95002347 (P.T.A.B. May. 27, 2015)

Ex Parte 7628716 et al

Patent Trial and Appeal BoardMay 27, 2015

95002347 (P.T.A.B. May. 27, 2015)

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. 95/002,347 09/14/2012 7628716 239623.000002 9376 6980 7590 05/27/2015 TROUTMAN SANDERS LLP 600 Peachtree Street Suite 5200 Atlanta, GA 30308 EXAMINER SAADAT, CAMERON ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/27/2015 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 ____________ MLB ADVANCED MEDIA L.P. Requester and Appellant v. BASEBALL QUICK LLC Patent Owner and Respondent ____________ Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and DAVID M. KOHUT, Administrative Patent Judges. KOHUT, Administrative Patent Judge. Opinion concurring filed by JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 2 Requester, MLB Advanced Media L.P., appeals under U.S.C. §§ 134 and 315 (2002) the Examiner’s decision to withdraw the Examiner’s adoption of Requester’s rejections of claims 15 under certain grounds, as discussed below. An oral hearing was conducted with representatives for Patent Owner and Requester on May 13, 2015. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). We REVERSE. STATEMENT OF THE CASE This proceeding arose from a request by MLB Advanced Media L.P. for an inter parte reexamination (95/002,347) of U.S. Patent 7,628,716 B2, entitled “Method of Recording and Playing Baseball Game Showing Each Batter’s Last Pitch,” and issued to Mockry et al. on December 8, 2009 (the “’716 patent”). The ’716 patent describes a method for recording and editing a baseball game. Claim 1, currently under appeal and not amended during reexamination, reads as follows: 1. A method of providing a subscription for viewing a recorded baseball game in which players from each team appear at bat, and attempt to place a pitched baseball into play and to reach base safely; with players failing to reach base safely being out and players on base attempting unsuccessfully to advance to another base being out; the method comprising: (1) recording each appearance-at-bat for every player and game action resulting from an appearance-at-bat to produce a game recording; Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 3 (2) editing the game recording of each appearance-at- bat to produce an edited recording by deleting substantially all game action other than (i) game action from a final pitch thrown to each player, (ii) successful attempts of runners on base to advance to another base not associated with the game action resulting from the final pitch and (iii) unsuccessful attempts of the runners on base to advance to another base resulting in and [sic] out not associated with the game action resulting from the final pitch; (3) obtaining subscribers for viewing the edited recording and (4) playing or broadcasting the edited recording as a condensed recorded game for viewing by the subscribers. STATEMENT OF THE REJECTIONS Requester proposes rejections of the claims over the prior art references listed on pages vvi of the Request for Inter Partes Reexamination. However, the proposed rejection of the claims over the following prior art references is dispositive for this appeal: Paul Dickson, The Joy of Keeping Score: How Scoring the Game has Influenced and Enhanced the History of Baseball (Paul Dickson, Walker Publishing Company, Inc. 1996). Burke WO 99/03275 A1 Jan. 21, 1999 Requester appeals the Examiner’s withdrawal of the adoption of all of the Requester’s proposed rejections as indicated on pages 45 of the Right of Appeal Notice. In this appeal, we specifically address the Examiner’s Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 4 withdrawal of the adoption of Requester’s rejection of the following, as it is dispositive of the appeal: Claims 15 under 35 U.S.C. § 103(a) as obvious over the combination of Burke and Dickson. ISSUE Was the Examiner’s withdrawal of Requester’s proposed rejection of claims 15 under 35 U.S.C. § 103(a) as obvious over the combination of Burke and Dickson in error? ANALYSIS Combination of Burke and Dickson Requester contends that Burke teaches recording a sporting event and editing the event to only include specific program elements. Inter Partes Reexam Req. 22; 3PR App. Br. 22. Additionally, Requester contends that Dickson teaches condensing a baseball game by tracking the determinative outcome of each batter and any subsequent progress of each player. Inter Partes Reexam Req. 24; 3PR App. Br. 23. Thus, Requester contends that the combination of Burke and Dickson teaches editing a game recording to include game action resulting from every final pitch, and successful and unsuccessful attempts to advance a base not associated with the final pitch, as required by the claims. Inter Partes Reexam Req. 2425; 3PR App. Br. 23. The Examiner originally agreed with Requester and adopted Requester’s proposed rejection in the Action Closing Prosecution, mailed August 5, 2013. However, on pages 1214 of the Right of Appeal Notice, Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 5 the Examiner withdrew Requester’s proposed rejection and agreed with the Patent Owner’s arguments. Patent Owner acknowledges that Burke teaches editing a sporting event to include only outcome determinative criteria, but fails to mention what is meant by outcome determinative criteria. PO Resp. Br. 8. Additionally, Patent Owner argues that Dickson is simply a scorecard that indicates the final result instead of what happened to get to that result, and any suggestion that one of ordinary skill in the art would look to Dickson to select the three claimed criteria out of every individual aspect of a baseball game is hindsight. PO Resp. Br. 910. The Examiner agreed with Patent Owner that the combination would only teach that it was known to record the end result of the game action and not the game action associated with the result, as required by the claims, thereby omitting game action that was substantial. RAN 1213. We disagree with the Examiner and Patent Owner. There is no dispute that Burke teaches editing a sporting event to include particular elements. Inter Partes Reexam Req. 22; see also Burke, pp. 2 and 12. Additionally, there is no dispute that Dickson teaches how to score a baseball game. Inter Partes Reexam Req. 24. Instead, the issue is whether one of ordinary skill in the art, would edit the sporting event, taught by Burke, to only include particular information, as taught by Dickson. Requester argues that such an edited sporting event would have been obvious (3PR App. Br. 2223; 3PR Reb. Br. 910), and we agree with Requester. Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 6 Patent Owner’s arguments are not persuasive as they amount to attacking the references individually. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citation omitted). Requester contends that Burke teaches showing important game action, not just the result reflected in a scorecard. 3PR App. Br. 22. Additionally, Requester contends that Dickson teaches the information that one of ordinary skill in the art of baseball would find relevant in a game. 3PR App. Br. 23. Thus, Requester argues that it is the combination of these teachings that would lead one to edit a game to include only action associated with every final pitch and action regarding successful and unsuccessful attempts at runner advancement, as required by the claim. 3PR App. Br. 23. We find this analysis to be reasonable especially given that the relevant information involved in a baseball game is finite, and it would have been obvious to one of ordinary skill in the art to combine the relevant information in an edited recording as claimed. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). For all of the reasons stated supra, we disagree with the Examiner’s decision to withdraw the adoption of Requester’s proposed rejections of claims 15 over the combination of Burke and Dickson. Claims 15  Other Arguments and Proposed Rejections Our conclusions above address the patentability of all of the claims on appeal and, thus, render it unnecessary to reach the propriety of the Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 7 Examiner’s decision to not adopt the proposed rejections of the same claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the other proposed and non-adopted rejections and arguments identified in the Right of Appeal Notice on pages 611 and 1419. CONCLUSION The Examiner’s withdrawal of Requester’s proposed rejection of claims 15 under 35 U.S.C. § 103(a) as obvious over the combination of Burke and Dickson was in error. DECISION We reverse the Examiner’s decision not to adopt the proposed rejection of claims 15 under 35 U.S.C. § 103(a) as unpatentable over the combination of Burke and Dickson. The decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). Section 41.77(b) provides that “a new ground of rejection . . . shall not be considered final for judicial review.” That section also provides that 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 proceeding 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. Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 8 (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 9, March 2014). Requests for 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. Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 9 REVERSED 37 C.F.R. § 41.77(b) Patent Owner: Troutman Sanders LLP 405 Lexington Avenue New York, NY 10174 Third Party Requester: Foley & Lardner LLP 3000 K Street, N.W., Suite 500 Washington, DC 20007-5109 Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 10 JEFFERY, Administrative Patent Judge, CONCURRING: I concur with the majority’s reversing the Examiner’s decision to not reject claims 1–5 as obvious over Burke and Dickson for the reasons indicated in the decision, but I write separately to emphasize what specific content must remain in an edited recording according to the terms of claim 1—a feature that is at the heart of this dispute. Claim 1 recites, in pertinent part, editing a game recording of each appearance-at-bat to produce an edited recording by deleting substantially all game action other than: (i) game action from a final pitch thrown to each player; (ii) successful attempts of runners on base to advance to another base not associated with the game action resulting from the final pitch; and (iii) unsuccessful attempts of the runners on base to advance to another base not associated with the game action resulting from the final pitch. I emphasize the term “and” here, for this term requires that all three enumerated game action elements remain after editing the recording—not just one or two of these elements. This construction was confirmed at the oral hearing, and, notably, excludes certain baseball games that lack elements (ii) and (iii), namely games without base runners. For example, claim 1 would not cover games where a team wins a game with a score of 1- 0 by one of its hitters hitting a solo home run, and its pitcher pitching a “perfect game” (i.e., no batter on the opposing team reaches a base).1 Nor 1 See MLB Miscellany: Rules, Regulations, and Statistics, at http://mlb.mlb.com/mlb/official_info/about_mlb/rules_regulations.jsp (“An official perfect game occurs when a pitcher (or pitchers) retires each batter Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 11 would claim 1 cover games with multiple hitters on a team each hitting solo home runs as the game’s only scores, and that team’s pitcher pitching a “perfect game” (e.g., two players each hitting solo home runs to yield a score of 2-0). Even for games with base runners, claim 1 would still exclude games lacking both successful and unsuccessful attempts to steal bases. Notably, this requirement that the edited recording have all three game action elements was articulated by the Examiner as a basis for not adopting the proposed rejection based on Burke and Wayner. In the RAN, the Examiner notes the following: [W]hile Wayner teaches condensing a baseball game by selecting significant moments in the game action, including action from final pitches to each player, it fails to disclose that the significant moments include successful and unsuccessful attempts of runners on base to advance to another base, not associated with the game action resulting from the final pitch (i.e., successful/unsuccessful attempts to steal a base). RAN 14 (emphasis added). The Examiner further explains that although Wayner condenses a baseball game by selecting significant moments that may be limited to the end of each player’s trip to the plate, Wayner does not teach or suggest including successful/unsuccessful attempts to steal a base as recited in elements (ii) and (iii) of claim 1. RAN 16. Although this discussion pertains to a proposed rejection that is not dispositive to the majority’s decision, it nonetheless underscores the Examiner’s interpreting claim 1 to require an edited recording with all three enumerated elements (i)–(iii). This construction is likewise consistent with on the opposing team during the entire course of a game, which consists of at least nine innings. In a perfect game, no batter reaches any base during the course of the game.”). Appeal 2015-001547 Reexamination Control No. 95/002,347 Patent 7,628,716 B2 12 the Examiner’s position articulated in connection with the proposed rejection over Burke and Dickson, for the Examiner concludes that Dickson “would not suggest to one of ordinary skill in the art to modify Burke in order to edit a baseball game to include only game action from a final pitch thrown to each player and successful/unsuccessful attempts to steal bases.” RAN 13 (emphasis added). Although I agree with the Examiner’s construing claim 1 to require an edited recording with all three enumerated elements, the collective teachings of Burke and Dickson would have nevertheless at least suggested this feature for the reasons indicated by the majority.