Ex Parte 6225547 et al

Patent Trial and Appeal Board

Jun 17, 2013

95000410 (P.T.A.B. Jun. 17, 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.
95/000,410 10/27/2008 6225547 090336 3077
38834 7590 06/18/2013
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/18/2013 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
____________

745 LLC
Requester and Appellant

v.

KONAMI DIGITAL ENTERTAINMENT CO., LTD
Patent Owner and Cross-Appellant
____________

Appeal 2013-004123
Reexamination Control 95/000,410
Patent 6,225,547 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, STANLEY M. WEINBERG, and
JEREMY J. CURCURI, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Requester/745 LLC appeals the Examiner’s decision not to reject
claims 25, 26, 29, 30, 46, and 55. Patent Owner/Konami Digital
Entertainment Co., Ltd. cross-appeals under 35 U.S.C. §§ 134 and 315 the
Examiner’s decision to reject claims 1-24, 27, 28, 31-45, 47-54, and 56-62.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.

STATEMENT OF THE CASE
This proceeding arose from a request by 745 LLC for an inter partes
reexamination of U.S. Patent 6,335,547 B1, titled “Rhythm Game
Apparatus, Rhythm Game Method, Computer-Readable Storage medium
and Instrumental Device,” and issued to Motoki Toyama, Shigehito Mukasa,
Toru Okubo, and Tomoya Yamano on May 1, 2001 (the ‘547 patent).
The ‘547 patent describes a rhythm game apparatus for performing a
musical rhythm-matching game (col. 1, ll. 12-13).

Claim 1 reads as follows:

1. A rhythm game apparatus, comprising:
a sound data storage device which stores at least data
concerning sounds, the sounds being sorted into a plurality of
selective sound groups;
a display device which displays occurrences of sounds in
each of the plurality of selective sound groups in accordance
with time passing;
an instrumental unit to which a game player operates, the
instrumental unit being provided with:
a sound group selector which is to be operated by
the game player to select a sound group, and
an instructor which is to be operated by the game
player to instruct generation of a sound;
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an evaluator which evaluates the operation of the game
player based on a time gap between an instruction timing of the
instructor and a predetermined timing of a sound in a selected
sound group.

Appellant/Requester (745 LLC) appeals the Examiner’s refusal to
adopt the following rejections:
1) Claims 25, 26, 46, and 55 under 35 U.S.C. § 112, 1
st
paragraph;
2) Claims 25, 26, 30, 46, and 55 under 35 U.S.C. § 102(b) as
anticipated by Konami Corporation, Konami Official Guide “Love Song of
Irodori” (“Irodori”);
3) Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Irodori
and Beatmania;
4) Claims 25, 26, 29, 30, 46, and 55 under 35 U.S.C. § 102(b) as
anticipated by Konami Corporation, Konami Official Guide “Beatmania”
(“Beatmania”).

Cross-Appellant/Patent Owner (Konami Digital Entertainment Co.,
Ltd.) appeals the Examiner’s adoption of the following rejections:
1) Claims 31-34, 43, 44, 51-53, and 60-62 under 35 U.S.C. § 112,
1
st
paragraph;
2) Claims 31-34, 43-44, 45, 47-53, 54, and 56-62 under 35 U.S.C.
§ 112, 2
nd
paragraph as indefinite;
3) Claims 1-3, 5, 7-10, 16, 21-24, 27, 28, 36, 38, 47, 49, 56, and
58 under 35 U.S.C. § 102(b) as anticipated by Irodori;
4) Claims 6, 35, and 37 under 35 U.S.C. § 103(a) as unpatentable
over Irodori;
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5) Claims 11-13, 48, and 57 under 35 U.S.C. § 103(a) as
unpatentable over Irodori and U.S. Patent No. 4,177,705 (“Evangelista”);
6) Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable
over Irodori, Evangelista, and any one of U.S. Patent No. 5,488,196
(“Zimmerman”), U.S. Patent No. 4,981,457 (“Iimura”), U.S. Patent
No. 5,468,924 (“Naito”), U.S. Patent No. 4,408,103 (“Smith”), U.S. Patent
No. 4,747,313 (“Okada”), or U.S. Patent No. 4,607,159 (“Goodson”);
7) Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Irodori
and U.S. Patent No. 5,475, 214 (“DeFranco”) or U.S. Patent No. 4,817,950
(“Goo”);
8) Claims 31-34, 43, and 44 under 35 U.S.C. § 103(a) as
unpatentable over Irodori, DeFranco, and Goo;
9) Claims 51-53, and 60-62 under 35 U.S.C. § 103(a) as
unpatentable over Irodori, Evangelista, DeFranco, and Goo;
10) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Irodori,
Zimmerman, and U.S. Patent No. 5,750,911 (“Tamura”);
11) Claims 16-19 under 35 U.S.C. § 102 as anticipated by
Evangelista or under 35 U.S.C. § 103(a) as unpatentable over Evangelista;
1

12) Claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable
over Evangelista and one of Zimmerman, Iimura, Naito, Smith, Okada, or
Goodson;
13) Claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Evangelista and one of Okada or Goodson;

1
Patent Owner does not indicate that claims 39-42 are included in the appeal
under 35 U.S.C. § 102 as anticipated by Evangelista.
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14) Claims 43 and 44 under 35 U.S.C. § 103(a) as unpatentable
over Evangelista, DeFranco and Goo.
ISSUE

Did the Examiner err in rejecting claims 1-24, 27, 28, 31-45, 47-54,
and 56-62? Did the Examiner err in refusing to adopt the rejections of
claims 25, 26, 29, 30, 46, and 55?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Patent Owner’s Cross-Appeal
Written Description – Claims 31-34, 43, 44, 51-53, and 60-62
Claims 31-34, 43, and 44 recite “an angle detecting unit for detecting
the angle of the instrumental unit.” Claims 51-53 and 60-62 recite detecting
the angle of a device. The Examiner states that the Specification discloses
“a posture detector or an overturn detecting unit” but does not disclose
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“angle detecting” (RAN 7). Patent Owner argues that the Specification
provides support for the angle detecting unit as recited in claims 31-34, 43,
and 44 and detecting the angle of a device as recited in claims 51-53 and 60-
62 “at col. 9, line 60 to col. 10, line 17” (Submission of Corrected Appeal
Brief for Patent Owner, filed Dec. 15, 2011 (“PO App. Br.) at 7).
As Appellant points out, the Specification discloses a unit “to detect
the angle” of a guitar (col. 9, l. 62). In view of the disclosure in the
Specification of a unit “to detect the angle,” we disagree with the Examiner
that the Specification fails to disclose “angle detecting.”

112, 2
nd
paragraph – indefiniteness - Claims 31-34, 43-44, 45, 47-53, 54, and
56-62

The Examiner states that while the claims “recite an ‘angle detecting’
means or step,” the Specification “only provides support for a ‘posture
detector’ or an ‘overturn detecting unit’” (RAN 7). The Examiner also states
that the claims are ambiguous because “claim 15 recites a ‘posture detector’
having the same apparent function as the ‘angle detecting unit’” (RAN 7-8).
We disagree with the Examiner because, as described above, the
Specification discloses a unit that detects the angle of a guitar.

Anticipation by Irodori - Claims 1-3, 5, 7-10, 16, 21-24, 27, 28, 36, 38, 47,
49, 56, and 58

