Ex parte Hirayama

Board of Patent Appeals and Interferences

Oct 19, 1999

07978450 (B.P.A.I. Oct. 19, 1999)

Application for patent filed November 18, 1992. According to1
appellant, this application is a continuation of Application 07/642,994,
filed January 18, 1991.
1
Paper No. 35
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TOMOSHI HIRAYAMA
______________

Appeal No. 1996-2046
Application 07/978,4501
_______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT, and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 2-9, 12, 13 and 15,
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Application 07/978,450
2
which constitute all the claims remaining in the application.

The disclosed invention pertains to an information
processing apparatus using a pen and a tablet for the input of
data. The apparatus permits sequential pages of a document to
be deleted (shredded) or stored (copied) in a reduced number
of input actions. A plurality of descriptive images are
stored which when viewed successively simulate the process of
shredding or copying. When a sequence of pages are to be
shredded or copied, the descriptive images are successively
displayed to give the appearance of the selected process
taking place.
Representative claim 15 is reproduced as follows:
15. An information processing apparatus comprising:
(a) data input means comprising a pen and a tablet for
inputting information;
(b) memory means for storing said information input by
said data input means;
(c) processing means for processing said information in a
form of plural pages;
(d) display means for displaying a plurality of icons and
for displaying a page of said information;
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Application 07/978,450
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(e) means responsive to said pen for designating a
currently displayed page as a first page of a sequence of
pages which is an object of a predetermined process;
(f) means responsive to said pen for changing a displayed
page so as to select a previous (back) or next (forward) page
for display;
(g) means responsive to said pen for designating a
currently displayed page as a last page of said sequence;
(h) means responsive to said pen for starting said
predetermined process from said first page to said last page
in said sequence of pages;
(i) means for storing plural descriptive images
designating said predetermined process including an image of a
machine for performing the process;
(j) means for controlling said means for storing so as to
display said descriptive images successively as a series of
moving images to visually represent documents moving in
relation to said image of a machine, to graphically simulate
performing said predetermined process.
The examiner relies on the following references:
Saki et al. (Saki) 4,965,558 Oct. 23, 1990
Brewer et al. (Brewer) 5,347,628 Sep. 13, 1994
(filed Jan. 18,
1990)
Tim Field, Using MacWrite and MacPaint , Copyright 1984 by TM TM
McGraw-Hill, pages 4, 8, 14, 22, 43-47 and 155.
Claims 2-9, 12, 13 and 15 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
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Application 07/978,450
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Field in view of Saki and Brewer.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 2-9, 12, 13 and 15. Accordingly, we
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Application 07/978,450
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reverse.
Appellant has nominally indicated that the claims do
not stand or fall together [brief, page 4], but he has not
specifically argued the limitations of each of the claims.
The extent of appellant’s arguments appears on pages 7-8 of
the brief wherein it is baldly asserted that the prior art
does not teach or suggest features of the various dependent
claims with no analysis or discussion of obviousness
whatsoever. Simply pointing out what a claim requires with no
attempt to point out how the claims patentably distinguish
over the prior art does not amount to a separate argument for
patentability. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987). At the time appellant’s
brief was filed, 37 CFR
§ 1.192(8)(iv) required that "the argument shall specify the
errors in the rejection and, if appropriate, the specific
limitations in the rejected claims which are not described in
the prior art relied on in the rejection, and shall explain
how such limitations render the claimed subject matter
unobvious over the prior art.” Appellant’s arguments fail to
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Application 07/978,450
6
satisfy this requirement as a basis to have the claims
considered separately for patentability. Since appellant is
considered to have made no separate arguments for
patentability, all claims will stand or fall together. Note
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991,
217 USPQ 1, 3 (Fed. Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
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Application 07/978,450
7
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Field teaches the manner in which the applications
MacWrite and MacPaint operate on the Macintosh computerTM TM TM
system. The examiner finds that Field essentially teaches all
of the limitations of independent claim 15 except for the pen
and tablet for inputting information and the means for
displaying descriptive images successively as a series of
moving images.
The examiner cites Saki as teaching that a pen and tablet for
inputting information was well known, and the examiner asserts
Appeal No. 1996-2046
Application 07/978,450
8
that it would have been obvious to substitute Saki’s pen and
tablet for Field’s conventional computer input. Brewer is
cited as teaching that animated icons were known in the art.
The examiner asserts that it would have been obvious to replace
Field’s conventional computer display with Brewer’s moving
images [answer, pages 3-5].
Appellant points out individual deficiencies in the
applied references and argues that the claimed invention does
not result from the combination of references as asserted by
the examiner. Appellant also argues that the examiner has
selected bits and pieces from the applied references and
assembled these bits and pieces using appellant’s own
disclosure as a guide [brief, pages 4-7].
After a careful review of the record in this case, we
agree with appellant that the collective teachings of Field,
Saki and Brewer would not have suggested the invention as
recited in independent claim 15. We agree with appellant that
this particular combination of prior art references appears to
be an improper attempt to reconstruct the invention in
hindsight. We cannot agree with the examiner that the artisan
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Application 07/978,450
9
would have been motivated to modify programs or apparatus
designed exclusively for the Macintosh computer system to have
a pen and tablet input as used by Saki and animated icons as
taught by Brewer. We can see no enhancement to the Macintosh
computer system by attempting to incorporate disparate features
from Saki or Brewer.
We also agree with appellant that the combination of
Field, Saki and Brewer does not meet all the limitations of
claim 15 anyway. Claim 15 requires that a sequence of pages be
displayed and that a first page and a last page be designated
from this sequence of pages [means (e)-(g)]. Neither Field or
Saki designates pages in this manner. Claim 15 also requires
that a sequence of images be displayed in response to the
starting of the predetermined process. As noted by appellant,
Brewer simulates animation only with continuous movement of the
cursor and does not control the display means to display a
sequence of images representing a selected process to be
performed on a sequence of pages.
In summary, we agree with appellant that the invention
as recited in independent claim 15 is not suggested by the
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Application 07/978,450
10
collective teachings of Field, Saki and Brewer within the
meaning
of 35 U.S.C. § 103. Therefore, the decision of the examiner
rejecting claims 2-9, 12, 13 and 15 is reversed.
REVERSED
Jerry Smith )
Administrative Patent Judge )
)
)
)
Lee E. Barrett ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lance Leonard Barry )
Administrative Patent Judge )
Appeal No. 1996-2046
Application 07/978,450
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JS/cam
Appeal No. 1996-2046
Application 07/978,450
12
David R. Metzger
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