Ex Parte 6488508 et al

Patent Trial and Appeal Board

May 28, 2015

95001234 (P.T.A.B. May. 28, 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 05/28/2015
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
05/28/2015 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
______________

ADC TECHNOLOGY, INC.,
Patent Owner, Appellant, and Cross-Respondent

v.

NINTENDO OF NORTH AMERICA, INC., SONY COMPUTER
ENTERTAINMENT AMERICA, INC., AND MICROSOFT
CORPORATION,1
Third Party Requesters, Cross-Appellants, and Respondents
______________

Appeal 2014-0091332
Reexaminations 95/001,234 and 90/009,521 (merged)
United States Patent 6,488,508 B2 (expired)3
Technology Center 3900
______________

Before JOHN C. MARTIN, STEPHEN C. SIU, and IRVIN E. BRANCH,
Administrative Patent Judges.

1 During the pendency of these reexamination proceedings, Sony Computer
Entertainment America Inc. merged with Sony Computer Entertainment
America LLC. Third Party Requestors’ Cross Appeal Brief (“Req. Appeal
Br.”), filed on November 25, 2013, at 2 n.1.
2 This appeal is related to pending PTAB Appeals 2014-009132 and 2014-
009134 (hereinafter “’9132 Appeal” and “’9134 Appeal”). Decisions on
Appeal in all three appeals are being mailed concurrently.
3 This patent (hereinafter “’508 patent”) issued to Takeya Okamoto on
December 3, 2002, based on Application 09/733,541, filed on December 8,
2000. The ’508 patent is the fifth in a chain of U.S. applications beginning
with Application 08/232,862 (now Patent 5,489,103), filed on April 25,
1994. ’508 patent 1:5–12. The ’508 patent expired on April 25, 2014.
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MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
For the following reasons, we are dismissing this appeal with respect
to the amended and new claims.
The ’508 patent issued with original claims 1–7, of which claims 1
and 3–7 are independent claims. ’508 patent cols. 14–16.
The rejected claims are identified as claims 1–31 at page 1, box 5, of
the Right of Appeal Notice (RAN) mailed on August 7, 2013, which is
incorporated by reference without modification in the Answer (mailed on
March 5, 2014). Claims 1, 2, and 5 are original claims, claims 3, 4, and 7
are amended claims, and claims 8–31 are new claims. Claims App., Patent
Owner’s Appeal Brief (hereinafter “PO Appeal Br.”), filed December 2,
2013, at 23–26.
The ’508 patent expired on April 25, 2014.4 An expired patent may
not be amended to include amended or new claims. As explained in MPEP
§ 2250 (9th ed. March 2014):
III. AMENDMENT AFTER THE PATENT HAS EXPIRED
Pursuant to [37 C.F.R. §] 1.530(j), “[n]o amendment may
be proposed for entry in an expired patent.” Thus, if a patent
expires during the pendency of a reexamination proceeding for

4 Patent Owner’s Rebuttal Brief, the last-filed of the briefs before us in this
appeal, was filed on April 7, 2014.
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a patent, all amendments to the patent claims and all claims
added during the proceeding are withdrawn. This is carried out
by placing a diagonal line across all amended and new claims
(and text added to the specification) residing in the amendment
papers. The patent owner should be notified of this in the next
Office action. The Office action will hold the amendments to
be improper, and state that all subsequent reexamination will be
on the basis of the unamended patent claims. This procedure is
necessary since no amendments will be incorporated into the
patent by a certificate after the expiration of the patent.
Therefore, this appeal is DISMISSED with respect to claims 3, 4, and
8–31, leaving only original claims 1, 2, and 5 for our consideration in this
appeal.5
For the same reason, we limit to claims 1, 2, and 5 our consideration
of “Third Party Requestors’ Cross-Appeal Brief” (“Req. Appeal Br.”),
which at pages 9–10 takes issue with the Examiner’s decision not adopt
other proposed rejections of these claims and other claims.
We AFFIRM the Examiner’s decision that claims 1, 2, and 5 are
unpatentable over the prior art.
We also AFFIRM Examiner’s decision not to enter either of the
proposed rejections of claims 1, 2, and 5 that are the subject of Requesters’
appeal.

