Ex parte Matsuyama

Board of Patent Appeals and Interferences

Jun 13, 2001

08506645 (B.P.A.I. Jun. 13, 2001)

1
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MAKOTO MATSUYAMA

_____________
Appeal No. 1999-0081
Application 08/506,645
______________
HEARD: May 9, 2001
_______________
Before THOMAS, RUGGIERO, and BARRY, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 5 and 8 through 17, which
constitute all the claims remaining in the application.
Representative claim 1 is reproduced below:
Appeal No. 1999-0081
Application No. 08/506,645
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1. A position inputting device for use with video
signal processing, comprising:
operating means movable in arbitrary directions;
two-dimensional position detection means for
detecting the operating positions of said operating
means and generating two dimensional first and
second coordinate data;
a switch;
control means for switching said operating
position between two-dimensional first and second
coordinate data and one dimensional coordinate data,
responsive to first and second actuating states of
said switch, respectively; and
picture processing means for moving a
predetermined position of video signals within a
picture based on the first and second coordinate
data when said switch is in the first state and for
altering a range of positions of the video signals
within the picture based on the one-dimensional
coordinate data when the switch is in the second
state.
The following references are relied on by the examiner:
Corballis et al. (Corballis) 5,512,892 Apr. 30, 1996
(filing date Feb. 25, 1994)
Engle et al. (Engle) 5,541,622 Jul. 30, 1996
(filing date Aug. 09, 1993)
SUPERPAINT, Silicon Beach Software, page 15 (1988).
All claims on appeal, claims 1 through 5 and 8 through 17
Appeal No. 1999-0081
Application No. 08/506,645
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stand rejected under 35 U.S.C. § 103. As evidence of obvious-
ness, the examiner relies upon SUPERPAINT alone as to claims 1
through 5 and 8 through 14. The examiner adds Engle as to
claims 15 and 17, and adds to this combination, Corballis as
to claim 16.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for
the respective details thereof.
OPINION
We reverse all rejections of the claims on appeal.
Both independent claims 1 and 5 on appeal reflect that
the switch has first and second actuating states. This
feature is more positively recited in independent claim 1 and
more implicit in the switching action of the control means in
claim 5. In one state the switch enters two-dimensional
information and in a second state the switch enters one-
dimensional information. The focus of the arguments between
appellant and the examiner with respect to claim 1 relates to
the second state of the switch causing the picture processing
Appeal No. 1999-0081
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means of this claim to operate in such a manner as “for
altering a range of positions of the video
signals within the picture based on the one-dimensional
coordinate data.” Correspondingly, in claim 5 the focus is on
the function of the picture processing means which “converts
one-dimensional information from the two-dimensional position
detection means into range data of the input video signals.”
As to both independent claims, the examiner’s position to
the rejection is best expressed at page 6 of the answer:
[The] SUPERPAINT reference clearly discloses
altering the range of position of the video signals
when the shift key is pressed. For example, at page
15, [the] SUPERPAINT reference discloses that the
shift key restricts the pencil’s trails to either
vertical or horizontal motion. The direction of the
constraint is based on the direction of the
pencils’s first motion. This feature clearly reads
on the limitation of “for altering a range of
position of the video signals within the picture
based on the one-dimensional coordinate data when
the switch is in the second state” as required in
[the] claims.
The examiner’s statement as to the shift key restricting
the pencil’s trail to either vertical or horizontal motion is
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5
an accurate reflection of the function of the shift key in
relationship to the operation of the mouse at page 15 of
SUPERPAINT. The examiner’s views with respect to the claims
on appeal is only partially correct in that claim 5 does not
contain corresponding language quoted from claim 1 as argued
by the
examiner. As noted earlier, claim 5 requires that the picture
processing means convert one-dimensional information into
range data of the input video signals. This feature
distinguishes over the teaching argued by the examiner in the
context of the recitation in claim 1 on appeal because it is
clear to us that
there is no conversion of anything by the actuation of shift
key in the context of the joint action with respect to the
mouse as taught at page 15 of SUPERPAINT. The shift key does
not convert or cause to be converted, one type of information
into another type of information as the claim requires, and
the examiner does not directly address this limitation in this
claim. As such, we must reverse the rejection of independent
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6
claim 5 and its respective dependent claims further relying in
part upon Engle and Corballis.
On the other hand, the examiner’s views expressed at page
6 of the answer are consistent with the language expressed in
independent claim 1 as we noted earlier. Appellant’s position
on the other hand as to this rejection of independent claim 1
(as well as independent claim 5) is best expressed at page 8
of the
brief where appellant argues that the function of the
separately claimed switch is such as to enlarge or reduce the
“range” of the region of positions of the video signals.
Appellant relies on the teachings at page 12 of the
specification in support of this view. However, we note that
the claim does not specifically state that the claimed
“altering” enlarges or reduces the range of a region.
As to this rejection, appellant’s positions are more
developed at pages 2 through 4 of the reply brief where the
appellant again refers to page 12 of the specification as a
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7
basis for the view that the use of the word “range” is that
the respective key actuation of the claimed switch enlarges or
reduces the range of a region. Appellant’s position at pages
3 and 4 of the reply brief is such that when viewed in light
of the specification’s disclosure, the word “range” is
essentially defined in the specification to mean an
enlargement or reduction of the size or range of a region of
the video signal.
Our study of the specification as filed as a whole is
consistent with this view. Beginning with the discussion of
the
prior art at page 1 of the specification as filed, it is noted
at the bottom of that page that it was known in the art to
utilize an operating lever to enter coordinate or X, Y
position information “and to set the input picture size or
range using an operating button, such as a so-called volume
knob”. The setting action “altered” the size or range of the
input picture. In this light, the word “range” appears to be
Appeal No. 1999-0081
Application No. 08/506,645
8
known in the art to be “settable” or convey the concept of a
change in size or range by use of a operating button which
does not necessarily have two
claimed states as recited in the claims on appeal.
Appellant’s position in the brief and reply brief in substance
argues that the word “range” in the art and in the
specification as filed means enlargement or reduction in size
of the range of positions of video signals. The remaining
part of the specification verifies the positions taken by
appellant in the brief and reply brief with respect to the
discussion at the middle of page 12 of the specification.
Note also the more detailed discussion at the bottom of page
14 through the top of page 16 and the discussion in the
paragraph bridging pages 17 and 18 of the specification as
filed.
Inasmuch as the term “range” has an apparent meaning of
size in the art as well as that it may be “set” or “altered”
such as to change the size or enlarge or reduce the size of
video signals of an image, we reverse the rejection of claim 1
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9
and by inference, its dependent claim 2 through 4. As
indicated at the bottom of page 4 of the reply brief,
SUPERPAINT clearly does not show an enlargement or reduction
of the range of the displayed region, that is, it clearly does
not show a change of size of the displayed region by the
operation of the shift key because it only is taught to
restrict a pencils’s trail to either a vertical or horizontal
motion. Therefore, we construe the language of claim 1 of
“altering a range of positions of the video signals” as
requiring a change or alteration of size of the video signals
such as to either enlarge or reduce them. In light of these
considerations, we also reverse the rejection of independent
claim 5 for similar reasons since it particularly recites the
feature of “range data” at the end of this claim.
In view of the foregoing, the decision of the examiner
rejecting claims 1 through 5 and 8 through 17 under 35 U.S.C.
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Application No. 08/506,645
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§ 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
llb/vsh
Appeal No. 1999-0081
Application No. 08/506,645
11
BARRY, Administrative Patent Judge, Dissenting:
Although I agree with the majority’s decision to reverse
the rejection of claims 5 and 8-17 under 35 U.S.C. § 103(a), I
disagree with their decision to reverse the examiner’s
rejection of claims 1-4 under § 103(a) as being obvious over
SuperPaint. After considering the record, I am persuaded that
the examiner did not err in rejecting claims 1-4 under
§ 103(a) as being obvious over SuperPaint. Accordingly, I
would affirm the rejection of claims 1-4. My opinion
addresses the grouping and obviousness of these claims.
I. Grouping of Claims 1-4
In general, claims that are not argued separately stand
or fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983).
Appeal No. 1999-0081
Application No. 08/506,645
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Here, the appellant asserts, "[c]laims 1 to 5 ... stand
or fall together ...." (Appeal Br. at 7.) Concomitantly, he
fails to allege that, let alone explain why, claims 2-4 are
separately patentable from claim 1. Therefore, claims 1-4
stand or fall together, with claim 1 representing the group.
With this representation in mind, I address the obviousness of
the claims.
II. Obviousness of the Claims
I begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
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Application No. 08/506,645
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In addition, the references represent the level of ordinary
skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579, 35
USPQ2d 1116, 1121 (Fed. Cir. 1995)(finding that the Board of
Patent
Appeals and Interference did not err in concluding that the
level of ordinary skill was best determined by the references
of record); In re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214
(CCPA 1978) ("[T]he PTO usually must evaluate ... the level of
ordinary skill solely on the cold words of the literature.").
Of course, “‘[e]very patent application and reference relies
to some extent upon knowledge of persons skilled in the art to
complement that [which is] disclosed ....’” In re Bode, 550
F.2d 656, 660, 193 USPQ 12, 16 (CCPA 1977) (quoting In re
Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 424 (CCPA 1973)).
Those persons “must be presumed to know something” about the
art “apart from what the references disclose.” In re Jacoby,
309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962). With these
principles in mind, I agree with the majority that “[t]he
focus of the arguments between appellant and the examiner with
Appeal No. 1999-0081
Application No. 08/506,645
1 Claims are to be given their broadest reasonable interpretation during
examination because an “applicant may then amend his claims, the thought being
to reduce the possibility that, after the patent is granted, the claims may be
interpreted as giving broader coverage than is justified.” In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969).
14
respect to claim 1 relates to the second state of the switch
causing the picture processing means of this claim to operate
in such a manner as ‘for altering a range of positions of the
video signals withing the picture based on the one-dimensional
coordinate data.’”
“In the patentability context, claims are to be given
their broadest reasonable interpretations. Moreover,
limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).1 Here,
representative claim 1 specifies in pertinent part the
following limitations: “picture processing means for moving a
predetermined position of video signals within a picture based
on the first and second coordinate data when said switch is in
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15
the first state and for altering a range of positions of the
video signals within the picture based on the one-dimensional
coordinate data when the switch is in the second state.” As
the majority notes, the “[a]ppellant relies on the teachings
at page 12 of the specification in support of this view.” I
agree with the majority, however, “that the claim does not
specifically state that the claimed ‘altering’ enlarges or
reduces the range of a region.” Giving the claim its broadest
reasonable interpretation, therefore, the limitations merely
require moving video signals within a picture based on two-
dimensional first and second coordinate data when a switch is
in a first state and altering a range of positions of the
video signals within the picture based on one-dimensional
coordinate data when the switch is in a second state.
The prior art would have suggested the limitations.
SuperPaint teaches moving video signals that depict a “Pencil
tool,” p. 15, within a picture as shown in Figure 2.3 of the
reference. SuperPaint further teaches a switch, viz., “[t]he
Shift key,” id., that can be deactivated or activated. When
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the key is deactivated, Figure 2.3 shows that the tool can be
moved in two-dimensions, viz., vertically and horizontally.
When the key is activated, however, the tool can be moved only
in one dimension, viz., either vertically or horizontally.
Specifically, “[t]he Shift key restricts the pencil’s trail to
either vertical or horizontal motion.” Id. The majority
admits as much by stating, “[t]he examiner’s statement as to
the shift key restricting the pencil’s trail to either
vertical or horizontal motion is an accurate reflection ....”
Because SuperPaint teaches a Shift key that can alter a
range of positions of the Pencil tool from two-dimensions to
one dimension, I am persuaded that the teachings of the
reference in combination with the prior art as a whole would
have suggested the claimed limitations of “picture processing
means for moving a predetermined position of video signals
within a picture based on the first and second coordinate data
when said switch is in the first state and for altering a
range of positions of the video signals within the picture
based on the one-dimensional coordinate data when the switch
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is in the second state.” Therefore, I would affirm the
rejection of claims 1-4 as being obvious over SuperPaint.
LANCE LEONARD BARRY )
Administrative Patent Judge )
llb/vsh
Appeal No. 1999-0081
Application No. 08/506,645
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