Ex Parte Ueda et al

Patent Trial and Appeal Board

May 30, 2018

14353372 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/353,372 04/22/2014
23400 7590 06/01/2018
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
FIRST NAMED INVENTOR
Yoshihiro Ueda
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.
01_2462_TN 3067
EXAMINER
DICKE, CHAD M
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @poszlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIHIRO UEDA, SHI GEO KA TOH, and
HITOSHI SUGIYAMA
Appeal2017-010065
Application 14/353,372
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 15-23. We have jurisdiction under
35 U.S.C. § 6(b). Claims 11 and 12 were cancelled, and claims 1-10, 13,
and 14 are indicated as containing allowable subject matter.
We affirm-in-part.
1 Appellants identify the real party in interest as DENSO CORPORATION.
App. Br. 4. DENSO CORPORATION is the Applicant for the instant patent
application. See Bib. Data Sheet.
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Application 14/353,372
CLAIMED SUBJECT MATTER
Appellants' invention assigns display images to multiple areas of a
vehicle-mounted display. See generally Abstract. According to the
Specification, the display images are displayed in a manner that facilitates
user understanding of the relationship between the display images.
Spec. ,r 11. Claim 15 is representative and reproduced below:
15. A display control apparatus performing a predetermined
comparison operation on different display images to
automatically assign the display images to a plurality of areas
configured as display regions on a screen of a display mounted
to a vehicle, the display control apparatus comprising:
an area relationship information storage storing area
relationship information for each of the areas, wherein the area
relationship information for each area has information on another
area that is closely related to the each area;
a display image relationship information storage storing
image relationship information for each of the display images,
wherein the image relationship information for each display
image has information on another display image that is closely
related to the each display image;
an image determination portion determining, for each of
the display images, which of a first image group and a second
image group the display image belongs to wherein the second
image group is different from the first image group; and
a display image assignment portion
assigning a plurality of display images determined
as belonging to the first image group to, of the areas,
respective different areas that are not superimposing on
each other, by performing the predetermined comparison
operation,
and then superimposing a display image determined
as belonging to the second image group on a specific one
display image which is one of the plurality of display
images determined as belonging to the first image group
and which is closely related to the display image
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determined as belonging to the second image group, based
on one area to which the specific one display image
belonging to the first image group is assigned, and based
on the information stored in the area relationship
information storage.
REJECTIONS 2
Claims 15-18 and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yamasaki (US 2011/0035145 Al; Feb. 10, 2011), Toffolo
(US 5,757,268; May 26, 1998), and Kasamatsu (US 2008/0211654 Al;
Sept. 4, 2008). Final Act. 2-8.
Claims 19 and 20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yamasaki, Toffolo, Kasamatsu, and De Lauzun
(US 2005/0284984 Al; Dec. 29, 2005). Final Act. 8-11.
Claims 22 and 23 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Yamasaki, Toffolo, Kasamatsu, and Hagiwara
(US 2010/0117810 Al; May 13, 2010). Final Act. 11-14.
ANALYSIS
Claim 22
The rejection of claim 22 as being unpatentable over Yamasaki,
Toffolo, Kasamatsu, and Hagiwara is summarily reversed. Claim 22
ultimately depends from independent claim 10 (via claim 14), which the
Examiner indicated contains allowable subject matter. See Final Act. 1-2.
Thus, no proper basis exists for rejecting claim 22. See, e.g., In re Fritch,
2 All prior art rejections are under the provisions of 35 U.S.C. in effect
before the effective date of the Leahy-Smith America Invents Act of 2011
("pre-AIA"). See, e.g., Final Act 2.
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972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious
if the independent claims from which they depend are nonobvious. ")
Accordingly, we reverse the obviousness rejection of claim 22 for reasons
we raise sua sponte.
Claims 15-21 and 23
The Examiner finds Yamasaki discloses many recited elements of
claim 15 including, among other things, assigning display images ( cursor 34
and location setting mark 36) belonging to a first image group to respective
different areas of a display screen not superimposing on each other. Final
Act. 4. The Examiner also finds Yamasaki assigns a display image (pop-up
menu 38) belonging to a second image group to another area of the display
screen based on the location of a display image (location setting mark)
belonging to the first image group. Although the Examiner acknowledges
that Yamasaki does not determine which image group each display image
belongs to, the Examiner cites Toffolo for teaching this feature. Id. at 3--4.
The Examiner also acknowledges that Yamasaki' s display image (pop-up
menu) belonging to the second image group is not superimposed on either
display image ( cursor or location setting mark) belonging to the first image
group. Id. at 5. The Examiner, however, cites Kasamatsu for teaching this
feature in concluding that the claim would have been obvious. Id. at 5---6.
Appellants first contend that the Examiner's reliance on Yamasaki is
misplaced because, among other things, Yamasaki' s cursor and location
setting mark are not assigned to "areas" recited in claim 1. According to
Appellants, any spot on a display screen is not consistent with the "areas" as
defined in the Specification, or in the claim that recites "areas configured as
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display regions on a screen of a display." App. Br. 13-14 (citing Spec. 2:5-
24; Figs. 3A, 4A, 5A, 13-16).
We are not persuaded that the Examiner erred. Appellants'
Specification recites determining "which display image is displayed on
which region (also referred to hereinafter as area) of the display
apparatuses." Spec. 2:5-6 (emphasis added). Our emphasis underscores the
fact that the recited section of the Specification does not define the term
"area," but defines the term "region" as being "referred to hereinafter as