5 Only claims 1–7 are mentioned the “Notice of Appeal by Patent Owner in
Inter Partes Reexamination,” filed September 12, 2013, at 1, and “Patent
Owner’s Appeal Brief” (at page 3) (“Status of Claims”).
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I. STATEMENT OF THE CASE
A. Related Litigation and Reexamination Appeals
The related litigation and PTAB reexamination appeals are identified
at pages 2–4 of the Decision on Appeal in Appeal 2014-009132 (hereinafter
“’9132 Appeal Decision”), which is incorporated by reference herein in its
entirety.
As noted in the ’9132 Appeal Decision, the ’508 patent is identified in
the ’021 patent as the fifth-filed patent in a chain of seven U.S. patents, of
which the first is patent 5,489,103 (hereinafter “’103 patent”), having a
filing date of April 25, 1994. These U.S. patents claim foreign priority
based on Japanese patent document 5-108303, filed May 10, 1993.
As explained below, the Examiner in this reexamination proceeding
has found that the ’508 patent claims are entitled to benefit of the May 10,
1993, foreign filing date and thus predate Roskowski, which is asserted as a
reference by Requesters.6

B. These Merged Reexamination Proceedings
Ex parte reexamination of claims 1–7 was requested by Patent Owner
in a request for ex parte reexamination filed by Patent Owner on July 10,
2009. Inter Partes reexamination of claims 1–7 was requested in a “Request
for Inter Partes Reexamination Pursuant to 35 U.S.C. § 311 et seq. and

6 Roskowski, et al., U.S. Patent 5,624,316, issued on April 29, 1997, based
on an application filed on June 6, 1994. Request Ex. D.
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37 C.F.R. § 1.902 et seq.” (hereinafter “Request”), filed by Requesters on
September 18, 2009.
The Examiner has found that the ’508 patent claims are entitled to
benefit of the May 10, 1993, filing date of Japanese patent document
5-108303. Order Granting/Denying Request For Inter Partes
Reexamination, mailed on December 15, 2009, at 4.
The ex parte and inter partes proceedings were merged by a
“Decision, Sua Sponte, to Merge Reexamination Proceedings,” mailed on
April 14, 2010. The papers discussed below are in the file of the inter partes
proceeding.
An October 25, 2010, “Declaration of Dr. Michael Zyda” (hereinafter
“Dr. Zyda’s Declaration”) accompanied “Third Party Requesters’ Comments
Subsequent to Patent Owner’s Response Under 37 C.F.R. § 1.947,” which
initially were filed on October 27, 2010, and later refiled in modified form
on February 9, 2011. These refiled comments hereinafter are cited as “Req.
Feb. 2011 Comments.” Dr. Zyda’s Declaration is not cited in Requesters’
Appeal Brief in connection with any entered or proposed rejection of
claim 1, 2, or 5 and thus will be given no further consideration.

C. The Claimed Subject Matter
Independent claims 1 and 5, reproduced below, differ from claims 1,
5, and 8 of the ’021 patent by reciting that the use fee is paid by “direct debit
against an account in a banking institution.” This feature is not separately
argued. Instead, the only argued feature (PO Appeal Br. 12–13) is the
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recitation in claims 1 and 5 of “transmitting the program, the data, or the
combination of the program and data at the request of said communication
terminal devices to said communication terminal device, which also appears
in claims 1, 5, and 8 of the ’021 patent.
Claims 1 and 5 read as follows:
1. (Original) 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.
5. (Original) A method of software distribution 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
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processing according to the program, the data, and the
combination of the program and data in the memory, said
method comprising the steps of:
transmitting the program, the data, or the combination of
the program and data at the request of said communication
terminal devices [sic, device] to said communication terminal
device; and
charging a use fee on the use of the transmitted program,
the data, and the combination of the program and data in said
communication terminal device and for direct debit against an
account in a banking institution.
Claims Appendix, PO Appeal Br. 23–25 (emphasis added).
Patent Owner argues (PO Appeal Br. 5–12) that the claim language
“transmitting the program, the data, or the combination of the program and
data” must be given a conjunctive interpretation. We agree for the reasons
given at pages 19–29 of the ’9132 Appeal Decision.
The only other argued claim feature appears in dependent claim 2,
which reads as follows: “2. (Original) A software distributing system
according to claim 1, wherein said charging of the use fee is varied in
accordance with the newness of the program, the data, and the combination
of the program and data.” Claims App., PO Appeal Br. 23 (emphasis
added).
The corresponding passage in the ’508 patent reads as follows:
The charging system 110 is dependent on the form or
condition of the communication service to be rendered. In a
practical charging system 110, the cost would be varied with
respect to the complicatedness or scale of the game data
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provided. The cost would also vary depending on whether the
game is new or old in the market.
’508 patent 7:13–18.

D. The Rejections Before Us
The entered grounds of rejection of claims 1–31 are identified at RAN
pages 6–7 as U, V, X, Y, AB, AG–AI, AK–AN, AS, AW, AX, AZ, BA–BO,
BS–BZ, CA, and CB. RAN 6–7. Grounds U, V, X, and Y are discussed at
RAN pages 27–29; grounds AB, AG–AI, AK–AN, and AS at RAN pages
30–49; and grounds AW, AX, AZ, BA–BO, BS–BZ, CA, and CB at RAN
pages 9–23. The entered grounds that apply to original claims 1, 2, and 5
are identified in the following tables:

Entered Rejections Under 35 U.S.C. § 102
Ground Reference Claims RAN page
AW Matsuda7 1, 5 9
AX Bush8 1, 5 9

7 Matsuda, Japanese Patent Publication H3-149693, published on June 26,
1991. Request Ex. B. Our understanding of Matsuda is based on the
translation provided by Requesters. Id.
8 Bush, U.S. Patent 4,789,863, issued on December 6, 1988. Request Ex. C
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Entered Rejections Under 35 U.S.C. § 103(a)
Grounds References Claims RAN page
BE Matsuda + Tsumura9 1, 5 12
BS Rhoades10 + Bush 1, 5 18–19
BW Rhoades, Bush +
Tsumura
1, 5 20
AH, AZ Matsuda + Stokey11 2 10–11 and 33
BT Rhoades, Bush +
Stokey
2 18–19
CB Bush + Tsumura 1, 5 22–23
BY Bush + Stokey 2 21

The nonadopted rejections argued in Requesters’ appeal are as follows:
Nonadopted Rejections
Ground Statutory
Basis
Reference(s) Claims RAN
page
AY § 102 Roskowski 1, 5 10
CC § 103(a) Roskowski + Stokey 2 23

9 Tsumura, U.S. Patent 5,547,202, issued on August 20, 1996. Req. Feb,
2011 Comments Exhibit A.
10 Rhoades U.S. Patent 5,181,107, issued on January 19, 1993. Request
Ex. E.
11 Nancy L. Stokey, Intertemporal Price Discrimination, The Quarterly
Journal of Economics 355-71 (Aug. 1979). Req. Feb. 2011 Comments Ex. I.
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II. THE MERITS OF THE
EXAMINER’S ANTICIPATION REJECTIONS
A. Anticipation by Matsuda (Claims 1 and 5) (Ground AW)
Patent Owner’s arguments (PO Appeal Br. 5–13) against the rejection
of claims 1 and 5 of the ’508 patent for anticipation by Matsuda are the same
as the arguments made in the ’9132 Appeal against the rejection of claims 1
and 5 on this ground. These arguments are unpersuasive for the reasons
given at pages 30–32 of the ’9132 Appeal Decision.
Therefore, we sustain the rejection of claims 1 and 5 of the ’508
patent for anticipation by Matsuda.

