Ex Parte Higuchi

Patent Trial and Appeal Board

Sep 19, 2016

12994660 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/994,660 11/24/2010 Takeshi Higuchi
78198 7590 09/21/2016
Studebaker & Brackett PC
12700 Sunrise Valley Drive
Suite 102
Reston, VA 20191
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.
002500-K00007 4901
EXAMINER
TAYLOR JR, DUANE N
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKE SHI HIGUCHI
Appeal2015-001761
Application 12/994,660
Technology Center 2600
Before ERIC S. FRAHM, CARL L. SILVERMAN, and MELISSA A.
RAAP ALA, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 10, 11, 13, 14, and 17-21. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 10, which are reproduced below with bracketed
lettering and emphases added:
Appeal2015-001761
Application 12/994,660
1. A mobile communication terminal comprising:
a display unit operable to display at least a first image
and a second image adjacent to the first image;
a touch detection unit operable to receive a user input on
a surface of the display unit; and
a terminal control unit operable to control the display
unit, to set a first mode, to set a second mode, and to set a third
mode, wherein in the first mode, the first image and the second
image are displayed at substantially a same size,
[A J in the second mode, the second image is reduced in
size and the reduced size second image is displayed such that a
size of the second image is smaller than a size of the first
image,
[BJ in the third mode, the first image is reduced in size
and the reduced size first image is displayed such that the size
of the first image is smaller than the size of the second image,
[CJ the terminal control unit is operable to control
display of the first image if the touch detection unit receives a
user input on an area of the second image in the second mode,
and
[DJ the terminal control unit is further operable to control
display of the second image if the touch detection unit receives
a user input on an area of the first image in the third mode.
10. A method of operating a mobile communication
terminal comprising:
displaying at least a first image and a second image
adjacent to the first image on a display unit;
setting one of a first mode, a second mode, and a third
mode, said mobile communication terminal being operable to
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Application 12/994,660
set the first mode, being operable to set the second mode, and
being operable to set the third mode, wherein
in the first mode, the first image and the second image
are displayed at substantially a same size,
in the second mode, a size of the second image is smaller
than a size of the first image, and
in the third mode, the size of the first image is smaller
than the size of the second image;
[A J controlling display of the first image if a user inputs
on an area of the second image in the second mode; and
[BJ controlling display of the second image if a user
inputs on an area of the first image in the third mode, wherein
[CJ a transition from the second mode to the third mode
causes the controller to switch from said control of display of
the first image to said control of display of the second image,
and
[DJ a transition from the third mode to the second mode
causes the controller to switch from said control of display of
the second image to said control of display of the first image.
The Examiner's Rejections
(1) The Examiner rejected claims 10, 14, 18, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Kim (US 2008/0158189 Al; published
July 3, 2008) in view of Hirata (US 2008/0204402 Al; published Aug. 28,
2008). 1 Final Act. 3-8; Ans. 2-7.
1 Appellant does not present separate patentability arguments for claims 14,
18, and 20, and relies on the arguments presented as to claim 1 for the
patentability of claims 14, 18, and 20 (see App. Br. 5-7; Reply Br. 2-3). In
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Application 12/994,660
(2) The Examiner rejected claims 1, 11, 13, 17, 19, and 21 under
35 U.S.C. § 103(a) as being unpatentable over Kim and Catalan (US
2006/0109517 Al; published May 25, 2006). Final Act. 8-17; Ans. 7-16.
Appellant's Contentions
(1) Appellant contends (App. Br. 5---6; Reply Br. 2-3) that the
Examiner erred in rejecting claims 10, 14, 18, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kim and Hirata for
numerous reasons, including:
(a) Kim and Hirata, and especially Hirata, fail to disclose
limitations [CJ and [DJ recited in claim 10 (App. Br. 5---6);
(b) Hirata does not control one image based on input from an
area of another image as recited in claim 10, and instead uses touch
strips 22 and 24 (App. Br. 6); and
( c) Hirata fails to describe all four limitations [A ]-[DJ of claim
10 (App. Br. 6).
(2) Appellant contends (App. Br. 6-7; Reply Br. 4--5) that the
Examiner erred in rejecting claims 1, 11, 13, 17, 19, and 21under35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kim and Hirata for
numerous reasons, including:
view of the foregoing, we select claim 1 as representative of the group of
claims 1, 14, 18, and 20. Appellant presents separate arguments with respect
to claims 1 and 21 rejected under § 103 (a) over Kim and Catalan, and relies
on the arguments presented as to claim 1 for the patentability of claims 11,
13, 17, and 19 (see App. Br. 6-7; Reply Br. 4--5).
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Application 12/994,660
(a) Kim fails to disclose controlling the display of one image by
receiving input to another image next to the one image in the third
mode, as recited in claims 1and21 (App. Br. 6-7);
(b) Catalan's display of cropped photos on a template page for
making a photo album to make different size images (shown in Figure
7 and described in paragraph 41) does not cure the deficiencies of
Kim (App. Br. 7);
( c) neither Kim nor Catalan disclose controlling a display of
one image by receiving input to another image adjacent to the image
of the third mode, as recited in claims 1 and 21 (App. Br. 7);
(d) neither Kim nor Catalan teach or suggest limitations [CJ and
[DJ recited in claim 1, and as similarly recited in claim 21 (Reply Br.
