Ex Parte Ohashi

Patent Trial and Appeal Board

Feb 25, 2014

10593061 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HISASHI OHASHI
__________

Appeal 2011-011984
Application 10/593,061
Technology Center 2100
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 from the final rejection of
claims 1-14, directed to an electronic device and a method of assigning
desired functions to its keys. The claims have been rejected on the grounds
of anticipation and obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Appellant identifies the Real Party-In-Interest as Sony Corporation (App.
Br. 2).

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STATEMENT OF THE CASE
The Specification discloses “an electronic device and a method of . . .
quickly displaying a setting screen for menu items or a setting screen for
non-menu items to be assigned to a key so as to improve the operability of
the electronic device” (Spec. 2: 18-22).
Claims 1-14 are pending and on appeal.2 Representative claims 1 and
11 are reproduced below:
1. An electronic device having a display panel and a plurality of keys to
which desired functions can be assigned, comprising:
display means for causing display of a plurality of items on the
display panel;
means for receiving a selection of a desired item from the plurality of
items, after which
the display means causing display of a setting screen corresponding to
the selected desired item; and
assigning means for assigning keys using the setting screen,
wherein a first of the plurality of keys is assigned a function for
displaying the setting screen, and
wherein second and third of the plurality of keys are respectively
assigned to one of a paired function.

11. A method of assigning desired functions to a plurality of keys,
comprising the steps of:
displaying a plurality of items;
receiving a selection of a desired item from the plurality of items;
receiving a selection of a key to which a function is assigned from the
plurality of keys; and
assigning said function to the selected key,
wherein said function is a paired function.

