Ex Parte 6,488,508 et alDownload PDFPatent Trial and Appeal BoardJun 26, 201590009521 (P.T.A.B. Jun. 26, 2015) Copy Citation 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. 90/009,521 08/17/2009 6,488,508 ADC508 6732 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 2 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.”). Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 3 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? Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 4 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 Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 5 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. Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 6 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 Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 7 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. Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 8 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 Patent 6,488,508 B2 9 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. Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 10 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 Appeal 2014-009133 Reexamination Control 95/001,234 and 90/009,521 Patent 6,488,508 B2 11 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 Copy with citationCopy as parenthetical citation