Sony Interactive Entertainment Inc.

Patent Trials and Appeals Board

Jan 26, 2022

2020006599 (P.T.A.B. Jan. 26, 2022)

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. 15/201,880 07/05/2016 Akitsugu TSUCHIYA SCED 25.843(100809-00751) 2687 26304 7590 01/26/2022 KATTEN MUCHIN ROSENMAN LLP 575 MADISON AVENUE NEW YORK, NY 10022-2585 EXAMINER ABOU EL SEOUD, MOHAMED ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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): doreen.devito@katten.com nycuspto@katten.com samson.helfgott@katten.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AKITSUGU TSUCHIYA, MASAKI TAKAHASHI, and SYUNSUKE BAMBA ____________________ Appeal 2020-006599 Application 15/201,880 Technology Center 2100 ____________________ Before ERIC S. FRAHM, JOHNNY A. KUMAR, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1 and 5-9. Claims 2-4 have been canceled (see Appellant’s 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sony Interactive Entertainment Inc. (Appeal Br. 2). Appeal 2020-006599 Application 15/201,880 2 Amendment filed October 25, 2019, p. 3). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. DISCLOSED AND CLAIMED INVENTION According to Appellant, the disclosed invention, entitled “Information Processing Device and Method of Displaying Download Progress State” (Title), “relates to information processing technology performed in an information processing device such as a game device or the like” (Spec. 1:2- 4). As recognized by Appellant, “[i]n recent years, the number of files included in the game software tends to be increased, and the data size of the game software tends to be increased” (Spec. 1:14-16). As a result, it is desirable to provide users with progress state information concerning game downloads (see Spec. 2:13-4:6; see also Figs. 10-17 (showing examples of download confirmation screens with progress bars)). Independent claim 1 recites “[a]n information processing device” for displaying the progress state of video game software and patch data downloads. Independent claims 8 and 9 recite commensurate limitations regarding “[a] method of displaying a download progress state” (claim 8), and “[a] non-transitory computer readable medium” (claim 9) for performing the method. Exemplary independent claim 1 is illustrative of the claimed subject matter and is reproduced below: Appeal 2020-006599 Application 15/201,880 3 1. An information processing device comprising: a download executing section downloading video game software and patch data; a progress state display section displaying a progress state of the downloading; and an executing section executing an video game by using the video game software and the patch data; the progress state display section displaying the progress state of the downloading of a combined total of the video game software and the patch data, wherein the video game software and the patch data each include a plurality of groups, wherein each group of patch data is uniquely associated with a group of the video game software, wherein the executing section can start the video game after the download executing section downloads files of a first group of the video game software and files of a first group of the patch data, wherein, during the download of the files of the first group of the video game software and the files of the first group of the patch data, the progress state display section displays a single progress bar indicating a total combined size of the files of the first group of the video game software and the files of first group of the patch data, wherein after completion of the download of the files of the first group of the video game software and the files of the first group of the patch data, the progress state display section replaces the single progress bar with a notification indicating the completion in a first display region at a same previous location as the single progress bar, wherein the notification is not a progress bar, wherein the single progress bar and the notification are both displayed on a download confirmation screen, and wherein the progress state display section displays, directly above the notification, a second single progress bar indicating a progress state of downloading of a combined total of files belonging to a second group and subsequent groups of the Appeal 2020-006599 Application 15/201,880 4 video game software and files belonging to a second group and subsequent groups of the patch data. Appeal Br. 11, Claims Appendix (emphases added). The Examiner’s Rejections (1) The Examiner rejected claims 1, 5, 6, 8, and 9 as being unpatentable under 35 U.S.C. § 103 over Hashimoto et al. (US 2014/0201209 A1; published July 17, 2014) (hereinafter, “Hashimoto”), Katsuhiko et al. (JP 2009/205440 A; published Sept. 10, 2009) (hereinafter, “Katsuhiko”), and http://www.youtube.com/watch?v=u26iU5Ns_uY, published Jan. 14, 2014, last visited Jan. 6, 2022 (hereinafter, “PS4”).2 Final Act. 3-13. (2) The Examiner rejected dependent claim 7 as being unpatentable under 35 U.S.C. § 103 over Hashimoto, Katsuhiko, PS4, Geshwind (US 2012/0233631 A1; Sept. 13, 2012), and https://www.gamespot.com/forums/playstation-nation-1000002/how-do- i-know-when-my-download-actually-finishes-o-30964407, published Jan. 21, 2014, last visited Jan. 6, 2022 (hereinafter, “PS4-2”).3 Final Act. 13-16. 2 Appellant presents separate arguments only as to claims 1, 8, and 9 (see Appeal Br. 7-17), primarily focusing on claim 1 (see Appeal Br. 11-16). Separate patentability is not argued for claims 5 and 6. Claims 8 and 9 contain commensurate limitations with claim 1. Based on Appellant’s arguments, we select claim 1 as representative of the group of claims consisting of claims 1, 5, 6, 8, and 9 and rejected over Hashimoto, Katsuhiko, and PS4. See 37 C.F.R. § 41.37(c)(1)(iv). 3 With regard to dependent claim 7 rejected under § 103 over Hashimoto, Katsuhiko, PS4, and PS4-2, Appellant does not present any separate arguments. Therefore, there is no issue as to this rejection, and we summarily sustain this rejection, and do not discuss this rejection in our analysis. Appeal 2020-006599 Application 15/201,880 5 Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 6- 10) and the Reply Brief (Reply Br. 1-4), the following principal issue is presented on appeal: Has Appellant shown the Examiner erred in rejecting claims 1 and 5- 9 as being obvious over the base combination of Hashimoto, Katsuhiko, and PS4 because the base combination fails to teach or suggest displaying a progress state of video game software and patch data, as recited in representative claim 1? ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 3-16) in light of Appellant’s arguments in the Appeal Brief (Appeal Br. 6-10) and the Reply Brief (Reply Br. 1-4) that the Examiner has erred. We have also reviewed the Examiner’s response to Appellant’s arguments in the Examiner’s Answer (Ans. 2-17). We disagree with Appellant’s contentions, which address the teachings of Hashimoto, Katsuhiko, and PS4 individually, and fail to address the Examiner’s reliance on the combination of references as teaching or suggesting the disputed limitations (see, e.g., limitations A and B in claim 1 supra). With regard to representative claim 1, we adopt as our own (1) the findings and reasons set forth by the Examiner in (i) the Final Office Action from which this appeal is taken (Final Act. 3-11), as well as (2) the findings and reasoning set forth by the Examiner in the Examiner’s Answer (Ans. 2- 17) in response to Appellant’s Appeal Brief. Appeal 2020-006599 Application 15/201,880 6 In general, Appellant’s arguments address the individual shortcomings of Hashimoto, Katsuhiko, and PS4, are conclusory, and do not address the collective teachings and suggestions of the references. Appellant has not shown that the Examiner erred in rejecting claim 1 over the combination of Hashimoto, Katsuhiko, and PS4. Appellant recognizes (see Spec. 1:17-2:10) that Hashimoto is prior art to the claimed invention, and Hashimoto “discloses a group structure in which game software is divided into a plurality of groups, and one group (first group) of the plurality of groups is configured such that program files and data files necessary start the game software belong to the group (first group)” (Spec. 1:18-2:1). The claimed invention simply sets out an arrangement of the information about download progress using progress bars and/or a notification (that is not a progress bar) indicating a download is complete (see Figs. 10-17). By arranging different known progress bars and notifications in a desirable way, one of ordinary skill in the art would predictably provide the claimed progress state display section. We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). In addition, a factfinder “need not seek out precise teachings directed to the specific subject matter of the challenged claims” and “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appeal 2020-006599 Application 15/201,880 7 Here, Appellant generally argues that PS4 fails to disclose several limitations recited in claim 1, such as displaying download progress before a game is fully installed (see Appeal Br. 8-9), and showing a second progress bar (see Appeal Br. 9), when the combination of Hashimoto, Katsuhiko, and PS4 was relied on as teaching or suggesting the disputed limitations (see Final Act. 3-11). However, Appellant’s conclusory statements are not persuasive to show the Examiner erred in relying on the combination of references in teaching or suggesting the disputed limitations. Instead, as to claim 1, we find the Examiner’s findings, reasoning, and response to Appellant’s arguments (see Ans. 2-17) to be reasonable. As a result, Appellant’s arguments as to claim 1 concerning the individual shortcomings in the teachings of PS4 are not persuasive, and are