14260036 (P.T.A.B. Sep. 10, 2018)

Ex Parte Hayashi

Patent Trial and Appeal BoardSep 10, 2018

14260036 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/260,036 04/23/2014 Mitsuo Hayashi 26694 7590 09/12/2018 VENABLELLP P.O. BOX 34385 WASHINGTON, DC 20043-9998 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. 122250-365263 1058 EXAMINER PATEL, SHIV ANG I ART UNIT PAPER NUMBER 2618 NOTIFICATION DATE DELIVERY MODE 09/12/2018 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): PTOMail@Venable.com khauser@venable.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSUO HAYASHI 1 Appeal2018-002229 Application 14/260,036 Technology Center 2600 Before CAROLYN D. THOMAS, ADAM J. PYONIN, and AMBER L. HAGY, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1, 3-9, and 11-14, which are all the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 "The real party in interest is JVC KENWOOD CORPORATION." App. Br. 1. Appeal2018-002229 Application 14/260,036 STATEMENT OF THE CASE Introduction The Application is directed to "an information display device that includes ... a display processing unit configured to display [] superimposed information in the display unit." Abstract. Claims 1, 13, and 14 are independent. Claim 1 is reproduced below for reference: 1. An information display device comprising: a transmittance setting unit configured to set, to a first character transmittance, a character information transmittance that indicates a degree that character information included in first display information of display information to be displayed in a display unit transmits second display information that is the display information, to set, to a first image transmittance that is a higher value than the first character transmittance, an image information transmittance that indicates a degree that image information included in the first display information transmits the second display information, to set a transmittance of the character information included in the second display information to a second character transmittance, and to set a transmittance of the image information included in the second display information to a second image transmittance that is a lower value than the second character transmittance; a superimposed information generation unit configured to generate superimposed information in which the first display information, which includes the character information and the image information to which the transmittances have been set by the transmittance setting unit, and the second display information, which includes the character information and the image information to which the transmittances have been set by the transmittance setting unit, are superimposed; and a display processing unit configured 2 Appeal2018-002229 Application 14/260,036 to display the superimposed information in the display unit, wherein each of the transmittance setting unit, the superimposed information generation unit, and the display processing unit is hardware or a combination of hardware and software. References and Rejections Claims 1, 3-9, and 11-14 stand rejected under 35 U.S.C. Â§ 101 for being directed to patent-ineligible subject matter. Final Act. 5---6. 2 Claims 1, 3-9, and 11-14 stand rejected under 35 U.S.C. Â§ I02(b) for being anticipated by over Nakanishi (US 2008/0068670 Al; Mar. 20, 2008). Final Act. 8. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). I. 35 USCÂ§ 101 Appellant argues "the claims are not directed to an abstract idea, and the Office Action has failed to meet the prima facie legal requirements for a rejection under 35 U.S.C. Â§ 101 based on ajudicial exception." App. Br. 11. 2 In the heading of the rejection, the Examiner does not list claim 14. See Final Act. 5. We find this harmless error, as both Appellant and the Examiner acknowledge that, "[a]lthough of different scope, independent claims 13 and 14 have similar recitations" as claim 1. App. Br. 12; Ans. 3. 3 Appeal2018-002229 Application 14/260,036 We are not persuaded the Examiner errs in determining the claims are not patent eligible. See Final Act. 2-3, 5---6; Ans. 3-8. We adopt the Examiner's reasoning therein, to the extent consistent with our analysis. A. Abstract Concept Appellant argues independent claim 1 is not directed to an abstract concept pursuant to step one of the Alice patent eligibility framework, because the recited "features do not fall under any of the judicially identified exceptions to 35 U.S.C. Â§ 101." App. Br. 12; see also Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Appellant further argues "the claims of the present application are directed to patent-eligible subject matter because their plain focus is on an improvement to the functionality of the technology itself." Reply Br. 8; see also App. Br. 12-13. We are not persuaded the Examiner errs in determining the "claims are found to be similar to the abstract idea of collecting, organizing and displaying information" (Ans. 4) as the claimed "steps of setting character transmittance and generating superimposed information describe[] the abstract idea of data storage and recognition since the character transmittances [are] stored and then used to generate superimposed information display" (Final Act. 2-3). Claim 1 recites computer "unit[ s ]" are configured to set various parameters of first and second "display information," and then display the combined information as a superimposed image. See Figs. 2--4C. The claim is thus directed to an abstract concept, as our reviewing court has held that claims comparably directed to calculating information for display are abstract. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1326 (Fed. Cir. 2017) ("the abstract idea of 4 Appeal2018-002229 Application 14/260,036 encoding and decoding image data"); see also Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("an ineligible abstract process of gathering and combining data"); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) ("[T]hese patents are directed to an abstract idea ... [as] the claims are directed to certain functionality-here, the ability to generate menus with certain features."); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) ("the patent claims are, at their core, directed to the abstract idea of collecting, displaying, and manipulating data"). Further, we agree with the Examiner that Appellant's "argued improvement is not tied to [] specific computer implementations," as the "[ c ]laimed steps of setting transmittance, generating superimposed information display and displaying superimposed information display does not recite limitations that [are] beyond basic computer functionality." Ans. 6; see also Fig. 13. Claim 1 recites a system that combines and displays information, and each of the recited system units "is hardware or a combination of hardware and software." The claimed system does not patentably "improve[] the functioning of a computer," as a claim that "started with data, added an algorithm, and ended with a new form of data was directed to an abstract idea." RecogniCorp, 855 F.3d at 1327 (citing Digitech, 758 at 1351 ). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract concept. See Ans. 4--5, 7-8. 5 Appeal2018-002229 Application 14/260,036 B. Significantly More Appellant argues "[a]s to the second step of the Alice test, the invention here is 'significantly more' than an abstract idea itself." App. Br. 14. Particularly, Appellant contends "the invention here is similar to the inventions considered by the Federal Circuit in Bascom ... and Amdocs." App. Br. 14--15; Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). We are not persuaded the system of claim 1 is similar to claims found patent-eligible under step two of the Alice framework. In Bascom, "the claimed invention represents a 'software-based invention[] that improve[s] the performance of the computer system itself."' Bascom, 827 F.3d at 1351. In Amdocs, "claim 1 solves a technological problem (massive data flows requiring huge databases)" and "is a technical improvement over prior art technologies and served to improve the performance of the system itself." Amdocs, 841 F.3d at 1302. Unlike the claims in these cases-and discussed above with respect to step one of the Alice framework-Appellant's claim 1 does not provide improvements to the computer system itself. Rather, the claim, as described by Appellant, uses an algorithm to combine display information. See Reply Br. 13. Thus, we are not persuaded the Examiner errs in finding the "claim limitations describe a generic recitation of [a] computer performing basic computer functions and would not add significantly more than the abstract idea." Ans. 5-6; see also RecogniCorp, 855 F.3d at 1328 ("[C]laim 1 is directed to the abstract idea of encoding and decoding. The addition of a mathematical equation that simply changes the data into other forms of data cannot save it." Moreover, "tak[ing] an 6 Appeal2018-002229 Application 14/260,036 abstract idea and appl[ying] it with a computer" does not transform a claim into a patent-eligible application.). C. Prima Facie Case Appellant argues the following: The Office Action fails to meet the prima facie legal requirements for a rejection under 35 U.S.C. based on a judicial exception because the Office Action (A) has inappropriately abstracted the claims away from their recited function, (B) has failed to recite any case law supporting the assertion that the claims fall under a judicial exception, and (C) has failed to provide any evidence or articulated reasoning supporting the Office Action assertion. App. Br. 15-16. We are not persuaded of reversible error in the Examiner's rejection. Based on the record before us, the Examiner has properly performed the Â§ 101 analysis. See, e.g., Ans. 4--8. That is, as discussed above, we find the Examiner correctly determined claim 1 is directed to an abstract concept and that the elements of the claim, considered both individually and as an ordered combination, do not transform the nature of the claim into a patent- eligible application. See Final Act. 2-3, 5-6; Ans. 4--8. Thus, we find Appellant has been notified of the reasons for the rejection with such information "as may be useful in judging of the propriety of continuing the prosecution of [the] application," as required. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original) (quoting 35 U.S.C. Â§ 132). Accordingly, we sustain the Examiner's rejection of independent claim 1 under 35 U.S.C. Â§ 101. For the same reasons, we sustain the Examiner's rejection of independent claims 13 and 14, and the dependent claims, under 35 U.S.C. Â§ 101. See App. Br. 12, 13. 7 Appeal2018-002229 Application 14/260,036 II. 35 USCÂ§ 102(b) Appellant argues the Examiner's anticipation rejection is in error, because "Nakanishi does not disclose all of the features of claim 1." App. Br. 22. Particularly, Appellant contends "[ c ]laim 1 recites two values associated with the first display information and two values associated with the second display information, and further describes a relationship between the two values for each display information," whereas "Nakanishi is completely silent as to such a relationship." App. Br. 21-22. We are persuaded by Appellant's argument. "[U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed." Net Money In, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Independent claim 1 recites "the first display information, which includes the character information and the image information to which the transmittances have been set," and "second display information, which includes the character information and the image information to which the transmittances have been set." The Examiner finds Nakanishi teaches3 first and second character information and first and second image information. See Ans. 11 ("there may be two character image elements and two graphics image elements -teaching claimed first and second character information and first and second image information.). The Examiner also finds Nakanishi discloses display information "containing multiple image elements," such as alpha blending values. Ans. 12. Claim 1, however, requires that the recited 3 We note the rejection before us is one of anticipation, not obviousness. 8 Appeal2018-002229 Application 14/260,036 image and character information are both included in each of the first and second "display information." The Examiner's analysis is silent with respect to the display information having both character and image information. See Ans. 11-13. Accordingly, the Examiner has not established that Nakanishi discloses all of the limitations arranged in the same way as recited by the claim. We find the Examiner errs in determining Nakanishi anticipates the limitations of independent claim 1, and independent claims 13 and 14 which recite similar limitations. See App. Br. 22. We do no sustain the Examiner's 35 U.S.C. Â§ 102(b) rejection of these claims, or the claims dependent thereon. DECISION The Examiner's decision rejecting claims 1, 3-9, and 11-14 under 35 U.S.C. Â§ 101 is affirmed. The Examiner's decision rejecting claims 1, 3-9, and 11-14 under 35 U.S.C. Â§ 102(b) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 9