2 Claims 13 and 14 were submitted by Appellant after the Final Rejection;
entered by the Examiner in the Advisory Action dated November 1, 2010;
and rejected as anticipated by Maeda on page 7 of the Examiner’s Answer.
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The Examiner relies on the following evidence:
Matsumoto et al. US 2002/0007487 A1 Jan. 17, 2002
Maeda et al. US 2002/0015598 A1 Feb. 7, 2002
Takagi et al. US 2002/0112248 A1 Aug. 15, 2002
The claims stand rejected as follows:
Claims 1, 2, 4-7, 9, 10, 13, and 14 under 35 U.S.C. § 102(b) as
anticipated by Maeda (Ans. 4-7).
Claims 3 and 8 under 35 U.S.C. § 103(a) as unpatentable over Maeda
and Matsumoto (Ans. 8-9).
Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Matsumoto and Takagi (Ans. 10-11).
We affirm-in-part.
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence of record.
1. The Specification does not define “paired” functions, but
teaches that the functions edit search + (which “reproduc[es] the tape
forwards in the record pause state”) and edit search - (which “reproduc[es]
the tape backwards in the record pause state”) “exemplify paired functions”
(Spec. 13: 24 - 14: 1). The Specification further teaches that “[o]ther
examples of paired functions are ‘tel/wide’, and ‘focus ±’” (id. at 14: 2-3), as
well as shake compensation ON/OFF (id. at 10: 11-13).
2. Maeda discloses “[a]n operation device provided to a copying
machine” (Maeda ¶ 43).
As shown in FIG. 1, the operation device 1 of the
copying machine 100 . . . comprises various keys 2a such as a
numeric keypad, an operation unit 2 comprising a start button
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2b and a stop button 2c, and a display unit 3 positioned on the
left side of the operation unit 2. . . .
The operation device 1 is provided with a plurality of
executable functions . . . for setting the size of the transfer paper
and reduction/enlargement ratio of copying (. . . the basic
function), a function for setting the output mode to the transfer
paper and output darkness (. . . the edit function), and a function
for preparing output setting for each set of documents or
stapling such set documents (. . . the finish function).
(Maeda ¶¶ 44, 45.)
3. Maeda further discloses:
As shown in FIG. 2, basic screen 5 is displayed on the
display unit 3 . . . and displayed on this basic screen 5 are a
“basic” key 11, “edit function” key 12, and “finish” key 13 (. . .
collectively referred to as item keys).
The respective item keys 11~13 are coordinated with the
respective item setting screens 5~7 shown in FIG. 2. . . . The
basic screen 5 is a screen for selecting functions appertaining to
the aforementioned basic functions, the edit function screen 6 is
a screen for selecting functions appertaining to the
aforementioned editing functions, and the finish screen 7 is a
screen for selecting the functions appertaining to the
aforementioned finishing functions.
A list of functions appertaining to the relevant item is
displayed on the respective item setting screens 5~7. In other
words, select paper keys such as the “A4 landscape” key A1,
“A4 portrait” key A2, [etc.,] selected magnification display unit
A7 for displaying the value of the selected magnification ratio,
and a “magnification selection” key A8 for selecting the
copying reduction/enlargement ratio are displayed at the left
area of the basic screen 5 . . . and the paper size to be copied,
the orientation and magnification ratio thereof are selected by
the operator pressing these keys A1~A6 and A8.
Displayed at the left area of the edit function screen 6 are
a “margin” key B1, “frame deletion” key B2, “mirror image”
key B3, “consolidation” key B4, “both sides/one side” key B5,
[etc.,] . . . are selected by the operator pressing the keys B1~B6.
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Displayed at the left area of the finish screen 7 are a
“sort” key C1, “staple” key C2, “punch” key C3, “group” key
C4, and functions such as “sort” and “staple” are set by the
operator pressing the keys C1~C4.
(Maeda ¶¶ 46-50.)
4. Maeda further discloses:
A screen for setting detailed functions is provided
hierarchically to the respective functions . . . , and, when a
desired key is pressed in the item setting screens 5~7, a function
setting screen corresponding to such key is displayed.
For example, as shown in FIG. 3, when the “A4
landscape” key Al and “magnification selection” key A8 are
pressed, the screen is switched to the function setting screen 51.
Displayed on this screen 51 are a selected magnification display
unit A9 for displaying the set magnification, an “enlargement”
key A10 as a function key, a “reduction” key All, a “100%” key
A12, a “141 %” key A13, a “200%” key A14, a “70%” key A15
and a “50%” key A16, and a “shortcut key registration” key
A17, a “return to initial value” key A18 and a “close” key A19
are also displayed thereunder.
. . .
Moreover, as shown in FIG. 4, for example, when the
“consolidation” key B4 is pressed in the edit function screen 6,
the screen switches to the first function setting screen 61.
Displayed on this screen 61 are function keys such as the
“none” key B7, “2 in 1” key B8 and “4 in 1” key B9, and a
“shortcut key registration” key B10, a “return to initial value”
key B11 and a “close” key B12 are also displayed thereunder.
In this screen 61, for instance, when the “2 in 1” key B8
is pressed, it switches to a second function setting screen 62 to
which are displayed, in addition to the respective keys B7~B9,
function keys such as the “left staple” key B13, “right staple”
