Fukushima, Atsuhiko et al.

Patent Trials and Appeals Board

Feb 25, 2020

14175277 - (D) (P.T.A.B. Feb. 25, 2020)

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.
14/175,277 02/07/2014 Atsuhiko Fukushima 70404.2303/dk 2285
54072 7590 02/25/2020
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
HUNTSINGER, PETER K
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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):
JKEATING@KBIPLAW.COM
epreston@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUHIKO FUKUSHIMA, YUJI OKAMOTO,
TOSHIHIRO YAMANAKA, TOSHIHIKO FUKUHARA, SHUHJI FUJII,
TATSUO NOMURA, SYOUICHIROU YOSHIURA, and
TSUTOMU YOSHIMOTO

Appeal 2019-000457
Application 14/175,277
Technology Center 2600

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JOHN A. EVANS, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 23–26, 29, and 31.2 Appeal Br. 1.

1 We refer to the Specification in US 2014/0153036 A1, filed Feb. 7, 2014,
and published June 5, 2014 (“Spec.”); the Final Office Action, mailed
October 25, 2017 (“Final Act.”); the Appeal Brief, filed July 20, 2018
(“Appeal Br”); the Examiner’s Answer, mailed August 30, 2018 (“Ans.”);
and the Reply Brief (“Reply Br.”) filed October 24, 2018. This appeal
relates to Appeal 2016-004942 (previously decided on April 3, 2017) in
which we affirmed the Examiner’s obviousness rejection of claims 18, 20–
26, 28, and 29. Dec. 7.
2 We use the word “Appellant” to refer to “applicant” as defined in
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Claims 1–22, 27, 28, 30, and 32 have been cancelled. Id. at 15–16. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to digital
multifunctional device (1) including image reading unit (2), operation unit
(4), image forming unit (6), and device control unit (8). Spec. ¶¶ 40, 41, Fig.
1. Operation unit (4) includes input unit (4a) and display unit (4b) for
implementing various functions including erasing processed image data
stored in hard disk (12). Id. ¶ 43, Fig. 1.
Independent claim 23, reproduced below with disputed limitation
emphasized in italics, is illustrative of the claimed subject matter:
23. An image processing device comprising:
an image data reader which inputs image data;
an image data storage which stores the image data inputted
through the image data reader;
an image data printer which outputs the image data stored in the
image data storage;
a display including a region which displays a print setup; and
a device controller which controls the display and erases the
image data stored in the image data storage; wherein
the device controller repeatedly executes an erase process to
the image data stored in the image data storage for a plurality of
times, and displays an icon, in a periphery of the display and outside
the region which displays the print setup, which indicates that an
image data erase process function is in an operable state and has
been validated, and during execution of the erase process, displays
the icon in a different display than a normal display.

37 C.F.R. § 1.42(a). Appellant identifies Sharp Kabushiki Kaisha as the real
party-in-interest. Appeal Br. 2.
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Appeal Br. 15 (Claims Appendix).
Figure 1, discussed above and reproduced below, are useful for
understanding the claimed invention:

Figure 1 illustrates a schematic configuration of a digital multifunctional
device including an image processing device. Spec. ¶ 41.

III. REFERENCES
The Examiner relies upon the following references.3
Name Number Filed Publ’d/Issued
Nomura
(Nomura ’045)
US 5,950,045 June 10, 1998 Sept. 7, 1999
Battles US 6,437,811 B1 Jan. 26, 2000 Aug. 20, 2002

3 All reference citations are to the first named inventor only.
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Bunker US 2002/0181134 A1 June 4, 2001 Dec. 5, 2002
Nomura
(Nomura ’099)
JP 2001-309099A Nov. 2, 2001

