Ex Parte Maruyama

Patent Trial and Appeal Board

Jan 25, 2018

14740464 (P.T.A.B. Jan. 25, 2018)

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.
14/740,464 06/16/2015 Miyoko MARUYAMA SHIMP0113USA 8927
72119 7590 01/29/2018
MARK D. SARALINO ( SHARP )
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
MANDEVILLE, JASON M
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIYOKO MARUYAMA
Appeal 2017-009412
Application 14/740,464
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—16. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Sharp Kabushiki
Kaisha. (App. Br. 2).
Appeal 2017-009412
Application 14/740,464
STATEMENT OF THE CASE
Appellant’s invention relates to an operational console displaying
information to a user and allowing the user to operate based on the
information (Spec. 1:12—14). Exemplary claim 1 under appeal reads as
follows:
1. An operation console provided on an image forming
apparatus capable of forming an image on a sheet of recording
paper, comprising:
a display unit displaying information to be notified to a
user;
a detecting unit, arranged on said display unit, for
detecting a request of the user based on a touch operation of the
user; and
a display control unit displaying, on said display unit, a
ten-key allowing the user to input, using said detecting unit, a
numerical value as an instruction to said image forming
apparatus; wherein
said detecting unit detects a request for inputting a
numerical value for setting a condition for an operational mode
related to printing; and
said display control unit displays said ten-key on said
display unit in response to said request for inputting a numerical
value.
REFERENCES and REJECTIONS
Claims 1—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosa et al. (US 5,620,608 A; issued Apr. 15, 1997) (“Rosa”), and
Applicant’s Admitted Prior Art (Spec. 1:25—4:31) (“APA”) (see Ans. 2—13).
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PRINCIPLES OF LAW
Claim Interpretation
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. See In re
American Acad, of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In the absence of an express definition of a claim term in the specification or
a clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007); see also In re Morris, YU F.3d 1048, 1054 (Fed. Cir. 1997).
Obviousness
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
show obviousness. See KSR Int’l Co., v. Teleflex Co., 550 U.S. 398, 415—16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
(“KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.”).
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d413, 425 (CCPA 1981).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in Appellant’s Appeal Brief that the Examiner has erred. We are
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Application 14/740,464
unpersuaded by Appellant’s contentions and concur with the findings and
conclusions reached by the Examiner as explained below.
Independent Claims 1 and 16
Appellant contends the combination of cited references fails to teach
or suggest, “[a]n operation console provided on an image forming apparatus
capable of forming an image on a sheet of recording paper,” “[a] detecting
unit [that] detects a request for inputting a numerical value for setting a
condition for an operational mode related to printing,” and “[a] display
control unit [that] displays [a] ten-key on [a] display unit in response to said
request for inputting a numerical value,” as recited in claim 1, and similarly
recited in claim 16 (see App. Br. 5—6). More specifically, Appellant argues
Rosa discloses an operation console provided on a dialysis machine for
dialysis treatment, rather than the claimed “image forming apparatus capable
of forming an image on a sheet of recording paper or printing” (see App.
Br. 6). Appellant further argues Rosa does not disclose any “operational
mode related to printing,” as recited in claim 1, and, thus, as argued by
Appellant, Rosa fails to disclose detecting “a request for inputting a
numerical value for setting a condition for an operational mode related to
printing,” or displaying “said ten-key on said display unit in response to said
request for inputting a numerical value rvalue for setting a condition for an
operational mode related to printing]” (see id.)
We are not persuaded. Appellant’s arguments attack the references
individually and do not address the Examiner’s rationale supporting the
rejection. More specifically, the Examiner relied upon APA (i.e., the
Background section of Appellant’s Specification), not Rosa, for teaching the
claimed “image forming apparatus capable of forming an image on a sheet
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of recording paper or printing” and “operational mode related to printing”
(see Ans. 3—4, 15—16), and Appellant’s arguments do not address this
finding.