B. Anticipation by Bush (Claims 1 and 5) (Ground AX)
Bush’s invention relates to “a pay per view entertainment system, and
more specifically, to a pay per view cable system in which subscribers are
able to select, record, and pay for audio entertainment in their homes.”
Bush 1:9–13. The entertainment is not solely limited to prerecorded musical
works but can include video recordings or computer software. Id. at
2:25–28.
For the following reasons, we agree with Patent Owner that Bush’s
system does not involve transmitting information from a distribution center
to a communication terminal at the request of the communication terminal,
as required by claims 1 and 5. PO Appeal Br. 13.
Bush’s Figure 1 is reproduced below.
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Figure 1 is a block diagram illustrating a pay per view entertainment system
in accordance with Bush’s invention. Id. at 2:19–21. A source 10 obtains
the prerecorded entertainment and distributes it to an operator 11 or multi-
system operator (MSO) 12, each of whom can distribute the prerecorded
entertainment on a coaxial cable network connected to subscribers, such as a
cable network presently used to distribute television programs. Id. at
2:28–52.
At the location of the subscriber, the prerecorded entertainment is
applied to a cable controller 13 and a specially designed receiver 14
(described infra). Id. at 2:52–55. Cable controller 13 also is connected to
the subscriber’s television 15 to provide the subscriber with video
information regarding the prerecorded entertainment. Id. at 2:55–58.
Bush’s Figure 4 is reproduced below.
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Figure 4 is a block diagram illustrating equipment 30 used by system
operator 11 to distribute the prerecorded entertainment. Id. at 3:23–25.
Cart machines 31-36 play “previews” of the recorded entertainment in
“mono” (i.e., monaural) audio format. Id. at 3:33–36. Compact disc
machines 41-46 play the complete works of prerecorded entertainment in
stereo audio format. Id. at 3:38–42. These compact disc machines are
responsive to a time code generator 50 and comparators 51-52, which
control the playing of sides 1 and 2 every thirty minutes. Id. at 3:43–45.
Bush’s Figure 5 is reproduced below.
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Figure 5 is a block diagram illustrating a special receiver 100, which is
located at each subscriber location. Id. at 3:10–16, 55–56. Receiver 100
includes two main sections, namely, a program and logic control section 101
and an audio/video routing section 102. Id. at 3:56–59. In program and
logic control section 101, the selected audio signals are recorded on a
cassette recording unit that includes cassette electronics 111 and cassette
transport 112. Id. at 7-9.
Figure 6 is reproduced below.

Figure 6 is a plan view of the receiver for subscribers. Id. at 2:13.

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The subscriber operates the invention by turning on the television 15
and switching the main cable selector to the pay per view channel, causing a
menu of record selections to appear on the television screen. Id. at 5:60–63.
After turning the speaker switch 149 to “Preview” and making sure the
speaker volume is on, the subscriber previews the selections listed on the
television menu by pressing the appropriate number for each selection on the
preview keypad 137 (in program and logic control section 101), thereby
causing the selection number to appear in a window 117 above the keypad.
Id. at 5:63–6:1. Once a selection has been chosen for recording, the
subscriber moves speaker switch 149 to “Program” and inserts a sixty-
minute minimum audio cassette or CD into a slot 119. Id. at 6:1–4. The
subscriber presses the date key and enters the month and day using the
program keypad 138, causing the transmission date (of the desired selection)
to appear in a window 118. Id. at 6:8–11. Next, the subscriber presses the
select key 124 and enters the selection number he wishes to record using the
program keypad 138, causing the selection number to appear in a window
119. Id. at 6:11–14.
Once the purchase key 136 is pressed, the date and selection number
cannot be changed (unless the “master react button” is pressed) and the
subscriber is billed for that selection. Id. at 6:16–20. If appropriate funds
are available in the subscriber’s checking account, the amount of the
selection will be withdrawn and the “Thank You” light 111a will be
activated. Id. at 6:31–35.
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We agree with Patent Owner that in Bush’s system “the same data
(i.e., prerecorded programmed entertainment) is provided to all the
subscribers and there is no request to transmit any program, data, or
combination of the program and data.” PO Appeal Br. 13. That is, the
entertainment data are transmitted to cable controller 13 and receiver 14 at
all consumer locations without first being requested by a subscriber.
The Examiner does not dispute Patent Owner’s description of Bush’s
operation. However, the Examiner nevertheless finds that Bush anticipates
the claims because “Bush explicitly states a subscriber selects a work for
recording (Request: page 27; Bush: column 1, lines 59-62), which is read
upon by the claim language transmitting at the request.” RAN 54 (quoted in
Req. Resp’t Br. 8). We do not agree that a request by a receiving subscriber
to record the desired selection from the received information can be
characterized as transmitting such a selection at the request of the
subscriber.
We do not sustain the rejection of either of claims 1 and 5 for
anticipation by Bush.