4);
(e) Kim's images displayed in regions 122 and 126 change
when buttons 125 are pressed in movable menu 124 (Reply Br. 4);
and
( f) simply changing sizes of images in Kim's regions 122 and
126 would not result in the invention recited in limitations [A]-[D]
recited in claim 1 and as similarly recited in claim 21 (Reply Br. 4-5).
Issues on Appeal
(1) Did the Examiner err in rejecting claims 1, 14, 18, and 20 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Kim and
Hirata because the combination fails to teach or suggest limitations [A ]-[DJ
recited in representative independent claim 1?
(2) Did the Examiner err in rejecting claims 1, 11, 13, 1 7, 19, and 21
being unpatentable under 35 U.S.C. § 103(a) over the combination of Kim
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and Catalan because the combination fails to teach or suggest limitations
[A]-[D] recited in independent claim 1, and as similarly recited in
independent claim 21?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 3-17; Ans.
2-16) in light of Appellant's contentions in the Appeal Brief (App. Br. 5-7)
and the Reply Brief (Reply Br. 2-5) that the Examiner has erred, as well as
the Examiner's response to Appellant's arguments in the Appeal Brief (Ans.
17-18).
With regard to claims 1 and 21, we agree with Appellant's above
Contentions (2)(d), (2)(e), and (2)(f) (see Reply Br. 4--5) that the
combination of Kim and Catalan fails to teach or suggest limitations [A ]-[DJ
recited in claim 1 and similarly recited in claim 21. Specifically, paragraphs
54 and 57 of Kim disclose that touching region 126 can increase a displayed
image size and display that image in region 122, but not the other way
around. Claims 1 and 21 each require not only size reduction as opposed to
magnification as taught by Kim (see e.g., the second and third modes of
limitations [A] and [BJ of claim 1 ), but controlling display of the first and
second images upon touch detection in the second and third modes
(limitations [CJ and [DJ of claim 1 ). Accordingly, we do not sustain the
Examiner's rejection of claims 1 and 21, nor do we sustain the Examiner's
rejection of claims 11, 13, 17, and 19, which depend from claim 1 and,
therefore, contains the limitations of claim 1.
With regard to representative independent claim 10, however, we
concur with the conclusions reached by the Examiner, and we adopt as our
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own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 3-7; Ans. 2---6), and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
the Appellant's Appeal Brief (Ans. 17-18).
With regard to representative claim 10, we agree with the Examiner
that (i) Kim teaches second and third modes and controlling image display
based on user inputs as recited (Final Act. 3-5; Ans. 2--4); (ii) Hirata teaches
mode transitioning as recited (Final Act. 6-7; Ans. 5---6); and, therefore, (iii)
the combination of Kim and Hirata teaches or suggests limitations [A ]-[DJ
as set forth in claim 10 (Final Act. 3-7; Ans. 2---6).
Appellant's Contention ( 1 )(a) is not persuasive inasmuch as this
argument is not commensurate in scope with the actual language of claim
10. We agree with the Examiner's response in the Answer that:
... the claim limitation is completely silent that the transition
corresponds to "the control of one of images based on input on
an area of another image and vice versa," as stated by applicant.
The claim only states that the display is controlled by a touch
but is silent that the control is switched between two images
due to a touch or that the display is changed when the control is
switched between modes during claimed "transition". Instead
the office relied on the concept of switching an operation mode
between a left-side touch strip and a right-side touch strip based
on a flip-in operation performed on one of the touch strips, as
stated by the applicant, since the claim limitation doesn't limit
or precludes the concept the office presented to the applicant.
Ans. 17-18 (emphasis added). Notably, Appellant's argument pertaining to
controlling "one image" based on input at "another image" (App. Br. 6) does
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Application 12/994,660
not rule out the possibility that Kim's region 124 be one of the images to be
displayed.
Appellant's Contentions ( 1 )(b) and ( 1 )( c) are not persuasive because
Kim, and not Hirata was relied on as to limitations [A] and [BJ. Hirata was
relied on for teaching the concept of transitioning modes for controlling
images, not the type of user input that causes the transitions. Furthermore,
Appellant's arguments (App. Br. 5---6; Reply Br. 2-3) address the individual
shortcomings of Kim and Hirata, and do not rebut the Examiner's prima
facie case of obviousness, which is based on the combined teachings and
suggestions of Kim and Hirata as seen by a person of ordinary skill in the
art.
In view of the foregoing, we sustain the Examiner's rejection of
representative claim 10, and claims 14, 18, and 20 grouped therewith.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 10, 14, 18, and 20 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Kim
and Hirata.
(2) The Examiner erred in rejecting claims 1, 11, 13, 1 7, 19, and 21 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Kim
and Catalan.
DECISION2
2 The Board of Patent Appeals and Interferences is a review body, rather
than a place of initial examination. We leave to the Examiner to consider
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Application 12/994,660
(l)TheExaminer'srejectionofclaims 1, 11, 13, 17, 19,and21 is
reversed.
(2) The Examiner's rejection of claims 10, 14, 18, and 20 is affirmed.
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). See
37 C.F.R. §§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
the appropriateness of further rejection(s) of independent claims 1 and/or 21
and their respective dependent claims under 35 U.S.C. § 103(a) over the
cited references applied differently or in combination with additional
references.
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