Ex Parte Sato

Board of Patent Appeals and Interferences

Feb 19, 2010

10670283 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FUMIHIKO F.S. SATO
____________

Appeal 2009-008185
Application 10/670,283
Technology Center 2100
____________

Decided: February 22, 2010
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
The Patent Examiner rejected claims 17 and 18. The Appellant
appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
We reverse. An oral hearing was scheduled for January 7, 2010, but
Appellant waived the hearing. We will decide the appeal based upon the
arguments made in the Briefs and the Answer.
A. INVENTION
The invention at issue on appeal relates to a user interface system, in
particular, a user interface including multiple independent software parts, in
which, by the cooperation of the multiple independent software parts, an
operation menu is displayed and the contents of the displayed operation
menu are transferred in accordance with the operation of selecting the
operation menu. A processing requirement designated by the operation
input is understood and practiced from the operation menu thus displayed,
and thereby, the system information of said user interface apparatus is
displayed. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 17, which further illustrates the invention, follows.
17 A user interface system, for displaying an operation menu and
transferring contents of said operation menu based on an operation
input received in response to the operation menu being selected,
comprising:

a processor configured to execute a process requirement
corresponding to the operation input;

a group of independent software objects configured to display
the operation menu and to transfer the contents of said operation menu
in response to the operation menu being selected, said group of
independent software objects including:

a menu flow software object configured to control the transfer
of the contents of the operation menu; and
Appeal 2009-008185
Application 10/670,283

3

an operation software object separate from the menu flow
software object and functioning in cooperation with the menu flow
software object to control processing of the operation input by the
processor and to create, change, and delete the input operation.

C. REFERENCE
The Examiner relies on the following reference as evidence:

Bertram 5,818,446 Oct. 6, 1998

D. REJECTION

Claims 17 and 18 stand rejected under 35 U.S.C. §102 as being
anticipated by Bertram.

II. ISSUE
Has Appellant shown error in the Examiner’s showing of
anticipation? Specifically, has the Examiner shown Bertram teaches
displaying an operation menu and transferring contents of this displayed
operation menu based on an operation input received in response to the
operation menu being selected?

III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
Appeal 2009-008185
Application 10/670,283

4
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004).
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).

IV. ANALYSIS
With respect to claim 17, we note that the Examiner's rejection is
based upon the Examiner identifying portions of the teachings of Bertram in
the "Prior Art" portion of column 1 in combination with the teachings of the
description of the preferred embodiments of the invention of Bertram
(Answer 3-4). Additionally, the Examiner identifies the claimed menu flow
software object and the operation software object as being taught in column
7 of Bertram. Here, Bertram teaches the change of one user interface to
another user interface and control code without affecting data being
displayed. The Examiner relies upon element 86 in figure 4B of Bertram to
teach the control processing of the operation input by the processor to create
change and delete the input operation, but we find that element 86 merely
teaches "pass[ing] all content request to the new user interface" (box 86; fig.
4b) if there are two content requests in decision block 85. Clearly, the only
content transferred are "content requests" rather than the claimed "transfer
Appeal 2009-008185
Application 10/670,283

5
the contents of said operation menu in response to the operation menu being
selected.” For the claimed transfer of contents of the operation menu, the
Examiner relies upon the prior art teachings from column 1 and the totality
of the abstract. The Examiner, at pages 4 and 7 of the Answer, relies upon
the teachings of Bertram concerning a menu bar in the prior art, which may
have its contents changed or removed or arranged differently for
customization which is taught in column 1 in the prior art section of Bertram
and the teachings of column 7 of Bertram concerning the automatic
switching between user interfaces.
Appellant argues that Bertram does not teach a transferring the
contents of the operation menu (Reply Br. 1-3). Appellant argues that the
teachings of Bertram cannot be seen to reasonably read on the language of
claims 17 and 18 that "require displaying an operation menu and transferring
contents of this displayed operation menu (not other data contents) based on
an operation input received in response to the operation menu being selected
(not receipt of an interface change instruction itself)." (Reply Br. 3; see also
App. Br. 7.)
We agree with Appellant's contention that Bertram does not teach
displaying an operation menu and transferring contents of this displayed
operation menu based on an operation input received in response to the
operation menu being selected as recited in the language of independent
claim 17 and independent claim 18. We find that Bertram does not transfer
the contents of the operation menu based on an operation input received in
response to the operation menu being selected. Since we agree with at least
one of Appellant's contentions, we need not address the remainder of
Appellant's other contentions. Additionally, we note that the Examiner's
Appeal 2009-008185
Application 10/670,283

6
rejection is based upon a combination of the prior art teachings and the
disclosed invention of Bertram, and the Examiner has not shown that
Bertram necessarily teaches a customizable menu bar or tool bar in the
disclosed system for an anticipation rejection.
Therefore, we find Appellant has identified that the Examiner has
erred in his presentation of an initial showing of anticipation of independent
claims 17, and we cannot sustain the rejection thereof.
With respect to claim 18, the claim contains the same limitations with
an additional limitation of an image forming device in the preamble. The
Examiner sets forth the same line of reasoning for this claim, and we find the
same deficiencies as discussed above.

V. CONCLUSION
For the aforementioned reasons, the Examiner has not shown that
Bertram teaches displaying an operation menu and transferring contents of
this displayed operation menu based on an operation input received in
response to the operation menu being selected.

VI. ORDER
We reverse the anticipation rejection of claims 17 and 18.

REVERSED

Appeal 2009-008185
Application 10/670,283

7

erc

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314