SHARP KABUSHIKI KAISHA

Patent Trials and Appeals Board

Aug 11, 2021

2020002065 (P.T.A.B. Aug. 11, 2021)

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.
14/553,685 11/25/2014 Tamotsu FUKUSHIMA 5174-0125PUS2 8733
2292 7590 08/11/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
ORR, HENRY W
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAMOTSU FUKUSHIMA and TERUMI HAYASHI
____________

Appeal 2020-002065
Application 14/553,685
Technology Center 2100
____________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–15, and 17–21. Claims 2 and 16
are canceled. See Claims App. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sharp
Kabushiki Kaisha. Appeal Br. 1.
Appeal 2020-002065
Application 14/553,685

2
The present invention relates generally to an image forming apparatus
having a large number of functions, allowing the user to select a desired
function. See Spec., 1:15–17.
Claim 1, reproduced below with disputed limitations emphasized, is
representative:
l. An image forming apparatus having a plurality of
functions and executing a function designated from said plurality of
functions, comprising:
a display device displaying a function selection image
allowing a user to designate any of said plurality of functions, said
display device displaying a first group of functions of which
frequency of use is higher than a prescribed threshold value, and a
second group of functions of which frequency of use is not higher
than said threshold value, on mutually different function selection
images, with a display item indicating that functions are displayed
distinguished from each other;
a designating device, connected to said display device,
for receiving a user input designating any of the plurality of functions
displayed by said display device;
a processor configured to extract, from the first group of
functions, a function in the first group of functions to be moved to the
second group of functions, while maintaining a function saved in the
second group of functions prior to the extraction, in the second group
of functions, when a predetermined condition is met; and
an image former, connected to said designating device,
for executing the function designated by the input received by said
designating device, wherein
said display device displays, in response to extraction by
said extracting unit of a function to be moved to the second group of
functions from the first group of functions, an image allowing
confirmation of the user as to whether the extracted function of the
first group of functions is to be moved to the second group of
functions, and
said display item includes a [User Interface] UI
component allowing transition from the function selection image
displaying functions of said first group to the function selection image
displaying functions of said second group.
Appeal 2020-002065
Application 14/553,685

3
Appellant appeals the following rejection:
Claims 1, 3–15, and 17–21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sonetaka (JP 2002/162869 A,
pub. June 7, 2002), Nakamura (US 2007/0247643 A1, pub. Oct. 25, 2007),
Hoshino (US 2008/0294983 A1, pub. Nov. 27, 2008), and Scott (US
2007/0083827 A1, pub. Apr. 12, 2007). Final Act. 2–21.
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Issue: Did the Examiner err in finding that Scott combined with at
least Nakamura teaches or suggests a display item indicating that functions
are displayed distinguished from each other, as set forth in claim 1?
Here, Appellant attempts to distinguish the claimed “a display item
indicating that functions are displayed distinguished from each other” from
the teachings in Scott. However, we point out that the Examiner relies on
both Scott and Nakamura to teach this “display item” feature (see Final
Act. 4–5, 8–9), yet Appellant only rebuts Scott’s teachings and fails to rebut
Nakamura’s teachings.
Specifically, Appellant contends that “the ‘special menu option’ of
Scott neither discloses or suggests the special menu option indicated that the
functions are displayed distinguished from each other nor it is necessarily a
display item.” Appeal Br. 4. Here, Appellant emphasizes that Scott’s
disclosed “special menu option” is not displayed so as to distinguish
functions from each other. We disagree with Appellant.
Appeal 2020-002065
Application 14/553,685

4
As noted by the Examiner, and we agree, Scott’s special menu option
would “be a ‘display item’ because a user would need to visually recognize
the special menu option in order to access the removed . . . icons” (Ans. 5),
and “the recited ‘display item’ is broad enough to reasonably cover any
visual implementation.” Id. (emphasis omitted).
For example, Scott discloses “in order to reserve valuable space on
display 14 for more frequently used applications, the icons of the least used
applications may be removed from the display and accessed through a
special menu option.” Scott ¶ 58 (emphasis added). Thus, we find
reasonable the Examiner’s interpretation that Scott is disclosing a “display
item” when it discloses the “special menu option,” otherwise the least used
applications would not be accessible via the screen.
Similarly, Nakamura discloses “[a] display controller for controlling
display of a plurality of objects to be displayed . . . such that objects to be
displayed having higher importance than those to be displayed in the x-th
area are displayed in the (x-1)th area.” Nakamura Abstr., see also ¶ 44. In
other words, Nakamura discloses two areas for distinguishing object, i.e.,
x-th area and a (x-1)th area.
We find that Scott and Nakamura individually or combined teach the
claimed display item indicating that functions are displayed distinguished
from each other, as set forth in claim 1.
As a result, Appellant’s argument against Scott separately from
Nakamura does not persuasively rebut the combination made by the
Examiner. One cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642
Appeal 2020-002065
Application 14/553,685

5
F.2d 413, 425–26 (CCPA 1981). In any case, we find that either Scott or
Nakamura alone teaches a display item indicating that functions are
displayed distinguished from each other.
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as being unpatentable over at least the combined
teachings of Scott and Nakamura, likewise with the rejection of claims 3–15
and 17–21, which are not argued separately with particularity.

CONCLUSION
The Examiner’s rejections of claims 1, 3–15, and 17–21 as being
unpatentable under 35 U.S.C. § 103(a) is affirmed.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–15, 17–21 103(a) Sonetaka,
Nakamura,
Hoshino, Scott
1, 3–15,
17–21

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

AFFIRMED