Yasushi Matsubara

Patent Trials and Appeals Board

May 1, 2020

2018007907 (P.T.A.B. May. 1, 2020)

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.
12/984,944 01/05/2011 Yasushi MATSUBARA SJP-723-2972 3301
27562 7590 05/01/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WONG, WILLIAM
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YASUSHI MATSUBARA
____________________

Appeal 2018-007907
Application 12/984,944
Technology Center 2100
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 22–30, 33–36, and 39–47. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
The claims are directed to a display control process and system for
“displaying display-contents such as a selection object that is to be selected
by a user and a content that is to be browsed by a user,” and notifying the
user when scrolled selection objects or content have reached an end of a
display. (Spec. ¶¶ 1, 4.) The user is notified using “an object that is

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is Nintendo Co., Ltd. Appeal Br. 3.
Appeal 2018-007907
Application 12/984,944

2
different from the plurality of selection objects [and] is displayed on the
display area,” the object moving “relative to the display area based on an
output signal outputted from [an] input device.” (Abstract.)
Claim 22, reproduced below, is illustrative of the claimed subject
matter:
22. A handheld portable information processing apparatus,
comprising at least one processor, the at least one processor
controlling the apparatus to:
generate a display having a plurality of selection objects
displayed as a list and that are selectable based on input made to
the display, the list having at least a first end selection object;
move the plurality of selection objects when an input
operation is made to the display, the plurality of selection
objects moving such that the plurality of selection objects in the
displayed list scroll in a direction opposite to a direction of the
input operation;
detect, as the plurality of selection objects move, when
the first end selection object is displayed; and
generate, when the first end selection object is detected
as being displayed, a semi-transparent notification object for
display, indicative of the displayed list reaching an end of the
list, that emerges from an edge of the display and moves in a
direction corresponding to the direction of the input operation.
(Appeal Br. 28 (Claims Appendix).)

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Obata et al. US 5,726,669 Mar. 10, 1998
(“Obata”)
Robertson et al. US 2004/0165010 A1 Aug. 26, 2004
(“Robertson”)

Appeal 2018-007907
Application 12/984,944

3
Platzer et al. US 2008/0168478 A1 July 10, 2008
(“Platzer”)
Kwak et al. US 2009/0070711 A1 Mar. 12, 2009
(“Kwak”)
Tseng et al. US 2009/0249247 A1 Oct. 1, 2009
(“Tseng”)
Mandryk et al. US 2011/0202834 A1 Aug. 18, 2011
(“Mandryk”)
Hong et al. US 2011/0265002 A1 Oct. 27, 2011
(“Hong”)

REJECTIONS
The Examiner made the following rejections:
Claims 22–30, 33–36, and 39–42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kwak in view of Platzer, or in
the alternative as being unpatentable over Kwak in view of Platzer, Obata,
and Tseng, or in the alternative as being unpatentable over Kwak in view of
Platzer and Obata, or in the alternative as being unpatentable over Kwak in
view of Platzer and Tseng.
Claims 43–46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwak in view of Platzer and Robertson, or in the
alternative as being unpatentable over Kwak in view of Platzer, Obata,
Tseng, and Robertson, or in the alternative as being unpatentable over Kwak
in view of Platzer, Obata, and Robertson, or in the alternative as being
unpatentable over Kwak in view of Platzer, Tseng, and Robertson.
Claims 44–46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwak in view of Platzer and Hong, or in the alternative as
being unpatentable over Kwak in view of Platzer, Obata, Tseng, and Hong,
or in the alternative as being unpatentable over Kwak in view of Platzer,
Appeal 2018-007907
Application 12/984,944

4
Obata, and Hong, or in the alternative as being unpatentable over Kwak in
view of Platzer, Tseng, and Hong.
Claims 27, 28, 34, 35, 40, 41,2 and 47 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kwak in view of Platzer and Mandryk,
or in the alternative as being unpatentable over Kwak in view of Platzer,
Obata, Tseng, and Mandryk, or in the alternative as being unpatentable over
Kwak in view of Platzer, Obata, and Mandryk, or in the alternative as being
unpatentable over Kwak in view of Platzer, Tseng, and Mandryk.

ANALYSIS
With respect to independent claim 22, the Examiner finds Kwak
generates, when a first end selection object is detected as being displayed, a
semi-transparent notification object for display, indicative of the displayed
list reaching an end of the list, that emerges from an edge of the display, as
claimed. (Final Act. 4–5 (citing Kwak ¶¶ 13–15, 137–143, 147–148, 153,
158, 161–163, 177, 182, Figs. 8, 9, 12, 15A–15B); Ans. 15–16 (citing Kwak
¶ 180, Figs. 7, 9).) The Examiner also finds Platzer teaches an object
emerging from an edge of a display and moving in a direction corresponding
to a direction of an input operation, as claimed. (Final Act. 5 (citing Platzer
¶¶ 72, 75, 77–81, Figs. 5B–5C, 6A–6C).) The Examiner also asserts that
“[i]f . . . Kwak is not interpreted to teach ‘notification object,’” then “the
teachings of Obata can be relied upon . . . [to] teach[] displaying a
notification object” and “the teachings of Tseng can be relied upon . . . [to]

2 Although only claim 47 is listed under this rejection heading (see Final
Act. 13), claims 27, 28, 34, 35, 40, and 41 are also discussed under this
rejection (see Final Act. 13–14).
Appeal 2018-007907
Application 12/984,944

5
teach[] a semi-transparent notification object emerging from an edge of a
display and moving in a direction corresponding to a direction of an input
operation.” (Final Act. 5–6 (citing Obata 13:12–18, Fig. 23D; Tseng ¶¶ 29,
40–42, 51, 53–54, 59–61, Figs. 2B–2C); Ans. 16–17.) We do not agree.
We agree with Appellant that Kwak, Platzer, Obata, and Tseng, alone
or in combination, fail to teach or suggest generating, when the first end
selection object is detected as being displayed, a semi-transparent
notification object for display, indicative of the displayed list reaching an
end of the list, that emerges from an edge of the display and moves in a
direction corresponding to the direction of the input operation that scrolled
the list of selection objects, as recited in claim 22. (Appeal Br. 13–17; Reply
Br. 2–8.) As Appellant explains, Kwak’s Figure 8 merely “changes the
color of an item on the list and does not describe a semi-transparent
notification object that emerges from the end of the display,” as recited in
claim 22. (Appeal Br. 14; Reply Br. 3; see Kwak ¶ 143 (“the last item on
the displayed menu list is discriminately displayed. Namely, the last item of
the list may be colored or the color of an item adjacent to the last item on the
list may be changed to inform the user about the end of the menu list.”),
Fig. 8.) Kwak’s Figure 9 merely shows patterns (410, 420) that can be
displayed over items, such that “a sound, for example, a frictional sound,
may be generated when each displayed item of the menu list frictionally
contacts with a bar 410 of a certain form or a rotational plate 420,” and
Kwak’s Figures 15A–15B merely show directional symbols that may be
translucent and “indicat[e] that there are remaining undisplayed items in the
contents list” (Fig. 15A) or “change[] into different translucent shapes” to
indicate that a last item was reached (Fig. 15B). (See Kwak ¶¶ 146–147,
Appeal 2018-007907
Application 12/984,944

6
180–182, Figs. 9, 15A–15B; Reply Br. 4–5.) Thus, Kwak’s Figures 9 and
15A–15B do not teach or suggest a semi-transparent notification object
emerging from an edge of the display to indicate a displayed list has reached
an end of the list, the object also moving in a direction corresponding to the
direction of the input operation that scrolled the list of selection objects, as
required by claim 22. (Appeal Br. 13; Reply Br. 5.) Fig. 7 (in which “a
border of a certain color is displayed at a certain boundary contiguous with
edge”) and Fig. 12 (showing “a motion graphic image having a wavy or
oscillating shape [(impact waveform)] graphically depicting or simulating a
reaction or collision with the selected bar”) of Kwak also fails to teach a
semi-transparent notification object as claimed. (See Kwak ¶¶ 139–140,
161–163, Figs. 7, 12.)
Thus, we agree with Appellant that Kwak does not teach or suggest
the claimed semi-transparent notification object generated to indicate a
displayed list reaching an end of the list, the notification object emerging
from an edge of the display and moving in a direction corresponding to the
direction of the input operation that scrolled the list of selection objects.
Platzer, Obata, and Tseng do not make up for the above-noted
deficiencies of Kwak. Platzer’s area 3536 (displayed above a first email, see
Fig. 6C) is not a semi-transparent notification object for display as claimed.
(See Platzer ¶ 80 (“area 3536 (FIG. 6C) above the first email 3534 (i.e.,
beyond the terminus of the list) is displayed . . . the area . . . is visually
indistinct from the background of the list,” for example, “[i]n FIG. 6C, both
the area 3536 and the background of the emails (e.g., emails 3534 and 3530)
are white and thus are visually indistinct”), Fig. 6C; Appeal Br. 15, 17.)
Obata’s “guidance display . . . which indicates that further scrolling is
Appeal 2018-007907
Application 12/984,944

