Ex Parte Yamashita et al

Patent Trial and Appeal Board

Nov 25, 2014

11987161 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOSHIKAZU YAMASHITA and KEIICHI MINATO
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Appeal 2012-007675
Application 11/987,161
Technology Center 2600
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Before MICHAEL J. STRAUSS, JEFFREY A. STEPHENS, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–8, 13–15, 19, and 20.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify as the real party in interest Nintendo Co., Ltd. App.
Br. 3.
2 Subsequent to the filing of Briefs in this Appeal, Appellants cancelled
claims 9–12 and 16–18 (Amendment to the Claims) (March 21, 2012), in
response the Examiner entered the Amendment on April 19, 2012 (Reply Br.
Noted) (April 19, 2012).
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Application 11/987,161

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STATEMENT OF THE CASE
Appellants’ invention generally relates to an image processing
apparatus for placing and displaying an image on a designated placement
position. Spec. ¶ 1. Claim 1, reproduced below, is illustrative:
1. A non-transitory computer-readable storage medium storing
an image processing program to be executed by a computer of an
image processing apparatus for: enlarging or reducing an image;
placing the image on a predetermined placement position in relation to
a display area in accordance with a predetermined designation input;
and displaying the image, the image processing program causing the
computer to perform:
obtaining the designation input;
setting an enlargement ratio of the image, and enlarging or
reducing the image in accordance with the enlargement ratio;
in accordance with the set enlargement ratio, changing, in
relation to the display area, an area within which the placement
position is allowed to be set;
based on the obtained designation input, calculating a position
within the area as the placement position, the position corresponding
to the designation input;
placing, on the placement position, the enlarged image; and
displaying the placed image.

THE REJECTIONS
1. Claims 1–8, 13–15, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Salsman et al. (hereinafter “Salsman”) (US
2006/0152488 A1; published July 13, 2006). Ans. 4, 5.
Rather than repeat all the arguments here, we refer to the Briefs and
the Answer for the respective positions of Appellants and the Examiner.
Only those arguments actually made by Appellants have been considered in
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Application 11/987,161

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this decision. Arguments that Appellants did not make in the Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

CONTENTIONS
Appellants contend Salsman fails to disclose “in accordance with the
set enlargement ratio, chang[e/ing], in relation to the display area, an area
within which the placement position is allowed to be set,” recited in
independent claims 1, 13 and 19. App. Br. 14, 15.

ISSUE
Under § 102, has the Examiner erred by finding Salsman discloses “in
accordance with the set enlargement ratio, chang[e/ing], in relation to the
display area, an area within which the placement position is allowed to be
set”?
ANALYSIS
The Examiner finds that determining scaling factor M in Salsman is a
disclosure of “setting an enlargement ratio,” but does not precisely explain
how Salsman discloses “in accordance with the set enlargement ratio,
chang[e/ing], in relation to the display area, an area within which the
placement position is allowed to be set.” Ans. 5, 10, 11. The Examiner
makes statements regarding the teachings of Salsman, citing to specific
portions of Salsman (Ans. 10, 11), without explaining, nor is it otherwise
apparent, what in Salsman the Examiner alleges corresponds to “the
placement position,” and corresponds to the “area” in which the placement
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Application 11/987,161

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position is allowed to be set, or how the area is changed in accordance with
the set enlargement ratio. Id. at 12.
The Examiner also finds Salsman discloses “an enlargement ratio” in
accordance with changing scene perspective, but does not precisely identify
nor is it otherwise apparent, under this embodiment of Salsman, how
Salsman discloses changing “an area within which the placement position is
allowed to be set” in accordance with the set enlargement ratio. Id. at 10.
Based upon the portions of Salsman identified by the Examiner, and
the statements provided by the Examiner, the Examiner has not persuaded us
that Salsman discloses “in accordance with the set enlargement ratio,
chang[e/ing], in relation to the display area, an area within which the
placement position is allowed to be set.”
We therefore do not sustain the Examiner’s rejection of
(1) independent claims 1, 13 and 19; and (2) dependent claims 2–8, 14, 15,
and 20.3
Because a rejection of independent claim 1 under §103 is not before
us on appeal, we express no opinion as to whether claim 1 would have been
obvious over Salsman considered alone, or in combination with one or more
additional references. We leave any such further consideration to the
Examiner. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (MPEP) 1213.02.

3 Appellants’ contentions present additional issues regarding the Examiner’s
rejection of claims 1, 13 and 19 under § 102, and dependent claims 2–8, 14,
15, and 20 under § 102. However, the identified issues are dispositive of the
Appeal. Therefore, we do not reach the additional issues raised by
Appellants’ contentions.
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DECISION
The Examiner’s decision rejecting claims 1–8, 13–15, 19, and 20 is
REVERSED.

REVERSED

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