Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Dec 3, 2021

2020004879 (P.T.A.B. Dec. 3, 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.
15/203,928 07/07/2016 Mikiya OKADA 70404.3106/sz 7584
54072 7590 12/03/2021
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
AUGUSTIN, MARCELLUS
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
12/03/2021 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):
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 MIKIYA OKADA and NAOHIRO ANDOH
____________________

Appeal 2020-004879
Application 15/203,928
Technology Center 2600
____________________

Before ERIC S. FRAHM, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 2–10, 12, and 13. Claim 1 has been canceled (see
Appeal Br. 8, Claims Appendix), and claim 11 has been objected to as (i)
appearing to include allowable subject matter, but (ii) being dependent upon
a rejected base claim (see Final Act. 10–11). We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Sharp Kabushiki Kaisha (Appeal Br. 2).
Appeal 2020-004879
Application 15/203,928

2
We affirm.

APPELLANT’S INVENTION
Appellant’s invention relates to a multi-function touch-panel display
for copy machines having multiple functions, where some functions/buttons
may need to be disabled for various reasons (see Spec. 1:12–4:19; Abstract;
see Figs. 1, 5, 6, 13, 14). Claim 12 is illustrative of the invention and is
reproduced below, with emphases added to disputed portions of the claim.
Claim 12: A method of receiving a user operation using a
display-integrated operation panel including a display screen,
comprising the steps of:
[1] displaying a first UI component on said display
screen;
[2] activating, responsive to a user operation of said first
UI component displayed on said display screen at said step of
displaying said first UI component, a process associated with
said first UI component; and
[3] responsive to activation of said process, disabling a
user operation of said first UI component.

Appeal Br. 10, Claims Appendix (bracketed numbering and emphases
added).

EXAMINER’S REJECTION2
The Examiner rejected claims 2–10, 12, and 13 under 35 U.S.C.

2 Throughout this Decision we refer to the Appeal Brief filed February 5,
2020 (“Appeal Br.”); Reply Brief filed June 12, 2020 (Reply Br.); Final
Office Action mailed September 20, 2019 (“Final Act.”); and the
Examiner’s Answer mailed April 20, 2020 (“Ans.”).
Appeal 2020-004879
Application 15/203,928

3
§ 102(b) as being anticipated by, or in the alternative, under
35 U.S.C. § 103(a) as obvious, over Hosoda (US 2010/0037156 A1;
published Feb. 11, 2010). Final Act. 5–10; Ans. 4–8.
Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 2 and
12 under 35 U.S.C. § 102(b), or in the alternative, under 35 U.S.C. § 103(a)
as obvious, over Hosoda because, inter alia, Hosoda fails to disclose
processor circuitry (claim 2) and a method (claim 12) for performing steps 1,
2, and 3, in that order, and as recited in claims 2 and 12 (see Appeal Br. 3–7;
Reply Br. 2–8). More specifically, Appellant contends Hosoda fails to teach
or suggest disabling user operation of a user interface (UI) component
“responsive to activation of said process” (claims 2, 12) associated with the
“UI component” (see Appeal Br. 4–7; Reply Br. 3–7).
Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 3–7)
and the Reply Br. (Reply Br. 2–8), the following principal issue is presented
on appeal:3
Has Appellant shown the Examiner erred in rejecting claims 2–10, 12,
and 13 as being obvious over Hosoda, because Hosoda fails to teach or
suggest performing steps 1–3 recited in representative claim 12, in the order
claimed?

3 Because the outcome of the obviousness issue is dispositive of all claims
on appeal, we need not reach the alternative anticipation rejection (also
based on Hosoda).
Appeal 2020-004879
Application 15/203,928

