their assertion that Pallakoff does not
teach scrolling concurrent to item selection. See Reply Br. 6. Such lawyer
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argument and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424
F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for
evidence.”). Given the disclosure in Pallakoff and insufficient contrary
evidence, we find the preponderance of the evidence supports the
Examiner’s finding. Furthermore, the Examiner articulated a reason with a
rational underpinning as to why one would have combined the identified
teachings.
Therefore, for the reasons discussed above, we are not persuaded the
Examiner erred in finding the combination of Conklin, Pallakoff, and Martin
teaches or suggests the disputed limitation, and we sustain the rejection of
claim 1.
Claims 2.3. and 5-21
Appellants argue independent claims 9 and 10 are allowable for the
same reasons presented with respect to independent claim 1. App. Br. 32.
Appellants present no separate, substantive arguments with respect to the
dependent claims. See id. at 21—29. With respect to the additional
references cited in the rejections of dependent claims 2, 3, 6—8, 14, and 18—
21, Appellants merely assert the additional references fail to cure the
deficiency identified with respect to the independent claims from which they
depend. See id. at 21—28. Accordingly, we also sustain the Examiner’s
rejection of claims 2, 3, and 5—21 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner’s decision to reject claims 1—3 and 5—21
under 35 U.S.C. § 103(a).
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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.
§ 41.50(f).
AFFIRMED
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