Ex Parte Fukushima et alDownload PDFPatent Trial and Appeal BoardMar 30, 201714175277 (P.T.A.B. Mar. 30, 2017) Copy Citation 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. 14/175,277 02/07/2014 Atsuhiko Fukushima 70404.2303/dk 2285 54072 7590 04/03/2017 SHARP KABUSHIKI KAISHA C/O KEATING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 EXAMINER HUNTSINGER, PETER K ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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@KBIPLAW.COM u spto @ 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 ATSUHIKO FUKUSHIMA, YUJI OKAMOTO, TOSHIHIRO YAMANAKA, TOSHIHIKO FUKUHARA, SHUHJI FUJII, TATSUO NOMURA, SYOUICHIROU YOSHIURA, and TSUTOMU YOSHIMOTO Appeal 2016-0049421 Application 14/175,277 Technology Center 2600 Before: JEAN R. HOMERE, DEBRA K. STEPHENS, and JOHN A. EVANS, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 18, 20-26, 28, and 29. Br. 1. Claims 1—17, 19 and 27 have been canceled. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as Sharp Kabushiki Kaisha. Br. 2. Appeal 2016-004942 Application 14/175,277 Appellants ’ Invention Appellants invented a digital multifunctional device (1) including an image reading unit (2), an operation unit (4), an image forming unit (6), and a device control unit (8). Spec. 11—12, Fig. 1.2 The operation unit (4) includes an input unit (4a) and a display unit (4b) for implementing various functions including erasing processed image data stored in the hard disk (12). Spec. 12, Fig. 1. Illustrative Claim Claim 18, reproduced below, is illustrative of the claimed subject matter: 18. An image processing device comprising: an image data input unit which inputs image data; an image data storage unit which stores the image data inputted through the image data input unit; an image data processing unit which outputs the image data stored in the image data storage unit; and an image data erasing unit which erases the image data stored in the image data storage unit; wherein the image data erasing unit includes: an erase control unit which repeatedly executes an erase process to the image data stored in the image data storage unit for a plurality of times, and a display control unit which displays an icon which indicates that an image data erase process function is in an operable state and has been validated. Prior Art Relied Upon 2 Spec, filed Mar. 17, 2015. 2 Appeal 2016-004942 Application 14/175,277 Yasuhiro et al. JP 2001-309099 A Nov. 2, 2001 (“Yasuhiro”)3 Battles et al. US 6,437,811 B1 Aug. 20, 2002 (“Battles”) Bunker US 2002/0181134 Al Dec. 5, 2002 (“Bunker”) Rejections on Appeal Appellants request review of the following Examiner’s rejections: Claims 18, 20—22, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Bunker, Battles, and Yasuhiro. Final Act. 3—6. Claims 23—26 and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Bunker, Battles, Yasuhiro, and Official Notice. Final Act. 6—10. ANAFYSIS We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 4—7.4 3 Appellants refers to this reference as “Nakai”, however, we use the inventor’s last name to refer to the reference. 4 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Sept. 28, 2015) (“Br.”), the Answer (mailed Feb. 4, 2016) (“Ans.”), the Final Office Action (mailed July 8, 2015) (“Final Act.”), and the original Specification (filed Feb. 7, 2014) (“Spec.”) for the respective details. We have considered in this Decision only those arguments Appellants actually raised in the Brief. Any other arguments Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 3 Appeal 2016-004942 Application 14/175,277 Regarding the rejection of claims 18 and 23, Appellants argue Battles does not teach or suggest displaying an icon which indicates that an image data erase process function is in an operable state. Br. 4. According to Appellants, Battles teaches providing an indication as to which of the displayed icons can be selected and deselected in display modes. Br. 4—5 (citing Battles 5:19-41, Figs. 2A—2C). In response, the Examiner finds Battles teaches selection and de-selection of functions the icons represent,can be effected only if the image function indicator 240 is available for selection indicated by selection indicator 245. Ans. 2 (citing Battles 5:31—45, Fig. 2A). We agree with the Examiner that the cited disclosure of Battles teaches displaying an icon indicating an erase function in an operable state because the selection indicator 245 indicates the erase function can operate upon selection by the user. Ans. 2. Second, Appellants contend Yasuhiro does not teach or suggest displaying an icon which indicates that an image data erase process function has been validated. Br. 4. Appellants argue Yasuhiro teaches access made available to an additional function pack with a decoding key. Br. 5 (citing Yasuhiro Abstract). However, Appellants assert Yasuhiro does not teach displaying an icon indicating that the additional function pack has been validated. These arguments are not persuasive. At the outset, we note Appellants’ own Specification describes “validated” as pertaining to the image data process erase function in an operable state when a product key has been entered. Spec. 20. The Examiner correctly finds, in light of Appellants’ own Specification, Yasuhiro teaches validating a function with a product key. Ans. 3 (citing Spec. 20). Accordingly, we agree with the Examiner that Yasuhiro teaches 4 Appeal 2016-004942 Application 14/175,277 indicating that a function has been validated by notifying a user that the function is available for use, with the product key. Yasuhiro Abstract. Further, we note Appellants’ argument that Yasuhiro does not teach displaying an icon is tantamount to an individual attack against the cited references. One cannot show non-obviousness by attacking the references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also In re Keller, 642 F.2d 413, 425 (CCPA 1981). As discussed above, we agree with the Examiner that Battles teaches displaying an icon indicating that an image data erase process function is operable and available for use by the user. Ans. 3 (citing Battles 5:31—45). Further, as discussed above, Yasuhiro teaches validating the function. Therefore, we agree with the Examiner that the proposed combination teaches displaying an icon which indicates that an image data erase process function has been validated. Ans. 3. Regarding the rejection of claim 23, Appellants argue that the Examiner’s assertion of Official Notice is improper. Br. 6. First, Appellants contend that the Examiner improperly concluded that the Official Notice is Appellants’ Admitted Prior Art because Appellants did not traverse the Official Notice. Br. 6. Second, Appellants argue the Examiner asserted Official Notice to establish a motivation to combine teachings, rather than demonstrate evidentiary facts. Br. 6. We find Appellants’ arguments unavailing. More specifically, we find that the Examiner invokes Official Notice to establish noticed facts to support the rejection of claim 23. Final Act. 9. In particular, we find the Examiner’s assertion that “it is well-known [and obvious] in the art to display an icon differently during operation” is 5 Appeal 2016-004942 Application 14/175,277 sufficient to invoke Official Notice. Final Act. 9 (citing MPEP 2144.03). However, Appellants failed to explain why the facts provided in the noticed fact is not indisputably and unquestionably well-known according to the legal standard set forth in the MPEP. Indeed, Appellants have provided no analysis of noticed fact at all, nor have Appellants provided any evidence as to why the noticed fact is not considered to be common knowledge or well- known in the art in accordance with MPEP § 2144.03(C).5 Consequently, we agree with the Examiner that Appellants have failed to adequately traverse the Examiner's statement of Official Notice that displaying an icon differently during an operation is well known in the art. Final Act. 9. In a separate statement, the Examiner articulates motivation to combine the noticed facts with the other prior art relied upon to inform the user that the operation is occurring. Final Act. 9. Appellants do not rebut this motivation. Br. 6. Contrary to Appellants’ argument, we find this established motivation distinct from the Official Notice because the Examiner does not state that this motivation is well known. Final Act. 9. Accordingly, we are not persuaded that the Examiner erred in rejecting claims 18 and 23. 5 Our reviewing court has held that an appellant adequately traverses a finding of Official Notice where the appellant’s argument “contain[s] adequate information or argument” to create on its face “a reasonable doubt regarding the circumstances justifying the ... notice” of what is well known to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To adequately traverse such a finding [of Official Notice], an applicant must specifically point out the supposed errors in the [EJxaminer’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” Manual of Patent Examining Procedure (“MPEP”) § 2144.03(C) (Rev. 8, July 2010). 6 Appeal 2016-004942 Application 14/175,277 Regarding the rejections of claims 20-22, 24—26, 28, and 29, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of independent claims 18 and 23 (Br. 7), claims 20—22, 24—26, 28, and 29 fall therewith for the same reasons set forth above. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner’s obviousness rejections under 35 U.S.C. § 103(a) of claims 18, 20—26, 28, and 29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation