Xerox Corporation

Patent Trials and Appeals Board

Mar 15, 2022

2021001188 (P.T.A.B. Mar. 15, 2022)

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. 16/229,172 12/21/2018 Wyatt C. Coe 20180896US01 6767 81368 7590 03/15/2022 GIBB & RILEY, LLC Frederick W. Gibb, III, Esq. 550M Ritchie Highway, #286 Severna Park, MD 21146 EXAMINER WILLIAMS, MIYA J ART UNIT PAPER NUMBER 2677 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): support@gibbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WYATT C. COE and DONALD A. BROWN Appeal 2021-001188 Application 16/229,172 Technology Center 2600 Before ALLEN R. MACDONALD, JEAN R. HOMERE, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, 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 1-20, which are all the claims under consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Xerox Corporation. Appeal Brief filed July 13, 2020 (“Appeal Br.”) at 3. Appeal 2021-001188 Application 16/229,172 2 CLAIMED SUBJECT MATTER Summary The subject matter of Appellant’s application “generally relate[s] to document processing and more particularly to using a multi-part screen to display the document processing status alphanumerically and graphically.” Spec. ¶ 1.2 In particular, a top screen displays a machine/job state with a graphic using alphanumeric characters and a side screen displays a machine/job state using a graphic lacking alphanumeric characters. Spec., Fig. 1. The side screen “graphic item can indicate these machine/job states using facial expressions, engineering and/or math icons, etc.” Spec. ¶ 6. The claimed subject matter uses the “side display portion to provide a much more easily recognizable graphic item (only, and lacking alphanumeric characters) that is indicative of the same machine/job state that is provided alphanumerically on the top display. Such a graphic item is more easily recognizable from a distance than are characters or symbols.” Appeal Br. 14. Exemplary Claims Claims 1, 8, and 15 are independent. Claims 1, 2, 3, and 8, reproduced below with disputed limitations italicized, exemplify the claimed subject matter: 2 In addition to the Appeal Brief noted above, we refer to: (1) the originally filed Specification filed January 18, 2017 (“Spec.”); (2) the Non-Final Office Action mailed January 10, 2020 (“Non-Final Act.”); (3) the Examiner’s Answer mailed October 5, 2020 (“Ans.”); and (4) the Reply Brief filed December 7, 2020 (“Reply Br.”). Appeal 2021-001188 Application 16/229,172 3 1. An apparatus comprising: a document processing apparatus; a user interface connected to an exterior of the document processing apparatus, wherein the user interface includes a screen having at least two planar display portions that lie in different planes; and a processor operatively connected to the screen, wherein a first display portion of the at least two planar display portions is positioned on a top of the document processing apparatus and a second display portion of the at least two planar display portions is positioned on a side of the document processing apparatus, wherein the side is approximately perpendicular to the top, and wherein the processor is adapted to automatically cause the first display portion to display alphanumeric characters of a machine/job state of the document processing apparatus, and automatically cause the second display portion to only display a graphic item lacking alphanumeric characters indicative of the machine/job state while the first display portion displays the alphanumeric characters of the machine/job state. 2. The apparatus according to claim 1, wherein the graphic item indicates the machine/job state of the document processing apparatus using facial expressions. 3. The apparatus according to claim 1, wherein the graphic item indicates the machine/job state of the document processing apparatus using engineering and math icons. 8 An apparatus comprising: a document processing apparatus; a curved user interface connected to at least two non- parallel surfaces of an exterior of the document processing apparatus, wherein the curved user interface includes a screen having at least two planar display portions; and a processor operatively connected to the screen, wherein a first display portion of the at least two planar display portions is positioned on a top of the document Appeal 2021-001188 Application 16/229,172 4 processing apparatus and a second display portion of the at least two planar display portions is positioned on a side of the document processing apparatus, wherein the side is approximately perpendicular to the top, and wherein the processor is adapted to automatically cause the first display portion to display alphanumeric characters of a machine/job state of the document processing apparatus, and automatically cause the second display portion to only display a graphic item lacking alphanumeric characters indicative of the machine/job state while the first display portion displays the alphanumeric characters of the machine/job state. Appeal Br. 28-29 (Claims Appendix). REFERENCES AND REJECTIONS The Examiner rejects claims 1, 3-8, 10-15, and 17-20 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Isogai et al. (US 2008/0003010 A1, published Jan. 3, 2008) (“Isogai”) and Kariya (JP 2005-274811A, published June 10, 2005). Final Act. 3-11. The Examiner rejects claims 2, 9, and 16 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Isogai, Kariya, and Webb et al. (US 2013/0097229 A1, published Apr. 18, 2013) (“Webb”). Id. at 11-12. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in view of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2020). Appellant does not persuade us that the Examiner errs in the obviousness rejections of claims 1-20. We adopt as our own the findings and reasons set Appeal 2021-001188 Application 16/229,172 5 forth by the Examiner for these claims to the extent consistent with our analysis herein. Final Act. 3-12; Ans. 12-16. We add the following discussion primarily for emphasis. Obviousness Rejection of Claims 1, 3-7, 15, and 17-20 The Examiner relies on the combined teachings of Isogai and Kariya to teach or suggest “automatically cause the first display portion to display alphanumeric characters of a machine/job state” and “automatically cause the second display portion to only display a graphic item lacking alphanumeric characters indicative of the machine/job state while the first display portion displays the alphanumeric characters of the machine/job state,” as recited in claim 1. Final Act. 4-5 (citing Isogai ¶¶ 75, 154, 179, 183 and Kariya ¶¶ 23-26, 29, Fig. 2.). The Examiner determines that sufficient motivation existed “to include displaying a printer state on a top display and a side display, as taught by Kariya with graphic items, such as images, animation or symbols, as taught by Isogai.” Id. at 5. According to the Examiner, the “motivation for doing so would have been to allow[] the state of the apparatus to be shown in a user-friendly manner if the user is close to the printer or a distance away from the printer.” Id. Appellant argues the rejection is improper because: i.) “Isogai discloses multiple screens 109a-109d that display the same message” but “does not disclose providing the same message or machine/job state using alphanumeric characters on one display while only a graphic item lacking alphanumeric characters indicative of the same machine/job state is provided on a different display.” (Appeal Br. ¶ 8); and Appeal 2021-001188 Application 16/229,172 6 ii.) “Kariya discloses providing the user with a larger alphanumeric message ‘TONER’ 76 that is based on the same message displayed on the smaller screen 74 shown in Figure 2 that is shown below to the left.” (Id. ¶ 9). The Examiner responds by summarizing the findings from Isogai and Kariya that teach or suggest the limitation at issue: Isogai teaches an operation portion [Fig 20 (119), par 0042] accepting an input from the user and displaying information and a message display portion [Fig 20 (109a), par 0042], where a message may be formed of images, animation, characters or document, or a message using symbols may be displayed on the message display portion [par 0179, 0183]. While, Kariya teaches a first display that will display “Please Replenish Toner” [Fig 2 (74), par 0023] and a second display that will only display “TONER” [Figs 2 (76), 6B, par 0029, 0038]. Where Kariya’s display is the same message, but displayed differently. Therefore, incorporating Kariya's first display with Isogai’s operation portion that displays information to then display “Please Replenish Toner” and Isogai’s message display portion that displays images, animation, or a message using symbols. Ans. 12. Appellant’s arguments are not persuasive of reversible Examiner error. The Examiner finds Isogai discloses using multiple screens to display a machine/job state using alphanumeric characters. The Examiner finds Isogai also teaches displaying on the screen state information using a graphic item lacking alphanumeric characters. See Ans. 12 (“a message may be formed of images, animation, characters or document, or a message using symbols”) (citing Isogai ¶¶ 179, 183). The Examiner further relies on Isogai to teach a first display portion on a top of the photocopier and second display portion on a side of the photocopier. Final Act. 4 (citing Isogai Appeal 2021-001188 Application 16/229,172 7 ¶¶ 42, 52, 151, Figs. 4, 20). Kariya also teaches a first display portion on a top of the photocopier and second display portion on a side of the photocopier. Kariya Figs. 2, 6. Appellant’s argument that (i) Isogai fails to teach a first display with alphanumeric characters and a second display lacking alphanumeric characters as, claimed, fails to address the Examiner’s findings based on the combined teachings of Isogai and Kariya, and, in particular, fails to address the finding that Isogai’s display of animation, images, or symbols teaches displaying a graphic item lacking alphanumeric characters. Ans. 12. Similarly, Appellant’s argument that (ii) Kariya displays the same message using alphanumeric characters on both displays fails to address the Examiner’s findings based on the combined teachings of Isogai and Kariya. Thus, Appellant’s arguments overlook that the rejection is based, not on Isogai and Kariya separately, but on the combined teachings of Isogai and Kariya. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Next, Appellant argues that: while the larger characters provided on the sides of printers by Isogai and Kariya may address the problem described above, the claimed devices and methods provide a better solution by only displaying a graphic item that can be more easily and more intuitively recognized from a distance on the side display portion. Appeal Br. ¶ 15; Reply Br. ¶¶ 2, 3. This argument is not responsive to the Examiner’s findings because the Examiner does not “rely only on large characters provided on the side of printers,” as Appellant alleges. Id. Rather, the Examiner finds Isogai’s Appeal 2021-001188 Application 16/229,172 8 display of images, animations, or symbols teaches “the second display portion to only display a graphic item lacking alphanumeric characters indicative of the machine/job state,” as recited in claim 1. Final Act. 4 (citing Isogai ¶¶ 179, 183); Ans. 13. For the reasons discussed, Appellant has not persuaded us of reversible error in the Examiner’s obviousness rejection of independent claim 1. Accordingly, we sustain the Examiner’s rejection of that claim, as well as the rejection of independent claim 15 and dependent claims 3-7 and 17-20, which Appellant does not argue separately with particularity, except as discussed otherwise below. Obviousness Rejections of Claims 8 and 9-14 The Examiner finds Isogai teaches or suggests “a curved user interface connected to at least two non-parallel surfaces of an exterior of the document processing apparatus, wherein the curved user interface includes a screen having at least two planar display portions,” as recited in independent claim 8. Final Act. 7 (citing Isogai ¶¶ 52, 152, Fig. 20). Appellant argues that Figure 20 of Isogai does not disclose a curved display because “paragraphs 0151-0156 of Isogai that describe Figure 20 only state that the separate displays 109a-l09d may ‘face in different directions.’” Appeal Br. ¶ 21 (citing Isogai ¶ 156). Figure 20 of Isogai shows an external view of a document processing apparatus and is reproduced below with annotations added. Appeal 2021-001188 Application 16/229,172 9 Figure 20 of Isogai shows operation portion 119 and message display portions 109a and 109d. The Examiner finds “Isogai teaches an operation portion . . . accepting an input from the user and displaying information and a message display portion . . . , where based on Applicant’s Figures 1-9 and paragraph 0022, Isogai’s operation portion and message display portion are considered a multi-part screen that is curved.” Ans. 13-14 (citing Isogai ¶ 42, Fig. 20 (119), (109a)). Appellant’s argument that Isogai’s paragraphs 151-156 do not disclose a curved display is unpersuasive because it fails to address the Examiner’s findings based on Figure 20 of Isogai. We agree with the Examiner that Figure 20 of Isogai depicts the operation portion as a curved user interface because at least the corner of operation portion 119 is Appeal 2021-001188 Application 16/229,172 10 illustrated in Figure 20 as curved. Moreover, we agree with the Examiner’s finding that operation portion 119 includes a first display portion positioned on a top of the document processing apparatus and either of message display portions 109a or l09d teach a second display portion positioned on a side of the document processing apparatus. Final Act. 7; Ans. 14. Next, Appellant argues that: even if Isogai were interpreted to disclose a curved display, such would be different than that claimed because claim 8 specifies that (emphasis added) “the curved user interface includes a screen having at least two planar display portions; and . . . the first display portion . . . is positioned on a top of the document processing apparatus and a second display portion . . . is positioned on a side of the document processing apparatus.” In contrast, as can be seen in Figures 1 and 20 of Isogai . . . the multiple displays are positioned on the device's sides. Appeal Br. ¶ 22. This argument is not persuasive because it fails to address the Examiner’s finding that operation portion 119 includes a first display portion positioned on a top of the document processing apparatus. Final Act. 7; Ans. 14. We sustain, therefore, the Examiner’s rejection of independent claim 8 and of claims 9-14, which depend from claim 8 and are not argued separately, except as discussed otherwise below. Obviousness Rejection of Claims 3, 10, and 17 The Examiner finds Isogai teaches or suggests “wherein the graphic item indicates the machine/job state of the document processing apparatus using engineering and math icons,” as recited in dependent claim 3. Final Act. 5 (citing Isogai ¶¶ 73, 75, 152, 183). In particular, the Examiner finds Appeal 2021-001188 Application 16/229,172 11 “Isogai teaches a message display portion . . . where a message may be formed of characters or document, or a message using symbols may be displayed on the message display portion.” Ans. 14 (citing Isogai ¶¶ 42, 183 and Fig. 20 (109a)). Appellant argues Isogai displaying of symbols fails to teach or suggest using engineering and math icons: Isogai’s brief mention of “symbols” would not motivate one to specifically use “engineering and math icons” as