Ex Parte Yamaguchi

Patent Trial and Appeal Board

Oct 29, 2012

11337565 (P.T.A.B. Oct. 29, 2012)

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.
11/337,565 01/24/2006 Takahiro Yamaguchi SON-3505 4077
23353 7590 10/29/2012
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
BOLOTIN, DMITRIY
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
10/29/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKAHIRO YAMAGUCHI
____________

Appeal 2010-011138
Application 11/337,565
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
ANDREW CALDWELL, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9, 10, 12-21, and 23-27. We have jurisdiction under 35
U.S.C. § 6(b).
1,2
We reverse and enter new grounds of rejection.

1
On September 19, 2012, Appellant waived attendance at an oral hearing
scheduled for November 6, 2012.
2
Although Appellant cites a Board decision in the Reply Brief’s Related
Proceedings Appendix (Reply Br. 2-3, 14 (citing Ex parte Darolia, No.
2009-005819 (BPAI June 14, 2010)), the issues in that appeal are not
germane to those before us in the present appeal.
Appeal 2010-011138
Application 11/337,565

2
STATEMENT OF THE CASE
Appellant’s electronic device has a demonstration display function
that changes the display to a setting where the display is not shown and turns
on the device upon operating an external operating device. See generally
Spec. 2-4. Claim 9 is illustrative with key disputed limitations emphasized:
9. An electronic device comprising:

a display part configured to show a demonstration display when a
demonstration display setting is a first setting, said display part not showing
said demonstration display when said demonstration display setting is a
second setting;

a microcomputer configured to set said demonstration display setting
to said second setting only upon an operation of an external operating
device,

wherein the electronic device is turned on upon said operation.

CLAIMS ON APPEAL
The Brief’s Claims Appendix does not reflect the Examiner’s entering
the Amendment After Final Rejection filed March 3, 2010 as the Examiner
indicates. Ans. 3-4 (referring to Advisory Action mailed March 30, 2010
indicating that the amendment corrects typographical errors and would be
entered for appeal purposes). Accordingly, we decide this appeal based on
the claims as amended.

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Application 11/337,565

3
THE REJECTION
3

The Examiner rejected claims 9, 10, 12-21, and 23-27 under 35
U.S.C. § 103(a) as unpatentable over Morioka (JP 2004-304487 A; Oct. 28,
2004) and Haseoka (JP 2000-133105 A; May 12, 2000).
4
Ans. 4-11.
5

CONTENTIONS
The Examiner finds that Morioka’s electronic device has a “display
part” 25 configured to (1) show a demonstration display when a
demonstration display setting is a first setting which is said to correspond to
selecting a demonstration mode, and (2) not show the display when the
display setting is a second setting, namely when the demonstration mode is
cancelled. Ans. 5. The Examiner further finds that Morioka’s
microcomputer is configured to set the second setting only upon operating
an “external operating device” (i.e., remote control 10). Id. Although the
Examiner acknowledges that Morioka’s electronic device is not turned on
upon external operating device operation, the Examiner nonetheless cites
Haseoka as teaching this feature in concluding that the claim would have
been obvious. Ans. 5, 12.
Appellant argues that the cited prior art does not teach or suggest
turning on the electronic device upon external operating device operation as

3
Since the Examiner withdrew rejections of claims 19 and 21 under § 112
(Ans. 3), those rejections are not before us.
4
We refer to the machine-generated English-language translations of these
documents in the record. See Ans. 4 (referring to the translations).
5
Throughout this opinion, we refer to (1) the Appeal Brief filed March 3,
2010; (2) the Examiner’s Answer mailed June 2, 2010; and (3) the Reply
Brief filed July 29, 2010.
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Application 11/337,565

4
claimed. App. Br. 11-16; Reply Br. 2-9.
6
Among other things, Appellant
contends that not only does Haseoka lack an external operating device,
Haseoka’s power switch 11 does not set the demonstration display setting,
and the demonstration prohibition state is set regardless of the state of this
switch. App. Br. 13-16; Reply Br. 3-9.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 9 by finding
that Morioka and Haseoka collectively would have taught or suggested an
electronic device with (1) a display part that does not show a demonstration
display in a second demonstration display setting, and (2) a microcomputer
configured to set the second setting only upon an operation of an external
operating device, where the electronic device is turned on upon this
operation?

ANALYSIS
We begin by noting that the last clause of claim 9 reciting “wherein
the electronic device is turned on upon said operation” recites a method step
as part of an apparatus claim directed to the electronic device. Nor does the
claim require automatically turning on the electronic device: it could be
turned on manually upon external operating device operation and still meet
the limitation. Although including this method limitation in an apparatus
claim renders the claim indefinite as noted infra in our new ground of

6
Although Appellant misquotes some passages from the cited English
translations (compare, e.g., App. Br. 16 (quoting Haseoka ¶ 0019) with
Haseoka ¶ 0019), we nonetheless deem Appellant’s errors in this regard
harmless.
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rejection,
7
we nonetheless construe the disputed limitation as a capability of
the recited external operating device, namely that the external operating
device is configured to turn on the electronic device upon external operating
device operation. Accord Spec. 14:1-4 (noting that the demonstration
display is cancelled when electronic device 1 is first turned on by remote
commander 20).
Turning to the rejection, Morioka enables a user to select or cancel a
displayed demonstration function via a “shop front support remote control”
10 (i.e., an “external operating device”) as shown in Figures 1 and 4 through
6(b). Morioka, ¶¶ 0023-33. Based on this functionality, we agree with the
Examiner that this selection and cancellation results in either showing or not
showing a demonstration display as claimed. Ans. 5. But for the reasons
noted below, we not only disagree with the Examiner that the electronic
device is not turned on upon this operation, we also find the Examiner’s
reliance on Haseoka to cure this perceived deficiency problematic.
Haseoka’s audio device demonstration capability is detailed in Figures
1 through 3. As shown in Figure 3, Haseoka’s system determines that
demonstration is not prohibited, and if so, the system checks whether power
switch 11 is “ON.” Haseoka, Abstract; ¶ 0021; Fig. 3 (steps S5 (“Y”
condition) and S10). If not, the demonstration enters a “1st functional
display state” which is characterized as a “complicated demonstration
indication” with “high” demonstration effect. Haseoka, Abstract; ¶ 0021;
Fig. 3 (steps S10 (“N” condition) and S11). But if the power switch is

