Ex Parte Aoyagi et al

Patent Trial and Appeal Board

Sep 19, 2016

12851655 (P.T.A.B. Sep. 19, 2016)

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.
12/851,655 08/06/2010 Hidetoshi AOYAGI D5620-00094 2155
8933 7590 09/19/2016
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
KOHLMAN, CHRISTOPHER J
ART UNIT PAPER NUMBER
2699
MAIL DATE DELIVERY MODE
09/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HIDETOSHI AOYAGI and TAKEHIRO ANDO
____________________

Appeal 2014-008770
Application 12/851,6551
Technology Center 2600
____________________

Before MARC S. HOFF, DAVID M. KOHUT, and CATHERINE SHIANG,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Examiner’s non-final
rejection of claims 7–12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention is a portable computer including means for
determining whether a main body of the portable computer was rotated in a
horizontal plane by predetermined degrees and means for determining that a
request of change of dominant hand was inputted by that rotation. The
portable computer further comprises a memory for storing a current

1 The real party in interest is Square Enix Co., Ltd.
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dominant hand setting state, and means for reversing a game image and
displaying the reversed image after switching the dominant hand setting. See
Abstract; Spec. 21–22.
Claim 7 is exemplary of the claims on appeal:
7. A portable computer having a main body and a display that also
serves as a touch panel input means provided on the main body, the input
means having a user interface element displayed at a predetermined display
position on the display corresponding to a dominant hand setting state, when
a user touches the user interface element, the portable computer performing
processing steps in a predetermined game program corresponding to the
touched user interface, said portable computer comprising:
a program memory that stores said predetermined game program;
a game progress controller that displays a predetermined game image
on the display based upon the game program read out of the program
memory and controls a progress of a game scenario of the game program
based upon a command inputted through the user interface;
an attitude detecting sensor that detects an attitude of the main body
on a horizontal plane in real time and generates a signal that signifies the
attitude of the main body on the horizontal plane;
a first memory that stores a current dominant hand setting state of the
portable computer, wherein the current dominant hand setting state is one of
two dominant hand setting states wherein one dominant hand setting state is
for a right-handed person and the other dominant hand setting state is for a
left-handed person;
a second memory that sets said display positions of the user interface
elements on the display, the display positions corresponding to a right-
handed person and a left-handed person, said second memory also storing a
user interface controlling program corresponding to the display position of
each user interface element;
a rotation angle determiner that computes change of the attitude of the
main body on the horizontal plane over time based upon signals from the
attitude detecting sensor when the main body is rotated on the horizontal
direction while the game progress controller is controlling the progress of
the game scenario of the game program, and determines whether the main
body has been rotated by predetermined degrees on the horizontal plane;
a dominant hand setting switching request determiner that determines
that the user has inputted a request to switch the dominant hand setting when
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the rotation angle determiner determines that the main body has been rotated
by the predetermined degrees on the horizontal plane, said dominant hand
setting switching request determiner including a clocking determiner that
measures an elapsed time duration from start to completion of the rotational
motion of the main body, wherein then the clocking determiner determines
that the main body has rotated by the predetermined degrees within a
predetermined time duration, the dominant hand setting switching request
determiner determines that the user has inputted the request to switch the
dominant hand setting state;
a dominant hand setting switcher that switches the current dominant
hand setting state in the first memory to the other of the two dominant hand
setting states when the dominant hand setting switching request determiner
has determined that the user has inputted the request to switch the dominant
hand setting state;
a control subject image reverser that displays an image on the display
by reversing the image that is being displayed by 180 degrees when the
current dominant hand setting state is switched to the other of the two
dominant hand setting states; and
a user interface element server switcher that switches the display
position of the user interface according to the switched current dominant
hand setting state and the user interface element switcher also switching the
user interface element controlling program stored in the second memory into
the user interface element controlling program that corresponds to the new
display position of the user interface element;
whereby while said game progress controller is executing said
predetermined game program and controlling the progress of the game
scenario of the game program, when the main body is rotated by
predetermined degrees on the horizontal plane,
(A) said rotation angle determiner computes change of the
attitude of the main body on the horizontal plane over time based on the
signal from the attitude detecting sensor,
(B) said dominant hand setting switching request determiner
determines that the user has inputted a request to switch the dominant hand
setting,
(C) said dominant hand setting switcher switches the current
dominant hand setting state in the first memory to the other of the two
dominant hand setting states,
(D) said control subject image reverser displays an image on the
display by reversing the image that is being displayed by 180 degrees,
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(E) said user interface element switcher switches the display
position of the user interface to a new display position that corresponds to
the switched current dominant hand setting state, and
(F) said user interface element switcher switches the user
interface element controlling program stored in the second memory to the
user interface element controlling program that corresponds to the new
display position of the user interface element.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Kim US 2008/0119237 A1 May 22, 2008
Sachs US 2009/0265671 A1 Oct. 22, 2009
Nasiri US 2009/0303204 A1 Dec. 10, 2009

Claims 7 and 9–12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim and Nasiri.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Nasiri, and Sachs.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed July 3, 2014) the Reply Brief (“Reply Br.,” filed Aug. 11,
2014) and the Examiner’s Answer (“Ans.,” mailed July 23, 2014) for their
respective details.
ISSUES
Appellants argue that Kim’s disclosure of user interface display
region 320 being switched from the right side of the display to the left side
of the display, upon sufficient rotation of the portable device, does not
necessarily require or even suggest that Kim stores a dominant hand setting
in a memory. App. Br. 5–6. Appellants contend that such operation only
requires controller 180 to display the user interface display region 320 and
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information display region 310 in the correct orientation that matches the
detected orientation of the mobile terminal. App. Br. 7.
Appellants’ contentions present us with the following issue:
Does Kim inherently disclose a first memory that stores a current
dominant hand setting state of the portable computer?

PRINCIPLES OF LAW
“Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
ANALYSIS
We are not persuaded by Appellants’ argument that Kim fails to
disclose “a first memory that stores a current dominant hand setting state of
the portable computer.” See App. Br. 5–7.
Appellants argue that Kim’s disclosure of user interface display
region being switched from the right side of the display to the left side of the
display when the device is rotated 180 degrees “does not necessarily require
or even suggest that Kim’s device stores a dominant hand setting state in a
memory.” App. Br. 6. Appellants contend that Kim’s described operation
“does not require or suggest that any setting state relating to the user
interface display region 320 is stored in a memory.” Id. at 7.
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We disagree with Appellants’ position. Instead, we agree with the
Examiner’s finding that “[i]n order for the controller to act on the change of
the orientation of the device to switch the position of the user interface
display region, the change of orientation must be stored in local memory that
is accessible by the controller.” Ans. 2. We find that Kim need not
explicitly refer to the position of the user interface display region in order for
the Examiner (or this Board) to construe such disclosure as being equivalent
to the claimed “current dominant hand setting state.” Id. We find that for
Kim to operate as disclosed, information indicating the position of the user
interface display region (i.e., either left or right) must necessarily be stored
in a memory, such that when the device is rotated sufficiently (e.g., 180
degrees as illustrated in Figure 12), the device accesses the memory to
retrieve the current position of the user interface display region, and then re-
draws the device screen with the user interface display region on the other
side of the screen. The new position of the user interface display region
(i.e., the claimed “current dominant hand setting state”) would subsequently
be stored as well.
We conclude that the Examiner did not err in rejecting claim 7, as
well as claims 9–12 not separately argued, over Kim and Nasiri. We sustain
the Examiner’s § 103 rejection.
CLAIM 8
Appellants’ only argument concerning claim 8 is that Sachs does not
remedy the deficiencies of Kim with respect to the rejection of claim 7.
App. Br. 8. Because we conclude supra that no such deficiency exists, we
sustain the rejection of claim 8 over Kim, Sachs, and Nasiri, for the same
reasons given with respect to the rejection of claim 7, supra.
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CONCLUSIONS
Kim inherently discloses a first memory that stores a current dominant
hand setting state of the portable computer.
ORDER
The Examiner’s decision to reject claims 7–12 is affirmed.
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