Ex Parte Akaike et al

Patent Trial and Appeal Board

Jun 5, 2018

12221537 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/221,537 08/04/2008
134795 7590 06/07/2018
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Kazuhiro Akaike
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.
880001-6407-US02 2149
EXAMINER
SOTO LOPEZ, JOSE R
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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):
DCipdocket@michaelbest.com
sbj ames@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUHIRO AKAIKE, TAKES HI HIZUME,
and
YUKIKO ONODERA
Appeal2018-001291
Application 12/221,537
Technology Center 2600
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and JUSTIN BUSCH,
Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 8-13. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Sony Corporation of
Tokyo, Japan. Br. 3.
Appeal 2018-001291
Application 12/221,537
Representative Claim
Claims 1 and 11 are independent. Representative claim 1 under
appeal read as follows:
1. A display apparatus comprising:
a display section;
a touch panel arranged on the display surface of the
display section to allow the user to specify a desired position on
a displayed image being displayed on the display section by
pressing a pointer against it;
a display control section that causes a plurality of
indicators to be displayed on the display section so as to allow
the user to select one of them by way of the touch panel; and
a notifier section that notifies the user of the indicator
selected from the plurality of indicators; wherein
the notifier section being adapted to notify the user of the
selection of one of the indicators when the indicator of plurality
of indicators being displayed on the display section is selected by
pressing the pointer against the touch panel, and
the display control section being adapted to finalize the
selection by the user of said one of the indicators when the
pointer selecting the indicator is moved away from the touch
panel after selecting it by being pressed against the touch panel,
and further wherein each of the plurality of alphanumeric
characters has a corresponding region of the touch screen panel
proximate the character that is associated with a user selection of
the character, a visual representation for each of the characters
being of a first size;
the display control section causing generation of an
enlarged visual representation for each selected alphanumeric
character on the touch screen panel that is substantially greater
than the first size in response to the corresponding region
proximate the character being touched; and
the enlarged representation of the selected alphanumeric
character is surrounded by a distinctive background having a
defined perimeter that distinguishes the enlarged representation
and wherein the perimeter extends from a region corresponding
to an alphanumeric character representation that is currently
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touched, and further wherein the perimeter has a tapered portion
that is a portion of the perimeter closest to the selected
alphanumeric character and the enlarged representation of the
selected alphanumeric character is superimposed over other
alphanumeric characters, and further wherein the display control
section causes generation of an enlarged representation of a first
alphanumeric character corresponding to a first character being
touched and while contact with the display is maintained, the
display control section causes generation of an enlarged
representation of a second alphanumeric character corresponding
to a second character being touched that is adjacent the first
character being touched while ceasing to present the enlarged
representation of the first alphanumeric character; and
further wherein the enlarged representation of the selected
alphanumeric character is arranged in a same relative position for
each of a plurality of the alphanumeric characters.
Rejections on Appeal2
Claims 1, 8, and 11-13 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Padgitt (US 2004/0160419 Al; publ. Aug 19,
2004), Heikkinen (US 6,073,036; iss. June 6, 2000), Gillespie (US
2002/0191029 Al; publ. Dec. 19, 2002), and Nowlan (US 6,169,538 Bl; iss.
Jan. 2, 2001).
Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Padgitt, Heikkinen, Gillespie, Nowlan, and Urtis
(Mrexcel.com forum, Highlight Active Row/Column)
(https://www.mrexcel.com/forum/showthread.php?22977-Highlight-Active-
Row-Column) (Oct. 2002).
2 We select claim 1 as representative. Separate patentability is not argued for
claims 8-13. Except for our ultimate decision, the§ 103(a) rejections of
claims 8-13 are not discussed further herein.
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Application 12/221,537
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because the prior art fails to teach:
the enlarged representation surrounded by the
defined border such as the enlarged representation
of the 8 shown in Figure 20 D. The substantial
differences in size and shape and the tapered portion
which points to the selected alphanumeric character
easily identifies and designates the selected
alphanumeric character.
Br. 7 (hereinafter the "disputed bubble feature").
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because "a person of ordinary skill in the art
would not have been motivated to combine the teachings of [Padgitt,
Heikkinen, and Nowlan with] Gillespie which merely shows a bubble
with touch pad selection technology described in the remaining
references of record." Br. 10.
Issue on Appeal
Did the Examiner err in rejecting claims 1 and 8-13 as being obvious
because the references fail to teach or suggest the claim limitations at issue?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred, as well as the Examiner's response
to Appellants' arguments made in the Appeal Brief. We disagree with
Appellants' conclusions. Except as noted herein, we adopt as our own:
( 1) the findings and reasons set forth by the Examiner in the Final Office
Action from which the appeal is taken (Final Act. 2-21 ); and (2) the reasons
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Application 12/221,537
set forth by the Examiner in the Examiner's Answer (Ans. 20-22) in
response to the Appellants' Appeal Brief. We concur with the conclusions
reached by the Examiner. We highlight the following.
The Examiner finds, and we agree, Gillespie teaches the disputed
bubble feature. Final Act. 8 (citing Gillespie, callout 720 in Fig. 7C).
As to Appellants' above contentions 1 and 2, we are not persuaded the
Examiner erred. We are not persuaded because Appellants' argument is
premised on a "physical" or "bodily" incorporation of limitations of one
reference into the other. This is not the standard of obviousness. See In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review") (citations omitted); In re Keller, 642 F.2d 413, 425
( CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art").
Moreover, "[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect." EWP Corp. v. Reliance Univ. Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted).
Furthermore, an ordinarily skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). "[T]he 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
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Application 12/221,537
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
The Examiner has set forth why an ordinary skilled artisan would
have been motivated to combine the teachings of Padgitt, Heikkinen,
Nowlan, and Gillespie to arrive at the claimed invention. Ans. 21-22.
In particular, the Examiner finds, and we agree:
the selectable elements in Gillespie are analogous to the
selectable alphanumeric characters in the virtual keyboard of
Padgitt as modified by Heikkinen (refer to Fig. 3 of Padgitt
showing an alphanumeric character "J" potentially obfuscated
by a finger) and that one of ordinary skill in the art at the time of
the invention would have been motivated to modify the
selectable alphanumeric characters of Padgitt and Heikkinen by
incorporating the bubble described in Gillespie, as it is directed
to potentially obfuscated selectable items. The Office
respectfully submits that applying the modification of Gillespie
to the alphanumeric characters of Padgitt and Heikkinen would
provide the user with better visibility of a current potential
selection that is being obfuscated by a finger and potentially
further reduce user input errors.
Ans. 21-22 (emphasis ours).
Appellants have not presented any persuasive evidence or argument
why the ordinary artisan would not have possessed the knowledge and skills
to know how to combine the prior art references. As such, we find that one
of ordinary skill in the art would have recognized how to adjust Padgitt,
Heikkinen, and Nowlan to accommodate the teachings from Gillespie.
We observe that no Reply Brief is of record to rebut such findings,
including the Examiner's responses to Appellants' arguments.
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DECISION
We affirm the Examiner's rejections of claims 1 and 8-13 as being
unpatentable under 35 U.S.C. § 103(a).
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).
AFFIRMED
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