Ex Parte Iwata et al

Board of Patent Appeals and Interferences

Nov 19, 2009

09862448 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SATOSHI IWATA and SHOJI SUZUKI
__________

Appeal 2009-004414
Application 09/862,448
Technology Center 2100
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Decided: November 19, 2009
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Before JOHN A. JEFFERY, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 5-13, and 17-23. Claims 2-4 and 14-16
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).1

1 Appellants waived appearance at an oral hearing scheduled for this appeal
on November 18, 2009.
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The Invention
The disclosed invention relates generally to a display apparatus for
displaying electronic book-form contents (Spec. 1).
Independent claim 1 is illustrative:
1. A display apparatus comprising:
a displaying section for displaying document contents made up
in units of page;
a displaying control section for controlling a display state of
said displaying section;
means for providing a reading display mode of displaying the
whole contents of each page of said document contents on said
displaying section;
means for providing a plurality of automatic paging display
modes of conducting page ejection (paging) and successively
performing partial or schematic displaying of each page of said
document contents on said displaying section according to a display
mode corresponding to one of a plurality of reading modes; and
selecting means for selecting the display mode as one of said
reading display mode and said plurality of automatic paging display
modes,
wherein when the selected display mode of said document
contents is performed, said display control section controls the display
state of said displaying section to display said document contents on
said displaying section, and
wherein said plurality of automatic paging display modes
includes at least the following display modes:
a cursory reading display mode in which title and emphasized
parts, of the document contents in each page, are extracted to display
so that an outline of the contents of each page is viewable to the user;
a partially displaying mode in which a portion of each page is
displayed, the displayed portion being extracted according to a
predetermined condition; and
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an outline view display mode in which only document structure
is displayed as a layout so that the whole of each page is viewable to
the user.

The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Endo US 5,801,713 Sep. 01, 1998
Palmer US 6,002,798 Dec. 14, 1999

The Rejection
The Examiner rejects claims 1, 5-13, and 17-23 under 35 U.S.C.
§ 103(a) as being unpatentable over Endo and Palmer.

ISSUE 1
Appellants assert that “Palmer does not disclose any mode in which
only a portion of each page extracted according to a predetermined condition
is displayed” (App. Br. 5).
Did Appellants demonstrate that the Examiner erred in finding that
Palmer discloses or suggests a mode in which a portion of a page is
extracted and displayed according to a predetermined condition?

ISSUE 2
Appellants assert that “Palmer does not teach or suggest using a font
size for extracting and displaying a portion of the page” and that “Palmer
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does not teach or suggest using a font type for extracting a portion of the
page to be displayed” (App. Br. 6).
Did Appellants demonstrate that the Examiner erred in finding that
Palmer discloses or suggests a predetermined condition involving a font size
or font type according to which a portion of a page is extracted and
displayed?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Palmer discloses an operator that sets “display options by which
retrieved documents will be displayed” (col. 8, ll. 15-16).
2. Palmer discloses that “the operator selects one of two modes by
which retrieved documents will be displayed: full document image
mode or browse mode” (col. 8, ll. 17-19) and that “[i]f the browse
mode is selected, then only an abstract structural view of each
document image is displayed” (col. 8, ll. 21-23).
3. Palmer discloses that “the operator may select the abstraction level at
which the structural view is displayed” (col. 8, ll. 28-29) and that
“[n]ine abstraction levels are possible” (col. 8, ll. 29-30) including
“Structure only” (col. 8, l. 33), “Titles” (col. 8, ll. 34), “First Line of
Text” (col. 8, l. 36), “Tables” (col. 8, l. 38), “Line Art” (col. 8, l. 39),
to name a few.

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PRINCIPLES OF LAW
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Issue 1
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 1, 5-13, and 17-23 with respect to issue 1 on the basis of
claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As set forth above (FF 1-3), Palmer discloses multiple page modes
including displaying only the structure of a document page, displaying the
document page with titles or a first line of text (i.e., a “cursory reading
display mode” as recited in claim 1), or displaying other portions of the
document page (e.g., tables, line art, half-tone, etc.) based on operator
selection (i.e., a “predetermined condition”). Thus, we agree with the
Examiner that Palmer discloses or suggests displaying a portion of a page
according to a predetermined condition.
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Appellants argue “Palmer’s different levels of abstraction according to
which documents are always displayed within the structural view of the
whole page” (App. Br. 6). Since Palmer discloses embodiments in which
only a portion of page rather than the whole page is displayed, we disagree
with Appellants’ assertion that Palmer only displays “the whole page.”
When Palmer displays a document page containing only, for example, tables
or line art (FF 3), only that portion of the document page is displayed (i.e.,
the portion containing tables or line art) while the portion of the page that
contains components other than tables or line art (for example) is not
displayed. Hence, Palmer displays a “portion” of the page (in this example,
the tables or line art of the page) and does not display the remainder of the
page (in this example, elements of the page other than the tables or line art).
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, or
claims 5-13 and 17-23, which fall therewith as being obvious over Endo and
Palmer with respect to issue 1.

Issue 2
As described above, Palmer discloses displaying a portion of a
document page as selected by a user (FF 1-3). However, the Examiner has
not shown that Palmer also discloses that the portion of the document page
displayed is extracted according to either a font size (as recited in claims 5,
17, and 22) or a font type (as recited in claims 6, 18, and 22).
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The Examiner states that “regions have a type and those types have
region attributes that include a font size and font type” (Ans. 10) thus
demonstrating that the portion of text to be displayed has a certain font size
or type. However, the Examiner has not shown that extracting the portion of
the page to display involves the particular font size or type of the text to be
displayed. Rather, as described above, the selection of the portion of the
page to be displayed appears to be based on user selection independent of
the font size or type of the text to be displayed.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claims 5, 6, 17, 18, and 22.

CONCLUSION OF LAW
Based on the findings of fact and analysis above, we conclude that
Appellants have failed to demonstrate that the Examiner erred in finding that
Palmer discloses or suggests a mode in which a portion of a page is
extracted and displayed according to a predetermined condition (issue 1), but
have demonstrated that the Examiner erred in finding that Palmer discloses
or suggests a predetermined condition involving a font size or font type
according to which a portion of a page is extracted and displayed (issue 2).

DECISION
We affirm the Examiner’s decision rejecting claims 1, 7-13, 19-21,
and 23 under 35 U.S.C. § 103. We reverse the Examiner’s decision rejecting
claims 5, 6, 17, 18, and 22 under 35 U.S.C. § 103.
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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)(iv).

AFFIRMED-IN-PART

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