Patent Owner argues that Irodori fails to disclose a sound data storage
device which stores data concerning sounds that are sorted into a plurality of
sound groups or a display device that displays sounds in accordance with
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time passing (see, e.g., PO App. Br. 16), as recited in claims 1 and 16. In
particular, Patent Owner argues that Irodori fails to disclose that sound data
is “sorted into a plurality of selective sound groups” because Irodori
discloses “only one chord change mark” (PO App. Br. 17).
However, as Requester points out, Irodori discloses “a plurality of
selective sound groups, which it calls ‘chords’” and that chords “contain
groups of sounds, as a chord is composed of [multiple] musical notes” (3PR
Resp. Br. 5). We agree that one of ordinary skill in the art would have
understood a chord to include multiple musical notes and that musical notes
represent sounds or sound data. Because Irodori discloses musical notes
(i.e., sound data) sorted into “groups” or chords (i.e., sound groups), we
disagree with Patent Owner that Irodori fails to disclose sounds that are
sorted into a plurality of selective sound groups, as recited in claim 1, for
example.
The Patent Owner states that “displayed directional arrows disclosed
in the Irodori guide could be randomly generated using a random number
generator algorithm for the stored sound data” (PO App. Br. 20, citing
Kitchen Declaration dated December 13, 2009). Even assuming Patent
Owner’s contention to be true that directional arrows of Irodori are
generated randomly, Patent Owner has not demonstrated that the chords
disclosed by Irodori are generated randomly. In fact, Irodori discloses that a
“song to perform has several levels” and that the “song to perform is the
same” (Irodori 17) such that a player plays the same song until “you get a
good grade at the end of the performance” (id.). Thus, Irodori discloses that
the same chords (i.e., the same song) is provided. If the same chords are
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provided, then the chords are not generated randomly since random
generation of notes in a chord would result in different randomly generated
chords.
Patent Owner also argues that Irodori discloses “a standard game
controller” but fails to disclose an instrumental unit (PO App. Br. 21; see
also PO App. Br. 14-15) as recited in claims 1 and 16, for example. In
particular, Patent Owner argues that the game controller of Irodori does not
“provide a musical rhythm game in a manner closer to reality of playing an
actual instrument” (PO App. Br. 15). We note that neither claim 1 nor
claim 16 recites that the instrumental unit provides “a musical rhythm game
in a manner closer to reality of playing an actual instrument.” Therefore, we
are not persuaded by Patent Owner’s argument. Even assuming that
claim 1and claim 16 recited that the instrumental unit provides a musical
rhythm game in a manner closer to reality of playing an actual instrument,
Patent Owner has not demonstrated that utilizing the device of Irodori would
not be “close” to the “reality of playing an actual instrument.” Indeed, since
Irodori discloses a process that simulates playing a musical instrument (i.e.,
a guitar), utilizing the device in the process would appear to be “close” to
playing an instrument.
Patent owner argues that Irodori fails to disclose a “judger” as recited
in claim 3 (PO App. Br. 23-24). Claim 3 recites a sound generator that
generates the sound when the instruction timing is within the allowable time
range. As described above, we agree that Irodori discloses generating a
sound. Irodori also discloses “playing the guitar with the correct timing”
(p. 9). Since the user in Irodori plays the guitar with the “correct timing”
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and a sound is generated, Irodori discloses generating a sound when the
timing is within an allowable time range (i.e., “correct timing”).
Patent Owner argues that Irodori fails to disclose an evaluator as
recited in claim 5 (PO App. Br. 24). Claim 5 recites that the evaluator
evaluates the operation of the game player based on a total of differences
with respect to a predetermined number of sounds. However, Irodori
discloses calculating a “final grade” (i.e., evaluating the operation of the
game player, as recited in claim 5) and that the “final grade” is “determined
by the average score of the performance” (see e.g., p. 23). One of ordinary
skill in the art would have understood to determine a total sum of differences
to calculate the average score of Irodori because the average score would
have been calculated by calculating a total sum of differences and dividing
the result by the number of scores. Such a calculation would have included
evaluating a player based on a total of differences.
Patent Owner argues that Irodori discloses “an evaluation of the
performance as a whole” but fails to disclose a “failure screen indicative of
whether or not the instruction timing is within the allowable range” (PO
App. Br. 25) as recited in claim 9. We disagree with Patent Owner because
Irodori discloses a display of a “grade” and that the “grade is not increased
as long as certain mistakes are made” (p. 23) and that “mistakes” occur
when a button is pressed with incorrect “timing of the rhythm mark” (p. 21).
In other words, Irodori discloses a screen indicative of whether or not the
timing is within the allowable range (i.e., no increase in grade as long as
incorrect timing is performed or “mistakes” are made).
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Patent Owner argues that Irodori fails to disclose judging whether
sound is allowed to be generated (PO App. Br. 22) as recited in claims 21
and 23. Claim 21 recites an instruction timing to judge whether the sound is
allowed to be generated and generating the sound based on the judgment.
We agree with Patent Owner that Irodori appears merely to disclose
“pressing the button the moment a note jumps up to the highest position” in
“playing the guitar with the correct timing” while practicing “hard not to
make a mistake playing” (p. 9). In other words, Irodori discloses generating
a sound responsive to “pressing the button” even when making “a mistake”
but does not appear to disclose judging whether a sound is allowed to be
generated as recited in claim 21. Claims 22, 24, 47, 49, 56, and 58 depend
from claim 21 or 23.
We therefore sustain the Examiner’s rejection of claims 1-3, 5, 7-10,
16, 27, 28, 36, and 38 but reverse the Examiner’s rejection of claims 21 and
23, and claims 22, 24, 47, 49, 56, and 58, which depend therefrom, as
anticipated by Irodori.

Obviousness over Irodori – Claims 6, 35, and 37

Claims 6, 35, and 37 depend from claim 1. Patent Owner does not
appear to provide specific arguments regarding this rejection. We therefore
sustain the Examiner’s rejection of claims 6, 35, and 37 as obvious over
Irodori.

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Obviousness over Irodori and Evangelista – Claims 11-13, 48, and 57
Obviousness over Irodori, Evangelista, and either of Zimmerman, Iimura,
Naito, Smith, Okada, or Goodson – Claims 13 and 14
Obviousness over Irodori, Evangelista, DeFranco, and Goo – Claims 51-53,
and 60-62

Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined Irodori with Evangelista because
“the alleged modification would change the principle of operation of Irodori
and would render Irodori unsatisfactory for its intended purpose” (PO App.
Br. 27). In particular, Patent Owner argues that Irodori discloses “a
simplistic rhythm game intended for someone with no musical ability” while
Evangelista discloses an instrument “intended for someone experienced with
a conventional stringed instrument” (PO app. Br. 28). We disagree with
Patent Owner.
The Examiner relies on Irodori as disclosing the claimed invention
with the exception that the “instrumental unit is in the form of a typical
universal game controller” (RAN 16) as opposed to “in the form a guitar” as
recited in claim 11, for example. The Examiner further relies on Evangelista
as disclosing a controller in the form a guitar. We agree with the Examiner
that it would have been obvious to one of ordinary skill in the art to modify
the device of Irodori to provide the device of Irodori in the form a guitar as
disclosed in Evangelista for at least the reasons set forth by the Examiner
(RAN 16-17). While Patent Owner asserts that modifying the shape of the
controller of Irodori to a guitar-shaped form would render Irodori
unsatisfactory for its intended purpose, Patent Owner does not indicate how
merely changing the shape of the controller would render the rhythm game
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of Irodori unsatisfactory for its intended purpose. In fact, one of ordinary
skill in the art would not have expected any significant change in the
operation of the process of Irodori merely because the shape of the controller
is changed to a guitar-shaped device.
Patent Owner also argues that “Evangelista actually teaches away
from Irodori” (PO App. Br. 29). “A reference may be said to teach away
when a person of ordinary skill, upon [examining] 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.”
Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090
(Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Because Patent Owner does not indicate how Evangelista discourages a
person of ordinary skill from following the path set out in the reference, we
cannot agree with Patent Owner.
Claims 47-49, 51-53, 56-58, and 60-61 depend from claim 21 or 23.
As discussed above, we agree with Patent Owner that Irodori fails to
disclose judging whether sound is allowed to be generated, as recited in
claims 21 and 23. Requester and Examiner do not rely on any of
Evangelista, DeFranco, or Goo to provide the disputed feature.
We therefore sustain the Examiner’s obviousness rejection of
claims 11-14 but reverse the Examiner’s rejection of claims 48 and 57 as
obvious over Irodori and Evangelista and claims 51-53 and 60-62 as obvious
over Irodori, Evangelista, DeFranco, and Goo.

