SONY INTERACTIVE ENTERTAINMENT INC.

Patent Trials and Appeals Board

Jun 2, 2021

2020002039 (P.T.A.B. Jun. 2, 2021)

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.
15/508,206 03/02/2017 Nodoka Tokunaga 545-600 6838
27538 7590 06/02/2021
Dernier IP Law, LLC
89 Headquarters Plaza North
PMB 1469
Morristown, NJ 07960
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
info@gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NODOKA TOKUNAGA, MASAKI TAKASE, YUJI TAKEUCHI,
MASAHIRO FUJIHARA, AKIRA MIYASHITA, AND KEIGO TAMURA
____________________

Appeal 2020-002039
Application 15/508,206
Technology Center 2100
____________________

Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sony
Interactive Entertainment Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
The invention generally relates to effectively distributing video from a
user’s camera together with a screen of a game being played by the user.
Spec. ¶¶ 1, 4–6. Figure 9 is reproduced below:

Figure 9 depicts an example of a real space to be imaged by a video camera,
including three users A–C playing a game. Spec. ¶ 48. Figure 10 is
reproduced below:

Figure 10 depicts the result of detecting each user’s face in a camera image
using facial recognition software. Spec. ¶ 50.
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Figure 11 is reproduced below:

Figure 11 depicts a game screen with user A’s camera video superimposed
thereon. Spec. ¶ 60. In some embodiments, camera video including all the
users may be superimposed on a game screen. See, e.g, Spec. ¶ 87, Fig. 16.
Claims 1 and 11 are independent claims. Claim 1 is reproduced
below:
1. An information processing device comprising:
an image obtaining section configured to obtain an imaged
image from an imaging device,
where the imaged image includes elements of a plurality
of users, each of the plurality of users being located in a same
real space and engaging in an interactive exchange with an
application executing on the information processing device;
a face recognizing section configured to detect respective
face images of the plurality of users in the imaged image;
a display user determining section configured to determine
a determined user among the plurality of users to be included in
a display image;
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a face image clipping section configured to clip a region
including the face image of the determined user from the imaged
image;
a display image generating section configured to generate
the display image including the clipped region; and
an instruction receiving section configured to receive an
instruction from one of the plurality of users;
wherein the display user determining section determines
the determined user to be included in the display image on a basis
of the instruction received by the instruction receiving section.

The Pending Rejection
Claims 1–11 stand rejected under 35 U.S.C. § 102(a)(2) as anticipated
by Morin et al. (US 2009/0202114 A1; Aug. 13, 2009) (“Morin”). Final
Act. 3–7.
ANALYSIS
The Examiner finds Morin anticipates independent claims 1 and 11.
Final Act. 3–5, 7. Of particular relevance to this Appeal, the Examiner finds
Morin discloses an “imaged image includ[ing] elements of a plurality of
users, each of the plurality of users being located in a same real space,” as
recited in claim 1 (and similarly recited in claim 11). Final Act. 3, 7. In
addressing this limitation, the Examiner cites Figure 7C of Morin and its
associated description. Final Act. 3 (citing Morin, Fig. 7C, ¶ 194).
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Figure 7C of Morin is reproduced below:

As disclosed in Morin:
FIG. 7C illustrates an example of other games that can be
implemented with captured video. In frame 718, a poker game is
illustrated. One or more faces can be added corresponding to the
different players in the game. In this way, players can attempt to
read a player's response to his cards which can improve the
realism of the poker playing experience. In frame 720, a quiz
game is illustrated. By adding the facial expressions to the quiz
game, player reactions to answer correctly or incorrectly can also
add a sense of excitement to the game playing experience.
Morin ¶ 194.
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According to the Examiner, “the live action of Fig. 7C . . . clearly
teaches . . . each of the plurality of users being located in a same real space”
because “players are shown standing closely in the same space.” Ans. 10.
The Examiner explains that “[t]he captured video images of the players [in
Morin] are synthes[ized] or superimposed on the game screen but that does
not mean that the players are in a virtual space” because,” like Appellant’s
invention, “the live action of Fig. 7C illustrates the superimposed or
synthesized players.” Ans. 10 (citing Spec. ¶¶ 19, 20, 21, 24, Figs. 11–13,
16).
Appellant contends claims 1 and 11 are not anticipated by Morin
because Morin does not disclose an “imaged image includ[ing] elements of a
plurality of users, each of the plurality of users being located in the same real
space and engaging in an interactive exchange.” Reply Br. 4; Appeal
Br. 5–7. In particular, Appellant asserts that “even if some elements of the
image shown in FIG. 7C of Morin . . . are obtained by capturing images of
users engaged in gameplay, there is not disclosure that such users are
located in a same real space whilst engaged in such gameplay.” Reply
Br. 4. In other words, Appellant asserts “there is no disclosure that such
users were in the same real space when any elements of such users were
captured via a camera.” Reply Br. 4.2 Appellant further asserts that “FIG.
7C of Morin shows . . . face images of . . . players . . . superimposed on a
gameplay image,” but “the overall scenes are obviously in virtual space, not
real space.” Appeal Br. 5. Appellant also asserts that Morin’s disclosure of

2 See also Reply Br. 4 (“Although . . . FIG. 7C of Morin . . . may show 3 or 4
users in a virtual space, any elements of such users that are taken [from]
respective real spaces, are not disclosed as being from the same real
space.”).
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“improv[ing] the realism of the poker player experience” does not show that
its game screen space is real, but instead “inform[s] the reader that the
‘realism’ of a virtual space (illustrated in FIG. 7C) may be improved by
adding faces that are not in proximity to one another in real life.” Appeal
Br. 6 (citing Morin ¶ 194).
We agree with Appellant that the Examiner erred. As Appellant
explains, the cited disclosures of Morin fall short because they describe
capturing an image of each user in its own respective real space, rather than
obtaining an image of multiple users together in the same real space. See,
e.g., Morin, Fig. 7C, ¶ 194. In addition, Morin describes a web cam
connected to a single gaming device for obtaining video frame data of a
single face. Morin ¶¶ 15, 166, claim 16. Morin further describes players
interacting with their “respective cameras,” with “real-time video capture at
their respective locations, and . . . captured video transmitted . . . to the other
gaming device to improve the quality of gameplay.” Morin ¶¶ 59, 145, 158.
These descriptions support our understanding that, in Morin, users are
situated in their own respective locations—not in “the same real space”—
when video images are being captured.
We also disagree with the Examiner that the game screen shown in
Figure 7C of Morin satisfies “the same real space” as recited. Even though
this figure shows multiple users’ faces (each taken from a real space image
of the respective user) within the same virtual space, we find no persuasive
evidence of each user being located in the same real space when the video
was being captured.
Therefore, because the Examiner has not shown that Morin discloses
an “imaged image includ[ing] elements of a plurality of users, each of the
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plurality of users being located in a same real space,” we are constrained by
this record to reverse the rejection of independent claims 1 and 11 as
anticipated under 35 U.S.C. § 102(a)(2) by Morin. Each of the dependent
claims include the same limitation via their ultimate dependency from claim
1, and the Examiner does not make any other finding that cures the above
deficiencies. See Final Act. 5–7 (additionally citing Morin ¶¶ 11, 12, 19, 20,
36, 166, 181, 183, 188, 213, Figs. 7D–7G, 8); Ans. 8–10. Accordingly, we
also reverse the rejection of dependent claims 2–10 as anticipated under
35 U.S.C. § 102(a)(2) by Morin for the same reasons.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 102(a)(2) Morin 1–11

REVERSED