III. THE MERITS OF THE
EXAMINER’S OBVIOUSNESS REJECTIONS
A. Matsuda in View of Tsumura (Claims 1 and 5) (Ground BE)
Because we are sustaining the rejection of claims 1 and 5 for
anticipation by Matsuda, we also sustain the rejection of these claims for
obviousness over Matsuda in view of Tsumura. See In re McDaniel,
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293 F.3d 1379, 1385 (Fed. Cir. 2002) (“[A]nticipation is the epitome of
obviousness.”).

B. Rhoades in View of Bush (Claims 1 and 5) (Ground BS)
Patent Owner’s arguments against the rejection of claims 1 and 5 of
the ’508 patent for obviousness over Rhoades in view of Bush (PO Appeal
Br. 17) are the same as Patent Owner’s arguments in the ’9132 Appeal
against the rejection of ’021 patent claim 1 for anticipation by Rhoades.
These arguments are unpersuasive for the reasons given at pages 32–35 of
the ’9132 Appeal Decision.
Therefore, we sustain the rejection of claims 1 and 5 of the ’508
patent for obviousness over Rhoades in view of Bush.

C. Rhoades in View of Bush and Tsumura (Claims 1 and 5)
(Ground BW)
We sustain this rejection with respect to claims 1 and 5 for the same
reasons that we have sustained, supra, the rejection of these claims for
obviousness over Rhoades in view of Bush.

D. Matsuda in View of Stokey (Claim 2) (Grounds AH, AZ)
As noted above, claim 2 recites that “the use fee is varied in
accordance with the newness of the program, the data, and the combination
of the program and data.”
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Stokey explains that “[m]any new products, like the successive
generations of pocket calculators, are very expensive when they first appear
on the market; then, over a period of time the price declines” and describes
“[c]omputers, computer programs, and first-run movies” as examples of
such products. Stokey 355.
The Examiner concludes that it would have been obvious in view of
Stokey to vary the use fee in Matsuda in accordance with the newness of the
program, data, or combination of program and data. (Second) Non-Final
Office Action, mailed June 4, 2012, at 19–20. We agree with the
Examiner’s conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
Patent Owner argues:
Stokey does not teach or suggest a “use fee” that is varied in
accordance with the newness of the program, the data, and the
combination of the program and data. Instead, Stokey teaches
that products are very expensive when they first appear on the
market, then, over a period of time the price declines (first
paragraph). Thus, there is no teaching of varying a use fee in
accordance with the newness of the program, the data, and the
combination of the program and data.
PO Appeal Br. 21 (emphasis added). This argument is unpersuasive because
“[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
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combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Matsuda rather than Stokey is relied on for a teaching of
transmitting a program, data, or a combination of a program and data.
We sustain the rejection of claim 2 for obviousness over Matsuda in
view of Stokey.

E. Rhoades in View of Bush and Stokey (Claim 2) (Ground BT)
For the reasons given above, we are sustaining the rejection of parent
claim 1 for obviousness over Rhoades in view of Bush. Based on those
reasons and our above discussion of Stokey, we sustain the rejection of
claim 2 for obviousness over Rhoades in view of Bush and Stokey.

F. Bush in View of Tsumura (Claims 1 and 5) (Ground CB)
For the reasons given above, the rejection of claim 1 for anticipation
by Bush is not sustained, the reason being that Bush does not describe
transmitting information in response to a request.
Patent Owner argues that the above feature also is not described by
Tsumura:
Tsumura teaches broadcasting and not transmitting at the
request [and] thus does not teach or suggest “transmitting . . . at
the request of said communication terminal device,” but rather
discloses a system similar to a pay per view system that has pre-
programmed content from which selected content may be stored
(i.e., no requests to transmit).
PO Appeal Br. 17 (emphasis omitted; ellipses in original).
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For the following reasons, we agree with Requesters that Tsumura
does describe transmitting in response to a request:
Appellant argues that Tsumura “actually teaches away
from ‘transmitting . . . at the request of said communication
terminal device.’” Appeal Br. at 16. As discussed in Section
VII.A.B, Appellant is wrong.
Req. Resp’t Br. 12.
Tsumura’s invention relates to “the communication of large volumes
of data of the type used in computer games.” Tsumura 1:9–10.
Figure 1 of Tsumura is reproduced below.

Figure 1 is a block diagram illustrating the nature of radio transmission via a
communications satellite from a transmission device to a receiving device, in
which 11 is a communications satellite, 12 a transmission device and 13 a
receiving device. Id. at 4:14–18.
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In the system depicted in Figure 1, information is transmitted from
transmitter 12 to receiver 13 in one direction only and in a cyclic (i.e.,
repeating) fashion without the need for a request from the receiver):
Communication takes place in one direction only, from the
transmission device 12 to the receiving device 13. The
transmission computer 21 reads game data in a prescribed order
from the database 22 in which it is stored and, after adding
various control and other necessary signals, outputs it in the
form of a data string to the transmitter 23. Next, the tuner 32 in
the receiving device 13 selects an appropriate channel and, with
the help of the RAM 34, transfers game data with a number
corresponding to the number input from the control panel 36
into the large scale memory 35. The game is then played with
the help of the data processing device 37.
. . . The order of transmission is determined quite simply
by assigning an order to the game data in advance and then
transmitting the data in accordance with the predetermined
order. Once the 100 items of game data have been transmitted,
the whole transmission process is repeated, starting again with
the first item of data, thereby establishing a cyclical pattern of
transmission.
Id. at 5:6–17, 42–49 (emphasis added). Patent Owner is correct to
characterize the above-described one-way system as “broadcasting and not
transmitting at the request [of a communication terminal device].” PO
Appeal Br. 17.
However, Patent Owner’s above-quoted argument overlooks
Tsumura’s description of a different system, which employs two-way
communication and transmits game information from the host to one or
more terminals in response to requests from the terminals. Such a system is
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depicted in Figures 11–13, which are block diagrams illustrating a system
that permits more than one player to take part in the same game. Tsumura
12:62–64.
Tsumura’s Figure 11 is reproduced below.

Figure 11 shows a plurality of terminals T1-Tn that are able to access
the host computer 112 by way of a communications network 111. Id. at
12:64–13:3. Communications network 111 provides two-way
communication between the host and each terminal device. Id. at 13:7–15.
Tsumura’s Figure 12 is reproduced below.
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Figure 12 is block diagram of the internal configuration of the host
computer. Id. at 4:3–4.
Tsumura’s Figure 13 is reproduced below.

Figure 13 is a block diagram of the internal configuration of each terminal
device. Id. at 4:5–6.
A game begins as follows:
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The player first accesses the host computer 112 from his game
terminal T1 and requests permission to participate in a
particular game. The host computer 112 then reads the game
data out of the database 121, creates the addresses required for
said game in the register 122 and secures enough space to
register the number of people needed to play the game.
Id. at 13:45–51. “In order to facilitate the entry of a new player using a
different terminal Tx, the database 121 will hold only the game program and
initial data. Play data accumulated during the course of the game will be
stored in a separate memory means 125.” Id. at 13:61–65.
In the case of a two-player game, the user of terminal T1 is notified to
begin play following registration of a second terminal T2. Id. at 14:10–14.
Next:
The player using terminal T1 can now carry on playing the
game until he reaches the first point at which another player’s
contribution is required. Once it has been confirmed at terminal
T1 that this point has definitely been reached, the appropriate
program can then be executed to suspend the game and the
participation of terminal T1 until further notice. Next, the host
computer 112 will establish contact with the second terminal T2
and issue a message to notify the player at said second terminal
T2 that the first player (terminal T1 in the present embodiment)
has completed his part of the game for the time being.
Id. at 14:20–30. As correctly noted by Requesters, “[w]hen a second player
is notified that the first player has completed his part of the game, the host
computer downloads the game data (including map data) to the second
player’s device.” Req. Resp’t Br. 13. Specifically:
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The player using the second terminal T2 . . . will access the host
computer 112 and enter his identification number, after which
the host computer 112 will download the necessary game
program and data from its memory means 125 and the game
will be reproduced on the basis of the instructions and other
data input by the player using terminal T1. The player using
terminal T2 can now continue to play the game . . . .
Tsumura 14:30–39 (emphasis added).
The game program and data are downloaded and transmitted in
response to each request for a resumption of play:
Although it would save transmission time to store game
program data in the terminals T and thereby dispense with the
need for a player to download the program afresh each time he
or she wishes to resume the game, this approach would be
accompanied by a risk of unauthorized copying of the program
data and, for this reason, the present embodiment of the
invention calls for the downloading of program data afresh each
time the game is played.
Id. at 15:17–25. Therefore, transmission occurs in response to requests from
the game terminals.
Therefore, we sustain the rejection of claims 1 and 5 for obviousness
over Bush in view of Tsumura.

G. Bush in View of Stokey (Claim 2) (Ground BY)
The rejection of claim 2 for obviousness over Bush in view of Stokey
presumes that Bush anticipates parent claim 1, which we have determined
above is not the case.
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For this reason, we do not sustain the rejection of claim 2 for
obviousness over Bush in view of Stokey.

IV. CONCLUSIONS REGARDING THE EXAMINER’S REJECTIONS
OF CLAIMS 1, 2, AND 5
A. Sustained Rejections
We have sustained the following rejections:
1. Claims 1 and 5 under 35 U.S.C. § 102 for anticipation by Matsuda
(Ground AW).
2. Claims 1 and 5 under 35 U.S.C. § 103(a) for obviousness based on
Matsuda in view of Tsumura (Ground BE).
3. Claims 1 and 5 under 35 U.S.C. § 103(a) for obviousness based on
Rhoades in view of Bush (Ground BS).
4. Claims 1 and 5 under 35 U.S.C. § 103(a) for obviousness based on
Rhoades in view of Bush and Tsumura (Ground BW).
5. Claims 1 and 5 under 35 U.S.C. § 103(a) for obviousness based on
Bush in view of Tsumura (Ground CB).
6. Claim 2 under 35 U.S.C. § 103(a) for obviousness based on
Matsuda in view of Stokey (Claim 2) (Grounds AH, AZ).
7. Claim 2 under 35 U.S.C. § 103(a) for obviousness based on
Rhoades in view of Bush and Stokey (Ground BT).

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B. Rejections Not Sustained
We have not sustained the following rejections:
1. Claims 1 and 5 under 35 U.S.C. § 102 for anticipation by Bush
(Ground AX).
2. Claim 2 under 35 U.S.C. § 103(a) for obviousness based on Bush
in view of Stokey (Ground BY).

V. THE NONADOPTED REJECTIONS OF CLAIMS 1, 2, AND 5
ARGUED IN REQUESTERS’ APPEAL
A. Anticipation by Roskowski (Claims 1 and 5) (Ground AY)
For reasons like those in the ’9132 Appeal Decision (at pages 54–56)
for finding that claims 1 and 5 of the ’021 patent are entitled to the benefit of
the April 25, 1994, filing date of the ’103 patent, we find that claims 1 and 5
of the ’508 patent also are entitled to that filing date.
Therefore, we sustain the Examiner’s decision not to enter the
proposed rejection of claims 1 and 5 for anticipation by Roskowski.

B. Roskowski in View of Stokey (Claim 2) (Ground CC)
For the above reasons, we also sustain the Examiner’s decision not to
reject claim 2 for obviousness over Roskowski in view of Stokey.

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VI. CONCLUSIONS REGARDING THE PROPOSED REJECTIONS
ARGUED IN REQUESTERS’ APPEAL
We have sustained the Examiner’s decision not to enter either of the
following proposed rejections:
1. Claims 1 and 5 under 35 U.S.C. § 102 for anticipation by
Roskowski.
2. Claim 2 under 35 U.S.C. § 103(a) for obviousness based on
Roskowski in view of Stokey.

VII. DECISION
The Examiner’s decision that claims 1, 2, and 5 are unpatentable over
the prior art is affirmed.
The Examiner’s decision not to enter proposed rejections of claims 1,
2, and 5 is affirmed.
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

msc
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For Patent Owner:

DAVIS & BUJOLD, P.L.L.C
112 PLEASANT STREET
CONCORD, NH 03301

For Third Party Requesters:

SHOOK, HARDY & BACON LLP
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD.
KANSAS CITY, MO 64108-2613