Ex Parte Tsuda

Patent Trial and Appeal Board

May 20, 2016

12425665 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/425,665 04/17/2009 Takamoto Tsuda
23380 7590 05/24/2016
TUCKER ELLIS LLP
950 MAIN A VENUE
SUITE 1100
CLEVELAND, OH 44113-7213
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.
PS09 0049US1 3091
EXAMINER
BYCER, ERIC J
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
05/24/2016 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):
patents@tuckerellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAMOTO TSUDA
Appeal2014-009688
Application 12/425,665
Technology Center 2100
Before ELENI MANTIS MERCADER, SCOTT B. HOW ARD, and
STACY B. MARGOLIES, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4--12, 14, 15, 17-19, and 21-24, which
constitute all of the claims pending in this application. Claims 3, 13, 16, and
20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Sony Mobile Communications AB as the real party in
interest. App. Br. 3.
Appeal2014-009688
Application 12/425,665
THE INVENTION
The claimed invention is directed to a device with variable rate
scrolling and a visual indicator of different scroll rates. Spec. i-f 3.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device, comprising:
a touch screen display configured to:
display at least a portion of a plurality of items, and
receive a first user input;
display configuration logic configured to:
configure the touch screen display to include at least
two regions, each of the at least two regions being
associated with a different scroll rate for scrolling the
plurality of items, and
provide a visual indicator on the touch screen
display, the visual indicator identifying a relative scroll
rate associated with the at least two regions, wherein the
providing a visual indicator comprises:
providing a first color or a first brightness
level for a background of the touch screen display
at a first one of the at least two regions, and
providing a second color or a second
brightness level for the background of the touch
screen display at a second one of the at least two
regions, wherein the first color or first brightness
level is different than the second color or second
brightness level, respectively, wherein the first
color or first brightness level indicates a first
scrolling rate and the second color or second
brightness level indicates a second scrolling rate
different than the first scrolling rate, and wherein
the at least two regions together correspond to all or
substantially all of the touch screen display; and
display control logic configured to:
identify a location on the touch screen display
corresponding to the first user input, and
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control the scroll rate of the plurality of items based
on the location.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Bates us 6,157,381 Dec. 5, 2000
Christie US 6,714,221 Bl Mar. 30, 2004
Lin US 2005/0198588 Al Sept. 8, 2005
Wherry US 2007 /0236475 Al Oct. 11, 2007
Kwon US 2008/0165150 Al July 10, 2008
REJECTIONS
Claims 1, 2, 4, 5, 7, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kwon in view of Bates. Final Act. 3-9.
Claims 6 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwon in view of Bates and Lin. Final Act. 9-11.
Claims 8 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwon in view of Bates and Wherry. Final Act. 11-14.
Claims 11, 12, 14, 15, 18, 19, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bates in view of Kwon. Final Act. 14-
21.
Claims 17 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Kwon and Wherry. Final Act. 21-23.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwon in view of Bates, Wherry, and Christie. Final Act.
23-24.
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Application 12/425,665
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant. We disagree
with Appellant's arguments regarding the pending claims.
Claims 1, 2, 4, 5, 7, and 10
First, Appellant argues Bates teaches shading portions of a scroll bar
to represent the different scroll rates, but does not teach or suggest using
color or brightness for a "background" to indicate different scroll rates as
recited in claim 1. App. Br. 11. Appellant also argues that the Examiner
finds that Kwon does not teach that limitation. App. Br. 10. According to
Appellant, the combination of Kwon and Bates "would merely result in the
display illustrated in [Kwon] Fig. 7 A having different scrolling regions,
along with a scroll bar with different shadings, color or patterns." App. Br.
12.
The Examiner finds Kwon teaches a touch screen display with at least
two regions associated with different scroll rates, the different regions
comprising all or substantially all of the display. Final Act. 3--4, 6; Ans. 4.
The Examiner further finds Bates teaches distinguishing different scroll rate
regions with different colors or patterns. Final Act. 5 (citing Bates Figs. 11-
13, 12:25-34, 13:48-14: 12, 14: 19-25); Ans. 4--5. The Examiner also finds
that a person of ordinary skill the art would have combined the teachings of
Kwon and Bates so "that each scroll region associated with a particular
scroll rate, can be displayed in a particular color." Ans. 5; see also Final Act.
5---6 ("Accordingly, it would have been obvious to one of ordinary skill in
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Application 12/425,665
the art ... to modify the device of Kwon to incorporate the use of color as
taught by Bates, in order to visually distinguish between the different scroll
areas.").
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Furthermore, "[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference." Keller, 642 F.2d at 425. Instead, the relevant issue is
"what the combined teachings of the references would have suggested to
those of ordinary skill in the art." Id. "Combining the teachings of
references does not involve an ability to combine their specific structures."
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
Appellant's argument focuses on the teaching of the individual
references-that Kwon does not teach using different colors to represent
different scroll rates and Bates teaches using different colors in a scroll
bar-and not the combined teaching of those references as applied by the
Examiner. Appellant also argues the result of a bodily incorporation as
opposed to the combined teachings of the references. As such, the
arguments do not persuade us that the Examiner erred. Instead, we agree
with and adopt the Examiner's findings that a person of ordinary skill in the
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art would have taken the broad teaching from Bates of using different colors
to represent different scroll rates (Bates Figs. 11-13, 12:26-34, 13:64--
14:25) and applied it to Kwon's teaching of different scroll rate regions
(Kwon i-f 55). In doing so, we agree with the Examiner that such a
combination "results in a touch screen display segmented into a plurality of
scrolling regions that, together, correspond to all (or substantially all) of the
touch screen display, with each scroll region displayed in its own color."
See Ans. 5---6.
Second, Appellant argues that a person of ordinary skill in the art
would not have been motivated to combine Kwon and Bates. App. Br. 13-
14. More specifically, Appellant argues the Examiner's finding regarding
motivation is conclusory and does not provide a rational underpinning to
support the legal conclusion of obviousness.
The Examiner finds that a person of ordinary skill in the art would
have been motivated to combine the teachings of Kwon and Bates: "One
would have been motivated to make such a combination because this permits
a user to more easily distinguish and select a desired scroll rate based on
visually distinguishable regions." Final Act. 6; Ans. 6.
We are not persuaded by Appellant's argument that the Examiner
erred. The Examiner's finding of a motivation provided an "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness," In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), and we
agree with that finding.
Third, Appellant argues the references are not analogous because
"Bates is specifically directed to providing mappings between a scroll bar
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and different portions of a document" and Kwon is directed to having
different scroll rate regions. App. Br. 14.
The Examiner finds Kwon and Bates constitute analogous art because
they are both directed to the same field of endeavor, scrolling with varying
scroll rates. Ans. 7. The Examiner also finds Kwon and Bates analogous
because they are both directed to how to segment a display into different
regions having different scroll rates associated with the regions. Id.
Art is analogous when it is: (1) from the same field of endeavor as the
claimed invention; or (2) reasonably pertinent to the particular problem
faced by the inventor, if the art is not from the same field of endeavor. In re
Bigio, 381F.3d1320, 1325-26 (Fed. Cir. 2004); Wyers v. Master Lock Co.,
616 F.3d 1231, 1237 (Fed. Cir. 2010). In order to be "reasonably pertinent,"
art must "logically [] commend[] itself' to an inventor's attention in
considering his problem. In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379-80 (Fed. Cir. 2007) (citing In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992)).
Appellant has not persuaded us that the Examiner erred. Instead, we
agree with adopt the Examiner's findings discussed above.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 1, along with the rejections of claims 11, 14, and 24, which are
argued on substantially the same grounds (compare App. Br. 9-14 with App.
Br. 17-21), and claims 2, 4, 5, 7, 10, 12, 15, 18, and 19, which are not
argued separately.
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Claims 6, 8, 9, 17, 21, and 23
With respect to dependent claims 6, 8, 9, 17, 21, and 23, Appellant
contends that because the additional references used in the rejections of
these claims (Lin and Wherry) does not cure the deficiencies in claim 1, the
Examiner failed to make a prima facie case of obviousness for these claims.
App. Br. 14, 16, 22. Because we determine there are no deficiencies
associated with claim 1 for the reasons discussed above, we are not
persuaded that the Examiner erred.
As with claim 1, Appellant also argues the Examiner's finding of a
motivation to combine was conclusory and insufficient to support the
conclusion of obviousness for claims 6, 8, 9, 17, 21, and 23. App. Br. 15-
16, 22.
The Examiner finds one of ordinary skill in the art would have been
motivated to combine the references. For example, with regard to claims 6
and 9, the Examiner finds:
One would have been motivated to make such a combination
because this permits a user to control the speed of scrolling
without requiring large movements, as taught by Lin (see Lin,
paragraph 0041 ["This not only greatly increases the
convenience of the operation but also allows the user's finger not
to continuously perform scrolling movement for simulating the
scrolling of the mouse scroll wheel. Hence, the fatigue and risk
of injury that may be caused to the finger can be reduced."]).
Final Act. 10. The Examiner made similar specific findings of a motivation
to combine with reference to the prior art regarding claims 8, 17, 21, and 23.
Final Act. 12-14, 22-23.
We are not persuaded by Appellant's argument that the Examiner
erred. The Examiner both states a logical reason and gives a citation in the
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prior art to support the motivation. As such, we find the Examiner provided
an articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness, and we agree with that reasoning.
Accordingly, we sustain the Examiner's rejection of claims 6, 8, 9, 17,
21, and 23.
Claim 22
According to Appellant, Christie teaches a "GUI that allows a user to
change scroll amounts and set a lock with respect to a coasting function."
App. Br. 23. However, Appellant argues Christie does not "allow the user to
select how scrolling rates will be modified for an input provided subsequent
to the first user input, as recited in claim 22." Id.
The Examiner finds "Christie teaches the use of GUI control panels to
allow users to customize scroll settings in various manners." Final Act. 23-
24 (citing Christie Figs. 2, 4, 8, 4:30-67, 5:62---6:31, 7:18-36, 8:53-9:31);
Ans. 13. The Examiner further finds it would have been obvious to modify
the incorporate the customized settings so that they would apply to
subsequent user input. Final Act. 24; Ans. 13.
Claim 22 is a dependent claim that recites that "the GUI is further
configured to allow the user to select how scrolling rates will be modified
for an input provided subsequent to the first user input." App. Br. 31.
Christie teaches a graphical user interface ("GUI") that allows the user to
vary the scroll rate. Christie Figs. 2, 8, 4:30---67. Any changes to the scroll
rate apply to all subsequent input. See Christie 6:22-31 (scroll rate can be
modified and the scroll rate "corresponds to a new scroll amount set by the
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user"). Accordingly, Appellant has not persuaded us that the Examiner
erred.
Appellant also argues the reason given by the Examiner as motivation
to combine the references was conclusory and legally insufficient. App. Br.
23-24.
The Examiner finds a person of ordinary skill in the art would have
"been motivated to make such a combination because this permits a user to
customize scroll settings based on their preferences, as taught by Christie."
Final Act. 24 (citing Christie 2:10-12); Ans. 13 (same).
Christie states that "it is desirable to provide an improved scrolling
functionality with a coasting feature available with use of any cursor control
device." Christie 2: 10-12. Accordingly, we agree with the Examiner that
Christie itself provides an explicit motivation to include its teachings in any
device using a scrolling feature. We also disagree that Appellant's argument
that the Examiner's finding was conclusory; instead, the Examiner cited to
specific portions of the prior art to support the motivation to combine the
references.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 22.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
2, 4--12, 14, 15, 17-19, and 21-24.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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