Ex Parte Tsuda et al

Patent Trial and Appeal Board

Aug 22, 2017

13080835 (P.T.A.B. Aug. 22, 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.
13/080,835 04/06/2011 Munetaka Tsuda SCEK 24.709 2654
26304 7590 08/24/2017
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
nycuspto@kattenlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUNETAKA TSUDA, SHUJI HIRAMATSU,
SHIGERU ENOMOTO, and MOTOKI KOBAYASHI
Appeal 2015-002515
Application 13/080,835
Technology Center 2100
Before CAROLYN D. THOMAS, HUNG H. BUI, and
NABEEL U. KHAN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—11, all the pending claims in the
present application. See App. Br. filed Aug. 8, 2014, Claim Appendix. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-002515
Application 13/080,835
The present invention relates generally to displaying at least part of a
display region and terminating the display of the display region when an
operation of specifying a first direction is received. See Abstract.
Claim 1 is illustrative:
1. An information processing apparatus, comprising:
means for displaying on a screen one display
region of a plurality of display regions that can be switched
with the other plurality of display regions;
means for terminating the display of the display
region when an operation of specifying a first direction is
received with respect to a predetermined region in the screen
from a user; and
means for restricting the termination of the display
region when the operation specifying the first direction is
received when an operation of specifying a second direction
that is different from the first direction with respect to the
predetermined region is received from the user prior to
receiving the operation specifying the first direction.
Appellants appeal the following rejection:1
Claims 1—11 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Kondo (US 2011/0219302 Al, Sept. 8, 2011) (Final Act. 4—
9).2
1 The drawing objections and the rejection of claims 1,10, and 11 under
35 U.S.C. 112 (b) are withdrawn by the Examiner (see Advisory Action
mailed February 13, 2014).
2 Claims 1—11 are pending, but not all appealed. Appellants state that only
“claims 1—4, 10, and 11 are being appealed” (see App. Br. 2 and 5).
Appellants who wish to appeal fewer than all rejected claims should file an
amendment cancelling the non-appealed claims. If Appellants do not file an
amendment cancelling claims that the Appellants do not wish to appeal, but
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Appeal 2015-002515
Application 13/080,835
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under § 102(e)
Issue: Did the Examiner err in finding that Kondo discloses means
for restricting the termination of the display region, as set forth in claim 1.
Appellants contend that “a user flicking in the second direction in
[Kondo] clearly does not prevent the user from any ‘terminating’ that occurs
in the first direction. In fact, the second direction in [Kondo] also performs
a ‘termination’ in that one displayed stage is replaced with another displayed
stage when the second direction operation is received” (App. Br. 7).
In response, the Examiner finds that “[s]aid argument is not
persuasive but confusing” and that “Appellants mistake ‘termination’ and
‘restricts termination’ with ‘replacement’ ... [In Kondo,] [t]he display
then also fails to provide any argument in the Appeal Brief directed to those
claims (as Appellants have done here), then the Board has discretion to
simply affirm any rejections against such claims. See, e.g., Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (Appellants waive any argument about
a ground of rejection that they does not contest on appeal to the Board, and
the Board may simply affirm the rejection). In this case, however, our
reversal of the independent claims causes us to recommend to the Examiner
that upon acquiring jurisdiction of this application, the Examiner is advised
to see if it is appropriate to cancel the non-appealed claims, i.e., claims 5—9.
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Appeal 2015-002515
Application 13/080,835
regions are replaced not terminated. . . . when a display is terminated, the
display has to be activated before being displayed again” (Ans. 7).
First, we note, as a matter of claim construction, that neither the
claims nor Appellants’ Specification clearly defines “terminating the
display.” However, it appears that both Appellants contentions (see App.
Br. 7) and the Examiner’s initial findings (see Final Act. 5, and Ans. 7) are
equating the claimed “terminating the display” with replacing the displayed
image with another displayed image. Also, Appellants’ Specification
highlights that a problem addressed by the present invention is preventing
the user from erasing a display region by an erroneous operation by the user,
by allowing the user to give an instruction to restrict a particular display
region from becoming a target for such erasure (see Spec. 1:14—22; see also
1:26 to 2:3; see also Fig. 4, element 24). In other words, Appellants are
concerned with inadvertently erasing a display region that is necessary for
the user.
A claim meaning is reasonable if one of ordinary skill in the art would
understand the claim, read in light of the specification, to encompass the
meaning. See In re American Academy of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004). Here, we find that one of ordinary skill in the
art would understand the claimed “terminating the display” to encompass
image switching/erasure when read in light of Appellants’ Specification.
As such, the Examiner’s proffered definition of “terminating the
display” as meaning that “the display has to be activated before being
displayed again” (see Ans. 7) is inconsistent with both Appellants’
Specification and with the Examiner’s own initial findings in Kondo, i.e., the
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Appeal 2015-002515
Application 13/080,835
Examiner positively states that in Kondo “[t]he display regions are replaced
not terminated” (id. ).
Based on our construction that the claimed “terminating the display”
encompasses replacing the displayed image, we agree with Appellants that
“a user flicking in the second direction in [Kondo] clearly does not prevent
the user from any ‘terminating’ that occurs in the first direction” (App. Br.
7). In other words, Appellants contend that Kondo’s second flicking
direction does not prevent erasure when a first flicking direction is received
thereafter.
In response, the Examiner characterizes Appellants’ contention as
being “even more confusing”, referencing the Examiner’s aforementioned
proffered definition of “terminating a display” as evidence (Ans. 7).
However, we find that such a response from the Examiner has added far
more confusion to this case than Appellants’ contentions.
For example, if the Examiner indeed interprets “terminating the
display” as the display being de-activated (see id.), then the Examiner’s
findings are insufficient to show the same (see Final Act. 5; citing Kondo
113) and are contradictory to the Examiner’s statement that in Kondo “[t]he
display regions are replaced not terminated” (Ans. 7). On the other hand, if
the Examiner interprets “terminating the display” as replacing the display
region (id.), then the Examiner’s findings fail to disclose the claimed means
for restricting the termination of the display region (see Final Act. 5; citing
Kondo 1113).
Kondo discloses:
In the example of Fig. 11, on the other hand, a drum has a plurality of
stages (three in this figure)... a drum with a plurality of stages
stacked on one another is virtually prepared. ... the drum is rotated
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Appeal 2015-002515
Application 13/080,835
in response to a flick operation in the first direction (for example, the
right-to-left direction). Then the stage of the drum is moved in
response to a flick operation in the second direction perpendicular to
the first direction.
1113. The Examiner has not shown where Kondo discloses restricting
either a de-activation of the display or a replacement of the displayed image.
We agree with Appellants that the Examiner erred in rejecting claim
1, and claims 2—11 for similar reasons. Since this issue is dispositive
regarding our reversal of dependent claims 2-4, we need not address
Appellants’ separate arguments regarding these claims (App. Br. 7).
Accordingly, we reverse the Examiner’s anticipation rejection of appealed
claims 1—4, 10, and 11.
DECISION
We reverse the Examiner’s § 102(e) rejection.
REVERSED
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