Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Oct 29, 2020

2019004483 (P.T.A.B. Oct. 29, 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.
15/353,752 11/17/2016 Shinsaku TOHKI 70404.3300/dj 1063
54072 7590 10/29/2020
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
HANG, VU B
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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 SHINSAKU TOHKI and TAKAYA NAKATANI
____________________

Appeal 2019-004483
Application 15/353,752
Technology Center 2600
____________________

Before MARC S. HOFF, BETH Z. SHAW, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 2–10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed November 17, 2016, which claims the benefit of at least
one earlier-filed application; “Final Act.” for the Final Office Action, mailed
January 26, 2018; “Appeal Br.” for Appellant’s Appeal Brief, filed
August 24, 2018; and “Ans.” for Examiner’s Answer, mailed December 14,
2018. Appellant elected not to file a Reply Brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is Sharp
Kabushiki Kaisha. Appeal Br. 2.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to a
user interface for an image forming apparatus (e.g., a multifunction
peripheral (MFP)) that has several “operational modes such as a copy mode,
a facsimile mode . . . , a network-supported printer mode and a scanner
mode.” Spec. 1:23–33; Abstract.
Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. An operation console provided on an image
processing apparatus operated in an operational mode selected
by a user from a plurality of operational modes, the operation
console comprising:
a display; and
a display controller that divides said display into a
plurality of areas including at least an area that displays task
trigger keys which operate said image processing apparatus,
and displays information; wherein
said display controller displays said area that displays
said task trigger keys at a same position on said display even
when said selected operational mode is changed, displays a key
that instructs a start of operation of said image processing
apparatus as one of said task trigger keys, and displays a clear
all key that clears a set function of said image processing
apparatus as another one of said task trigger keys; and
said display controller displays each of the clear all key
and the key that instructs a start of operation of said image
processing apparatus at same respective positions on said
display even when said selected operational mode is changed.
Appeal Br. 15 (Claims App.).
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REJECTIONS
R1. Claims 2–4 and 6–9 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Nonaka (US 2006/013282 A1, published June 22,
2006), Ogura (US 2007/0139704 A1, published June 21, 2007), and
Motoyoshi (US 2008/0231914 A1, published September 25, 2008). Final
Act. 4–6.
R2. Claims 5 and 10 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Nonaka, Ogura, Motoyoshi, and Kozakura
(US 2008/0252943 A1, published October 16, 2008). Final Act. 7.
ANALYSIS
We review the appealed rejections 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).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection R1 of Claims 2–4 and 6–9
Claims 2–4 and 6–9 stand rejected as obvious over Nonaka, Ogura,
and Motoyoshi. Final Act. 4–6. Appellant argues independent claims 2 and
7 as a group and does not separately argue the dependent claims. See
Appeal Br. 4–14. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to independent claim 2.
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Independent claim 7 and dependent claims 3, 4, 8, and 9 stand or fall with
claim 2.
Representative claim 2 recites “task trigger keys” including “a key
that instructs a start of operation of [an] image processing apparatus”
(referred to herein as a “start key”) and “a clear all key that clears a set
function of said image processing apparatus.” Appeal Br. 15 (Claims App.).
The claim further recites “display[ing] each of” the clear all key and the start
key “at same respective positions on [a] display even when [a] selected
operational mode [of the image processing apparatus] is changed.” Id.
The Examiner found that Nonaka discloses a cancel key and a start
key that are displayed in the same position in both a print mode (shown in
Figure 19) and a transmission mode (shown in Figure 20). Final Act. 4–5
(citing Nonaka, Fig. 19 (2308, 2309), Fig. 20 (2410, 2411), ¶¶ 164, 166).
The Examiner further found that: Nonaka’s cancel and start keys teach the
claimed task trigger keys; Nonaka’s start key teaches the claimed start key;
and Nonaka’s print and transmission modes teach different “operational
mode[s]” of the image processing apparatus. Id.
In the Final Office Action, the Examiner explained that Nonaka does
not expressly teach the claimed clear all key or the display of this clear all
key and the start key “at the same respective positions when the selected
mode of operation is changed.” Final Act. 5. But, the Examiner found that
it would have been obvious to modify Nonaka to include these claim
limitations given its disclosure and given the disclosures of Ogura and
Motoyoshi. Id. at 5–6. In particular, the Examiner found that: (1) Nonaka
teaches displaying a clear all key in the print mode; (2) Ogura teaches
placing a clear key and a start key in a particular area of the user interface
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for each operating mode; and (3) Motoyoshi displays task trigger keys at the
same positions when a mode of operation is changed. Id. at 5 (citing
Nonaka, Fig. 19 (2307), ¶ 164; Ogura, Fig. 9 (904), ¶ 56; Motoyoshi, Fig. 10
(54, 57), Fig. 11 (126, 130), ¶¶ 78, 81). The Examiner found that these
references are combinable because they are from the same field of endeavor.
Id. Finally, the Examiner explained that adding a clear all key to Nonaka’s
transmission mode, as proposed, would allow a user to “clear[] the setting
information, such as a destination address or number, in order to enable a
user to re-enter an intended address or number[,] if a mistake was made by
the user” (id. at 2, 6), and the Examiner found that displaying the clear all
key and start key in a consistent location when switching modes would
maintain a uniform layout, enabling the user to locate these keys on the
display panel (id. at 3–4, 6).
On appeal, Appellant alleges deficiencies in each reference. See
Appeal Br. 6–13. These arguments are not persuasive because they fail to
show error in any of the Examiner’s factual findings or in the Examiner’s
obviousness rationale. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”)).
We further address each of Appellant’s arguments below.
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Arguments Regarding Nonaka
Appellant contends that Nonaka “fails to teach or suggest a clear all
key as one of the task trigger keys” because Nonaka includes clear key 2307
only in the print mode (Figure 19), not in the transmission mode (Figure 20).
Appeal Br. 9. According to Appellant, “there would have been no logical
reason for one of ordinary skill in the art to have modified the display in the
transmission mode of Nonaka to include a clear key.” Id. at 9. As for the
Examiner’s proposed reason, Appellant responds that it “is not supported by
Nonaka or any of the other prior art of record.” Id. at 10. Finally, Appellant
argues that an ordinary artisan would have known that “a clear key is not
required for [Nonaka’s] transmission mode.” Id. at 11.
Appellant’s arguments do not persuade us of error. First, Appellant
fails to respond to the rejection as articulated. The Examiner acknowledged
that “Nonaka fails to teach displaying a clear all key . . . as one of the trigger
keys.” Final Act. 5. Instead, the Examiner found this limitation would have
been obvious, pointing to Nonaka’s clear key 2307 and Ogura’s disclosure
and explaining why it an ordinary artisan would have been motivated to
include clear key 2307 in both the print mode and the transmission mode.
Id. at 2, 5; see also Ans. 4–5. Thus, Appellant’s arguments, which contend
that Nonaka fails to disclose, require, or expressly suggest this claim
limitation (see Appeal Br. 9–11), are misplaced.
Second, Appellant faults the rejection for not supporting its rationale
with a citation to the prior art (see Appeal Br. 10); however, an express
teaching, suggestion, or motivation in the prior art is not a requirement for
an obviousness determination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418–19 (2007) (“The obviousness analysis cannot be confined by a
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formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.”); see also id. at 421 (“A person of ordinary skill
is also a person of ordinary creativity, not an automaton.”).
Finally, we are not persuaded by Appellant’s arguments that “there
would have been no logical reason” to modify Nonaka (Appeal Br. 9), as the
reason provided by the Examiner is logical and persuasive (Final Act. 3–6;
see also Ans. 4–5 (further explaining motivation to modify Nonaka)).
Indeed, the proposed modification is a simple design choice involving
common sense. See KSR, 550 U.S. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). Appellant does not persuade us of
error in the Examiner’s findings or rationale. For example, Appellant
identifies no errors or inaccuracies in the rejection, does not contend that the
Examiner’s proposals are beyond the level of skill of one of ordinary skill in
the art, and does not submit that the modification of Nonaka (or its
combination with the other references) would yield undesirable,
unpredictable, or unexpected results.
Arguments Regarding Ogura
Appellant argues that the Examiner’s reliance on Ogura is error
because Ogura’s “CLEAR” and “START” keys are hard keys, not keys that
are displayed (referred to herein as “soft keys”). Appeal Br. 11–13.
According to Appellant, “any logical and proper combination of Nonaka and
Ogura could have only resulted in a clear key and a start key that are hard
keys . . . [in] Nonaka.” Id. at 11. In addition, Appellant asserts that it “does
not make sense” that Ogura’s placement of hard keys could suggest a similar
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placement of soft keys because hard keys cannot move during operation. Id.
at 12.
We are not persuaded. Appellant fails to explain why a person of
ordinary skill in the art would have viewed the combination of Nonaka and
Ogura to “only” teach or suggest a clear key and a start key that are hard
keys. We agree with the Examiner, who found that a person of ordinary
skill in the art would have found Ogura to more generally suggest “placing a
clear key along with a start key in a particular area of the user interface
display for each of operating modes.” Final Act. 5; see id. at 3 (“Ogura was
cited to teach the specific placements of operating keys on the operational
panel of a multifunction device.”). As the Examiner explains, a person of
ordinary skill would be motivated to incorporate use this placement to
“maintain a uniform layout for the user interface.” Id. at 6. This finding is
further supported by the disclosure of Nonaka and Motoyoshi, which each
place certain soft keys in consistent locations on the user interface. See
Nonaka, Figs. 19–20; Motoyoshi, Figs. 5–7, 11–12 (cited by Final Act. 4–5).
Moreover, in the Answer, the Examiner further finds that an ordinary
artisan “could rearrange the positions of the start key and the clear key in
Nonaka’s display by viewing Ogura’s control panel,” as the “placement of
the keys . . . is a design choice” and would not change the display’s
functionality. Ans. 5. Appellant did not respond to this finding, and we
perceive no error in it.
Arguments Regarding Motoyoshi
The Examiner found Motoyoshi discloses “the placements of two task
keys at specific positions, and maintaining the placements of the task keys at
the same position when a mode of operation is changed.” Final Act. 3. In
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the Final Office Action, the Examiner supported this finding by referencing
the “RETURN” and “NEXT” keys, shown in the same position in both
Figure 10 (print mode) and Figure 11 (facsimile mode). Id. at 5 (citing
Motoyoshi, Fig. 10 (54, 57), Fig. 11 (126, 130), ¶¶ 78, 81). In the Answer,
the Examiner supports this finding by pointing to the same keys in Figure 5
(edit menu in copy mode) and Figure 12 (selection menu in facsimile mode).
Ans. 4 (citing Motoyoshi, Fig. 5 (78, 81), Fig. 12 (144, 148), ¶ 69). Also,
the Examiner finds Motoyoshi and Nonaka each teach placement of “two
task keys . . . at the same respective positions for different operating modes
of a multifunction device,” which further suggests the claim limitations. Id.
Appellant argues that Motoyoshi does not support the Examiner’s
finding. Appeal Br. 6–9. In the Appeal Brief, Appellant argues that
Motoyoshi’s Figures 10 and 11 do not support the Examiner’s finding
because “it would have been readily apparent to one of ordinary skill in the
art” that Figure 10’s inclusion of the word “NEXT” was an error. Id. at 6;
see id. at 6–7 (explaining why it “should actually be the word ‘START’”).
But, Appellant did not file a Reply Brief to address the Examiner’s findings
regarding Figures 5 and 12 of Motoyoshi. Accordingly, Appellant fails to
persuade us of error in these findings, or in the Examiner’s reliance on
Motoyoshi generally.
Moreover, Appellant’s arguments fail to respond to the rejection as
articulated because the Examiner relied upon the combined disclosures of
Motoyoshi and Nonaka to determine that these claim limitations would have
been obvious. See Final Act. 3, 5; Ans. 3–4. Indeed, Appellant does not
challenge the Examiner’s finding that Nonaka displays “task trigger keys at
the same position of said display even when said selected operational mode
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is changed.” Final Act. 4–5 (making finding); see generally Appeal Br. 9–
11 (alleging other deficiencies in Nonaka).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the limitations of claim 2, nor do we find
error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 2, as well as the rejection of grouped claims 3–4 and 6–9.
Obviousness Rejection R2 of Claims 5 and 10
The Examiner rejects dependent claims 5 and 10 over a combination
of Nonaka, Ogura, Motoyoshi, and Kozakura. Final Act. 7. Appellant does
not present arguments for either of these dependent claims (see generally
Appeal Br.), and Appellant’s arguments regarding the respective
independent claims are not persuasive for the reasons explained above.
Accordingly, we sustain the Examiner’s obviousness rejection of
dependent claims 5 and 10.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 6–9 103 Nonaka, Ogura,
Motoyoshi,
2–4, 6–9
5, 10 103 Nonaka, Ogura,
Motoyoshi, Kozakura
5, 10
Overall
Outcome
2–10
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TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED