KYOCERA CORPORATION

Patent Trials and Appeals Board

Sep 23, 2020

2019004074 (P.T.A.B. Sep. 23, 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.
13/871,808 04/26/2013 Yasuhiko NISHIMURA 005000-K00078 2544
78198 7590 09/23/2020
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
JOSEPH, DENNIS P
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YASUHIKO NISHIMURA
____________________

Appeal 2019-004074
Application 13/871,8081
Technology Center 2600
____________________

Before JASON V. MORGAN, JON M. JURGOVAN, and
SCOTT RAEVSKY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–3, constituting all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
KYOCERA CORPORATION. Appeal Br. 2.
2 Our Decision refers to the Specification (“Spec.”) filed April 26, 2013 as
amended on June 10, 2015, August 10, 2015, and October 18, 2018; the
Final Office Action (“Final Act.”) mailed July 18, 2018; the Appeal Brief
(“Appeal Br.”) filed December 18, 2018; the Examiner’s Answer (“Ans.”)
mailed March 1, 2019; and the Reply Brief (“Reply Br.”) filed April 30,
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CLAIMED INVENTION
The claims relate to an electronic device (claims 1 and 2) and control
method (claim 3) for turning pages of a browser or electronic book. Spec.
¶¶ 2, 4. The electronic device has a display unit, a contact unit, and a control
unit. Id. ¶ 6, Fig. 1. The display unit overlaps the contact unit to form a
touchscreen. Id. ¶ 2. The electronic device also has a pressure detection
unit configured to detect pressure on the contact unit. Id. ¶ 7. When the
contact unit is touched by a contact object (stylus or finger), the control unit
begins sensing pressure with the pressure detection unit and turns the pages
for display commensurate with the amount of pressure sensed. Id. ¶¶ 20–21.
For example, relatively weak pressure may result in turning pages one page
at a time, while relatively strong pressure may result in turning two pages at
a time. Id. ¶¶ 23–24. The control unit repeats turning pages until contact is
no longer detected by the contact unit. Id. ¶ 22.
Claims 1 and 3 are independent, and claim 2 depends from claim 1.
The argued claim limitations are shown in italics:
1. An electronic device comprising:
a display unit;
a contact unit having a touch face and to be contacted by a
contact object, the touch face overlapping the display unit; and
a control unit configured to:
display a current page on the display unit,
perform a first step of detecting data corresponding to
pressure based on a press on the displayed current page on the
display unit overlapping the contact unit and,
perform a second step of determining a volume of pages
based on the detected data, displaying, directly after displaying
the current page, a next page that is a distance from the current

2019.
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page by the determined volume, and setting the next displayed
page as the current page, wherein
the control unit repeatedly performs the first step and the
second step without release of a contact on the contact unit while
repeating the first and second steps with a continuous
application of non-zero pressure of the contact on the contact
unit without a detected position of the contact object on the touch
face changing.3

Appeal Br. 12 (Claims App.).

REJECTIONS AND EVIDENCE4
Claims 1–3 stand rejected under 35 U.S.C. § 103 over McNamara
(US 2011/0039602 A1, February 17, 2011) and Kim (US 2012/0098836 A1,
April 26, 2012). Final Act. 3–10.
Claims 1–3 stand rejected under 35 U.S.C. § 103, based on alternative
findings and analysis, over Kim and McNamara. Final Act. 10–18.

