SONY COMPUTER ENTERTAINMENT INC.

Patent Trials and Appeals Board

Mar 15, 2021

2019005690 (P.T.A.B. Mar. 15, 2021)

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.
14/420,952 02/11/2015 Takayuki SHINOHARA SCED25674(100809-00703) 4819
26304 7590 03/15/2021
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
EL-BKAILY, AHMAD M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
03/15/2021 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):
doreen.devito@katten.com
nycuspto@katten.com
samson.helfgott@katten.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TAKAYUKI SHINOHARA
____________________

Appeal 2019-005690
Application 14/420,952
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5–9, 12, and 13, which constitute
all the claims pending in this application. Claims 3, 4, 10, and 11 have been
canceled (see Amendment filed April 17, 2018, pp. 2, 4). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Sony Computer Entertainment Inc.
(Appeal Br. 2).
Appeal 2019-005690
Application 14/420,952

2

STATEMENT OF THE CASE
Disclosed Invention and Exemplary Claim
Appellant’s disclosed invention generally relates to portable
multifunctional information processing devices like a portable game
machine, personal digital assistant (PDA), mobile or smart telephone (see
Title; Spec. ¶¶ 1, 2; Fig. 1). More particularly, Appellant’s disclosed and
claimed invention concerns electronic book content (e.g., pages) display and
manipulation, like the turning and scrolling of pages (see Spec. ¶ 4; Figs. 5,
6). Appellant recognizes that when large amounts of information, such as a
large number of pages of an electronic book, are being displayed on a
device, special processing is needed to simulate movement between pages
and a viewing direction with a page, such that it is “possible to view contents
with a feeling close to that of actually reading a book and with natural
operations” (Spec. ¶ 5; see also Figs. 5, 6).
Exemplary independent claim 5 under appeal, with emphases added to
key portions of the claim at issue, reads as follows:
5. An information processing device comprising:
an operation receiving circuit receiving contact operations
by a user on a touch pad on a display for displaying an image;
and
a display region managing circuit scrolling a screen in a
predetermined direction when a contact operation is received at
a single point within a predetermined area of the display for less
than a predetermined period of time,
wherein, if contact is maintained within the predetermined
area for more than the predetermined period of time, a) an
advance notice operation is displayed and b) after the contact
is released after the predetermined period of time, the screen is
scrolled in the predetermined direction greater than a
predetermined amount,
Appeal 2019-005690
Application 14/420,952

3

wherein the advance notice operation is a temporary
scrolling in the predetermined direction by the predetermined
amount.
Appeal Br. 12–13, Claims App. (emphases added). Independent claims 9
and 13 and dependent claims 6 and 7 recite an information processing device
(claims 6, 7), information processing method (claim 9), and non-transitory
computer readable recording medium storing a program (claim 13) having
limitations commensurate in scope with claim 5.
Exemplary independent claim 1 under appeal, with emphases and
bracketed lettering added to key portions of the claim at issue, reads as
follows:
1. An information processing device for displaying
contents formed by a plurality of pages, the information
processing device comprising:
a processor;
a display fully displaying two consecutive pages from the
plurality of pages;
an operation receiving circuit receiving, using the
processor a paging operation of changing the two consecutive
pages; and
an image rendering circuit updating a display image
according to the paging operation to display a second two
consecutive pages,
wherein, when the paging operation is a fast-forwarding
operation, the image rendering circuit culls pages prior to the
paging operation and fully displays an unculled page along with
a culled page during the fast-forwarding operation,
wherein the fast-forwarding operation comprises an
animation sequentially displaying pairs of pages in
predetermined time steps as cycles of page turning, and
[c)] during the animation, a same set of pairs of pages is
displayed in a first cycle of page turning and a second cycle of
page turning.
Appeal 2019-005690
Application 14/420,952

