Ex Parte Morishita

Patent Trial and Appeal Board

Jun 24, 2016

11454535 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111454,535 06/16/2006
79326 7590 06/28/2016
Fujitsu Technology and Business of America, Inc,
2318 Mill Road, Suite 1010
Alexandria, VA 22314
Ryohei Morishita
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05-53120 7517
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
fpc-mailroom@us.fujitsu.com
eoamule@system.foundationip.com
tiep.nguyen@us.fujitsu.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOHEI MORISHITA
Appeal2014-007001
Application 11/454,535
Technology Center 2600
Before CARLA M. KRIVAK, DANIEL N. FISHMAN, and
KEVIN C. TROCK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-9 and 14--17. 1 Claims 10-13 are cancelled. App. Br. 18. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We REVERSE.
1 In this Opinion, we refer to the original Specification ("Spec.," filed June
16, 2006); the Non-Final Office Action ("Non-Final Act.," mailed May 20,
2013); Appellant's Appeal Brief ("App. Br.," filed January 21, 2014); the
Examiner's Answer ("Ans.," mailed April 3, 2014); and Appellant's Reply
Brief ("Reply Br.," filed June 3, 2014).
Appeal2014-007001
Application 11/454,535
THE INVENTION
Appellant's invention is directed to "providing the relation between
elements while reflecting the intent of user as much as possible, in a
graphics editing technology." Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A computer readable, non-transitory medium storing a
graphics editing program, which when executed by a computer
causes the computer to perform a method, the method
compnsmg:
arranging elements interactively with an input device on
a display device, the arranging including introducing a new
element to an arrangement;
specifying an element most recently arranged prior to
introducing the new element when a user interactively arranges
the new element;
associating the new element only with the element most
recently arranged prior to introducing the new element to
provide a relation therebetween; and
displaying on the display device a line indicating the
relation between the new element and the element most recently
arranged prior to introducing the new element, the line being
introduced on the display device to connect the element most
recently arranged prior to introducing the new element and the
new element by the line in response to introduction of the new
element on the display device.
THE REJECTIONS
Claims 1, 3-7, 9, and 14--17 are rejected under 35 U.S.C § 102(b) as
anticipated by Saitou (US 2002/0154117 Al; Oct. 24, 2002). Non-Final
Act. 2-6.
2
Appeal2014-007001
Application 11/454,535
Claims 2 and 8 are rejected under 35 U.S.C § 103(a) as being
unpatentable over Saitou and Stradley (US 6,392,651 Bl; May 21, 2002).
Non-Final Act. 6-7.
ANALYSIS2
Claims 1--8
In rejecting claim 1, the Examiner finds Saitou's Figures 5A and 9C
teaches associating a new element "only with the element most recently
arranged." Non-Final Act. 3; see also Ans. 8 (citing Saitou Figs. 5B and
9C). The Examiner also refers to Saitou Figures 2A-2E finding
figure 2A shows the relationship between A-C, figure 2B
introduces a new element, figure 2C displays a relation with the
new element with the most recently arranged element A, and
introduces the lines in figures 2D showing the connection of the
new element and the most recently arranged prior to the new
element.
Ans. 9.
Appellant argues, "In FIG. 5B, the new object is connected to both
Object A and Object B." App. Br. 10; see also Reply Br. 14. We are
persuaded by Appellant's argument that the Examiner has erred. Saitou
Figure 5A does not show a "new" element at all and Figure 5B shows a
"new" element connected (associated) with both elements "A" and "B."
Furthermore, the Examiner has not explained how the data tables of Figures
9 A-9C teach a "new" element associated with only the most recently
2 Appellant raises additional issues in the Briefs regarding the rejections.
We are persuaded of error with regard to the identified issue discussed infra,
which is dispositive as to the rejection of all claims. Therefore, we do not
reach the additional issues.
3
Appeal2014-007001
Application 11/454,535
arranged element. A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference. Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987). While the Examiner's assertions may or
may not offer reasonable suggestions based on the disclosures of Saitou, we
agree with Appellant that Saitou provides no teaching, express or inherent,
of "associating the new element only with the element most recently
arranged" as recited in claim 1.
In like manner, the Examiner fails to explain how Saitou Figures 2A-
2E teach the above disputed limitation. Although Saitou Figure 2C appears
to disclose some point in time of processing at which a "new" element is
associated with only a single element ("A"), the Examiner has not shown
that this element "A" is the most recently arranged element as claimed.
Thus, on the record before us, we do not sustain the anticipation
rejection of independent claim 1 or the rejection of claims 3-7 dependent
therefrom.
Claims 14-17
Independent claim 14 recites a computer-readable medium for
providing similar functionality to the method steps of claim 1. Independent
claim 16 recites another method with similar functionality to that of claim 1.
The Examiner rejects both claims applying similar reasoning to that of claim
1. Non-Final Act. 5---6. Thus, for the same reasons as claim 1, we are
persuaded of Examiner error in the rejection of independent claims 14 and
16 as well as claims 15 and 1 7 dependent therefrom. Thus, we do not
sustain the rejection of claim 14--17.
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Appeal2014-007001
Application 11/454,535
Claim 9
Independent claim 9 is an apparatus claim reciting a display and
various "sections" that perform functions similar to the steps of independent
method claim 1. One such "section" is an element relation editing section
"to associate the new element only with the element specified by the element
specifying section to provide a relation therebetween." The Examiner
rejects claim 9 for the same reasons as claim 1 (Non-Final Act. 5) and, for
the same reasons as claim 1, we are persuaded by Appellant's argument that
the Examiner has erred and we do not sustain the rejection of claim 9.
The Examiner may wish to consider whether the claim 9 recitations of
"section" recite sufficient structure or, instead, should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph (pre-AIA) as means-plus-
function limitations. See Williamson v. Citrix Online, LLC, 792 F.3d 1339
(Fed. Cir. 2015). If appropriately interpreted as mean-plus-function
elements, the Examiner may wish to further consider whether Appellant's
specification adequately discloses a structure for performing the recited
function. For example, the corresponding structure of a means-plus-function
limitation must be more than simply a general-purpose computer or
microprocessor to avoid pure functional claiming. Aristocrat Techs. Aust!.
Pty Ltd. v. Int'l Game Tech., 521F.3d1328, 1333 (Fed. Cir. 2008). The
Specification must disclose the "algorithm in any understandable terms
including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure." Finisar Corp. v. DirectTV
Group Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citations
omitted).
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Appeal2014-007001
Application 11/454,535
Claims 2 and 8
Claims 2 and 8, dependent from claim 1, are rejected as obvious over
Saitou in combination with Stradley. Non-Final Act. 6-7. Stradley is not
relied upon to remedy the above deficiencies of Saitou and, thus, we do not
sustain the obviousness rejection of claims 2 and 8 for the same reasons as
claim 1.
DECISION
For the above reasons, the Examiner's decision rejecting claims 1-9
and 14--1 7 is reversed.
REVERSED
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