Ex Parte 6,702,585 et al

Patent Trial and Appeal Board

Nov 18, 2015

90009522 (P.T.A.B. Nov. 18, 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.
90/009,522 08/21/2009 6,702,585 7908
20210 7590 11/18/2015
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
11/18/2015 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
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.
95/001,236 09/21/2009 6702585 SCEA.146736 6269
20210 7590 11/18/2015
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
11/18/2015 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 2014-009134
Reexamination Control 95/001,236 & 90/009,522 (merged)
Patent 6,702,585 B2
Technology Center 3900
____________

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

SIU, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2014-009134
Reexamination Control 95/001,236 & 90/009,522
Patent 6,702,585 B2

2
Requester submits under 37 C.F.R. § 41.79(b) a Request for
Rehearing (“Req. Reh’g” or “Request”) from the Opinion of the Patent Trial
and Appeal Board, dated June 26, 2015 (“Decision”).
In the Decision, we affirmed the Examiner’s rejection of claim 6 as
unpatentable over Matsuda
1
and Tashiro.
2
Decision 8. “The request for
rehearing must state with particularity the points believed to have been
misapprehended or overlooked in rendering the Board’s opinion reflecting
its decision.” 37 C.F.R. § 41.79(b)(1). As Requester points out, we
overlooked the fact that original claim 6 recites that “the personal
communicator displays the number of people who can participate in the
game.” Req. Reh’g. 2 (citing Decision 6).
Patent Owner previously argued that Tashiro discloses “display[ing]
the number of people who are participating in the game” but fails to disclose
or suggest “display[ing] the number of people who can participate in the
game,” as recited in claim 6. PO App. Br. 1213.
3

Requester previously argued that Tashiro discloses a “system that is
adapted to play a car race by a maximum number of eight players and
comprises eight game machines . . . each of which has a display . . . imaging
one . . . car as well as the other seven cars.” 3PR Resp. Br. 15
4
(citing
Tashiro 6:15, Figs. 7, 8) (emphasis omitted). In other words, Tashiro
discloses a maximum number of eight players (i.e., that the number of

1
JP H03-149693, published on June 26, 1991 (“Matsuda”).
2
US Patent No. 4,998,199, issued on March 5, 1991 (“Tashiro”).
3
Patent Owner Appeal Brief, filed on December 23, 2013 (“PO App. Br.”).
4
Respondents’ Brief, filed on January 17, 2014 (“3PR Resp. Br.”).
Appeal 2014-009134
Reexamination Control 95/001,236 & 90/009,522
Patent 6,702,585 B2

3
people who can participate in the game is eight or that eight players “can
participate” in the game) and displaying images representing each of the
eight players who can participate (i.e., displaying eight players – “one . . .
car as well as the other seven cars.”). We agree with Requester that Tashiro
discloses displaying the number of people who can participate in the game –
i.e., displaying eight players (or the maximum number of players), each of
whom “can participate in the game.” Patent Owner does not demonstrate a
sufficient difference between displaying the eight players (in one
embodiment) who “can” participate in the game and displaying the number
of people who can participate in a game, as recited in claim 6. In both cases,
the number of people who “can” participate is displayed.
Requester also previously argued that Tashiro discloses displaying “a
plurality of objects to be operated by the [three] respective players” and that
the “players” displayed “can play the same game together.” 3PR Resp. Br.
15 (citing Tashiro 1:3133, Fig. 17). In other words, Tashiro discloses an
embodiment in which the number of players who “can” participate is
displayed (Fig. 17). Patent Owner does not demonstrate a sufficient
difference between displaying the three players (in one embodiment) who
“can” participate in the game and displaying the number of people who can
participate in a game, as recited in claim 6.
In any event, even assuming that Tashiro fails to disclose displaying a
number of people who “can participate” in a game, as Patent Owner
contends, we disagree with Patent Owner that it would not have been
obvious to one of ordinary skill in the art to have displayed the number of
people who can participate in a game, as recited in claim 6, for at least the
Appeal 2014-009134
Reexamination Control 95/001,236 & 90/009,522
Patent 6,702,585 B2

4
additional reasons provided by Requester. See Req. Reh’g. 2. As Requester
states, displaying the number of people who can participate in a game
requires no more than common sense to conclude that a
potential player would want to know how many other players
can participate in a multiplayer game (e.g., a racing game) prior
to deciding whether to play the game. See Perfect Web [Tech.,
Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)]
(“[W]hile an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it
also may include recourse to logic, judgement, and common
sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert
opinion.”). For this reason, it would have been obvious, when
Matsuda is modified in view of Tashiro to distribute
multiplayer games, to have the terminal blocks display the
number of people who can participate in the game.
Req. Reh’g. 2.
We have considered Patent Owner’s arguments with respect to this
issue (“Patent Owner’s Response to Request for Rehearing,” filed on August
27, 2015, 34
5
) but find the arguments insufficient to refute the prima facie
showing of obviousness or to demonstrate that Tashiro fails to disclose the
disputed claim limitation. Hence, we affirm the Examiner’s rejection of
claim 6 as unpatentable over Matsuda and Tashiro for at least the above
stated reasons. The Decision is otherwise unchanged.
Requester’s request for rehearing is granted to the extent that we
consider the above discussed issue regarding claim 6, but is denied with

5
Patent Owner’s Response to Request for Rehearing” (filed on August 27,
2015) is not paginated. Therefore, the reference to a page number refers to a
page of that document as if the pages were numbered consecutively starting
with the first page.
Appeal 2014-009134
Reexamination Control 95/001,236 & 90/009,522
Patent 6,702,585 B2

5
respect to making any other changes to the decision to affirm the Examiner’s
rejection.

GRANTED-IN-PART

FOR PATENT OWNER:

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

FOR THIRD-PARTY REQUESTER

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