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Obviousness over Irodori and either DeFranco or Goo – Claim 15
Patent Owner argues that “DeFranco does not disclose detecting the
posture or the angle of the guitar” (PO App. Br. 32). Claim 15 recites
detecting whether the instrumental unit is placed in a particular posture.
DeFranco discloses controlling sound effects “by moving a sound-
generating instrument in space” (col. 1, ll. 59-60) and “moving the
instrument neck 24 either upward or downward” to generate sound effects
(col. 8, ll. 36-37). Patent Owner does not indicate a difference between
generating sound effects based on positioning of an instrument as disclosed
by DeFranco and detecting posture or angle of an instrument as recited in
claim 15.
Patent Owner argues that “neither Irodori nor DeFranco discloses an
evaluator that gives an additional score when the instrumental unit is placed
in a particular posture in a predetermined time” (PO App. Br. 33). We
disagree with Patent Owner for at least the reasons set forth by the Examiner
(RAN 19). As the Examiner states, Irodori discloses the “evaluator” while
DeFranco discloses “enhancing the playing performance of musical
instrument” (RAN 19).
The Examiner states that it would have been obvious to one of
ordinary skill in the art to have combined the teachings of Irodori with that
of DeFranco (RAN 19). While Patent Owner argues that “it would not have
been obvious to one of ordinary skill in the art . . . to combine the teachings
of DeFranco and Irodori” (PO App. Br. 33), Patent Owner does not provide
a rationale supporting this contention (see PO App. Br. 33-34). Thus, we
cannot agree with Patent Owner.
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We therefore sustain the Examiner’s rejection of claim 15 over the
combination of Irodori and DeFranco.

Obviousness over Irodori, DeFranco, and Goo – Claims 31-34, 43, and 44

The Examiner states that DeFranco discloses “detecting a posture” of
a guitar (RAN 20) with a detector while Goo discloses a device in which
“movements of the [device] are displayed by corresponding movement of
the figure on the screen” (col. 7, ll. 16-17). Patent Owner argues that it
would not have been obvious to one of ordinary skill in the art to have
combined DeFranco and Goo because “the detector in DeFranco is not
functionally equivalent to an attitude sensor in Goo” (PO App. Br. 35).
Hence, Patent Owner argues that one of ordinary skill in the art would not
have bodily incorporated the sensor of Goo into the detector of DeFranco.
However, the “test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). We are therefore not persuaded by
Patent Owner’s argument.
In any event, we also disagree with Patent Owner’s contention that the
detector of DeFranco is functionally distinct from the sensor in Goo because
the positioning (or “angle”) of both the device of DeFranco and the device of
Goo is detected.
Patent Owner also argues that the combination of Irodori, DeFranco,
and Goo fails to disclose or suggest “an instrumental unit having a guitar-
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like shape” (PO App. Br. 36). We disagree with Patent Owner at least
because DeFranco discloses a unit having a guitar shape (see e.g., Fig. 1).
Affirmance of a rejection for claims 43 and 44 based on Irodori,
DeFranco, and Goo renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the rejection of claims 43 and 44 over Evangelista,
DeFranco, and Goo.

Obviousness over Irodori, Zimmerman and Tamura – Claim 4
Patent Owner argues that Irodori fails to disclose “a judger” as recited
in claim 4 (PO App. Br. 36). Claim 4 recites a judger that judges whether
the instruction timing is within an allowable time range and generating
sound when the timing is within the allowable time range. As stated above
with respect to claim 3 (which recites a similar limitation), we agree with the
Examiner that Irodori discloses this feature.
Patent Owner argues that “it would not have been obvious to combine
Tamura and Irodori” (PO App. Br. 36) because the disclosure of Tamura “is
not necessary in Irodori” (PO App. Br. 37). Patent Owner does not
demonstrate that whether an unspecified feature of Tamura is “necessary” or
not in the Irodori system indicates whether it would have been obvious to
one of ordinary skill in the art to have combined a teaching of Tamura with a
teaching of Irodori.
Patent Owner argues that Zimmerman discloses postponing a “start”
gesture “when it is early” rather than “within the allowable time range” as
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recited in claim 4 (PO App. Br. 37). We are not persuaded by Patent
Owner’s argument at least because the Examiner’s rejection relies on the
combination of Zimmerman and Irodori (and Tamura), rather than on
Zimmerman in isolation. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Patent Owner has not demonstrated that Irodori, for example, fails to
disclose the disputed limitation.

Anticipation by Evangelista – Claims 16-19
Obviousness over Evangelista – Claims 16-19

Claim 16 recites an instrumental device comprising a sound group
selector (operated by a game player to select a sound group) and an
instructor to instruct the sound generator to generate a sound. Patent Owner
does not appear to dispute that Evangelista discloses these features but
argues that Evangelista fails to disclose “that the rhythm game apparatus has
a sound generator which generates sound” and “the sound data storage
device in the rhythm game apparatus” (PO App. Br. 39). We agree with the
Examiner that “the proposed intended use [recited in claim 16 and claim 39]
does not result in any structural differences between the claimed
instrumental unit and the prior art” (RAN 39).
A claim containing a “recitation with respect to the manner in which
a claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus” if the prior art apparatus
teaches all the structural limitations of the claim. Ex parte Masham,
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2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Claim 16 recites an
instrumental device that is intended to be employed with a rhythm game
apparatus. However, Patent Owner does not differentiate the structure of the
claimed instrumental device (i.e., a device comprising a sound group
selector operated by a game player to select a sound group and an instructor)
from the structure of the device disclosed by Evangelista.
Patent Owner does not appeal the Examiner’s rejection of claims 39-
42 as anticipated by Evangelista.

Obviousness over Evangelista and one of Zimmerman, Iimura, Naito, Smith,
Okada, or Goodson – Claims 18 and 19
Obviousness over Evangelista and one of Okada or Goodson – Claim 20

Patent Owner argues that “it would not have been obvious to modify
Evangelista ” because Evangelista provides “a stringless musical
instrument” with “self-contained electronic tone generation . . . circuitry”
(PO App. Br. 43). We disagree with Patent Owner for at least the reasons
set forth by the Requester (Request for Inter Partes Reexamination, dated
October 27, 2008 (“Original Request”), pp. 60-61 and 66-72).
Even assuming that Evangelista discloses a stringless musical
instrument and self-contained circuitry as Patent Owner contends, Patent
Owner has not persuasively demonstrated that it would not have been
obvious to one of ordinary skill in the art to have include “alternative
actuator designs” (Original Request, p. 66) in a system that allegedly
includes a stringless instrument and self-contained circuitry. In fact, such a
combination would have entailed no more than the mere combination of
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known features (an allegedly stringless instrument with circuitry and
alternative actuator designs) to achieve a predictable result (i.e., a system
utilizing various actuator designs). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co., 550 U.S. at 416.

Secondary considerations
Patent Owner argues that “at least [for] claims 1 and 11 . . . a nexus
exists for . . . commercial success . . .” (PO App. Br. 44-45). We disagree
with Patent Owner for at least the reasons set forth by the Examiner (RAN
40-42) and Requester (3PR Resp. Br. 10-11).
As the Federal Circuit ruled in Ormco Corp. v. Align Tech., Inc., 463
F.3d 1299, 1311-12 (Fed. Cir. 2006), “[e]vidence of commercial success, or
other secondary considerations, is only significant if there is a nexus
between the claimed invention and the commercial success.” Patent Owner
provides “sales data for the ‘Guitar Freaks’ video game . . . that [Mitsuhiro
Nozaki believes] is covered by the claims of the ‘547 patent” (Submission of
Declaration under 37 C.F.R. § 1.132 by Mitsuhiro Nozaki, dated
November 16, 2009 (Nozaki Decl.), ¶ 11). Even assuming that the “Guitar
Freaks” video game “is covered by” claim 1 and 11 of the ‘547 patent, as
Mitsuhiro Nozaki believes, sales data alone are not sufficient to establish
nexus between the claimed invention and the alleged sales. Even assuming
Patent Owner’ sales data to be correct, “[h]owever substantial those sales,
that evidence does not reveal in any way that the driving force behind those
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sales was the claimed [invention].” In re DBC 545 F.3d 1373, 1384 (Fed.
Cir. 2008).
In any event, with respect to claim 1, the Examiner rejects claim 1 as
anticipated by Irodori. As Requester points out, “secondary considerations
cannot be used to overcome an anticipation rejection” (3PR Resp. Br. 10).
Cohesive Technologies, Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir.
2008) (“secondary considerations are not an element of a claim of
anticipation”).

Requester’s Appeal
Written Description – Claims 25, 26, 46, and 55
Claims 25, 26, 46, and 55 recite displaying sound groups in an array.
Requester asserts that the Specification “does not support this ‘array’
limitation” (Appeal Br. of Third Party Requester (3PR App. Br.) at 9).
Requester states that one of ordinary skill in the art would have understood
the term “array” to include “a regular and imposing grouping or
arrangement” (3PR App. Br. 13) and Patent Owner does not appear to
dispute this definition. As Patent Owner points out, the Specification
discloses displaying sound groups in such a “regular and imposing grouping
or arrangement.” For example, the Specification discloses a display of notes
(i.e., “notes display 31” – col. 6, l. 57) divided into “rhythm sounds (notes
bar 34 corresponding to the rhythm sounds” (col. 6, ll. 58-59). Fig. 14
illustrates the notes bar arranged in a regular (in columns) grouping. Thus,
even assuming Requester’s definition of “array” to be correct, the
Specification discloses such an “array.”
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We therefore sustain the Examiner’s refusal to adopt the rejection of
claims 25, 26, 46, and 55 as failing to meet the written description
requirement.

Anticipation by Irodori – Claims 25, 26, 30, 46, and 55
The Examiner states that Irodori fails to disclose “an array of multiple
lines (tracks) of notes as an array of selective sound groups” (RAN 42).
Patent Owner concurs (Respondent Brief for Patent Owner, dated
Nov. 23, 2011 (PO Resp. Br.) at 6-7). Claim 25 recites displaying a plurality
of selective sound groups in an array.
As the Requester indicates and as described above, Irodori discloses
musical notes arranged in chords (i.e., the notes arranged in a chord being a
group of sounds or a “sound group”) on musical staffs (i.e., “tracks” of
notes).
Patent Owner argues that the musical notes of Irodori “only represent
the correct timing of pressing the chord change mark . . . button” (PO Resp.
Br. 8) rather than an array of sound groups as recited in the claim 25.
However, we agree with Requester that one of ordinary skill in the art would
have understood that a chord represents multiple musical notes in an array
(i.e., an array being a “regular or imposing grouping or arrangement” as
stated by the Requester and which Patent Owner does not dispute).
With respect to claim 30, Patent Owner argues that Irodori fails to
disclose displaying tracks corresponding to a sound group (PO Resp. Br. 9).
Claim 30, for example, recites that the display device displays tracks, each
track corresponding to a selective sound group and including indicators that
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move along the track. We agree with the Requester that Irodori discloses
this feature. For example, Irodori discloses musical staffs that “correspond”
to a chord, or sound group (i.e., in Irodori, chords are displayed on a musical
staff and therefore “correspond” to the musical staff on which the chord is
displayed).
Patent Owner argues that “the musical staff does not correspond to the
displayed tracks” because “the notes in the musical staff only refer to the
timing of pressing the proper chord change mark” (PO Resp. Br. 9). We
disagree with Patent Owner because, as Requester indicates, one of ordinary
skill in the art would have understood that a musical chord includes musical
notes, the musical notes of a chord representing sounds and forming a sound
group (or group of sounds).
We therefore reverse the Examiner’s refusal to reject claims 25, 26,
30 , 46, and 55 as anticipated by Irodori.

Obviousness over Irodori and Beatmania – Claim 29
The Examiner states that the combination of Irodori and Beatmania
fails to disclose or suggest a display of selective sound groups in an array
(RAN 43). As described above, we agree with Requester that Irodori
discloses this feature.
Claim 29 recites that the plurality of sound groups can be
simultaneously selected. Patent Owner argues that while Beatmania
discloses “simultaneous selection of more than one key on the keyboard”
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(PO Resp. Br. 11), according to Patent Owner, “it would not make sense . . .
to provide for selection of multiple chord change marks at the same time [in
Irodori] since a guitar is not played by playing more than one chord at a
time” (PO Resp. Br. 11). We disagree with Patent Owner.
As indicated by Requester, Irodori and Beatmania both disclose
playing musical notes (or “sound groups”) on a device or instrument while
Beatmania discloses playing multiple sound groups simultaneously (see e.g.,
3PR Resp. Br. 17-20). Hence, one of ordinary skill in the art of playing
musical notes would have understood that musical notes may be played in
groups (as disclosed by both Irodori and Beatmania) and may also be played
simultaneously with other groups of sounds, as disclosed by Beatmania.
Such a combination of known components of playing musical notes in
groups and playing groups (Irodori and Beatmania) and playing groups of
sounds simultaneously with each other (Beatmania) would have resulted in
no more than the mere predictable result of playing groups of musical notes
or sounds simultaneously. “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co., 550 U.S. at 416. Such a combination
would have been obvious to one of ordinary skill in the art, particularly
given that “a person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR Int’l Co., 550 U.S. at 421.
Affirmance of a rejection for claims 25, 26, 30, 46, and 55 based on
Irodori and a rejection of claim 29 as obvious over Irodori and Beatmania
renders it unnecessary to reach the propriety of the Examiner’s decision to
reject those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331,
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1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the
rejection of claims 25, 26, 29, 30, 46, and 55 over Beatmania.

CONCLUSION
The Examiner erred in rejecting claims 21-24, 45, 47-54, and 56-62.
The Examiner did not err in rejecting claims 1-20, 27, 28, 31-38, 40,
41, 43, 44.
The Examiner erred in refusing to reject claims 25, 26, 29, 30, 46, and
55.
DECISION
The Examiner’s rejections of the following claims are AFFIRMED:
Claims 1-3, 5, 7-10, 16, 27, 28, 36, and 38 under 35 U.S.C.
§ 102(b) as anticipated by Irodori;
Claims 6, 35, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Irodori;
Claims 11-13 under 35 U.S.C. § 103(a) as unpatentable over
Irodori and Evangelista;
Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable
over Irodori, Evangelista, and any one of Zimmerman, Iimura,
Naito, Smith, Okada, or Goodson;
Claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Irodori and DeFranco or Goo;
Claims 31-34, 43, and 44 under 35 U.S.C. § 103(a) as
unpatentable over Irodori, DeFranco, and Goo;
Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Irodori, Zimmerman, and Tamura;
Claims 16-19 and 39-42 under 35 U.S.C. § 102 as
anticipated by Evangelista;
Claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable
over Evangelista and one of Zimmerman, Iimura, Naito, Smith,
Okada, or Goodson; and
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Claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Evangelista and one of Okada or Goodson.

The Examiner’s rejections of the following claims are REVERSED:
Claims 31-34, 43, 44, 51-53, and 60-62 under 35 U.S.C.
§ 112, 1
st
paragraph;
Claims 31-34, 43-44, 45, 47-53, 54, and 56-62 under 35
U.S.C. § 112, 2
nd
paragraph as indefinite;
Claims 21-24, 47, 49, 56, and 58 under 35 U.S.C.
§ 102(b) as anticipated by Irodori;
Claims 48 and 57 under 35 U.S.C. § 103(a) as
unpatentable over Irodori and Evangelista; and
Claims 51-53, and 60-62 under 35 U.S.C. § 103(a) as
unpatentable over Irodori, Evangelista, DeFranco, and Goo.

The Examiner’s refusal to reject claims 25, 26, 46, and 55 under 35
U.S.C. § 112, 1
st
paragraph is AFFIRMED.
The Examiner’s refusal to adopt the following proposed rejections is
REVERSED and denominated as a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. 41.77(b):
Claims 25, 26, 30, 46, and 55 under 35 U.S.C. § 102(b)
as anticipated by Konami Corporation, Konami Official Guide
“Love Song of Irodori” (“Irodori”); and
Claim 29 under 35 U.S.C. § 103(a) as unpatentable over
Irodori and Beatmania.

Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that Patent Owner, WITHIN ONE MONTH FROM
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THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 by the Board
upon the same record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
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November 2, 2002 may not be taken “until all parties' rights to request
rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART

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