Ex Parte Misawa

Board of Patent Appeals and Interferences

Jun 28, 2007

10384642 (B.P.A.I. Jun. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKESHI MISAWA
____________

Appeal 2007-1100
Application 10/384,642
Technology Center 2600
____________

Decided: June 28, 2007
____________

Before JOHN C. MARTIN, JEAN R. HOMERE, and JOHN A. JEFFERY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 4-6, and 9. Claim 3 has been canceled and claims 7
and 8 have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b), and we heard the appeal on June 6, 2007. We affirm.
Appeal 2007-1100
Application 10/384,642

STATEMENT OF THE CASE
Appellant invented an apparatus for displaying multiple images on a
relatively small display screen. Specifically, an image display strip is
provided that includes multiple image display areas in a straight horizontal
or vertical line. The sizes of the image display areas progressively diminish
as the distance from one of the display areas increases. As a result, smaller
screens can display a larger number of images.1 Claim 1 is illustrative:

1. An apparatus for controlling display of index images,
comprising:

a first display controller for controlling a display device so as to
display an image display strip on a display screen, said image display
strip including a plurality of mutually adjacent image display areas
formed in a straight line in either a horizontal direction or a vertical
direction, the sizes of the adjacent display areas diminish as a distance
in the horizontal direction or the vertical direction from one of the
image display areas increases;

an image data reading device for reading a plurality of frames
of image data that have been recorded on a recording medium;

a second display controller for controlling the display device in
such a manner that a plurality of frames of images represented by the
plurality of frames of image data recorded, which have been read by
said image data reading device, are displayed in corresponding ones
of the image display areas of the image display strip.

The Examiner relies on the following prior art references to show
unpatentability:
Angiulo US 2002/0135621 A1 Sep. 26, 2002
(filed Mar. 20, 2001)

1 See generally Specification at 2:2 – 3:18.
2
Appeal 2007-1100
Application 10/384,642

Miyao US 6,466,237 B1 Oct. 15, 2002
(filed Jul. 16, 1999)

Claims 1, 2, 4-6, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Miyao in view of Angiulo.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answers for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would have
suggested to one of ordinary skill in the art the invention set forth in the
claims on appeal. Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727,
82 USPQ2d 1395 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
3
Appeal 2007-1100
Application 10/384,642

either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if 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 same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness can
be based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S.
Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). Such a showing requires
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id., 127 S. Ct. at 1741, 82
USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
4
Appeal 2007-1100
Application 10/384,642

the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claim 1, the Examiner's rejection essentially
finds that Miyao teaches every claimed feature except for (1) a second
controller to control the display device to display multiple frames of images
in the display areas, and (2) aligning the images as a straight vertical or
horizontal strip instead of in the ring shape depicted in Mayo’s Figure 1
(Answer 4-5).
Regarding the first difference, the Examiner indicates that Miyao
teaches distributing tasks to separate controllers and concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to distribute the burden of the first display controller to separate
controllers to “further modulate the device” for easy replacement and
substitution. Appellant does not challenge the Examiner on this point.
Regarding the second difference, the Examiner cites Angiulo’s Figure 7 as
displaying thumbnail images in a straight horizontal strip and concludes that
it would have been obvious to one of ordinary skill in the art at the time of
the invention to display the ring strip of Miyao as a straight horizontal strip
to free up more of the display screen (Answer 4-6).
Appellant argues that the prior art does not teach or suggest forming
the image display strip into multiple mutually adjacent image display areas
in a straight line in either a horizontal or vertical direction as claimed.
Appellant contends that Angiulo merely discloses multiple detached
thumbnails – not multiple mutually adjacent image display areas formed in a
straight line as claimed. Appellant emphasizes that skilled artisans would
recognize that “mutual adjacency” requires a common endpoint or border.
5
Appeal 2007-1100
Application 10/384,642

Such an interpretation, according to Appellant, is supported by both the
intrinsic record and extrinsic evidence. Appellant emphasizes that neither
Miyao nor Angiulo disclose any type of common endpoint or border in
either reference’s display of images (Br. 9-12; Reply Br. 9-10; Supp. Reply
Br. 4-6).
The Examiner argues that the broadest reasonable interpretation of
“mutually adjacent” is not limited to display areas that share a common edge
or border as Appellant argues, but rather is fully met by Miyao’s overlapped
display areas that are “mutually adjacent” to each other. The Examiner adds
that Miyao shows a common border for adjacent display portions (e.g.,
overlapping rectangles containing letters “A” and “B” respectively) (Answer
9).
We will sustain the Examiner’s rejection of independent claim 1. At
the outset, we disagree with Appellant that the term “mutually adjacent”
must be interpreted to require a common endpoint or border. Significantly,
Appellant has not specifically defined the term “mutually adjacent” in the
Specification; accordingly, we construe the term with its plain meaning (i.e.,
the ordinary and customary meaning given to the term by those of ordinary
skill in the art). See Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334
F.3d 1294, 1298, 67 USPQ2d 1132, 1136 (Fed. Cir. 2003) (“In the absence
of an express intent to impart a novel meaning to the claim terms, the words
are presumed to take on the ordinary and customary meanings attributed to
them by those of ordinary skill in the art.”); see also Phillips v. AWH Corp.,
415 F.3d 1303, 1312, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc).
To determine the ordinary meaning of commonly understood words, it
is entirely appropriate to cite a dictionary definition. See Agfa Corp. v. Creo
6
Appeal 2007-1100
Application 10/384,642

Products, Inc., 451 F.3d 1366, 1376, 79 USPQ2d 1385, 1392 (Fed. Cir.
2006); see also In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002, 2006
(Fed. Cir. 2002). Although Appellant proposes a dictionary definition of
“adjacent” that requires a common endpoint or border (Br. 12), other
dictionary definitions of the term are not so limiting. In fact, several
dictionaries expressly disavow the need for contact between “adjacent”
objects. One dictionary, for example, defines the term “adjacent” in
pertinent part as “situated near or close to something or each other,
especially without touching.”2 Significantly, this same dictionary
distinguishes the term “adjacent” from “adjoining” – a term that requires the
objects to be next to each other:

Two houses are said to be adjoining when they are
next to each other with a common wall. Adjoining
tables are next to each other, end to end, forming
one surface (they are, to use a more technical
word, contiguous). In other words, adjoining items
join. Adjacent houses, on the other hand, can have
a space between them or even be on opposite sides
of the road, as long as there is nothing significant
between them (such as another house) and they are
close enough for you to pass easily from one to the
other. Adjacent tables are next to each other but
not necessarily touching.3

2 See MSN Encarta Dictionary, at
http://encarta.msn.com/dictionary_/adjacent.html (last visited June 7, 2007)
(emphasis added).
3 Id. (emphasis added); see also Merriam-Webster Online Dictionary, at
http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=adjacent
(last visited June 7, 2007) (distinguishing “adjacent” which “may or may not
imply contact” from “adjoining” which definitely “implies having contact on
7
Appeal 2007-1100
Application 10/384,642

Based on this evidence, we find the plain meaning of the term
“adjacent” is simply not limited to requiring a common endpoint or border
as Appellant argues, but rather can encompass things that are not in contact.
We therefore decline to adopt Appellant’s narrower construction of
“adjacent.” See In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029
(Fed. Cir. 1997) (“Absent an express definition in their specification, the fact
that appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.”).
Even if we adopt Appellant’s definition of “mutually” as “shared in
common,”4 a reasonable construction of “mutually adjacent” image display
areas would include image display areas that are situated near or close to
each other, but not necessarily touching.
With this construction, we turn to the prior art. In our view, Miyao’s
ring-like formation of partially overlapping image display areas in Fig. 1
reasonably constitutes an “image display strip” giving the term its broadest
reasonable interpretation. Even with Appellant’s definition that a strip is
“long” and “narrow,”5 it need not be straight. In short, image display strips
can be annular or ring-shaped -- a fact evidenced by Appellant’s own
all or most of one side”); Webster’s Revised Unabridged Dictionary, 1913
ed., at
http://machaut.uchicago.edu/?resource=Webster%27s&word=adjacent&use
1913=on (last visited June 7, 2007) (“Things are adjacent when they lie
close each other, not necessary in actual contact…Things are adjoining
when they meet at some line or point of junction….) (emphasis added).
4 See Br. 12.
5 See Br. 10.
8
Appeal 2007-1100
Application 10/384,642

disclosure.6 We find that Miyao’s ring-like formation of images reasonably
constitutes a ring-shaped “strip” of images giving the term “strip” its
broadest reasonable interpretation. The fact that the images overlap simply
does not preclude the array constituting a strip. In any event, the horizontal
array of images in Angiulo also reasonably constitutes a strip giving the term
its broadest reasonable interpretation.
Furthermore, Miyao’s partially overlapping images reasonably
constitute “mutually adjacent image display areas” as claimed. In Fig. 1,
each image in the ring has a corresponding “display area.” Although the
display areas partially overlap, they are nonetheless “mutually adjacent”
giving the term its broadest reasonable interpretation.
Additionally, the display image size (i.e., the “display area”)
decreases progressively from the foreground towards the back row (Miyao,
col. 11, ll. 16-34). Accordingly, the sizes of the adjacent display areas
diminish as their distance from the foreground image display areas increases
in the vertical direction (i.e., from the lower portion of the LCD display to
the upper portion of the display).
With this interpretation of Miyao, the fundamental issue before us is a
relatively narrow one: whether it would have been obvious to the skilled
artisan to display the array of image display areas in Miyao in a straight line
in lieu of a ring.
Turning to Angiulo, thumbnail images in a photo gallery are displayed
in an array which is oriented essentially along a straight horizontal line.
Using the forward and back controls 190a, 190b, the user can scroll through

