Ex Parte 7,618,303 et al

Patent Trials and Appeals Board

Feb 12, 2013

95001422 - (D) (P.T.A.B. Feb. 12, 2013)

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.
95/001,422 08/24/2010 7,618,303 GANZ-36219US27 4266
26206 7590 02/13/2013
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
02/13/2013 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 and Appellant

v.

GANZ
Patent Owner and Respondent
____________

Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
STEPHEN C. SIU Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

2
Third Party Requester/Appellant Hasbro, Inc. appeals under 35 U.S.C.
§§ 134(c) and 315(b) the Examiner’s decision not to reject claims 1, 5, 6, 8,
10, 19, 21, 22, and 24-27. We have jurisdiction under 35 U.S.C. §§ 134(c)
and 315(b).

STATEMENT OF THE CASE
This proceeding arose from a request by Hasbro, Inc. for an inter
partes reexamination of U.S. Patent 7,618,30 B2, titled “System and Method
for Toy Adoption Marketing,” and issued to Howard Ganz on
November 17, 2009 (the ‘303 patent).
The ‘303 patent describes toy adoption and marketing (col. 1, ll. 28-
29).

Claim 1 reads as follows:

1. A method that provides a virtual presentation comprising:
registering a first registration code for a first product on a website;
responsive to a successful registration of said first product on the
website, using a computer for displaying on said website, for viewing by a
user, a virtual replica of the first product, where said virtual replica
resembles said first product and does not resemble at least one other product
that is registered on said website;
associating said virtual replica with a control of said user responsive
to said successful registration, and controlling said virtual replica on said
website based on said registration;
based on said registration, also viewing at least one other virtual
replicas on said website that are not associated with said first registration
code and which are associated with a friend of said user;
using said computer for providing, for access by said user, a chat
function between said virtual replica and at least one said other replicas on
the website responsive to the successful registration, said chat function that
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

3
includes selecting from a displayed set, where the displayed set includes pre-
scripted phrases for communicating with said friend, said friend viewing one
of said other virtual replicas that are replicas of another product other than
the first product, that also exists in the virtual presentation, wherein
selections from the chat function are limited to containing selections from
the displayed set and are prohibited from containing content entered by said
user that is not in the displayed set; and
providing, for access by said user, additional content beyond said chat
function, for said first product when at least a second registration code is
registered on the website by said user who registered said first registration
code, wherein the additional content comprises access to additional
resources of the website beyond the resources provided by said registration
of said first registration code.

Appellant appeals the Examiner’s refusal to adopt the proposed
rejections of claims 1, 21, 22, and 24-27 under 35 U.S.C. § 103(a) as
unpatentable over U.S. Patent No. 6,910,186 B2 (“Kim”) and U.S. Patent
No. 6,519,771 B1 (“Zenith”) and claims 5, 6, 8, 10, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Kim, Zenith and Hattie Klotz, “Look Out,
Pokemon: Neopets are Taking Over,” The Ottawa Citizen, Feb. 7, 2000
(“TOC”).

ISSUE

Did the Examiner err in refusing to reject claims 1, 5, 6, 8, 10, 19, 21,
22, and 24-27?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

4
(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

Claims 1 and 24
Claim 1 recites providing additional content for the first product when
a second registration code is registered on the website by the user who
registered the first registration code. Claim 24 recites a similar feature.
The Examiner states that the combination of Kim and Zenith fails to
disclose or suggest this feature while Appellant argues that Kim discloses
this feature. We disagree with Appellant that Kim discloses this feature.
As Appellant points out, Kim discloses a user entering a password
corresponding to a doll (see, e.g., col. 18, ll. 21-23). The password “may be
generic . . . to allow a user to use any of the various . . . avatars” (col. 18,
ll. 26-27). Hence, upon entering the password, the user is provided with a
“virtual replica” of the first product (i.e., the “generic” Barbie® doll).
However, Appellant does not sufficiently demonstrate that Kim also
discloses registering a second registration code and providing additional
content for the first product responsive to the second registration code.
While Appellant states that Kim discloses a “specific password” (App.
Br. 9), and the resulting display of content that is different from the content
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

5
displayed upon entering the “generic password,” Appellant does not show
that the “specific password” (i.e., the “second registration code” as recited in
claim 1) is also “for the first product” (i.e., the “generic” Barbie® doll).
Instead, the “specific password” of Kim appears to be for a second product
(i.e., a “specific BARBIE® doll, such as the WARRIORS doll” – col. 18,
l. 29), which is a different product from the “first product” (the “generic”
Barbie® doll).
Claims 5, 6, 25, and 26 depend from claim 1. Appellant does not
argue that TOC provides the disputed claim feature (claims 5 and 6).
The Examiner did not err in refusing to reject claims 1, 5, 6, and 24-
26 as obvious over the combination of Kim and Zenith

