95000410 - (S) (P.T.A.B. Jun. 17, 2013)

Ex Parte 6225547 et al

Patent Trials and Appeals BoardJun 17, 2013

95000410 - (S) (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 01/06/2014 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 01/06/2014 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 v. KONAMI DIGITAL ENTERTAINMENT CO., LTD Patent Owner ____________ 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 REQUEST FOR RECONSIDERATION Appellant requests rehearing under 37 C.F.R. § 41.79 of our Decision on Appeal entered June 18, 2013 (“Decision” or “Dec.”) wherein we affirmed the Examiner’s final rejection of claim 11 as unpatentable over Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 2 Irodori 1 and Evanglista 2 and reversed the Examiner’s refusal to reject claims 46 and 55 as anticipated by Irodori (Decision 23-24). We also did not consider the Examiner’s refusal to adopt the proposed rejection of claims 46 and 55 as anticipated by Beatmania, 3 having reversed the Examiner’s refusal to reject claims 46 and 55 based on Irodori (Decision, 22-23). 4 We have jurisdiction under 35 U.S.C. §§ 134 and 315. Appellant asserts that the Decision contains two errors. Specifically, Appellant asserts that: 1) The Decision overlooked that Irodori does not disclose “judging whether the sound is allowed to be generated,” as recited in claims 46 and 55 (Req. Reh’g. 1), 5 and 2) With respect to claim 11, the Decision overlooked that “the alleged modification [of the combination of Irodori and Evangelista] would change the principal of operation of Irodori and would render Irodori unsatisfactory for its intended purpose” (Req. 1 Konami Corporation, Konami Official Guide “Love Song of Irodori,” 1998 (“Irodori”). 2 US Patent No. 4,177,705, issued December 11, 1979. 3 Konami Corporation, Konami Official Guide “Beatmania,” 1997 (“Beatmania”). 4 Our decision at page 22 inadvertently stated that we did not “reach the propriety of the Examiner’s decision to reject” claims 46 and 55 on a different basis. The decision should have referred to the Examiner’s decision not to reject claims 46 and 55 on a different basis. 5 The claims actually recite “to judge whether the sound is allowed to be generated.” Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 3 Reh’g. 2) and that “the evidence demonstrating commercial success with regard to claim 11 . . . was overlooked by the Board” (Req. Reh’g 3). In the Decision, we reversed the Examiner’s refusal to adopt the proposed rejection of claims 46 and 55 as anticipated by Irodori but in the course of discussing the rejection of claims 21 and 23, we also stated that “Irodori . . . does not appear to disclose judging whether a sound is allowed to be generated” (Decision 10). Hence, we agreed with the Examiner that Irodori fails to disclose or suggest “judging whether sound is allowed to be generated.” Id. Appellant has presented factual arguments that claims 46 and 55 recite “judging whether sound is allowed to be generated” (Req. Reh’g. 1). Thus, on reconsideration, we GRANT the Request for Rehearing with respect to this issue and we modify the Decision to affirm the Examiner’s refusal to adopt the rejection of claims 46 and 55 as anticipated by Irodori. The Requester appealed the Examiner’s refusal to adopt the proposed rejection of claims 46 and 55 as anticipated by Beatmania (3PR App. Br. 20- 25). Based on our previous reversal of the Examiner’s refusal to adopt the rejection of claims 46 and 55 as anticipated by Irodori, we did not reach the propriety of the proposed rejection of claims 46 and 55 as anticipated by Beatmania (Decision 22). In view of our affirmance of the Examiner’s refusal to adopt the rejection of claims 46 and 55 as anticipated by Irodori, Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 4 consideration of Requester’s appeal with respect to the proposed rejection of claims 46 and 55 as anticipated by Beatmania is now proper. The Requester appealed the Examiner’s refusal to adopt the proposed rejection of claims 46 and 55 as anticipated by Beatmania (3PR App. Br. 20- 25). Patent Owner argued that Beatmania fails to disclose an instruction timing of a player to judge whether sound is allowed to be generated and generating the sound based on the judgment, as recited in claims 46 and 55. As Patent Owner points out, “[i]n Beatmania a sound is generated . . . regardless of when the game player is supposed to play the sound” (PO Resp. Br. 14). For example, Beatmania discloses “timings for pressing keys and scratching” (Beatmania English language translation p. 10), performing “scratching with this timing” to earn scores based on timing (Beatmania English language translation pp. 11-12, 15-16, and 21). Beatmania does not appear to disclose judging whether sound is allowed to be generated and generating the sound based on the judgment. Rather, Beatmania appears merely to disclose producing sound corresponding to “scratching with this timing.” Requester argued that “Beatmania also detects the ‘time gap between a predetermined generation timing of a sound in a selected sound group and an instruction timing of the game player [i.e., the pressing of the key by the player] to judge whether the sound is allowed to be generated’” (3PR App. Br. 24) but did not demonstrate persuasively that Beatmania, in fact, discloses judging whether sound is allowed to be generated and generating Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 5 the sound based on the judgment. Even assuming Requester to be correct that Beatmania discloses “pressing of the key by the player,” we cannot agree that pressing of a key by a player would constitute judging whether sound is allowed to be generated and generating the sound based on the judgment. At best, a player pressing a key would result in the generation of sound without judgment and generating the sound based on pressing the key rather than based on a judgment as to whether the sound is allowed to be generated. Therefore, we affirm the Examiner’s refusal to adopt the rejection of claims 46 and 55 as anticipated by Beatmania. Regarding claim 11, Patent Owner re-interates that “the alleged modification [of Evangelista and Irodori] would change the [principle] of operation of Irodori and would render Irodori unsatisfactory for its intended purpose” because “Irodori teaches a simplistic rhythm video game and Evangelista discloses a complex musical instrument;” that “Evangelista does not disclose a game controller” but only discloses “a stand-alone musical instrument simulator” (Req. Reh’g. 2); and that utilizing a “complex musical instrument simulator” of Evangelista in “the simplistic rhythm video game of Irodori” would “change the principal of operation of Irodori from a simplistic rhythm video game for someone without musical ability into a game only for experienced musicians” (Req. Reh’g 3). These arguments were previously addressed in the Decision (see, e.g., Decision 11-12). Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 6 Patent Owner does not persuasively demonstrate that we overlooked or misapprehended any points pertaining to these arguments. Patent Owner also argues that “evidence demonstrating commercial success with regard to claim 11 . . . was overlooked by the Board” (Req. Reh’g 3). In particular, Patent Owner argues that “[t]he declaration of Mr. [Mitsuhiro] Nozaki establishes that ‘Guitar Freaks’ is covered by at least [claim 11], and that the commercial success of ‘Guitar Freaks’ is based on a game player being able to hold a video game controller in the form of a mimic guitar and to generate a note that is mixed with background music;” that “Harmonix . . . used the mimic guitar from ‘Guitar Freaks’ in ‘Guitar Hero;’” and that “Konami’s competitor . . . stated that ‘I’m sure that 90% of what draws people into Guitar Hero is that plastic guitar’” (Req. Reh’g 4, citing Nozaki Declaration, Exhibit 4). As explained in the Decision, Patent Owner (and Mitsuhiro Nozaki) does not provide sufficient evidence demonstrating a nexus between alleged “commercial success” and the claimed invention. Instead, Patent Owner merely provides a table of sales figures of a product identified as “Guitar Freaks” (see, e.g., Nozaki Declaration, p. 5), without persuasive evidence demonstrating a nexus between specific claim features and the alleged sales figures. “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.Cir.1995). In other words, the weight given to evidence of secondary considerations is Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 7 dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). For example, Patent Owner argues that a “competitor [of Patent Owner] . . . stated that ‘I’m sure that 90% of what draws people into Guitar Hero is that plastic guitar’” (Req. Reh’g 4). Even assuming that the competitor is correct that 90% of people are drawn to “that plastic guitar,” Patent Owner does not provide sufficiently persuasive evidence of a nexus between the alleged drawing in of 90% of people and a claimed feature of the invention. Indeed, Patent Owner does not provide sufficient evidence demonstrating what specific features served as an impetus for allegedly drawing in 90% of a select group of people other than “that plastic guitar.” Assuming that the feature of “that plastic guitar” that draws in 90% of the hypothetical sample of people is the fact that the guitar is made of plastic (the feature of being made of plastic being the only feature specified by Patent Owner and the competitor), Patent Owner does not demonstrate that claim 11 recites a “plastic guitar.” Instead, claim 11 merely recites an instrumental unit in the form a guitar and does not recite that the instrumental unit is in the form of a guitar is made of plastic. Indeed, claim 11 does not recite any specific material of which the instrumental unit is made. Moreover, claim 11 recites “the instrumental unit is in the form of a guitar, the sound group selector is configured into a plurality of neck buttons Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 8 corresponding to the plurality of sound groups, respectively, and the instructor is configured into a picking unit.” Patent Owner has not provided persuasive evidence correlating its purported substantial sales to these specific recitations in claim 11 and has therefore not persuasively shown a nexus between those sales and the claimed invention. Thus, Patent Owner has not demonstrated persuasively that we overlooked or misapprehended any points with respect to claim 11. SUMMARY Patent Owner’s arguments do not persuade us that the Decision affirming the Examiner’s rejection of claim 11 as obvious over Irodori and Evangelista has misapprehended or overlooked any point of fact or law. We therefore deny Appellant’s Request with respect to claim 11. We grant Patent Owner’s request to the extent that the Examiner’s refusal to adopt the rejection of claims 46 and 55 as anticipated by any one of Irodori or Beatmania is affirmed. We modify the Decision of June 18, 2013 to affirm the Examiner’s refusal to adopt the rejection of claims 46 and 55 as anticipated by any one of Irodori or Beatmania. REHEARING GRANTED-IN-PART Appeal 2013-004123 Reexamination Control 95/000,410 Patent No. 6,225,547 B1 9 Westerman, Hattori, Daniels & Adrian, LLP 1250 Connecticut Avenue, NW Suite 700 Washington, DC 20036 Third Party Alex Bahrakis 745 LLC 745 Boylston Street Boston, MA 02116