Ex Parte OhashiDownload PDFPatent Trial and Appeal BoardFeb 25, 201410593061 (P.T.A.B. Feb. 25, 2014) Copy Citation 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). Appeal 2011-011984 Application 10/593,061 2 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. Appeal 2011-011984 Application 10/593,061 3 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 Appeal 2011-011984 Application 10/593,061 4 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. Appeal 2011-011984 Application 10/593,061 5 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.) Appeal 2011-011984 Application 10/593,061 6 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 Appeal 2011-011984 Application 10/593,061 7 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 Appeal 2011-011984 Application 10/593,061 8 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. Appeal 2011-011984 Application 10/593,061 9 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. Appeal 2011-011984 Application 10/593,061 10 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 Appeal 2011-011984 Application 10/593,061 11 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.) Appeal 2011-011984 Application 10/593,061 12 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 cdc Copy with citationCopy as parenthetical citation