Claims 21 and 22
The Examiner states that the combination of Kim and Zenith fails to
disclose or suggest “the virtual room ‘belonging to’ a virtual replica”
(RAN 6). Claim 21 recites a virtual room belonging to either the first or the
second virtual replica.
Appellant argues that Kim discloses an avatar representing a corporate
entity (i.e., McDonald’s Corporation) in a “virtual room” that is “owned and
controlled by McDonalds Corporation” (App. Br. 13; citing Kim, Fig. 6A)
and, hence, discloses or suggests a virtual room belonging to either a first or
second virtual replica. We agree with Appellant. Kim discloses that “the
controlling organization (e.g., McDonald’s Corporation) uses its chatroom
(FIG. 6A)” (col. 15, ll. 21-22). If the organization is using “its” chatroom,
one of ordinary skill in the art would have understood that the chatroom, or
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

6
“virtual room” belongs to the organization. Neither the Examiner nor the
Respondent provides arguments or evidence refuting this finding.
The Examiner erred in refusing to adopt the rejection of claims 21 and
22 as obvious over the combination of Kim and Zenith.

Claim 27
The Examiner states that the combination of Kim and Zenith fails to
disclose or suggest “the purpose of protecting children from inappropriate
language” (RAN 6). According to the Examiner, Zenith discloses “symbol
chat with preset icons” and Kim discloses “protecting children from
inappropriate language” by “ ‘blacklisting’ or ‘muting’ users that misbehave
by making obscene comments” (RAN 6) but “it would not have been
obvious to replace the existing mechanism of Kim” (RAN 7). Patent Owner
does not provide additional arguments with respect to this issue. We
disagree with the Examiner for at least the reasons set forth by Appellant
(App. Br. 15). For example, as Appellant states, protecting children from
inappropriate language “is purely a statement of intended result” and “is
entitled to no patentable weight” (App. Br. 15).
In addition, since Zenith discloses a chat message that “includes a
symbol chat with preset icons” as recited in claim 27 (as the Examiner
states), the utilization of a symbol chat with preset icons would have been
known to one of ordinary skill in the art. One of ordinary skill in the art
would also have known of the problems of inappropriate language and
processes involving protecting children from such inappropriate language as
the Examiner states that Kim discloses. Utilizing a known symbol chat with
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

7
present icons to manage the known issue of protecting children from
inappropriate language would have entailed no more than combining known
features in known ways to achieve the predictable result of protecting
children from inappropriate language (which, according to the Examiner,
Kim discloses).
The Examiner erred in refusing to reject claim 27.

Claims 8, 10, and 19
The Examiner states that it would have not been obvious to one of
ordinary skill in the art to have combined the teachings of TOC with those of
Kim and Zenith (RAN 7-8). We disagree with the Examiner for at least the
reasons set forth by Appellant (App. Br. 16-17). Respondent does not
provide additional arguments with respect to this issue.
As previously discussed, Kim discloses users who are represented by
a “virtual representation” (i.e., avatar) while participating in a chatroom via
a website while TOC also discloses a “virtual representation” of an entity on
a website. Since both Kim and TOC disclose known methods of
representing entities on websites by providing virtual representations
corresponding to the entities, the combination of the teachings of Kim and
TOC would have required no more than applying features of one known
system of providing virtual representations on a website (Kim) with another
known system of providing virtual representations on a website (TOC) to
achieve the predictable result of providing virtual representations on a
website (Kim or TOC). “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

8
predictable results.” KSR Int’l Co., 550 U.S. at 416. Such a combination
would have been obvious to one of ordinary skill in the art, particularly
given that “a person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR Int’l Co., 550 U.S. at 421.

CONCLUSION
The Examiner did not err in refusing to reject claims 1, 5, 6, and 24-
26, but erred in refusing to reject claims 8, 10, 19, 21, 22, and 27.
DECISION
The Examiner’s decision not to reject claims 1, 5, 6, and 24-26 under
35 U.S.C. § 103(a) as unpatentable over Kim and Zenith is affirmed. The
Examiner’s refusal to adopt the proposed rejections of claims 21, 22, and 27
under 35 U.S.C. § 103(a) as unpatentable over Kim and Zenith and claims 8,
10, and 19 under 35 U.S.C. § 103(a) as unpatentable over Kim, Zenith, and
TOC is reversed and denominated as a new ground of rejection pursuant to
our authority under 37 C.F.R. § 41.77(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

9
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

Any request to reopen prosecution before the examiner under
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

10
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

ak

Appeal 2013-001726
Reexamination Control 95/001,422
Patent 7,618,303 B2

11
Pearne & Gordon, LLP
1801 East 9
th
Street
Suite 1200
Cleveland, OH 44114-3108

Third Party Requester:

Perkins Coie, LLP
P.O. Box 1208
Seattle, WA 98111-1208