BROTHER KOGYO KABUSHIKI KAISHA

Patent Trials and Appeals Board

Mar 29, 2022

2020006405 (P.T.A.B. Mar. 29, 2022)

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. 14/447,716 07/31/2014 Yusaku TAKAHASHI 04503.0032FP01 6902 23552 7590 03/29/2022 MERCHANT & GOULD P.C. P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER TSAI, JAMES T ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): USPTO23552@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YUSAKU TAKAHASHI ____________ Appeal 2020-006405 Application 14/447,716 Technology Center 2100 ____________ Before JOHN A. EVANS, CARL L. SILVERMAN, JOYCE CRAIG Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 2, and 9-22, which constitute all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Throughout this opinion, we refer to the (1) Non-Final Office Action dated Jan. 29, 2020 (“Non-Final Act.”); (2) Appeal Brief dated June 19, 2020 (“Appeal Br.”); (3) Examiner’s Answer dated July 20, 2020 (“Ans.”); and (4) Reply Brief dated Sept. 14, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Brother Kogyo Kabushiki Kaisha as the real party in interest. Appeal Br. 3. Appeal 2020-006405 Application 14/447,716 2 STATEMENT OF THE CASE Appellant’s disclosure is directed to information processing devices that are provided with a pointing device such as a mouse, and provided with a touch panel display in which an input operation can be received utilizing two input systems: an input system utilizing the pointing device, and an input system utilizing the touch panel. Abstract, Spec., ¶¶ 2-4, 10, and Figs. 1-6. Claim 1 is representative3 of the invention and reads as follows (emphases added): 1. A non-transitory computer-readable recording medium which stores computer-readable instructions for an information processing device, the information processing device comprising: a processor; a pointing device; and a display, the computer-readable instructions, when executed by the processor, causing the information processing device to: display a pointer on the display in accordance with pointer position information indicating a moving direction and a moving amount of the pointer, the pointer position information being inputted from the pointing device; receive a first selection of an image in accordance with image selection information inputted from the pointing device, the image selection information indicating that the image corresponding to a displayed position of the pointer has been selected; receive a second selection of an image corresponding to a designated coordinate by detecting the designated coordinate that is a coordinate indicating a 3 Based on Appellant’s arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness rejection of claims 1, 2 and 9-22 on the basis of representative claim 1. See Appeal Br. 4-23. Appeal 2020-006405 Application 14/447,716 3 position where an indicator made contact or approached within a display region of the display; display a first object image on the display for receiving an input of an instruction to display a plurality of first images on the display, each of the plurality of first images having a function associated thereto, each of the plurality of first images being related to the first object image such that one of the functions associated to the first images is actually chosen by selecting one of the plurality of first images after the first object image has been selected; determine whether an operation to select the displayed first object image is received in the first selection by the pointing device or in the second selection by the indicator, display the plurality of first images related to the first object image at a first position of the display in a pull-down mode in a case where it is determined that an operation to select the displayed first object image is received in the first selection, the first position at which the plurality of first images is displayed being defined with a lower end of the first object image as a position reference and being below the first object image and an upper end of the plurality of first images contacting with the lower end of the first object image, and at a second position of the display different from the first position in a pop-up mode in a case where it is determined that an operation to select the displayed first object image is received in the second selection, the second position at which the plurality of first images is displayed being above the first object image such that the plurality of first images is not hidden by the indicator located below the first object image, the pull-down mode displaying the plurality of first images so as to pull out the plurality of first images from a displayed position of the first object image, the first position of the first images being different from the displayed position of the first object image, the pop-up mode displaying the plurality of first images so as to pop out the plurality of first images, and the second position of the first images being different from the displayed position of the first object image; and Appeal 2020-006405 Application 14/447,716 4 execute, in a case where a selection of a first image among the plurality of displayed first images is received, the process associated with the selected first image, wherein a first distance between the first images displayed at the second position and the first object is greater than a second distance between the first images displayed at the first position and the first object image, and the first images displayed at the first position and the first images displayed at the second position partially overlap or do not overlap. Appeal Br. 19-20 (Claims Appendix). REFERENCE AND REJECTIONS The prior art relied upon by the Examiner is: Name Reference Date Radakovitz et al. US 2013/0191779 Al July 25, 2013 DeMaio et al. US 2013/0290903 Al Oct. 31, 2013 Wilson US 2006/0244735 Al Nov. 2, 2006 Devi et al. US 2014/0354554 Al Dec. 4, 2014 Sip US 2009/0284488 Al Nov. 19, 2009 Claims 1, 2, and 9-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Radakovitz, DeMaio, Wilson, and Devi. Non-Final Act. 4-21. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Radakovitz, DeMaio, Wilson, Devi, and Sip. Non-Final Act. 21-23. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions in the Appeal Brief and the Reply Brief that the Examiner has Appeal 2020-006405 Application 14/447,716 5 erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief. Arguments which Appellant could have made, but did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We provide the following for highlighting and emphasis. In the Non-Final Action, the Examiner finds the combination of Radakovitz, DeMaio, Wilson, and Devi teaches the limitations of representative claim 1 and provides reasoning to combine the teachings. Non-Final Act. 4-21. Appellant argues, inter alia: independent claims 1 and 14 include the feature of: displaying a plurality of images, having functions associated with a displayed object image, in a pull-down mode responsive to selection of the object image by a hardware pointing device and displaying the plurality of images in a pop-up mode responsive to selection of the object image by touch/contact. This feature is not found in the prior art and, further, Devi actually teaches away from this feature. Appeal Br. 15. Appellant sets forth arguments why Radakovitz fails to disclose that a display mode, specifically a pull-down mode or a pop-up mode, for a plurality of images changes dependent upon a whether a hardware pointing device selection or touch selection of an object image occurs, as set forth in Applicant's claims. Id. at 15 (citing Radakovitz ¶ 40). Appellant argues, as with Radakovitz, DeMaio fails to disclose that a display mode, specifically a pull-down mode or a pop-up mode, for a plurality of images changes dependent upon a whether a hardware pointing device selection or touch selection of an object image occurs, as set forth in Applicant's claims. Id. (citing DeMaio ¶¶ 7-10). Appellant argues Wilson is not cited for teaching the feature of displaying a plurality of images in a pull-down mode or a pop- Appeal 2020-006405 Application 14/447,716 6 up mode dependent upon a whether a hardware pointing device selection or touch selection of an object image occurs, as set forth in Applicant's claims. Id. at 16 (citing Wilson, Abstr.). Appellant argues Devi also does not teach a pull-down mode or a pop-up mode, for a plurality of images changes dependent upon a whether a hardware pointing device selection or touch selection of an object image occurs. Id. at 17 (citing Devi ¶¶ 29, 30, 43; Figs. 2B, 3A, 3B). According to Appellant, Devi teaches that regardless of receiving a hardware pointing device selection or a touch/contact selection of an object image, a plurality of images having a function associated with the object image will always be displayed in a drop-down mode. Id. Appellant further argues that Devi teaches away from Applicant’s claimed feature of displaying a plurality of images in a pull-down mode or a pop-up mode dependent upon a whether a hardware pointing device selection or touch selection of an object image occurs. Id. In the Answer, the Examiner reiterates that Radakovitz teaches the display of a pull-down menu. Ans. 24 (citing Radakovitz Figs. 5-7). Regarding Appellant’s argument that Radakovitz, DeMaio, and Wilson do not teach the “changing between a pull-down mode and a pop-up mode dependent upon input type,” the Examiner “agrees” that this concept is taught by Devi. Id. The Examiner finds Devi teaches the principle of presenting different user interfaces based on the touch input received and teaches that an application user interface may detect a touch input and then present a touch-optimized mode, and if the user switches to a precision mode, such as a mouse input, then a precision interface may be displayed. Id. at 25 (citing Devi ¶ 5). The Examiner finds the switching between types of interfaces may be done based on the type of the input mode detected. Id. Appeal 2020-006405 Application 14/447,716 7 at 25-26 (citing Devi ¶ 24, Fig. 5). The Examiner finds there is no suggestion that the display of a pop-up menu for the touch mode rather than Devi's disclosed touch UI (user interface) at [528] would have destroyed the purpose, function of the combination. Id. at 26-27. In the Reply Brief, Appellant reiterates that Radakovitz, DeMaio, and Wilson do not teach pull-down menus and pop-up menus, and do not teach how a plurality of first images would be displayed differently in a pull-down menu or pop-up menu responsive to a hardware input or a touch input. Reply Br. 4. Appellant argues Devi teaches optimizing displays for a hardware input and a touch input but does not do so in the context of a pull- down menu and a pop-up menu. Id. According to Appellant, the figures of Devi which illustrates the differences between a display for a hardware input and touch input (FIGS. 3A-3B, 4A-4B, 6A-6B), respectively, illustrate small-sized display content for a hardware input (FIGS. 3A, 4A, and 6A) and large-sized display content for a touch input (see FIGS. 3B, 4B, 6B). Id. Appellant argues, other than size, there are no differences in the display, i.e. there are no pull-down and pop-up menus that show a variation in display based on having received a hardware input or a touch input as set forth in Appellant’s claims 1 and 14. Id. We are persuaded by Appellant’s arguments because the Examiner presents insufficient evidence that the references, singly or in combination, teach or suggest the claimed use of pull-down menus and pop-up menus, and do not teach or suggest how a plurality of first images would be displayed differently in a pull-down menu or pop-up menu responsive to a hardware input (pointer) or a touch input as discussed supra and recited in representative claim 1. Appeal 2020-006405 Application 14/447,716 8 To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974). Accordingly, the Examiner does not provide prima facie support for the rejection. “[T]he [E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, based on the record, we reverse the rejection of representative claim 1, and claims 2 and 9-22. CONCLUSION We reverse the obviousness rejection of claims 1, 2, and 9-22. Because our decision with regard to the disputed limitations is dispositive of the rejections made, we do not address additional arguments raised by Appellant. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 9-20 103 Radakovitz, DeMaio, Wilson, Devi 1, 2, 9-20 21, 22 103 Radakovitz, DeMaio, Wilson, Devi, Sip 21, 22 Overall Outcome 1, 2, 9-22 REVERSED