key B14. . . . When a key other than the “consolidation” key is
pressed, similar to the above, a function setting screen in the
respective functions is displayed.
(Maeda ¶¶ 51-55.)
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5. Further according to Maeda:
As shown in FIG. 2, shortcut key display units Sl~S3 for
displaying shortcut keys K1~K9 which are provided for
reducing the number of operations of the respective keys are
provided to the right-side area of the respective screens 5~7
upon copying with detailed functions and the like. Up to three
types of shortcut keys are respectively displayable on the
shortcut key display units Sl~S3 of the respective screens 5~7.
Until functions and the like are allocated to the respective
shortcut keys, texts such as “basic 1” . . . , “edit 1” . . . , “finish
1” . . . are displayed on keys K1~K9, and, when the functions
are allocated to the shortcut keys, the function name is
displayed in place of such texts.
In addition to the above, for instance, “shortcut key
registration” keys A17, B10, C7 for allocating functions to
shortcut keys K1~K9 are provided to the respective function
setting screens of screens 51 and 52 of FIG. 3, screens 61, 62
and 62' of FIG. 4, and screens 71 and 72 of FIG. 5.
. . .
As with screen 62' of FIG. 4, when the “shortcut key
registration” key B10 is pressed after the respective functions
have been set to desired settings, as shown in FIG. 6, the screen
is switched to a shortcut key selection screen 8 for selecting the
shortcut key to which the aforementioned settings are allocated.
The operator will select in this shortcut key selection screen 8
the shortcut key to be allocated among the “basic 1” key K1, . .
. , “edit 1” key K4, . . . , “finish 1” key K7, . . . of the shortcut
key display areas Sl~S3 in screens 5~7.
(Maeda ¶¶ 60-63.)
6. Matsumoto discloses three methods of selecting a time at which
registration with function keys is made effective:
In the first method, when the end key 717 is operated, the
registration operation performed on the menu display before
this end key 717 operation becomes effective. In the second
method, the registration performed by selecting one of the
registration menu items at the lowest layer on the menu display
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and by operating the determination key 707 becomes effective
immediately after the operation of the determination key 707.
In the third method, the registration becomes effective after a
lapse of a certain time period if no operation is performed after
the registration operation.
(Matsumoto ¶ 68.)
ANTICIPATION
The Examiner finds that Maeda discloses the invention of claims 1, 2,
4-7, 9, 10, 13, and 14. Specifically, the Examiner finds, in relevant part, that
paragraphs 44-67 of Maeda describe an electronic device with a display
panel and a plurality of keys to which desired functions can be assigned, a
setting screen, assigning means for assigning keys using the setting screen, a
first key assigned a function of displaying the setting screen, and second and
third keys respectively assigned to one of a paired function (Ans. 4-5).
Claims 1, 4, and 5
Appellant contends that Maeda “fails to disclose, teach or suggest
‘assigning means for assigning keys using the setting screen, wherein a first
of the plurality of keys is assigned a function for displaying the setting
screen, and wherein second and third of the plurality of keys are respectively
assigned to one of a paired function.’” (App. Br. 15.) Appellant contends
that Maeda’s “allocations of the individual short cut [sic] keys K1-K9 are
done separately without regard to a paired function” (id.), thus, Maeda “does
not teach . . . associating such paired functions with an assignable button”
(id. at 16).
Appellant’s argument is not persuasive. First, the Specification does
not explicitly define “paired” functions, but merely provides examples: e.g.,
edit search ±; tel/wide; focus ±; and shake compensation on/off (FF 1). We
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find that these examples are reasonably interpreted as alternative functions.
That being the case, we agree with the Examiner’s finding that Maeda’s
alternative functions, “left staple” and “right staple,” are paired functions
that can be assigned to shortcut keys. Similarly, we find that Maeda
discloses several other examples of alternative, i.e., paired, functions. For
example, landscape/portrait and enlarge/reduce are reasonably interpreted as
paired functions.
Second, the underlying implication of Appellant’s argument is that the
step “wherein a first of the plurality of keys is assigned a function for
displaying the setting screen” and the step(s) “wherein second and third of
the plurality of keys are respectively assigned to one of a paired function”
stand in a particular hierarchical relationship or association, i.e., that
assignment of the second and third keys occurs at the same hierarchical
level. However, claim 1 does not require any particular hierarchical
relationship or association between these steps, or between the keys
themselves.
Accordingly, the rejection is affirmed with respect to claim 1, and
claims 4 and 5, which were not separately argued. 37 C.F.R. § 41.37(c)(1).
Claim 2
Appellant contends that Maeda “fails to disclose, teach or suggest
‘wherein when said one of a paired function is assigned, a message prompts
a user to assign the other of the paired function.’” (App. Br. 17.)
We agree with Appellant that the Examiner has not established that
Maeda discloses this limitation.
The rejection of claim 2 as anticipated by Maeda is reversed.

