Sony Interactive Entertainment America LLC

Patent Trials and Appeals Board

Jul 9, 2021

2020006652 (P.T.A.B. Jul. 9, 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.
15/702,483 09/12/2017 Paul Timm SCEA17056US00 9604
136155 7590 07/09/2021
ROGITZ & ASSOCIATES
JOHN L. ROGITZ
4420 HOTEL CIRCLE COURT
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
GALKA, LAWRENCE STEFAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/09/2021 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):
John@rogitz.com
SCEAPatentDocket@playstation.sony.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL TIMM

Appeal 2020-006652
Application 15/702,483
Technology Center 3700
____________

Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
LEE L. STEPINA, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Sony Interactive Entertainment America LLC,1 appeals
under 35 U.S.C. § 134(a) from the Examiner’s non-final decision rejecting
claims 1–3, 6–8, 10–14, and 16–20. Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies Sony Corporation as the real party in interest. Appeal
Br. 2.
Appeal 2020-006652
Application 15/702,483

2
STATEMENT OF THE CASE
The Specification
Appellant’s Specification relates computer games and discloses “a
non-direct input method that is completely non-intrusive to the player’s
experience is desirable to alter computer game play based on spontaneous
player attention.” Spec. 1.
The Claims
Claims 1–3, 6–8, 10–14, and 16–20 are rejected. Non-Final Act. 1.
Claim 1 is representative and reproduced below.
1. A device comprising:
at least one processor;
at least one computer memory that is not a transitory
signal and that comprises instructions executable by the at least
one processor to:
receive from a camera at least one image of a
player of a computer simulation;
based at least in part on the image, determine a
direction of gaze of the player;
correlate the direction of gaze to at least one object
that is a game character in the computer simulation to
establish a correlation;
present at a first time a first sequence of character
encounters based on correlating the direction of gaze to a
first object; and
present at the first time a second sequence of
character encounters based on correlating the direction of
gaze to a second object.
Appeal Br. 9.
Appeal 2020-006652
Application 15/702,483

3
The Examiner’s Rejections
The following rejections, both pursuant to 35 U.S.C. § 103, are before
us:
(1) claims 1–3, 6, 8, 10–14, 16, 19, and 20 as unpatentable over
Saarikko2 and Starcraft Broodwar (or simply “Broodwar”)3 (Non-Final Act.
3); and
(2) claims 7 and 17 as unpatentable over Saarikko, Starcraft
Broodwar, and Jacob4 (Id. at 18).
In addition, the Examiner states that claim 18 is rejected (Non-Final
Act. 1) but does not present any analysis regarding claim 18. See generally
id.
DISCUSSION
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner has not
met that burden here. This Decision—a reversal—turns on the Examiner’s
articulation of the proposed modification and reasoning therefor.

2 US 2015/0185475 Al, published July 2, 2015 (“Saarikko”).
3 The Examiner identifies “Starcraft Broodwar” or simply “Broodwar” as a
videogame published in 1998 as evidenced by:
(1) https://en.wikipedia.org/w/index.php?title=StarCraft:_Brood_War
&_oldid=%20795538684;
(2) https://www.youtube.com/watch?v=ukbE7hZSOn0&list=
PLo6dUe-n7Er-0POryUIWuF0SB28L_so_LG&index=l; and
(3) https://www.youtube.com/watch?v=WFAw7frH1YM&list=
PLo6dUe-n7Er-0POryUIWuF0SB28Lso_LG&index=9.
4 US 2014/0096077 A1, published Apr. 3, 2014 (“Jacob”).
Appeal 2020-006652
Application 15/702,483

4
Accordingly, we heavily quote the pertinent Examiner findings and
conclusions below.
Saarikko teaches that “[e]ye tracking data can be used, for example, to
determine a point of gaze, which indicates one or more objects, real or
virtual, at which a user is gazing. In other words, eye tracking data can be
used to determine a direction or object at which the user is looking.”
Saarikko ¶69 (quoted at Non-Final Act. 6–7). Saarikko further teaches that
“an aspect of an application [can be] controlled or modified based on the eye
tracking data.” Saarikko ¶71 (quoted at Non-Final Act. 7). For example,
Saarikko explains, eye tracking data can be used to “enabl[e] a user to make
a selection from a list.” Saarikko ¶71 (quoted at Non-Final Act. 7).
The Examiner found that Saarikko discloses the subject matter of
independent claim 1 except “that Saarikko does not explicitly disclose that
the object is a game character or presenting at a first sequence of encounters
if the correlation is to a first game character or presenting a second sequence
of encounters if the correlation is to a second game character.” Non-Final
Act. 5–7 (citing Saarikko ¶¶20, 32, 34, 36, 42, 69, 71, Fig. 1).
Starcraft Broodwar is a videogame in which selections can be made,
according to Examiner, via a “user interface where clicking on a first
character will launch a first sequence of encounters and clicking on a second
character will launch a second sequence of encounters.” Non-Final Act. 8;
see also id. at 8–11 (reproducing screenshots of the cited Starcraft Broodwar
episodes).
The Examiner concluded:
Exemplary rationales that may support a conclusion of
obviousness include combining prior art elements according to
known methods to yield predictable results. Here both Saarikko
Appeal 2020-006652
Application 15/702,483

5
and Broodwar are directed to controlling a computer application
through a user interface. Saarikko teaches that gaze can be used
to perform input much like a computer mouse to navigate a menu
or direct an avatar. Broodwar teaches a user interface where
clicking on a character will launch a sequence of encounters. To
implement the user interface of Broodwar in the Saarikko
invention would be to combine a prior art element according to
a known method to yield a predictable result. Therefore, it would
have been obvious to a person having ordinary skill in the art as
of the effective filing date of the claimed invention to use the
Broodwar campaign user interface in the Saarikko invention. To
do so would be enable an intuitive user interface thereby
increasing the perceived entertainment value of the system.
Non-Final Act. 12 (emphasis added).
The Examiner’s proposed modification does not result in the subject
matter being claimed by Appellant. Instead, the proposed modification
would “implement the user interface of Broodwar” (which uses “clicking,”
not eye tracking or gaze) into Saarikko, presumably in lieu of Saarikko’s eye
tracking. Id. Further, the record lacks an adequate reason why a person of
ordinary skill in the art would have modified Saarikko in view of a specific
video game, namely Starcraft Broodwar, or a portion thereof. Accordingly,
we reverse the rejection of claim 1.5
The infirmities in the rejection of claim 1 propagate through the
remaining rejections of claims 2, 3, 6, 8, 10–14, 16, 19, and 20, all of which
we reverse.

5 Notably, the Examiner does not propose to modify the Starcraft Broodwar
videogame by incorporating Saarikko’s eye tracking feature in lieu of
Broodwar’s clicking. Nor does the record set forth a reason why a person of
ordinary skill in the art would have substituted selection by merely gazing at
an object in lieu of Starcraft Broodwar’s selection means of clicking.

Appeal 2020-006652
Application 15/702,483

6
Additionally, we reverse the rejection of claim 18, the basis for which
is not explained in the Non-Final Action.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 8,
10–14, 16,
19, 20
103 Saarikko, Starcraft
Broodwar
1–3, 6, 8,
10–14, 16,
19, 20
7, 17 103 Saarikko, Starcraft
Broodwar, Jacob
7, 17
Overall
Outcome
1–3, 6–8,
10–14, 16–
20

REVERSED