Sony Corporation

Patent Trials and Appeals Board

Dec 24, 2020

2019004503 (P.T.A.B. Dec. 24, 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.
15/421,816 02/01/2017 Hisashi Ohashi 880001-3206-US03 1181
165569 7590 12/24/2020
MICHAEL BEST & FRIEDRICH LLP (SONY)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
SONG, DAEHO D
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
DCipdocket@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HISASHI OHASHI
Appeal 2019-004503
Application 15/421,816
Technology Center 2100
BEFORE JASON V. MORGAN, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–28. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 Sony Corporation.
Appeal Br. 3.
Appeal 2019-004503
Application 15/421,816
2
CLAIMED SUBJECT MATTER
The claims are directed to “an electronic device, such as a video
camera, a digital camera, a cellular phone, or a PDA, which has a display
panel and an operating section and also to a method of assigning a function
to a key.” Spec. 2:2–6. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An image processing apparatus, comprising:
an image processing circuitry configured to:
process an image signal output from an imager of a
camera, and
cause a display device to display an image based
on the processed image signal, and to selectively display a
menu including a menu list for selecting from a plurality of
menu items being associated with functions, the menu items
representing candidates to assign to a part of a key device
disposed on the camera in direct response to a manual input by
a user and being related to one of a plurality of first camera
operations; and
control circuitry configured to:
in response to a first input at the key device, set a
mode for the camera, and
in response to a second input at the key device and
while the camera is in the mode set in response to the first input
at the key device, assign, as a first function, a first candidate to
a first operation key of the key device, and automatically
assign, as a second function, a second candidate to a second
operation key of the key device, the first function and the
second function being paired functions.
Appeal Br. 18 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Jeoung US 2001/0003097 A1 June 7, 2001
Kanamori US 2001/0026263 A1 Oct. 4, 2001
Maeda US 2002/0015598 A1 Feb. 7, 2002