4

Appeal Br. 12, Claims App. (emphases and bracketed lettering added).
Independent claims 8 and 12 and dependent claim 2 recite an information
processing device (claim 2), information processing method (claim 8), and
non-transitory computer readable recording medium storing a program
(claim 12) having limitations commensurate in scope with claim 1.
As discussed below, limitations a) and b) (see e.g., claim 5), and
limitation c) (see e.g., claim 1), will be dispositive of the instant appeal.
The Examiner’s Rejections
(1) Claims 1 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the base combination of Chen et al. (US 2009/0267909
A1; published Oct. 29, 2009) (hereinafter, “Chen”), Seet et al. (US
2004/0138952 A1; published July 15, 2004) (hereinafter, “Seet”), and
Cranfill et al. (US 2012/0311438 A1; published Dec. 6, 2012) (hereinafter,
“Cranfill”). Final Act. 2–6.
(2) Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the base combination of Chen, Seet, and Cranfill, further
in view of St. Jacques, Jr. (US 2012/0124505 A1; published May 17, 2012)
(hereinafter, “St. Jacques, Jr.”). Final Act. 6–9.
(3) Claims 5, 7, 9, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the base combination of Chen and Kerr et al. (US
2010/0328224 A1; published Dec. 30, 2010) (hereinafter, “Kerr”). Final
Act. 9–11.
(4) Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the base combination of Chen and Kerr, further in view of
Shin et al. (US 2010/0295805 A1; published Nov. 25, 2010) (hereinafter,
“Shin”). Final Act. 11–12.
Appeal 2019-005690
Application 14/420,952

5

Appellant’s Dispositive Contentions
Appellant contends (see Appeal Br. 10; Reply Br. 4) the Examiner
erred in rejecting claims 1, 2, 8, and 12 under 35 U.S.C. § 103(a) based on
the failure of Cranfill, and thus the base combination of Chen, Seet, and
Cranfill, to teach or suggest displaying a same set of pairs of pages in a first
cycle of page turning and a second cycle of page turning during the
animation (see e.g., claim 1, limitation A).
Appellant also contends (see Appeal Br. 7–9; Reply 2) the Examiner
erred in rejecting claims 5–7, 9, and 13 under 35 U.S.C. § 103(a) based on
the failure of Kerr, and thus the base combination of Chen and Kerr, to teach
or suggest (i) displaying an “advance notice operation” (see e.g., claim 5,
limitation a)); and (ii) scrolling the screen in the predetermined direction
greater than a predetermined amount if user contact “is maintained within
the predetermined area for more than the predetermined period of time”
“after the contact is released after the predetermined period of time” (see
e.g., claim 5, limitation b)).
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 7–
11) and Reply Brief (Reply Br. 1–5), the following two dispositive issues are
presented on appeal:
(1) Has Appellant shown that the Examiner erred in rejecting claims
1, 2, 8, and 12 under 35 U.S.C. § 103(a) because Cranfill fails to teach or
suggest limitation c), as recited in claim 1, and as commensurately recited in
independent claims 8 and 12?
(2) Has Appellant shown that the Examiner erred in rejecting claims
5–7, 9, and 13 under 35 U.S.C. § 103(a) because Kerr fails to teach or
Appeal 2019-005690
Application 14/420,952

6

suggest limitations a) and b), as recited in claim 5, and as commensurately
recited in independent claims 9 and 13?

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 7–
11; Reply Br. 1–5), the Examiner’s rejection as to claims 1, 5, 8, 9, 12, and
13 (Final Act. 3–5, 7–13; Ans. 3–6, 8–14), and the Examiner’s response
(Ans. 3–6) to Appellant’s arguments in the Appeal Brief. We are persuaded
by Appellant’s contentions that the Examiner has not sufficiently shown that
(i) Cranfill teaches or suggests the subject matter recited in limitation c) of
claim 1, and the commensurate limitations found in independent claims 8
and 12 (see Appeal Br. 10; Reply Br. 4); and (ii) Kerr teaches or suggests the
subject matter recited in limitations a) and b) of claim 5, and the
commensurate limitations found in independent claims 9 and 13. Our
reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
Appeal 2019-005690
Application 14/420,952

