Ex Parte 6193520 et al

Patent Trials and Appeals Board

Jan 10, 2013

90010666 - (D) (P.T.A.B. Jan. 10, 2013)

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.
90/009,524 08/17/2009 6193520 ADC520 6819
56031 7590 01/11/2013
Whitaker Law Group
1218 Third Avenue
Suite 1809
Seattle, WA 98101
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/11/2013 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 ADC TECHNOLOGY, INC.
______________

Appeal 2012-012256
Reexamination Control Nos. 90/009,524 and 90/010,666
Patent 6,193,520 B11
Technology Center 3900
______________

Before JOHN C. MARTIN, MICHAEL R. ZECHER,
and GLENN J. PERRY, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(b) from the July 6, 2011,
final Office action (hereinafter “Final Action”) in merged Ex Parte

1 The '520 patent identifies itself as a continuation-in-part of U.S.
Application 08/642,560, filed on May 3, 1996 (now U.S. Patent 5,775,995),
which is a divisional of U.S. Application No. 08/555,400, filed on
November 9, 1995 (U.S. Patent No. 5,735,744), which is a continuation-in-
part of U.S. Application 08/232,862, filed on April 25, 1994 (now U.S.
Patent 5,489,103). See '520 patent, second Certificate of Correction, issued
(Continued on next page.)
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Reexamination Control Nos. 90/009,524 and 90/010,666 for reexamination
of the '520 patent.2 During these merged reexamination proceedings, some
of original claims 1-21 were amended and new claims 22-48 were added.
All of claims 1-48 were rejected in the Final Action. As explained below,
some rejections were withdrawn in the Answer, leaving for our
consideration rejections of claims 1-11, 13-36, and 38-48 under 35 U.S.C. §
112 (first and second paragraphs), § 102(b), and § 103(a).
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM-IN-PART.

I. STATEMENT OF THE CASE
A. Related Litigation and Appeals
Appellant has identified the following currently stayed litigation as
related to this appeal: Case No. 2:08-CV-01579-RSM (W.D. Wash.). Br. 2.3

April 15, 2008.
2 The '524 proceeding was initiated by a reexamination request filed by
Patent Owner, ADC Technology, Inc. The '666 proceeding was initiated by
a reexamination request filed by third party requester Microsoft Corporation.
The two proceedings were merged by a March 12, 2010, decision of the
Director of the Central Reexamination Unit.
3 “Patent Owner’s Appeal Brief,” filed November 2, 2011, as supplemented
by the “Summary of Claimed Subject Matter” in “Corrections to Patent
Owner’s Appeal Brief,” filed December 9, 2011.
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According to Appellant (id.), this litigation involves the '520 patent as well
as the following additional U.S. patents, which are involved in the following
reexamination proceedings:
1. Patent 6,875,021 (the subject of merged ex parte and inter partes
reexamination proceedings 90/009,520 and 95/001,237);
2. Patent 6,488,508 (the subject of merged ex parte and inter partes
reexamination proceedings 90/009,521 and 95/001,234);
3. Patent 6,702,585 (the subject of merged ex parte and inter partes
reexamination proceedings 90/009,522 and 95/001,236); and
4. Patent 5,775,995 (the subject of merged ex parte reexamination
proceedings 90/009,523 and 90/010,663).
Of these four pairs of merged proceedings, only the proceedings
involving the ‘995 patent have been the subject of an appeal to the Board. In
a November 10, 2011, Decision in that appeal (No. 2012-000193), the Board
reversed all of the Examiner’s rejections.

B. The Invention Described in the '520 Patent
The invention described in the '520 patent is an interactive
communication system for transmitting video game and karaoke software
via communication lines from a host facility to a calling communication
terminal device in each individual home. '520 patent specification 1:46-50.
Figure 1 of the '520 patent is reproduced below.
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Figure 1 is a block diagram of a communication terminal device according to
the present invention. Id. at 3:35-36. In response to a request generated by
personal communicator 1, a host facility (100 in Figure 2, not reproduced
herein) transmits the requested data to personal communicator 1 over
a transmission path 200. Id. at 4:39-45. In addition, the host sends data
representing first, second, and third predetermined time periods (recited as
“duration data” in independent claims 1, 8, and 15) to the personal
communicator 1. Id. at 6:20-23. When storage of the game data in the
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memory 8 of personal communicator 1 has been completed, such completion
is indicated on the monitor 16. Id. at 6:24-28.
As explained below, execution of the received game data will be
interfered with (e.g., prevented) upon detection of a predetermined time
period (i.e., a “second” predetermined time period) that begins with one of
the following conditions: receipt of the game data; the start of execution of
the game date; or the conclusion of a period of using the game data.
Figure 7 of the application is reproduced below.

Figure 7 is a flowchart of “the process to effect deletion of the game
data.” Id. at 3:49-50. The time when data receipt by personal communicator
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1 has been completed is read out at step S1200. Id. at 6:38-39. At step
S1210, which is repeatedly performed, “[t]he current time is . . . read out and
the time period which has elapsed after the completion of the data receipt is
calculated.” Id. at 6:39-41. When it is determined that a first predetermined
time period has elapsed, a warning of this condition is given at step S1230.
Id. at 6:44-46. Next, “[w]hen it is determined, at step S1250, that a second
predetermined time period has elapsed, the game data stored in the memory
8 is deleted at step S1260, and the instant process ends.” Id. at 6:47-50. In
contrast to the other flowcharts discussed below, the Figure 7 flowchart does
not employ a third predetermined time period.
Figure 12 is reproduced below.
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Figure 12 is a flowchart showing an embodiment in which “a predetermined
time period to prevent further use of the image data is counted from the
starting time of use of the data, not from the receiving time of the data from
the host facility.” Id. at 11:37-41 (emphasis added). When the image data
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have been used for a first predetermined time period, a warning is issued at
step S1330. Id. at 11:43-50. When it is determined, at step S1350, that the
second predetermined time period has elapsed, “a process to prevent further
use of the above image data is performed at step S1360.” Id. at 11:52-55.
The specification more particularly explains that
[t]here may be various means to prevent further use of the
image data, such as deleting the image data stored in the
memory 8, blocking, as shown in FIG. 8A or 8B, the view on
the screen of the monitor 16 in accordance with the progress of
the image data processing, stopping, as shown in FIG. 8C, the
sound generated in accordance with the progress of the image
data processing and invalidating, as shown in FIG. 8D, any
operation of the input device 6 or the controller 31 for
instruction.
Id. at 11:56-64.
In contrast to the Figure 7 embodiment, use of the image data in the
Figure 12 embodiment can be resumed upon payment of a surcharge before
a third predetermined time period has elapsed (at steps S1370-1390). Id. at
11:65-12:4. In the case where the image data stored in the memory are
deleted to prevent their further use, it is preferable to preserve the image data
in a not-shown temporary storage device before deleting it from the memory
and then to restore it from the temporary storage device into the memory
after the surcharge is paid. Id. at 12:9-15.
Figure 13 is reproduced below.
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Figure 13 is a flowchart of a further embodiment. Id. at 12:20. In this
embodiment, “when the program sent from the host facility is continuously
unused for a predetermined time period, a process to prevent further use of
the program is performed.” Id. at 12:20-23 (emphasis added). Measurement
of this predetermined time period begins at step S1400 by detecting “[w]hen
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the program sent from the host facility is used for some time and then the
use ends.” Id. at 12:25-27. The Figure 13 embodiment in other respects is
similar to the Figure 12 embodiment.

C. The Claims on Appeal4
The independent claims on appeal are amended claims 1 and 15 and
original claim 8, which are reproduced below. As is apparent from these
claims, original claims 1, 8, and 15 recited “clock means” for keeping the
predetermined time periods measured in the flowcharts of Figures 7, 12, and
13, respectively. One of the § 112, first paragraph, issues before us is
whether the '520 patent specification fails to provide written description
support for the amendment of claim 1 to make the interference means
responsive to either of two clock means: “first clock means for keeping a
first predetermined time period after said receiving means receives the
transmission” and “second clock means for keeping a second predetermined
time period after said executing means starts execution of the program or
data processing.” Claims App. (Br. 23) (emphasis added: underlining
omitted). Another § 112, first paragraph, issue is whether the '520 patent

4 The claims on appeal, which are reproduced in the Claims Appendix to the
Brief, are the claims as amended by the “Amendment and Response” filed
November 22, 2010. The proposed claim amendments in the “Amendment
and Response” filed on August 5, 2011, following the Final Action, were
refused entry in an Advisory Action mailed August 16, 2011. Appellant did
not file petition to obtain review of this decision by the Examiner.
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specification supports the amendment of claim 15 to add a “wherein” clause
reciting “simultaneous interaction among a plurality of players.”
Claims 1, 8, and 15 read as follows:
1. (TWICE AMENDED) A communication system for
transmitting at least one of the program, the data, and a
combination of the program and data from a host facility to a
communication terminal device, said communication terminal
device comprising:
an input device for inputting instructions to execute the
program or to process the data,
receiving means for receiving one of the program, the
data, and a combination of the program and data as sent out
from said host facility,
storage means for storing the program, the data, or a
combination of the program and data received by said receiving
means,
executing means for executing the program stored in said
storage means or executing data processing by using the data
stored in said storage means, in accordance with instructions
from said input device,
first clock means for keeping a first predetermined time
period after said receiving means receives the transmission,
second clock means for keeping a second predetermined
time period after said executing means starts execution of the
program or data processing; and
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interference means for interfering with execution of said
executing means when said first clock means counts said first
predetermined time period or said second clock means counts
said second predetermined time period; and
said host facility comprising:
storage means for storing at least one of the program, the
data, and a combination of the program and data together with
the duration data indicative of the first predetermined time
period to be counted by said first clock means, and
sending out means for sending out at least one of the
program, the data, and a combination of the program and data
together with the duration data stored in said storage means to
said communication terminal device.
8. (ORIGINAL) A communication system for
transmitting at least one of the program, the data, and a
combination of the program and data from a host facility to a
communication terminal device, said communication terminal
device comprising:
an input device for inputting instructions to execute the
program or to process the data,
receiving means for receiving one of the program, the
data, and a combination of the program and data as sent out
from said host facility,
storage means for storing the program, the data, or a
combination of the program and data received by said receiving
means,
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executing means for executing the program stored in said
storage means or executing data processing by using the data
stored in said storage means, in accordance with instructions
from said input device,
clock means for keeping a predetermined time period
after said executing means starts execution of the program or
data processing, and
interference means for interfering with execution of said
executing means when said clock means counts said
predetermined time period; and
said host facility comprising:
storage means for storing at least one of the program, the
data, and a combination of the program and data together with
the duration data indicative of the predetermined time period to
be counted by said clock means, and
sending out means for sending out at least one of the
program, the data, and a combination of the program and data
together with the duration data stored in said storage means to
said communication terminal device.
15. (TWICE AMENDED) A communication system for
transmitting at least one of the program, the data, and a
combination of the program and data from a host facility to a
communication terminal device, said communication terminal
device comprising:
an input device for inputting instructions to execute the
program or to process the data, receiving means for receiving,
via wireless transmission, one of the program, the data, and a
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combination of the program and data as sent out from said host
facility,
storage means for storing the program, the data, or a
combination of the program and data received by said receiving
means,
executing means for executing the program stored in said
storage means or executing data processing by using the data
stored in said storage means, in accordance with instructions
from said input device,
clock means for keeping a predetermined time period
after said execution means ends the execution of the program or
data processing to count a time period during which at least one
of the program, the data, and a combination of the program and
data is continuously unused, and
interference means for interfering with execution of said
executing means when said clock means counts a
predetermined time period; and
said host facility comprising:
storage means for storing at least one of the program, the
data, and a combination of the program and data together with
duration data indicative of the predetermined time period to be
counted by said clock means, and
sending out means for sending out at least one of the
program, the data, and a combination of the program and data
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together with the duration data stored in said storage means to
said communication terminal device, and
wherein the communication terminal device is further
configured to connect over telecommunication lines to at least
another communication terminal device to facilitate real-time
interactive communication between the at least two
communication terminal devices regarding the program, the
data, or the combination of program and data to support
simultaneous interaction among a plurality of players executing
the same program on the at least two communication terminal
devices, each communication terminal device being associated
with one of the plurality of players.
Claims App. (Br. 23, 25, 28).

D. The Rejections5
Although all claims 1-48 were rejected over prior art in the Final
Action, the prior art rejections of claims 5, 12, 19, and 35-38 were
withdrawn at pages 3-4 of the Answer. However, all of these claims except
claims 12 and 37 remain rejected under 35 U.S.C. § 112. Thus, the claims
that require our consideration in this appeal are claims 1-11, 13-36, and 38-
48.

5 The prior art rejections to be reviewed in this appeal are incorrectly
identified in the Brief (at 4) and Reply Brief (at 3). Furthermore, the
(Continued on next page.)
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Claims 1-7, 15-21, 23-30, 35, 36, 38, 39, 41, 42, and 44 stand rejected
under 35 U.S.C. § 112, first paragraph, for lacking written description
support. Specifically, claims 1-7, 23, 24, 26-30, 35, 36, 39, 41, and 42 stand
rejected for reciting an interference means responsive to a first
predetermined time period after the receipt of transmission or a second
predetermined time period after the start of execution, 6 whereas claims 15-
21, 23-25, 36, 38, and 44 stand rejected for reciting “simultaneous
interaction among a plurality of players.” Final Action 6; Answer 5.
Claims 26, 40, 45, and 47 stand rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
the invention. Final Action 8; Answer 6.
Claims 8, 11, and 137 stand rejected under 35 U.S.C. § 102(b) for
anticipation by Chernow.8 Final Action 9; Answer 7.
Claims 1, 4, 6, 15, 18, 20, 22, 23, 25, 26, 41, 42, and 46-489 stand
rejected under 35 U.S.C. § 103(a) for obviousness over Chernow in view of
Tsumura.10 Final Action 12; Answer 10.

