9601078 et al.

Patent Trials and Appeals Board

Jun 4, 2020

2020003235 (P.T.A.B. Jun. 4, 2020)

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.
96/000,221 07/03/2017 9601078 Q234368 2422
23373 7590 06/04/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/04/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEC CORPORATION
Patent Owner and Appellant
____________

Appeal 2020-003235
Reexamination Control 96/000,221
United States Patent 9,601,078 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1 and 7–16. We have jurisdiction under 35 U.S.C.
§§ 134 and 306.2
We AFFIRM.

1 Appellant identifies the real party in interest as NEC INTELLECTUAL
PROPERTY CENTER AMERICA. Appeal Br. 2.
2 On May 18, 2020, Appellant waived attendance at an oral hearing
scheduled for this appeal on May 27, 2020.
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STATEMENT OF THE CASE
This proceeding is a supplemental examination of United States
Patent 9,601,078 (“the ’078 patent”), issued to Ryo on March 21, 2017.
The ’078 patent’s invention controls displaying interrupt events, such
as incoming calls, by considering privacy when an electronic device, such as
a mobile phone, outputs image data to an external display device. To this
end, the interrupt notification is selected or limited based on attributes
relating to an electronic device and an external display device. See
generally ’078 patent, col. 2, ll. 8–25; col. 8, l. 1 – col. 12, l. 5. Claim 1 is
illustrative of the invention and is reproduced below:
1. An electronic device comprising:
a storage unit configured to store the image data;
a controller configured to read the image data from the
storage unit;
an image output processor configured to output the image
data to an external display device in synchronization with the
electronic device; and
an interrupt notification processor configured to notify an
interrupt event to the external display device,
wherein the image output processor selects or limits
interrupt notification relating to the interrupt event based on at
least one of a first attribute relating to the electronic device and
a second attribute relating to the external display device, thus
outputting the interrupt notification to the external display
device.

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THE REJECTIONS
The Examiner rejected claims 1 and 7–16 under 35 U.S.C. § 305 as
enlarging the reexamined patent’s claims. Final Act. 3–4.3
The Examiner rejected claim 14 under 35 U.S.C. § 112(b) or pre-AIA
35 U.S.C. § 112, second paragraph as indefinite. Final Act. 5.
The Examiner rejected claim 8 under 35 U.S.C. § 112(d) or pre-AIA
35 U.S.C. § 112, fourth paragraph as being of improper dependent form.
Final Act. 6.
The Examiner rejected claims 1, 7–10, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Kimura (US 2009/0209296 Al; published Aug.
20, 2009). Final Act. 6–12.
The Examiner rejected claims 1, 7, 9, 10, 14, and 15 under 35 U.S.C.
§ 102(b) as anticipated by Marley (US 2007/0139514 Al; published June 21,
2007). Final Act. 12–17.
The Examiner rejected claims 11 and 13 under 35 U.S.C. § 103 as
unpatentable over Marley and Kabuanik (CN101197890 A; published Aug.
11, 2008) (“CN ’890”). Final Act. 18–22.

3 Throughout this opinion, we refer to (1) the Final Rejection mailed April 4,
2018 (“Final Act.”); (2) the Appeal Brief filed October 3, 2018 (“Appeal
Br.”); (3) the Examiner’s Answer mailed December 31, 2018 (“Ans.”); and
(4) the Reply Brief filed February 28, 2019 (“Reply Br.”).
4 Although the Examiner rejects independent claim 1 as indefinite, the
Examiner nonetheless omits claims 9–13 that would also be indefinite due to
their dependency from claim 1. Despite this inconsistency, we nonetheless
reproduce the Examiner’s rejection as articulated on page 5 of the Final
Office Action and restated on page 3 of the Answer.
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The Examiner rejected claim 16 under 35 U.S.C. § 103 as
unpatentable over Marley and Toda (US 2008/0019494 A1; published Jan.
24, 2008). Final Act. 22–24.