not convincing of the non-obviousness of the claimed invention set forth in claim 1. Appellant has not responded with persuasive evidence or argument to rebut the Examiner’s findings and conclusions; in particular, the Examiner’s reliance on Hashimoto’s tracking of download information relating to first and second groups (see Final Act. 3-6), in combination with (i) Katsuhiko’s display of two progress bars at one time (see Final Act. 7-8; Katsuhiko Figs. 9, 10); (ii) PS4’s display of a notification in place of a progress bar (see Final Act. 9); and (iii) the design choice of one of ordinary skill in the art of download notifications and progress displays (see Final Act. 10), as teaching or suggesting the particular progress state display recited in claim 1. Appellant’s argument that Katsuhiko teaches away from the claimed invention because Katsuhiko uses multiple progress bars (see Appeal Br. 7- 8), is unpersuasive. Despite Appellant’s arguments to the contrary, nothing in the cited references criticizes, discredits, or otherwise discourages Appeal 2020-006599 Application 15/201,880 8 investigation into the invention claimed as required for teaching away. See Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). Rather, the Examiner’s proposed combination enhances Hashimoto’s system by ensuring that multiple progress bars can be shown-a useful adjunct that would, among other things, provide more information about the progress of downloading to a user. In short, the Examiner’s proposed enhancement uses prior art elements predictably according to their established functions-an obvious improvement. See KSR, 550 U.S. at 417. Moreover, a “reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). “[T]he ‘mere disclosure of more than one alternative’ does not amount to teaching away from one of the alternatives where the reference does not ‘criticize, discredit, or otherwise discourage the solution claimed.’” SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In this light, Katsuhiko’s display of more than two progress bars does not discredit or discourage the use of only two progress bars or the display of a progress state of only two groups of information. This is especially true in view of Hashimoto’s explicit teaching of the recited first and second groups. “[M]ere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, teaching away requires “clear discouragement” from implementing a technical feature. In Appeal 2020-006599 Application 15/201,880 9 re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017). In this light, Katsuhiko’s multiple progress bars (see Katsuhiko Figs. 9, 10) do not teach away from either Appellant’s (i) disclosed download confirmation screen that also has multiple (e.g., two or more) progress bar and/or notifications (see Figs. 10-16); or (ii) claimed progress bar, progress state display section, and notification indicating a progress state of downloading of files (see claims 1, 8, 9). Finally, a design choice may be an acceptable rationale for an obviousness rejection when a claimed product merely arranges known elements in a configuration that provides no novel or unexpected results. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“[T]he particular placement of the contact provides no novel or unexpected results. The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art.”). In the instant case before us on appeal, the Examiner’s reliance on design choice in the arrangement of available download progress information cannot be said to be misplaced (see Final Act. 9). Routine optimization of scientific variables (or in this case, progress bars and notifications about download progress for video games) by ordinarily skilled artisans that produce predictable variations are likely (i) the product not of innovation but of ordinary skill and common sense, and (ii) barred by 35 U.S.C. § 103. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 420 (2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). In view of the foregoing, we sustain the rejection of representative claims 1, 8, and 9 as being obvious over the base combination of Hashimoto, Appeal 2020-006599 Application 15/201,880 10 Katsuhiko, and PS4, as well as the corresponding claims grouped respectively therewith. For similar reasons, and based on Appellant’s arguments as to claim 7 (see Appeal Br. 10), we also sustain the rejection of claim 7 (which depends directly from claim 1) over the base combination taken with PS4-2. CONCLUSION Appellant has not adequately shown the Examiner erred in rejecting claims 1 and 5-9 over the base combination of Hashimoto, Katsuhiko, and PS4. As a result, the Examiner’s rejections of claims 1 and 5-9 are affirmed. In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 5, 6, 8, 9 103 Hashimoto, Katsuhiko, PS4 1, 5, 6, 8, 9 7 103 Hashimoto, Katsuhiko, PS4, PS4-2 7 Overall Outcome 1, 5-9 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