Ex Parte Uchimura et al

Patent Trial and Appeal Board

Mar 24, 2017

11867490 (P.T.A.B. Mar. 24, 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.
11/867,490 10/04/2007 Kouchi Uchimura 315694US8 9119
22850 7590 03/28/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOUCHIUCHIMURA and SO FUJII
Appeal 2014-008267
Application 11/867,490
Technology Center 2100
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
SCOTT B. HOWARD, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-008267
Application 11/867,490
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 12—32. Claims 1—11 are canceled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a user interface for electronic devices such
as video playback devices. Claim 12, Spec. 23. Claiml2, reproduced below
with a disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
12. A non-transitory computer readable storage medium
encoded with instructions which, when executed by a processor,
cause the processor to execute a method for displaying a user
interface, said method comprising:
displaying a user interface;
displaying a first button within the user interface based on
user interface display data obtained from the computer readable
storage medium,
the first button being associated with second and third
buttons, each of the first, second, and third buttons having
a normal state, a selection state, and an execution state,
the first button being associated with a first command,
the second button being associated with a first command
and a second command, and the third button being
associated with a first command,
setting, after the first button has been set to the execution state
by a user, the second button to the selection state based on
execution of the first command associated with the first button;
setting, in response to the second button being set to the
selection state, the second button to the execution state;
enabling, after the second button has been set to the execution
state, the third button based on execution of the first command
associated with the second button;
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Application 11/867,490
setting, after the second command of the second button has
been executed, the third button to the selection state;
setting, in response to the third button being set to the selection
state, the third button to the execution state; and
terminating, after the third button has been set to the execution
state, the displaying of the user interface based on execution of the
first command of the third button.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tsai US 7,937,662 B2 May 3,2011
REJECTION
The Examiner rejected claims 12—32 under 35 U.S.C. § 102(e) as
being anticipated by Tsai.
APPELLANTS’ CONTENTION1
“None of the [cited] sections of Tsai describe setting, after the first
button has been set to the execution state by a user, the second button to the
selection state based on execution of the first command associated with the
first button.” App. Br. 9.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting independent claims 12,
1 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 102(e).
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Appeal 2014-008267
Application 11/867,490
19, 25, 31, and 32 under 35 U.S.C. § 102(e) as being anticipated by Tsai.
We agree with Appellants’ conclusions as to this rejection of the claims.
The Examiner finds Tsai’s operation of selecting a button within a
multi-page menu by dragging a mouse discloses the setting and enabling
steps of claim 12 including the disputed step of setting, after the first button
has been set to the execution state by a user, the second button to the
selection state based on execution of the first command associated with the
first button. In particular, the Examiner cites to Tsai col. 4,11. 21—40, for
disclosing the claimed normal, selection, and execution states of a button
and the operation of Tsai’s multi-page menu for disclosing setting a second
button to the selection state. Ans. 7. The Examiner explains, according to
Tsai, once a button is in the selected state the user presses a SELECT key to
cause the selected button to become activated, thereby disclosing the first
button being set to the execution state and execution of the first command
associated with the first button. Id. The Examiner further finds dragging
Tsai’s mouse pointer to the right or left results in selection of a neighboring
button thereby disclosing setting the second button to the selection state. Id.
Appellants argue “[t]he cited portions of Tsai describe that the selected state
can be moved from one button to another by user action . . . [t]his is clearly
different from [the disputed claim limitation].” App. Br. 10.
We agree with Appellants. Tsai discloses the first button is selected,
not activated (i.e., set to an execution state):
With the third button 310 selected, dragging the mouse pointer
315 in either the left or right directions will result in selection
of the corresponding neighbor. Therefore, if the mouse pointer
315 is dragged to the right as illustrated in FIG. 3, the resulting
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Appeal 2014-008267
Application 11/867,490
operation may be the presentation of “Page 1” 318, which now
shows the fourth button 312 as being selected.
Tsai, col. 8,11. 36-42.
Although a user may click on a button to place the first (or any) button
in an activated state as described by Tsai at column 4, lines 33—37 (i.e., the
claimed execution state), taking such action in combination with moving to
an adjacent button location is based on speculation by the Examiner, not
disclosure by the reference. Furthermore, we are unable to ascertain any
disclosure by Tsai of setting a second button to a selection state based on
execution of a first command associated with the first button. Thus, we are
unpersuaded Tsai discloses setting the first button to an execution state and,
then, setting a second button to a selection state based on execution of a first
command associated with the first button as required by independent claims.
Therefore, we do not sustain the rejection of independent claims 12, 19, 25,
31, and 32 under 35 U.S.C. § 102(e) as being anticipated by Tsai or the
rejection of dependent claims 13—18, 20-24, and 26—30 which stand with
their respective independent base claims.
DECISION
We reverse the Examiner’s decision to reject claims 12—32 under
35 U.S.C. § 102(e) as being anticipated by Tsai.
REVERSED
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