the “graphic item that indicates the machine/job state of the document processing apparatus” as is claimed because while “symbols” (whatever that undefined term may mean in Isogai) may be displayed in Isogai, such does not imply that the machine/job state could be indicated by icons known with familiarity in engineering and math technologies. Appeal Br. ¶ 28. The Examiner responds that symbols, as discussed in Isogai, include “marks, objects, visual images or signs representing an idea including a ‘+’” as commonly used in math and engineering. Ans. 14. Appellant’s argument is unpersuasive. As Appellant notes, an example of “engineering and math icons” is “shown in Appellant’s Figure 4 where ‘plus’ icons are used for eyes).” Appellant, however, does not address the Examiner’s finding (Ans. 14) that Isogai teaches displaying symbols “including a ‘+’ as commonly used in math and engineering” (see generally Reply Br. 1-5.). Appellant therefore does not show that Isogai fails to teach or suggest “using engineering and math icons,” as recited in claim 3. We sustain, therefore, the Examiner’s rejection of dependent claim 3, and of claims 10, and 17, which include language similar to claim 3 and are not argued separately. Appeal 2021-001188 Application 16/229,172 12 Obviousness Rejection of Claims 2, 9, and 16 The Examiner relies on the combined teachings of Isogai, Kariya, and Webb to teach or suggest “wherein the graphic item indicates the machine/job state of the document processing apparatus using facial expressions,” as recited in dependent claim 2. Final Act. 5. The Examiner determines “it would have been obvious to a person of ordinary skill in the art to include displaying faces based on a printer’s status, as taught by Webb” and “[t]he motivation for doing so would have been to allow[] the state of the apparatus to be shown to each user in a user-friendly manner.” Final Act. 12 (citing Webb ¶ 109). Appellant argues “Webb does not provide suggestion or motivation to modify Isogai and Kariya to disclose a side display portion displaying only a facial expression lacking alphanumeric characters indicative of the machine/job state while the top display portion displays alphanumeric characters of the same machine/job state.” Appeal Br. ¶ 35. According to Appellant, Webb would not have modified Isogai and Kariya to change from providing the same message in the same way on multiple screens. In other words, if Webb modified Isogai and Kariya to provide a facial representation, it would be shown in the same way (with or without characters/symbols) on all display portions. Id. ¶ 36. Appellant’s arguments are not persuasive for several reasons. First, Appellant’s argument that “Webb does not provide suggestion or motivation to modify Isogai and Kariya,” fails to address the actual motivation to combine the teachings of the references provided by the Examiner. Final Act. 12. Appeal 2021-001188 Application 16/229,172 13 Second, Appellant’s argument that “Webb does not provide suggestion or motivation to modify Isogai and Kariya” appears to allege that the Examiner must rely exclusively on the cited references for the motivation to combine. Appeal Br. ¶ 35. This argument is misplaced because the Supreme Court has rejected the rigid application of the “teaching, suggestion, or motivation” test for obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 422 (2007). Instead, the Court has held that rather than being bound by the express teachings of the prior art, the Examiner “can consider the inferences and creative steps a person of ordinary skill in the art would employ” and that “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Third, Appellant’s argument that “Webb would not have modified Isogai and Kariya to change from providing the same message in the same way on multiple screens,” includes no citation to any of the references. Appeal Br. ¶ 36. This argument, therefore, is not supported by evidence found in the record and is, instead, supported only by attorney argument, which “cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In conclusion, the Examiner has provided reasoning to show that combining Webb’s teaching of displaying faces based on a printer’s status with teachings from Isogai and Kariya to arrive at the claimed apparatus would have been well within the grasp of a person of ordinary skill in the relevant art because the references “are from the same field of endeavor.” Final Act. 12. And the Examiner determines that the benefit of combining Appeal 2021-001188 Application 16/229,172 14 the teachings of the references would have been apparent, as discussed above. Id. Appellant’s arguments attacking the motivation to combine fails to persuasively rebut the Examiner’s reasoning. We sustain, therefore, the Examiner’s rejection of dependent claim 2, and of claims 9 and 16, which include language similar to claim 2 and are not argued separately. CONCLUSION We sustain the Examiner’s rejections of claims 1-20 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-8, 10-15, 17-20 103 Isogai, Kariya 1, 3-8, 10- 15, 17-20 2, 9, 16 103 Isogai, Kariya, Webb 2, 9, 16 Overall Outcome 1-20 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