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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`13/981,623
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`07/25/2013
`
`Junichi Sato
`
`MFA—155US
`
`5557
`
`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
`
`SHIAU, SHENC
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`PAPER NUIVIBER
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`ART UNIT
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`2174
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/06/2015
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ptocorrespondence @ratnerprestia.c0m
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`PTOL—90A (Rev. 04/07)
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`
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`
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`Applicant(s)
`Application No.
` 13/981,623 SATO ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2174SHEN SHIAU first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 7/25/2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) I] Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/Osb)
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`Paper No(s)/Mai| Date 07/25/2013 4/05/2015.
`4) D Other: —-
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`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20150628
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`Disposition of Claims*
`5)|XI Claim(s) L5is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L5 is/are rejected.
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`is/are objected to.
`
`) )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atentS/init events"
`h/index.‘s
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`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
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`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attach ment(s)
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`Application/Control Number: 13/981 ,623
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`Page 2
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`Art Unit: 2174
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`DETAILED ACTION
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`This is in response to application filed on July 25, 2013, said application claims foreign
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`priority application no. JP2011-244827 filed on November 8, 2011. Claims 1-5 are pending of
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`which claims 1 and 5 are in independent form. Claims 1-5 are presented for examination under
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`the pre-AIA first to invent provisions.
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`Information Disclosure Statement
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`1.
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`The information disclosure statement filed 07/25/2013 fails to comply with 37 CFR
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`1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-
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`patent literature publication or that portion which caused it to be listed; and all other information
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`or that portion which caused it to be listed. There is no copy provided for the listed document
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`“International Search Report for Application No. PCT/JP2012/006823”.
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`It has been placed in
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`the application file, but the information referred to therein has not been considered.
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`Claim Rejections - 35 USC § 1 12
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`2.
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`3.
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`Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the
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`invention. Regarding claim 4, the limitation “....wherein the image processor registers position
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`coordinates of the image after highlighting of the image to be highlighted and the size of the
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`Application/Control Number: 13/981 ,623
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`Page 3
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`Art Unit: 2174
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`image in the external terminal information management portion; and wherein the operation
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`conversion portion converts the operation information for the image section after highlighting of
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`the image to be highlighted into operation information before highlighting of the image section to
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`be highlighted based on the position coordinates where the image section to be highlighted
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`which is managed by the external terminal information management portion is detected and the
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`size of the image and the position coordinates of the image section after highlighting of the
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`image to be highlighted and the size of the image" is unclear what applicant intends to claim.
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`4.
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that
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`Claim Rejections - 35 USC § 102
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
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`5.
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`Claims 1-3, 5 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by
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`Cilluffo (US PGPub. No. 2008/0075432).
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`In reference to independent claim 1:
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`Cilluffo teaches an information display processing device comprising: an image input part that
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`acquires a video signal outputted from an external terminal; an image detector that detects an
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`image section to be highlighted from an image indicated by the video signal acquired by the
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`image input part; an image processor that highlights the image section detected by the image
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`detector; and an image display processor that performs processing so that the image processed
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`by the image processor is displayed on a display device connected to the information display
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`
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`Application/Control Number: 13/981 ,623
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`Page 4
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`Art Unit: 2174
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`processing device.
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`(i.e.
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`a portable player to be connected to an external audio/video
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`system having a monitor screen which is much larger than a screen of the portable player.
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`Typical/y, such a large screen is a head unit of an automobile audio/video system. . .. retrieve the
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`music information (music title, artist’s name, album title, etc.) from the portable player. .
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`convert the decoded music information to a video signal by, for example, a video signal
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`generator in the interface controller, to display the music information on the monitor screen of
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`the head unit. .
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`The controller 84 is able to provide appropriate instructions to the relevant
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`components depending on the signals received from the remote control interface 86
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`user is
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`able to perform various operations, such as skipping a song, selecting a song, .
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`. .. highlight to
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`move along the list to select one of the songs..... Paragraphs 23-24, 37, 45, 52, 53).
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`In reference to claim 2:
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`Cilluffo teaches the information display processing device according to claim 1, further
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`comprising: an operation conversion portion that is connected to a user interface accepting a
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`user's operation, wherein when the operation conversion portion acquires operation information
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`inputted from the user interface, the operation conversion portion converts the operation
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`information into operation for the video signal acquired by the image input part (i.e.
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`Based on
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`the data from the controller 84 ....the X, Y coordinates are input to the write controller 124. The
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`X, Y coordinates are converted to the address of the character. . .. the controller 84 instructs the
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`communication section 82 to send command signals to the portable player 10 to perform the
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`requested operations. As the new command is performed by the portable player 10, the display
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`of the head unit 40 reflects the change as necessary - Paragraphs 42, 48).
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`In reference to claim 3:
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`
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`Application/Control Number: 13/981 ,623
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`Page 5
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`Art Unit: 2174
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`Cilluffo teaches the information display processing device according to claim 1, further
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`comprising: an external terminal information management portion that manages the image
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`section to be highlighted on the display device, wherein the image detector detects the image
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`section by referring to the image section to be highlighted which is managed by the external
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`terminal information management portion (i.e. ....the controller 84 instructs the communication
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`section 82 to send command signals to the portable player 10 to perform the requested
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`operations. As the new command is performed by the portable player 10, the display of the
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`head unit 40 reflects the change as necessary .
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`- Paragraphs 42, 48).
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`In reference to independent claim 5:
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`An information display processing device comprising: an image input part that acquires a video
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`signal outputted from an external terminal; an image detector that detects an image section to
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`be detected from an image indicated by the video signal acquired by the image input part; an
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`operation conversion portion that generates operation information for the image section and
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`converts the operation information into operation for the video signal acquired by the image
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`input part; and an image display processor that performs processing so that the image inputted
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`from the image input part is displayed on a display device connected to the information display
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`processing device.
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`- Claim 5 contain substantially similar subject matter as in claim 1 and 2 combined, and is
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`rejected along the same rationale.
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`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`Application/Control Number: 13/981 ,623
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`Page 6
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`Art Unit: 2174
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`7.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103(a) are summarized as follows:
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`99°F)?
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`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating obviousness or
`nonobviousness.
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`8.
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`Claim 4 is rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable over
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`Cilluffo (US PGPub. No. 2008/0075432) in view of OH et al. (US PGPub. No. 2012/0242474;
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`Filed: Oct. 5, 2011) (hereinafter OH).
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`In reference to claim 4:
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`Cilluffo teaches the information display processing device according to claim 3, further
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`comprising: an operation conversion portion that is connected to a user interface accepting a
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`user's operation and that converts operation information inputted from the user interface,
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`wherein the image detector registers position coordinates where the image to be highlighted is
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`detected (i.e.
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`Based on the data from the controller 84 ....the X, Y coordinates are input to
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`the write controller 124. The X, Y coordinates are converted to the address of the character. . ..
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`the controller 84 instructs the communication section 82 to send command signals to the
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`portable player 10 to perform the requested operations. As the new command is performed by
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`the portable player 10, the display of the head unit 40 reflects the change as necessary
`
`-
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`Paragraphs 42, 48)
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`
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`Application/Control Number: 13/981 ,623
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`Page 7
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`Art Unit: 2174
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`Cilluffo does not teach
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`and the size of the image in the external terminal information management portion; wherein the
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`image processor registers position coordinates of the image after highlighting of the image to be
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`highlighted and the size of the image in the external terminal information management portion;
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`and wherein the operation conversion portion converts the operation information for the image
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`section after highlighting of the image to be highlighted into operation information before
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`highlighting of the image section to be highlighted based on the position coordinates where the
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`image section to be highlighted which is managed by the external terminal information
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`management portion is detected and the size of the image and the position coordinates of the
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`image section after highlighting of the image to be highlighted and the size of the image.
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`However, OH teaches “ ..... Changing of the UI components may include changing at least any
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`one of the color, shape, size, position, and direction of the UI components. .
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`. ..the image display
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`device 200 may magnify the size of the UI components. Here, the image display device 200
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`may determine the magnification ratio of the UI components in consideration of the size ratio
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`between the image display device 200 and the mobile terminal 100, and magnify and display
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`the components.....” (Paragraphs 185-187).
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`It would have been obvious to one of ordinary skill
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`in the art at the time of the invention to modify Cilluffo with the teachings of OH with the
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`motivation to allow a user to conveniently and effectively view the image provided from the
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`mobile terminal in a stable environment in a vehicle (Paragraph 6).
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`9.
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`Examiner’s note: Examiner has pointed out particular references contained in the prior
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`art of record in the body of this action for the convenience of the Applicant. However, any
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`citation to specific, pages, columns, lines, or figures in the prior art references and any
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`interpretation of the references should not be considered to be limiting in any way. A reference
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`
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`Application/Control Number: 13/981 ,623
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`Page 8
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`Art Unit: 2174
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`is relevant for all it contains and may be relied upon for all that it would have reasonably
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`suggested to one having ordinary skill in the art. In re Heck, 699 F.2d 1331, 1332-33, 216
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`USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Leme/son, 397 F.2d 1006,1009, 158 USPQ
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`275, 277 (CCPA 1968)). Applicant, in preparing the response, should consider fully the entire
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`reference as potentially teaching all or part of the claimed invention, as well as the context of the
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`passage as taught by the prior art or disclosed by the Examiner.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure are included in form PTO-892.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to SHEN SHIAU whose telephone number is (571)270-5318. The examiner
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`can normally be reached on Monday to Friday, 8am to 5pm EST.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Dennis Chow can be reached on (571)272-7767. The fax phone number for the
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`organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAlR only. For more information about the PAlR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
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`
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`Application/Control Number: 13/981 ,623
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`Page 9
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`Art Unit: 2174
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
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`would like assistance from a USPTO Customer Service Representative or access to the
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`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1000.
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`/Shen Shiau/
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`Primary Examiner, Art Unit 2174
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`