Ex Parte Hirabayashi et al

Patent Trial and Appeal Board

Oct 9, 2018

14248561 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/248,561 04/09/2014
53124 7590 10/11/2018
ALG INTELLECTUAL PROPERTY, LLC
10808 S. River Front Parkway, Suite 3100
SOUTH JORDAN, UT 84095
FIRST NAMED INVENTOR
Naofumi Hirabayashi
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.
1053.1007 3360
EXAMINER
DHINGRA, PAWANDEEP
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
10/11/2018 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):
53124@alg-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOFUMI HIRABA Y ASHI, MINO RU KASAHARA,
and JUNPEI WATANABE 1
Appeal 2018-000078
Application 14/248,561
Technology Center 2600
Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
DAVID J. CUTITTA II, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge DAVID J.
CUTITTAII.
Opinion Concurring-in-Part, Dissenting-in-Part by Administrative Patent
Judge CARL W. WHITEHEAD JR.
Opinion Concurring-in-Part, Dissenting-in-Part by Administrative Patent
Judge BRADLEY W. BAUMEISTER.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
1 Seiko Epson Corporation ("Appellant") is the applicant, as provided for
under 3 7 C.F .R. § 1.46, and is also identified in the Brief as the real party in
interest. See Appeal Br. 3.
Appeal2018-000078
Application 14/248,561
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1, 3-5 and 7-10, all the pending claims in the present application. 2
See Appeal Brief 8. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Invention
The invention is directed to "a display control program, a display
control method, a display apparatus, and a printing system for displaying a
synthetic image obtained by overlapping an image of an attachment position
image to which a label is attached and a preview image of the label on a
display portion." Spec. ,r 2. 3
Exemplary Claim
Claims 1 and 5 are independent. Claim 1 is exemplary of the claimed
subject matter and is reproduced below with limitation at issue emphasized:
1. A display control method comprising:
obtaining an attachment position image which is an image
of an attachment position to which a label having a printing
image printed on a printing medium is attached;
generating a preview image of the label on which the
printing image is printed;
generating a synthesized image obtained by overlapping
the attachment position image and the preview image;
2 Claims 2, 6, 11, and 12 are cancelled. See Appeal Br. 18, 20, 21.
3 Throughout this Decision, we refer to: (1) Appellant's Specification filed
April 9, 2014 ("Spec."); (2) the Final Office Action mailed October 7, 2016
("Final Act."); (3) the Appeal Brief filed April 6, 2017 ("Appeal Br.");
(4) the Examiner's Answer mailed August 2, 2017 ("Ans."); and (5) the
Reply Brief filed October 2, 2017 ("Reply Br.").
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Application 14/248,561
displaying the synthesized image on a display portion;
receiving an operation from a user to change the
synthesized image in a state where the synthesized image is
displayed on the display portion; and
displaying the changed synthesized image on the display
portion, based on the operation in the receiving of the operation,
wherein, a relative size of the preview image with respect
to the attachment position image is changed by changing a
display magnification of the preview image and keeping a
display magnification of the attachment position image constant
as a change of the synthesized image.
REJECTIONS AND REFERENCES
Claims 1 and 5 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. See Final Act. 2--4.
Claims 1, 3, 5, 7, 9 and 10 stand rejected under 35 U.S.C. 103 as
being unpatentable over Hiroki (Japan Patent Application Publication 2012-
166511; published Sept. 6, 2012), Mikitoshi (Japan Patent Application
Publication 2012-208571; published Oct. 25, 2012) and Hoshi (US Patent
Application Publication 2009/0279108 Al; published Nov. 12, 2009). See
Final Act. 4--12.
Claims 4 and 8 stand rejected under 35 U.S.C. 103 as being
unpatentable over Hiroki, Mikitoshi, Hoshi and Miyake (US Patent
Application Publication 2003/0076518 Al; published Apr. 24, 2003). See
Final Act. 12-13.
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Application 14/248,561
35 US.C. §l 12(a) REJECTION
FINDINGS AND CONTENTIONS
The Examiner determines claims 1 and 5 contain subject matter that
was not described in the Specification in such a way as to reasonably convey
to one skilled in the relevant art that the inventor or a joint inventor, at the
time the application was filed, had possession of the claimed invention. See
Final Act. 3--4. In particular, the Examiner finds the limitation "'keeping a
display magnification of the attachment position image constant as a
change of synthesized image' in lines 13-14 of claim 1 and lines 15-16 of
claim 5" is not supported by the originally filed Specification. Final Act. 4.
The Examiner elaborates that "there is no mention of the word 'constant'
throughout the application" and "there is no disclosure of limitation keeping
a display magnification of the attachment position image constant in the
specification." Ans. 15.
Appellant argues the Examiner's assertion is erroneous because the
Manual of Patent Examining Procedure (M.P .E.P.) does not require the
claimed subject matter to be described literally or to use the same terms as
those disclosed in the Specification. Appeal Br. 11 ( citing Adv. Act. 2; Final
Act. 4 and M.P.E.P. § 2163.02). Appellant further argues that
at least paragraphs [0052]-[0060] and FIGS. 5A, 6A, and 6B of
the specification as filed indicate that a "display magnification"
of attachment position image 42 is kept constant while a display
magnification of preview image 3 5 is reduced or enlarged, thus
changing a relative size between attachment position image 42
and preview image 3 5.
Appeal Br. 9-10.
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Application 14/248,561
ANALYSIS
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language. In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983) (internal citations omitted).
We find persuasive Appellant's argument that the Specification
supports the limitation at issue. The Specification discloses, inter alia, in
relation to Figures 5A and 6A:
In the embodiment, the preview image 3 5 is enlarged or
reduced. However, the relative size of the preview image 35
with respect to the attachment position image 42 may be
changed by enlarging or reducing the attachment position image
42.
Spec. ,r 61.
Looking to paragraph 61, the use of "[h ]owever" indicates that the
size change/magnification/ enlargement or reduction of the preview image
and the attachment position image are being referenced in the alternative.
That is, by reciting the size of A or B may be changed, it is reasonably
clear that in the former case, B is not changed, and in the latter case, A is
not changed. Thus, because the Specification describes that the display
magnification of the attachment position image and the display
magnification of the preview image may be adjusted independently, we
agree the Specification discloses with reasonable clarity "changing a
display magnification of the preview image and keeping a display
magnification of the attachment position image constant."
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Application 14/248,561
Although paragraph 61 was not expressly cited by Appellant for
support, Appellant expressly referenced the embodiments depicted in
Figures 5A, 6A, and 6B, and paragraph 61 relates to those
figures/embodiments. As such, we are persuaded that Appellant raised a
sufficient basis to support the argument that the Specification conveys
with reasonable clarity to those skilled in the art that, as of the filing date,
Appellant was in possession of the claimed invention.
For the foregoing reasons, Appellant has persuaded us of error in
the written-description rejection of independent claims 1 and 5.
Accordingly, we do not sustain the §112(a) rejection of these claims.
35 US.C. §103 REJECTION
FINDINGS AND CONTENTIONS
The Examiner find Hiroki' s discussion of an image of a "real time
position of where [a] label will be attached" teaches "an attachment
position image," as in claim 1. Final Act. 4 ( emphasis removed, citing
Hiroki ,r,r 38, 41, 42, 46, 58, 61). The Examiner further finds Hiroki
teaches a preview image, as claimed. Final Act. 4--5 ( citing Hiroki ,r,r 4 7,
48, 53-57 ("label image which is created by merging the displayed input
character image and tape image by the control part 40") ( emphasis
removed)). The Examiner finds Suzuki teaches "changing a display
magnification of the preview image." Final Act. 6 (citing Suzuki ,r,r 43,
44 ("the size of the virtual label L 1 is changed with respect to the
movement/change in size of the actual object Fl as desired by the user
until satisfied.") ( emphasis removed)). The Examiner finds Hoshi
teaches "changing a display magnification of the preview image and
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Application 14/248,561
keeping a display magnification of the attachment position image
constant," as in claim 1. Final Act. 7 (citing Hoshi Figs. 3-5); Ans. 19
( citing Hoshi ,r,r 90-97, Figs. 4, 5). In particular, with respect to Hoshi,
the Examiner states
Hoshi clearly demonstrates that the attachment position is
actually page R and not n2 wherein the image area c2 gets bigger
or smaller while magnification of page R remains constant. See,
figs. 4--5, the display magnification of the preview image c2 such
as which is shown as "tree" is changed. The size of the image
tree c2 can be adjusted to be made bigger or smaller while the
image area such as page "R" (attachment position) is kept
constant. Note that page area "R" is always kept at same size or
same magnification, which does not change, wherein, the user
can adjust the size of the preview image area such as "c2", shown
as tree, to make it enlarged or reduced.