3 We suggest the Examiner consider whether the Specification describes the
positive limitation of flipping pages as long as contact is detected by the
contact detection unit but does not support the negative limitation of flipping
pages “without release of a contact” under 35 U.S.C. § 112. See Spec. ¶ 22.
Also, we suggest the Examiner consider whether the Specification supports
continuous flipping of pages based on non-zero pressure sensed by the
pressure detection unit—the control unit determines that pages are to be
continuous flipped based on contact sensed by the contact unit. Id.
4 In the Final Office Action, claims 1–3 were rejected under 35 U.S.C.
§ 112. Final Act. 2–3. However, the Examiner withdrew the § 112 rejection
in the Answer. Ans. 3. Accordingly, the § 112 rejection is not before us and
we do not address it further in this decision.
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ANALYSIS
Standard of Review
We undertake a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, Appeal No.
2009-006013, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential).
§ 103 Rejections
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
A. § 103 Rejection over McNamara and Kim
Claim 1
For the emphasized language in claim 1 above, the Examiner finds
that McNamara teaches performing page flipping/skipping whenever a touch
is detected and while pressure is maintained, which suggests the limitation
of claim 1 reciting “without release of a contact on the contact unit.” Final
Act. 5–6 (citing McNamara ¶ 56). The Examiner also finds that Kim
teaches continuously turning pages based on sensed pressure, and the speed
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of turning pages varies by the amount of pressure applied. Id. at 6 (citing
Kim ¶ 48, Fig. 7 [step 703]). The Examiner finds it would have been
obvious to implement Kim’s continuous detection/variable speed concept for
user convenience in an e-book context. Id. at 6–7 (citing Kim ¶¶ 5, 33).
Appellant argues that McNamara and Kim fail to disclose
“consecutive control, without releasing the pressure, of volume to be
skipped encompassing one page to multiple pages based on the acquired
pressure data,” as allegedly recited in claim 1. Appeal Br. 7; Reply Br. 2.
Claim 1, however, recites no such limitation. Specifically, there is no
mention in claim 1 of skipping pages, or that the volume of pages skipped is
variable from one to multiple pages, or that the volume of pages skipped
varies according to the amount of pressure applied. Accordingly,
Appellant’s argument hinges on language that is not present in claim 1.
Limitations not appearing in a claim cannot be relied upon for patentability.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
We further note that, for applications in examination before the
Office, claim terms are given their broadest reasonable interpretation
consistent with the specification in which they appear. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The Specification
does not mention a “volume of pages” or “determining a volume of pages”
let alone define what these terms mean. Applying the plain meaning, for
example, the claimed terms could mean determining to flip a volume of one
page continuously while a user contacts a display screen with a
predetermined pressure, which is exactly what Appellant describes in the
Background (Spec. ¶ 2).
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Furthermore, as the Examiner finds (Final Act. 5–6), McNamara
teaches varying the number of pages to skip by pressing against a touch
surface with a certain magnitude of force (McNamara ¶¶ 75, 80, 81), and
Kim teaches turning pages continuously with variable speed according to the
applied pressure level (Kim ¶¶ 45, 48). Appellant’s argument does not
persuade us that the claim language distinguishes over the reference
teachings.
Accordingly, Appellant’s argument is not persuasive to show
Examiner error.
Claims 2 and 3
Appellant relies on the same argument for claims 2 and 3 as for claim
1. Appeal Br. 9. For the same reason, we find Appellant’s argument
unpersuasive. See 37 C.F.R. § 31.47(c)(1)(iv) (failure of appellant to
separately argue claims which appellant has grouped together shall
constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately).
B. § 103 Rejection over Kim and McNamara
Claim 1
For the emphasized language of claim 1 shown above, the Examiner
alternatively finds Kim discloses that the tempo of turning pages can be
controlled proportionally to the sensed pressure level on a dome key. Final
Act. 12 (citing Kim ¶ 45, Fig. 7 [steps 707, 709]). The Examiner states that
“Kim teaches of [sic] turning/transitioning the pages and one of ordinary
skill in the art would realize that it could easily/simply be designed to skip
the intervening pages and simply render the final page to be output” as a
matter of design choice. Final Act. 12–13. The Examiner further finds that
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McNamara, in the context of turning pages of an e-book, teaches the use of
pressure of varying magnitude on a touch screen to determine a proportional
number of objects, such as pages, to be skipped for display. Final Act. 13
(citing McNamara ¶¶ 25, 58, 71, 75, 80, Figs. 1, 5A–5D, 6, 7A). The
Examiner finds McNamara’s page turning/transitioning could be
implemented with Kim by simple substitution of one known device for
another performing the same or similar function. Id. The Examiner also
finds one of ordinary skill in the art would have combined McNamara’s
page turning with Kim to make the device “adjust[] to the user’s tastes,
making it a comfortable reading.” Final Act. 13–14.
Appellant again argues that “claim 1 provides consecutive control,
without releasing the pressure, of volume to be skipped encompassing one
page to multiple pages based on the acquired pressure data.” Appeal Br. 9.
As noted, and contrary to Appellant’s assertion, claim 1 does not recite the
argued feature. Specifically, there is no mention in claim 1 of skipping
pages, or that the volume of pages skipped is variable from one to multiple
pages, or that the volume of pages skipped varies according to the amount of
pressure applied. Accordingly, Appellant’s argument is not commensurate
in scope with the claim as recited, and is thus unpersuasive. See Self, supra.
Also, as noted, the broadest reasonable interpretation of the argued
claim terms could merely mean determining to flip a volume of one page
continuously while a user contacts a display screen with a predetermined
pressure, as described in the Background (Spec. ¶ 2).
In any case, as the Examiner finds (Final Act. 11–13), Kim teaches
turning pages continuously with variable speed according to the applied
pressure level (Kim ¶¶ 45, 48), and McNamara teaches varying the number
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of pages to skip by pressing against a touch surface with a certain magnitude
of force (McNamara ¶¶ 75, 80, 81). Appellant’s argument fails to
distinguish the claim over the combined teachings of Kim and McNamara.
Appellant also argues “a person of ordinary skill in the art referring to
Kim would not have combined Kim’s page turning with McNamara’s
skipping pages to arrive at the combination of features recited in claim 1.”
Appeal Br. 9. Specifically, Appellant argues that combining Kim and
McNamara would lead away from Kim and change Kim’s principle of
operation, which is “to provide paper-book-like operation to an e-book
reader device by displaying an action of turning the right page to the left as
if turning pages of a paper book.” Id. at 10 (citing MPEP § 2143.01 VI);
Reply Br. 4–6. Appellant does not explain, however, why skipping a group
of pages in an e-book is not similar to turning a group of pages of a paper
book. Thus, we are not persuaded that the combination of Kim and
McNamara leads away from Kim or would change Kim’s principle of
operation.
In the Reply Brief, Appellant argues that the claim recites displaying
the next page after skipping pages that are not displayed. Reply Br. 4–5. As
we noted above, and as Appellant argues (Appeal Br. 10), the claim is
sufficiently broad that the “volume” could be set to one page in which case
there are no skipped pages that are not displayed.
Accordingly, we do not find Appellant’s arguments persuasive to
show Examiner error.
Claims 2 and 3
Appellant relies on the same argument for claims 2 and 3 as for
claim 1 with respect to the Examiner’s alternative findings and analysis for
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rejecting claim 1 as obvious. Appeal Br. 11. For the stated reasons, we do
not find Appellant’s argument persuasive to show Examiner error. See
37 C.F.R. § 31.47(c)(1)(iv).

CONCLUSION
The Examiner’s rejections of claims 1–3 under 35 U.S.C. § 103 are
affirmed.
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–3 103 McNamara, Kim 1–3
1–3 103 Kim, McNamara 1–3
Overall
Outcome
1–3

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED