Ex Parte Iwamura

Patent Trial and Appeal Board

Nov 26, 2013

11447208 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RYUICHI IWAMURA
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Appeal 2011-007165
Application 11/447,208
Technology Center 2600
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Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appellant’s claimed invention “relates generally to data input devices
with thin displays for presenting information relating to data input.” (Spec.
1). Independent claim 1, reproduced below, is representative of the subject
matter on appeal:
1. A component user interface assembly comprising:
at least a first thin display connected to a bus of the
component;
at least a first control element adjustable to generate a
first electronic input signal to a processor communicating with
the bus of the component, the first thin display presenting a
feedback indication received from the processor, the feedback
indication being representative of the first input signal, the first
thin display being associated with no other control element;
at least a second thin display connected to the bus; and
at least a second control element adjustable to generate a
second electronic input signal to the processor, the second thin
display presenting a feedback indication received from the
processor, the feedback indication being representative of the
second input signal, the second thin display being associated
with no other control element, both first and second thin
displays being physically separated from each other and both
being electrically connected to the processor, wherein a first
function name is provided by the processor to the first thin
display which displays the first function name in a first mode of
the first control element, a second function name being
displayed by the first thin display in a second mode of the first
control element.

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REJECTIONS1
The Examiner rejects claims 1-8 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Ans. 11-13).
The Examiner rejects claims 9-11, 13, and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Jaeger (US Patent No. 5,805,145). (Ans. 4-
5).
The Examiner rejects claims 9-20 under 35 U.S.C. § 103(a) as being
unpatentable over Jaeger. (Ans. 6-11).

ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Brief.
35 U.S.C. § 112, first paragraph, written description rejection
The Examiner finds the following claim 1 limitations added by
amendment fail to comply with the written description requirement under
§112, first paragraph:
wherein a first function name is provided by the processor to the first
thin display which displays the first function name in a first mode of
the first control element, a second function name being displayed by
the first thin display in a second mode of the first control element.
The Examiner explains the basis for the rejection:
Here, the added limitation of claim 1 includes terminologies,
i.e. "a first function name" and "a second function name[,]"[]

1 The Examiner withdrew the rejection under § 112, second paragraph, of
claims 1-8 and 17-20. (Ans. 3).
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not presented in the application as filed, which invoke the issue
as to whether this added limitation has clear support in the
specification or original claims. Second, this added limitation
specifically claims that the instant claimed 'first control
element' includes two functioning names, i.e. "a first function
name" and "a second function name[.]"[] As indicated by the
rejection, this added limitation of claim 1 does not have original
specification or original claim support. The original
specification does not disclose[] that the control element has
two functioning names nor does the original claims claimed that
the instant claimed 'first control element' includes two
functioning names, i.e. "a first function name" and "a second
function name[.]"[] Third although the original specification
discloses that the control element has a functioning name (see
specification pg. 6, lines 9-l3; figs. 2 and 3), this broad/generic
disclosure does not support the added limitation of claim 1,
which specifically claims that the instant claimed 'first control
element' includes two functioning names, i.e. "a first function
name" and "a second function name[.]"[] That is a genus does
not anticipate a species.
(Ans. 17-18).
In response, Appellant points to page 6 of the Specification as
providing the requisite §112, first paragraph, written description support:
Furthermore, the function name provided by the processor 105
to the thin display 102 (indicated at 102a in Figure 2) may be
dynamically changed. For example, in a first mode, volume
control may be assigned to the rotary encoder and tone control
may be assigned in a second mode, with the associated function
name being indicated on the display 102. The mode may be
changed by software or mechanically. For example, the two
modes may be toggled between by pushing/pulling the knob
101. In any case, the display 102 is associated with only the
rotary encoder and no other input control element.
(Spec. 6).
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We agree with Appellant (App. Br. 9) that the aforementioned portion
of the Specification (p. 6), reasonably conveys to the artisan the inventor had
possession at that time of the later claimed subject matter. See Ralston
Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). For
essentially the same reasons argued by Appellant in the Briefs, we reverse
the Examiner’s rejection of claims 1-8 under §112, first paragraph (written
description).

35 U.S.C. § 102 anticipation rejection of claims 9-11, 13, and 15
Based on Appellant’s arguments, we decide the appeal of the
anticipation rejection of claims 9-11, 13, and 15 on the basis of claim 9. See
37 C.F.R. § 41.37(c)(1)(vii) (2004).2
At the outset, we find Appellant’s “teaching away” argument is
misplaced (App. Br. 6), because the Examiner has rejected the claims under
§ 102. Our reviewing court guides that “[t]eaching away is irrelevant to
anticipation.” Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361,
1380 (Fed. Cir. 2005).
Appellant further contends:
because the allegation at the bottom of page 6 of the Office
Action that the single display 20 of Jaeger "implies" two thin
displays, each associated with only its own control element, is a

2 Appellant filed a Notice of Appeal on Oct. 21, 2010. The date of filing the
Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.

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flat out contradiction of what Jaeger actually teaches. Because
the finding of fact (Jaeger's "implication" of what Claim 9
requires) is contrary to the evidence of record (Jaeger's actual
teaching of a single display 20), the rejections merit reversal for
being based on clear factual error.
Further, the allegation that Jaeger "implies" Claim 9 to
support an anticipation rejection is manifest clear legal error.
[The Federal Circuit has] reiterated that anticipation may not be
found if a single reference would have informed the skilled
artisan that the claimed elements could have been arranged as in
the claimed invention. . . .
. . . .
Because the examiner has readily admitted in the written
record that Jaeger at best "implies" certain claim limitations, the
anticipation rejections are based on clear reversible error.
(App. Br. 6-7, emphasis added).

We observe, in both the principal Brief and the Reply Brief, Appellant
fails to present clear statements contesting specific claim limitations as not
being expressly or inherently described by Jaeger. Merely reciting the claim
language followed by an allegation of patentability does not constitute a
separate argument for separate consideration by the Board. See Ex parte
Belinne, No. 2009-004693, 2009 WL 2477843, slip op. at 7-8 (BPAI Aug.
10, 2009) (informative); see also 37 C.F.R. § 41.37(c)(1)(vii)(2004). 3
To the extent Appellant is contesting the first and second thin displays
(recited as structural elements in method claim 9) as not being disclosed by
Jaeger (App. Br. 6), we agree with the Examiner’s findings in the statement
of rejection:

3 See n.2. supra.
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Each of the control devices (ref. #12a, l2b, and l2c) includes
either a label, calibration marks, and/or other graphics (ref. #20)
(refers to instant claimed at least a first thin display and at least
a second thin display) wherein these graphics (ref. #20) assist
the operator in identifying and adjusting the control device(s)
(ref. #12a, l2b, and l2c) that are images generated by the flat
panel display (ref. #16) and can change instantly and
automatically when the function of a control device changes or
in response to operation of a control device (see e.g. col. 3, lines
l3-56; col. 4, line 48 thru col. 5, line 34; col. 5, line 60 thru col.
6, line 28; col. 9, line 64 thru col. 10, line 12; fig. 1). . . .
(Ans. 5).

Thus, we find Jaeger describes a single display screen 16 (col. 4, l. 52;
Fig. 1) having a plurality (first, second, and third) of “thin” changeable
graphic displays 20 (col. 4, ll. 62-63) corresponding to control 12a (TUNE),
control 12b (VOL) and control 12c (AM), respectively. (Jaeger, col. 4, l. 64-
col. 2, l. 1; Fig. 1). In considering Appellant’s arguments urging
patentability (App. Br. 6; Reply Br. 1-2), on this record, we are not
persuaded the Examiner’s construction is overly broad, unreasonable, or
inconsistent with Appellant’s Specification.
For these reasons, we are not persuaded of Examiner error. Therefore,
for essentially the same reasons articulated by the Examiner in the Answer
(6-7, 15-16), as discussed above, we sustain the § 102 rejection of
representative independent claim 9. Claims 10, 11, 13, and 15 (not argued
separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).

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35 U.S.C. § 103 obviousness rejection of claims 9-20
Based on Appellant’s arguments, we decide the appeal of the
obviousness rejection of claims 9-20 on the basis of claim 9. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).
We note the Examiner rejected claim 9 twice over the single Jaeger
reference, under §§102 (Ans. 4) and 103 (Ans. 6). Regarding claim 9, a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of
obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984); see
also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494
F.2d 1399 (CCPA 1974).
As discussed above regarding the anticipation rejection of claim 9, we
conclude a broad but reasonable interpretation of claim 9 does not preclude
the Examiner’s broader reading of the claimed first and second thin displays
on Jaeger’s plurality of “thin” changeable graphic displays 20 (col. 4, ll. 62-
63), corresponding to control 12a (TUNE), control 12b (VOL) and control
12c (AM), respectively. (Jaeger, col. 4, l. 64- col. 2, l. 1; Fig. 1). Thus, we
find unpersuasive Appellant’s contention that “the teaching away of Jaeger
to mount all controls on a single panel tends to defeat the obviousness
rejections. . . .” (App. Br. 8).
In considering Appellant’s arguments urging patentability (App. Br. 8;
Reply Br. 2), we are not persuaded the Examiner’s claim construction is
overly broad, unreasonable, or inconsistent with Appellant’s Specification.
For these reasons, we are not persuaded of Examiner error. Therefore,
for essentially the same reasons articulated by the Examiner in the Answer
(6-7; 15-16), as discussed above, we sustain the § 103 rejection of
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representative independent claim 9. Claims 10-20 (not argued separately)
fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).

DECISION
We reverse the Examiner’s rejection of claims 1-8 under §112, first
paragraph (written description).
We affirm the Examiner’s decision rejecting claims 9-11, 13, and 15
under §102.
We affirm the Examiner’s decision rejecting claims 9-20 under §103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART

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