Ex Parte Noda et al

Patent Trials and Appeals BoardMar 19, 2019

13217880 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/217,880 08/25/2011 54072 7590 03/21/2019 SHARP KABUSHIKI KAISHA C/0 KEA TING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 FIRST NAMED INVENTOR Y oshimune Noda 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. 70404.2343/sz 6819 EXAMINER CHEN, HUO LONG ART UNIT PAPER NUMBER 2674 NOTIFICATION DATE DELIVERY MODE 03/21/2019 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 YOSHIMUNE NODA, TAKESHI YAMAGUCHI, and MASATO SHIOZAKI Appeal2018-007299 Application 13/217,880 1 Technology Center 2600 Before JEREMY J. CURCURI, HUNG H. BUI, and ADAM J. PYONIN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Office Action rejecting claims 1-5 and 7-10, which are all the claims pending on appeal. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 2 1 According to Appellants, the real party in interest is Sharp Kabushiki Kaisha. App. Br. 2. 2 Our Decision refers to Appellants' Appeal Brief filed March 7, 2018 ("App. Br."); Examiner's Answer mailed May 9, 2018 ("Ans."); Final Office Action mailed November 6, 2017 ("Final Act."); and original Specification filed August 25, 2011 ("Spec."). Appeal2018-007299 Application 13/217,880 STATEMENT OF THE CASE Appellants' invention relates to an operation console of an image formatting apparatus (i.e., printer) having a display screen and a touch panel to permit a user to select an image from a plurality of images displayed on the display screen and to scroll images other than the selected image. Spec. 2:20-3:4. For instance, "it is possible to use one finger (for example, a finger of one hand) to select an image and to use another finger ( for example, a finger of the other hand) to move other images." Spec. 3:20-23. Claims 1 and 10 are independent. Claim 1 is illustrative of Appellants' invention, and is reproduced with disputed limitations emphasized below: 1. An operation console comprising: a display device including a display screen that displays a plurality of images; a touch-panel superposed on said display screen to receive a user operation on said display screen, said touch-panel capable of sensing two points being pressed at a time and dragging of each pressed point, and detecting any of said plurality of images being selected based on a user operation of pressing and dragging a point on said touch-panel; and a processor configured or programmed to: control said display device such that the plurality of images are displayed on a prescribed area of said display screen; determine, while selection of any of said plurality of images is being detected by said touch-panel, whether or not an instruction for moving any one image other than said selected image among said plurality of images has been given, based on a user operation of pressing and dragging another point on said touch-panel; scroll and display all the images other than said selected image among the plurality of images in said prescribed area, in response to a determination by said 2 Appeal2018-007299 Application 13/217,880 processor that said instruction for moving has been given, said selected image not being scrolled by said processor; and decide a direction of scrolling, duration of scrolling, amount of scrolling or initial speed of scrolling by said processor, based on a user operation of dragging said another point on said touch-panel. App. Br. 11 (Claims App.). EXAMINER'S REJECTIONS & REFERENCES (1) Claims 1-5 and 9-10 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Davidson et al. (US 8,407,606 B 1; issued Mar. 26, 2013; "Davidson"), and McNamara et al. (US 2011/0039602 Al; published Feb. 17, 2011; "McNamara"). Final Act. 4--11. (2) Claim 7 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Davidson, McNamara, and Kim et al. (US 2009/0307631 Al; issued Dec. 10, 2009; "Kim"). Final Act. 12-13. (3) Claim 8 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Davidson, McNamara, and Nichols (US 2010/0070931 Al; published Mar. 18, 2010; "Nichols"). Final Act. 13-15. ANALYSIS 35 U.S.C. Â§ 103(a): Claims 1-5 and 9-10 In support of the obviousness rejection of claim 1 and similarly claim 10, the Examiner finds Davidson teaches "an operation console [ of an image forming apparatus shown in Figure 1] ... comprising a display device including a display screen that displays a plurality of images []; ... a touch- panel []; ... [and] a processor configured or programmed to [i] control said 3 Appeal2018-007299 Application 13/217,880 display device such that the plurality of image [sic] are being displayed on a prescribed area of said display screen (Fig. IA); [and] [ii] determine, while selection of any of said plurality of images is being detected by said touch- panel, whether or not an instruction for moving any one image other than said selected image among said plurality of images bas [sic] been given, based on a user operation of pressing and dragging another point on said touch-panel." Final Act. 4--5 (citing Davidson 37:29-34, Figs. IA-IB). Davidson's Figure IA is reproduced below: 100 106 110 l 102 \ / ) I ' I I }a. /1 156 \ I 140 160 ~130 142,/ -------~120 I 151 124 J 132 FIG. 1A 158 !' 