Ex Parte Miake et al

Patent Trial and Appeal Board

Jan 15, 2015

11570051 (P.T.A.B. Jan. 15, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AKI MIAKE, YOSHIYUKI MURASHIMA,
TAKESHI YAMAMOTO, TOSHIYA TAKAHASHI,
SHINICHIROU OTA, and MEGUMI ITOH
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Appeal 2012-005851
Application 11/570,051
Technology Center 2600
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Before BRADLEY W. BAUMEISTER, DAVID M. KOHUT, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3–6, and 8–14. Claims 2, 7, and 15 are canceled.
App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 4, 6, 10, 11, 13, and 14 are rejected under 35 U.S.C.
§ 103(a) as obvious over Yamaguchi (JP 08-146870; published
June 7, 1996), Rafii (US 2002/0140633 A1; published Oct. 3, 2002), and
Chui (US 2002/0159632 A1; published Oct. 31, 2002). Ans. 5–10.
Claim 3 is rejected under 35 U.S.C. § 103(a) as obvious over
Yamaguchi, Rafii, Chui, and Kawano (JP 05-297849; published
November 12, 1993). Ans. 10–11.
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Claims 5, 8, 9, and 12 are rejected under 35 U.S.C. § 103(a) as
obvious over Yamaguchi, Rafii, Chui, and Katane (JP 09-081628; published
March 28, 1997). Ans. 11–12.
We reverse and enter a new ground of rejection.

STATEMENT OF THE CASE
Appellants’ invention relates to an information display control device.
Spec. ¶ 1. Claim 1 is illustrative and reproduced below with the disputed
limitation emphasized:
1. An information display control device, comprising:
an information display control arranged to cause display
information read out from an information providing section to be
displayed in a display section;
an image data obtaining device arranged to convert at
least the display information displayed in the display section into
image data so as to cause an image data storage section to store
the image data;
a changing display control device arranged to read out the
image data from the image data storage section according to a
scale-down or a scale-up changing instruction given by a user
and to scale down or scale up and display the image data in the
display section in response to the scale-down or the scale-up
changing instruction given by the user so that the user can
continuously confirm the image data being scaled down or
scaled up in real time;
a determined size information generation device arranged
to read out the display information from the information
providing section so as to convert the display information into
determined size information by adjusting a scale-down or scale-
up factor of the display image to a display scale factor specified
in the scale-down or scale-up determination instruction given by
the user;
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a determined display control device arranged to cause the
display section to display the determined size information; and
when the image data is scaled down and displayed in the
display section in response to the scale-down changing
instruction and an extra area other than an area where the
image data is currently displayed appears in the display section,
the changing display control device causes the display section to
display an image which serves as a background of the extra area
so that a previously displayed image is no longer displayed in
the extra area.

CONTENTIONS AND ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 4, 6, 10, 11, 13, AND 14 OVER
YAMAGUCHI, RAFII, AND CHUI
The Examiner finds Yamaguchi, Rafii, and Chui teach all limitations
of claim 1. Ans. 5–7. The Examiner relies on Chui’s (Fig. 3) image
decoding method for teaching the disputed limitation. Ans. 7 (citing Chui,
¶ 60).
Appellants present, inter alia, the following arguments:
i. “[N]owhere in Yamaguchi et al. is there any teaching or
suggestion of a display that is not completely filled with image data. For
example, each of Figs. 2, 4, and 6 of Yamaguchi et al. each clearly show a
display that is completely filed with image data.” App. Br. 16–17.
ii.
[T]he null data or background-image data of Chui et al. will
only be displayed on the display of Yamaguchi et al. when, for
example, the image of Yamaguchi et al. is scaled down so far
that there is no longer any image data (related to cities, roads,
etc.) in an underlying image data of Yamaguchi et al. from
which the image data is generated.
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App. Br. 17–18; see also App. Br. 18 (modified version of Fig. 4 of
Yamaguchi et al.).
In response, the Examiner explains:
[N]owhere in Yamaguchi does it state that the display has to be
completely filled 100% of the time. Since there is no disclosure
in Yamaguchi stating that the display must be filled with image
data at all times, then it is not unreasonable to modify
Yamaguchi with Chui, so as to teach the situation when the
display is not 100% filled.
Ans. 14.
Appellants’ arguments persuade us that the Examiner erred.
Although, according to Appellants, Yamaguchi may scale down an image so
far that the entire display no longer has image data, effectively creating an
extra area in the display in which Chui’s background image data may be
employed, the Examiner has not established that there is any disclosure in
Yamaguchi that a scale-down operation can actually be undertaken to this
extent. App. Br. 16-17. Nor has the Examiner provided any reason that
Yamaguchi would have been modified to zoom out to this extent. Ans. 5-7.
The Examiner cites no legal authority for the proposition that a
reference’s failure to say some non-disclosed action cannot be done, alone,
can constitute sufficient evidence that one of ordinary skill in the art at the
time of the invention would have been motivated to affirmatively undertake
this non-disclosed action. In short, the Examiner’s conclusion that it is
reasonable to modify Yamaguchi with Chui (see Ans. 14) is unsupported by
reasonable evidence and, therefore, is insufficient to establish that one of
ordinary skill in the art at the time of the invention would have had some
motivation or reason to modify Yamaguchi in this manner. Thus, the
Examiner has not established a prima facie showing that the cited prior art
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not only teaches the recited extra area to appear in the display section, but
further teaches a rationale for causing the display of an image that serves as
a background of the extra area.
We, therefore, do not sustain the Examiner’s rejection of claim 1, or
of claims 4, 6, 11, and 14, which depend from claim 1.
We likewise do not sustain the Examiner’s rejection of independent
claims 10 and 13, which also recite the disputed limitation.

THE OBVIOUSNESS REJECTION OF CLAIM 3 OVER YAMAGUCHI, RAFII, CHUI,
AND KAWANO
The Examiner finds Yamaguchi, Rafii, Chui, and Kawano teach all
limitations of claim 3. Ans. 10–11. The Examiner does not find that
Kawano overcomes the deficiencies of Yamaguchi, Rafii, and Chui. See
Ans. 10–11.
We, therefore, do not sustain the Examiner’s rejection of claim 3.

THE OBVIOUSNESS REJECTION OF CLAIMS 5, 8, 9, AND 12 OVER YAMAGUCHI,
RAFII, CHUI, AND KATANE
The Examiner finds Yamaguchi, Rafii, Chui, and Katane teach all
limitations of claims 5, 8, 9, and 12. Ans. 11–12. The Examiner does not
find that Katane overcomes the deficiencies of Yamaguchi, Rafii, and Chui.
See Ans. 11–12.
We, therefore, do not sustain the Examiner’s rejection of claims 5, 8,
9, and 12.

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NEW GROUND OF REJECTION
Pursuant to our authority arising under 37 C.F.R. § 41.50(b), we
newly reject claim 1 under 35 U.S.C. § 103(a) as obvious over Yamaguchi
and Rafii.
Appellants and the Examiner seem to be under the common
misimpression that, in the disputed limitation, the recited image of the extra
area that serves as the background must be some image that is separate and
completely unrelated to the image data of the original image that is being
scaled down (i.e., some image that is distinct from a map). We see nothing
in the claims, though, requiring such a narrow interpretation.
The Specification, when describing a preferred embodiment, merely
explains that
a background image is displayed in an area [that] does not
display the image data, so that visibility of the image data can
be improved. That is, when the previous map information
remains in the display screen, this is not preferable in terms of
visibility. However, when the background image is displayed,
it is possible to erase the previous map information, thereby
improving the visibility.
Spec. ¶ 51.
Nothing in the Specification precludes the newly displayed
background image from being composed of map data depicting a
geographical region that immediately surrounds the smaller geographical
area that was depicted in the originally displayed image prior to the scale-
down operation. We find it reasonable that displaying such peripheral
regions as a new border or “background image” after the original display
image has undergone a scale-down operation may be deemed to improve
visibility of the original image in that providing such a background provides
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a geographical context for the original image. Put another way, a
background image may be a portion of a map that is newly visible due to the
occurrence of a scale-down operation that causes an original image to take
up only a smaller portion of the display. Thus, we find that a broad, but
reasonable, interpretation of the recited background image includes anything
not part of an original image that subsequently underwent a scale-down
operation.
Turning to the art of record, Rafii (¶¶ 68–69, Figs. 5A and 5B) teaches
scale-up and scale-down operations for maps being performed in a manner
such that the entire display remains filled with map data. For example, the
map of FIG. 5A can be produced by performing a scale-down operation on
the map of FIG. 5B. Upon performance of such a scale-down operation, the
recited “extra area” appears in the display section, and this extra area
contains an “image [that] serves as a background of the extra area.” That is,
Rafii displays an original image (Fig. 5B), and the claimed background
image reads on any region in the image shown in Fig. 5A that is newly
visible due to a scale-down operation that causes the original image of FIG.
5B to take up only a center portion of FIG 5A—the portions of the FIG. 5A
map depicting regions surrounding Route 101 (e.g. Monta Vista, Campbell,
and Alum Rock).
The combination of just Yamaguchi and Rafii, then, renders
independent claim 1 obvious. Rafii teaches the limitation of claim 1 relating
to the display’s background. Appellants do not dispute that the combination
of Yamaguchi and Rafii discloses every other limitation of independent
claim 1. See App. Br. 13-19. Nor do Appellants dispute that reasonable
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motivation existed to combine the teachings of these references. See App.
Br. 13-19.

DECISION
The Examiner’s decision rejecting claims 1, 3–6, and 8–14 is
reversed. We enter new grounds of rejection of claims 1, 3–6, and 8–14.
Pursuant to 37 C.F.R. § 41.50(b), we newly reject independent claim 1
under 35 U.S.C. § 103(a) as obvious over Yamaguchi in view of Rafii.
Because the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination, we have not reviewed the remaining
claims to the extent necessary to determine whether new grounds of
rejection would be appropriate for any of these additional claims. We leave
it to the Examiner to determine the appropriateness of any further rejections
based upon the prior art and rationales set forth above.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). This regulation states that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Furthermore, 37 C.F.R. § 41.50 (b) also provides that Appellants,
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
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examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).

REVERSED
37 CFR § 41.50(b)

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