Ex Parte Ueda et alDownload PDFPatent Trial and Appeal BoardMay 30, 201814353372 (P.T.A.B. May. 30, 2018) Copy Citation 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. 1 Appeal2017-010065 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 2 Appeal2017-010065 Application 14/353,372 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. 3 Appeal2017-010065 Application 14/353,372 972 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 4 Appeal2017-010065 Application 14/353,372 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: 5 Appeal2017-010065 Application 14/353,372 .................... 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 6 Appeal2017-010065 Application 14/353,372 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 7 Appeal2017-010065 Application 14/353,372 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. 8 Appeal2017-010065 Application 14/353,372 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. 9 Copy with citationCopy as parenthetical citation