`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`07/25/2013
`
`Junichi Sato
`
`MFA—155US
`
`5557
`
`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
`
`SHIAU, SHENC
`
`PAPER NUIVIBER
`
`ART UNIT
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`2174
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`12/18/2015
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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
`
`PTOL—90A (Rev. 04/07)
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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
`
`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 9/29/2015.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)IZ| 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.
`
`3) I] Interview Summary (PTO-413)
`1) D 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)
`
`Paper No(s)/Mai| Date 7/25/2013 8/14/2015 10/25/2015.
`4) D Other: —-
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 201512128
`
`Disposition of Claims*
`5)|XI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s M 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 ://\va.usoto. ov/ atentS/init events"
`h/index.‘s
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`
`
`
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`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`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).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`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:
`
`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.
`
`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 communication is responsive to the amendment filed September 29, 2015.
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`Applicant has amended claims 1, 4 and cancelled claim 5.
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`It is respectfully submitted that
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`applicants amendments with respect to independent claim 1, at least the limitations " ......
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`detects an image section for operating a specific application which is determined in advance to
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`be highlighted ....... by using information corresponding to the specific application. . ..
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`necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS
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`ACTION IS MADE FINAL. Claims 1-4 are pending and presented for examination under the
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`pre-AIA first to invent provisions of which claim 1
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`is in independent form.
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`Response to Arguments
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`Applicant’s arguments filed September 29, 2015 have been fully considered but they are
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`moot in view of the new ground(s) of rejection directed to indefiniteness issue presented in the
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`claims. Furthermore, applicant argues that applicant's system uses information determined in
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`advance from a specific application in order to automatically highlight a specific image section
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`on the screen. However, the “automatically highlight” is not part of the claim limitations.
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`Moreover, “automatically highlight” is not the same as “to be highlighted", for example, user can
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`select an icon to be highlighted.
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`Claim Rejections - 35 USC § 1 12
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`1.
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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.
`
`

`

`Application/Control Number: 13/981 ,623
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`Page 3
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`Art Unit: 2174
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`2.
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`Claims 1 and 4 are 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 1, the limitation “ ..... an image section for operating a specific
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`application which is determined in advance to be highlighted from an image...” is unclear in
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`terms of does applicant mean: a) an image section for operating a specific application is
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`determined in advance? or b) an image section is determined in advance to be highlighted from
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`an image? an image of what? Regarding claim 4, the limitation “....in response to the image
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`section being highlighted, the operation conversion portion converts a size of a detection region
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`of the image section to a larger size detection region corresponding to a size of the highlighted
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`image section" is inconsistent with the paragraphs cited by the applicant as the support.
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`Furthermore, the paragraph cited by applicant is unclear. For example, paragraph [0026] stated
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`that
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`When the operation is an operation for the highlighted icon, the operation conversion
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`portion 125 converts the operation information into operation information for the icon before
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`highlighting and expands the operation information on the RAM ..... ” is unclear.
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`It "the
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`operation is an operation for the highlighted icon" then why this operation information being
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`converted into operation information for the icon? Furthermore, there is no description
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`regarding “size of a detection region of the image section” in any of the cited paragraphs by the
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`applicant.
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`Claim Rejections - 35 USC § 102
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`3.
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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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`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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`

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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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`(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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`4.
`
`Claims 1-3 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).
`
`In reference to independent claim 1:
`
`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 for operating a specific application which is determined in advance to be
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`highlighted from an image indicated by the video signal acquired by the image input part; an
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`image processor that highlights the image section detected by the image detector by using
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`information corresponding to the specific application; and an image display processor that
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`performs processing so that the image processed by the image processor is displayed on a
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`display device connected to the information display processing device (i.e.
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`a portable
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`player to be connected to an external audio/video system having a monitor screen which is
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`much larger than a screen of the portable player. Typically, such a large screen is a head unit of
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`an automobile audio/video system. . .. retrieve the music information (music title, artist’s name,
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`album title, etc.) from the portable player. .
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`convert the decoded music information to a video
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`signal by, for example, a video signal generator in the interface controller, to display the music
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`information on the monitor screen of the head unit. .
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`The controller 84 is able to provide
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`appropriate instructions to the relevant components depending on the signals received from the
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`remote control interface 86
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`user is able to perform various operations, such as skipping a
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`song, selecting a song, .
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`. .. highlight to move along the list to select one of the songs .....
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`Paragraphs 23-24, 37, 45, 52, 53).
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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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`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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`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 - Paragraphs 42, 48).
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`

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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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`Claim Rejections - 35 USC § 103
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`5.
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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:
`
`(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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`6.
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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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`7.
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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,.....(i.e.
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`the X, Y coordinates are input to the write controller 124. The X, Y coordinates are converted
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`to the address of the character. . .. the controller 84 instructs the communication section 82 to
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`send command signals to the portable player 10 to perform the requested operations. As the
`
`

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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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`new command is performed by the portable player 10, the display of the head unit 40 reflects
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`the change as necessary - Paragraphs 42, 48)
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`Cilluffo does not teach
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`..... wherein, in response to the image section being highlighted, the operation conversion
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`portion converts a size of a detection region of the image section to a larger size detection
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`region corresponding to a size of the highlighted image section. However, OH teaches
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`....Changing of the UI components may include changing at least any one of the color, shape,
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`size, position, and direction of the UI components.....the image display device 200 may magnify
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`the size of the UI components. Here, the image display device 200 may determine the
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`magnification ratio of the UI components in consideration of the size ratio between the image
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`display device 200 and the mobile terminal 100, and magnify and display the components. .
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`(Paragraphs 185-187).
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`It would have been obvious to one of ordinary skill in the art at the time
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`of the invention to modify Cilluffo with the teachings of OH with the motivation to allow a user to
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`conveniently and effectively view the image provided from the mobile terminal in a stable
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`environment in a vehicle (Paragraph 6).
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`8.
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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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`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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`

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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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`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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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant
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`is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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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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`If 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
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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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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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
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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.
`
`/Shen Shiau/
`
`Primary Examiner, Art Unit 2174
`
`