Ex Parte Roux

Patent Trial and Appeal Board

Jul 13, 2015

12609818 (P.T.A.B. Jul. 13, 2015)

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.
12/609,818 10/30/2009 Claude C. Roux 20090840USNP-XER2352US01 9172
62095 7590 07/13/2015
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
SITTA, GRANT
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
07/13/2015 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 CLAUDE C. ROUX
____________

Appeal 2013-003623
Application 12/609,818
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, JOHN A. EVANS, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is Xerox Corporation.
App. Br. 1.

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THE INVENTION
Appellant’s invention relates to a dual screen electronic reader (“e-
reader”) with a tilt detection system that loads fresh pages of the document
onto the screens in response to tilting of the e-reader.
Exemplary claim 1 is reproduced below.
1. An electronic reader comprising:
a first panel comprising a first display screen for
displaying a page of a document;
a second panel comprising a second display screen for
displaying another page of the document, the second panel
being connected with the first panel, whereby the first panel is
pivotable, relative to the first panel, from a first position in
which the display screens are facing to a second position in
which the display screens are angled, relative to each other;
a tilt detection system comprising at least one sensor
which detects tilting of the electronic reader; and
a navigation system which alternately loads fresh pages
of the document onto the first and second screens in response to
detected tilting, whereby when the e-reader is tilted in a first
direction, a first fresh page is loaded onto the first screen while
a reader is able to read a page previously loaded onto the
second screen and when the e-reader is tilted in a second
direction, a second fresh page is loaded onto the second screen
while a reader is able to read a page previously loaded onto the
first screen.

REFERENCES and REJECTIONS
1. Claims 1–2, 4, 8, 10–16, and 18–20 are rejected as unpatentable
under 35 U.S.C. § 103(a) over Nako et al. (US 2004/0212602 A1, Oct. 28,
2004) (“Nako”) and Kuno et al. (US 5,467,102, Nov. 14, 1995) (“Kuno”).
Final Act. 2.
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2. Claim 5 is rejected as unpatentable under 35 U.S.C. § 103(a)
over Nako, Kuno, and Lesniak (US 2006/0187142 A1, Aug. 24, 2006)
(“Lesniak”). Final Act. 10–11.
3. Claims 6 and 7 are rejected as unpatentable under 35 U.S.C.
§ 103(a) over Nako, Kuno, Lesniak, and Takagi. (US 6,708,046 B1, Mar. 16,
2004) (“Takagi”). Final Act. 11–12.
4. Claims 3, 9 and 17 are rejected as unpatentable under 35 U.S.C.
§ 103(a) over Nako, Kuno, and Davidson (US 7,231,825 B2, June 19, 2007).
Final Act. 14–15.
5. Claim 21 and 22 are rejected as unpatentable under 35 U.S.C.
§ 103(a) over Nako, Lesniak, and Takagi. Final Act. 12–13.

ISSUES
1. Does the Examiner err in finding that the combination of Nako
and Kuno teaches or suggests
a navigation system which alternately loads fresh pages of the
document onto the first and second screens in response to
detected tilting, whereby when the e-reader is tilted in a first
direction, a first fresh page is loaded onto the first screen while
a reader is able to read a page previously loaded onto the
second screen and when the e-reader is tilted in a second
direction, a second fresh page is loaded onto the second screen
while a reader is able to read a page previously loaded onto the
first screen
as recited in claim 1?
2. Does the Examiner err in finding that the combination of Nako
and Kuno teaches or suggests “the second display screen being angled to the
first screen at an angle of less than 180°; automatically detecting tilting of
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the electronic reader about an axis substantially parallel to the spine, wherein
during tilting, the first and second screens remain angled to each other at a
fixed angle,” as recited in claim 15?
3. Does the Examiner err in finding that the combination of Nako,
Kuno, Lesniak and Takagi teaches or suggests “first and second panels
bound to each other at a spine, the first and second panels each including a
display screen, the panels and the spine cooperating to prevent the display
screens from being angled to each other at greater than a fixed angle of less
than 160°,” as recited in claim 21?