7
impossible as illustrated in FIG. 23D” is not a semi-transparent notification
object for display, either. (See Obata 13:12–18, Fig. 23D; Appeal Br. 15.)
The illustrated status bar 222 and message area 224 in Tseng (see
second and third images in Tseng’s Figure 2B, and third and fourth images
in Tseng’s Figure 2C) do not emerge when a list of selection objects is
scrolled to the end of the list, rather, the status bar 222 and message area 224
are dragged downward by a user, to show/unfurl a list (of messages). (See
Tseng ¶¶ 53–54, 59–60, Figs. 2B–2C; Appeal Br. 15–16; Reply Br. 6.)
Moreover, although Tseng states that “the message area 224 has a semi-
transparent background so that the active clock application can be viewed
behind it” (see ¶ 54), Tseng’s Figures 2B and 2C do not illustrate a semi-
transparent message area 224, and do not disclose that messages displayed
within the message area 224 are semi-transparent. (See Tseng Figs. 2B–2C;
Appeal Br. 15–16.) Thus, we do not find that Tseng teaches or suggests the
claimed semi-transparent notification object generated to indicate a
displayed list reaching an end of the list, the notification object emerging
from an edge of the display and moving in a direction corresponding to the
direction of the input operation that scrolled the list of selection objects.
The Examiner also has not shown that the additional teachings of
Robertson, Hong, and Mandryk make up for the above-noted deficiencies of
Kwak, Platzer, Obata, and Tseng. Thus, for the reasons set forth above, we
do not sustain the Examiner’s obviousness rejection of independent claim
22, and independent claims 29, 36, and 42 similarly reciting a semi-
transparent notification object generated for display, indicative of the
displayed list reaching an end of the list, emerging from an edge of the
display, and moving in a direction corresponding to the direction of the input
Appeal 2018-007907
Application 12/984,944

8
operation. We also do not sustain the Examiner’s rejection of dependent
claims 23–28, 30, 33–35, 39–41, and 43–47. Because the above-discussed
issues are dispositive as to the obviousness rejections of all claims on appeal,
we do not reach additional issues raised by Appellant’s arguments as to the
§ 103 rejections of claims 23, 24, 30, and 43.

CONCLUSION
The Examiner erred in rejecting claims 22–30, 33–36, and 39–47
based upon obviousness.

DECISION
For the above reasons, we REVERSE the Examiner’s obviousness
rejections of claims 22–30, 33–36, and 39–47 under 35 U.S.C. § 103(a).

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–30, 33–36,
39–42
103(a) Kwak, Platzer 22–30, 33–
36, 39–42
22–30, 33–36,
39–42
103(a) Kwak, Platzer, Obata,
Tseng
22–30, 33–
36, 39–42
22–30, 33–36,
39–42
103(a) Kwak, Platzer, Obata 22–30, 33–
36, 39–42
22–30, 33–36,
39–42
103(a) Kwak, Platzer, Tseng 22–30, 33–
36, 39–42
43–46 103(a) Kwak, Platzer,
Robertson
43–46
43–46 103(a) Kwak, Platzer, Obata,
Tseng, Robertson
43–46
43–46 103(a) Kwak, Platzer, Obata,
Robertson
43–46
Appeal 2018-007907
Application 12/984,944

9
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
43–46 103(a) Kwak, Platzer, Tseng,
Robertson
43–46
44–46 103(a) Kwak, Platzer, Hong 44–46
44–46 103(a) Kwak, Platzer, Obata,
Tseng, Hong
44–46
44–46 103(a) Kwak, Platzer, Obata,
Hong
44–46
44–46 103(a) Kwak, Platzer, Tseng,
Hong
44–46
27, 28, 34, 35,
40, 41, 47
103(a) Kwak, Platzer,
Mandryk
27, 28, 34,
35, 40, 41,
47
27, 28, 34, 35,
40, 41, 47
103(a) Kwak, Platzer, Obata,
Tseng, Mandryk
27, 28, 34,
35, 40, 41,
47
27, 28, 34, 35,
40, 41, 47
103(a) Kwak, Platzer, Obata,
Mandryk
27, 28, 34,
35, 40, 41,
47
27, 28, 34, 35,
40, 41, 47
103(a) Kwak, Platzer, Tseng,
Mandryk
27, 28, 34,
35, 40, 41,
47
Overall
Outcome
22–30,
33–36,
39–47

REVERSED