Ex Parte Venturino

Board of Patent Appeals and Interferences

Mar 29, 2010

10243030 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL VENTURINO
____________

Appeal 2009-004744
Application 10/243,030
Technology Center 2100
____________

Decided: March 30, 2010
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11, which are all of the claims in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2009-004744
Application 10/243,030

2

Invention
Appellant’s invention relates to a hotkey function in a digital camera’s
user interface. The digital camera displays a menu of user selectable
options. A first user activated means allows a user to sequentially navigate
through the displayed menu of user selectable options. A second user
activated means allows a user to directly choose a predetermined one of the
options without having to navigate sequentially through the options. Title;
Abstract.

Representative Claims
1. A digital camera comprising:
a display;
means for displaying on said display a menu of user selectable
options, said user selectable options comprising at least an initial
option in an initial position in said menu and a plurality of non-initial
options in respective non-initial positions in said menu;
first user activated means for sequentially navigating through
said displayed menu of user selectable options;
second user activated means for directly choosing one of said
non-initial options without having to navigate sequentially through
any of said initial and non-initial options, wherein the one of said non-
initial options directly chosen by activation of the second user
activated means is one of a plurality of user-defined menu shortcuts
stored in the digital camera and selectable by activation of the second
user activated means; and
Appeal 2009-004744
Application 10/243,030

3
third user activated means for controlling storage of respective
ones of the user-defined menu shortcuts in the digital camera, wherein
activation of the third user activated means in conjunction with
navigation to a particular one of said non-initial options using the first
user activated means results in storage of a corresponding user-
defined menu shortcut that is subsequently selectable by activation of
the second user activated means.

4. A digital camera comprising:
a display;
means for displaying on said display a menu of user selectable
options;
first user activated means for sequentially navigating through
said displayed menu of user selectable options; and
second user activated means for directly choosing one of said
options without having to navigate sequentially through said options;
wherein said means for displaying displays at least two menus
of user selectable options, each menu including a vertical array of
different options, the vertical array of different options of only one
menu being displayed at one time, and said means for displaying
further displays tabs identifying respective ones of said at least two
menus, said tabs being arrayed horizontally, the horizontally arrayed
identifying tabs of the respective ones of the at least two menus being
displayed concurrently with the vertical array of options of a
particular one of the at least two menus, and wherein said first user
activated means includes up and down switches, which when actuated
Appeal 2009-004744
Application 10/243,030

4
sequentially navigate though the vertical array of options of a menu in
up and down directions respectively, and further includes right side
and left side switches, which when actuated sequentially navigate
through said horizontally arrayed tabs in righthand and lefthand
directions respectively.

Prior Art
Morimoto 5,784,059 Jul. 21, 1998
Benson 5,808,610 Sep. 15, 1998
Battles 2003/0206239 A1 Nov. 6, 2003

Examiner’s Rejections
Claims 1-3 and 5-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Battles and Morimoto.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Battles, Morimoto, and Benson.

ISSUES
(1) Did the Examiner err in finding that the combination of Battles
and Morimoto teaches “third user activated means for controlling storage of
respective ones of the user-defined menu shortcuts in the digital camera” as
recited in claim 1?
(2) Did the Examiner err in finding that the combination of Battles,
Morimoto, and Benson teaches “right side and left side switches, which
when actuated sequentially navigate through said horizontally arrayed tabs
in righthand and lefthand directions respectively” as recited in claim 4?

Appeal 2009-004744
Application 10/243,030

5
FINDINGS OF FACT
Battles
1. Battles teaches a menu navigation system for navigating digital
camera menus. A four way controller 108 includes a left side switch 126
and a right side switch 128. Title; abstract; Fig. 1B; ¶ [0009].

Morimoto
2. Morimoto teaches input means for selecting an item from a
menu displayed by the display unit. A fourth control means responds to the
display of a higher level menu for controlling a second control means to
display a selectable item of a lower level menu based upon predetermined
information to enable selection of the selectable lower level menu item by
the input means to bypass one or more lower levels of menus. Col. 3, ll. 5-
25.
3. Morimoto also teaches a display unit for displaying a menu on a
screen, a storage unit for storing data in a hierarchical structure including
data for a plurality of menus correlated with instruction data corresponding
to the menus, an input unit for inputting a select instruction to select a menu
identified on a main menu display screen, and a control unit for executing
the input instruction. Col. 3, ll. 40-47.

Benson
4. Figure 2 of Benson shows two tabs labeled “colors” and
“layers” within panel 210. Because the colors tab is currently selected, the
colors commands are presented within panel 210. When the layers tab is
selected, the layers commands are displayed. Fig. 2; col. 3, ll. 47-53.
Appeal 2009-004744
Application 10/243,030

6

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
“A reference may be said to teach away when a person of ordinary
skill, upon [examining] the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in
original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of the alternatives when the disclosure does not
criticize, discredit, or otherwise discourage the solution claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

ANALYSIS
Section 103(a) rejection of claim 1
The Examiner finds that column 3 of Morimoto teaches a “third user
activated means for controlling storage of respective ones of user-defined
menu shortcuts” as recited in claim 1 because a user can bypass one or more
levels of menus based upon predetermined information. According to the
Appeal 2009-004744
Application 10/243,030

7
Examiner, the menu shortcuts of Morimoto are user defined because “the
menu shortcuts are predetermined” from “data inputted by the user.” Ans. 5,
12. Appellant contends that Morimoto does not teach “third user activated
means for controlling storage of respective ones of user-defined menu
shortcuts” as recited in claim 1, but instead teaches a device that
automatically presents most recently selected or most frequently selected
lower level menus. App. Br. 6-7; Reply Br. 2-3.
The portions of column 3 of Morimoto cited by the Examiner in the
Answer do not teach automatically presenting frequently selected menus.
The Examiner does not explain how or where Morimoto teaches
automatically presenting frequently selected menus, or how automatically
presenting frequently selected menus corresponds to “third user activated
means for controlling storage of respective ones of user-defined menu
shortcuts” as recited in claim 1. Specifically, neither the Examiner nor the
cited portions of column 3 explain what data is input by the user, how the
user-input data defines a menu shortcut, and what “means” the user uses to
define the menu shortcut.
Without more of an explanation from the Examiner to correlate the
teachings of Morimoto to the claimed “third user activated means,” we do
not see how the cited portions of column 3 of Morimoto correspond to “third
user activated means for controlling storage of respective ones of user-
defined menu shortcuts” as recited in claim 1.
We do not sustain the rejection of claim 1 under 35 U.S.C. § 103(a).
Because claims 2, 3 and 5-11 depend from claim 1, we do not sustain the
rejection of these claims under 35 U.S.C. § 103(a).

Appeal 2009-004744
Application 10/243,030

8
Section 103(a) rejection of claim 4
Appellant contends that Battles does not teach sequentially navigating
through horizontally arrayed tabs in righthand and lefthand directions (App.
Br. 11), and that Benson does not contemplate sequential navigation through
horizontally arrayed tabs (App. Br. 12). Appellant contends that the
particular tabs in Benson are individually selected using a pointing device,
which “teaches away” from sequential navigation using right side and left
side switches. Reply Br. 6. Appellant also contends that the Examiner has
provided only conclusory statements to support the combination of
references. App. Br. 12; Reply Br. 6.
Appellant has failed to cite any portion of Benson that would criticize,
discredit, or otherwise discourage an artisan from using switches instead of a
pointing device to navigate through tabs. Replacing the input pointing
device of Benson with the right side and left side input switches of Battles
(FF 1) to sequentially navigate through the horizontally arrayed tabs of
Benson (FF 4) is the combination of familiar elements according to known
methods that yields the predictable result of using switches to navigate
through horizontally arrayed tabs. See KSR, 550 U.S. at 416. Appellant has
provided no evidence tending to show that replacing an input pointing
device with input switches for navigating through horizontally arrayed tabs
was “uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418-19).

Appeal 2009-004744
Application 10/243,030

9
CONCLUSIONS OF LAW
(1) The Examiner erred in finding that the combination of Battles
and Morimoto teaches “third user activated means for controlling storage of
respective ones of the user-defined menu shortcuts in the digital camera” as
recited in claim 1.
(2) The Examiner did not err in finding that the combination of
Battles, Morimoto, and Benson teaches “right side and left side switches,
which when actuated sequentially navigate through said horizontally arrayed
tabs in righthand and lefthand directions respectively” as recited in claim 4.

DECISION
The rejection of claims 1-3 and 5-11 under 35 U.S.C. § 103(a) as
being unpatentable over Battles and Morimoto is reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Battles, Morimoto, and Benson is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

Appeal 2009-004744
Application 10/243,030

10

msc

Thomas H. Close
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester NY 14650-2201