136 Davidson's Figure IA shows a multi-point touch screen configured to allow a user to select and control multiple displayed images at the same time, via multiple inputs by dragging and scrolling using different fingers. Davidson 1 :50-53 4 Appeal2018-007299 Application 13/217,880 The Examiner then finds McNamara teaches: a scrolling device for scrolling [as shown in Figs.2C and 2D, the user gives an instruction to scroll to the next page ... ] and a deciding device deciding direction of scrolling, duration of scrolling, amount of scrolling or initial speed of scrolling by said scrolling device, based on a user operation of dragging said another point on said touch-panel. Final Act. 6 (citing McNamara ,r 56, Figs. 2C, 2D). McNamara's Figures 2C and 2D are reproduced below: ~ ................ 1 I T~~~ J;~~ I S::~:E;~;':'..:~'~; .,,amed ~-------- .. ,---+ Â· ~ Â· ./,-200 -~ : FIGURE2C ~ 100Â·-,, '-'--,. 204--~-, \, The Story K::o/i:lÂ·':r" ~'.-'(!..1 SN,:-~~. ::n f2::~~t. ~~ t.:<\>'f:-:i~.s.:~rt'llf:<&S:r.-GC:-6f. FIGURE 2D McNamara's Figures 2C and 2D show scrolling image 202 according to a direction of a swipe of a user's finger 200 as indicated by the arrow. McNamara ,r 58. Based on (1) Davidson's multi-touch panel configured to allow a user to select and control one or more image(s), via inputs using the user's fingers, and (2) McNamara's additional scrolling function to scroll according to a given direction of the swipe of the user's finger, the Examiner acknowledges the combination of Davidson and McNamara does not explicitly teach that selected images can be held stationary (not being 5 Appeal2018-007299 Application 13/217,880 scrolled) by a user's finger, while unselected images can be scrolled by the user's finger, but nevertheless concludes: it would have been obvious . . . to modify the combination of Davidson '606 and McNamara '602 to hold one or more displayed objects on the touch-panel without moving and then to scroll other un-holding objects which have been displayed or to be displayed (scroll and display all the images other than said selected image among the plurality of images in said prescribed area, in response to a determination by said processor that said instruction for moving has been given, said selected image not being scrolled by said processor) because this will allow the object to be selected more effectively since multiple selection of objects are allowed while browsing them on the touch-panel. Final Act. 7-8 ( emphasis added). Appellants present two arguments against the Examiner's combination of Davidson and McNamara. First, Appellants argue the cited prior art does not teach or suggest the claimed "processor" configured to: "scroll and display all the images other than said selected image among the plurality of images in said prescribed area, in response to a determination by said processor that said instruction for moving has been given, [while] said selected image not being scrolled by said processor" as recited in claim 1, and similarly, claim 10. App. Br. 7-8 (emphasis added). According to Appellants, Davidson teaches that hands 102, 112, and 134 individually select objects such that such that 'each input is ... operated individually.' See, for example, column 4, lines 1-41 and Figs. 1 A and 1 B of Davidson. McNamara teaches that a finger 200 is swiped on a touch surface 204 to 'scroll [to] the next object[],' such that the selected first object 202 is replaced by a second object 206. See, for example, Figs. 2C and 20 of McNamara. 6 Appeal2018-007299 Application 13/217,880 Id. at 7 ( emphasis in original). In other words, "both Davidson and McNamara [only] teach movement/scrolling of individual objects that have been selected by the user." Id. As such, Appellants argue "any 'scrolling and display' of the combination of Davidson in view of McNamara would result in the individual object that is selected by the user being replaced with a different object, rather than all of the objects other than the selected obiect being moved or scrolled. Id. at 8 (citing McNamara's Figs. 2C and 2D). Second, Appellants argue because all of the objects (images) displayed on Davidson's display device are selected, any "modification of Davidson to include a scrolling feature as suggested by the Examiner wherein unselected objects, let alone all of the unselected objects, that are displayed on the display device 100 are scrolled would change the principle operation of Davidson and, thus, be improper." Id. at 8-9. Appellants' arguments are not persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. Ans. 5-7. Therefore, we adopt the Examiner's findings and explanations provided therein. Id. At the outset, we note Appellants' arguments are predicated upon (1) the narrow reading of Davidson and McNamara and (2) the rigid requirement of a specific teaching or suggestion or motivation necessary to combine known elements in order to show obviousness, which the Supreme Court has rejected in KSR International Co., v. Teleflex Inc., 550 U.S. 398, 415-16 (2007) ("KSR directs that an explicit teaching, suggestion, or motivation in the references is not necessary to support a conclusion of obviousness."). Instead, the Supreme Court has articulated that "[t]he combination of 7 Appeal2018-007299 Application 13/217,880 familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. In an obviousness analysis, the courts "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ" can be taken into account. Id. at 418. The Supreme Court has clarified that courts may look to a wide diversity of sources to bridge the gap between the prior art and a conclusion of obviousness. Id. at 418. The Federal Circuit previously noted that "[t]he reason, suggestion, or motivation to combine may be found explicitly or implicitly: (1) in the prior art references themselves; (2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or (3) from the nature of the problem to be solved." Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000). KSR expanded the sources of information for a properly flexible obviousness inquiry to include (i) market forces; (ii) design incentives; (iii) the "interrelated teachings of multiple patents"; (iv) "any need or problem known in the field of endeavor at the time of invention and addressed by the patent"; and (v) the background knowledge, creativity, and common sense of the person of ordinary skill. KSR, 550 U.S. at 418-21. As correctly recognized by the Examiner, "[1] Davidson et al. has taught that the touch-panel (Fig. 1, item 100) includes a processor configured or programmed (col. 37, lines 29-34) to accept multiple inputs and each input is being operated individually (Figs. IA and IB), and 8 Appeal2018-007299 Application 13/217,880 [2] McNamara et al. has taught a scrolling function to scroll the next object according to the given direction of the wipe of the finger (Fig.2C and paragraph 58)." Ans. 5. In other words, the selection of an image from a plurality of images within a prescribed area, via a touch-panel, is known from Davidson (see Davison 37:29-34, Figs. IA-IB). Similarly, the image (once selected) remains stationary (not dragged) until a user's finger has moved to a new location on the touch-panel, is also known from Davidson (see Davison's Fig. 2A). Likewise, the scrolling function to scroll all images according to a given direction of the swipe of the user's finger, is also known from McNamara (see McNamara's Figs. 2C-2D). Because these features are well-known features from the prior art, "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. For example, "it would have been obvious to a person of ordinary skill in the art at the time of invention to recognize to implement the scrolling function of McNamara et al. into the touch-panel 100 of Davidson et al. such that the processor in a touch-panel (Fig. I, item 100 in Davidson et al) would be configured to control the images which are being selected and hold by the hands (Fig. IA, items 102, 112 and 134 in Davidson'606) not to be scrolled when another hand gives instruction to scroll to display other images which are not being selected and are not being hold by the hands (Fig. IA, items 102, 112 and 134 in Davidson '606)." Ans. 5 (emphasis added). The Examiner's proposed modification is merely a combination of familiar elements according to known methods that yield no more than 9 Appeal2018-007299 Application 13/217,880 predictable results, and thus, would have been obvious to one of ordinary skill in the art. Further, the Examiner's articulated rationale for combining Davidson and McNamara is sufficient rationale to support the Examiner's rejection under KSR (i.e., allow the images to be selected and to be browsed more effectively on the touch-panel since once hand can select and hold the particular images in a designated area of the touch-panel while browsing other images on the touch-panel by scrolling). Thus, we agree with the Examiner that ( 1) it would have been obvious to one of ordinary skill in the art to combine Davidson and McNamara; and (2) the proposed modification would not change the principle operation of Davidson. Ans. 6-7. In fact, as recognized by the Examiner, the proposed modification "would improve the functionality of the touch-panel to have a scrolling function which would allow the images to be selected and to be browsed more effectively on the touch-panel since one hand can select and hold the particular images in a designated area of the touch-panel while browsing other images on the touch-panel by scrolling." Ans. 7. Lastly, we note Appellants have not presented sufficient evidence or persuasive argument that modifying Davidson's multi-touch panel to implement the scrolling function as disclosed by McNamara would have been "uniquely challenging or difficult for one of ordinary skill in the art" or would have "represented an unobvious step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418--419). Nor have Appellants provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Systems, Inc. 10 Appeal2018-007299 Application 13/217,880 v. Tetra Pak Cheese and Powder Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013). Based on the record before us, Appellants have not persuaded us of Examiner error. Accordingly, we sustain the Examiner's obviousness rejection of independent claims 1 and 10, and their respective dependent claims 2-5 and 7-9, which Appellants do not argue separately. App. Br. 7. CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting claims 1-5 and 7-10 under 35 U.S.C. Â§ 103(a). DECISION As such, we AFFIRM the Examiner's final rejection of claims 1-5 and 7-10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11