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Claims 6, 9, and 10
Claim 6 is similar to claim 1, but additionally requires “display means
for displaying a second setting screen for items that are not included in the
plurality of items when the selected desired item is assigned to said one of
the plurality of keys.”
Appellant reiterates the arguments made with respect to claim 1,
(which are unpersuasive for the reasons discussed above) and additionally
contends that Maeda “fails to disclose, teach or suggest ‘display means for
displaying a second setting screen for items that are not included in the
plurality of items when the selected desired item is assigned to said one of
the plurality of keys.’” (App. Br. 20.)
This argument is not persuasive as Maeda discloses that setting
screens for setting detailed functions are “provided hierarchically to the
respective functions . . . , and, when a desired key is pressed . . . a function
setting screen corresponding to such key is displayed” (FF 4).
Accordingly, the rejection is affirmed with respect to claim 6, and
claims 9 and 10, which were not separately argued.
Claim 7
Appellant contends that Maeda “fails to disclose, teach or suggest
‘prompting a user to assign the other of the paired function when said one of
a paired function is assigned to said one of the plurality of keys.’” (App. Br.
21.)
We agree with Appellant that the Examiner has not established that
Maeda discloses this limitation.
The rejection of claim 7 as anticipated by Maeda is reversed.
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Claims 13 and 14
Appellant argues that “[t]he Advisory Action dated November 1, 2010
entered new claims 13 and 14 for purposes of an Appeal” (Reply Br. 20), but
“no art rejection or argument to these claims has been issued by the
Examiner” (id.).
Nevertheless, the Examiner did reject these claims as anticipated by
Maeda, on the same basis as the rejection of claims 1 and 6 (Ans. 7).
The rejection of claims 13 and 14 as anticipated by Maeda is affirmed.
OBVIOUSNESS
Maeda & Matsumoto
Claims 3 and 8 stand rejected as unpatentable over Maeda and
Matsumoto.
Claim 3 depends from claim 1, and further requires a step “wherein
when said one of a paired function is assigned to the second key, the other of
the paired functions is automatically assigned to the third of the plurality of
the keys.” Claim 8 depends from claim 6, and includes a similar limitation.
The Examiner finds that Matsumoto, in paragraph 68, expressly
discloses this limitation, and concludes that it would have been obvious for
one of ordinary skill in the art to modify Maeda’s system to include
automatic assignment of the second of a paired function to a key once the
first of the pair is assigned to a key.
Nevertheless, although paired functions can be assigned to second and
third keys of Maeda’s device, the Examiner has not established that Maeda’s
device automatically assigns the second of a pair of functions to a key once
one of the pair has been assigned a key. Matsumoto, on the other hand,
discloses various methods of selecting the time when registration of a
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function or functions with a function key becomes effective, but again, the
Examiner has not identified any portion of the reference that discusses
automatically assigning particular functions together.
Therefore, we agree with Appellant that the Examiner has not shown
that either reference discloses the step “wherein when said one of a paired
function is assigned to the second key, the other of the paired function is
automatically assigned to the third of the plurality of the keys” (App. Br.
24).
The rejection of claims 3 and 8 as unpatentable over Maeda and
Matsumoto is reversed.
Maeda, Matsumoto, & Takagi
Claims 11 and 12 stand rejected as unpatentable over Maeda,
Matsumoto, and Takagi.
Claim 11
With respect to claim 11, Appellant contends that the combination of
references “fails to disclose, teach or suggest ‘assigning said function to the
selected key, wherein said function is a paired function.’” (App. Br. 26.)
Nevertheless, claim 11 merely requires assigning one of a paired
function to a key, and the rejection is affirmed for the same reasons
discussed above in connection with claim 1.
Claim 12
Appellant contends that Maeda, Matsumoto, and Takagi “fail to
disclose, teach or suggest ‘assigning said function selected at the function
selecting step and assigning another function, from said paired set of
functions, to said key.’” (App. Br. 28.)
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As noted by Appellant, claim 12 requires assignment of a set of paired
functions (i.e., two functions) to the same key. The rejection of claim 12 is
reversed because the Examiner has not adequately addressed this aspect of
the claim.
SUMMARY
The rejection of claims 1, 2, 4-7, 9, 10, 13, and 14 as anticipated by
Maeda is affirmed with respect to claims 1, 4-6, 9, 10, 13, and 14, and
reversed with respect to claims 2 and 7.
The rejection of claims 3 and 8 as unpatentable over Maeda and
Matsumoto is reversed.
The rejection of claims 11 and 12 as unpatentable over Matsumoto
and Takagi is affirmed with respect to claim 11 and reversed with respect to
claim 12.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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