Ex Parte Ogushi et al

Patent Trial and Appeal Board

Dec 14, 2016

13074287 (P.T.A.B. Dec. 14, 2016)

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.
13/074,287 03/29/2011 Hiroshi Ogushi 10083611US01 9492
34904 7590 12/16/2016
CANON U.S.A. INC. INTELLECTUAL PROPERTY DIVISION
15975 ALTON PARKWAY
IRVINE, CA 92618-3731
EXAMINER
JACKSON, DARYL L
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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):
mklein@cusa.canon.com
skalmino v @cusa.canon.com
IPDocketing @cusa.canon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI OGUSHI, YASUSHIISHIDA,
NOBORU SHIMOYAMA, YASUHITO TSUBAKIMOTO,
YOSHINORIINUKAI, JUNICHIRO SHIMAMURA,
and NOBUHIRO TAKEUCHI
Appeal 2016-003110
Application 13/074,287
Technology Center 2600
Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—4, 6—12, and 16—19, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 13/074,287
STATEMENT OF THE CASE
Introduction
The prevent invention relates to, among other things, reducing user
annoyances and mistakes associated with switches on a multi-functional
apparatus. See generally Spec. 1—2. Claim 1 is exemplary:
1. An apparatus having a reading unit to read an image of a
document and a printing unit to print the read image to perform
copying, the apparatus comprising:
an operation device provided on the apparatus and
including a plurality of capacitance touch switches each having
a backlight, wherein the capacitance touch switches include a
return key for returning to a previous state, numeric setting keys
for setting number of copies, and a stop key for stopping
operation of reading;
a display unit provided in a vicinity of the plurality of
capacitance touch switches; and
a control unit configured to control the apparatus such that,
(a) for selecting either one of a scan mode or a copy
mode, backlights corresponding to capacitance touch switches
of the return key, the numeric setting keys and the stop key are
off to which key inputs are disabled,
(b) in a case where the copy mode has been selected, the
backlights corresponding to the capacitance touch switches of
the return key and the numeric setting keys are on to which key
inputs are enabled for setting the number of copies, and
(c) during a reading operation by the reading unit under
the copy mode, a backlight corresponding to the capacitance
touch switch of the stop key is on to which key input is enabled
to stop the reading operation and the key inputs of the return
key and the numeric setting keys are disabled,
wherein the display unit displays icons of the scan mode
and the copy mode for selecting one of them, and in a case
where the copy mode has been selected, the display unit
displays numerical information of the number of copies, and
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during the reading operation, the display unit displays a
message showing that an operation is in progress.
References and Rejections
Claim 16 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.1
Claims 1, 2, 4, 6, 9, 10, 11, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stohrer (US 2004/0111164 Al, June 10,
2004), Isoda (JP 2009-243771 A, Oct. 22, 2009), Kodimer (US
2008/0168380 Al, July 10, 2008), and Kotaka (US 2002/0030827 Al,
Mar. 14, 2002).
Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stohrer, Isoda, Kodimer, Kotaka, and Sugihara (JP 2006-106040 A,
Apr. 20, 2006).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stohrer, Isoda, Kodimer, Kotaka, Oshima (JP
H06266176 A, Sept. 22, 1994), and Tsujimoto (US 2009/0168121 Al,
July 2, 2009).
Claims 12, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stohrer, Isoda, Kodimer, Kotaka, Oshima, and Katayama
(US 2005/0265634 Al, Dec. 1, 2005).
ANALYSIS
35 U.S.C. § 112, First paragraph
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
1 The Examiner does not reject claim 12 under 35 U.S.C. § 112, first
paragraph. See Ans. 2.
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invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (alteration in original) (internal quotations and citations omitted).
The Examiner determines the limitation “the color copy key and the
monochromatic copy key becomes invisible” of claim 16 (emphasis added)
does not comply with the written description requirement. See Non-Final
Act. 3-A; Ans. 3^4.
Because the Specification discloses keys that are “visually
unrecognizable” (Spec. ^fl[ 79—80), we agree with Appellants that the
Specification reasonably conveys to skilled artisans that Appellants
possessed the claimed invention with respect to the claimed “invisible” keys.
See App. Br. 5; Reply Br. 3. The Examiner’s response focuses on the word
“unrecognizable,” and ignores the Specification’s disclosure of “visually
unrecognizable” keys. See Ans. 4.
Therefore, we reverse the Examiner’s rejection of claim 16 under
35 U.S.C. § 112, first paragraph.
Obviousness
On this record, the Examiner did not err in rejecting claim 1.
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We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.2
I
Appellants contend Stohrer does not teach
“during a reading operation by the reading unit under the copy
mode, a backlight corresponding to the capacitance touch
switch of the stop key is on to which key input is enabled to
stop the reading operation and the key inputs of the return key
and the numeric setting keys are disabled,” as [recited] in Claim
1 . . . .
App. Br. 6—7 (emphases added).
In particular, Appellants argue because “the clear/stop key of Stohrer
serves as both the return key and the stop key, it is impossible in Stohrer,
unlike Claim 1, to enable the stop key and disable the return key at the same
time.” App. Br. 6.
In response to Appellants’ arguments, the Examiner provides further
findings showing Stohrer teaches the disputed claim limitation. See Ans. 9—
12. Appellants fail to persuasively respond to such findings and, therefore,
fail to show error in the Examiner’s findings. See In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
court [or this Board] to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
2 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. §41.41 (b)(2).
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Further, we have examined the Examiner’s findings, and such
findings are reasonable. Stohrer explains:
If the “CLEAR/STOP” button is activated, then at step 114,
system processing is paused or stopped. The system control
algorithm implements the appropriate commands to place the
system is a safe paused condition, and the interface algorithm
waits until a next command is received. All buttons that relate
to functions that can then be selected are re-illuminated as well
as the “CLEAR/STOP” button. If the next command is a re­
selection of the “CLEAR/STOP” button at step 115, then the
algorithm proceeds to step 116, where the system controller
directs tasks necessary to end the job and return the system to
its initial condition.
Stohrer 131 (emphases added).
Therefore, after the “CLEAR/STOP” button is activated (but before it
is re-selected), Stohrer’s “system processing is paused or stopped” (Stohrer
131), which teaches "the stop key is on to which key input is enabled. . .
and the key inputs of the return key . . . disabled” (emphases added).
In the Reply Brief and for the first time, Appellants belatedly argue:
[I]t is inappropriate to compare a single key (“a clear/stop key”)
of Stohrer with two different keys (“a return key” and “a stop
key”) of the claimed invention. As shown above in Feature 1,
the claimed invention clearly includes three kinds of keys for
different uses (“a return key”, “numeric setting keys” and “a
stop key”). In Claim 1, for example, the three kinds of keys are
not intended to be a single key. The specification of the subject
application does not suggest that “a return key 10” and “a stop
key 101” can be served by a single key. . . .
Claim 2 of the present application specifies that a
backlight of the return key is OFF and a backlight of the stop
key is ON during reading operation. Thus, Claim 2 cannot be
interpreted as the Examiner has.
Reply Br. 5—6.
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Appellants have waived such arguments because they are untimely,
and Appellants have not demonstrated any “good cause” for the belated
presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
II
Appellants assert:
Isoda discloses an electromagnetic cooker which has
capacitance touch switches each having a backlight. However,
Isoda only discloses an operation device with capacitance touch
switches which is in a completely different field from the
claimed invention and does not disclose any of the
aforementioned Features 1-3 of the present invention.
. . . [T]he electromagnetic cooker of Isoda is in a
completely different field from an image reading apparatus of
the claimed invention, so Isoda is not analogous art of the
claimed invention.
. . . [I]t would be illogical to one of ordinary skill in the
art to apply the electromagnetic cooker of Isoda to an image
reading apparatus.
App. Br. 7; see also Reply Br. 5.
Appellants have not persuaded us of error.
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed [‘Field Test’] and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved [‘Problem Test’].”
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citations omitted)
(emphases added). “Whether a reference in the prior art is ‘analogous’ is a
fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations
omitted).
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The Field Test
In response to Appellants’ arguments, the Examiner provides further
findings showing both this invention and Isoda belong to the same field of
endeavor. See Ans. 12—13. Appellants fail to persuasively respond to such
findings and, therefore, fail to show error in the Examiner’s findings. See
Baxter Travenol Labs., 952 F.2d at 391. In particular, Appellants do not
contend the Examiner’s findings lack the requisite analysis under the case
law. Appellants’ assertion that “the Examiner opinion is irrational, because
based on this opinion of generalization to such an extent, almost all
electronic devices would be classified into the same field” (Reply Br. 5, see
also Reply Br. 6) is unpersuasive, because it lacks persuasive analysis and
evidence for showing Examiner error.
Further, Appellants’ assertion about Isoda (quoted above) is
unpersuasive, as it lacks the requisite analysis under the case law. See In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (To determine this invention’s
field of endeavor, we consider the “explanations of the invention’s subject
matter in the patent application, including the embodiments, function, and
structure of the claimed invention.”). In any event, Appellants’ argument
that “it would be illogical to one of ordinary skill in the art to apply the
electromagnetic cooker of Isoda to an image reading apparatus” (App. Br. 7)
is not directed toward the Examiner’s proposed combination. Further,
Appellants’ assertion that Isoda “does not disclose any of the
aforementioned Features 1—3 of the present invention” (App. Br. 7) is
unpersuasive because it lacks the requisite analysis.
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The Problem Test
Alternatively, the Examiner finds Isoda is reasonably pertinent to the
particular problem with which the inventor is involved. See Ans. 13—14.
Specifically, the Examiner cites paragraph 3 of the Specification, which
discusses “the following problems” of prior art and explains, among other
things:
[T]he operator may easily but unintentionally touch a switch of
an operation unit when the operator presses the book by using
the pressing plate. . . .
. . . Because the operation unit includes a plurality of
keys arranged thereon, if an operator who is not familiar with
the operation via the operation panel may not quickly know and
may be annoyed at which key to press.
Spec. 13; see Ans. 13.
The Examiner then cites Isoda, which similarly explains prior art
problems: increasing user mistakes and difficulties associated with a
plurality of switches on a multi-functional apparatus. See Ans. 13 (citing
Isoda 17).
Therefore, the Examiner determines Isoda is reasonably pertinent to
the particular problem with which the inventor is involved, because both this
invention and Isoda deal with reducing user annoyances and mistakes
associated with a plurality of switches on a multi-functional apparatus. See
Ans. 13.
Appellants fail to persuasively respond to such findings and,
therefore, fail to show error in the Examiner’s findings. See Baxter Travenol
Labs., 952 F.2d at 391. In particular, Appellants simply ignore the
Examiner’s above specific findings.
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Further, Appellants’ assertion about Isoda’s solution to the problem
(Reply Br. 7) does not negate the Examiner’s above findings. In fact,
Isoda’s solution solves the prior art problem of user annoyances and
mistakes. See Isoda 111 (the solution reduces user annoyances and
mistakes by making unnecessary switches invisible).
Finally, consistently with the Examiner’s above findings, Appellants
concede this invention “reduces confusion of a user” (Reply Br. 7). In
addition, Appellants fail to show their assertion that “[t]he claimed invention
does not indicate a solution of changing a full-spec UI and simple UI” leads
to the argued conclusion that “Isoda and the claimed invention are not
‘reasonably pertinent to the problem faced by the inventor’” (Reply Br. 7).3
III
Appellants argue neither Kodimer nor Kotaka alone discloses
“transition among three states, as in the feature 3 of claim 1 ” [“wherein the
display unit displays icons of the scan mode and the copy mode for selecting
one of them, and in a case where the copy mode has been selected, the
display unit displays numerical information of the number of copies, and
during the reading operation, the display unit displays a message showing
that an operation is in progress].” App. Br. 7; see also Reply Br. 7.
Appellants have not persuaded us of error, because Appellants have
not shown the above feature of claim 1 requires “transition among three
3 It is unclear why Appellants argue “Isoda and the claimed invention are
not ‘reasonably pertinent to the problem faced by the inventor’” (Reply Br.
7), as such assertion does not support Appellants’ position.
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states,” as Appellants argue (App. Br. 7).4 Further, Appellants’ assertion
(App. Br. 7, Reply Br. 7) is unpersuasive because it is conclusory, and lacks
persuasive analysis and evidence. In any event, because the Examiner relies
on the combination of Stohrer, Kodimer, and Kotaka to teach the disputed
claim limitation, Appellants cannot establish nonobviousness by attacking
the references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); Non-Final Act. 8—9.
In the Reply Brief and for the first time, Appellants belatedly argue:
The feature 3 of the claimed invention is characterized in
that three types of display contents are changed to each other on
the same display. Even if each one of the three types of display
contents is described in the cited references separately, the cited
references, in any combination thereof, does not teach or
reasonably suggest a concept or intention of changing a type of
display contents. Therefore, the Examiner has failed to show
persuasive motivation to combine the cited references.
Accordingly, the Examiner cited the four references, each of
which only describes a fragmental element of the claimed
invention, based on hindsight and without any motivation.
The display unit of Kodimer does not satisfy Feature 3 of
the claimed invention, wherein (1) the display unit displays
icons of the scan mode and the copy mode for selecting one of
them, and (2) in a case where the copy mode has been selected,
the display unit displays numerical information of the number
4 In the Reply, Appellants concede ‘“transition among three states’ is not
recited in the claims,” but contend “the wording was used ... to describe
change of display contents displayed on the display unit.” Reply Br. 7.
Evan if we consider Appellants’ belated assertion, Appellants still have not
shown error because they merely argue neither Kodimer nor Kotaka alone
teaches the disputed claim limitation—unpersuasive for the reasons
explained above.
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of copies, and (3) during the reading operation, the display unit
displays a message showing that an operation is in progress.
None of the cited references describes change of display
contents. The Examiner has cited the references with respect to
each of the elements (l)-(3), based on hindsight and a review of
the present application.
. . . [T]he Examiner used impermissible hindsight in the
rejection of at least Claim 1 of the instant application.
Reply Br. 5, 7-8, 11.
Appellants have waived such arguments because they are untimely,
and Appellants have not demonstrated any “good cause” for the belated
presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
IV
Appellants argue:
[T]he Examiner has not made an explicit analysis on the
apparent reason to combine the known elements in the fashion
in the claimed invention. . . .
In addition, the Examiner failed to establish a prima facie
case of obviousness and failed to show there is teaching,
suggestion or motivation to combine the references.
App. Br. 10; see also Reply Br. 10—11.
Appellants have not persuaded us of error. Appellants’ assertion
contradicts the record, as the Examiner has provided articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. See Non-Final Act. 7—9; Ans. 7—8; KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007). Appellants do not provide persuasive
analysis or evidence to show the Examiner’s reasoning is incorrect.
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Further, Appellants’ argument about “teaching, suggestion or
motivation” (App. Br. 10) is outdated and contradicts KSR. See KSR, 550
U.S. at 419 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 1, and dependent claims 2-4, 6—12,
and 16—19 for similar reasons. While listing dependent claims 3, 7, 8, 12,
18, and 19 separately, Appellants do not provide separate substantive
contentions with respect to such claims (App. Br. 8—10).5
DECISION
We affirm the Examiner’s decision rejecting claims 1—4, 6—12, and
16-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
5 In the Reply Brief, and for the first time, Appellants belatedly argue
Sugihara does not teach the limitation of dependent claim 3. See Reply Br.
8. Appellants have waived such an argument because it is untimely, and
Appellants have not demonstrated any “good cause” for the belated
presentation. See 37 C.F.R. § 41.41(b)(2) (2012).
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