Ex Parte 6702585 et al

Patent Trial and Appeal Board

Jun 26, 2015

95001236 (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.
95/001,236 09/21/2009 6702585 SCEA.146736 6269
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 2014-009134
Reexamination 95/001,236 and 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 APPEAL
Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 B2

2
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1, 2, 4-8, 10, and 13-15 over various references.
1
PO
App. Br. 5. Requester appeals the Examiner’s decision not to adopt the
rejections of claims 1, 2, 4, 5, 7, 8, 10, and 13-15 over various references.
3PR App. Br. 10-11.
2
Claims 17-38 are not subject to appeal for reasons set
forth below. We have jurisdiction under 35 U.S.C. §§ 134 and 315.

STATEMENT OF THE CASE
This proceeding arose from a September 21, 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 6,702,585 B2, titled “Interactive Communication System for
Communicating Video Game and Karaoke Software” and issued to Takeya
Okamoto, on March 9, 2004 (“the ’585 patent”) and a July 10, 2009 request
for an ex parte reexamination of claims of the ’585 patent. The proceedings
were subsequently merged pursuant to the Decision, Sua Sponte, to Merge
Reexamination Proceedings, dated April 14, 2010.
The ’585 patent describes an interactive communication system.
Spec. 1:19.

1
Patent Owner Appeal Brief, dated December 23, 2013 (“PO App. Br.”).
2
Third Party Requestors’ Cross-Appeal Brief, dated December 17, 2013
(“3PR App. Br.”).
Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 B2

3
Claim 1 (unamended) reads as follows:

1. A software distributing system comprising a personal
communicator for bi-directional communication and a distribution
center, the system transmitting game information stored in a game
software database provided in the distribution center to the personal
communicator which requested the game information via
communication lines, storing the game information via
communication lines, storing the game information in a memory
provided in the personal communicator, and enabling game play in
accordance with the game information stored in the memory, the
distribution center comprising:
a mechanism for transmitting the game information at the
request of the personal communicator to the personal communicator;
and
a mechanism for charging a use fee on the use of the
transmitted game information in the personal communicator and for
direct debit against an account in a banking institution; and
the personal communicator transmits its ID number and a
desired game number as a request data to the distribution center.

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

ISSUE

Did the Examiner err in rejecting claims 1, 2, 4-8, 10, and 13-15?

Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 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 ’585 Patent has expired. Thus,
pursuant to 37 C.F.R. § 1.530(j), new claims and proposed amendments to
any of original claims 1, 2, 4-8, 10, and 13-15 will not be incorporated into
the patent upon issuance of a reexamination certificate, and the present
appeal will be on the basis of the original and unamended patent claims
only.
Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 B2

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Obviousness over Matsuda and Tashiro (claims 1, 2, 6, 8, 10, 13, and 14)
Obviousness over Matsuda, Tashiro, and Suzuki (claims 4, 5, and 7)

The Examiner rejects claims 1, 2, 6, 8, 10, 13, and 14 as unpatentable
over Matsuda and Tashiro and claims 4, 5, and 7 as unpatentable over
Matsuda, Tashiro, and Suzuki. RAN 10, 13, 14. Patent Owner argues that
Tashiro and Matsuda fail to disclose or suggest “transmitting the game
information to at least another terminal device to facilitate interactive
communication between the at least two communication terminal devices
regarding the game information.” PO App. Br. 7-8. As previously
discussed, the proposed amendments to any of claims 1, 2, 4-8, 10, or 13-15
are not entered in view of the expiration of the ’585 patent. Original
(unamended) claims 1, 2, 4-8, 10, and 13-15 do not recite the disputed
limitation. For at least this reason, we are not persuaded by Patent Owner’s
argument.
Patent Owner argues that Tashiro fails to disclose “game
information.” PO App. Br. 8-9. However, Patent Owner does not assert or
demonstrate sufficiently that the combination of Matsuda and Tashiro also
fails to disclose or suggest “game information.” For example, Matsuda
discloses “various kinds of information data including game information.”
Matsuda 5. Patent Owner does not demonstrate a meaningful difference
between the “game information” of Matsuda and the “game information,” as
recited in claim 1, for example.
Patent Owner also argues that Matsuda and Tashiro fail to disclose or
suggest “displays the number of people who can participate in the game.”
Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 B2

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PO App. Br. 12. None of original (unamended) claims 1, 2, 4-8, 10, 13, or
14 recite “display a number of players who can participate in the game.” As
previously discussed, the proposed amendments to claims 1, 2, 4-8, 10, 13,
and 14 are not entered in view of the expiration of the ’585 patent. 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. 10. 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
devices that use game information (Tashiro) would have resulted in anything
more than the mere predictable result of users playing games on game
devices. Such a combination of known elements performing their known
functions to result in a 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. The Examiner
did not err in rejecting claims 1, 2, 4-8, 10, 13, and 14 as obvious over
Matsuda and Tashiro.

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

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Obviousness over Matsuda and Sanbe (claim 15)

The Examiner rejects claim 15 as unpatentable over Matsuda and
Sanbe. RAN 15-16. Patent Owner argues that Matsuda fails to disclose
“storing karaoke information and movie data in different databases and
making them both available through the same distribution system,” “storing
actual movie data,” or “storing any information of any kind in separate
databases.” PO App. Br. 15. As previously discussed, the proposed
amendments to claim 15 are not entered in view of the expiration of the ’585
patent. Original (unamended) claim 15 does not recite the disputed
limitations. For at least this reason, we are not persuaded by Patent Owner’s
argument.
Patent Owner also argues that Matsuda fails to disclose “karaoke
information.” PO App. Br. 15. The Examiner rejects claim 15 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 argues that “there appears to be no reason to combine
the two references [Matsuda and Sanbe]” because, according to Patent
Owner, Matsuda discloses “transmitting information to a remote location”
while Sanbe discloses “data is centrally stored on a ‘large hard disk storage
device’” and “not stored . . . on a remote . . . device.” PO App. Br. 15.
However, even if Matsuda discloses transmitting data to a remote location
and Sanbe discloses storing data centrally in a storage device, as Patent
Owner contends, we are not persuaded that Patent Owner’s arguments are
Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 B2

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sufficient to refute the Examiner’s prima facie showing of obviousness of
claim 15, at least because Patent Owner does not demonstrate adequately
that the combination of the known feature of transmitting information to a
remote location and the known feature of storing data centrally in a storage
device 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.
Affirmance of the rejections for claims 1, 2, 4-8, 10, and 13-15 based
on 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 rejections or non-adoption of
rejections of those claims over other references or combinations of
references.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4-8, 10, and 13-15.
DECISION
We affirm the Examiner’s rejection of claims 1, 2, 6, 8, 10, 13, and 14
under 35 U.S.C. § 103(a) as unpatentable over Matsuda and Tashiro; claims
4, 5, and 7 under 35 U.S.C. § 103(a) as unpatentable over Matsuda, Tashiro,
and Suzuki; and claim 15 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
Appeal 2014-009134
Reexamination Control 95/001,236 and 90/009,522
Patent 6,702,585 B2

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