IV. REJECTION4
The Examiner rejects claims 23–26, 29, and 31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Bunker,
Battles, Nomura ’099, Nomura ’045, and Applicant’s Admitted Prior Art
(AAPA)/Official Notice. Final Act. 11–16; Ans. 2–7.
V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 3–14, and the Reply Brief, pages 2–4.5 We are
unpersuaded by Appellant’s contentions. Except, as otherwise indicated
herein below, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellant’s Appeal
Brief. Final Act. 6–19; Ans. 2–10. However, we highlight and address
specific arguments and findings for emphasis as follows.
Appellant argues the Examiner erred in finding that the combination
of Bunker, Battles, Nomura ’099, Nomura ’045, and AAPA/Official Notice
teaches or suggests an icon showing an erase process function, as recited in
independent claim 1. Appeal Br. 4–5. In particular, Appellant argues

4 The Examiner withdraws the indefiniteness and obviousness rejections
previously entered against claims the pending claims. Final Act. 2; Ans. 2.
5 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Any other arguments Appellant could have
made but chose not to make in the Briefs are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2014).
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Bunker discloses a graphical user interface of a driver on a remote computer,
as opposed to an image processing device. Id. (citing Bunker ¶ 27, Fig. 4.)
This argument is misplaced because the Examiner relies on Bunker’s
graphical interface in an image processing device, as depicted in Figures 3A,
3b, and as later acknowledged in Appellant. Ans. 7.
Further, Appellant argues that “[o]ne of ordinary skill in the art would
not be motivated to modify Bunker to include an icon in view of Battles.”
Appeal Br. 5 (boldface omitted). According to Appellant, Bunker discloses
an erase device in an image processing device (e.g., scanner, copier)
including an erase trigger that allows a user to perform an erase process via
the SEC. ERASE tab requiring the user to input various parameters to
execute the underlining erase function. Id. at 5–6 (citing Bunker Figs. 3A,
3B); whereas Battles discloses a matrix of icons related to sorting various
photographs by providing the user with the capability of performing multiple
sorting functions for each photograph on a common screen. Id. at 6 (citing
Battles 1:9–34, 5:14–30). Appellant contends that the Examiner failed to
explain how Battles’s simple icon for performing a single sorting task could
have been used to replace Bunker’s icon for performing the more complex
erase trigger functions requiring multiple inputs or parameters. Id. at 7
(citing Bunker ¶¶ 5, 6).
Furthermore, Appellant argues that the proposed substitution of
Battles’s simpler function for Bunker more complex functions would have
rendered Bunker unsuitable for its intended purpose of performing the
desired erase functions thereby eliminating Bunker’s customization (i.e.,
allowing a user to customize and select the number of overwrites, pattern
and cycle) of the erase function. Appeal Br. 8–9. Appellant also contends
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that because Battles is directed to sorting (deleting, locking, grouping,
printing, rotating) a plurality of photographs one at a time on a common
screen, its mere checking of a box to indicate files to be deleted cannot
replace Bunker’s customizing of various screens to perform the more
complex erase function. Id. at 9–10.
Additionally, Appellant argues that, given the disparate teachings of
the cited references, the Examiner has not explained how one of ordinary
skill in the art would have modified the Bunker-Battles’s icon, which must
be located in the print setup location, with Nomura’s small icon displayed in
the upper left corner of the screen. Appeal Br. 10–11 (citing Nomura 22:37–
50). According to Appellant, the proposed modification would have been
counterintuitive for the placement of Bunker’s erase function icon. Id. at 11.
Finally, Appellant argues that there would not have been any logical
reason or motivation to modify Bunker’s erase trigger with (1) Battles’s
simple icon, (2) Nomura’s peripheral icon displayed on the side of the screen
or (3) in light of the Examiner’s taking of official notice, as evidenced by
Conti,6 to provide blinking or spinning icon during operation of the erase
process. Appeal Br. 12. According to Appellant, Conti’s disclosure of a
camera including spinning memory icons indicating an available amount of
memory in the camera would not properly be combinable with Bunker’s
multi-screen process for customizing the erase trigger function. Id. at 12–13
(citing Conti ¶¶ 25, 28).
Appellant’s arguments are not persuasive of reversible Examiner
error. As an initial matter, we note there are no material disputes between

