Ex Parte Nakada et al

Patent Trial and Appeal Board

Aug 8, 2016

12457647 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/457,647 06/17/2009
54072 7590 08/10/2016
SHARP KABUSHIKI KAISHA
C/O KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Norihide Nakada
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.
70404.2309/ar 8395
EXAMINER
BLOOMQUIST, KEITH D
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
JKEATING@KBIPLA W.COM
uspto@kbiplaw.com
epreston@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIHIDE NAKADA and TAKESHI NAKAMURA
Appeal2015-001804
Application 12/457,647
Technology Center 2100
Before JEAN R. HOMERE, BRUCE R. WINSOR, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3, 6, 7, 16, 18, 20, 24, and 33--46. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Sharp Kabushiki
Kaisha. App. Br. 3.
Appeal2015-001804
Application 12/457,647
THE INVENTION
Appellants' invention relates to an image processing apparatus, such
as a printer, provided with a display unit that displays an operation screen
with an input unit for inputting comment information. See Abstract.
Exemplary independent claim 1 is reproduced below.
1. An image processing apparatus comprising a CPU, a
display unit with an operation screen and one or more function
execution keys, and a memory for storing information for
displaying on the operation screen of the display unit, the image
processing apparatus further comprising:
a user authentication unit that performs user
authentication;
a storage control unit that stores comment information for
each user;
an input unit that inputs comment information including
text information for a function execution key of the operation
screen of the display unit, only for the user that has been
authenticated by the user authentication unit, and the input unit,
in a function execution mode in \x1hich various fi.1nctions are
executed, is made capable of inputting comment information for
the function execution key displayed in the operation screen; and
a display control unit capable of displaying, among
comment information that has been input by the input unit,
comment information of the authenticated user that has been
authenticated by the user authentication unit on the display unit
associated with the function execution key,
wherein the display control unit, when selection/operation
has been performed to output comment information for a
function execution key displayed in the operation screen of the
display unit, is made capable of displaying the comment
information for that function execution key in the display unit,
and afterward, when next an operation has been performed to
input the comment information, the input unit is made capable of
executing an operation to input the comment information,
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Application 12/457,647
wherein the CPU is configured to implement and execute
the functions of the units.
REFERENCES and REJECTION
Claims 1, 3, 6, 7, 16, 18, 20, 24, and 33--46 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Duncan (US 7,685,519 Al; Mar. 23,
2010) in view of Tanaka (US 2005/0268220 Al; Dec. 1, 2005) and in view
of Terada (US 2008/0222524 Al; Sept. 11, 2008).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
arguments, and adopt as our own: ( 1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief, and concur with the conclusions reached by the
Examiner. We emphasize the following.
Appellants argue "the resulting combination [of Duncan, Terada, and
Tanaka] would be tooltips that include conditional parameters indicating a
common language interpretation of an associated parameter." App. Br. 8.
According to Appellants "[t]hese [prior art] references do not disclose an
input unit, in a function execution mode, being made capable of inputting
comment information for a function execution key displayed in an operation
screen, which advantageously alleviates the work burden of input jobs (see
[0018] of the subject application)." App. Br. 8.
We are unpersuaded by Appellants' arguments. The Examiner finds
Duncan teaches an input unit that is made capable of inputting comment
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Application 12/457,647
information, including text information, for an object displayed on the
operation screen. Final Act. 3 (citing Duncan Fig. 1, 2:25-30). We agree.
Duncan teaches that on activation of a control button, a user can enter or edit
content displayed by a customizable content tooltip. Duncan 2:22-31. We
agree that the cited Duncan disclosure teaches an input unit that is made
capable of inputting comment information. The Examiner further finds
Terada teaches a user interface "that enables the user to input comment
information that is associated with a key in the interface capable of
executing the function of adjusting a sound level." Ans. 12 (citing Terada
Figs. lOA, lOB, 11, and i-fi-144--45.) Terada teaches a user interface for
setting comments having a conditional format that are associated with and
display information for an "on" button. Terada i-fi-144--45. We agree with
the Examiner that the cited Terada disclosure teaches an input unit that is
made capable of inputting comments for a function execution key in a
function execution mode.
Appellants argue "[s]till further, Terada is non-analogous art not
properly used in combination with Duncan." App. Br. 8. Appellants
provide no further evidence or reasoning to establish that Terada is non-
analogous art2. Without further analysis we find these arguments to be
2 In the Reply Brief, Appellants argue, for the first time, "Terada is in the
field of acoustical signal processing ([0002]). This is far afield from the
image processing apparatus field of the subject invention. Further, Terada
looks to solve the problem of simplifying the user control screen ([0005])
whereas the subject invention improves upon the efficiency by simplifying
input tasks." Reply Br. 6. Appellants have waived these arguments by not
presenting them in the Appeal Brief. See 37 CPR§ 41.41(b)(2) (2012)
("Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner's answer,
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Application 12/457,647
conclusory and therefore unpersuasive of Examiner error. 37 C.F.R.
§41.37(c)(l)(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. 201 l)("[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.").
Finally, Appellants argue "to the extent a rationale [for combining the
prior art] is provided, it simply noted that 'the benefits of Duncan can be
realized more widely' (page 6). This recognition of usefulness has been
taken from the Applicant's disclosure not the teachings of the prior art."
App. Br. 8.
The Examiner provides the following reason for combining the prior
art references: "Duncan states at Col. 2, lines 48-57 that a goal of the system
is to provide a user with customizable content that is more personalized, and
therefore more useful. By combining Duncan with systems that provide
additional methods for providing users with personalized annotations, and
allow for annotating different types of objects, the benefits of Duncan can be
realized more widely." Final Act. 6. The Examiner further elaborates
"[ o ]ne of ordinary skill in the art would recognize that the application of
tooltips to interface controls, as taught in Terada, would be a useful
extension of the teachings in Duncan. Function keys in a user interface are
the fundamental building blocks of a user interface, and therefore, providing
additional helpful interface features and expanding the use of tooltips is
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.").
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something well within the knowledge of one of ordinary skill in the art .... "
Ans. 13. We find the Examiner has articulated a rational reason for
combining the prior art references. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 977 (Fed. Cir. 2006)).
Further, as can be seen, the Examiner's reason for combining the prior art
references stems from the prior art references themselves, not the
Appellants' disclosure. Thus, we are not persuaded of the Examiner erred in
combining the prior art references.
CONCLUSION
Accordingly, we sustain the Examiner's rejection of independent
claim 1. We also sustain the Examiner's rejection of independent claims 34
and 37, which were rejected on substantially the same basis (see Final Act.
6) and for which Appellants make the same arguments as those made for
claim 1 (see App. Br. 9). Finally, for the same reasons, we sustain the
Examiner's rejection of dependent claims 3, 6, 7, 16, 18, 20, 24, and 33, 35,
36, 38--46.
DECISION
The Examiner's rejection of claims 1, 3, 6, 7, 16, 18, 20, 24, and 33-
46 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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