“Argument” section of the Brief fails to address some grounds of rejection.
6 The statement (Final Action 6) of this basis for the rejection omits
(presumably inadvertently) claims 35 and 36, both of which depend on
claims 1 and 5, which are rejected on this basis.
7 The rejection of claim 12 on this ground (Final Action 9) was withdrawn
at page 3 of the Answer.
8 Chernow et al. U.S. Patent 4,999,806.
9 The rejection of claims 5 and 19 on this ground (Final Action 12) was
withdrawn at page 3 of the Answer. The Examiner treats claim 47, which
(Continued on next page.)
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Claims 9 and 14 stand rejected under § 103(a) for obviousness over
Chernow in view of Kato.11 Final Action 28; Answer 25.
Claim 10 stands rejected under § 103(a) for obviousness over
Chernow in view of Kato, further in view of Tsumura. Final Action 30;
Answer 27.
Claims 2, 3, 7, 16, 17, and 21 stand rejected under § 103(a) for
obviousness over Chernow in view of Tsumura, further in view of Kato.
Final Action 31; Answer 29.
Claims 27-2912 stand rejected under § 103(a) for obviousness over
Chernow in view of Tsumura and further in view of Sanbe.13 Final
Action 38; Answer 35.

depends on itself, as dependent on claim 46 for the purpose of applying prior
art. Final Action 27.
10 Tsumura U.S. Patent 5,547,202.
11 Kato Japanese Laid-open Application JP 04-10191 (corresponding to
Japanese Application JP 2-113463). The Examiner apparently relies on an
English-language translation submitted as Exhibit A with the reexamination
request in the ‘524 proceeding.
12 The rejection of claims 35 and 36 on this ground (Final Action 38) was
withdrawn at page 3 of the Answer, as was the rejection of claims 37 and 38
based on Chernow in view of Sanbe and further in view of Tsumura (Final
Action 43).
13 Sanbe et al. Japanese Unexamined Patent Application Publication H4-
32898. An English-language translation of this document was provided with
(Continued on next page.)
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Claim 30 stands rejected under § 103(a) for obviousness over
Chernow in view of Tsumura, Sanbe, and Kaniwa.14 Final Action 46;
Answer 37.
Claims 31-33 stand rejected under § 103(a) for obviousness over
Chernow in view of Sanbe. Final Action 42; Answer 36.
Claim 34 stands rejected under § 103(a) for obviousness over
Chernow in view of Sanbe and Kaniwa. Final Action 47; Answer 38.
Claims 39 and 4015 stand rejected under § 103(a) for obviousness over
Chernow in view of Tsumura and Suzuki.16 Final Action 48; Answer 39.
Claims 43 and 45 stand rejected under § 103(a) for obviousness over
Chernow in view of Suzuki. Final Action 49; Answer 40.17
Claims 24 and 44 stand rejected under § 103(a) for obviousness over
Chernow in view of Tsumura and Tashiro.18 Final Action 50; Answer 41.

the nonfinal Action mailed October 13, 2010.
14 Kaniwa et al. U.S. Patent 5,699,370.
15 For the purpose of applying prior art, the Examiner treats claim 40, which
depends on itself, as dependent on claim 39. Final Action 49.
16 Suzuki U.S. Patent 5,157,643.
17 The Examiner treats claim 45, which depends on itself, as dependent on
claim 43 for the purpose of applying the prior art. Final Action 50.
18 Tashiro et al. U.S. Patent 4,998,199.
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II. DISCUSSION
A. The § 112, ¶ 1 Rejection (Claims 1-7, 15-21,
23-30, 35, 36, 38, 39, 41, 42, and 44)
1. Claims Reciting Interference Means Responsive to the
Recited First And Second Clock Means (Claim 1 and
Dependent Claims 2-7, 23, 24, 26-30, 35, 36, 39, 41, and 4219)
As noted above, original claim 1 has been amended by: (i) changing
the originally recited “clock means for keeping a predetermined time period
after said receiving means receives the transmission” to “first clock means
for keeping a first predetermined time period after said receiving means
receives the transmission”; adding a “second clock means for keeping a
second predetermined time period after said executing means starts
execution of the program or data processing” (emphasis added); and
(iii) reciting that the interference means “interfer[es] with execution of said
executing means when said first clock means counts said first predetermined
time period or said second clock means counts said second predetermined
time period.” Claims App. (Br. 23) (emphasis added; underlining omitted).
The Examiner found that “there is no original disclosure of ‘when said
first clock means counts said first predetermined time period or said second
clock means counts said second predetermined time period’ (emphasis

19 All of these dependent claims depend on claim 1 except claim 26, which
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added).” Final Action 7. According to the Examiner, “[t]he disclosure lists
these as separate embodiments, not as choices in one embodiment.” Id.
Appellant’s first argument against the rejection is that “it is improper
to reject the proposed amendments based on the erroneous position that the
claims must be coextensive with only one disclosed embodiment at a time.”
Br. 5. As support for this proposition, Appellant explains:
It is axiomatic that a claim is not limited to one embodiment of
the invention. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 906 (Fed. Cir. 2004) (“[T]his court has expressly rejected
the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as
being limited to that embodiment”); Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1327-28 (Fed. Cir. 2002); Inverness
Med. Switzerland GmbH v. Warner Lambert Co., 309 F.3d
1373, 1379 (Fed. Cir. 2002) (“It is improper to limit the claim
based on a preferred embodiment of the invention”).
Id. at 4-5. This argument is unpersuasive because these decisions do not
address the question of whether a claim must be, in Appellants’ words,
“coextensive with only one disclosed embodiment at a time.” Br. 5.
Furthermore, this question was answered in the affirmative in Hyatt v.
Dudas, 492 F.3d 1365, 1371 (Fed. Cir. 2007):
[I]n rejecting application claim 163, the examiner explained that
the written description did not support the particular claimed
combination of elements, even listing each and every element
of the allegedly unsupported combination. And the examiner

depends on claim 8.
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was explicit that while each element may be individually
described in the specification, the deficiency was the lack of
adequate description of their combination-he stated, “While
each element may individually be discussed neither the
specification nor drawings clearly support the claimed
embodiment as a whole.” Id. (emphasis added). He further
indicated what Hyatt needed to address his concern: “[I]t is not
enough that applicant show where each claimed element resides
in the earliest filed application but [he] must also provide
support for the linkage of the claimed elements creating the
embodiment.” Id. (emphasis added).”
Hyatt was clearly notified of what exactly the examiner
felt was missing by way of written description. The burden was
then properly shifted to Hyatt to cite to the examiner where
adequate written description could be found, or to make an
amendment to address the deficiency.
(Brackets in original.)
Appellant’s next argument is that “[t]he specification explicitly
supports counting a predetermined time period from either the start of
execution or after the program/data is received. See '520 Patent at col. 10,
lines 15-20 and col. 11, lines 37-41.” Br. 4. These first and second cited
passages describe the Figure 7 and Figure 12 embodiments, respectively.
We therefore agree with the Examiner’s finding that
[t]he passages cited say nothing about two clocks and making a
decision based upon the results of two clocks. The passages do
describe two embodiments: one, with one clock and interfering
based upon the counting of that one clock; and two, with one
clock, that counts a different time period than the time period of
the first embodiment, and interfering based upon the counting
of that one clock.
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Answer 45.
Finally, Appellant argues that claim 1 is supported by the Figure 12
embodiment because it
shows a “second time period 1350” and a “third time period
1380.” As described with reference to Figure 12, the
embodiment illustrated in Figure 12 also includes an element to
“prevent data use 1360” which is effective upon the expiration
of both the “second time period 1350” and the “third time
period 1380.” See '520 Patent, col. 11, line 50 to col. 12, line
15. Accordingly, the single embodiment illustrated in Figure
12 and described in the specification does, in fact, fully support
the claim language, as amended. Patent Owner acknowledges
that different ordinal identifiers may be used (i.e., “second and
third” rather than “first and second”), however those
designators are arbitrary and do not bear on the patentability of
the claims.
Reply Br. 4 (emphasis added). We agree with the Examiner that “no figure
(including figure 12 to which the cited passage refers) shows the two clocks
claimed in amended claim 1 (NOTE: figure 12 does show a second and third
time period, however these time periods are not related to the first and
second clock[s] of claim 1).” Answer 45. None of the first, second, and
third predetermined time periods measured in the Figure 12 embodiment
corresponds to the recited “first predetermined time period after said
receiving means receives the transmission.” Instead, they are all based on
the starting time of use of the received data, as measured at step S1300. '520
patent specification 11:43-45.
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The § 112, first paragraph, rejection of claim 1 is therefore sustained,
as is the rejection on this ground of its dependent claims 2-7, 23, 24, 27-30,
35, 36, 39, 41, and 42, whose merits regarding this ground of rejection are
not separately argued. For the same reason, we also sustain the rejection of
claim 26, which depends on claim 8.