6 Conti, US 2003/0048714 A1, published Mar. 13, 2003.
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Appellant and the Examiner regarding the teachings of the cited references.
The principal dispute before us is whether the cited references are properly
combined, as proposed by the Examiner, to teach the disputed claim
limitations. We answer this inquiry in the affirmative.
We agree with the Examiner that the proposed combination of
Bunker’s multi-screen erase process for allowing a user to customize the
erase trigger function with Battles’ single screen icon for deleting previously
selected photographs is proper. Ans. 7–8. In particular, Battles’s teaching
would have simplified Bunker’s interface by replacing Bunker’s multi-
screen approach with a single screen wherein inputs or parameters are
arranged in a matrix of rows and columns from which the user can select
desired ones for subsequent deletion during the customizing of the erase
function. Because the customization of the interface would be preserved in
the aftermath of the substitution, we find unavailing Appellant’s argument
that the proposed combination of Bunker’s teaching with Battles would have
rendered Bunker’s unsuitable for its intended purpose of customizing the
erase function.7

7 The argument that the proposed combination of references would render
one of the references unsuitable for its intended purpose, or would change its
principle of operation, is a teaching away argument. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French
teaches away from the board’s proposed modification” because “if the
French apparatus were turned upside down, it would be rendered inoperable
for its intended purpose”). “If references taken in combination would
produce a ‘seemingly inoperative device,’ . . . such references teach away
from the combination and thus cannot serve as predicates for a prima facie
case of obviousness.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339,
1354 (Fed. Cir. 2001) (citation omitted); see also In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“[A] reference teaches
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Further, we agree with the Examiner that the proposed combination of
Bunker with Battles and Nomura is likewise proper because Nomura’s
teaching of simply relocating the icon on the upper left screen would set the
icon apart from the various input parameters the user has to select in the
main screen during the customization of the erase function icon. Ans. 9.
Additionally, we agree with the Examiner that the Official Notice, as
evidenced by Conti’s teaching an icon spinning icon during operation of the
erase process to indicate availability of space in memory, would enhance the
functionality of the Bunker-Battles-Nomura system by indicating that the
erase trigger process live and ongoing. Ans. 9–10. We find the Examiner’s
proposed combination of the cited teachings of Bunker, Battles, Nomura,
Official Notice, and Conti is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, the
ordinarily skilled artisan, being “a person of ordinary creativity, not an
automaton,” would be able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in a multifunction
system displaying in a single screen of a graphical user interface including a
plurality of input parameters from which a user may designate selected ones
to customize an erase process, and wherein a spinning erase icon associated
therewith indicates a live and ongoing process. Id. at 420–21. Because

away from a combination when using it in that combination would produce
an inoperative result,” but the obviousness analysis must account for
“modifications that one skilled in the art would make to a device borrowed
from the prior art”).
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Appellant has not demonstrated that the Examiner’s proffered combination
would have been “uniquely challenging or difficult for one of ordinary skill
in the art,” we agree with the Examiner that the proposed modification
would have been within the purview of the ordinarily skilled artisan.
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Consequently, we are satisfied that, on
the record before us, the Examiner has established by a preponderance of the
evidence that the combination of Bunker, Battles, Nomura ’099, Nomura
’045, and Applicant’s Admitted Prior Art (AAPA)/Official Notice renders
claim 23 unpatentable. Accordingly, we are not persuaded of error in the
Examiner’s obviousness rejection of claim 23.
Regarding the rejection of claims 24–26, 29, and 31, Appellant has
not presented separate patentability arguments or reiterated substantially the
same arguments as those previously discussed for patentability of claim 23.
As such, claims 24–26, 29, and 31 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
We likewise affirm the Examiner’s obviousness rejection of claims
23–26, 29, and 31 under 35 U.S.C. § 103(a).
DECISION SUMMARY
In summary:
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Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
23–26, 29, 31 103(a)
Bunker, Battles,
Nomura ’099, Nomura
’045, AAPA/Official
Notice
23–26, 29,
31

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED