Ex Parte Sakoh et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10566630 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORIYUKI SAKOH and TAKESHI IWATSU
____________

Appeal 2010-008257
Application 10/566,6301
Technology Center 2100
____________

Before JOHN A. JEFFERY, JAMES D. THOMAS, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed January 31, 2006. The real party in interest is Sony
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/566,630

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3-11, and 13-18, which are all the claims
remaining in the application, as claims 2, 12, and 19 are cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was
held September 1, 2010.
We AFFIRM.
The present invention relates to a data display control device. (Spec.,
1.)
Claim 1 is illustrative:
1. A data display control device comprising:
a database storing a plurality of text data with at least a first
length;
search means for searching the database for at least one piece of
text data with the first length, based on an input search key;
a hardware display including a display area configured to
display text data from the database, the display are having a width;
control means for obtaining partial text data with a second
length that is smaller than the first length and corresponding to the
width of the display area, out of the at least one piece of text data
found by the search means, from the database, and to display the
partial text data on the display area; and
scrolling means for horizontally scrolling display of the partial
text data and remaining text data on the display area after receiving a
command from a user, the remaining text data being all the text data
other than the partial text data, the scrolling means obtaining the
remaining text data from the database and automatically horizontally
scrolling the remaining text data after the partial text data, the
scrolling means automatically vertically scrolls other pieces of text
data after automatically horizontally scrolling the remaining text data
after the partial text data.
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Application 10/566,630

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Appellants appeal the following rejection:
Claims 1, 3-11, and 13-18 under 35 U.S.C. § 102(e) as being
anticipated by Tsuk (US Patent Application Publication No. US
2003/0076301 A1, Apr. 24, 2003).

FACTUAL FINDINGS
Specification
1a. Appellants’ Specification discloses that “it is configured that the
CPU 11 of the client terminal CT obtains the part of data after the 32 [Byte]
from the music information storage area of the hard disk drive 21 and
displays it only when the instruction for subsequent scrolling is given from
the user.” (Spec. 21.)
1b. Appellants’ Specification further discloses that “it can
immediately scroll to display longitudinally on the display 17, following the
user’s instruction after the first title is displayed.” (Id.)
Tsuk
2a. Tsuk discloses that “[a] rotational user action supplied by a user
via a user input device can provide accelerated scrolling.” (Abstract.)
2b. In Tsuk, “[t]he direction of scrolling can vary depending on
implementation. For example, scrolling may be implemented vertically (up
or down) or horizontally (left or right).” (¶ [0068].)

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Application 10/566,630

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ANALYSIS
Claims 1, 3-11, and 13-18
Appellants argue claims 1, 3-11, and 13-18 as a group (App. Br. 5-8).
For claims 3-11 and 13-18, Appellants repeat the same argument made for
claim 1 (id.). We will, therefore, treat claims 3-11 and 13-18 as standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young,
927 F.2d 588, 590 (Fed. Cir. 1991).

Appellants contend that Tsuk “fails to describe any automatic
scrolling.” (App. Br. 7, see also Reply Br. 2.)
Issue: Did the Examiner err in finding that Tsuk discloses that “the
scrolling means automatically vertically scrolls other pieces of text data after
automatically horizontally scrolling the remaining text data after the partial
text data” as recited in claim 1?
The Examiner found:
The vertical and horizontal steps are argued to be automatic.
But the first section of the scrolling step describes the partial
text data to be the “remaining text data”, which is horizontally
scrolled after receiving “a command from a user.” Thus, the
step of scrolling the data horizontally and vertically is initiated
by a user command and not automatically.
(Ans. 7.)
In essence, Appellants contend that the claimed horizontal and vertical
scrolling steps are automatically performed without any instantaneous user
input and Tsuk only describes manual scrolling (App. Br. 7.)
We start by noting that Appellants have not shown any support or
description in Appellants’ Specification for the claimed “automatically
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scrolling.” The record shows that the claimed “automatically horizontally
scrolling” and “automatically vertically scrolls” limitations were added by
amendments filed May 29, 2008 and September 19, 2008, respectively.
However, Appellants have not shown and we do not readily find where such
an “automatic” feature is supported in Appellants’ Specification as originally
filed. In fact, Appellants’ representative was asked during an Oral Hearing
held September 1, 2010 to identify in the disclosure where such an
“automatic” feature was described and no response was noted.
On the other hand, Appellants’ Specification discloses that data is
displayed “only when an instruction for subsequent scrolling is given from
the user” (FF 1a-1b). In other words, Appellants’ Specification merely
discloses scrolling when receiving a user’s instruction. We find that the
above-noted disclosure in Appellants’ Specification implies that user input is
somehow translated to a scrolling function, i.e., there is a nexus between the
two.
The Examiner found that the claimed scrolling steps are initiated by a
user and not solely automatic (Ans. 7). We agree. Given the lack of
disclosure regarding “automatically scrolling” and the explicit recitation
“after receiving a command from a user” (claim 1) (emphasis added), we
find that the scope of claim 1 includes receiving a scrolling instruction prior
to any scrolling action, either horizontally or vertically.
A claim meaning is reasonable if one of ordinary skill in the art would
understand the claim, read in light of the specification, to encompass the
meaning. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Here, we find that one of ordinary skill in the art would not
understand the claim to encompass “automatically scrolling” in an isolated
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sense, but rather a scrolling function that requires some type of user
instruction first, given the explicit disclosure of receiving a scrolling
instruction prior to any scrolling.
Tsuk discloses a rotational user input device for providing accelerated
scrolling (horizontally and vertically) (FF 2a-2b). In other words, Tsuk
discloses receiving a command from a user in the form of a rotational user
action prior to displaying a scrolling function. In Tsuk, the rotational user
action is transformed into linear action with respect to a graphical user
interface (Tsuk, Abstract). We find that one of ordinary skill in the art
would recognize that the transformation of the user action to linear action is
done automatically by the system. Thus, we find that Tsuk’s scrolling
function is consistent with the claimed features as described in Appellants
Specification. As such, we find that the claimed “automatically horizontally
scrolling” and “automatically vertically scrolls” feature reads on Tsuk’s
above-noted scrolling functions.
Based on the record before us, we find that the Examiner did not err in
rejecting claim 1. Accordingly, we affirm the rejection of claim 1, as well as
claims 3-11 and 13-18 which fall therewith.

DECISION
We affirm the Examiner’s § 102 rejection.
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) (2009).

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AFFIRMED

llw

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