Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Oct 15, 2020

2019002864 (P.T.A.B. Oct. 15, 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.
15/298,363 10/20/2016 Kayoko SEO 70404.3257/ka 4374
54072 7590 10/15/2020
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
ZHANG, FAN
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
10/15/2020 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 KAYOKO SEO
____________________

Appeal 2019-002864
Application 15/298,363
Technology Center 2600
____________________

Before ST. JOHN COURTENAY, III, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–9. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423
(BPAI 1994) (precedential).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Sharp Kabushiki Kaisha as the real party in interest. Appeal Br. 2.
Appeal 2019-002864
Application 15/298,363

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
organizing a number of functional items among a plurality of tabs displayed
on an information processing device. See Spec. 1:10–14, 3:6–13, 11:23–
12:2. As described in the Specification, an information processing device
may include scanner functions, printer functions, copier functions, and
facsimile functions. Spec. 8:13–17. Functions associated with these modes
of operations may be organized within tabs on a display portion of the
information processing device. See Spec. 11:23–12:6. In a disclosed
embodiment, a user may create a customized (i.e., shortcut) tab comprising,
for example, recently used functions. See Spec. 14:18–15:23, Figs 5–7.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. An information processing device connected to a terminal
including a display and an operator through a network and
capable of executing a plurality of functions relating to
information processing, the information processing device
comprising:
a controller configured or programmed to:
function as a screen creator that creates an
individual tab including a plurality of functional items
previously arranged for each screen and having screen
information of a list page in which a functional item
among the plurality of functional items for each screen is
able to be arbitrarily registered and a functional item
among registered functional items is able to be arbitrarily
deleted; and
function as a setting processor that receives a
command to register and delete a functional item that is
arbitrarily selected by the operator to the individual tab
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having the screen information of the list page displayed on
the display of the terminal, from the terminal through the
network, causes a storage to store an arbitrarily selected
functional item related to the registration and deletion, and
also reads the screen information of the list page of a result
of the registration and deletion from the storage and guides
the screen to the display of the terminal, wherein
the screen creator, when receiving a command to delete
the arbitrarily selected functional item from the terminal through
the network, determines whether a remaining functional item
after the deletion is present from storage content of the storage,
the screen creator creates a screen in which the individual
tab having the screen information of the list page is not displayed
upon deletion of a last functional item such that no remaining
functional item is present, and guides the screen to the display of
the terminal through the network, and
the screen creator creates a screen displaying a shortcut
symbol button that shows display and non-display corresponding
to display and non-display of the individual tab, and guides the
screen to the display of the terminal through the network.

The Examiner’s Rejections
1. Claim 1–6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Watanabe et al. (US 2016/0077687 A1; Mar. 17, 2016)
(“Watanabe”); Steiner et al. (US 2010/0157359 A1; June 24, 2010)
(“Steiner”); Patten et al. (US 2015/0121194 A1; Apr. 30, 2015) (“Patten”);
and Chaudhri (US 2011/0252346 A1; Oct. 13, 2011). Non-Final Act. 3–8.
2. Claims 7–9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Watanabe, Steiner, Patten, Chaudhri, and Ono (US
2016/0094738 A1; Mar. 31, 2016). Non-Final Act. 9–10.

Appeal 2019-002864
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ANALYSIS2
In rejecting claim 1, the Examiner finds, Watanabe teaches, inter alia,
“a shortcut symbol button is changed between ‘on’ and ‘off’ to show
whether a custom tab [is] containing items or not containing items.” Non-
Final Act. 6–7 (citing Watanabe ¶ 7). More particularly, the Examiner
explains that the claimed shortcut symbol button only functions as an
indication as to whether all of the items within a custom tab have been
deleted. Ans. 4. As such, the Examiner finds that
display or non-display of a custom tab is equivalent to non-
completely deleting or completely deleting of items associated
with the tab, the “on”/“off” setting for indication of non-
completely deleting or completely deleting of items would have
served the same purpose for indication of display or non-display
of the custom tab.
Ans. 5.
Appellant asserts that Watanabe, as relied on by the Examiner, merely
identifies Japanese Patent Laid-Open No. 2006-98803, which describes a
custom menu being displayed when there are items contained within the
custom menu and not displayed if the plurality of items are deleted from the
custom menu. Appeal Br. 5–6 (citing Watanabe ¶ 7). Appellant argues that
rather than teaching the claimed shortcut symbol button, the custom menu

2 Throughout this Decision, we have considered the Appeal Brief, filed
July 30, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed November 16,
2018 (“Ans.”); and the Non-Final Office Action, mailed March 19, 2018
(“Non-Final Act.”), from which this Appeal is taken. Appellant did not file
a Reply Brief. To the extent Appellant has not advanced separate,
substantive arguments for particular claims or issues, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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discussed in Watanabe corresponds to the claimed individual tab. Appeal
Br. 5–6.
As recited in claim 1, a screen creator creates an individual tab that
may include a plurality of functional items, each of which may be
individually registered or deleted from the individual tab. Additionally, the
screen creator creates a screen displaying a shortcut symbol button that
provides a display/non-display indication “corresponding to display and
non-display of the individual tab.” See Claim 1. Thus, the Examiner is
required to find the prior art teaches a screen creator that creates both an
individual tab and a shortcut symbol button. See Applied Med. Res. Corp. v.
U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of
two terms in a claim requires that they connote different meanings . . . .”);
see also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable.”). Here, rather
than finding the prior art teaches a shortcut symbol button as recited in claim
1, the Examiner finds the custom menu of Watanabe (i.e., which corresponds
to the claimed individual tab), is capable of providing a similar display/non-
display indication as the recited shortcut symbol button. As such, the
Examiner has not shown by a preponderance of evidence that the prior art
teaches or reasonably suggests the claimed shortcut symbol button.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that the cited prior art teaches or reasonably
suggests the claimed shortcut symbol button as recited in claim 1, we do not
address other issues raised by Appellant’s arguments related to these claims.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
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(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 1. For
similar reasons, we do not sustain the Examiner’s rejection of claims 2–6,
which depend therefrom.
Claims 7–9 also depend from claim 1. In addition to Watanabe,
Steiner, Patten, and Chaudhri (as relied on by the Examiner in rejecting
claim 1), the Examiner also relies on the teachings of Ono in rejecting
claims 7–9. See Non-Final Act. 9–10. Although Ono does teach a shortcut
button displayed on an information processing device (see, e.g., Ono,
Fig. 2A), the Examiner does not rely on Ono to remedy the deficiencies of
Watanabe, discussed above, with respect to claim 1.3
Accordingly, we do not sustain the Examiner’s rejection of claims 7–
9.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–9 under
35 U.S.C. § 103.

3 Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th ed. Rev.
08.2017, Jan. 2018).
Appeal 2019-002864
Application 15/298,363

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6 103 Watanabe, Steiner,
Patten, Chaudhri
1–6
7–9 103 Watanabe, Steiner,
Patten, Chaudhri,
Ono
7–9
Overall
Outcome
1–9

REVERSED