area." See also THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 1520 (n. def. 1) (3rd ed. 1992) ("[a] large, usually continuous
segment of a surface or space; area"). Thus, we interpret the term "area"
with its plain meaning, namely "a particular extent of space or surface or one
serving a special function: as a: a part of the surface of the body."
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 61 (n. def. 5a) (10th ed.
1993).
With this construction, we see no error in the Examiner's broad, but
reasonable, construction of Yamasaki' s cursor and location setting mark as
being assigned to areas. Yamasaki's Figure 3C is reproduced below:
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.................... 1 ..... _ .......
31c
Yamasaki's Figure 3C illustrates a display image on a display screen.
Yamasaki' s display image 3 C includes location setting mark 3 6
displayed in the vicinity of cursor 34. Yamasaki ,r 58. Accordingly,
Yamasaki teaches location setting mark 36 and cursor 34, each of which is
an image assigned to a continuous segment of a display screen's surface
(i.e., "areas" configured as display regions of the display screen's surface).
To the extent Appellants contend Yamasaki's cursor 34 and location setting
mark 3 6 are not assigned to respective different areas which do not
superimpose on each other because they are assigned to the same image
quadrant region defined by Yamasaki, App. Br. 19--20 ( citing Yamasaki
,r 59; Fig. 4), such argument is not commensurate with the scope of the
claim, which does not preclude "areas" being from the same image quadrant
reg10n.
Furthermore, we find unavailing Appellants' contentions that
( 1) Yamasaki teaches away from superimposing, and (2) the Examiner's
proposed modification destroys the purposes and the operation principles of
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both Kasamatsu and Yamazaki. App. Br. 20-23; Reply Br. 3-7. According
to Appellants, Yamasaki' s pop-up menu is displayed apart from the cursor
and the location setting mark, and if Yamasaki' s pop-up menu is modified
according to Kasamatsu' s teaching of superimposing, then Yamasaki' s pop-
up menu would need to be downsized to fit entirely within either the cursor
or the location setting mark. App. Br. 21-22; Reply Br. 6.
A reference teaches away when an ordinarily skilled artisan, upon
reading the reference, would be (1) discouraged from following the path set
out in the reference, or (2) led in a direction divergent from the path taken by
Appellants. In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). That is not the
case here. The Examiner does not propose to combine Kasamatsu's entire
structure with Yamasaki as Appellants argue. Rather, the Examiner cites
Kasamatsu merely for teaching superimposing such that one image covers a
portion of another image. Ans. 3. It is well settled that "a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness
whether a secondary reference's features can be bodily incorporated into the
structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. Id.
We see no error in the Examiner's position in this regard. Not only
does Yamasaki not discourage partially superimposing one image over a
portion of another image, Yamasaki arguably encourages such
superimposing by disclosing that the menu image emerges from the location
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setting mark. See Yamasaki ,r,r 58, 61. For similar reasons, we are
unpersuaded Yamasaki would have led skilled artisans in a direction
divergent from the path taken by Appellants. Moreover, the Examiner's
proposed combination does not obscure either Kasamatsu's location mark or
cursor and, accordingly, does not destroy Kasamatsu's principle of
operation. Therefore, we disagree with Appellants that Yamasaki teaches
away from the Examiner's proposed combination, or that the Examiner's
proposed modification destroys the purposes and the operation principles of
both Kasamatsu and Yamazaki.
The Examiner finds it would have been obvious to a person of
ordinary skill in the art, at the time the invention was made, to superimpose
a portion of the menu over the middle of the cursor to "[provide] a quicker
indication to the user at what point on the map the menu is referring to (has a
relationship with) .... [A] user can look at the menu and quickly see where,
on the map, the menu is referring to." Ans. 5 (citing Yamazaki Fig. 3C).
Appellants do not directly address the Examiner's proposed modification of
Kasamatsu in light of Yamazaki' s teachings, instead arguing that such a
combination would not result from combining the respective teachings.
Therefore, on this record, the Examiner's unrebutted proposed modification
is supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion. See KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Accordingly, we are not persuaded the
Examiner erred in rejecting claim 15 and claims 16-21 and 23, not argued
separately with particularity.
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Conclusion
The Examiner did not err in rejecting claims 15-21 and 23 under
§ 103(a), but erred in rejecting claim 22.
DECISION3
The Examiner's decision rejecting claims 15-21 and 23 is affirmed.
The Examiner's decision rejecting claim 22 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2016).
See 37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
3 In the event of further prosecution, the Examiner may wish to consider
whether independent claim 15 meets the requirement of 35 U.S.C. § 112,
,r 2. In particular, the Examiner may wish to consider whether claim 15 is a
hybrid claim that encompasses two statutory categories of invention, namely
an apparatus and a method of using the apparatus. See MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2173 .05(p )(II) (9th ed. Rev. 08.2017,
Jan. 2018) ("A single claim which claims both an apparatus and the method
steps of using the apparatus is indefinite under 35 U.S.C. § 112, [,I 2]."); see
also IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005) ( a claim to "both a system and the method for using that system
... does not apprise a person of ordinary skill in the art of its scope, and it is
invalid" under 35 U.S.C. § 112, ,r 2); In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) (claims "directed both to
systems and to actions performed" by users of such systems "fall squarely
within the rationale of IPXL and are indefinite.") Although the Board is
authorized to reject claims under 37 C.F.R. § 4I.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP § 1213.02.
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