THE IMPROPER BROADENING REJECTION
The Examiner finds that the amendment to independent claims 1 and
7 on October 3, 2017 improperly broadened the claims by eliminating (1) the
previously-recited image data acquisition part that acquires data, and (2)
various limitations in the “wherein” clause including replacing the
previously-recited refusing plural information with limiting interrupt
notification. Final Act. 3–4; Ans. 4–6. The Examiner adds that, unlike the
previous independent claims, the current independent claims do not specify
when the output processor makes the claimed determination. Ans. 6.
Appellant argues that not only is the currently-claimed controller not
broader than the patented image data acquisition part, the currently-claimed
“wherein” clause is also not broader than the patented limitation. Appeal Br.
8. According to Appellant, the Examiner incorrectly treats the previous
limitation of “selects or refuses a plurality of information” and the amended
limitation of “selects or limits interrupt notification” as applying to the same
step, such that the amended term “limits” broadens the previous term
“refuses.” Reply Br. 4–5. Appellant emphasizes, however, that this
interpretation is incorrect because the amended limitation refers to the result,
namely selecting or limiting the interrupt notification, that is said to “flow”
from the original limitation and, therefore, does not change the claim’s
scope. Reply Br. 5. Appellant adds that claims 1 and 7 are not broader than
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the patented claims with respect to the timing of executing the interrupt
notification process. Reply Br. 6–7.

ISSUE
Has the Examiner erred by finding that claims 1 and 7–16
impermissibly broaden the patented claims under 35 U.S.C. § 305?

ANALYSIS
We begin by noting that the test for determining whether a
reexamined claim is broader than an original claim under 35 U.S.C. § 305 is
the same as that under 35 U.S.C. § 251 for determining whether reissue
claims filed more than two years after issuance of the original patent are
broader than the original claims. Quantum Corp. v. Rodime, PLC, 65 F.3d
1577, 1582 n.4 (Fed. Cir. 1995); accord Manual of Patent Examining
Procedure (MPEP) §§ 2250, 2258(III)(A) (9th ed. Rev. 08.2017, Jan. 2018).
As with
§ 251 in reissue, § 305 is interpreted strictly in this regard to prohibit any
broadening claim amendments, even those that narrow the claim in other
respects. See Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d
1298, 1303 (Fed. Cir. 2008); see also Medtronic, Inc. v. Guidant Corp., 465
F.3d 1360, 1374 (Fed. Cir. 2006). That is, a claim in a reissue or
reexamination proceeding is broader in scope than the original claims if it
contains within its scope any conceivable apparatus or process which would
not have infringed the original patent. See Medtronic, 465 F.3d at 1374.
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That is the case here. As noted below, on October 3, 2017, claim 1
was amended as follows:

Amendment to claim 1 filed on October 3, 2017

As shown above, Appellant’s amendment revised every clause of
claim 1 including, among other things, replacing the recited image data
acquisition part configured to acquire image data with a controller
configured to read the image data from a storage unit configured to store
data. That is, despite the Examiner’s findings to the contrary (Final Act. 3–
4), the controller’s image data acquisition function was narrowed to a
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particular way to acquire data, namely reading it from storage. Therefore,
this aspect of the claimed invention was narrowed—not broadened—as the
Examiner apparently acknowledges in the Answer. See Ans. 4 (“[T]he
Examiner agrees that the claimed ‘controller’ is not necessarily broader than
the patented ‘image data acquisition part’”).
We do, however, agree with the Examiner that Appellant’s
amendment effectively broadened the last clause of claim 1, namely the
“wherein” clause. See Final Act. 4; Ans. 5–6. The ’078 patent’s original
“wherein” clause is reproduced below with our emphasis:
wherein, when an interrupt occurs while the image output
processor outputs the image data to an external display device,
the image output processor selects or refuses a plurality of
information relating to the interrupt event based on at least one
of an attribute of the interrupt event and an attribute of the
external display device, thus outputting selected information to
the external display device.

’078 patent, col. 22, ll. 3–10.
Our emphasis on the terms “when” and “while” underscores two key
temporal limitations pertaining to the recited image output processor,
namely that it selects or refuses information relating to the interrupt event
not only when an interrupt occurs, but also that this interrupt occurs while
the processor outputs image data to the display device.
But after amendment, claim 1 now recites, in pertinent part, “wherein,
the image output processor selects or limits interrupt notification relating to
the interrupt event based on at least one of a first attribute relating to the
electronic device and a second attribute relating to the external display
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device, thus outputting the interrupt notification to the external display
device.”
Although Appellant’s amendment narrowed the previously-recited
selected and outputted information to a particular form of that information,
namely an interrupt notification, the amendment nonetheless broadened the
limitation in other respects by (1) removing the particular time when this
information selection occurs, namely when an interrupt event occurs while
the processor outputs image data to the display device; and (2) changing the
attributes’ respective relationships to their associated elements.
That the claim now recites that the image output processor is
configured to output the image data to the display device in synchronization
with the electronic device as Appellant indicates (Reply Br. 6–7) is of no
consequence here, for this recited synchronization does not specify the
particular time when information selection occurs, namely when an interrupt
event occurs while the processor outputs image data to the display device as
originally claimed. To the extent Appellant contends otherwise, we
disagree.
Furthermore, the first recited attribute is now recited, quite broadly, as
merely relating to the electronic device rather than being specifically “of the
interrupt event” as originally claimed. Moreover, the second recited
attribute is now recited, quite broadly, as merely relating to the external
display device rather than being of that device as originally claimed.
Simply put, an attribute relating to the recited electronic device as
now claimed includes, but is not limited to, attributes of the device’s
associated interrupt events. This increased attribute coverage is unlike
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patented claim 1 where the first recited attribute is limited specifically to that
of the interrupt event. Similarly, an attribute relating to the recited display
device as now claimed includes, but is not limited to, attributes of that
device, but also can include other attributes that merely relate to that device.
This increased attribute coverage is unlike patented claim 1 where the
second recited attribute is limited specifically to that of the display device.
Therefore, despite Appellant’s amendment narrowing the claim in
some respects, it nonetheless broadened the claim in other respects—a
broadening that is impermissible under § 305. See Predicate Logic, 544
F.3d at 1303; see also Medtronic, 465 F.3d at 1374. We reach the same
conclusion regarding independent claim 7 that was amended similarly.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1 and 7–16 under § 305.

THE INDEFINITENESS REJECTION
Because Appellant does not contest the Examiner’s indefiniteness
rejection of claim 15 (see Appeal Br. 9; Final Act. 5; Ans. 7), we summarily
sustain this rejection. See MPEP § 1205.02 (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).

5 As noted previously, the Examiner rejects only independent claim 1 as
indefinite, and omits dependent claims 9–13 that would also be indefinite
due to their dependency from claim 1.
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THE IMPROPER DEPENDENT CLAIM REJECTION
Although Appellant does not contest the Examiner’s improper
dependent claim rejection of claim 8 under § 112(d) (see Appeal Br. 9; Final
Act. 6; Ans. 7), we do not summarily sustain this rejection as we did for the
uncontested indefiniteness rejection, but rather reverse it because it is
improper on its face.
Claim 8 is independent—not dependent. Claim 8 recites, with our
emphasis, “[a] non-transitory computer-readable storage media having
stored a program causing a computer of an electronic device to implement
the image data output processing method according to claim 7.” Our
emphasis underscores that the claim, when read as a whole, is directed to
computer-readable storage media—an article of manufacture that is in a
different category of subject matter under 35 U.S.C. § 101 than that for
independent claim 7 whose recited method falls in the process category. See
35 U.S.C. § 101.
Although claim 8 incorporates independent claim 7’s limitations by
reference, that does not mean that it depends from claim 7. That is, when
read as a whole, claim 8 is not intended to further limit independent claim 7
under 37 C.F.R. § 1.75(c), but merely incorporate the limitations of claim 7
by reference, thus precluding the need to articulate every word of those
incorporated limitations expressly—a common shorthand claim drafting
technique. See, e.g., Guidelines for Examination § 3.8, European Patent
Office (Oct. 1, 2019), https://www.epo.org/law-practice/legal-
texts/html/guidelines/e/f_iv_3_8.htm (“A claim containing a reference to
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another claim is not necessarily a dependent claim . . . . One example of this
is a claim referring to a claim of a different category (e.g. ‘Apparatus for
carrying out the process of claim 1 . . .’, or ‘Process for the manufacture of
the product of claim 1 . . .’”).
Here, claim 8 merely specifies what the program stored on the media
does when that program is executed at some future time, namely that the
program causes the electronic device’s computer to implement claim 7’s
image data output processing method. When read as a whole, then, claim 8
is directed to the storage media—a manufacture—not the process that
happens when the program on that media is executed. In fact, this execution
need not occur at all to satisfy the claim: rather, the claim is satisfied by
merely providing storage media, such as a disk, with the recited program
stored thereon.
Because claim 8 is independent—not dependent—the Examiner’s
rejection under § 112(d) is improper. Although Appellant does not contest
this rejection, it is nonetheless factually and legally unsound and, therefore,
no reasonable mind could accept it. See generally Consolidated Edison Co.
v. N.L.R.B., 305 U.S. 197, 229 (1938) (defining “substantial evidence” as
such relevant evidence as a reasonable mind might accept as adequate to
support a conclusion); see also In re Gartside, 203 F.3d 1305, 1312 (Fed.
Cir. 2000) (quoting this definition).
Therefore, the Examiner erred in rejecting claim 8 under § 112(d).