REJECTION
Claims 1 and 3–28 are rejected under pre-AIA 35 U.S.C. § 103 as
obvious over Kanamori, Jeoung, and Maeda. Final Act. 5–11.
OPINION
The Obviousness Rejection of Claims 1 and 3–28 over Kanamori, Jeoung,
and Maeda
The Examiner finds Kanamori, Jeoung, and Maeda teach all
limitations of claim 1. See Final Act. 5–7. In particular, the Examiner finds
Kanamori teaches “in response to a first input at the key device, set a mode
for the camera” as recited in claim 1. See Final Act. 5 (citing Kanamori Figs.
6A–C). The Examiner further finds Kanamori teaches
in response to a second input at the key device, . . . assign, as a
first function, a first candidate to a first operation key of the key
device, and automatically assign, as a second function, a second
candidate to a second operation key of the key device, the first
function and the second function being paired functions.
See Final Act. 5 (citing Kanamori Figs. 28A–C, ¶ 192).
The Examiner further finds Maeda teaches “in response to a second
input at the key device and while the camera is in the mode set in response
to the first input at the key device, assign, as a first function, a first candidate
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to a first operation key of the key device” as recited in claim 1. See Final
Act. 6–7 (citing Maeda Figs. 6, 9).
The Examiner reasons
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the system,
disclosed in Kanamori and Jeoung, to include: in response to a
second input at the key device and while the camera is in the
mode set in response to the first input at the key device, assign,
as a first function, a first candidate to a first operation key of the
key device, for the purpose of reducing the number of operations
in the operability of the operation device, as taught in Maeda.
Final Act. 7.
Appellant presents the following principal arguments:
Kanamori makes clear that these inputs correspond to separate
and distinct modes. That is, Kanamori’s alleged first input causes
the camera to enter a “function setting mode” and the alleged
second input causes the camera to enter a “still-image capture
mode.” Kanamori at ¶ [0057] and [0084]. As such, if the alleged
second input provides a functionality of assignment, this
functionality only exists in the still-image capture mode and does
not exist in the function setting mode.
Appeal Br. 14.
“Maeda provides an express explanation of ‘[t]he case of allocating a
function to the “basic 2” key K2 in the screen 8 of FIG. 6’ that makes clear
that the teachings of Maeda, alone or when combined with Kanamori and/or
Jeoung, are distinct from Appellant’s claims.” Appeal Br. 15 (citing Maeda
¶ 66); see also Appeal Br. 16 (“Maeda requires at least four inputs to assign
multiple functions to a single key. This is in contrast with Appellant’s claim
which requires only one input to assign multiple functions to multiple
keys.”).
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We determine the Examiner erred in rejecting claim 1 because we
determine the Examiner’s reasoning to modify the system disclosed in
Kanamori lacks a rational underpinning.
As shown in Kanamori, Figs. 28A–C, the “digital camera 10b is now
in the still-image capture mode approximately at the center [(Fig. 28A)] and
also displays symbols indicating the functions [(Fig. 28B, sub-screen 610)]
assigned to the switches [(Fig. 28C, switches 322, 324, 326, 328)] in the
vicinity of the respective switches.” Kanamori ¶ 192.
To the extent Kanamori teaches the recited assignments of claim 1,
Kanamori does not teach that the assignments occur “while the camera is in
the mode set in response to the first input at the key device” as recited in
claim 1. See Final Act. 5.
Maeda discloses assignments occur in a shortcut key registration
mode. See Maeda Figs. 6, 9. However, we do not readily see how one of
ordinary skill in the art would have modified Kanamori to achieve the
claimed invention. The Examiner’s reason to make the required modification
to Kanamori is “for the purpose of reducing the number of operations in the
operability of the operation device, as taught in Maeda” (Final Act. 7), but
we determine this reasoning lacks a rational underpinning because such a
modification to Kanamori would have required, for example, the
assignments of the still-image capture mode functions (Maeda Figs. 28A–C)
while still in the setup mode (Maeda Figs. 6A–C). However, the setup mode
already has its own functions that are specific to the setup mode. See Appeal
Br. 14 (“[I]f the alleged second input provides a functionality of assignment,
this functionality only exists in the still-image capture mode and does not
exist in the function setting mode.”); see also Appeal Br. 15 (“Maeda, alone
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or when combined with Kanamori . . . [is] distinct from Appellant’s
claims.”).
In the Examiner’s Answer, the Examiner apparently attempts to
remedy the above-discussed flaw in the Final Action, finding Kanamori’s
still-image capture mode corresponds to “in response to a first input at the
key device, set a mode for the camera” as recited in claim 1. See Ans. 4
(citing Kanamori Figs. 7A, 28A, ¶¶ 129, 150, 192). The Examiner further
finds Kanamori’s shift button 406 (Kanamori Fig. 11B) corresponds to the
recited “second input” in claim 1, and changes functions assigned to other
buttons. See Ans. 5–6 (citing Kanamori Figs. 11B, 28C, ¶¶ 129, 154, 192).
In reply, Appellant argues
the Examiner relies on several misinterpretations of Kanamori,
including incorrectly conflating the act of assigning multiple
functions automatically to multiple keys with assigning multiple
functions to a single key, and incorrectly conflating the act of
assigning a function to a key with the state in which a key has
previously been assigned with a function.
Reply Br. 3. Appellant further argues “shift button 406 merely cycles (or
‘shifts’) through multiple functions that have been previously assigned to a
button. The shift button 406 plays no role in the actual assignment of the
functions, despite the Examiner’s erroneous insistence to the contrary.”
Reply Br. 3 (citing Kanamori ¶ 154). Appellant further argues “Kanamori
teaches a distinct method of assigning functions to buttons: using ‘the
function setting mode.’” Reply Br. 3 (citing Kanamori ¶ 170).
Appellant further argues Kanamori’s function setting mode, in which
functions are assigned, is distinct from the still-image capture mode, in
which display symbols indicate previously assigned functions. Reply Br. 4
(“[I]n the still-image capture mode, various functions are present as
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Application 15/421,816
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associated with corresponding keys. Kanamori at [0192]. These functions
are present ‘simultaneously’ because they had previously been set while the
camera was in the function setting mode.”).
We find Appellant’s arguments in the Reply Brief, presented in
response to the Examiner’s findings in the Examiner’s Answer, persuasive.
Kanamori discloses “a shift button 406 for changing the functions
assigned to the buttons of the input unit 300.” Kanamori ¶ 154. Kanamori
further discloses “[t]he shift button 406 has a function of changing the
functions assigned to other buttons. Thus, this shift button 406 allows a
single button to have a plurality of functions.” Kanamori ¶ 154.
We interpret claim 1’s “assign” and “automatically assign” as the
linking of the functions to the operation keys. See Spec. 17:7–13, 20:14–17,
22:11–13. Thus, to the extent Kanamori’s still-image capture mode
corresponds to “in response to a first input at the key device, set a mode for
the camera” as recited in claim 1, Kanamori does not teach that the
assignments as recited in claim 1 occur while in the still-image capture
mode. In Kanamori, shift button 406 provides alternate functions to the
buttons but not the actual linking of those functions to the buttons—the shift
button 406 shifts between previously linked functions. See Kanamori ¶ 154.
We, therefore, do not sustain the Examiner’s rejection of claim 1.
We also do not sustain the Examiner’s rejection of claims 3–23, which
depend from claim 1.
We also do not sustain the Examiner’s rejection of independent claims
24, 27, and 28, for the same reasons discussed above with respect to claim 1.
We also do not sustain the Examiner’s rejection of claims 25 and 26,
which depend from claim 24.
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CONCLUSION
The Examiner’s decision to reject claims 1 and 3–28 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1, 3–28 103(a) Kanamori, Jeoung, Maeda 1, 3–28

REVERSED