Ex Parte 6,425,828 B2 et al

Patent Trial and Appeal Board

Mar 26, 2015

95002033 (P.T.A.B. Mar. 26, 2015)

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.
95/002,033 07/03/2012 6,425,828 B2 5186-WDIG-RI033 4435
27571 7590 03/26/2015
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/26/2015 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
____________
SONY COMPUTER ENTERTAINMENT AMERICA LLC
Requester and Respondent

v.

INVENTOR HOLDINGS LLC
Patent Owner and Appellant
____________________

Appeal 2015-001497
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Technology Center 3900

____________

Before MARC S. HOFF, ANDREW J. DILLON, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

DILLON, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Owner appeals under 35 U.S.C. § 134(b) (2002) from the final
decision of the Examiner adverse to the patentability of claims 1-4, 8-10, 12,
and 13. We have jurisdiction under 35 U.S.C. § 315 (2002).
We affirm.

Invention
The ’828 patent describes a method and a system for a distributed
electronic tournament system in which many remotely located players
participate in a tournament through input/output devices connected to a
central controller which manages the tournament. The method includes the
steps of (a) uniquely identifying a player communicating with the central
controller via an associated input/output device; (b) responding to payment
of an entry fee by the player for allowing the player to participate in a
tournament occurring within a fixed time window via an associated
input/output device; (c) accessing a database to store in the database player
information that is generated as the player participates in the tournament,
such information being available for use in a subsequent tournament.
See Abstract.

Claims
Claims 1-4, 8-10, 12, and 13 are subject to reexamination and have
been rejected. Claims 1-10 are original patent claims. Claim 11 has been
canceled. Claims 12 and 13 are proposed new claims. Claims 5-7 are not
subject to reexamination. Claims 1, 8, 9, 10, 12, and 13 are independent.
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Claim 1 is illustrative.
1. A method of conducting a distributed electronic tournament for a
plurality of players, comprising:

exchanging information between a central controller and a player
located remotely from the central controller, the information (i) being
exchanged while the player plays a game in the tournament and (ii)
influencing game play; and

storing in a database player information associated with the player, the
stored player information being available for use in a subsequent tournament
to influence game play of the subsequent tournament while the player is
playing a subsequent game in the subsequent tournament.

Prior Art
Graves US 4,593,904 June 10, 1986
Thacher US 5,083,271 Jan. 21, 1992
Katz US 5,218,631 June 8, 1993
Miguel US 5,593,349 Jan. 14, 1997
Junkin US 5,846,132 Dec. 8, 1998
Abiru JP H8-000829 Jan. 9, 1996

Owner’s Contentions

Owner contends that the Examiner erred in entering the following
grounds of rejections against claims 1-4, 8-10, 12 and 13 (App. Br. 5):
1. The rejection of claims 1-3, 8-10, 12, and 13 under 35 U.S.C.
§ 102(b) as being anticipated by Katz;
2. The rejection of claims 1-4, 8-10, 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Thacher in view of Katz;
3. The rejection of claims 1-4, 8-10, 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Thacher in view of Miguel;
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4. The rejection of claims 1-3, 8-10, 12, and 13 under 35 U.S.C.
§ 102(b) as being anticipated by Junkin;
5. The rejection of claims 1-4, 8-10, 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Thacher in view of Junkin;
6. The rejection of claims 1-4, 8-10, 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Thacher in view of Abiru; and,
7. The rejection of claims 1-4, 8-10, 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Katz in view of Graves.

ANALYSIS
Representative Claim
Owner relies on the limitations of claim 1 and does not provide
arguments for separate patentability for any other claim, noting that similar
features are recited in claims 8-10, 12, and 13. Owner’s App. Br. 17, 18, 23,
26, 27, 29, and 30.
Accordingly, we will decide the appeal on the basis of claim 1. See
37 C.F.R. § 41.67(c)(1)(vii).

Claim Interpretation
In this proceeding, the claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Office must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification. Id. (citing
In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
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There is a “heavy presumption” that a claim term carries its ordinary
and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002).
ANALYSIS
Owner argues error in the Examiner’s position that the terms “game
phase” and “another game phase” may be said to anticipate or suggest the
claimed terms “tournament” and “subsequent tournament,” urging that
interpretation is not reasonable as “game phase” and “another game phase”
may refer to play within a single tournament, or two different tournaments.
Owner argues that the Examiner is merely speculating and points out that
Katz does not provide the necessary teachings to resolve that issue. Owner’s
App. Br. 15-16, Owner’s Rebuttal Br. 1-3.
Although an inventor is free to define the specific terms used to
describe the invention, “this must be done with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
To act as its own lexicographer, a patentee must “clearly
set forth a definition of the disputed claim term” other than its
plain and ordinary meaning. It is not enough for a patentee to
simply disclose a single embodiment or use a word in the same
manner in all embodiments, the patentee must “clearly express
an intent” to redefine the term.

Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (citations omitted).
The Examiner points out that the ’828 patent recites “each tournament
has . . . one or more game sessions” wherein “a game session includes one or
more games,” citing the ’828 Patent, at column 5, line 67 through column 6,
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line 1. RAN 26. The Examiner also points to sections of the ’828 patent
that “makes it clear that the ‘tournament’ term is intended to be construed
extremely broadly.” Id.
Absent a clear definition in the disclosure that the claimed term
“tournament” requires some special meaning, and absent reference to or
provision of persuasive evidence or argument which indicates that one of
ordinary skill in the art would understand the term to require that special
meaning, we are not persuaded that the broadest reasonable interpretation of
the term “tournament” is not at least suggested by the Katz disclosure, as
cited by the Examiner.
We find the recital by Katz at column 8, lines 24-25, that “At the end
of a game phase, the data is returned to the unit 24 as for processing or
future retrieval during another game phase” is at least suggestive of the
claimed feature of “storing in a database player information associated with
the player, the stored player information being available for use in a
subsequent tournament to influence game play of the subsequent
tournament” (Claim 1).
Addressing Ground of Rejection 7, as set forth above, in the absence
of any argument by Owner addressed to the teachings of Graves, with
respect to disclosing a distributed system for allowing a plurality of players
to participate by providing an entry fee, and in view of our finding that Katz
at least suggests “storing in a database player information associated with
the player, the stored player information being available for use in a
subsequent tournament to influence game play of the subsequent
tournament,” we find the Examiner did not err in rejecting claims 1-4, 8-10,
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12 and 13 under 35 U.S.C. § 103(a) as unpatentable over Katz in view of
Graves.
We, therefore, find it unnecessary to reach a decision regarding the
cumulative rejections of the claims under 35 U.S.C. § 102(b) as being
anticipated by Katz; under 35 U.S.C. § 103(a) as unpatentable over Thacher
in view of Katz; under 35 U.S.C. § 103(a) as unpatentable over Thacher in
view of Miguel; under 35 U.S.C. § 102(b) as being anticipated by Junkin;
under 35 U.S.C. § 103(a) as unpatentable over Thacher in view of Junkin;
and, under 35 U.S.C. § 103(a) as unpatentable over Thacher in view of
Abiru. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim . . . .”).

DECISION
The Examiner’s decision adverse to the patentability of claims 1-4, 8-
10, 12, and 13 is affirmed.
Requests for extensions of time in this proceeding are governed by
37 C.F.R. §§ 1.956 and 41.79(e).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED
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peb

Patent Owner:

ASCENDA LAW GROUP, PC
333 W SAN CARLOS ST.
SUITE 200
SAN JOSE, CA 95110

Third Party Requester:

ERISE IP, P.A.
6201 COLLEGE BOULEVARD
SUITE 300
OVERLAND PARK, KS 66211