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THE ANTICIPATION REJECTION OVER KIMURA
The Examiner finds that Kimura discloses an electronic device with
every recited element of independent claim 1 including an image output
processor that selects or limits interrupt notification relating to an interrupt
event based on at least one of (1) a first attribute relating to the electronic
device, namely the clock time when a connection is established with the
electronic device that determines a call’s priority; and (2) a second attribute
relating to an external display device, namely each display device’s
arrangement with respect to the driver’s and passenger’s seats, respectively.
Final Act. 6–8; Ans. 12–14.
Appellant argues that, in rejecting the claim, the Examiner
misconstrued the “at least one of” limitation to recite that the interrupt
notification is selected or limited based on either the first or second
attributes. Reply Br. 7–11. According to Appellant, because the “at least
one of” limitation applies only to the first attribute, the recited interrupt
notification selection or limitation is based on both attributes—not just one.
Reply Br. 8. Appellant adds that Kimura does not disclose the recited
attributes, let alone select or limit an interrupt notification based on those
attributes as claimed. Appeal Br. 9–12; Reply Br. 14–17. Appellant argues
various other recited limitations summarized below.

ISSUES
Under § 102, has the Examiner erred by finding that Kimura
discloses:
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(1) the image output processor selecting or limiting an interrupt
notification relating to an interrupt event based on at least one of a first
attribute relating to the electronic device and a second attribute relating to an
external display device as recited in claim 1 (“the interrupt notification
limitation”)?
(2) the limitations recited in claims 9 and 12?

ANALYSIS
Claims 1, 7, and 8
We begin by noting that the Examiner and Appellant construe the
disputed interrupt notification limitation in claim 1 quite differently. The
Examiner construes the recited interrupt notification being selected or
limited based on at least one of (1) a first attribute relating to the electronic
device, and (2) a second attribute relating to the external display device. See
Final Act. 8; Ans. 12–14. Under this construction, selecting or limiting the
interrupt notification need only be based on either the first or the second
attribute to satisfy the claim. See Ans. 12.
Appellant, on the other hand, construes the interrupt notification
limitation such that the “at least one of” term applies only to the first
attribute, such that the interrupt notification is selected or limited based on
both attributes—not just one. See Reply Br. 8. In other words, Appellant
construes the recited interrupt notification being selected or limited based on
(1) at least one of a first attribute relating to the electronic device, and (2) a
second attribute relating to the external display device. See id.
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On this record, we see no error in the Examiner’s broader
construction. First, Appellant’s argument regarding the alleged impropriety
of the Examiner’s construction was first raised in the Reply Brief—not the
Appeal Brief—and is waived as untimely under 37 C.F.R. § 41.41(b)(2).
Compare Appeal Br. 9–12 with Reply Br. 8, 14–17. Nor has good cause
been shown to raise these new arguments in the first instance in the Reply
Brief, particularly since the Examiner refers to the recited attributes in the
alternative on page 8 of the Final Office Action from which this appeal was
taken. In fact, Appellant’s arguments in the Appeal Brief were limited
solely to the Examiner’s alternative construction, and said nothing about the
claim requiring that recited interrupt notification be based on both attributes
as alleged in the Reply Brief. Compare Appeal Br. 11 (“Appellant
respectfully submits that Kimura provides no disclosure whatsoever in
relation to selecting or limiting an interrupt notification relating to the
interrupt event based on an attribute of either the electronic device or the
external display device.”) (emphasis added) with Reply Br. 7–17. That
Appellant emphasizes the words “both” and “and” in connection with the
attributes on which the interrupt notification is based on pages 7, 8, and 10
of the Reply Brief—an emphasis that the Appeal Brief lacks—is telling in
this regard.
Nevertheless, even if this argument was timely raised—which it was
not—we still find it unpersuasive. First, construing the “at least one of”
term—a term synonymous with “one or more”6—to apply only to the first

6 See Howmedica Osteonics Corp. v. Wright Medical Technology, Inc., 540
F.3d 1337, 1344 (Fed. Cir. 2008).
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attribute as Appellant proposes (Reply Br. 8) runs counter to that attribute’s
singular—not plural—recitation. Notably, the claim recites both attributes
in the singular form, namely “a first attribute” and “a second attribute.”
Given these singular terms considered in the claim’s context that effectively
groups these individual attributes, the “at least one of” phrase in the interrupt
notification limitation more naturally aligns with the Examiner’s
construction, namely that the interrupt notification is selected or limited
based on at least one of (1) a first attribute relating to the electronic device,
and (2) a second attribute relating to the external display device. See Final
Act. 8; Ans. 12–14.
To the extent that Appellant contends that the cited passages in the
Specification somehow preclude the Examiner’s construction and require
Appellant’s proposed narrower construction (see Reply Br. 8–11), we
disagree. Nor will we import this description into the claims. See Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments. . . . [C]laims may embrace different subject matter than is
illustrated in the specific embodiments in the specification.”) (Citations and
internal quotation marks omitted).
Under the Examiner’s broader reasonable construction, we see no
error in the Examiner’s finding that Kimura anticipates the interrupt
notification limitation. First, we see no error in the Examiner’s mapping the
recited first attribute to the clock time when a connection is established with
the electronic device that determines a call’s priority in Kimura’s paragraph
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61 and Figure 18B. See Final Act. 8; Ans. 13. This temporal attribute at
least relates to the electronic device, namely the in-vehicle hands-free
apparatus 1 under the Examiner’s mapping (Final Act. 7), at least with
respect to the associated incoming call priority determination and
notification. See Kimura ¶¶ 57–61; Fig. 18B.
As shown in Kimura’s Figure 18B, the incoming call notification is
not only selected to indicate a priority call, but the notification is also limited
in that regard, particularly when comparing this priority-based notification
with the display in Figure 18A that lacks this particular notification. In
short, Kimura’s priority-based interrupt notification in Figure 18B is, at least
in one implementation, based at least on clock time—a temporal attribute
that, as noted in paragraph 61, is used to grant priority to the phone with the
earlier clock time.
For this reason alone, Kimura anticipates the interrupt notification
limitation given the limitation’s alternative language where the claim is
satisfied by the interrupt notification being selected or limited based on
either attribute—not both—consistent with the Examiner’s interpretation.
Nevertheless, we are also unpersuaded of error in the Examiner’s
finding that the interrupt notification is also selected or limited based on a
second attribute, namely each display device’s arrangement with respect to
the driver’s and passenger’s seats, respectively, in Kimura’s paragraph 68.
See Final Act. 8 (noting this alternative basis); Ans. 13. This arrangement-
based attribute at least relates to an external display device, not only
regarding its arrangement with respect to the vehicle and its occupants, but
also distributing information to those devices based on that arrangement.
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See Kimura ¶ 68. In this sense, then, the interrupt notification is not only
selected for display to particular vehicle occupants, namely the driver and
passengers, respectively, but the notification is also effectively limited by
distributing it to only the intended recipients in the vehicle. See Kimura
¶ 68.
In short, Kimura’s interrupt notification, namely that associated with
an incoming call under the Examiner’s mapping (see Final Act. 8), is
effectively selected or limited based on either attribute. Appellant’s
contention that Kimura lacks the recited attributes, but merely uses
information that identifies connected telephones (Reply Br. 16), is
unavailing and not commensurate with the scope of the claim that does not
preclude Kimura’s relied-upon disclosure for teaching the recited attributes.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 7 and 8 not argued separately with particularity.

Claims 9, 10, and 12
We also sustain the Examiner’s rejection of claim 9 reciting, in
pertinent part, the interrupt notification processor comprises (1) an
information selecting part configured to select or limit the interrupt
notification, where the notification represents internal or external interrupt
events, and (2) an information superposing part configured to superpose the
interrupt notification over the image data. Final Act. 10–11. We also
sustain the Examiner’s rejection of claim 12 reciting that the information
superposing part adjusts the interrupt notification’s brightness to that of the
image data.
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Although Appellant contends that Kimura does not disclose the
recited limitations, Appellant does not explain why this is so, but rather
argues CN ’890’s alleged deficiencies in this regard—a reference that was
not cited in either anticipation rejection. See Appeal Br. 12–14; Ans. 14–17
(noting this inconsistency). That is, Appellant does not argue Kimura’s
alleged shortcomings in connection with the anticipation rejection of claims
9 and 12 with particularity to show error in the Examiner’s associated
findings. See 37 C.F.R. § 41.37(c)(1)(iv) (noting that an argument that
merely points out what a claim recites is unpersuasive). Accord In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 9 and 12. We reach the same conclusion regarding claim 10 that is
also not argued separately with particularity.

THE ANTICIPATION REJECTION OVER MARLEY
Claims 1, 7, 9, and 10
We also sustain the Examiner’s anticipation rejection of claim 1 over
Marley. Final Act. 12–14. Although Appellant contends that Marley does
not disclose the recited limitations (Appeal Br. 9–10), Appellant does not
explain why this is so, but rather argues the alleged deficiencies of CN ’890
and Kimura in this regard—references that are inapposite to the Examiner’s
anticipation rejection that is based solely on Marley. See Appeal Br. 9–12;
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Ans. 8 (noting this inconsistency). Although the Examiner restates the
rejection after correctly articulating this inconsistency in the Answer, this
restatement is substantially similar to the rejection articulated in the Final
Office Action despite reproducing Marley’s Figures 1 and 4—figures that
are likewise referred to in the rejection. Compare Final Act. 12–14 with
Ans. 9–12.
That is, Appellant does not argue Marley’s alleged shortcomings in
connection with the anticipation rejection of claim 1 with particularity to
show error in the Examiner’s associated findings. See 37 C.F.R.
§ 41.37(c)(1)(iv) (noting that an argument that merely points out what a
claim recites is unpersuasive). Accord Lovin, 652 F.3d at 1357.
Furthermore, Appellant’s arguments regarding Marley’s alleged
shortcomings with respect to the Examiner’s anticipation rejection of claim
1 made for the first time on pages 11 to 14 of the Reply Brief are waived as
untimely, for these arguments were not raised in the Appeal Brief. See 37
C.F.R. § 41.41(b)(2). Nor has good cause been shown to raise these new
arguments in the first instance in the Reply Brief, particularly given the
striking similarity between the Examiner’s response to arguments in the
Answer and the rejection as noted above.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 7, 9, and 10 not argued separately with particularity.

Claims 14 and 15
We also sustain the Examiner’s rejection of claim 14 reciting (1)
recording a playback position of the image data on the storage unit when
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operated manually by the user; (2) carrying out a specific operation with the
electronic device; (3) upon detecting a termination of the specific operation,
resuming a time-shift playback for the image data at the playback position.
Although Appellant contends that CN ’890 and Kimura do not disclose the
recited limitations—references that are inapposite to the Examiner’s
anticipation rejection based solely on Marley. See Appeal Br. 15; Ans. 18
(noting this inconsistency). Although the Examiner also restates the
rejection after correctly articulating this inconsistency in the Answer, this
restatement is substantially similar to the rejection despite reproducing
Marley’s Figure 5—a figure that is likewise referred to in the rejection.
Compare Final Act. 16–17 with Ans. 17–19.
That is, Appellant does not argue Marley’s alleged shortcomings in
connection with the anticipation rejection of claim 14 with particularity in
the Appeal Brief to show error in the Examiner’s associated findings. See
37 C.F.R. § 41.37(c)(1)(iv) (noting that an argument that merely points out
what a claim recites is unpersuasive). Accord Lovin, 652 F.3d at 1357.
Furthermore, Appellant’s arguments regarding Marley’s alleged
shortcomings pertaining to the Examiner’s anticipation rejection of claim 14
that were made for the first time on page 14 of the Reply Brief are waived as
untimely, for these arguments were not raised in the Appeal Brief. See 37
C.F.R. § 41.41(b)(2). Nor has good cause been shown to raise these new
arguments in the first instance in the Reply Brief, particularly given the
striking similarity between the Examiner’s response to arguments in the
Answer and the rejection as noted above.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14, and claim 15 not argued separately with particularity.

THE OBVIOUSNESS REJECTION OVER MARLEY AND CN ’890
Claim 11
We also sustain the Examiner’s obviousness rejection of claim 11
over Marley and CN ’890. Final Act. 18–21. Claim 11 depends from claim
9 and recites, in pertinent part, (1) the first attribute relates to a secret setting
how to limit the interrupt notification based on a relationship between a user
and its communicating partner, and (2) the second attribute relates to a
private or public usage for the external display device and/or image data
type.
Although Appellant contends that CN ’890 and Kimura do not
disclose the recited limitations, Appellant not only fails to explain why this
is so, but this contention is inapposite to the Examiner’s proposed
combination that is based on Marley and CN ’890—not CN ’890 and
Kimura. See Appeal Br. 13; Ans. 20 (noting this inconsistency). Although
the Examiner restates the rejection after correctly articulating this
inconsistency in the Answer, this restatement is substantially similar to the
rejection articulated in the Final Office Action. Compare Final Act. 19–21
with Ans. 20–21.
That is, Appellant does not argue the alleged shortcomings of Marley
and CN ’890 in connection with the obviousness rejection of claim 11 with
particularity in the Appeal Brief to show error in the Examiner’s associated
findings and conclusions. See 37 C.F.R. § 41.37(c)(1)(iv) (noting that an
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argument that merely points out what a claim recites is unpersuasive).
Accord Lovin, 652 F.3d at 1357.
Furthermore, Appellant’s arguments regarding CN ’890’s alleged
shortcomings pertaining to the Examiner’s obviousness rejection of claim 11
that were made for the first time on pages 18 and 19 of the Reply Brief are
waived as untimely, for these arguments were not raised in the Appeal Brief.
See 37 C.F.R. § 41.41(b)(2). Nor has good cause been shown to raise these
new arguments in the first instance in the Reply Brief, particularly given the
striking similarity between the Examiner’s response to arguments in the
Answer and the rejection as noted above.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 11.

Claim 13
We also sustain the Examiner’s rejection of claim 13 that depends
from claim 11 and further recites the information selecting part limits the
interrupt notification to a predetermined message according to the secret
setting in the external display device’s public usage.
First, Appellant’s arguments in the Appeal Brief do not squarely
address—let alone persuasively rebut—the Examiner’s particular findings
from CN ’890 in the rejection for teaching or suggesting the recited
limitations. In the rejection, the Examiner cites three different portions of
CN ’890, namely (1) the paragraph spanning pages 6 and 7; (2) Figure 6;
and (3) pages 10 and 11. Final Act. 21. The Examiner’s findings in this
regard include details of CN ’890’s call notification process. Id.
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Appellant, however, quotes a single phrase from the last paragraph of
CN ’890’s page 10 regarding the disclosed television set’s sensor sensing
adding a new viewer and a current viewer’s departure and, based on this
single phrase, Appellant contends that CN ’890 does not disclose or suggest
the recited limitation. See Appeal Br. 14–15.
Notably, Appellant’s single quoted phrase from CN ’890’s paragraph
10 on page 14 of the Appeal Brief pertains to a feature that increases
processing speed—a functional qualifier in the first sentence of CN ’890’s
paragraph 10 that Appellant omits from the quote. Nevertheless,
Appellant’s argument does not squarely address—let alone persuasively
rebut—the Examiner’s reliance on the details of CN ’890’s call notification
process, let alone the additional relied-upon disclosure from CN ’890,
namely (1) the paragraph spanning pages 6 and 7; (2) Figure 6; and (3) the
remainder of pages 10 and 11. See Final Act. 21.
In the Answer, the Examiner reiterates this reliance on CN ’890’s call
notification process that varies a displayed notification based on (1) a user
management table setting, and (2) viewers’ detected facial characteristics.
See Ans. 22–23 (quoting the paragraph spanning CN ’890’s pages 6 and 7).
As noted above, the Examiner also relied on this disclosure in the rejection.
See Final Act. 21.
In the Reply Brief, however, Appellant contends for the first time that
CN ’890 does not limit the interrupt notification as claimed, but rather bars it
completely for incoming calls from users not registered in the management
table. See Reply Br. 18–19. Notably, Appellant provides no pinpoint
citations from CN ’890 to support this new argument. See id.
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This argument does not persuasively rebut the Examiner’s findings
and conclusions. First, Appellant’s new argument regarding CN ’890’s
alleged shortcomings in the Reply Brief was not raised in the Appeal Brief
and is, therefore, waived as untimely. See 37 C.F.R. § 41.41(b)(2). Nor has
good cause been shown to raise these new arguments in the first instance in
the Reply Brief, particularly given the striking similarity between the
Examiner’s response to arguments in the Answer and the rejection as noted
above. Although the Examiner reproduces the three notification methods
shown in CN ’890’s Figures 8 to 10 in the Answer, these figures merely
show their respective displays and are, therefore, substantively
commensurate with the relied-upon call notification functionality in the
rejection. Compare Ans. 23–24 with Final Act. 21–22. Therefore, to the
extent Appellant contends that the Examiner’s reproducing CN ’890’s
Figures 8 to 10 in the Answer somehow provides good cause to justify the
new argument on pages 18 and 19 of the Reply Brief, we disagree.
Nevertheless, even if this new argument in the Reply Brief was timely
presented—which it was not—we still find it unpersuasive. On this record,
Appellant’s contentions do not persuasively rebut the Examiner’s finding
that CN ’890’s call notification process varies a displayed notification based
on (1) a user management table setting, and (2) viewers’ detected facial
characteristics. See Ans. 22–23 (quoting the paragraph spanning CN ’890’s
pages 6 and 7). This notification variation effectively limits the notification
to a predetermined message according to those secret settings.
Appellant’s contention that CN ’890 does not limit the interrupt
notification as claimed, but rather bars it completely for incoming calls from
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users not registered in the management table (Reply Br. 18–19) is unavailing
and not commensurate with the scope of the claim. In short, Appellant does
not persuasively rebut the Examiner’s finding that CN ’890 at least suggests
limiting the interrupt notification as claimed by varying a displayed
notification based on settings and viewers’ facial characteristics as noted
above. See Ans. 22–23.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13.

THE OBVIOUSNESS REJECTION OVER MARLEY AND TODA
We also sustain the Examiner’s obviousness rejection of claim 16
over Marley and Toda. Final Act. 22–24. Claim 16 depends from claim 14
and further recites, in pertinent part, displaying a time bar on the external
display device indicating (1) the playback position of the image data with
the electronic device, and (2) another playback position of the image data
played back with the external display device.
Appellant contends that CN ’890 and Kimura do not disclose or
suggest the recited limitations, and that these references’ deficiencies are not
remedied by Marley or Toda. Appeal Br. 15–16. Appellant not only fails to
explain why this is so, but this contention is inapposite to the Examiner’s
proposed combination that is based on Marley and Toda—not CN ’890 and
Kimura. See Ans. 25–26 (noting this inconsistency). Although the
Examiner restates the rejection after correctly articulating this inconsistency
in the Answer, this restatement is substantially similar to the rejection
articulated in the Final Office Action despite reproducing Toda’s Figures
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9(a) and 9(b)—figures that are likewise referred to in the rejection.
Compare Final Act. 22–24 with Ans. 26–27.
That is, Appellant does not argue the alleged shortcomings of Marley
and Toda in connection with the obviousness rejection of claim 16 with
particularity in the Appeal Brief to show error in the Examiner’s associated
findings and conclusions. See 37 C.F.R. § 41.37(c)(1)(iv) (noting that an
argument that merely points out what a claim recites is unpersuasive).
Accord Lovin, 652 F.3d at 1357.
Furthermore, Appellant’s arguments regarding Toda’s alleged
shortcomings pertaining to the Examiner’s obviousness rejection of claim 16
that were made for the first time on pages 19 to 22 of the Reply Brief are
waived as untimely, for these arguments were not raised in the Appeal Brief.
See 37 C.F.R. § 41.41(b)(2). Nor has good cause been shown to raise these
new arguments in the first instance in the Reply Brief, particularly given the
striking similarity between the Examiner’s response to arguments in the
Answer and the rejection as noted above.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16.

CONCLUSION
The Examiner’s decision to reject claims 1 and 7–16 is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7–16 305 Improper
Broadening
1, 7–16
1 112(b) Indefiniteness 1
8 112(d) Improper
Dependent Claim
Form
8
1, 7–10, 12 102(b) Kimura 1, 7–10, 12
1, 7, 9, 10,
14, 15
102(b) Marley 1, 7, 9, 10,
14, 15

11, 13 103 Marley, CN ’890 11, 13
16 103 Marley, Toda 16
Overall
Outcome
1, 7–16

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this proceeding are governed by 37
C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

tj
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