4
ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 5–10; Ans. 4–
8) in light of Appellant’s arguments in the Appeal Brief (Appeal Br. 3–7)
and the Reply Brief (Reply Br. 2–8) that the Examiner has erred, and the
Examiner’s response to Appellant’s arguments in the Appeal Brief found at
pages 9–15 of the Answer. We disagree with Appellant’s arguments and
conclusions. With respect to representative independent claim 12, we adopt
as our own (1) the findings and reasons set forth by the Examiner in the
Final Rejection and the Answer (Final Act. 9–10; Ans. 7–8), and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 10–15). We concur with the findings and
conclusion as to obviousness reached by the Examiner, and we provide the
following for emphasis.
With regard to claim 12, the Examiner finds, and we agree, that
Hosoda teaches the recited method including the recited steps of:
(1) displaying a UI component (Fig. 23 copy button G1302) on a
display screen (Fig. 23 panel G1301) (see Final Act. 9; Ans. 7);
(2) activating a process (i.e., the copy process associated with copy
button G1302) associated the UI component (i.e., the copy button)
in response to user operation of the UI component (see Final Act. 7
citing Hosoda ¶ 258 (at step 2103 of the process of Figure 21 the
application program calls for the function of the copy button
G2013)); see also Hosoda ¶ 256 (copy operations are started at
step 2101 of Figure 21 when pushdown of copy button 1302 is
detected), where at step 2106 of the process of Figure 21 the
Appeal 2020-004879
Application 15/203,928

5
hardware process for the copy function is performed (see Ans. 10
citing Hosoda ¶ 264); and
(3) disabling a user operation (by graying out the button as shown in
Figure 25; see ¶ 279 (copy button G1302 on panel G1301 is grayed
out at step S2218 in Figure 22)) of the UI component (i.e., the copy
button G1302) responsive to the activation of the process (i.e., the
copy process) (see Final Act. 9–10; Ans. 7–8).
At the outset, we find Appellant’s contention (see Reply Br. 5) that
the recited “process” cannot be interpreted to encompass Hosoda’s copy
process unpersuasive. Appellant’s Figure 1 clearly depicts a copy machine,
operable to perform the copy process shown in Figure 14 (see Spec. 10:19
(“Fig. 14 is a flowchart of a program for the copy process”) (emphasis
added). Furthermore, Appellant’s Specification explicitly describes the copy
process of Figure 14 as beginning “when the user presses monochrome copy
start key 604 or color copy start key 606 shown in Fig. 13” (Spec. 30:1–2).
Under the broadest reasonable interpretation,4 the recited “process”
encompasses Hosoda’s copy process.
Appellant also argues that Hosoda’s copy button G1302 is not grayed
out in response to activation of the copy process, but “is instead grayed out
when a user is not able to activate a copying process because the user is not
authorized to do so” (Appeal Br. 5). This argument is not persuasive,
because Appellant has not considered the use of the word “comprising” in

4 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2020-004879
Application 15/203,928

6
the preamble of claim 12, which permits the inclusion of additional steps in
the claimed method, including an extra step of (i) determining user
authorization status (as argued); (ii) determining whether an error occurred
in the past (as taught by Hosoda at step S2217 in Figure 22; see Hosoda ¶¶
276, 277); or (iii) any other necessary or desirable step in operating a copy
machine.
A method claim with the word “comprising” appearing at the beginning
generally allows for additional, unclaimed steps in the accused process, but
each claimed step must nevertheless be performed as written. Dippin’ Dots,
Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007) (“[The] enumerated steps
must . . . all be practiced as recited in the claim for a process to infringe. The
presumption raised by the term ‘comprising’ does not reach into each of the six
steps to render every word and phrase therein open-ended . . . .”); Crystal
Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d
1336, 1348 (Fed. Cir. 2001) (Using the non-limiting transitional phrase
“comprising” creates a presumption that the method is not limited to only
those steps recited in the claim); Boehringer Ingelheim Vetmedica v.
Schering-Plough Corp., 320 F.3d 1339, 1350 (Fed. Cir. 2003) (the use of the
term “comprises” in the preamble indicates that additional steps are not
excluded).
In this light, claim 12 does not prevent the inclusion of additional steps,
nor would the addition of necessary or desirable copy process steps (such as
those taught or suggested by Hosoda) be incompatible with the operation of the
claimed method. Much of the misunderstandings between the Examiner and
Appellant appear to be due to a lack of clarity around the first process of
Appeal 2020-004879
Application 15/203,928

7
Hosoda (shown in Figure 21) and the second process of Hosoda (shown in
Figure 22), and the order in which these first and second processes occur.
Our careful review of Hosoda reveals that Hosoda’s Figures 21 through
25 are drawn to a disclosed fifth embodiment (see Hosoda ¶¶ 37–41 Brief
Description of Drawings), and that Figures 21 and 22 are “a flow chart showing
an operation of an image forming device in a fifth embodiment” (see Hosoda
¶¶ 37, 38). The “Fifth Embodiment” (see Hosoda, page 11, heading occurring
between paragraphs 250 and 251) is fully described in paragraphs 251 through
283 of Hosoda. Paragraphs 253 through 272 describe the operations of a first
process as shown in Figure 21, although paragraphs 273 through 279 describe
the operations of a second process as shown in Figure 22. Hosoda describes
that the first process of Figure 21 begins at step S2101 (see Hosoda ¶ 256) and
ends at step S2113 (see Hosoda ¶ 264), and the second process of Figure 22
begins at step S2114 (see Hosoda ¶ 273) and ends at step S2220 (see Hosoda ¶
279). One of ordinary skill in the art, reading the entirety of Hosoda, would
understand that the first process of Figure 21 is followed sequentially by the
second process of Figure 22. Therefore, the steps occur in the order of step
S2101, steps S2113 and S2114, and finally step S2220. Thus, Hosoda’s copy
process (shown in Figures 21 and 22) teaches or suggests what is claimed
(albeit with additional unclaimed steps), namely performing limitations 1, 2,
and 3 in the order set forth in claim 12.
In view of the foregoing, Appellant has not shown the Examiner’s
obviousness rejection to be in error, and we sustain the rejection of
independent claim 12, as well as claims 2–10 and 13 grouped therewith, as
being obvious over Hosoda.
Appeal 2020-004879
Application 15/203,928

8
“[C]laim construction must begin with the words of the claims
themselves.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293,
1301 (Fed. Cir. 2006) (citation omitted); see In re Hiniker, 150 F.3d 1362,
1369 (Fed. Cir. 1998) (“[T]he name of the game is the claim.”); Giles S.
Rich, The Extent of the Protection and Interpretation of Claims—American
Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990)
(“To coin a phrase, the name of the game is the claim.”). Should there be
further prosecution of the instant claims on appeal, Appellant and the
Examiner may wish to consider whether amending step 3 of claim 12 to read
“directly responsive to activation . . .” (claim 12, emphasized word added),
or amending the claim to prevent the inclusion of additional steps (such as
by omitting the use of “comprising” in the preamble) might further
patentably define the invention.

CONCLUSION5
Appellant has not adequately shown the Examiner erred in rejecting
claims 2–10, 12, and 13 as being obvious under 35 U.S.C. § 103(a) over
Hosoda.

5 Although not before us on Appeal, we leave it to the Examiner to evaluate
whether the dependent claim 11 is obvious under 35 U.S.C. § 103(a) over
Hosoda alone or in combination with another reference. Specifically,
because Hosoda discloses (i) a copy button G1302 (see Figs. 23, 25; ¶¶ 254,
256, 264); and (ii) greying out the copy button when a GUI component has a
history of being in an error state (see Fig. 22, step S2218; ¶¶ 277, 279); and
(iii) it is well-known that copy functions involving toner and recording
media may be subject to error states such as being out of paper, paper jams,
being out of ink, or having ink jets being clogged, the Examiner should
reconsider whether claim 11 contains allowable subject matter. Although
Appeal 2020-004879
Application 15/203,928

9
Therefore, we affirm the Examiner’s obviousness rejection of claims
2–10, 12, and 13. Our affirmance of the obviousness rejection is dispositive
as to all claims on appeal. It is not necessary, therefore, to address the
alternative ground of rejection (i.e., the anticipation rejection) entered by the
Examiner. See In re Suong-Hyu Hyon, 679 F.3d 1363, 1367 (Fed. Cir.
2012) (Affirmance of rejection of all claims under § 103(a) made it
unnecessary to reach other grounds of rejection); Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (Having decided a single dispositive
issue, the ITC was not required to review other matters decided by the
presiding officer).

Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
2–10, 12, 13 103(a) Hosoda 2–10, 12,
13

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

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.