Patent Trial and Appeal Board Overturns an Examiner’s “Analogous Art” Rationale for an Obviousness Rejection
April 24, 2017
In Ex Parte Nishi (Appeal 2017-002166 in US. Ser. No. 14/540,758), the Patent Trial and Appeal Board (“PTAB”) overturned the Examiner’s obviousness rejection under 35 U.S.C. § 103(a), holding that the Examiner failed to sufficiently articulate the legal conclusion of obviousness.
Summary of the Inventive Concept
The inventive concept is directed to a system that includes an electronic device (e.g., tablet computer) and a mobile terminal (e.g., smartphone) capable of wireless communication (e.g., near field communication, or “NFC”) with the electronic device. The electronic device includes a display that displays a preview screen, or “specific screen” information. In an example embodiment, when the mobile terminal is close enough to the electronic device to establish NFC, the mobile device can request the electronic device transmit operation input information associated with the preview screen. The mobile terminal includes a display that presents the operation input information (e.g., touch inputs functions), allowing a user to select “operation content,” or editable feature, from the mobile terminal to alter the preview screen of the electronic device. The operation content can be transmitted to the electronic device, and the display of the electronic device is updated based on the received operation content. In the example embodiment, because the mobile terminal receives the operation input information, the display of the electronic device does not need to present the operation input information.
The Examiner rejected Appellant’s Claim 1 (below) under 35 U.S.C. § 103(a) as being obvious over U.S. Pat. Pub. No. 2014/0085654 (hereinafter “Miyazaki”) and U.S. Pat. Pub. No. 2010/0309515 (hereinafter “Odagawa”). Claim 1 is as follows:
An operation input system, comprising an electronic device having a display portion and a mobile terminal capable of near distance wireless communication with the electronic device, wherein
the electronic device is provided with the display portion which, when proximity of the mobile terminal is detected in a state of displaying a specific screen on the display portion, displays the specific screen but not operation input information associated with the specific screen in advance, and a transmitting portion which transmits the operation input information to the mobile terminal,
the mobile terminal is provided with a display portion which displays an operation input screen based on the operation input information transmitted from the electronic device, and a transmitting portion which transmits operation content instructed by a user from the operation input screen to the electronic device, and
the electronic device is provided with an updated portion which updates the specific screen in in accordance with the operation content transmitted from the mobile terminal.
The Examiner relied upon Miyazaki to teach a system having a mobile terminal that, when close enough to initiate wireless communication with an electronic device, displays a keyboard (i.e., “operation input information” in Claim 1). In conjunction with the display keyboard of the mobile terminal, the electronic device would also display a keyboard. However, Claim 1 recites, in relevant part, “the display portion [of the electronic device], displays the specific screen but not operation input information associated with the specific screen [presented on the display of the electronic device].”
The Examiner relies upon Odagawa to teach the italicized limitations not found in Miyazaki. Odagawa teaches a display screen with a preview image that has no operation input information (i.e., no keyboard input). The Examiner reasoned that Odagawa provides a reason to combine in that from Odagawa, “the user can easily preview the preview image of the content displayed on the display screen without having to perform complicated operations.” (Reference characters omitted). The Examiner also reasoned that Miyazaki could be combined with Odagawa because both Miyazaki and Odagawa are directed to analogous art.
After the Examiner issued a Final Rejection, the Appellant appealed to the PTAB.
The PTAB relied in part upon the U.S. Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (hereinafter “KSR”). In that case, the Court held that obviousness must be based upon “an apparent reason to combine the known elements in the fashion claimed.” See KSR, 550 U.S. at 417-18. In response to the Examiner stating that Odagawa teaches that “the user can easily preview the preview image…without having to perform complicated operations,” the PTAB countered that the Examiner’s reasoning “explains why one would provide preview image on Odagawa’s display screen, but it falls short of explaining why one of ordinary skill in the art would have replaced Miyazaki’s display of a keyboard on the display screen with Odagawa’s preview image.” (Reference characters omitted). The Examiner’s first rationale recites language taken directly from Odagawa. However, the PTAB reasoned the Examiner provides an explanation as to why Odagawa uses this particular implementation, as opposed to providing a reason why one of ordinary skill in the art at the time of the invention ( would combine or modify the teachings of Miyazaki with the teachings of Odagawa, as required by KSR.
Regarding the Examiner’s “analogous art” rationale, the PTAB relied upon In re Bigio, 381 F.3d. 1320 (Fed. Cir. 2004), which held that “[a]lthough it is required that references analogous in order to be combined in an obviousness rejection, this alone is not sufficient to establish a reason to combine references in an obviousness analysis.” In re Bigio, 381 F.3d. at 1325. In following In re Bigio, the PTAB held that the Examiner’s conclusory statement, without further reasoning, that Miyazaki and Odagawa are directed to similar inventive concepts, i.e., analogous art, is insufficient to provide a rationale for one of ordinary skill in the art to combine the teachings of Miyazaki and Odagawa.
The PTAB reversed the Examiner’s obviousness rejection of Claim 1.
Many, if not most, Office Action rejections rely upon an obviousness type rejection using a combination of two or more prior art references. When reading the Office Actions, patent practitioners should carefully review for the following to make sure that the Examiner: 1) actually provides a reason to combine the references; 2) provides a reason why one of ordinary skill in the art would combine the references (example: it would have been obvious to one of ordinary skill in the art at the time of the Applicant’s invention to modify [something from] of Reference A with [some teaching] of Reference B in order to [improve some aspect of] Reference A); and 3) does not simply rely upon a statement that “the two references are analogous art.” Otherwise, the PTAB is likely to reverse the Examiner’s rejection of obviousness for any of the three aforementioned reasons.