Ex Parte 6297751 et al

Board of Patent Appeals and Interferences

Jan 30, 2012

90009368 (B.P.A.I. Jan. 30, 2012)

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.
90/009,368 12/22/2008 6297751 14372-0045 7171
25883 7590 01/31/2012
HOWISON & ARNOTT, L.L.P
P.O. BOX 741715
DALLAS, TX 75374-1715
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Fenner Investments Ltd.1,
Appellant and Patent Owner
____________

Appeal 2011-010716
Reexamination Control No. 90/009,368
Patent US 6,297,751 B12
Technology Center 3900
____________

Before RICHARD TORCZON, KARL D. EASTHOM, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
Fenner Investments Ltd. appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of 1-25. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We AFFIRM.

1 Fenner Investments Ltd. is the Patent Owner and the real party in interest
(Br. 4).
2 Issued October 2, 2001, to Jalil Fadavi-Ardekani et al.
Appeal 2011-010716
Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

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STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
by Nintendo Company, Ltd. and Nintendo of America, Inc. on December 22,
2008, of United States Patent 6,297,751 B1 (the '751 Patent), based on U.S.
Patent Application 09/113,503 filed July 10, 1998.
Although not listed in the “Related Proceedings” Appendix of
Appellant’s Brief, the '751 Patent was the subject of litigation styled as
Fenner Investment Ltd. vs. Microsoft Corp., Case No. 6:07 CV 00008 (E.D.
Tex. Jan. 5, 2007), aff’d, 369 Fed. Appx. 132 (Fed. Cir. 2010), where
defendants in that case received a summary judgment verdict of no
infringement.

CLAIMED INVENTION
Patentee’s invention relates to a low-voltage joystick port interface
and a method of interfacing a standard-voltage joystick with a low-voltage
port of a processor (Col. 1, ll. 7-9).
We take independent claim 1 to be representative of the claims:
1. An interface between a joystick device having a first
source voltage and a processor, comprising:
a Resistor-Capacitor (RC) network, connected to the
joystick device, said RC network having a capacitor that
generates an analog joystick position measurement signal; and

3 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed October 12, 2010), and the Examiner’s Answer (“Ans.,” mailed May 3,
2011).
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Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

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an interface circuit having a second source voltage that
is lower than the first source voltage, including
a buffer circuit, in a first operation mode of said
interface, receiving said analog joystick position
measurement signal, outputting a first logic state as a
digital signal before said analog joystick measurement
signal exceeds said predetermined threshold, and
outputting a second logic state as said digital signal after
said analog joystick measurement signal exceeds said
predetermined threshold; and
a pulse generator generating a pulse based on said
digital signal in said first operation mode of said
interface, a width of said pulse representing a coordinate
position of said joystick device, the capacitance value of
said capacitor being a function of said predetermined
threshold that prevents deviation of the width of said
pulse from expected values.
(Br., Claims Appendix).

PRIOR ART REJECTION
The prior art reference relied upon by the Examiner in rejecting the
claims is:
Gulick 6,058,443 May 2, 2000

The sole basis for rejection is:
 claims 1-25 under 35 U.S.C. § 102(e) as being anticipated by Gulick
(Ans. 4-10).
Appellant relies upon the following evidence in rebuttal to the
Examiner’s rejection:
Appeal 2011-010716
Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

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 Memorandum Opinion from Fenner Investment Ltd. vs. Microsoft
Corp., Nintendo Comp., Ltd., and Nintendo of America, Inc., Case No. 6:07
CV 00008 (E.D. Tex. Jan. 5, 2007). (Evidence Appx. B) (“Ct. Opinion”).

ISSUE
Appellant argues that the Examiner has construed the claims
inconsistently with the Specification, and that the Examiner’s use of Gulick
is conclusory (Br. 12). More specifically, Appellant argues that Gulick fails
to teach or suggest the limitation of “an interface circuit having a second
source voltage that is lower than the first source voltage” (Br. 14). We note
that this limitation is recited in independent claims 1, 9, 14, and 20, and
Appellant does not separately argue dependent claims 2-8, 10-13, 15-19, and
21-25 (Br. 20). The Examiner finds that the disputed limitation is disclosed
by Gulick (Ans. 19-20).
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
The issue arising from the respective positions of Appellant and the
Examiner is:
Does Gulick teach the limitation “an interface circuit having a second
source voltage that is lower than the first source voltage” in the context of
independent claims 1, 9, 14, and 20 under 35 U.S.C. § 102(e)?

Appeal 2011-010716
Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

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FINDINGS OF FACT
1. The '751 Patent is directed to a low-voltage joystick port interface
and a method of interfacing a standard-voltage joystick with a low-
voltage port of a processor (Col. 1, ll. 7-9).
2. In the above-cited Memorandum Opinion, the Court construed the
“‘interface circuit’ as ‘a circuit that connects the joystick and the
processor” (Ct. Opinion p. 8, l. 20).
3. Gulick discloses a system for partitioning chip set functions,
having an interface between an expansion bus and legacy devices,
such as a keyboard, a mouse, and a game port (Abs.), with the
latter attachable to joysticks (col. 6, ll. 14-15).
4. Gulick discloses a personal computer system, with a processor
(110) coupled to a north bridge circuit (203), connected to a south
bridge (201) and a port expansion circuit (205) (col. 5, ll. 2-16;
Fig. 2). The port expansion circuit provides input/output (I/O,
209) to connect a plurality of legacy devices such as a modem, a
printer, a keyboard and/or mouse, as well as a game port (1505)
(col. 5, ll. 16-20; Figs. 2, 15).
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Appeal 2011-010716
Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

7
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999).

ANALYSIS
As Appellant notes (Br. 14), and the Examiner concurs (Ans. 10), the
rejection was made on two alternate bases: 1) that the port expansion circuit
(205) of Gulick is equivalent to the claimed “interface circuit,” and 2) that
the port expansion circuit (205) and the south bridge (201) are equivalent to
the claimed “interface circuit.” We need only find one basis to correctly
disclose the disputed limitation to affirm the rejection, and we address the
second basis (2) below.
Appellant argues that the port expansion circuit (205) and the south
bridge (201) are separate and discrete circuits (Br. 18), and that logic (1610)
in Gulick, upon which Examiner relies, resides entirely within the port
expansion circuit (205) (Br. 20). See Figs. 2, 4, and 16 of Gulick. The
Examiner finds that both circuits in Gulick provide an interface between the
external legacy devices and the processor (Ans. 17-18). We agree with the
Examiner.
We do not find it dispositive that because circuits are referred to as
being discrete or separate, that they cannot be considered jointly as an
interface. It is understood by ordinarily skilled artisans that multiple discrete
circuits may be combined to form an interface. As is apparent from claim 1
itself, in which the interface circuit includes a buffer circuit, those skilled in
Appeal 2011-010716
Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

8
the art would have appreciated that a circuit may include subcircuits. We
further agree with the District Court in their finding that an interface circuit
is a circuit that connects the joystick and the processor (FF 2). Such a
definition does not rely on the number or countenance of circuits which exist
between the joystick and the processor. Additionally, as the Examiner
points out (Ans. 18-19), Appellant’s court filings indicate that “the interface
includes any circuitry between the joystick and the processor lowering the
signal’s voltage.” As such, we do not find Appellant’s argument about the
discrete nature of the circuits in Gulick to be persuasive.
Further, as the Examiner finds (Ans. 19), Gulick discloses an interface
coupling a processor to a plurality of legacy devices, including a joystick,
through a south bridge and a port expansion circuit (FF 3-4). As Appellant
has acknowledged, “the port expansion circuit can be built to operate at the
voltages of legacy devices while the South Bridge can operate at a lower
voltage” (Br. 15) (FF 5), such that the south bridge and port expansion
circuit provide “an interface circuit having a second source voltage that is
lower than the first source voltage,” as recited in claims 1, 9, 14, and 20. As
such we find that Gulick teaches all of the disputed elements of claims 1, 9,
14, and 20, and we find no error in the Examiner’s rejection.

Appeal 2011-010716
Reexamination Control No. 90/009,368
United States Patent 6,297,751 B1

9
CONCLUSION
We conclude that Gulick teaches the limitation “an interface circuit
having a second source voltage that is lower than the first source voltage” in
the context of independent claims 1, 9, 14, and 20 under 35 U.S.C. § 102(e).

DECISION
We affirm the Examiner’s decision to reject claims 1-25.

AFFIRMED

ack
cc:

FOR PATENT OWNER:
HOWISON &ARNOTT, L.L.P.
P.O. BOX 741715
DALLAS, TX 75374-1715

FOR THE THIRD PARTY REQUESTOR:
PERKINS COIE LLP
PATENT-SEA
P O BOX 1247
SEATTLE, WA 98111-1247