2. Claims Reciting “Simultaneous Interaction” (Claim 15
and Dependent Claims 16-21, 23-25, 36, 38, and 4420)
As shown above, independent claim 15 was amended to include the
following paragraph, which recites “real-time interactive communication
between . . . communication terminal devices” and “simultaneous interaction
among a plurality of players executing the same program”:
wherein the communication terminal device is further
configured to connect over telecommunication lines to at least
another communication terminal device to facilitate real-time
interactive communication between the at least two
communication terminal devices regarding the program, the
data, or the combination of program and data to support
simultaneous interaction among a plurality of players executing
the same program on the at least two communication terminal
devices, each communication terminal device being associated
with one of the plurality of players.
Claims App. (Br. 29) (emphasis added; underlining omitted).

20 Only dependent claims 16-21 are dependent on claim 15.
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The Examiner found that “[t]he limitation[], ‘simultaneous
interaction’ (claim 15), is not disclosed in the specification as originally
filed. There is no mention of ‘simultaneous’ at all.” Final Action 7.
Appellant concedes that “simultaneous” does not appear in the specification,
but contends it is clearly implicit or inherent in the disclosure. Br. 5 (citing
M.P.E.P. § 2163(I)(B), which states, “While there is no in haec verba
requirement, newly added claim limitations must be supported in the
specification through express, implicit, or inherent disclosure.”). More
particularly, Appellant asserts (Br. 5) that “simultaneous” is defined to mean
“occurring at the same time” at page 578 of Webster’s New World
Dictionary and Thesaurus (1996) and thus finds support in the following
passage of the '520 patent specification:
[A] plurality of players in remote places can play the same
game together.
For example, the transmission paths 200 or
telecommunication lines is utilized to connect a plurality of
personal communicators 1 to one another such that the
interactive communication can be performed therebetween.
When the plurality of personal communicators 1 are supplied
with the same game data, the players have the same game
characters in common. Therefore, the data to be transmitted
among the plurality of personal communicators 1 are only
character number data and the position data. Thus, the players
together participate, on a real time basis, in the same game on
the monitor 16 of respective personal communicators 1.
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'520 specification 8:11-21 (emphasis added). The Examiner agrees that
“simultaneous” means “occurring at the same time” but finds that it lacks
support in the above-quoted passage for the following reasons:
While it is true ‘simultaneous’ means “occurring at the same
time”, ‘real-time’ does not have the same definition, especially
in the context of a computer environment. In computer
systems, ‘real-time’ may refer to any of many different facets of
the system from the quick speed of processing, to the
online/internet processing protocols, and/or the apparently
instantaneous processing from the perspective of a human
being.
Further, if ‘real-time’ did mean ‘simultaneous’, then it is
rather unclear why the claim limitation would need both terms.
Answer 47. Appellant responds by arguing that “[i]t cannot be seriously
argued that if players are playing together on a real time basis, they are not
necessarily playing together ‘at the same time.’ Accordingly, the word
‘simultaneously’ is implicitly supported by at least that passage of the
specification.” Br. 5. We agree with Appellant. The above-quoted passage
from the '520 patent specification, by stating that “the players together
participate, on a real time basis, in the same game,” means that the players
are interacting “at the same time,” i.e., “simultaneously.” Br. 5. We also
agree with Appellant that the use of both “real-time” and “simultaneous” in
the paragraph at issue is not unnecessary, redundant, or confusing. Reply
Br. 6. As explained by Appellant,
the phrase “real-time interactive communication” describes the
function of each communication terminal device, not the
activity of the respective player (i.e. user) associated with that
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device. Meanwhile, the phrase “simultaneous interaction among
a plurality of players executing the same program on the at least
two communication terminal devices” describes what is
realized, i.e. supported by, the real-time interactive
communication activity between the at least two
communication terminal devices.
Id. In other words, the claimed “simultaneous interaction among a plurality
of players” merely describes the effect of the claimed “real-time interactive
communication” between the communication terminal devices.
We therefore do not sustain the § 112, first paragraph, rejection as to
the claims that are rejected merely for reciting the “simultaneous interaction”
limitation: i.e., (i) independent claim 15 and its dependent claims 16-21; and
(ii) claims 25, 38, and 44, which depend on claim 8. However, the rejection
of the other claims that recite this “simultaneous interaction” limitation (i.e.,
claims 23, 24, and 36, which depend on claim 1) is sustained because they
also recite interference means responsive to the recited first and second
clock means, which is the basis discussed above for sustaining the § 112,
first paragraph, rejection of claim 1.

3. Conclusion
The § 112, first paragraph, rejection is sustained with respect to claims
1-7, 23, 24, 26-30, 35, 36, 39, 41, and 42 and not sustained with respect to
claims 15-21, 25, 38, and 44.

B. The § 112, ¶ 2 Rejection (Claims 26, 40, 45, and 47)
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Claim 26 reads as follows:
26. (NEW) The communication system according to
claim 8, further comprising a fourth clock means for keeping a
fourth predetermined time period after said executing means
starts execution of the program or data processing and the
interference means interferes with execution of said executing
means when said first clock means counts said first
predetermined time period or said second clock means counts
said second predetermined time period.
Claims App. (Br. 32) (emphasis added; underlining omitted). However,
parent claim 8 does not recite a first, second, or third clock means or a first,
second, or third predetermined time period. Instead, it recites a “clock
means for keeping a predetermined time period after said executing means
starts execution of the program or data processing” and “interference means
for interfering with execution of said executing means when said clock
means counts said predetermined time period.” Claims App. (Br. 26)
(emphasis added). The Examiner therefore concluded that “there is no
antecedent basis for the fourth and second clock means and time periods
[recited in claim 26].” Final Action 8. The Examiner rejected each of
claims 40, 45, and 47 as being indefinite for depending on itself. Id.
Appellant does not dispute the correctness of these rejections, instead
pointing out that “Patent Owner attempted to correct these informalities by
Rule 116 amendment, which was not entered.” Br. 5. The § 112, second
paragraph, rejection of claims 26, 40, 45, and 47 is accordingly sustained.
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We note that the Examiner, for the purpose of considering the
patentability of claim 26 over the prior art, interprets the recited “fourth
clock means for keeping a fourth predetermined time period” to mean
“second clock means for keeping a second predetermined time period.”
Final Action 24. Also, as noted above, the Examiner for the same reason
treats claims 40, 45, and 47 as dependent on claims 39, 43, and 47,
respectively.

C. The § 102(b) Rejection of Claims 8, 11, and 13 (Chernow)
Chernow’s invention is directed to a technique for the sale and
distribution of software via telephone. Chernow 1:5-7.
The principal issue regarding the rejection of claim 8 is whether the
Examiner was correct to find that Chernow describes “clock means for
keeping a predetermined time period after said executing means starts
execution of the program or data processing.” (Emphasis added.) The
Examiner (Final Action 10) reads this claim language on two passages in
Chernow. The first is Chernow’s statement that an object of the invention is
“to permit the purchaser to rent the protected software for a period of time
after which it will self destruct.” Chernow 2:3-5. The second passage reads
as follows:
The term of use for the leased software can either be a
period of time or a number of runs. The specific information
can be encryptically stored within the leased software. When
leased software is used, the number of runs remaining under
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lease or a periodic update of the time remaining under lease is
encryptically recorded within the program image in memory
and on disk. At the conclusion of the term of use, the software
renders itself unusable or erases itself from the user’s disk.
Id. at 5:10-19 (emphasis added). It appears that the Appellant and the
Examiner agree that Chernow’s lease period expires a predetermined time
period after the game data are received, regardless of whether or when the
game data are used. Appellant challenges the rejection because
the general nature of the Chernow reference is toward a strict
time period over which the purchaser has absolutely no control,
which teaches away from a time period that is tolled until actual
execution begins. In contrast, Chernow clearly discloses that
the time period is based on a “time remaining under lease” or
“the number of runs remaining under lease”. The recited
feature of Claim 8 enables the purchaser to retrieve the program
yet not begin playing the program until a later time, without
fear that the limited time period will expire before the purchaser
can enjoy the program. See[], e.g., '520 Patent at column 11,
lines 36-41. Such a feature is nowhere taught or suggested by
the art of record.
Br. 7. The Examiner finds that the claim language does not recite “initiating
a measure[ment] time period based on the execution of software”
(Answer 48; emphasis modified) and concludes that
[t]he broadest reasonable interpretation of the claim language “a
predetermined time period after said executing means starts
execution” is disclosed by showing a time period that merely
encompasses “after said executing means starts execution”. A
clock means that keeps a time period that includes the time
before execution starts and the time after execution starts (for
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example a time period that runs through this entire range) still
keeps a time period after said execution means starts execution.

Answer 48-49.21 We agree with Appellant that “without any mechanism for
associating the time period with the start of execution, there is no way to
keep a predetermined time period after it starts.” Reply Br. 8. Thus, the
claim language does not permit the recited “a predetermined time period” to
begin prior to the start of execution, as concluded by the Examiner.
The § 102(b) rejection of independent claim 8 and its dependent
claims 11 and 13 for anticipation by Chernow is therefore not sustained.
Although this decision makes it unnecessary to reach the merits of
Appellant’s separate argument regarding dependent claim 13, we address
that argument here because it is also made in response to the § 103(a)
rejection of dependent claims 6 and 20, which depend on independent
claims 1 and 15, respectively.
Claim 13 reads as follows:
13. (ONCE AMENDED) The communication system
according to claim 8, wherein said interference means
comprises means for invalidating [the operation of] an
operation on said input device.
Claims App. (Br. 28). The Examiner (Final Action 11-12) reads this claim
language on Chernow’s above-quoted statement that “[a]t the conclusion of
the term of use, the software renders itself unusable or erases itself from the
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user’s disk.” Chernow 5:16-18. The Examiner reasons that “[i]f a software
is rendered unusable or erased, any operation on or from an input device to
or for the unusable/erased software would be invalidated. An input signal in
[an] attempt to communicate with an unusable/erased software is necessarily
invalid.” Answer 49.

Appellant argues that
the Patent Office mistakenly associates “operation” with
“execution” of the software, and then concludes that if
execution is blocked, input to the blocked software is invalid.
However, Claim 13 was amended in response to the non-final
Office Action dated October 13, 2010, to clarify what is
invalidated, namely “an operation on said input device”.
Support for the amendment is found, at least, at column 10,
lines 34-44 of the '520 Patent. An example of “invalidating an
operation on said input device” is rejecting signals from the
input device.
Br. 9. The lines cited by Appellant appear in the following passage in the
'520 patent specification and are shown below in italics:
In the above described embodiment, the game data stored
in the memory 8 is deleted in order to interfere with the
progress of game. Alternative arrangements to this are
provided by the present invention, as shown in FIGS. 8A
through 8D. . . . Further alternative is provision of a switch 61
shown in FIG. 8D which invalidates the operation on the input

21 See also Final Action 53-54.
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device 6 or the controller 31. The switches 131 and 61 may be
mechanical components or may be software operations. For
instance, actuation of the sound source 10 may be halted by the
CPU 5, or the CPU 5 may reject signals from the input device 6
or the controller 31. As still another alternative, the power of
the personal communicator may be turned off when the CPU 5
determines that a predetermined time has elapsed after the
game data was received.
'520 patent specification 10:21-44 (emphasis added).
We agree with Appellant that claim 13 specifically requires
invalidating an operation on the input device and thus is not described by
Chernow’s above-quoted disclosure that “the software renders itself
unusable or erases itself from the user’s disk.” The rejection of claim 13 is
therefore not sustained for this reason and also because we do not sustain the
rejection of parent claim 8.

D. The § 103(a) Rejection Based on Chernow in View of Tsumura
(Claims 1, 4, 6, 15, 18, 20, 22, 23, 25, 26, 41, 42, and 46-48)
1. Claim 1
Although we are sustaining the § 112, first paragraph, rejection of
claim 1 and its dependent claims, we address the merits of the §103(a)
rejection of these claims in the interest of completeness.
As already noted, the “interference means” recited in claim 1 is
responsive to each of a “first clock means for keeping a first predetermined
time period after said receiving means receives the transmission [of one of
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the program, the data, and a combination of the program and data as sent out
from the host facility]” or a “second clock means for keeping a second
predetermined time period after said executing means starts execution of the
program or data processing.” Claims App. (Br. 23) (emphasis added;
underlining omitted).
The Examiner, instead of reading the clock means that keeps a
predetermined time period after the executing means starts execution on
Chernow’s above-discussed lease period, as in the rejection of claim 8 for
anticipation by that reference, reads claim 1’s first clock means for keeping a
first predetermined time period after the receiving means receives the
transmission on Chernow’s lease period. Final Action 14-15. The Examiner
relies on Tsumura for a teaching of the second clock means for keeping a
second predetermined time period after the executing means starts execution
of the program or data processing. Id. Appellant challenges only the
Examiner’s reliance on Tsumura.
Tsumura’s invention relates to the communication of large volumes of
data of the type used in computer games. Tsumura 1:9-10. Figure 3 of
Tsumura is reproduced below.
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Figure 3 shows a receiving device 13 that includes, inter alia, an antenna for
the receipt of signals from a satellite and a large-scale memory device 35 for
storing the digital data received, such as game data. Id. at 4:40-47; 6:9-11.
Output terminal 38 outputs display and audio signals to externally connected
visual display and audio units. Id. at 4:50-52.
Figure 7 of Tsumura is reproduced below.
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Figure 7 is a schematic block diagram of the preferred embodiment of a
device for the collection of charges for using a commercial terminal. Id. at
3:57-59. This terminal comprise a CPU 71, a RAM 72 for storing
downloaded game programs, input keys 73, a visual display unit 74, a
receiving device 75 to select the desired game data needed from the
incoming data stream received from a communications satellite, and a coin
input unit 76. Id. at 8:50-60.
In operation in accordance with one example, with the game machine
showing the initial screen, the player puts a coin into the coin input unit 76
to pay for the use of the machine. Id. at 9:14-16. Next, the player uses the
input keys 73 to select the desired game and, in the event that an additional
charge has to be paid, this information will be presented in the display. Id.
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at 9:24-29. If no extra charge needs to be paid, the requested game program
will be received immediately and written into the RAM 72. Id. at 9:29-31.
For a teaching of a clock for measuring a predetermined time period
after the executing means starts execution of the received program or data
processing and a teaching of interference means responsive to the clock, the
Examiner (Final Action 15) relies on the following passage in Tsumura:
In the case of games like role playing games that can take a
long time to play, on the other hand, it would be desirable to
incorporate an additional charge facility that would function
automatically at fixed intervals during the course of a game.
The CPU’s 71 internal clock, for example, could be used to
calculate the unit time and to call for the insertion of an
additional fee before a predetermined length of time has
elapsed, and to cause the game to be discontinued as soon as
that length of time has elapsed if the required additional fee has
not been paid.
Id. at 9:56-65 (emphasis added). Appellant does not deny that Tsumura
describes measuring a predetermined time period after the start of execution
of the received program. Instead, Appellant challenges the Examiner’s
conclusion that it would have been obvious to add this feature of Tsumura to
Chernow’s teaching of measuring a predetermined time period (i.e., lease
period) after receipt of the game data. The Examiner provided the following
detailed rationale for combining these reference teachings:
This implementation would have been obvious because one of
ordinary skill in the art would be motivated: 1) by the
desirability to incorporate an additional charge facility
(Tsumura: column 9, line 58) to expand the usage of the type of
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game/software/data (Tsumura: column 9, lines 56-60, “in the
case of games like role playing games that can take a long time
to play ... it would be desirable to incorporate an additional
charge facility that would function automatically at fixed
intervals during the course of a game”; 2) to make software or
game usage commercially viable by used by terminals
(Tsumura: column 3, lines 26-40); 3) to further the goals of
selling and distributing software (Tsumura: column 1, line 65 to
column 2, line 2); and 4) by both Chernow and Tsumura
teaching transmitting data from a distribution center with
known elements being combinable in known ways to produce
predictable results.
Final Action 15-16 (emphasis omitted; superscripting of clause numbers
omitted). The clause 4) language (i.e., “with known elements being
combinable in known ways to produce predictable results”) presumably
refers to Manual of Patent Examining Procedure (M.P.E.P.) § 2143
(“Examples of Basic Requirements of a Prima Facie Case of Obviousness”),
which cites KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, [416] (2007), as
support for various obviousness rationales, including “(A) Combining prior
art elements according to known methods to yield predictable results.”
Appellant, after correctly noting that “Chernow does not teach or
suggest keeping a predetermined time period after said executing means
starts execution” (Br. 10), responded to the Examiner’s obviousness
rationale merely by arguing that
none of the cited references teach or suggest evaluating the
usable duration of the program or data against two different
time periods based on two different initiating events.
Therefore, . . . Chernow, with any permissible combination of
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prior art of record, including Tsumura, does not teach or
suggest Claim 1.
Id. at 10-11. This argument is unpersuasive because one cannot show
nonobviousness by attacking references individually where, as here, the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981). Appellant has not identified any error in the
Examiner’s above-quoted rationale for combining the reference teachings or
shown that the combined teachings fail to satisfy the claim requirement for
an interference means that is responsive to either of the two recited
predetermined time periods. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (an appellant may attempt to overcome an
examiner’s obviousness rejection on appeal to the Board by: (1) submitting
arguments and/or evidence to show that the examiner made an error in either
(a) an underlying finding of fact upon which the final conclusion of
obviousness was based or (b) the reasoning used to reach the legal
conclusion of obviousness; or (2) showing that the prima facie case has been
rebutted by evidence of secondary considerations of nonobviousness).
The rejection of claim 1 for obviousness over Chernow in view of
Tsumura is therefore sustained.

2. Independent claim 15
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The “interference means” recited in claim 15 is responsive to a “clock
means for keeping a predetermined time period after said execution means
ends the execution of the program or data processing to count a time period
during which at least one of the program, the data, and a combination of the
program and data is continuously unused.” (Emphasis added.) The
Examiner reads this clock means on Chernow’s above-discussed lease
period. Final Action 18. Specifically, the Examiner, in a manner similar to
his above-discussed interpretation of claim 8, concluded that
the broadest reasonable interpretation of the claim [15]
language . . . is . . . a time period that encompasses “after said
executing means ends and program or data is continuously
unused”. A clock means that keeps a time period that includes
the time before execution starts/ends and the time after
execution starts/ends (for example a time period that runs
through this entire range) still keeps a time period after said
execution means ends execution and during a continuously
unused period (which could be any length of time, even
extremely short).
Answer 52. Appellant argues that “Chernow only discloses a time period
based on a ‘time remaining under lease’ or ‘the number of runs remaining
under lease’. There is no teaching or suggestion in Chernow of a time
period that is based on after execution ends and/or the program or data being
continuously unused.” Br. 13. In view of Appellant’s above-discussed
claim 8 argument that “without any mechanism for associating the time
period with the start of execution, there is no way to keep a predetermined
time period after it starts” (Reply Br. 8; emphasis added), we understand
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Appellant’s position regarding claim 15 to be that without any mechanism
for associating the time period with the end of execution, an association not
described in Chernow, there is no way to keep a predetermined time period
after it ends, as claimed. We agree. That is, the claim language does not
permit the recited “a predetermined time period” to begin prior to the end of
execution, as urged by the Examiner.
The rejection of claim 15 for obviousness over Chernow and Tsumura
is therefore not sustained.22
Regarding claim 15, Appellant additionally argues that the references
fail to describe of suggest the “real-time interactive communication” and
“simultaneous interaction” limitations addressed above in the discussion of
the rejection under 35 U.S.C. § 112, first paragraph. Br. 13. We address

22 In the Final Action (at 18) and the Answer (at 15), the Examiner also read
the clock means of claim 15 on Chernow’s column 13, lines 9-13, which
state: “The control transfer program could be designed to erase itself and the
storing program if any key on the purchaser’s computer is pressed, or if no
data is received over the phone line for some predetermined period of time,
e.g., 10 seconds.” This statement is part of Chernow’s discussion of how the
central computer and the “control transfer program” can advantageously be
provided with means for recognizing when a transmission has terminated
before completion. Id. at 12:62-13:13. The control transfer program is one
of several programs downloaded prior to downloading of the “Target
Program (the program being purchased).” Id. at2:65-3:14. Inasmuch as
Chernow’s column 13, lines 9-13 statement is not mentioned or relied on in
the “Response to Arguments” portion of the Final Action or Answer, we
assume that the Examiner’s initial reliance on this statement has been
withdrawn and therefore do not address its merits.
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these limitations here because they are also recited in dependent claims 23
and 25, which are separately argued by Appellant. Br. 18.
The Examiner (Final Action 19) finds that Tsumura describes these
features in passages at column 3, lines 33-40, and column 12, line 62 to
column 13, line 42, which are quoted in relevant part below. For the
following reasons, we are not persuaded by Appellant’s argument that
“Tsumura does not teach or suggest ‘real-time interactive communication,’
but rather teaches non-real-time play where only one player plays at a time,
saves the data for another player to later download and continue the game
play.” Br. 13. As support for this argument, Appellant (id. at 14) quotes
Tsumura’s statement that “the present embodiment does not assume
simultaneous participation in the game but rather that the individual players’
input will first be uploaded and stored in the host computer.” Tsumura
13:35-38. In our view, when this statement is read in context, as shown
below, it is clear that this statement (in italics) merely describes a preferred
embodiment of Tsumura’s system:
We will now describe a system whereby more than one
player can take part in the same game. . . . For the purposes of
the following explanation, it will also be assumed that the game
programs stored in the host computer 112 are role playing
games (RPG) and that each program is designed to facilitate the
participation of more than one player, each using his or her own
game terminal. It goes without saying, of course, that the host
computer 112 itself is capable of storing the programs of games
other than RPG.
The present embodiment of the invention is configured in
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such a way as to make use of this type of network system. The
conditions under which the game is to be played still remain to
be determined, however. In other words, although the same
game can be played by more than one player using a plurality of
machines, the more complex the scenario of the RPG itself, the
longer it will take to complete the game and thus the more
remote the likelihood that all the players will either want or
even be able to play the game at the same time. Similarly, the
more players that take part in a game, the more sophisticated
the game can be made but this will again raise the problems
associated with simultaneous participation. For this reason, the
present embodiment does not assume simultaneous
participation in the game but rather that the individual players’
input will first be uploaded and stored in the host computer.
When a player wants to play the game, he will then access the
host computer and download everything that has been input up
to that point by the other players to his own terminal. The
player will then be called upon to enter his next move.
Tsumura 12:62-13:42 (emphasis added). The language that precedes the
statement relied on by Appellant (in italics) describes, or at least suggests,
designing Chernow’s system to allow simultaneous participation in
downloaded games having a lesser degree of complexity. Appellant, in
arguing that “no art of record discloses that individuals are simultaneou[sl]y
interacting to play a game or executing the same program” (Br. 15), has not
addressed this teaching of Tsumura and thus has failed to demonstrate error
in the Examiner’s conclusion of obviousness. For this reason, our above
decision not to sustain the rejection of claim 15 is not alternatively being
based on a failure of the cited references to disclose or suggest the “real-time
interactive communication” and “simultaneous interaction” limitations.
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3. Claims 6 and 20
Claims 6 and 20 read as follows:
6. (ORIGINAL) The communication system according to
claim 1, wherein said interference means comprises means for
invalidating the operation of said input device.
20. (ONCE AMENDED) The communication system
according to claim 15, wherein said interference means
comprises means for invalidating [the operation of] an
operation on said input device.
Claims App. (Br. 25, 30).
The function recited in claim 20 is identical to that recited in claim 13,
discussed above. Therefore, for the reasons given in the discussion of claim
13, we do not sustain the rejection of claim 20.
The language of claim 6 is identical to the language of claim 13 prior
to its amendment. Appellant has not separately argued the merits of the
claim 6 language, instead incorrectly quoting it as reciting the same language
as claims 13 and 20. See Br. 11(“Claim 6 recites ‘wherein said interference
means comprises means for invalidating an operation on said input
device.’”). The rejection of claim 6 is therefore sustained.
However, we do not sustain the rejection of claim 20, which depends
on claim 15, whose rejection on the same ground has not been sustained.
4. Claims 23 and 25
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Claims 23 and 25, which depend on claims 1 and 8, respectively, each
recite “real-time interactive communication” and “simultaneous interaction”
limitations like those recited in claim 15 and discussed above. Appellant’s
arguments (Br. 18) for the separate patentability of claims 23 and 25 are
therefore unpersuasive for the reasons given above.
We therefore sustain the rejection of claim 23, which depends on
claim 1, whose rejection on the same ground has been sustained.
Claim 25 depends on claim 8, whose rejection for anticipation by
Chernow has not been sustained. The rejection of claim 25 does not indicate
that Kato teaches or suggests the claim 8 subject matter that Appellant has
successfully argued is missing from Chernow (e.g., “clock means for
keeping a predetermined time period after said executing means starts
execution of the program or data processing”). The rejection of claim 25
therefore is not sustained.

5. The Other Claims Rejected Over Chernow in View
of Tsumura (Claims 4, 18, 22, 26, 41, 42, and 46-48)
Claims 4, 41, and 42 depend on claim 1, whose rejection on the same
ground (i.e., obviousness over Chernow in view Tsumura) has been
sustained. The rejection of claims 4, 41, and 42, which are not separately
argued, is sustained.
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Claim 18 depends on independent claim 15, whose rejection on the
same ground has not been sustained. The rejection of claim 18 likewise is
not sustained.
Claims 22, 26, 46, and 48 depend on claim 8, whose rejection for
anticipation by Chernow has not been sustained, and, as noted above, claim
47 is being treated by the Examiner as dependent on claim 46. Furthermore,
as noted above, the Examiner interprets the recited “fourth clock means” of
claim 26 to be “second clock means.” The § 103(a) rejection of claims 22,
26, and 46-48, which does not indicate that Kato teaches or suggests the
claim 8 subject matter that is missing from Chernow, is not sustained.

6. Conclusion
The rejection under 35 U.S.C. § 103(a) based on Chernow in view of
Tsumura is sustained with respect to claims 1, 4, 6, 15, 23, 41, and 42 and is
not sustained with respect to claims 18, 20, 22, 25, 26, 46, 47, and 48.

E. The Rejection of Claims 9 and 14 (Chernow in View of Kato)
Appellant argues (Br. 18) that claim 9 is patentable for the same
reasons as parent claim 8, whose rejection for anticipation by Chernow has
not been sustained. The rejection of claim 9, which does not indicate that
Kato teaches or suggests the claim 8 subject matter that Appellant has
successfully argued is missing from Chernow, is not sustained.

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Claim 14, which Appellant separately argues, reads as follows:
14. (ORIGINAL) The communication system according
to claim 8, further comprising sound generating means for
generating a predetermined sound in accordance with the
progress of execution of the program or data processing,
wherein said interference means comprises means for
preventing said sound generating means from generating the
sound.
Claims App. (Br. 28) (emphasis added).
The Examiner finds (Final Action 29) that “Kato demonstrated that it
was known at the time of invention to distribute computer software which
operates using sound means (Kato: page 5, at least first full paragraph).”
The cited first full paragraph in Kato reads as follows:
The recent popularization of personal computers, office
computers, workstations, and so on (hereafter generically
referred to as computers) is remarkable. At the same time, the
development of the software to be run on these computers is
very active, ranging over various fields, from so-called business
software including word processors, spreadsheets, and
databases to computer graphics, music, games, and so on.
Kata 5:4-11. The Examiner concludes that “[i]t would have been obvious to
one of ordinary skill in the art at the time of invention to implement the
software and data of Chernow with sound means according to the execution
of the program/data as found in Kato’s teaching” (Final Action 29) and
contends that Chernow, thus modified, “prevents sound generation by a
software, when it renders that software unusable or erased.” Id. at 59.
Appellant responded by arguing that
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the limitation recited in claims is quite different from rendering
the software unusable and erasing the software from the disk.
Executing the program or data processing without sound may
not be ideal, but it still requires execution of the program or
data processing, which can not happen if the software is
unusable or erased.
Br. 20. We agree with the Examiner that this argument is unpersuasive
because
[t]he claim language simply requires interference of the
sound[;] it does not say how this is accomplished and it does
not specify that the program or data should continue in
execution. Once a program or data is rendered unusable and/or
erased it does not generate sound.
Answer 56. Nevertheless, we do not sustain the rejection of claim 14, which
does not indicate that Kato teaches or suggests the claim 8 subject matter
that Appellant has successfully argued is missing from Chernow.
F. The Rejection of Claim 10 (Chernow in view of Kato and Tsumura)
Claim 10 (rejected over Chernow in view of Kato and Tsumura)
depends on claim 9 (rejected over Chernow and Kato), which depends on
claim 8, as to which we have not sustained the rejection for anticipation by
Chernow. Appellant argues that claim 10 is patentable because it depends
on claim 8. Br. 19.
The rejection of claim 10, which does not indicate that Kato and/or
Tsumura teach or suggest the claim 8 subject matter that is missing from
Chernow, is not sustained.
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G. The Rejection of Claims 2, 3, 7, 16, 17, and 21
(Chernow in View of Tsumura and Kato)
Claims 2, 3, and 7 depend on claim 1, as to which we have sustained
the rejection for obviousness over Chernow in view of Tsumura. The
rejection of claims 2 and 3, whose merits are not separately argued by
Appellant, is sustained. Claim 7, which is separately argued, specifies that
“said interference means comprises means for preventing said sound
generating means from generating the sound” (Claims App. (Br. 25)) and
thus is similar to dependent claim 14, discussed above. The rejection of
claim 7 is sustained for the reasons given above in the discussion of claim
14.
Claims 16, 17, and 21 depend on claim 15, whose rejection based on
Chernow and Tsumura we have not sustained. We do not sustain the
rejection of claims 16, 17, and 21, which does not rely on Kato for a
teaching of the claim 15 subject matter the Examiner incorrectly found is
taught by Chernow (i.e., “clock means for keeping a predetermined time
period after said execution means ends the execution of the program or data
processing to count a time period during which at least one of the program,
the data, and a combination of the program and data is continuously
unused”).

H. The Rejection of Claims 27-29
(Chernow in View of Tsumura and Sanbe)
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Claims 27-29 depend on claim 1, as to which we have sustained the
rejection based on Chernow and Tsumura. The rejection of claims 27-29,
whose merits are not separately argued, is sustained.

I. The Rejection of Claim 30 (Chernow in
View of Tsumura, Sanbe, and Kaniwa)
Claim 30 depends on claim 1 via claim 29. The rejection of claim 30,
which is not separately argued, is therefore also sustained.

J. The Rejection of Claims 31-33 (Chernow in View of Sanbe)
Claims 31-33 depend on claim 8, whose rejection for anticipation by
Chernow is not sustained. The rejection of claims 31-33, which does not
indicate that Sanbe teaches or suggests the claim 8 subject matter that is
missing from Chernow, is not sustained.

K. The Rejection of Claim 34 (Chernow in View of Sanbe and Kaniwa
Claim 34 depends on claim 8, whose rejection for anticipation by
Chernow is not being sustained. The rejection of claim 34, which does not
indicate that Sanbe and/or Kaniwa teach or suggest the claim 8 subject
matter missing from Chernow, is not sustained.

L. The Rejection of Claims 39 and 40
(Chernow in View of Tsumura and Suzuki)
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Claim 39 depends on claim 1, whose rejection we have sustained, and
claim 40 is treated by the Examiner as dependent on claim 39. The rejection
of claims 39 and 40, whose merits are not separately argued, is therefore
sustained.

M. The Rejection of Claims 43 and 45 (Chernow in View of Suzuki)
Claim 43 depends on claim 8, whose rejection for anticipation by
Chernow we have not sustained, and claim 45 is treated by the Examiner as
dependent on claim 43. The rejection of claims 43 and 45, which does not
indicate that Suzuki teaches or suggests the claim 8 subject matter that is
missing from Chernow, is not sustained.

N. The Rejection of Claims 24 and 44
(Chernow in view of Tsumura and Tashiro)
Claim 24 reads as follows:
24. (NEW) The communication system according to
claim 23, wherein the communication terminal device displays
a number of players who can participate in the real-time
interactive communication between the at least two
communication terminal devices.
Claims App. (Br. 31; emphasis added). The rejection of claim 24 is
sustained. Appellant’s argument that “[n]one of the art on record discloses
this limitation” (Br. 18) is unpersuasive because Appellant fails to address
the Examiner’s reliance on Tashiro for the claimed feature. See Final Action
50 (“Tashiro demonstrated that it was known at the time of invention to
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display a number of players who can participate in the real-time interactive
communication between the at least two communication terminal devices
(Tashiro: column 6, lines 1-5; figure 7; column 6, lines 29-33).”) (emphasis
omitted). See also Answer 24-25. As pointed out by the Examiner:
“Appellant argues this claim [24] in the section listed as Rejections Under
103 (Chernow in view of Tsumura) [Br. 10], however this claim is rejected
under Chernow in view of Tsumura and in further view of Tashiro.”
Answer 55-56.
Claim 44 depends on claim 8, whose rejection for anticipation by
Chernow is not being sustained. The rejection of claim 44, which does not
indicate that Tashiro teaches or suggests the claim 8 subject matter that is
missing from Chernow, is not sustained.
III. DECISION
1. The rejection under 35 U.S.C. § 112, first paragraph, is sustained
with respect to claims 1-7, 23, 24, 26-30, 35, 36, 39, 41, and 42 and not
sustained with respect to claims 15-21, 25, 38, and 44.
2. The rejection under 35 U.S.C. § 112, second paragraph, of claims
26, 40, 45, and 47 is sustained.
3. The rejection of claims 8, 11, and 13 under 35 U.S.C. § 102(b) for
anticipation by Chernow is not sustained.
4. The rejection under 35 U.S.C. § 103(a) based on Chernow in view
of Tsumura is sustained with respect to claims 1, 4, 6, 15, 23, 41, and 42
and is not sustained with respect to claims 18, 20, 22, 25, 26, 46, 47, and 48.
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5. The rejection of claims 9 and 14 under § 103(a) based on Chernow
in view of Kato is not sustained.
6. The rejection of claim 10 under § 103(a) based on Chernow in
view of Kato, further in view of Tsumura is sustained.
7. The rejection under § 103(a) based on Chernow in view of
Tsumura, and further in view of Kato is sustained with respect to claims 2, 3,
and 7 and is not sustained with respect to claims 16, 17, and 21.
8. The rejection of claims 27-29 under § 103(a) based on Chernow in
view of Tsumura and further in view of Sanbe is sustained.
9. The rejection of claim 30 stands rejected under § 103(a) based on
Chernow in view of Tsumura, Sanbe, and Kaniwa is sustained.
10. The rejection of claims 31-33 under § 103(a) based on Chernow
in view of Sanbe is not sustained.
11. The rejection of claim 34 under § 103(a) based on Chernow in
view of Sanbe and Kaniwa is not sustained.
12. The rejection of claims 39 and 40 under § 103(a) based on
Chernow in view of Tsumura and Suzuki is sustained.
13. The rejection of claims 43 and 45 under § 103(a) based on
Chernow in view of Suzuki is not sustained.
14. The rejection under § 103(a) based on Chernow in view of
Tsumura and Tashiro is sustained with respect to claim 24 and not sustained
with respect to claim 44.
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In summary, we have sustained at least one ground of rejection with
respect each of claims 1-7, 23, 24, 26-30, 35, 36, 39, 41, 42, 45, and 46. The
Examiner’s decision that claims 1-11, 13-36, and 38-48 are unpatentable is
therefore affirmed-in-part.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

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For Patent Owner/Requester in Reexamination 90/009,524:

Whitaker Law Group
1281 Third Avenue
Suite 1809
Seattle, WA 98101

For Third Party Requester in Reexamination 90/010,666:

Kinney & Lange, P.A.
The Kinney & Lange Building
312 South Third Street
Minneapolis, MN 55415-1002