Ex Parte Ishii et al

Patent Trial and Appeal Board

Dec 21, 2016

11300298 (P.T.A.B. Dec. 21, 2016)

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.
1946-0266 4062
EXAMINER
SAX, STEVEN PAUL
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
11/300,298 12/15/2005
60803 7590 12/21/2016
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
Naoya Ishii
12/21/2016 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 NAOYAISHII and MAYUMI KAMI YA
Appeal 2016-001051
Application 11/300,298
Technology Center 2100
Before BRUCE R. WINSOR, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 4—6, 8, 11, 14, 17, 21, 23, and 25—35, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 The real party in interest identified by Appellants is Sony Corporation.
App. Br. 3.
Appeal 2016-001051
Application 11/300,298
STATEMENT OF THE CASE
Appellants’ disclosed invention relates to “processing an image . . .
and, in particular, to . . . providing a user-friendly and easy-to-use user
interface.” Spec. 1. Claim 1, which is illustrative, reads as follows:
1. An apparatus configured to:
store in an icon information table information relating to
a plurality of available icons that are available to be displayed
on a display screen, wherein at least one of the plurality of
available icons is displayed on the display screen and registered
as at least one displayed icon in the icon information table;
create a list of the at least one displayed icon by
referencing the icon information table; and
upon receipt of a user display guide instruction, generate
a display guide screen, wherein the display guide screen
illustrates the said at least one displayed icon with
predetermined narrative information that at least one of
identifies and describes the functionality of said at least one
displayed icon.
Claims 1, 4—6, 8, 11, 14, 17, 21, 23, and 25—35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kinoe et al. (US 6,469,722
Bl; Oct. 22, 2002; hereinafter “Kinoe”) and Suzuki et al. (US 2003/0154185
Al; Aug. 14, 2003; hereinafter “Suzuki”). See Final Act. 2—5.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Mar. 18, 2015; “Reply Br.” filed Oct. 26, 2015) and the
Specification (“Spec.” filed Dec. 15, 2005) for the positions of Appellants
and the Final Office Action (“Final Act.” mailed Apr. 30, 2014) and Answer
(“Ans.” mailed Aug. 26, 2015) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
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Application 11/300,298
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUE
All pending claims are subject to the same ground of rejection and
Appellants argue all pending claims together. See App. Br. 15—20; Reply
Br. 4—8. Therefore, we select claim 1 as the representative claim, pursuant
to our authority under 37 C.F.R. § 41.37(c)(l)(iv). All pending claims stand
or fall with claim 1. The issue presented by Appellants’ contentions is as
follows: Does the combination of Kinoe and Suzuki teach or suggest a
“display guide screen [that] illustrates the said at least one displayed icon
with predetermined narrative information that at least one of identifies and
describes the functionality of said at least one displayed icon” (hereinafter
the “disputed limitation”), as recited in claim 1?
ANALYSIS
We have reviewed Appellants’ arguments and contentions (App. Br.
14—20; Reply Br. 4—8) in light of the Examiner’s findings (Final Act. 2—3)
and explanations (Ans. 2—3) regarding claim 1. We agree with the
Examiner’s findings and explanations and, except as set forth below, we
adopt them as our own. The following discussion, findings, and conclusions
are for emphasis.
The Examiner relies on Suzuki, when combined with Kinoe, to teach
the disputed limitation. Final Act. 3 (citing Suzuki || 165, 222—224). The
Examiner explains as follows:
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Application 11/300,298
[I]n para 223 of Suzuki ... the file name also describes or
identifies the file type of the icon, and thus describes
functionality of how the icon represents the file. Even the name
of the icon itself identifies the functionality of the icon, because
this identifies how the icon is representing the file.
Ans. 2.
Appellants contend as follows:
Suzuki appears (at best) to relate to the display of file names and
file locations, which is a significant departure from the specific
claim recitations that require a display screen guide which
illustrates at least one displayed icon with predetermined
narrative information that either identifies and/or describes the
functionality of the at least one displayed icon.
App. Br. 15.
We agree with the Examiner that identification of a file represented by
an icon is encompassed within the broadest reasonable interpretation of
“identifies ... the functionality of said . . . displayed icon,” as recited in
claim 1. We note that both the Examiner and Appellants appear to interpret
the disputed limitation to require either (A) identification of the functionality
of the at least one displayed icon or (B) description of the functionality of
the at least on displayed icon. However, we conclude the broadest
reasonable interpretation of the disputed limitation is met by either
(A) identification of the at least one displayed icon (rather than the
functionality) or (B) description of the functionality of the at least on
displayed icon. Nevertheless, we agree with the Examiner under either the
claim construction apparently adopted by the Examiner and Appellants or
under the broadest reasonable interpretation of the disputed limitation.2
2 We have construed claim 1 differently than have the Examiner and
Appellants. During prosecution, “if a claim is amenable to two or more
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Application 11/300,298
Appellants contend, for the first time in the Reply Brief, that neither
Kinoe nor Suzuki teaches “generat[ing] a display guide screen” “upon
receipt of a user display guide instruction,” as recited in claim 1. Reply Br.
4—7. Appellants’ argument, which could have been presented in the Appeal
Brief, is untimely and waived. See 37 C.F.R. § 41.41(b)(2); see also. Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
(“Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.”) (discussing arguments raised for the first time in a
reply brief). Were we to automatically consider such newly raised
arguments, “[rjather than reviewing a record for error, the Board would be
considering, in the first instance, findings of fact proposed by the
Appellants], but not weighed by the Examiner [in the Examiner’s Answer]
against the other evidence of record.” Borden, 93 USPQ2d at 1475.
For the foregoing reasons we sustain the rejection of representative
claim 1 and claims 4—6, 8, 11, 14, 17, 21, 23, and 25—35, which fall with
claim 1.
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35U.S.C. §112, second
paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential). In the event of further prosecution, the Examiner may
wish to consider whether “narrative information that at least one of identifies
and describes the functionality of said at least one displayed icon” is
indefinite, id. The Examiner may also wish to consider whether the claim
limitations directed to information presented on a display amount to non­
functional descriptive matter, see MPEP § 2111.05.
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Application 11/300,298
DECISION
The decision of the Examiner to reject claims 1, 4—6, 8, 11, 14, 17, 21,
23, and 25—35 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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED
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