95001345 (P.T.A.B. Mar. 31, 2014)

Ex Parte 7568964 et al

Patent Trial and Appeal BoardMar 31, 2014

95001345 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,345 04/20/2010 7568964 GANZ-36219US26 6339 26206 7590 04/01/2014 Pearne & Gordon LLP 1801 East 9th Street Suite 1200 Cleveland, OH 44114-3108 EXAMINER KISS, ERIC B ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/01/2014 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 ____________ HASBRO, INC. Requester v. GANZ Patent Owner ____________ Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 Technology Center 3900 ____________ Before JAMES T. MOORE, STEPHEN C. SIU, and DENISE M. POTHIER, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION Examiner’s Determination under 37 C.F.R. § 41.77(d) 37 C.F.R. § 41.77(f) Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 2 In an earlier Decision, Appeal No. 2012-007055, mailed June 12, 2012 (“Decision”), the Board reversed the Examiner’s decision favorable to the patentability of claims 1-20 of U.S. Patent No. 7,568,964 B2 (the “’964 patent”). Decision 9-11. In particular, we reversed the Examiner’s decision not to reject claims 1-20 over prior art. Our reversal of the Examiner’s decision in connection with the prior art rejections of claims 1-20 was designated new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). Patent Owner elected to reopen prosecution and submitted claim amendments affecting claims 1, 13, and 17. 1,2 Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s initial request to reopen prosecution. 3 In accordance with 37 C.F.R. § 41.77(d), the Examiner determines that “the request to reopen prosecution does not overcome the new grounds of rejection . . . .” 4 The Examiner also finds that “[p]roposed claims 17-20 . . . fail to comply with the written description requirement” (Examiner’s Determination 5) and that claim 17 “enlarges the 1 “Request to Reopen Prosecution After Decision By the BPAI,” dated July 12, 2012 (“Patent Owner’s initial request to reopen prosecution” or “PO Initial Request”) and “Renewed Request to Reopen Prosecution After Decision by the BPAI,” dated November 21, 2012 (“PO Request” or “PO Req.”). 2 Patent Owner also submitted new claims 21-31, however, new claims 21- 31 were not entered and were not considered. See Order Remanding Inter Partes Reexamination Under 37 C.F.R. 41.77(d) to the Examiner, dated March 19, 2013 (“Order”) at 2. 3 See Requester’s “Third Party Requester’s Rule 41.77(c) Reply to Patent Owner’s Request to Reopen Prosecution,” filed August 9, 2012 (“3PR Resp.”). 4 See “Determination under 37 CFR § 41.77(d)” mailed May 1, 2013 (“Examiner’s Determination” or “Ex’r Determ.”), p. 13. Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 3 scope” of the patent claims (Examiner’s Determination 7). Hence, the Examiner rejects the claims as follows: 1) Claims 1-6, 8, 9, and 11-20 under 35 U.S.C. § 103(a) as unpatentable over Kirby and Sims Booklet; 2) Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Kirby, Sims Booklet, and Sims News; 3) Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Kirby, Sims Booklet, and Weston; 4) Claim 17-20 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement; and 5) Claim 17 for enlarging the scope of the claims of the patent. Pursuant to 37 C.F.R. § 41.77(e), Patent Owner submitted a response to the Examiner’s Determination. 5 Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we may reconsider the matter and issue a new decision. Claim 1 recites interacting the virtual replica of the toy with at least one of the one or more virtual furnishings. Claim 1 also recited that the “interacting is presented on said website via an animated display of said virtual replica of the toy exhibiting a response to said interacting.” In the Decision, we stated that a broad but reasonable construction of the term “interact” includes “any ‘act’ performed between two (or more) entities” and that Kirby discloses this feature (Decision 4). In response, Patent Owner amended claim 1 (and submitted similar amendments to claim 17) to recite “during” the interacting, “presenting an 5 “Patent Owner’s Response to Examiner’s Determination Under 37 C.F.R. § 41.77(d),” filed June 3, 2013 (“PO Resp. to Exr’s Determination”). Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 4 animation for display” on the website that depicts the “virtual replica of the toy exhibiting an animated response.” Patent Owner argues that claim 1 now recites that a response “occurs ‘during’ the interaction” and that Kirby discloses only “alleged improved performance . . . after the parts are installed and the simulated car is on the racetrack” (PO Request 12). As an initial matter, we note that claim 1, as amended, does not recite or require that the “interaction” requires “improved performance” to occur before parts are installed and a simulated car is on a racetrack. Rather, claim 1, as amended, merely recites “interacting” and that “during” the “interacting,” “presenting an animation for display” that depicts the virtual replica of toy “exhibiting an animated response.” As we explained in the Decision, Kirby discloses an “interaction” (an “act” performed between two or more entities – e.g., a robotic arm installing a part on a virtual vehicle or “a ‘part’ selected for installation onto a virtual toy vehicle and the virtual toy vehicle itself”). Decision 4-5. The installation of parts occurs “during” the interaction of the robotic arm and virtual vehicle of Kirby. While Patent Owner appears to argue that Kirby fails to disclose “improved performance” of a virtual car “before” parts are installed (a feature not recited in claim 1), Patent Owner does not demonstrate persuasively that Kirby also fails to disclose the feature recited in claim 1 of presenting a display that depicts a “virtual replica” “exhibiting an animated response” (e.g., depicting the installed part or installation of the part) “during” an interaction (between two or more entities – e.g., the “interaction” between the robotic arm and the virtual vehicle). Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 5 Patent Owner further cites various passages from the Decision (PO Req. 12) and argues that “[t]he decision has conflated the claim terms ‘interaction’ and ‘response’” (PO Req. 13). We disagree with Patent Owner for at least the reasons set forth above and in the Decision. Patent Owner also argues that “the platform [of Kirby] rotates in response to the user command, and not ‘an animated response to said interacting that simulates a real-world activity’” (PO Req. 13). Patent Owner does not provide a sufficient showing of a difference between, for example, a car rotating on a platform or sitting on a rotating platform and a simulation of a “real-world activity.” In any event, we need not consider whether the rotating “platform” or a car “sitting” on a rotating platform of Kirby (see e.g., Decision 6-7; Kirby, Fig. 5) “simulates a real-world activity” or not because Patent Owner does not demonstrate or even assert that the depiction of the installation of parts by a robotic arm (see above and the Decision 6-7) does not “simulate a real-world activity.” Patent Owner argues that claim 1 recites “one or more virtual furnishings [is/are] moved from [an initial location] to a new virtual location within the . . . room” and that Kirby only recites “that the platform [is] rotating” (PO Req. 13). Hence, Patent Owner argues that Kirby only discloses a rotating platform while claim 1 requires moving a virtual furnishing from one location to another location within a room. However Patent Owner does not sufficiently demonstrate a difference between a car (and associated parts) rotating on a platform and moving “furnishings” as recited in claim 1. In any event, we need not consider whether a rotating platform constitutes moving a furnishing from one location to another Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 6 because Patent Owner does not demonstrate sufficiently or even assert that the robotic arm of Kirby does not move virtual “furnishings” from one location to another, as recited in claim 1. 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 Kirby with Sims Booklet (PO Req. 15-18; PO Resp. to Exr’s Determination 2-5). Patent Owner’s argument that it would not have been obvious to one of ordinary skill in the art to have combined teachings of the cited references do not pertain to the claim “amendments” and do not themselves constitute “new evidence” of, or related to, “the claims so rejected” under 37 C.F.R. § 41.77(b). Therefore, we need not consider these arguments. In any event, we previously addressed this argument in the Decision (Decision 7-8) and Patent Owner does not raise any specific points that persuade us that the Examiner erred in finding that it would have been obvious to one of ordinary skill in the art to have combined the teachings of the cited prior art references. Patent Owner does not provide additional arguments in support of independent claims 13 and 17 or dependent claims 2-12, 14-16, and 18-20 and also does not provide arguments in opposition of the Examiner’s rejection of claim 17-20 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement or the Examiner’s rejection of claim 17 for enlarging the scope of the claims of the patent. CONCLUSION Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 7 We affirm the Examiner’s rejection of claims 1-6, 8, 9, and 11-20 under 35 U.S.C. § 103(a) as unpatentable over Kirby and Sims Booklet; claim 7 under 35 U.S.C. § 103(a) as unpatentable over Kirby, Sims Booklet, and Sims News; claim 10 under 35 U.S.C. § 103(a) as unpatentable over Kirby, Sims Booklet, and Weston; claims 17-20 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement; and claim 17 for enlarging the scope of the claims of the patent. 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 Appeal 2014-001849 Reexamination Control 95/001,345 Patent 7,568,964 B2 8 ack Patent Owner PEARNE & GORDON LLP 1801 East 9th Street Suite 1200 Cleveland, OH 44114-3108 Third Party Requester Kenneth H. Ohriner PERKINS COIE LLP P.O. Box 1208 Seattle, WA 98111-1208