Appellant further contends a person of ordinary skill in the art would
not have combined the cited references (see App. Br. 7—9). As argued by
Appellant, the dialysis machine disclosed in Rosa is not comparable to the
device disclosed in APA (see App. Br. 7). According to Appellant, the
dialysis machine disclosed in Rosa has different functions from the claimed
“image forming apparatus,” and, thus, application of an operation console
for Rosa’s dialysis machine to the claimed “image forming apparatus”
would not necessarily be effective and may even worsen the device (see
App. Br. 8). Appellant further argues, even assuming the operation console
disclosed in Rosa was somehow applicable to a medical device different
from a dialysis machine, there is no basis for application of the operation
console disclosed in Rosa to an image forming apparatus, such as a printer
or copy machine (see App. Br. 8—9).
This contention is not persuasive either. As stated by the Examiner,
one of ordinary skill in the art would recognize that Rosa’s disclosed
operation console (as well as the operating and interfacing techniques for
numerical input also disclosed in Rosa) improves the operation of Rosa’s
dialysis machine (see Ans. 15—16). We further agree with the Examiner that
one of ordinary skill in the art would also recognize that Rosa’s disclosed
operation console would improve the image forming apparatus disclosed in
APA in the same way (see Ans. 15—16; see also KSR, 550 U.S. at 417 (“[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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same way, using the technique is obvious unless its actual application is
beyond his or her skill.”)).
Thus, we are unpersuaded of Examiner error in finding that the
combination of the cited references teaches or suggests all the elements of
claims 1 and 16. Therefore, we sustain the rejection of claims 1 and 16
under 35 U.S.C. § 103(a).
Claim 5
Appellant contends the combination of cited references fails to teach
or suggest,
wherein a preview area for displaying an image as an object of
processing of said image forming apparatus is arranged at a
central area of said display unit; and said display control unit
displays said ten-key on said preview area in response to said
request for inputting a numerical value,
as recited in claim 5 (see App. Br. 9-13). More specifically, Appellant
argues none of the cited portions of Rosa disclose anything that could
reasonably correspond to the claimed “preview area for displaying an image
as an object of processing of said image forming apparatus,” of claim 5 (see
App. Br. 11). As further argued by Appellant, the right portion of the screen
display illustrated in Figure 4 of Rosa does not correspond to the claimed
“preview area,” and is not “arranged at a central area of said display unit,” as
recited in claim 5 (see App. Br. 12). Appellant further argues, to the extent
the right portion of the screen display illustrated in Figure 4 of Rosa
corresponds to the claimed “preview area,” the keypad (i.e., “ten-key”)
illustrated in Figure 5 of Rosa is not displayed on the preview area on the
central area of the display unit (see id.).
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We are not persuaded by Appellant’s contention. We agree with the
Examiner that Appellant’s argument fails to distinguish the claimed
“preview area” from any area of the display such as the cited portion of the
screen display disclosed in Rosa (see Ans. 18). Further, even assuming
arguendo that the claimed “preview area” was distinct from the cited portion
of Rosa’s screen display because the aforementioned portion is not arranged
“at a central area of [a] display unit,” one of ordinary skill in the art would
have found it obvious to modify the screen display disclosed in Rosa so that
the keypad is displayed on a portion of the screen display arranged at a
central area of the screen display, as such a modification would have been
within the grasp of a person of ordinary skill in the art. See KSR, 550 U.S. at
402 (“When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill in the art has good reason to pursue the known options within
his or her technical grasp.”).
Thus, we agree with the Examiner that the combination of cited
references also teaches or suggests all the elements of claim 5. Therefore,
we sustain the rejection of claim 5 under 35 U.S.C. § 103(a).
Remaining Claims
No separate arguments are presented for the remaining dependent
claims (see App. Br. 6). We therefore sustain their rejections for the reasons
stated with respect to independent claims 1 and 16.
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DECISION
We affirm the Examiner’s rejection of claims 1—16 under
35 U.S.C. § 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)(l)(iv).
AFFIRMED
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