7
Accord In re Katz Interactive Call Proc. Pat. Litig., 639 F.3d 1303, 1318
(Fed. Cir. 2011) (citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005)).
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“ON,” the demonstration enters a “restrained” “2nd functional display state”
which is a “moderate” indication with “limited” function display. Haseoka,
Abstract; ¶ 0022; Fig. 3 (steps S10 (“Y” condition) and S12).
Although the Examiner refers generally to this functionality (Ans. 12
(citing Haseoka ¶ 0005)), the Examiner’s position is unavailing. Leaving
aside Haseoka’s lacking an external operating device (e.g., remote control
device) as Appellant indicates (Reply Br. 7-9), Haseoka at best teaches
entering different demonstration modes with different functionality
depending on the state of a power switch. Notably, Haseoka’s device is
turned on before entering the second functional state due to the “Power ON”
status of the switch.
But to say that it would have been obvious to modify Morioka to be
turned on upon exiting the demonstration mode as the Examiner asserts
(Ans. 5; emphasis added) is problematic. If anything, Morioka and Haseoka
are already on in this condition since (1) Morioka’s electronic device must
be turned on to display and execute selecting and cancelling the
demonstration mode (see Morioka ¶¶ 0022-33; Figs. 4-6), and (2) Haseoka
enters the second functional mode responsive to the “ON” state of the power
switch. See Haseoka, Abstract; ¶¶ 0021-22; Fig. 3 (steps S5 (“Y” condition)
and S10). In short, modifying Morioka in view of Haseoka to cure a
perceived deficiency that does not exist in Morioka as the Examiner
proposes strains reasonable limits on this record. We are therefore
persuaded that the Examiner erred in rejecting (1) independent claim 9, and
(2) dependent claims 10 and 12-19 for similar reasons.
We reach a similar conclusion regarding claims 20, 21, and 23-27.
Unlike claim 9, independent claim 20 requires turning on an electronic
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device upon external operating device operation—an active step recited in
the present tense that precludes previously turning on the device as in
Morioka and Haseoka. Since this issue is dispositive regarding our
reversing the rejection of these claims, we need not address Appellant’s
other arguments (App. Br. 17-21; Reply Br. 9-12).

NEW GROUNDS OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new grounds of
rejection.

Indefiniteness
Claims 9, 10, and 12-19 are rejected under 35 U.S.C. § 112, second
paragraph as indefinite. Independent claim 9 recites an electronic device,
but recites “wherein the electronic device is turned on upon said operation.”
This clause improperly recites an active method step as part of an apparatus
claim. Notably, the claim does not recite what turns on (or has turned on)
the electronic device, let alone whether the microcomputer (or some other
device) is configured to do so. Nor does the claim require automatically
turning on the electronic device: it could be turned on manually upon
external operating device operation and still meet the limitation. In any
event, this method limitation in an apparatus claim renders the claim
indefinite, for it is unclear whether infringement occurs when (1) a system is
created allowing a system or user to turn on the electronic device upon
operating an external operating device, or (2) a system or user actually turns
on the device upon that operation. See Katz, 639 F.3d at 1318 (citing IPXL
Holdings, 430 F.3d at 1384).
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Anticipation
Claim 9 is rejected under 35 U.S.C. § 102(b) as anticipated by
Morioka. Morioka’s electronic device has a “display part” 25 configured to
(1) show a demonstration display when a demonstration display setting is a
first setting corresponding to selecting a demonstration mode, and (2) not
show the display when the display setting is a second setting, namely when
the demonstration mode is cancelled. See Morioka ¶¶ 0022-33; Figs. 4-6.
Morioka’s microcomputer is configured to set the second setting only upon
operating an “external operating device” (i.e., “shop front support remote
control” 10). See id.
Since Morioka’s electronic device must be turned on for this
functionality to be realized (e.g., to display and execute selecting and
cancelling the demonstration mode), the device was therefore turned on
“upon” operating the external operating device. Notably, nothing in the term
“upon” precludes the electronic device having been previously turned on, so
long that it is on when the recited operation is performed.
8

Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that this does not mean
the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

8
The same, however, cannot be said for independent claim 20 which recites,
in pertinent part, “turning on an electronic device upon said operation”—an
active step recited in the present tense that precludes the device having
previously been turned on.
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Application 11/337,565

9
CONCLUSION
The Examiner erred in rejecting claims 9, 10, 12-21, and 23-27 under
§ 103. We reject (1) claims 9, 10, and 12-19 under 35 U.S.C. § 112, second
paragraph, and (2) claim 9 under § 102.

ORDER
The Examiner’s decision rejecting claims 9, 10, 12-21, and 23-27 is
reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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Application 11/337,565

10
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).

REVERSED - 37 C.F.R. § 41.50(b)

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