Ex Parte Nishii

Patent Trial and Appeal BoardMar 30, 2017

14540758 (P.T.A.B. Mar. 30, 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. 14/540,758 11/13/2014 Yasuto Nishii 1907-0469PUS1 4025 2292 7590 04/03/2017 BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 EXAMINER ZHENG, JACKY X ART UNIT PAPER NUMBER 2675 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YASUTO NISHII Appeal 2017-002166 Application 14/540,75 81 Technology Center 2600 Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and AARON W. MOORE, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies SHARP KABUSHIKI KAISHA as the real party interest. (App. Br. 1.) Appeal 2017-002166 Application 14/540,758 STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) from a final rejection of claims 1—8.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.3 CLAIMED INVENTION The claims are directed to an operation input system in which a mobile device and electronic device interact with one another through near- field communications so that input to the mobile device can be used to affect the display screen on electronic device. (Abstract.) Claim 1, reproduced below, is illustrative: 1. An operation input system, comprising an electronic device having a display portion and a mobile terminal capable of near distance wireless communication with the electronic device, wherein the electronic device is provided with the display portion which, when proximity of the mobile terminal is detected in a state of displaying a specific screen on the display portion, displays the specific screen but not operation input information associated with the specific screen in advance, and a transmitting portion which transmits the operation input information to the mobile terminal, the mobile terminal is provided with a display portion which displays an operation input screen based on the operation input information transmitted from the electronic device, and a 2 Claim 9 has been canceled. 3 Our Decision refers to the Specification (“Spec.”) filed November 13, 2014, the Final Office Action (“Final Act.”) mailed October 6, 2015, the Appeal Brief (“App. Br.”) mailed Feb. 23, 2016, and the Examiner’s Answer (“Ans.”) mailed September 19, 2016. 2 Appeal 2017-002166 Application 14/540,758 transmitting portion which transmits operation content instructed by a user from the operation input screen to the electronic device, and the electronic device is provided with an updating portion which updates the specific screen in accordance with the operation content transmitted from the mobile terminal. (Claims App’x.) REJECTIONS Claims 1—6 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Miyazaki (US 2014/0085654 Al, published March 27, 2014) and Odagawa (US 2010/0309515 Al, published December 9, 2010). (Final Act. 2—10.) Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Miyazaki, Odagawa, and Luman (US 2004/0150627 Al, published August 5, 2004). (Final Act. 11—12.) ANALYSIS Claims 1 and 8 Appellant’s invention involves interaction between image forming apparatus la and mobile terminal 2 that is used to edit the screen on the display of apparatus la. (Spec. 50, 51.) Figures 5A and 5B assist in explaining operation of Appellant’s invention, and are shown below. 3 Appeal 2017-002166 Application 14/540,758 FIG.5A flG.SB 143 <■ Figures 5Aand 5B of the Specification show wireless interaction between image forming apparatus la and mobile device 2. When mobile terminal 2 is brought close to image forming apparatus la, it requests apparatus la to transmit operation input information. (Fig. 5A; Spec. 146.) Mobile terminal 2 receives and uses this information to display an operation input screen enabling a user to edit the preview screen displayed on apparatus la using various options (“double-side setting,” “header setting,” etc.) (Fig. 5B; Spec. 147.) No corresponding operation input screen is displayed on apparatus la, to avoid multiple screen transitions posing user inconvenience. (Spec. 112.) The Examiner relies on Miyazaki to teach most features of claim 1. (Ans. 14.) A key disclosure in Miyazaki is shown below with references to Figures 2A—2C. 4 Appeal 2017-002166 Application 14/540,758 10a 16 -4- i ,-v-'22a 1 0 12:50 116 100 O! P....... FIG. 2A 16 I ™T“ 12:50 FIG. 2B 40a Figures 2 A—2C of Miyazaki show interaction of mobile terminal 100 and multi-function peripheral (MFP) 10a. In Miyazaki, when mobile terminal 100 is brought close to sensor 22a, the MFP 10a transmits information to generate a soft keyboard screen K2 to the mobile terminal and itself displays a similar soft keyboard screen Kl. (Fig. 2C.) However, claim 1 requires that the electronic device “displays the specific screen but not operation input information associated with the specific screen” (emphasis added), a limitation that Figure 2C of Miyazaki contradicts, as Appellant argues. (App. Br. 8—9.) 5 Appeal 2017-002166 Application 14/540,758 Accordingly, the Examiner relies on Odagawa as teaching a display screen with preview image 305 that has no operation input information (such as a soft keyboard or buttons). (Ans. 18—19.) Figure 3 of Odagawa is shown below with annotations. F1G.3 301 AiSMlssrsiiJ Figure 3 of Odagawa shows a preview image 305. A holding of obviousness must be based on “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417—18 (2007). One reason the Examiner gives for combining the references is that Miyazaki and Odagawa are directed to analogous art. (Final Act. 5—6.) Although it is required that references be analogous in order to be combined in an obviousness rejection (see In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)), this alone is not sufficient to establish a reason to combine references in an obviousness analysis. The Examiner also states Odagawa provides a reason to combine the references by teaching that “the user can easily preview the preview image 305 of the content 303 displayed on the display screen 301 without having to 6 Appeal 2017-002166 Application 14/540,758 perform complicated operations.” (Final Act. 6 (citing Odagawa 148).) This statement explains why one would provide preview image 305 on Odagawa’s display screen 301, but it falls short of explaining why one of ordinary skill would have replaced Miyazaki’s display of soft keyboard K1 on LCD 16 with Odagawa’s preview image 305. Without a reason to make this modification, we agree with Appellant that Odagawa and Miyazaki are in an “inverse relationship” (App. Br. 9), and we do not sustain the rejection of claim 1. Claims 2—7 depend from claim 1 and include all of its limitations. Thus, for the same reasons stated with respect to claim 1, we do not sustain the rejections of these dependent claims. Claim 8 is an independent claim reciting a similar limitation as discussed with respect to claim 1. For the stated reasons, we do not sustain the rejection of independent claim 8. DECISION We reverse the rejections of claims 1—8 under 35 U.S.C. § 103(a). REVERSED 7