7

Issue 1: Claims 1, 2, 8, and 12
In this light, and in view of the Examiner’s explanations as to the
basis for the rejection of claims 1, 8, and 12 (see Final Act. 2–9; Ans. 5–6),
it is clear the Examiner relies on Cranfill, and specifically paragraph 186 of
Cranfill, as teaching limitation c) of claim 1, and the commensurate
limitations of claims 8 and 12.
Limitation c) of claim 1 recites, “during the animation, a same set of
pairs of pages is displayed in a first cycle of page turning and a second cycle
of page turning.” The recited animation is required by claims 1, 8, and 12 to
be a “fast-forward operation” for “sequentially displaying pairs of pages in
predetermined time steps as cycles of page turning.” This operation is
shown by Appellant’s Figure 6(b) and described in paragraphs 48 through 50
of Appellant’s Specification (see also Appeal Br. 3, 4, 6 Summary of
Claimed Subject Matter) (citing Fig. 6(b) for support of limitation c)). At
time steps t1–t2 and t2–t3, pages 5 and 6 are both displayed on the device
together as a set, thus “a same set of pairs of pages [e.g., pages 5 and 6] is
displayed in a first cycle of page turning [e.g., the cycle occurring during
time step t1–t2] and a second cycle of page turning [e.g., the cycle occurring
during time step t2–t3]” (claims 1, 8, 12). Thus, “in a period from time t1 to
time t2 in which to display the original pages 3/4, pages 5/6 as a next image
are displayed as a dummy” (Spec. ¶ 49). “As a result, pages 5/6 . . . are
displayed consecutively in two time steps.” Appellant is performing this
“dummy” operation for the purpose of culling future needed pages at times
“when paging has reached a range where no image data is stored in the page
image data storage unit 120” (Spec. ¶ 44).
Appeal 2019-005690
Application 14/420,952

8

In stark contrast, Cranfill teaches displaying pages of an eBook on an
electronic device 1000 having a touch sensitive screen 1002 (see e.g., Figs.
2A, 2B, 12), such as by (i) displaying two consecutive pages side by side on
a display at the same time (see Fig. 2B, pages 360 and 361); and/or (ii)
“displaying a current page of text 1102 (e.g., page 63 of the eBook in
question)” (¶ 230) and then allowing a “user’s finger 1004 to concurrently
expose a portion of the eBook’s next page 1104 (e.g. page 64 of the eBook
in question) while partially obscuring the text on the current page 1102 with
a portion of the current’s page back 1106” (¶ 230). Thus, while Cranfill
displays consecutive pages and animates a page turn, Cranfill does not
display the same pages (e.g., 1102 and 1104) during two consecutive cycles
of page turning as required by claims 1, 8, and 12. Stated another way,
Cranfill’s teachings are akin to Appellant’s Figure 5 operations, but not
Appellant’s Figure 6(b) operations.
Paragraph 186 of Cranfill, relied upon by the Examiner as teaching
the recited limitation, is reproduced below:
The resulting behavior of a scrubbing operation either can
cause page flipping animations to be displayed while the user is
dragging his/her finger along the scrubbing bar, or the
animations can be suspended or otherwise not used, thereby
helping to reduce confusion that might be caused by excessive
display changes. Alternatively, or in addition, the page display
can remain static until the user has stopped dragging his/her
finger on the scrubbing bar, at which point the display would
respond with a single jump to the newly selected page (rather
than showing images or suggestions of the intervening page flip
transitions).

