Ex Parte Ogino et al

Patent Trials and Appeals Board

Sep 10, 2018

14578890 - (D) (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/578,890 12/22/2014
54072 7590 09/12/2018
SHARP KABUSHIKI KAISHA
C/0 KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Kumiko Ogino
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.
70404.2350/sz 4148
EXAMINER
MERCADO VARGAS, ARIEL
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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 KUMIKO OGINO and SHINSAKU TOHKI
Appeal2018-000682
Application 14/578,890 1
Technology Center 2100
Before MAHSHID D. SAADAT, JOHN P. PINKERTON, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 18-34, which are the only claims pending. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The invention relates to image editing apparatus allowing editing of
image data using preview display. Abstract, Spec., 1:10-12, Figs. 5, 7-9.
Claim 18, reproduced below, is exemplary of the subject matter on appeal
( emphasis added):
1 The real party in interest is identified as Sharp Kabushiki Kaisha. App. Br.
2.
Appeal2018-000682
Application 14/578,890
18. An image editing apparatus, comprising:
a display device having a display screen;
a storage device configured to store image data of a plurality of
pages;
a preview display device configured to display preview images
of pages of said image data stored in said storage device in accordance
with a sequence of pages on said display screen;
a selecting device configured to select any of said preview
images displayed by said preview display device, in response to a user
operation;
a selected page display device responsive to selection of any of
said preview images by said selecting device, configured to display an
image representing a page corresponding to the selected preview
image on said display screen; and
an editing device responsive to a user operation of moving said
image displayed by said selected page display device to a position
between any two preview images in a sequence of said preview
images, configured to edit a page sequence of said image data stored
in said storage device.
App. Br. 11 (Claims App'x).
THE REJECTIONS
Claims 18-25 and 27-33 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Bachman et al. (US 2012/0050788 Al;
pub. March 1, 2012) ("Bachman") in view of Akagi (US 2008/0301583 Al;
pub. December 4, 2008) ("Akagi"). Final Act. 4--17.
Claims 26 and 34 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Bachman, Akagi, and Motoyoshi (US
2008/0231914 Al) ("Motoyoshi"). Final Act. 17-18.
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Application 14/578,890
ANALYSIS
Appellants argue the Examiner errs in finding the combination of
Bachman and Akagi teaches claim 18 (and independent claim 27) because
one of ordinary skill in the art would not be motivated to combine these
references, and, even if combined, the result would not teach the claim 18
limitations:
a selected page display device responsive to selection of
any of said preview images by said selecting device, configured
to display an image representing a page corresponding to the
selected preview image on said display screen; and
an editing device responsive to a user operation of
moving said image displayed by said selected page display
device to a position between any two preview images in a
sequence of said preview images, configured to edit a page
sequence of said image data stored in said storage device.
App. Br. 5-10; Reply Br. 2--4.
Appellants argue the Examiner concedes Bachman does not teach the
claim 18 limitation "an editing device responsive to a user operation of
moving said image displayed by said selected page display device to a
position between any two preview images" and incorrectly relies on Akagi
for this limitation. App. Br. 6. According to Appellants, Bachman teaches a
selection interface for greeting cards which employs two regions wherein,
when a greeting card is selected from the first region, the second region
displays a plurality of greeting cards "'associated"' with the selected
greeting card. Id. at 6-7 (citing Bachman ,r,r 38, 40--42, Fig. 1). Appellants
argue "there would have been no logical reason to move a greeting card from
the first set of greeting cards 106 displayed in the first region 104 of
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Application 14/578,890
Bachman to the second set of greeting cards 118 displayed in the second
region 116 because it would not have served any purpose or provided any
benefit to the user." Id. at 7. Appellants additionally argue:
neither of Bachman and Akagi even recognized or knew of a
problem of dragging and dropping a selected page image while
performing a large amount of scrolling when the number of page
images is large (see, for example, page 2, lines 6-18 of
Appellant's specification). Accordingly, any possible
combination of Bachman and Akagi still fails to teach or suggest
the unique advantages and benefits of Appellant's image editing
apparatus, and corresponding method, that allows preview
images to be easily changed, and that allows selected pages
which are separate from the preview images to be displayed
independently from scrolling of the preview images.
Id. at 8.
Appellants argue Akagi teaches a plurality of first thumbnails and a
plurality of second thumbnails in which the plurality of first thumbnails
remains unchanged as the order of the plurality of second thumbnails is
changed. Id. at 7-8 (citing Akagi ,r,r 7, 9, 21, 34, 81, 82, Figs. 6(al), (a2)).
According to Appellants:
However, modifying the order of the thumbnails in the plurality
of second thumbnails V-X of Akagi does not mean that a selected
thumbnail ( e.g., thumbnail II) from the plurality of first
thumbnails I-VII of Akagi is moved, as the term is used in
Appellant's disclosure and understood by one of ordinary skill in
the art, from the plurality of first thumbnails I-VII to the plurality
of second thumbnails V-X. As explained above, Akagi teaches
that the order of the plurality of first thumbnails I-VII should
remain unchanged and in their original order. Thus, the selected
thumbnail II of Akagi is merely copied from the plurality of first
thumbnails I-VII to the plurality of second thumbnails V-X.
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Application 14/578,890
Id. at 8.
Regarding Appellants' argument that Akagi teaches "copying" the
selected thumbnails, not "moving" as recited in claim 18, the Examiner
interprets move as "really a copy." Ans. 22 ( citing "'Computer Desktop
Encyclopedia' Move"2 - (1) in programming, to copy data from one place in
memory to another). The Examiner finds Akagi's user enables the CPU to
insert the thumbnail in the sorted thumbnail row. Id. at 24--25 ( citing Akagi
,r,r 81-88, Figs. 6, 6(al ), (a2)). The Examiner then finds "[b ]ased on the
broadest reasonable interpretation of the claim language and on the
definition of move, Akagi by allowing the user to select a thumbnail and
inserting the thumbnail between a plurality of thumbnails teaches and/or
suggests" this limitation. Id. at 25.
Regarding motivation, the Examiner finds Appellants rely on
unclaimed features ("dragging and dropping ... ") and concludes that
Bachman and Akagi are analogous art directed to the manipulation of media
items and the combined teachings "yields to allow the user of the editing
apparatus to scroll through a set of displayed images and easily reorder the
displayed images based on some logical conditions." Id. at 19-20 ( citing
Akagi ,r 5).
In the Reply Brief, Appellants argue the Examiner's interpretation of
"moving" is incorrect and not consistent with the Specification. Reply Br.
3--4 (citing Spec. 18-19, Figs. 8, 9). In particular, Appellants refer to the
Specification description of moving a selected image from an original
2 The citation is undated.
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Appeal2018-000682
Application 14/578,890
position to an inserted position such that the selected image "'disappears"'
from the original position. Id. at 3. According to Appellants, "Appellant's
use of the term 'move' is consistent with the customary meaning of 'move'
in which, e.g., an object, once moved from a first position to a second
position, is no longer present at the first position." Id.
Appellants argue the Examiner errs by finding Akagi' s selected
thumbnail is moved because, according to Appellants, "Akagi teaches that
the selected thumbnail 11 of Akagi is copied from the plurality of first
thumbnails I-VII to the plurality of second thumbnails V-X." Id. at 4.
We are not persuaded by Appellants' interpretation of "moving" to
exclude copying. In particular, the claims recite "moving said image" and
the image is a representation based on underlying specific data or code. As
such, moving the representation typically involves copying the data and then
moving it (the representation based on the specific data or code) to the
desired moved location. The Specification is consistent with this
interpretation in describing "drag and drop" as being used to move images.
Spec. 18:25-19:13. Claim terms in a patent application are given the
broadest reasonable interpretation consistent with the specification, as
understood by one of ordinary skill in the art. In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004).
Regarding Appellants' assertion that moving an object from a first
position to a second position requires the object to disappear from the first
position, we note the term "disappear" is not recited in the claims.
Additionally, considering the Akagi sorted row after an object VI has been
moved from the presorted position 6 to the sorted position 2, the original
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Application 14/578,890
object II disappears from the sorted position 2. See Akagi, Figs. 5 (al) and
5(a2).
Regarding motivation to combine, we are not persuaded by
Appellants' arguments because the Examiner presents sufficient evidence
why one of ordinary skill in the art would combine the teachings of Akagi
and Bachman, whereas Appellants' arguments are based on unclaimed
features. In particular, the combined teachings enable "the user of [an]
editing apparatus to scroll through a set of displayed images and easily
reorder the displayed images based on some logical conditions." See Ans.
19--20 ( citing Akagi ,r 5). For example, a user may wish to reorder the
associated greeting cards of Bachman in the second region based on interest,
price, or other characteristic deemed useful by the user. See Bachman, Fig.
1.
Here, the Examiner provides sufficient evidence as required for
obviousness. As stated by the Supreme Court, the Examiner's obviousness
rejection must be based on:
"[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." ... [H]owever,
the analysis 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.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977,988 (Fed. Cir. 2006)).
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Application 14/578,890
In view of the above, 3 we sustain the rejection of independent claims
18 and 27, and dependent claims 19-26 and 28-34 as these claims are not
argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting 18-34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
3 Motoyoshi is cited in addition to Bachman and Akagi in the rejection of
dependent claims 26 and 34, and not cited to cure the deficiencies, supra,
regarding the independent claims. See Final Act. 17-18.
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