SONY CORPORATION

Patent Trials and Appeals Board

Jun 10, 2020

2019002016 (P.T.A.B. Jun. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/911,126 02/09/2016 Ryogo Ito 880001-6272-US00 7452
134795 7590 06/10/2020
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
HALIYUR, PADMA
ART UNIT PAPER NUMBER
2698
NOTIFICATION DATE DELIVERY MODE
06/10/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DCipdocket@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOGO ITO, SHIRO ESHITA, MEGUMI TAKAGI,
KAZUMA AKAMATSU, and AYUMI YAMAMOTO
Appeal 2019-002016
Application 14/911,126
Technology Center 2600
BEFORE JEAN R. HOMERE, MICHAEL J. STRAUSS, and
GREGG I. ANDERSON, Administrative Patent Judges.
ANDERSON, 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 1–4, 6–11, and 13–19. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 5 and 12 were previously
cancelled.
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sony
Corporation of Tokyo, Japan. Appeal Br. 3.
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Application 14/911,126

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CLAIMED SUBJECT MATTER
The claims are directed to an imaging apparatus (e.g., a digital
camera) operated through a display of an information processing apparatus
(e.g., a smartphone) wirelessly connected to or physically attached to the
imaging apparatus. Spec. ¶¶ 6, 8, 27, 30–31.
The Specification describes “a display state of a display screen” where
the display is “switched.” Spec. ¶ 8. A “switch” is a change in attachment
position of the imaging apparatus on the information processing apparatus.
Id. ¶¶ 136–137, Fig. 15 (step 922). As a result of the imaging apparatus
being mounted on the display, a user is not able to view the portion where
the imaging apparatus is attached. Id. ¶ 111. The Specification explains that
the “display state” is “switched” so that the display can be seen. Id.

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Figure 13 of the drawings is reproduced below.

Figure 13 illustrates a display state that is switched based on where the
imaging apparatus is mounted on the display surface of the information
processing apparatus. Spec. ¶ 131. In “a,” the top figure of Figure 13,
imaging apparatus 100 is mounted on the left side position on the display
surface. Id. ¶ 132; see also id. ¶ 139 (describing Fig. 15 (step 922 (“Is There
a Change in this Attachment Position”)). The information on the display is
then “displayed on regions other than the region where the imaging
apparatus 100 is mounted,” i.e., the right side of the display. Id. ¶¶ 129, 132;
see also id. Fig. 12 (the same as “a” of Fig. 13). In “b,” the bottom figure of
Figure 13, the imaging apparatus is mounted on the right side position on the
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display and the display information is in the left position of the display. Id.
¶ 133, see also id. Fig. 14 (the same as “b” of Fig. 13).
Appellant states that independent claim 1 is representative of the other
independent claims 8 and 15–19. Appeal Br. 10–11, 14. Accordingly, claim
1 is illustrative, and is reproduced below with disputed limitations
emphasized:
1. An information processing apparatus, comprising:

a control unit which performs a first control for switching a
display state of a display screen for operating an imaging
apparatus based on whether or not the imaging apparatus is
mounted on the display screen of the information processing
apparatus on a display surface side of the information
processing apparatus, and

wherein, in a case where the imaging apparatus is mounted
on the display surface side of the information processing
apparatus, the control unit performs the first control for
switching the display state of the display screen based on a
position of the imaging apparatus on the display surface side of
the information processing apparatus.
Italicized language is in dispute.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yumiki US 2012/0307079 A1 Dec. 6, 2012
Anderson US 8,587,711 B2 Nov. 19, 2013

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REJECTION
Claims 1–4, 6–11, and 13–19 are rejected under 35 U.S.C. § 103 as
unpatentable over Yumiki and Anderson. Final Act. 4; Appeal Br. 9.
OPINION
Issue: Does Anderson teach “switching the display state of the display
screen based on a position of the imaging apparatus on the display surface
side of the information processing apparatus” as recited in Claim 1?

The Examiner relies on Anderson to teach the disputed limitation, the
“switching the display state” as recited in independent claim 1. Final Act. 6
(citing Anderson Figs. 13–16). The Examiner finds that Figures 13 and 15
of Anderson show that “the layout of the information processing apparatus
based on the position of the imaging apparatus, which is the eye piece in this
case.” Id.
Appellant notes the drawing figures of Anderson do not show
different positions of the eyepiece. Appeal Br. 12. Appellant reproduces the
relevant parts of Figures 13–16 of Anderson at page 13 of the Appeal Brief.
Appellant’s reproduction is shown below.
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The partial drawing of Figures 13–16 reproduced above with eyepiece
locations emphasized and eyepiece label 40 added. See, e.g., Anderson Fig.
13. As depicted, eyepiece 40 of Anderson is located by the concentric
circles in Figures 13–16 on a display screen. Id. at 5:39–42; see also Appeal
Br. 13 (citing Anderson column 5).
Because the position of the eyepiece does not change, Appellant
contends that Anderson fails to teach or suggest the switching the display
state limitation. Appeal Br. 12–13. The Examiner responds that “Anderson
clearly teaches that the display changes based on the ‘orientation’ of the
imaging device. Change in orientation could be interpreted as a change in
position as recited in the claim.” Ans. 16.
We are persuaded by Appellant’s argument. Anderson’s Figures 13–
16 show that the position of the eyepiece relative to the smart phone camera
display does not change. As the Examiner finds, Figures 14–16 show the
smart phone in different orientations, portrait with the eyepiece at the top of
the display, landscape, and portrait with the eyepiece at the bottom of the
display. Anderson, 2:1–9.
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We do not agree with the Examiner that a changed orientation (e.g.,
from portrait to landscape) teaches a switch of the display state. As
explained above, a “switch” is a change to the display based on a change in
attachment position of the imaging apparatus. See Spec. ¶¶ 136–137, Fig. 15
(step 922). The “display state,” what is displayed, is “switched” so that the
display can be seen and the switch is based on the position of the imaging
apparatus. Id. ¶ 111. Anderson’s changes of orientation do not result in any
change of position of the eyepiece or anything else shown on the display.
Because Appellant has shown at least one reversible error in the Examiner’s
rejection, we do not reach Appellant’s remaining arguments.
For the above reasons, we do not sustain the Examiner’s rejection of
independent claim 1, under 35 U.S.C. § 103. Independent claims 8 and 15–
19 all recite the same limitation and are also rejected using Anderson. See
Final Act. 10 (claim 8), 13–15 (claims 15–19); see also Appeal Br. 10–11
(arguing claim 1 is representative). Claims 2–4 and 6–7 depend directly or
indirectly from claim 1. Claims 9–11, 13 and 14 depend directly or
indirectly from claim 8. Accordingly, we do not sustain the rejection of
claims 2–4, 6–7, 9–11, 13, and 14 under 35 U.S.C. § 103 for the same
reasons discussed with respect to claim 1.
CONCLUSION
The Examiner’s rejection is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–11,
13–19
103 Yumiki, Anderson 1–4, 6–11,
13–19
Overall
Outcome
1–4, 6–11,
13–19

REVERSED