Ans. 19 (citing Hoshi ,r,r 90-97, Figs. 4, 5, emphasis added).
Appellant argues Hoshi fails to teach the limitation at issue
because "Hoshi does not indicate that the images in FIGS. 4 and 5(A-D)
are ever displayed on a display screen." Reply Br. 11. Appellant argues
"Hoshi further indicates that imaginary area R is imaginary and only
exists stored in ROM or RAM memory. (See Hoshi, para. [0091]).
Imaginary area R does not correspond to an attachment position image to
which a label is attached." Reply Br. 12.
Appellant further argues the claimed "preview image is an image
of a 'label on which the printing image is printed,"' but "Hoshi indicates
that partial image area c2 is only an image area disposed on page n2 and
is not a preview image of a label." Id. Appellant argues that Hoshi's
partial image area c2 is not a preview image (see Reply Br. 11-12).
Appellant argues "Suzuki fails to teach that 'a relative size of the preview
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Application 14/248,561
image with respect to the attachment position image is changed."' Reply
Br. 9--10 (emphasis removed).
ANALYSIS
Appellant's arguments that "FIGS. 4 and 5(A-D) of Hoshi do not
show images [that] are displayed on an operating display section of a
display device" and that "Hoshi does not indicate that the images in
FIGS. 4 and 5(A-D) are ever displayed on a display screen" are not
commensurate with the scope of the claim, which does not require the
preview image to be "displayed on an operating display section of a
display device" or to be "displayed on a display screen." Reply Br. 11.
Appellant's argument that Hoshi' s image R is not an "attachment
image," as claimed, is unpersuasive because Appellant's argument
unpersuasively attacks the Examiner's findings from Hoshi alone (see
Reply Br. 11-12) when the portion of the limitation at issue is rejected
based on the combination of Hiroki and Hoshi. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is
based upon the teachings of a combination of references") ( citation
omitted). That is, the Examiner combines Hiroki' s teaching of "an
attachment position image[,] which is an image of an attachment position
to which a label ... is attached[,]" with Hoshi's teaching of keeping a
display magnification of image R constant, to teach the portion of the
limitation at issue. See Final Act. 4; Ans. 19--20. Appellant's argument
based on Hoshi alone is not responsive to the Examiner's rejection.
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In contrast with the dissent, we agree with the Examiner's finding
that Hoshi's "R" reasonably may be interpreted as an "image area."
Ans. 19. Hoshi discusses CPU 11 determining layout positions of the
character blocks within the imaginary area R (Hoshi ,r 91) and "arranging
the partial image area and the partial character area into the imaginary
area R" (Hoshi ,r 97). Moreover, in discussing Figure 7, Hoshi describes
an image re-layout operation in which characters "included in the partial
character area a2 and the partial character area a3, are embedded and
arranged into the residual area of the imaginary area R." Hoshi ,r 104.
Similarly, Hoshi's Figure 7 illustrates that imaginary area R is an image
made up of size-adjusted character images obtained from partial character
area a2 and partial character area a3. See Hoshi Fig. 7, ,r 104. Thus,
imaginary area R is described in Hoshi as both including various images
and as being stored in the CPU similar to the way the partial image area
is stored. Accordingly, we agree with the Examiner that Hoshi's
imaginary area R teaches, or at least suggests, an image.
Appellant also fails to show why Hoshi's teaching of keeping a
display magnification of an image constant would not apply to Hiroki' s
attachment image or why the combination of teachings would have been
uniquely challenging to one having ordinary skill in the art. "The
combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results," (KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007)), especially if the
combination would not be "uniquely challenging or difficult for one of
ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Here,
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Application 14/248,561
we do not determine that applying Hoshi' s teaching of keeping a display
magnification of an image constant to Hiroki's attachment image would
have yielded unpredictable results or would have been uniquely
challenging to one of ordinary skill in the art.
