Ex Parte 6488508 et al

Patent Trial and Appeal Board

Jun 26, 2015

95001234 (P.T.A.B. Jun. 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.
95/001,234 09/18/2009 6488508 SCEA.146736 4466
20210 7590 06/26/2015
DAVIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/26/2015 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
____________

NINTENDO OF NORTH AMERICA, INC., SONY COMPUTER
ENTERTAINMENT AMERICA, INC., AND MICROSOFT
CORPORATION,
Requester,

v.

ADC TECHNOLOGY, INC.,
Patent Owner.
____________

Appeal 2014-009133
Reexamination 95/001,234 and 90/009,521 (merged)
Patent 6,488,508 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, JEFFERY B. ROBERTSON, and IRVIN E.
BRANCH, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2014-009133
Reexamination Control 95/001,234 and 90/009,521
Patent 6,488,508 B2

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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejection of claims 1–7 over various references.
1
PO App. Br. 7-8.
Requester appeals the Examiner’s decision not to adopt the rejections of
claims 1–3, 5, and 7 over various references. 3PR App. Br. 4-5.
2
We have
jurisdiction under 35 U.S.C. §§ 134 and 315.

STATEMENT OF THE CASE
This proceeding arose from a September 18, 2009 request by Sony
Computer Entertainment America Inc., Microsoft Corporation, and Nintendo
of America, Inc. (“Requester”) for an inter partes reexamination of claims of
U.S. Patent 6,488,508 B2, titled “Interactive Communication System for
Communicating Video Game and Karaoke Software” and issued to Takeya
Okamoto, on December 3, 2002 (“the ’508 patent”) and a July 10, 2009
request by ADC Technology, Inc. for an ex parte reexamination of claims of
the ’508 patent. The proceedings were subsequently merged pursuant to the
Decision, Sua Sponte, to Merge Reexamination Proceedings, dated April 14,
2010.
The ’508 patent describes an interactive communication system.
Spec. 1:16.

1
Patent Owner Appeal Brief, dated December 2, 2013 (“PO App. Br.”).
2
Third Party Requestors’ Cross-Appeal Brief, dated November 25, 2013
(“3PR App. Br.”).
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Claim 1 (unamended) reads as follows:

1. A software distributing system for transmitting at least
one of the program, the data, and a combination of the program and
data stored in a database provided in a distribution center to a
requested communication terminal device via communication lines,
storing the transmitted program, the data, and the combination of the
program and data in a memory provided in the communication
terminal device, and enabling execution of the program or data
processing according to the program, the data, and the combination of
the program and data in the memory, said distribution center
comprising:
means for transmitting the program, the data, or the
combination of the program and data at the request of said
communication terminal device to said communication terminal
device; and
means for charging a use fee on the use of the transmitted
program, the data, or the combination of the program and data in said
communication terminal device and for direct debit against an account
in a banking institution.

The cited references include:

Tashiro US 4,998,199 Mar. 5, 1991
Matsuda JP H03-149693 June 26, 1991
Sanbe JP H04-32898 Feb. 4, 1992
Suzuki US 5,157,643 Oct. 20, 1992

Nancy L. Stokey, “Intertemporal Price Discrimination,” 1979
(“Stokey”).

ISSUE

Did the Examiner err in rejecting claims 1-7?

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Reexamination Control 95/001,234 and 90/009,521
Patent 6,488,508 B2

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PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
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

As an initial matter, we note that the ’508 Patent has expired. Thus,
pursuant to 37 C.F.R. § 1.530(j), new claims and proposed amendments to
any of original claims 1-7 will not be incorporated into the patent upon
issuance of a reexamination certificate, and the present appeal will be on the
basis of the unamended original patent claims only.

Claims 1 and 5 (anticipated by Matsuda)

The Examiner rejects claims 1 and 5 as anticipated by Matsuda. RAN
9. Claim 1 recites transmitting the program, the data, or the combination of
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the program and data. Patent Owner argues that Matsuda fails to disclose
“all three distinct transmission types.” PO App. Br. 12-13. We are not
persuaded by Patent Owner’s argument.
We note that claim 1 recites transmitting the program, the data, or the
combination of the program and data and does not recite or otherwise
require transmitting all of the program, the data, and the combination of the
program and data. However, even if Patent Owner is correct that claim 1
actually requires transmitting all of the program, the data, and the
combination of the program and data, we agree with the Examiner that
Matsuda discloses this feature.
For example, Matsuda discloses a system that “store[s] various kinds
of information data” including “game information” and “game software.”
Matsuda 5, 6. Matsuda also discloses that a user requests the “information”
(i.e., “enter[s] a code number of software to be rented.” – Matsuda 8) and, in
response, the system transmits the information to the user. See Matsuda 8.
In other words, Matsuda discloses transmitting the program (e.g., “game
software”), the data (e.g., “game information”), and the combination of the
program and data (e.g., a combination of both “game software” and “game
information”).
Patent Owner does not provide additional arguments in support of
claims 1 and 5 with respect to Matsuda. The Examiner did not err in
rejecting claims 1 and 5 as anticipated by Matsuda.

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Reexamination Control 95/001,234 and 90/009,521
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Claims 3 and 6 (obvious over Matsuda and Tashiro)

The Examiner rejects claims 3 and 6 as unpatentable over Matsuda
and Tashiro. RAN 14. Patent Owner argues that claim 3 and claim 6 recite
“transmitting the game information to at least another communication
terminal device to facilitate interactive communication between the at least
two communication terminal devices regarding the game information” and
that the combination of Matsuda and Tashiro supposedly fails to disclose or
suggest this feature. PO App. Br. 14. Patent Owner also argues that Tashiro
fails to disclose or suggest “display a number of players who can
participate.” PO App. Br. 19-20. As previously discussed, the proposed
amendments to claim 3 are not entered in view of the expiration of the ’508
patent. Original (unamended) claim 3 and claim 6 do not recite the disputed
limitations. For at least this reason, we are not persuaded by Patent Owner’s
argument.
Patent Owner also argues that it would not have been obvious to one
of ordinary skill in the art to have combined the teachings of Matsuda and
Tashiro because “nothing in Tashiro suggests that any game information can
be downloaded” and that Matsuda fails to “suggest that a game may be
played cooperatively.” PO App. Br. 16. We are not persuaded by Patent
Owner’s argument. Matsuda discloses transmitting game information to
user’s device. It would have been obvious to one of ordinary skill in the art
that after a user receives the “game information,” the user would then use
the “information.” Tashiro discloses devices (i.e., “game machines”) that
utilize game information. Patent Owner does not explain sufficiently how
the combination of a device for using “game information” (Matsuda) and
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devices that use game information (Tashiro) would have resulted in anything
more than the predictable result of users playing games on game devices.
Such a combination of known elements performing their known functions to
result in a mere predictable result would have been obvious to one of
ordinary skill in the art. KSR Int’l Co., 550 U.S. at 416.
We are not persuaded by Patent Owner’s arguments.
Patent Owner does not provide additional arguments in support of
claims 3 and 6 with respect to Matsuda and Tashiro. The Examiner did not
err in rejecting claims 3 and 6 as obvious over Matsuda and Tashiro.

Claims 4 (obvious over Matsuda, Stokey, and Sanbe) and 7 (obvious over
Matsuda and Sanbe)

The Examiner rejects claim 4 as unpatentable over Matsuda, Stokey,
and Sanbe and claim 7 as unpatentable over Matsuda and Sanbe. RAN 15.
Patent Owner argues that “[c]laims 4 and 7 both recite ‘karaoke information
and movie data’ that are stored in different databases, and that are both
transmitted to a communication terminal device” and that Matsuda fails to
disclose this feature. PO App. Br. 18. Patent Owner also argues that
Matsuda fails to disclose “storing actual movie data” or “storing any
information of any kind in separate databases.” PO App. Br. 18. As
previously discussed, the proposed amendments to claim 4 are not entered in
view of the expiration of the ’508 patent. Original (unamended) claim 4 and
claim 7 do not recite the disputed limitations. For at least this reason, we are
not persuaded by Patent Owner’s argument.
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Patent Owner argues that Matsuda fails to disclose “karaoke
information.” PO App. Br. 18. The Examiner rejects claims 4 and 7 as
unpatentable over a combination of references that includes Matsuda and
Sanbe. At least because Patent Owner does not assert or demonstrate
sufficiently that Sanbe, for example, fails to disclose or suggest “karaoke
information,” we are not persuaded by Patent Owner’s argument.
Patent Owner also argues that “a combination of Sanbe with Matsuda
is far from either proper or obvious” (PO App. Br. 18) but fails to provide
sufficient evidence to support this contention or to refute the prima facie
showing of obviousness by the Examiner. See also RAN 44.
For example, Patent Owner argues that “nothing in Sanbe or Matsuda
suggest such a combination [of the references].” PO app. Br. 18. However,
we are not persuaded by Patent Owner’s argument at least because Patent
Owner does not demonstrate adequately that the combination of the known
feature of transmitting information to a remote location (e.g., Matsuda) and
the known feature of storing data centrally in a storage device (e.g., Sanbe)
would result in any more that the predictable result of transmitting data and
storing data in a storage device. Such would have been obvious to one of
ordinary skill in the art. KSR Int’l Co., 550 U.S. at 416.
We are not persuaded by Patent Owner’s arguments. The Examiner
did not err in rejecting claim 7 as obvious over Matsuda and Sanbe or claim
4 as obvious over Matsuda, Stokey, and Sanbe.

Appeal 2014-009133
Reexamination Control 95/001,234 and 90/009,521
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Claim 2 (Obvious over Matsuda and Stokey)

The Examiner rejects claim 2 as unpatentable over Matsuda and
Stokey. RAN 10-11. Patent Owner argues that Stokey fails to disclose a
“use fee” and that it would not have been obvious to one of ordinary skill in
the art to have combined the teachings of Matsuda and Stokey. PO App. Br.
21. We are not persuaded by Patent Owner’s argument.
Matsuda discloses a system that “allows users to rent desired
information” and that “the information center . . . computes a rental fee on
the basis of the type of the information data accessed.” Matsuda 5, 9. In
addition, Stokey discloses that the cost of products “are very expensive
when they first appear on the market.” Stokey 1. Hence, Matsuda discloses
that it would have been known to one of ordinary skill in the art to have
charged a fee (or a “use fee”) to a user who rents requested data and to vary
the fee based on the “type of the information accessed.” Stokey discloses
that one of ordinary skill in the art would have known further that one “type”
of information that would be more “expensive” is the “type” of information
that is newer. The combination of known elements of charging a fee for data
access, the amount of the fee based on the “type” of data accessed, as
disclosed by Matsuda, and that newer “types” of information would be more
expensive (i.e., command a higher fee) than older “types” of information, as
disclosed by Stokey, would have resulted in no more than the predictable
result of charging a rental, or “use,” fee to a user based on the age (newer or
older) of the information accessed by the user. Such a predictable result
would have been obvious to one of ordinary skill in the art.
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We are not persuaded by Patent owner’s arguments. The Examiner
did not err in rejecting claim 2 as unpatentable over Matsuda and Stokey.
Affirmance of the Examiner’s rejection of claims 1-7 based on the
above discussed grounds renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims or not 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 Examiner’s rejections or non-
adoption of rejections of claims 1-7 over other references or combinations of
references.
CONCLUSION
The Examiner did not err in rejecting claims 1-7.
DECISION
We affirm the Examiner’s rejection of claims 1 and 5 as anticipated
by Matsuda; claim 2 under 35 U.S.C. § 103(a) as unpatentable over Matsuda
and Stokey; claims 3 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Matsuda and Tashiro; claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Matsuda, Stokey, and Sanbe; and claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Matsuda and Sanbe.
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.
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
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Patent 6,488,508 B2

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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

alw

Patent Owner:

Davis & Bujold, P.L.L.C.
112 Pleasant Street
Concord, NH 03301

Third Party Requester:

Erise IP, P.A.
6201 College Blvd.
Suite 300
Overland Park, KS 66211