Ex Parte Imai et al

Board of Patent Appeals and Interferences

Nov 24, 2010

10603721 (B.P.A.I. Nov. 24, 2010)

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.
10/603,721 06/24/2003 Takashi Imai 59,439 (70904) 3344
21874 7590 11/24/2010
EDWARDS ANGELL PALMER & DODGE LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
BECKER, SHASHI KAMALA
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
11/24/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAKASHI IMAI, YUJI OKAMOTO, KAORU ISHIKURA,
SHUHJI FUJII, NOBUYUKI UEDA, and KENJI TAKAHASHI
__________

Appeal 2010-00007
Application 10/603,721
Technology Center 2100
__________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-4 and 6-18. Claim 5 has been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).2

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000007
Application 10/603,721

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The Invention
The disclosed invention relates generally to a display apparatus in an
electronic apparatus capable of performing a plurality of jobs (Spec. 1).
Independent claim 1 is illustrative:
1. A user interfacing display apparatus for use in an
electronic apparatus including (i) detail setting key for detecting what
a user selects, and for performing detail setting of a job as to what a
user selects, and (ii) control means, capable of performing a plurality
of jobs respectively in accordance with desired detail settings, for
suspending a job that is being processed or a job that is standing by
and performing another job, in accordance with an interruption
instruction, the user interfacing display apparatus comprising:
an interruption key for detecting the interruption instruction,
and transmitting the interruption instruction to the control means, the
interruption key being capable of changing a display state thereof;
a display section for displaying the desired detail settings; and
display control means for (iii) popping up, when the detail
setting key that is associated with one of the detail settings of one of
the plurality of jobs is selected, a detail item of that one of the detail
settings on the display section, and (iv) changing the display state of
the interruption key, as a result of said selecting of said detail setting
key, while keeping the interruption key displayed on the display
section.

2 Appellants waived appearance at an oral hearing scheduled for this appeal
on October 13, 2010. See Communication filed June 2, 2010.

Appeal 2010-000007
Application 10/603,721

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The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Tezuka US 5,845,078 Dec. 1, 1998
Beaudet US 2002/0048035 A1 Apr. 25, 2002
Hirayama US 2002/0050996 A1 May 2, 2002
Sadakuni US 6,385,412 B1 May 7, 2002
Sato JPO 403-175065 Jul. 30, 1991

The Rejections
1. The Examiner rejects claims 1-4, 6, 9, 12-14, and 16-18 under 35
U.S.C. § 103(a) as being unpatentable over Beaudet and Tezuka.
2. The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Beaudet, Tezuka, and Sato.
3. The Examiner rejects claims 10 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Beaudet, Tezuka, and Hirayama.
4. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Beaudet, Tezuka, and Sadakuni.

ISSUE
Appellant argues that the combination of Beaudet and Tezuka fails to
disclose or suggest that “the display state is changed while the ‘interruption
key’ is kept displayed on the display section” and that “Beaudet also does
not change state in response to election of a detail setting key for one of
plural jobs” (App. Br. 9).
Appeal 2010-000007
Application 10/603,721

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Thus, the issue before us is:
Did the Examiner err in finding that the combination of Beaudet and
Tezuka discloses or suggests a detail item popping up, when the detail
setting key is selected, and changing the display state of the interruption key
as a result of the selecting of the detail setting key while keeping the
interruption key displayed on the display section?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Beaudet discloses that a “screen display indicates the current status
of the job being printed” and also “additional soft keys are indicated
as being available to allow the current print job to be interrupted . . .”
(¶ [0041]).
2. Beaudet discloses “[i]n lieu of waiting for the current printer job to
be over before the copier/printer is returned to its copier mode, a
print job may be interrupted by pressing the ‘interrupt print job’ soft
key . . .” (¶ [0042], Fig. 4D).
3. Beaudet discloses that “[w]hen a copy job setup soft key is pressed, .
. . a time period . . . is initiated to allow the operator time to enter
parameters for this copy job and to start a scanning operation for
scanning the document sheets . . .” (¶ [0041]).
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Application 10/603,721

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4. Tezuka discloses “creating bit maps employed for the user buttons”
(col. 64, l. 50) in which “for each button, there are necessitated five
bit maps” (col. 64, ll. 53-54) based on “[t]he classification of five
states” (col. 64, l. 54) of the buttons. Also, “[e]ach button is set to
one of these five states in any situation” (col. 65, ll. 20-21).

PRINCIPLES OF LAW
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
“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’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
As described above, Beaudet discloses displaying an interrupt key as
well as various other soft keys (FF 1-3). Selection of any of the soft keys of
Beaudet results in a corresponding display (e.g., selection of the copy job
setup soft key results in the display of a window that allows a user to set up
copying parameters (¶ [0041])). We agree with the Examiner that Beaudet
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Application 10/603,721

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fails to disclose or suggest both popping up a detail item and keeping the
interruption key displayed on the display responsive to selecting a detail
setting key since, in Beaudet, an interrupt key is displayed (e.g., Fig. 4D) but
is no longer present when any other option is selected.
However, we disagree with the Examiner that Tezuka discloses or
suggests this feature that is missing from Beaudet. While Tezuka discloses
different states that exist for bit map buttons (FF 4), we do not find, and the
Examiner has not demonstrated, that any bit map button is kept on a display
when a detail setting key (or any particular key) is selected, much less in a
changed display state.
Claims 16 and 17 recite similar features as claim 1.
Accordingly, we conclude that the Examiner erred in rejecting
independent claims 1, 16, and 17, and dependent claims 2-4, 6-15, and 18,
which depend therefrom.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in finding that the combination of Beaudet and Tezuka
discloses or suggests a detail item popping up, when the detail setting key is
selected, and changing the display state of the interruption key as a result of
the selecting of the detail setting key while keeping the interruption key
displayed on the display section.

Appeal 2010-000007
Application 10/603,721

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DECISION
We reverse the Examiner’s decision rejecting claims 1-4 and 6-18
under 35 U.S.C. § 103.

REVERSED

ak

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BOSTON, MA 02205