6 See Fig. 16 and Specification 5:1 (“The image display strip may be ring-
shaped.”).
9
Appeal 2007-1100
Application 10/384,642

the images and select a desired thumbnail image. The selected thumbnail
image is enlarged as shown in Fig. 7 (showing both selected thumbnail
image 186a and corresponding enlarged image 186b). If no thumbnail
image is selected, then the first thumbnail image in the photo gallery is
shown both as a thumbnail image and an enlarged image (Angiulo, Fig. 7;
¶ 0065).
Significantly, both Miyao and Angiulo provide the ability to
consecutively scroll through an array of images and automatically enlarge
one image of the array. Although Miyao sequentially scrolls through the
various images by simulating a rotation of the ring that contains the images,
the images are nonetheless viewed consecutively with the first image in the
array (i.e., the image in the front row) enlarged.
Taking into account the inferences and creative steps that one of
ordinary skill in the art would employ,7 we conclude that the skilled artisan
would have been motivated to combine the consecutive viewing and
enlargement capability achieved by the ring-like array of images in Miyao
with a linear array as suggested by Angiulo -- an arrangement that likewise
provides a consecutive image viewing and enlargement capability.
We reach this conclusion emphasizing that the array of images in
Miyao appears to the user as three-dimensional ring-like formation due to
the particular perspective of the images displayed on the LCD screen. That
is, the user’s view of the images is such that the viewer appears to see the
ring of images at an angle with respect to the plane that contains the ring of
images. Thus, the images appear to be viewed from a position located in

7 See KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. at 1741, 82 USPQ2d at 1396.
10
Appeal 2007-1100
Application 10/384,642

front of and above the images (i.e., the user “looks down” on the images
from above).
But viewing this same ring-like array of images from a plane
perpendicular to the images themselves (i.e., the plane perpendicular to the x
and y axis of each image) effectively transforms the viewer’s overhead
perspective of the ring-like array into a frontal perspective of a horizontal
array of images with varying sizes. That is, changing the point of view to a
head-on position directly in front of the ring-like formation would result in
the images appearing in a horizontal strip across the screen, with the images
other than the foregoing image decreasing in size with their horizontal
distance from the midpoint of the strip.
In our view, the skilled artisan would readily have recognized that
providing a frontal perspective resulting in a horizontal strip of images -- a
feature suggested by Angiulo -- in lieu of the overhead perspective used in
Miyao would, among other things, recover areas of the LCD display screen
that would otherwise be occupied by images in the array. These recovered
areas of the display screen could then be made available for other display
purposes – a potentially useful feature given the relative scarcity of available
display areas on small screens. Importantly, such a modification would not
affect the ability to consecutively scroll through the array of images and
enlarge a selected image; rather, the modification would merely affect the
user’s perspective of the images in the array.
For at least these reasons, we will sustain the Examiner’s rejection of
representative claim 1. Since Appellant has not separately argued the
patentability of claims 6 and 9, these claims fall with representative claim 1.
11
Appeal 2007-1100
Application 10/384,642

See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
We will also sustain the Examiner’s rejection of claim 2. As we
indicated previously, the display image size (i.e., the “display area”)
decreases progressively from the foreground towards the back row (Miyao,
col. 11, ll. 16-34). Accordingly, the scaled-down images displayed within
these display areas are likewise reduced in size in a progressive fashion,
whether the ring-like display is viewed from the perspective used in Miyao’s
Figure 1 or frontally, when Miyao is modified in view of Angiulo in the
manner explained above.
Furthermore, “scaling down” an image reduces an image at least in
the horizontal or vertical directions, and often reduces the image in both the
horizontal and vertical directions. For example, scaling down full-size
images to thumbnail representations (e.g., a 200 x 200 pixel image to a 20 x
20 pixel image) reduces the size of the image both horizontally and
vertically. For at least these reasons, the Examiner’s rejection of claim 2 is
therefore sustained.
Regarding claims 4 and 5, Appellant argues that Miyao does not
display only a portion of the image as claimed, let alone a center portion, but
rather displays a scaled-down, miniature version of the entire image (Br. 13;
Reply Br. 12; Supp. Reply Br. 8). The Examiner argues that Miyao displays
a center portion of the scaled-down images in the two images directly behind
the image in the foreground.
We will sustain the Examiner’s rejection of claims 4 and 5. In our
view, the image data that is overlapped in the rows behind the front row
fully meets displaying only a portion of the image data in those display
12
Appeal 2007-1100
Application 10/384,642

areas. Furthermore, the smaller, scaled-down images in the rows behind the
front row inherently have less “image data” (i.e., fewer pixels) than their
larger-size counterparts. Regarding claim 5, we agree with the Examiner
that the center portion of the images in the second row is displayed.
Although other portions of those images displayed along with the center
portion, we note that the claim merely calls for the displayed image data
portion to include a center portion of the image. Such a recitation does not
preclude displaying additional portions so long as the center portion is
included. For the foregoing reasons, we will sustain the Examiner’s
rejection of claims 4 and 5.
DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1, 2, 4-6, and
9 is affirmed.

13
Appeal 2007-1100
Application 10/384,642

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).

AFFIRMED

tdl/gw

BIRCH STEWART KOLASCH & BIRCH
PO BOX 747
FALLS CHURCH, VA 22040-0747
14