ANALYSIS
Issue 1
The Examiner finds that Nako teaches an e-reader with two display
screens and a tilt detection system that detects tilting of the e-reader and
changes pages of the e-reader in response to the tilting. Final Act. 2–3.
However Nako fails to teach, in response to tilting of the e-reader, that the
pages are changed and loaded alternately on the two screens, one at a time,
as required in claim 1. Final Act. 5. For this limitation, the Examiner relies
on Kuno which the Examiner finds teaches the claimed alternate loading of
pages on the screens of the e-reader. Id (citing Kuno, Fig. 7B).
Appellant argues that “[t]here is no suggestion as to how Kuno’s page
changing mechanism could be incorporated [into] Nako for alternately
loading fresh pages.” App. Br. 10. Appellant further argues that alternately
loading fresh pages would destroy the teaching of Nako, which the
Appellant argues is to mimic the page turning of a book by loading two new
pages onto the display panels, instead of one page at a time. App. Br. 13.
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“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner’s
finding that Nako teaches a tilt detection system that loads fresh pages when
the device is tilted. Final Act. 3; Ans. 3. We also agree with the Examiner’s
finding that Kuno teaches the alternate page changing feature of claim 1.
Ans. 3 (citing Kuno, 6:17–28, Fig. 7B). We therefore agree that the
combination of Nako and Kuno teaches a device that loads pages alternately
in response to tilting of the device. Appellant has not asserted that the
modification required in combining Nako and Kuno to load pages alternately
one at a time, as disclosed in Kuno, in response to detecting tilting, as
disclosed in Nako, would have been beyond the capabilities of a person of
ordinary skill in the art. Absent such an assertion, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and find a person of ordinary skill in the art would overcome those
difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).
Accordingly we sustain the Examiner’s rejection of independent claim
1 and independent claim 14, for which the Appellant makes no additional
arguments. See App. Br. 15. We also sustain the Examiner’s rejection of
claims 2–13, which depend from claim 1, and claims 16–20, which depend
from claim 14, for which the Appellant makes no additional arguments for
patentability. See App. Br. 7–15.
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Issue 2
Claim 15 requires “the second display screen being angled to the first
screen at an angle of less than 180°; automatically detecting tilting of the
electronic reader about an axis substantially parallel to the spine, wherein
during tilting, the first and second screens remain angled to each other at a
fixed angle.” For these limitations, the Examiner points to paragraph 33 of
Nako as teaching “[t]he user can fix the display at an angle of rotation in a
predetermined range. In this way, the user can play a competitive game
without allowing the user’s cards to be revealed to an opponent.” Final Act.
10; see also Ans. 10.
Appellant argues that paragraph 33 of Nako is directed to “an entirely
different embodiment” that relates to playing a game rather than reading a
book. App. Br. 16. According to the Appellant, the Examiner is improperly
combining this embodiment (referred to in Nako as the “Tenth
Embodiment”) with the e-reader embodiments because there is no teaching,
suggestion, or reason for one of ordinary skill to do so. App. Br. 19.
We are not persuaded by Appellant’s arguments. Appellant does not
provide sufficient reason why one of ordinary skill in the art would not be
able to combine the teachings of the Tenth Embodiment with the e-reader
embodiments discussed within the same reference. Indeed the device of the
Tenth Embodiment includes a page turn instruction unit 45 and a control
unit for reading of image information, see Nako ¶ 116, which indicates that
in the Tenth Embodiment, the same device is used for reading a book and for
playing games. Thus we find that the teachings described with respect to the
e-reader embodiments could be combined by one of skill in the art with the
Tenth Embodiment.
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Appellant further argues that in the Tenth Embodiment the angle
between the panels is fixed when the screens are at an angle over 300°, and
not, as the claim recites, at an angle of less than 180°. App. Br. 17–18; see
also Reply Br. 19–20.
We are similarly not persuaded by this argument. We agree with the
Examiner that under the broadest reasonable interpretation, the display
screens of the Tenth Embodiment would include the entire panel, not just the
viewable portions on the front of the panel. Under this interpretation we
agree with the Examiner’s finding that as disclosed in Nako, Fig. 45, those
screens are fixed at an angle of less than 180°. Ans. 11–12.
Further, we note in passing, and without relying on these findings, but
rather only addressing them to the extent necessary to address Appellants’
arguments, we would determine that Nako would still teach or suggest this
limitation, even assuming, arguendo, that the display screen only refers to
front portion of the screen that is readable. Nako teaches that a pin and hook
can be used to fix the angle between the two display panels and that the
angle can be selected by appropriately defining the length of the hook and
the position of the pin. See Nako ¶ 191. Given Nako’s teaching of using a
pin and hook to fix the angle of the e-reader to a particular angle, even if that
angle is greater than 300°, Appellant provides no persuasive reason why one
of ordinary skill would not be able to use the same method to fix the angle at
less than 180° by similarly adjusting the length of the hook and the position
of the pin (or by simply folding the device in the other direction).
Accordingly we sustain the Examiner’s rejection of claim 15.

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Issue 3
Claim 21 recites “first and second panels bound to each other at a
spine, the first and second panels each including a display screen, the panels
and the spine cooperating to prevent the display screens from being angled
to each other at greater than a fixed angle of less than 160°.” The Examiner
relies on Lesniak as teaching an e-reader where the display screens are
prevented from being angled to each other at greater than 180°. Final Act.
13 (citing Lesniak ¶ 32). The Examiner further relies on Takagi as teaching
a mobile telephone where the angle of the display screen to the keypad is
fixed at less than 160°. Ans. 14 (citing Takagi, Fig. 1b).
The Appellant argues that because Takagi discloses a folding portable
telephone which has only one screen, “[t]here is no suggestion that [the
arrangement of Takagi] would be useful in a two-panel e-reader, such as
Nako’s, as it would imply the user would be viewing the screen at right
angles to the text, a very awkward viewing angle for the reader.” App. Br.
20. Further, Appellant argues there would have been no reason to combine
Nako with Kuno, Lesniak, and Takagi because “there is no reason . . . to
prevent the reader using the Nako device from increasing the angle, for
example, for laying the e-reader substantially flat on a surface to read, i.e., at
an angle of substantially greater than 160°.” App. Br. 21.
We are not persuaded by Appellant’s arguments. We agree with the
Examiner’s finding Lesniak teaches limiting the angle of an e-reader to 180°
or less. Ans. 12. We find that it would have been obvious for one of
ordinary skill to limit the angle of the e-reader to less than 160° using the
same mechanism taught by Lesniak. Further we disagree that Takagi could
not be combined with Nako because it would lead to a very awkward angle
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for the reader. As we stated above, “[t]he test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference.” In re Keller, 642 F.2d at 425. Takagi
was relied upon, in light of Lesniak, to show that the angle of the e-reader
could be limited to a particular angle of less than 145°. Ans. 12. The fact
that the display screen is oriented differently in Takagi than in Nako does
not imply that one of ordinary skill in the art would not be able to use the
teachings of Takagi to modify Nako to limit the angle of the e-reader to 160°
or less. Appellant has not asserted that the proposed modification would
have been beyond the capabilities of a person of ordinary skill in the art.
Accordingly we sustain the Examiner’s rejection of independent claim
21 and of dependent claim 22 for which Appellant makes no additional
arguments for patentability. See App. Br. 21.

DECISION
The Examiner’s rejection of claims 1–22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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