Appellant's argument that Hoshi's partial image area c2 is not a
preview image (see Reply Br. 11-12), as claimed, is unpersuasive
because Appellant unpersuasively attacks the Examiner's findings from
Hoshi alone when the portion of the limitation at issue is rejected based
on the combination of Hiroki, Suzuki, and Hoshi (see Final Act. 4--7).
See Merck, 800 F.2d at 1097. Appellant's argument does not address the
Examiner combination of Hiroki' s teaching of "generating a preview
image of the label" (Final Act. 4) with Suzuki's teaching of "changing a
display magnification of the preview image" (Final Act. 5) and Hoshi's
teaching of "changing a display magnification of the preview image"
(Final Act. 7) to teach the claimed preview image.
Appellant argues that "Suzuki fails to teach that 'a relative size of
the preview image with respect to the attachment position image is
changed"' because "it never teaches that a 'relative size' of virtual label
LI with respect to object image FI is changed." Reply Br. 9-10
( emphasis removed).
Here also, Appellant unpersuasively attacks the Examiner's
findings from Suzuki alone when the limitation at issue is rejected based
on the combination of Hiroki, Suzuki, and Hoshi (see Final Act. 4--7).
See Merck, 800 F.2d at 1097. Appellant's argument does not address the
Examiner combination of Hiroki' s teaching of "generating a preview
image of the label" (Final Act. 4) with Suzuki's teaching of changing a
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Application 14/248,561
display magnification of a preview image (Final Act. 5) and Hoshi's
teaching of "changing a display magnification of the preview image" c2
with respect to static image R (Final Act. 7).
For the reasons discussed, Appellant has not shown error in the
Examiner's factual findings or conclusion of obviousness. We, therefore,
sustain the Examiner's obviousness rejection of claims 1, 3, 5, 7, 9 and
10, as well as the obviousness rejection of dependent claims 4 and 8.
CONCLUSIONS
The Examiner's 35 U.S.C. § 112(a) rejection of claims 1 and 5 is not
sustained.
The Examiner's 35 U.S.C. §103 rejections of claims 1, 3-5 and 7-10
are sustained.
DECISION
The Examiner's decision rejecting claims 1, 3-5 and 7-10 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
11
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOFUMI HIRABA Y ASHI, MINO RU KASAHARA,
and JUNPEI WATANABE
Appeal2018-000078
Application 14/248,561
Technology Center 2600
Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER and
DAVID J. CUTITTA II, Administrative Patent Judges.
WHITEHEAD, Administrative Patent Judge, concurring-in-part, dissenting-
in-part.
I respectfully disagree with the Majority's decision to reverse the
Examiner's 35 U.S.C. § 112 Rejection.
The Examiner determines claims 1 and 5 fail to comply with the
written description requirement under the§ l 12(a) because "there is no
mention of the word 'constant' throughout the application" and because
"there is no disclosure of limitation keeping a display magnification of the
attachment position image constant in the specification." Answer 15.
Appellant contends the Examiner's determination is erroneous because the
M.P.E.P. does not require the claimed subject matter to be described literally
and/or use the same terms as those disclosed in the Specification. Appeal
Brief 11 (citing Advisory Action, page 2; Final Action 4 and M.P.E.P.
§ 2163.02).
Appeal2018-000078
Application 14/248,561
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language. In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983) (internal citations omitted).
Appellant asserts that "at least paragraphs [0052]-[0060] and
FIGS. 5A, 6A, and 6B of the specification as filed indicate that a 'display
magnification' of attachment position image 42 is kept constant while a
display magnification of preview image 35 is reduced or enlarged, thus
changing a relative size between attachment position image 42 and preview
image 35." Appeal Brief 9-10.
I am unpersuaded of Examiner error because Appellant's assertion is
not supported by the cited paragraphs, the cited figures or the description of
the cited figures. Appellant fails to indicate language4 within the cited
paragraphs that actually supports the "keeping a display magnification of the
attachment position image constant as a change of the synthesized image"
limitation added during prosecution 5 to claims 1 and 5.
4 "The subject matter of the claim need not be described literally (i.e., using
the same terms or in haec verb a) in order for the disclosure to satisfy the
description requirement. If a claim is amended to include subject matter,
limitations, or terminology not present in the application as filed, involving a
departure from, addition to, or deletion from the disclosure of the application
as filed, the examiner should conclude that the claimed subject matter is not
described in that application." M.P.E.P. § 2163.02.
5 See Amendment under 3 7 C.F .R. § 1.115 submitted with Request for
Continued Examination under 37 C.F .R. § 1.114 filed April 8, 2016 and
Amendment filed August 2, 2016.
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Application 14/248,561
Appellant does not argue that paragraph 61 of the Specification
provides support for the limitation. See Appeal Brief 8-11; Reply Brief 3-9
(referring to paragraph 61 of the pre-grant publication version of the
Specification, which is actually paragraph 59 of the originally-filed
Specification). Appellant has sufficient opportunity to make the argument
that the Majority Opinion is now making, however, Appellant failed to do
so. Further, it is not clear how paragraph 61 of the originally-filed
Specification supports the constant limitation, as the Majority now
contends.
The Specification discloses in paragraph 61, "However, the relative
size of the preview image 35 with respect to the attachment position image
42 may be changed by enlarging or reducing the attachment position image
42." It is respectfully noted, that there is nothing within paragraph 61 of the
Specification that would support or indicate "keeping a display
magnification of the attachment position image constant as a change of the
synthesized image," as recited in claim 1 of the instant application. The
Majority Opinion is changing the narrative to support Appellant's position
by reading more into paragraph 61 than both the Examiner and Appellant.
Accordingly, I respectfully disagree with the Majority's decision to reverse
the Examiner's 35 U.S.C. § 112(a) rejection of claims 1 and 5,
commensurate in scope and argued together. See Appeal Brief 8-11; Reply
Brief3-9.
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Application 14/248,561
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOFUMI HIRABA Y ASHI, MINO RU KASAHARA,
and JUNPEI WATANABE
Appeal2018-000078
Application 14/248,561
Technology Center 2600
Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge, concurring-in-part,
dissenting-in-part.
DECISION ON APPEAL
I join Judge Cutitta in reversing the written description rejection under
35 U.S.C. § 112(a). I respectfully disagree with the Majority's decision
affirming the obviousness rejection under 35 U.S.C. § 103.
Appellant argues, inter alia,
Hoshi [] indicates that imaginary area R is imaginary and only
exists stored in ROM or RAM memory. (See Hoshi,
para. [0091]). Imaginary area R does not correspond to an
attachment position image to which a label is attached.
Therefore, partial image area c2 does not correspond to the
claimed "preview image" of a label[,] and imaginary area R does
not correspond to the claimed "attachment position image."
Reply Br. 9.
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The Majority finds this argument unpersuasive because the Majority
determines that Appellants are improperly attacking the references'
teachings separately. Majority Op. 8. According to the Majority,
the Examiner combines Hiroki' s teaching of "an
attachment position image[,] which is an image of an
attachment position to which a label . . . is attached[,]"
with Hoshi' s teaching of keeping a display magnification
of image R constant, to teach the portion of the limitation
at issue. See Final Act. 4; Ans. 19--20. Appellant's
argument based on Hoshi alone is not responsive to the
Examiner's rejection.
Id. (citing Final Act. 4 and Ans. 19--20).
The Examiner's fact-finding (see Ans. 19) simply is incorrect:
Hoshi's reference letter "R" represents an imaginary area that is created by
the central processing unit (CPU) and into which the partial image area c2
and character blocks are arranged. Hoshi ,r 91. As such, "R" cannot
reasonably be interpreted as constituting any type of image, much less the
claimed "attachment position image."
Furthermore, this is not a Merck situation in which an appellant
impermissibly attacks individually, references that together teach all of the
claim limitations. In the present situation, the Examiner relies on a
particular reference (Hoshi) for teaching a claim element ( an attachment
position image), and Appellant correctly and sufficiently shows that the
relied upon reference does not teach or suggest the disputed claim element.
5