Cranfill ¶ 186 (emphasis added). This portion of Cranfill, however, is silent
as to, during the animation, displaying “a same set of pairs of pages” in two
Appeal 2019-005690
Application 14/420,952

9

consecutive cycles of page turning. At best, the Examiner leaves us to
speculate as to how or why one of ordinary skill in the art would modify
Cranfill to meet limitation c) recited in claim 1, and the commensurate
limitations recited in claims 8 and 12. See In re Warner, 379 F.2d at 1017;
Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished)
(“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the
examiner . . . invite[s] the [B]oard to examine the application and resolve
patentability in the first instance.”).
As a result, we are persuaded by Appellant’s arguments (see Appeal
Br. 9–10; Reply Br. 2–4) that, although Cranfill’s paragraph 186 describes
keeping the page display static or suspending animation during scrubbing,
“[t]here is nothing stating that during the page flipping animation the same
set of pairs of pages is displayed in a first cycle and a second cycle” (Appeal
Br. 10) of page turning, where “[a] cycle of page turning, according to the
specification, is the completion of a page turning operation from a first set of
pages to a second set of pages using an animation)” (Appeal Br. 10; see also
Reply Br. 3 (showing a cycle of page turning as depicted in Figure 5)). And,
as a result, we are persuaded by Appellant’s contention that the Examiner’s
interpretation of limitation c) “is completely divorced from the explanation
of these features provided in Appellant’s [S]pecification” (Reply Br. 4).
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claims 1, 2, 8, and 12 under 35 U.S.C. § 103(a) over the base
combination of Chen, Seet, and Cranfill, because Cranfill fails to teach or
suggest limitation c), as recited in claim 1, and as commensurately recited in
independent claims 8 and 12.
Issue 2: Claims 5–7, 9, and 13
Appeal 2019-005690
Application 14/420,952

10

In rejecting claims 5, 9, and 13, the Examiners relies upon Kerr’s
paragraphs 57 and 60 (see Final Act. 10) as teaching or suggesting
wherein, if contact is maintained within the predetermined
area for more than the predetermined period of time, a) an
advance notice operation is displayed and b) after the contact is
released after the predetermined period of time, the screen is
scrolled in the predetermined direction greater than a
predetermined amount,

Claims 5, 9, 13 (emphases added).
Appellant’s claims 5, 9, and 13 require that “the advance notice
operation is a temporary scrolling in the predetermined direction by the
predetermined amount” (see e.g., claim 5) (emphasis added). Appellant
describes an advance notice operation at paragraphs 62 and 64, as well as
paragraphs 66 through 70 (describing the operations performed in the
flowchart of Figure 9, including the advance notice operation at step S34), of
the Specification. Appellant describes the “advance notice operation” as
being an action of providing advance notice of scrolling for the purpose of
“giv[ing] the user an opportunity for judgment in response to the advance
notice operation” (Spec. ¶ 64). Appellant’s Specification states, in pertinent
part
the advance notice operation in S34 is an operation of scrolling
by a predetermined amount in a direction in which to perform
scrolling when the finger is directly removed, such as a direction
of a next specified display region or the like.

Spec. ¶ 66. Appellant further discloses that when a long pressing operation
has been performed, the advance notice operation is “a movement by a
predetermined amount in a direction in which scrolling is intended to be
performed” (Spec. ¶ 70).
Appeal 2019-005690
Application 14/420,952

11

Kerr pertains to media (e.g., music) playback using an input interface
(see Figs. 7A–D, 8A, 8B; Title; Abstract), including a fast-forward option (¶
1). Kerr’s paragraph 57 describes operations for a display 750 of an
electronic device shown in Figure 7C. Kerr teaches that (i) a user can fast-
forward media “by selecting and holding (e.g., tap and hold or a long tap)
next option 764” (¶ 57); and (ii) “[t]he user can also skip to the previous or
next media item available for playback (e.g., in a playlist) by selecting
without holding (e.g., single tap) options 764 and 766” (¶ 57). Thus, Kerr
teaches at least the recited long press operation (i.e., maintaining contact for
more than a predetermined amount of time), just not conditions a) and b).
Kerr’s paragraph 60 describes “visual feedback for a fast-forward touch
instruction” (¶ 60) as shown in the display 800, including play icon 810 and
fast-forward icon 860, in Figures 8A and 8B (see ¶¶ 60, 61).
Although Kerr teaches the recited long press, claims 5, 9, and 13
require, and Kerr is silent as to, (1) displaying an advance notice operation
(i.e., an action of providing advance notice of scrolling); and (2) scrolling
the screen in the predetermined direction greater than a predetermined
amount “after the contact is released after the predetermined period of time
[i.e., the period of time for which the long press contact is maintained]”
(claims 5, 9, 13) (emphasis added). Kerr does not even pertain to electronic
books (but to music). We agree with Appellant (see Reply Br. 1–2) that it is
unreasonable to interpret the claimed scrolling as being taught by Kerr’s
fast-forwarding operations, and that even “if the long press of Kerr were
implemented in the setting of a book, it would cause ‘fast-forwarding’ or
faster scrolling which would terminate when the user released the long
Appeal 2019-005690
Application 14/420,952

12

press” (Reply Br. 2).2 Thus, Appellant’s contention that “Kerr actually
teaches the opposite of the claimed ‘long hold’ feature in that scrolling
caused by the long press stops when contact is released” (Reply Br. 2).
At best, the Examiner’s proposed combination leaves us to speculate
as to how or why one of ordinary skill in the art would modify Kerr to meet
the long press operation set forth in limitations a) and b) of claim 5, and as
commensurately set forth in claims 9 and 13. See In re Warner, 379 F.2d at
1017; Ex parte Braeken, 54 USPQ2d at 1112.
In view of the foregoing, we agree with Appellant’s contentions that
(i) in Kerr “[t]here is no additional ‘scrolling’ after the contact is released”
(Appeal Br. 7); (ii) Kerr’s “initiation of a fast forwarding operation clearly
does not meet the definition of the ‘advance notice operation’ required by
the claim[s]” (Appeal Br. 7); “[a] skip is a different operation than a scroll as
known in the art and even specified in Kerr” (Appeal Br. 9); (iv) “Kerr does
not teach the advance notice operation, which is clearly defined in the claim”
(Appeal Br. 9); and (v) because nothing further occurs in Kerr after contact
is released, Kerr fails to teach further scrolling after contact is released as
required by claims 5, 9, and 13 (see Appeal Br. 9).

2 See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)
(stating that “the Board cannot construe the claims so broadly that its
constructions are unreasonable under general claim construction principles”
and that giving claim terms “a strained breadth in the face of the otherwise
different description in the specification [is] unreasonable” (internal
quotation marks omitted)); TriVascular, Inc. v. Samuels, 812 F.3d 1056,
1062 (Fed. Cir. 2016) (“While the broadest reasonable interpretation
standard is broad, it does not give the Board an unfettered license to interpret
the words in a claim without regard for the full claim language and the
written description.”).
Appeal 2019-005690
Application 14/420,952

13

In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claims 5, 7, 9, and 13 under 35 U.S.C. § 103(a) over the base
combination of Chen and Kerr, because Kerr fails to teach or suggest
limitations a) and b), as recited in claim 5, and as commensurately recited in
independent claims 9 and 13.
Summary
As a result, based on the record before us, Appellant has shown the
Examiner erred in rejecting independent claims 1, 5, 8, 9, 12, and 13, and
thus claims 2, 6, and 7 depending respectively therefrom, under 35 U.S.C.
§ 103(a), and we cannot sustain the Examiner’s obviousness rejections of (i)
claims 1, 2, 8, and 12 over the base combination of Chen, Seet, and Cranfill;
and (ii) claims 5–7, 9, and 13 over the base combination of Chen and Kerr.

CONCLUSION
For all of the reasons above, we hold as follows:
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 8 103(a) Chen, Seet,
Cranfill
1, 8
2, 12 103(a) Chen, Seet,
Cranfill, St.
Jacques, Jr.
2, 12
5, 7, 9, 13 103(a) Chen, Kerr 5, 7, 9, 13
6 103(a) Chen, Kerr, Shin 6
Overall
Outcome
1, 2, 5–9,
12, 13

REVERSED