Ex Parte Homma et al

Patent Trial and Appeal Board

Feb 29, 2016

13246473 (P.T.A.B. Feb. 29, 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.
13/246,473 09/27/2011 Fuminori HOMMA 1946-0477 9210
60803 7590 02/29/2016
Paratus Law Group, PLLC
620 Herndon Parkway
Suite 320
Herndon, VA 20170
EXAMINER
RIES, LAURIE ANNE
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
02/29/2016 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 FUMINORI HOMMA and TATSUSHI NASHIDA1
____________________

Appeal 2014-003506
Application 13/246,473
Technology Center 2100
____________________

Before CARLA M. KRIVAK, JOHN F. HORVATH, and
AMBER L. HAGY, Administrative Patent Judges.

HAGY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4–7, 9, and 11–21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Sony Corporation as the real party in interest. (App.
Br. 3.)
Appeal 2014-003506
Application 13/246,473

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Introduction
According to Appellants, “[t]he disclosed exemplary embodiments
relate to an information processing apparatus, an information processing
method, and a computer-readable medium storing a program for displaying a
content of an electronic book and the like on a display screen such as a touch
panel.” (Spec. 1.)

Exemplary Claim
Claim 1, reproduced below with the disputed limitation italicized, is
exemplary of the claimed subject matter:
1. An information processing apparatus, comprising:
a display unit configured to display content to a user, the
display unit comprising a display surface, the content being
associated with at least a portion of a first page of an electronic
document;
a detection unit configured to detect a type of user
activation, the type of user activation being associated with an
activation position on the display surface, wherein the user
activation comprises (i) a first contact between a first human
appendage and the display surface and (ii) a second contact
between a second human appendage and the display surface;
and
a control unit configured to:
determine whether the activation position falls
within a predetermined portion of the display screen, the
predetermined portion being visually imperceptible to the user;
and
identify a first successive page of the electronic
document based on at least the type of user activation, when the
activation position falls within the predetermined portion.

Appeal 2014-003506
Application 13/246,473

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REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liang US 2003/0048305 A1 Mar. 13, 2003

REJECTION2
Claims 1, 2, 4–7, 9, and 11–21 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Liang. (Final Act. 2–9.)

ANALYSIS
Appellants argue the Examiner’s anticipation findings are in error
because a prima facie case of anticipation has not been established. (App.
Br. 12). In particular, Appellants argue Liang fails to teach “the user
activation comprises (i) a first contact between a first human appendage and
the display surface and (ii) a second contact between a second human
appendage and the display surface,” as recited in independent claim 1 and
commensurately recited in independent claims 19–21. (App. Br. 12–13
(emphases added); Reply Br. 6.)
We agree with Appellants’ contention that a prima facie case that
claims 1 and 19–21 are anticipated by Laing has not been established.
Although we agree with the Examiner’s finding that Liang discloses a touch
screen that allows user activation via contact with the display surface (Ans.
10–11 (citing Liang ¶¶ 43, 89–91, 213–215, 218, and 223–225)), the
Examiner has not shown where Liang discloses the user activation via a

2 Claims 8 and 10 are objected to but allowable if rewritten in independent
form. (Final Act. 10.) Claim 3 was canceled in an amendment dated
February 8, 2013.
Appeal 2014-003506
Application 13/246,473

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touch screen device comprises both a first contact and a second contact
between a first human appendage and a second human appendage
(respectively). Figure 4 and paragraph 193 of Liang are cited by the
Examiner as purportedly disclosing contact by multiple appendages by
showing “the interaction of two human appendages (specifically a right
thumb and a left thumb) with a peripheral device to control a display.”
(Ans. 10 (emphases added).) These portions of Liang teach activation
comprising “penetrating opposing force,” in which a button on the bottom of
the peripheral device (“button 172”) is pressed and held along with “the
quick depressing and releasing of the browsing controller 163 on the left
side.” (Liang ¶ 193.) But, as Appellants correctly contend, these portions of
Liang disclose only pressing discrete buttons on a peripheral controller (and
on opposing sides of the controller), and do not teach the “user activation”
comprises contact of an appendage with a “display surface,” as recited in the
claims. (See App. Br. 13.) The Examiner has not explained how the
additional portions of Liang cited in the Examiner’s Answer with regard to
Liang’s touch screen embodiment disclose user activation by detecting
contact between multiple appendages and the touchscreen device.3 (See
Ans. 10–11 (citing Liang ¶¶ 43, 89–91, 213–215, 218, and 223–225).)
For the foregoing reasons, we are persuaded that a prima facie case of
anticipation by Liang has not been established for independent claims 1 and
19–21. Dependent claims 2, 4–7, 9, and 11–18, not separately argued, stand

3 Although we recognize multi-touch displays were known in the art at the
time of the present application, the Board’s function is primarily one of
review and not search. Therefore, in the event of further prosecution, we
leave any further search and review, or explanation of the teachings of
Liang, to the Examiner.
Appeal 2014-003506
Application 13/246,473

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with their respective independent claims. Therefore, we are constrained on
the record before us to reverse the rejection of claims 1, 2, 4–7, 9, and 11–21
under 35 U.S.C. § 102(e) as anticipated by Liang.

DECISION
For the above reasons, the Examiner’s 35 U.S.C. § 102(e) rejection of
claims 1, 2, 4–7, 9, and 11–21 is reversed.

REVERSED