Ex Parte Nishii

Patent Trial and Appeal Board

Mar 30, 2017

14540758 (P.T.A.B. Mar. 30, 2017)

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.
14/540,758 11/13/2014 Yasuto Nishii 1907-0469PUS1 4025
2292 7590 04/03/2017
BIRCH STEWART KOLASCH & BIRCH, LLP
PO BOX 747
FALLS CHURCH, VA 22040-0747
EXAMINER
ZHENG, JACKY X
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
mailroom @ bskb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUTO NISHII
Appeal 2017-002166
Application 14/540,75 81
Technology Center 2600
Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
AARON W. MOORE, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies SHARP KABUSHIKI KAISHA as the real party
interest. (App. Br. 1.)
Appeal 2017-002166
Application 14/540,758
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—8.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.3
CLAIMED INVENTION
The claims are directed to an operation input system in which a
mobile device and electronic device interact with one another through near-
field communications so that input to the mobile device can be used to affect
the display screen on electronic device. (Abstract.) Claim 1, reproduced
below, is illustrative:
1. An operation input system, comprising an electronic device
having a display portion and a mobile terminal capable of near
distance wireless communication with the electronic device,
wherein
the electronic device is provided with the display portion
which, when proximity of the mobile terminal is detected in a
state of displaying a specific screen on the display portion,
displays the specific screen but not operation input information
associated with the specific screen in advance, and a
transmitting portion which transmits the operation input
information to the mobile terminal,
the mobile terminal is provided with a display portion which
displays an operation input screen based on the operation input
information transmitted from the electronic device, and a
2 Claim 9 has been canceled.
3 Our Decision refers to the Specification (“Spec.”) filed November 13,
2014, the Final Office Action (“Final Act.”) mailed October 6, 2015, the
Appeal Brief (“App. Br.”) mailed Feb. 23, 2016, and the Examiner’s Answer
(“Ans.”) mailed September 19, 2016.
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Application 14/540,758
transmitting portion which transmits operation content
instructed by a user from the operation input screen to the
electronic device, and
the electronic device is provided with an updating portion
which updates the specific screen in accordance with the
operation content transmitted from the mobile terminal.
(Claims App’x.)
REJECTIONS
Claims 1—6 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyazaki (US 2014/0085654 Al, published March 27,
2014) and Odagawa (US 2010/0309515 Al, published December 9, 2010).
(Final Act. 2—10.)
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyazaki, Odagawa, and Luman (US 2004/0150627 Al,
published August 5, 2004). (Final Act. 11—12.)
ANALYSIS
Claims 1 and 8
Appellant’s invention involves interaction between image forming
apparatus la and mobile terminal 2 that is used to edit the screen on the
display of apparatus la. (Spec. 50, 51.) Figures 5A and 5B assist in
explaining operation of Appellant’s invention, and are shown below.
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Application 14/540,758
FIG.5A flG.SB
143
<■
Figures 5Aand 5B of the Specification show wireless interaction
between image forming apparatus la and mobile device 2.
When mobile terminal 2 is brought close to image forming apparatus
la, it requests apparatus la to transmit operation input information. (Fig.
5A; Spec. 146.) Mobile terminal 2 receives and uses this information to
display an operation input screen enabling a user to edit the preview screen
displayed on apparatus la using various options (“double-side setting,”
“header setting,” etc.) (Fig. 5B; Spec. 147.) No corresponding operation
input screen is displayed on apparatus la, to avoid multiple screen
transitions posing user inconvenience. (Spec. 112.)
The Examiner relies on Miyazaki to teach most features of claim 1.
(Ans. 14.) A key disclosure in Miyazaki is shown below with references to
Figures 2A—2C.
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Application 14/540,758
10a
16
-4-
i ,-v-'22a 1 0 12:50
116 100
O!
P.......
FIG. 2A
16
I
™T“
12:50
FIG. 2B
40a
Figures 2 A—2C of Miyazaki show interaction of mobile
terminal 100 and multi-function peripheral (MFP) 10a.
In Miyazaki, when mobile terminal 100 is brought close to sensor 22a,
the MFP 10a transmits information to generate a soft keyboard screen K2 to
the mobile terminal and itself displays a similar soft keyboard screen Kl.
(Fig. 2C.)
However, claim 1 requires that the electronic device “displays the
specific screen but not operation input information associated with the
specific screen” (emphasis added), a limitation that Figure 2C of Miyazaki
contradicts, as Appellant argues. (App. Br. 8—9.)
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Application 14/540,758
Accordingly, the Examiner relies on Odagawa as teaching a display
screen with preview image 305 that has no operation input information (such
as a soft keyboard or buttons). (Ans. 18—19.) Figure 3 of Odagawa is
shown below with annotations.
F1G.3
301 AiSMlssrsiiJ
Figure 3 of Odagawa shows a preview image 305.
A holding of obviousness must be based on “an apparent reason to
combine the known elements in the fashion claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417—18 (2007). One reason the Examiner gives
for combining the references is that Miyazaki and Odagawa are directed to
analogous art. (Final Act. 5—6.) Although it is required that references be
analogous in order to be combined in an obviousness rejection (see In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)), this alone is not sufficient to
establish a reason to combine references in an obviousness analysis.
The Examiner also states Odagawa provides a reason to combine the
references by teaching that “the user can easily preview the preview image
305 of the content 303 displayed on the display screen 301 without having to
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Application 14/540,758
perform complicated operations.” (Final Act. 6 (citing Odagawa 148).)
This statement explains why one would provide preview image 305 on
Odagawa’s display screen 301, but it falls short of explaining why one of
ordinary skill would have replaced Miyazaki’s display of soft keyboard K1
on LCD 16 with Odagawa’s preview image 305. Without a reason to make
this modification, we agree with Appellant that Odagawa and Miyazaki are
in an “inverse relationship” (App. Br. 9), and we do not sustain the rejection
of claim 1.
Claims 2—7 depend from claim 1 and include all of its limitations.
Thus, for the same reasons stated with respect to claim 1, we do not sustain
the rejections of these dependent claims.
Claim 8 is an independent claim reciting a similar limitation as
discussed with respect to claim 1. For the stated reasons, we do not sustain
the rejection of independent claim 8.
DECISION
We reverse the rejections of claims 1—8 under 35 U.S.C. § 103(a).
REVERSED
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