Ex Parte Kawano

Patent Trial and Appeal Board

Nov 25, 2016

10722084 (P.T.A.B. Nov. 25, 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.
10/722,084 11/25/2003 Seiichi Kawano JP920000184US2 (4134P) 7151
54161 7590 11/29/2016
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EXAMINER
c/o Sawyer Law Group, P.C.
P.O. Box 51418
PIZIALI, JEFFREY J
Palo Alto, CA 94303 ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
11/29/2016 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):
patent@ sawyerlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIICHI KAWANO 1
Appeal 2015-003954
Application 10/722,084
Technology Center 2600
Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
ALEX S. YAP, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, and 6—8, all of the pending claims in the
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 Appellants indicate the real party-in-interest is Lenovo Incorporated. App.
Br. 3.
2 Claims 3 and 5 were withdrawn from prosecution. Claim 4 was cancelled.
Appeal 2015-003954
Application 10/722,084
BACKGROUND
The disclosed invention relates to a technique for adjusting screen
brightness of a screen display. See Spec. Abstract, 1:3—5.
CLAIMED SUBJECT MATTER
Representative claims 1 and 8, reproduced from the Claims Appendix
of the Appeal Brief, read as follows:
1. A brightness adjusting system, comprising:
a display gradation calculator to calculate a first display brightness in
a first application displayed in a first window on a display unit;
and
a brightness adjuster to adjust a screen display brightness of the
display unit according to the first display brightness,
wherein in response to a second application being displayed in a
second window on the display unit, the display gradation
calculator calculating a second display brightness of the second
window, and the brightness adjuster adjusting the screen display
brightness of the display unit according to a type of application
of the second application.
8. A brightness adjusting system, comprising:
a display gradation calculating means for calculating a first display
brightness in a first application displayed in a first window on a
display unit; and
a brightness adjusting means for adjusting a screen display brightness
of the display unit according to the first display brightness,
wherein in response to a second application being displayed in a second
window on the display unit, the display gradation calculating
means calculating a second display brightness of the second
window, and the brightness adjusting means adjusting the screen
display brightness of the display unit according to a type of
application of the second application.
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Appeal 2015-003954
Application 10/722,084
REFERENCES AND REJECTIONS
Claims 1, 2, 7, and 8 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Megied et al. (US 6,556,253 Bl; Apr. 29, 2003) (“Megied”).
Claims 1 and 6—8 stand rejected under 35 U.S.C. 35 U.S.C. § 102(b)
as anticipated by Kidder et al. (US 5,822,599; Oct. 13, 1998) (“Kidder”).
Claims 1,2, and 6—8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Megied and Kidder.
ANALYSIS
Before undertaking an analysis of the patentability of the claims, it is
necessary to determine the scope of the claims. Independent claim 1 is
directed nominally to a system and includes two components: a display
gradation calculator and a brightness adjuster. The “wherein” clause of
claim 1 is not a component but is instead a set of steps responsive to an
action, i.e., a second application being displayed in a second window on the
display unit. The steps recited in the “wherein” clause are directed to the
display gradation calculator performing a step of calculating a second
display brightness of the second window, and the brightness adjuster
performing a step of adjusting the screen display brightness of the display
unit according to a type of application of the second window. The
“wherein” clause is not directed to the display gradation calculator being
capable of performing the specific step of calculating, and the brightness
adjuster being capable of for performing the specific step of adjusting. In
other words, claim 1 is a hybrid claim because it recites both a system and a
method for using the system. A claim that recites both a system and the
method for using that system, does not apprise a person of ordinary skill in
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Appeal 2015-003954
Application 10/722,084
the art of its scope, and is indefinite under 35 U.S.C. § 112 12. IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
Accordingly we enter a new ground of rejection for claim 1, and
dependent claims 2, 6, and 7 under 35 U.S.C. § 112 12 as indefinite.
Independent claim 8 is similar to claim 1 because it is directed
nominally to a system. Claim 8 differs from claim 1 because it recites “a
display gradation calculating means for calculating . . and “a brightness
adjusting means for adjusting ...” in place of “a display gradation
calculator” and “a brightness adjuster.” Because claim 8 is directed to a
system and recites substantially the same “wherein clause” as claim 1, claim
8 is also directed to a hybrid claim and does not apprise a person of ordinary
skill in the art of its scope, and is indefinite under 35 U.S.C. § 112 12.
IPXL, 430 F.3d at 1384.
In addition, because claim 8 utilizes two instances of means-plus-
function limitations, we must construe the corresponding structure covered
by the recited function. But first, we must identify the function. The recited
function of the display gradation calculating means is: calculating a first
display brightness in a first application displayed in a first window on a
display unit. The recited function of the brightness adjusting means is:
adjusting a screen display brightness of the display unit according to the first
display brightness. Next we look to the Appellant’s Specification to identify
the corresponding structures for performing these recited functions. The
only disclosure directed to “calculating a first display brightness in a first
application displayed in a first window on a display unit” and “adjusting a
screen display brightness of the display unit according to the first display
brightness” are:
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Appeal 2015-003954
Application 10/722,084
In another aspect of the present invention, a brightness adjusting
system is provided for. The brightness adjusting system includes
a display gradation calculating means for calculating the display
brightness in a specific area of an image displayed on the screen
of a display unit and brightness adjusting means for adjusting the
screen brightness of the display unit according to the display
brightness in the specific area, as calculated by the display
gradation calculating means.
Spec. 6:10—15.
The display gradation calculating means calculates the display
brightness in the s specific area by converting the gradation of
each RGB element in a draw signal of an image displayed in this
specific area to a gray scale gradation.
Spec. 7:4—6.
Based on Appellants’ Specification, we cannot ascertain the
corresponding structures for performing the recited functions of the recited
display gradation calculation means and the brightness adjusting means.
Accordingly, one of ordinary skill in the art cannot apprehend the scope of
the means-plus-function limitations recited in independent claim 8. For this
additional reason claim 8 is indefinite.
For the aforementioned reasons, we enter a new
for claim 8 under 35 U.S.C. § 112 2 as indefinite.
As a matter of procedure, we reverse the prior art rejections of claims
1, 2, and 6—8. When the analysis of the claims indicates the need for
“con siderable speculation as to the meaning of the terms employed and
assumptions as to the scope of the clai ms,” a rejection of the claims based on
prior art is likely imprudent. In re Steele, 305 F.2d 859, 862—63 (CCPA
1962). It should be understood, however, that our reversal does not reflect
on the merits of the underlying prior art rejections.
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Appeal 2015-003954
Application 10/722,084
DECISION
The rejections of claims 1,2, and 6-8 are reversed pro forma.
We enter a NEW GROUND OF REJECTION of claims 1, 2, and 6-8
under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the invention.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
REVERSED: 37 C.F.R, $ 41.50(b)
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