Ex Parte Kasahara et alDownload PDFPatent Trial and Appeal BoardSep 23, 201613232594 (P.T.A.B. Sep. 23, 2016) 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. 13/232,594 09/14/2011 Shunichi Kasahara 1946-0482 6761 60803 7590 09/23/2016 Paratus Law Group, PLLC 620 Herndon Parkway Suite 320 Herndon, VA 20170 EXAMINER RUSSELL, RICHARD M ART UNIT PAPER NUMBER 2618 MAIL DATE DELIVERY MODE 09/23/2016 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 SHUNICHI KASAHARA, KEN MIYASHITA, KAZUYUKI YAMAMOTO, IKUO YAMANO, and HIROYUKI MIZUNUMA ____________________ Appeal 2015-006806 Application 13/232,594 Technology Center 2600 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1–6, 10–18, and 20–22. Claims 7–9 and 19 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Invention The disclosed and claimed invention on appeal relates to a method and apparatus for processing image data. Spec. 3. Appeal 2015-006806 Application 13/232,594 2 Representative Claim 1 1. An apparatus for processing image data, comprising: at least one processor; an output unit configured to project a first image on a projection surface using the at least one processor, wherein the first image includes a plurality of objects; a detection unit configured to detect movement of the apparatus from a user using the at least one processor; and a processing unit configured to change the first image to a second image based on the detected movement using the at least one processor, [L] wherein the processing unit is configured to change the first image to the second image, based on the detected movement, by continuous scrolling of the plurality of objects when the detected movement is greater than a threshold to form the second image. (Emphasis and bracketed lettering added to highlight contested limitation L.) Rejections R1. Claim 20 is rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written-description requirement. R2. Claim 20 is rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the enablement requirement. R3. Claim 20 is rejected under 35 U.S.C. §112, second paragraph, as being indefinite. Appeal 2015-006806 Application 13/232,594 3 R4. Claim 18 and 21 are rejected under 35 U.S.C. §112, fourth paragraph, for being of improper dependent form for failing to further limit the subject matter of the parent claim. R5. Claims 1–6 and 10–18 and 20–22 are rejected under 35 U.S.C. §103(a) as being obvious over the combined teachings and suggestions of Jung (US 2009/0309826 A1, pub. Dec. 17, 2009), Forlines (US 7,486,274 B2, iss. Feb. 3, 2009) and Lee (US 8,212,794 B2, iss. July 3, 2012). CLAIM GROUPING Based on Appellants’ arguments (App. Br. 11–15), we decide the appeal of Rejection R5 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). ANALYSIS We have considered all of Appellants arguments and any evidence presented. We disagree with Appellants’ arguments and we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants’ arguments. (Ans. 2–6). However, we highlight and address specific findings and arguments for emphasis in our analysis below. Rejections R1–R3 under 35 U.S.C. §112 The Examiner has not expressly withdrawn Rejections R1–R3 (and rejection R4) in the Answer. (See Ans. 2, “WITHDRAWN REJECTIONS: None.”). We also consider the Examiner’s statement in the Advisory Action: Appeal 2015-006806 Application 13/232,594 4 Note that the amendments overcome matters of form set forth in a previous office action and not prior art rejections and the previously stated prior art rejections are maintained. See Attachment to Paper 20141009 herewith. (Advisory Act. Oct. 14, 2014). The Examiner indicates that the after-final amendment (filed Sept. 26, 2014) would be entered on appeal. (Advisory Act. 2). However, we do not find the Examiner’s Answer or the Advisory Action expressly indicate that a ground of rejection has been withdrawn, as required under our procedural rule 37 C.F.R. § 41.39(a)(1). Therefore, rejections R1–R4 under § 112 are before us on appeal. However, we find Rejections R1–R3 are rendered moot by the Examiner’s Oct. 14, 2014 entry (on appeal) of the after-final amendment (filed Sept. 26, 2014), which deleted by amendment the offending claim term “inadvertent movement.” (Oct. 14, 2014 Advisory Act. 2; Aug. 5, 2014 Final Act. 3–4). Rejection R4 under 35 U.S.C. §112, fourth paragraph Likewise, we find Rejection R4 of claims 18 and 21 is rendered moot by the Examiner’s Oct. 14, 2014 entry (on appeal) of the after-final amendment (filed Sept. 26, 2014), which added the language “in addition to the continuous scrolling” by amendment to both claims 18 and 21. Appeal 2015-006806 Application 13/232,594 5 Rejection R5 of Representative Claim 1 under 35 U.S.C. §103(a) Issue: Under 35 U.S.C. §103(a), did the Examiner err in finding the cited references would have taught or suggested contested limitation [L] within the meaning of representative claim 1?1 Appellants contend: Lee does not disclose teach or suggest the claimed change or changing " ... [al first image to a second image based on the detected movement [of the apparatus], by continuous scrolling of the plurality of objects when the detected movement is greater than a threshold to form the second image." App. Br. 13. At the outset, we conclude the claim term “unit” is a nonce word that fails to recite sufficiently definite structure.2 Williamson v. Citrix Online, 1 We give the contested claim limitation the broadest reasonable interpretation consistent with the Specification. See In Re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 2 Regarding independent claim 1, Appellants appear to have replaced the term “means for” with the “nonce” word “unit” thereby connoting multiple generic “black boxes” for performing all of the intended functions recited in claim 1. We conclude “unit” may be interpreted as a nonce word substituting for the term “means.” See Williamson, 792 F.3d at 1349 (Fed. Cir. 2015) (en banc) (“we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to § 112, para. 6.”). Cf. with id. at 1350 (“‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6”). In the event of further prosecution, and to the extent that the labeled units recited in claim 1 are nonce words that fail to establish a sufficiently definite meaning as the name for a particular structure capable of performing the recited functions, we leave it to the Examiner to consider whether at least claim 1 should be rejected under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite (if the recited labeled units are Appeal 2015-006806 Application 13/232,594 6 LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Thus, as an initial matter of claim construction, we conclude the recited claim terms “output unit,” “detection unit,” and “processing unit” are nonce words or verbal constructs which are not recognized as names of corresponding structures, and are simply a substitute for the term “means for.” See Ex parte Rodriguez, 92 USPQ2d 1395, 1401–1402 (Bd. Pat. App. & Int. 2009) (precedential). Moreover, Appellants provide no evidence to establish that the claimed “output unit,” “detection unit,” and “processing unit” are structures capable of performing the recited functions. (App. Br. 7–9). Therefore, we interpret the “unit” claim elements at issue as “means-plus-function” limitations. Regarding the claimed “processing unit,” we are not persuaded the Examiner's broadest reasonable interpretation of contested limitation L is overly broad or unreasonable, because Appellants do not point to any limiting definition, in the claim, or in the Specification. (Claim 1).3 We additionally find Appellants are arguing the references separately. The Examiner finds Jung and Forlines, not Lee, teach or at least suggest the major portion of contested limitation L: “the processing unit is configured to change the first image to the second image, based on the detected movement, construed as “means” under pre-AIA § 112, sixth paragraph, and if no corresponding structure is found in the Specification). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 3 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2015-006806 Application 13/232,594 7 by continuous scrolling of the plurality of objects when the detected movement is greater than a threshold to form the second image.” (Final Act. 9, citing Forlines and Jung) (Emphasis added). We find a preponderance of the evidence supports the Examiner’s finding that Jung’s clockwise motion of the device (advancing a projected slide presentation one slide at a time) teaches, or at least suggests, the contested “scrolling” limitation. (Final Act. 9; Ans. 5, citing Jung ¶ 44). We find Jung’s projector control unit, by advancing slides, at least suggests “continuous scrolling” within the meaning of claim 1. We note the Examiner cites Lee, not Jung, for teaching “continuous scrolling” tied to a “threshold.” (Final Act. 11, citing Lee Col. 9, 4–7: “In an embodiment, continuous scrolling is implemented using a scroll threshold”). Given this evidence, we are not persuaded of error regarding the Examiner’s findings, because Lee’s embodiment, which implements continuous scrolling using a threshold, teaches the portion of limitation L which recites “continuous scrolling . . . a threshold.” (Claim 1). (Final Act Lee, Col. 9, ll. 7–8). We also are not persuaded of error regarding the Examiner finding that Forlines’s rotating projector (that magnifies an image), when combined with Jung and Lee, would have taught or suggested the contested limitation “change the first image to the second image . . . by continuous scrolling of the plurality of objects . . . .” (Claim 1). We note, when magnified, certain image objects are no longer displayed in the image area, which we find teaches or suggests a change in the image of a plurality of objects. (Final Act. 10, Forlines Col. 7, l. 56). Appeal 2015-006806 Application 13/232,594 8 Appellants further contend “Although Lee does disclose ‘continuous scrolling’, there is no disclosure, teaching, or suggestion that the continuous scrolling of Lee is based on the detected movement of an apparatus or device, as recited in the claims.” (App. Br. 14). However, Appellants are arguing the references separately. The Examiner finds Jung, not Lee, teaches image scrolling in response to detected motion. (Final Act. 11, citing Jung ¶¶ 41, 140 and 11). The Examiner findings are buttressed by Lee’s teaching or suggestion of “continuous scrolling . . . when the detected movement is greater than a threshold” (claim 1), because we find Lee’s scroll count, which Lee sets depending on the magnitude of the quantized movement information, teaches or at least suggests the limitation “when the detected movement is greater than a threshold . . . .” (Lee, col. 9, ll. 13–17). Therefore, on this record, Appellants have not shown that changing images by continuous scrolling when the detected movement is greater than a threshold (claim 1) would have been more than a combination of prior art elements according to known methods to yield predictable results. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Nor have Appellants provided evidence that combining such familiar elements would have been “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), or would have yielded unexpected results. Appellants additionally present arguments regarding a prior art search performed on July 28, 2014. (App. Br. 12). We consider such arguments immaterial to the issues and evidence of record before us. Appeal 2015-006806 Application 13/232,594 9 Therefore, on this record, and based on a preponderance of the evidence, we sustain the Examiner’s Rejection R5 of representative claim 1 and the grouped claims which fall therewith. See Claim grouping, supra. CONCLUSION For at least the aforementioned reasons, on this record, we are not persuaded the Examiner erred. We find a preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for all contested elements of representative claim 1 on appeal. DECISION We dismiss as moot the Examiner’s rejections R1 and R2 of claim 20 under 35 U.S.C. §112, first paragraph (written description and enablement). We dismiss as moot the Examiner’s rejection R3 of claim 20 under 35 U.S.C. §112, second paragraph. We dismiss as moot the Examiner’s rejection R4 of claims 18 and 21, under 35 U.S.C. §112, fourth paragraph. We affirm the Examiner’s Rejection R5 of claims 1–6, 10–18 and 20–22 under §103(a). 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation