Ex Parte Conti et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10174258 (B.P.A.I. Jul. 26, 2012)

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.
10/174,258 06/18/2002 Aaron Conti 29052.10.0002 6704
23418 7590 07/26/2012
VEDDER PRICE P.C.
222 N. LASALLE STREET
CHICAGO, IL 60601
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
07/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AARON CONTI and DONALD CONTI
____________

Appeal 2009-015237
Application 10/174,258
Technology Center 2100
____________

Before THOMAS S. HAHN, DENISE M. POTHIER, and
GLENN J. PERRY, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 8-11, 13-17, 25, and 26. Claims 1-7, 12, and 18-24 have
been canceled. Br. 6; Office Communication dated Aug. 4, 2009. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

Invention
Appellants’ invention relates to an entertainment device that receives
environmental and preference data and responds accordingly. See Spec.
¶ 0001. Claim 8 is reproduced below with the key disputed limitations
emphasized:
8. An integrated interactive entertainment apparatus comprising:
a processing module disposed within the interactive entertainment
apparatus comprising:
a central processing unit; and
memory operably coupled to the central processing unit;
a datastore;
a plurality of sensors in sensory contact with an environment
integrally disposed on the interactive entertainment apparatus and
operatively coupled to the central processing unit; and
a mechanism integrally disposed on the interactive entertainment
apparatus for performing a conspicuous action for attracting the
attention of a user by the interactive entertainment apparatus and
operatively coupled to the central processing unit;
wherein the memory stores operational instructions to cause the
processing module to:
receive environmental data from the environment by way of at
least one of the plurality of sensors to create received data;
store the received data in a datastore to create stored data; and
perform the conspicuous action for attracting the attention of the
user in response to at least one of the received data and the stored
data.
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The Examiner relies on the following as evidence of unpatentability:
Tremblay US 6,088,017 July 11, 2000
Filo US 6,215,498 B1 Apr. 10, 2001
Smith US 6,358,187 B1 Mar. 19, 2002
The Ancient Art of War1 (1984), discussion available at
http://en.wikipedia.org/wiki/The_Ancient _Art _of_War [hereinafter “The
Ancient Art of War”].

The Rejection
The Examiner rejected claims 8-11, 13-17, 25, and 26 under 35
U.S.C. § 103(a) as unpatentable over Filo, Tremblay, and The Ancient Art of
War. Ans. 4-7.2,3

THE CONTENTIONS
Claims 8, 9, 14-16, and 25
Regarding representative claim 8, Appellants first argue that The
Ancient Art of War does not qualify as prior art because it is not enabled in
the virtual reality field (Br. 12-14) and that neither Filo nor Tremblay is
enabled for the entertainment industry (Br. 14-15). Appellants further assert
that Filo and Tremblay fail the analogous art test. See Br. 16-18, 24.
Appellants also argue that the Examiner has provided no reason to combine
the three cited references. Br. 18-23.

1 Two printed pages of this reference were provided, and these page numbers
correspond sequentially to the pages provided.
2 Throughout this opinion, we refer to the Appeal Brief filed January 18,
2008, and the Examiner’s Answer mailed April 18, 2008.
3 The heading’s rejection includes cancel claim 24 and omits claim 26.
Ans. 4. Claim 26 however is discussed in the rejection’s body. Ans. 7.
Claim 12 was also rejected. See Ans. 8. This claim has been canceled by
the Examiner in the Office Communication dated August 4, 2009.
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Regarding specific limitations found in claim 8, Appellants contend
that the Examiner incorrectly construes the claims to encompass virtual
reality technology rather than an apparatus operating in a normal
environment. Br. 14-16. Appellants also argue: (1) Filo does not teach
storing the received environmental data in a datastore (Br. 23); (2) Filo does
not teach performing a conspicuous action in response to the received data
because Filo has no output to the real environment, except a display within
goggles, and a virtual reality is opposite of conspicuous (see Br. 23-24); and
(3) Tremblay fails to teach sensors in sensory contact with an
“environment,” which given its plain meaning would not include an abstract,
virtual reality environment (id.).

ISSUES
(1) Is The Ancient Art of War prior art?
(2) Are Filo and Tremblay analogous art, such that they can be relied
upon as a basis for rejection?
(3) Giving the claim terms their broadest reasonable interpretations in
light of the Specification, has the Examiner erred in rejecting claim 8 under
§ 103 by finding that Filo, Tremblay, and The Ancient Art of War
collectively would have taught or suggested:
(a) sensors in sensory contact with an environment?
(b) a processing module to store environmental data received by a
sensor in a datastore?
(c) the processing module also to perform conspicuous action for
attracting the attention of the user in response to the received data?
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(4) Did the Examiner articulate reasoning to combine the teachings
of these references with some rational underpinning to justify the
Examiner’s obviousness conclusion?

FINDINGS OF FACT (FF)
(1) Appellants do not define “environment” in the disclosure. See
generally Specification.
(2) In the Background of the Invention section of the disclosure,
Appellants describe devices, such as personal digital assistants (PDAs), that
perform acts based on “input by the user, such as by pushing a button” or
perform acts when buttons are actuated.
(3) Appellants provide examples of “environmental data” to include
audio levels, temperature, orientation, and movement of a device in the
environment by way of an accelerometer. Spec. ¶ 0016.
(4) Appellants state an “action may be conspicuous (i.e., intended for
the user to sense), such as for example, physical motion, audible
communication such as solicitation, luminal communication, or printed
communication . . . .” Spec. ¶ 0018.

ANALYSIS
The Ancient Art of War is Prior Art
The Examiner has relied upon Wikipedia’s reference to a computer
game, entitled, “The Ancient Art of War” and its publication date by
Broderbund in 1984. See Ans. 5. Notably, Wikipedia disclaims the validity
of the website’s content and is unreliable. See Techradium, Inc. v.
Blackboard Connect, Inc., 2009 WL 1152985, *4 n.5 (E.D. Tex. 2009). Yet,
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in this case, Appellants have not disputed the Examiner’s finding (Ans. 5)
that The Ancient Art of War computer game was released in 1984. See
generally Brief. Because this finding is undisputed, we presume that The
Ancient Art of War game existed in 1984.
Instead, Appellants contend that The Ancient Art of War is not prior
art because it is not enabled for the virtual reality field or fails to have an
enabling disclosure. Br. 12-13. We disagree. The Examiner has not relied
on The Ancient Art of War to teach a virtual reality device but rather as a
device that provides a source of entertainment. See Ans. 5. Thus,
Appellants’ assertions related to whether The Ancient Art of War is enabling
for a virtual reality device are inconsistent with the Examiner’s position in
the rejection.
Also, to the extent that Appellants contend that The Ancient Art of
War is not enabled as an entertainment device, we are not persuaded. A
“computer game” is defined as “[a] class of computer program in which one
or more users interacts with the computer as a form of entertainment.”
MICROSOFT® COMPUTER DICTIONARY 119 (5th ed. 2002). Additionally, a
reference is presumed to be operable, and the burden is on Appellants to
provide facts rebutting the presumption of The Ancient Art of War’s
operability as an entertainment device. See In re Sasse, 629 F.2d 675, 681
(CCPA 1980). As stated above, Appellants’ argument focuses on The
Ancient Art of War not being on virtual reality device (see Br. 12-14) as
opposed to whether it operates as an entertainment apparatus. Thus,
Appellants have not persuasively rebutted The Ancient Art of War’s
operability as an entertainment device.
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Concerning Filo and Tremblay, Appellants argue without any
supporting evidence that these references are not enabled for entertainment.
See Br. 14. Thus, despite Appellants’ assertion to the contrary (see id.),
Appellants have not met the burden of rebutting the presumption of
operability of these systems or that one skilled in the art would not have
combined these references’ description of the invention with their own
knowledge to make the claimed invention. See In re Donohue, 766 F.2d
531, 533 (Fed. Cir. 1985). We further note that The Ancient Art of War is
cumulative in that Tremblay also teaches that the vibrotactile units, such as
Tremblay’s device, can be used in various ways, including “entertainment”
applications. See Tremblay, col. 2, ll. 6-9. Nonetheless, we see no error in
the Examiner’s reliance on The Ancient Art of War.
We thus find that The Ancient Art of War is prior art.

Filo and Tremblay are Analogous Art
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citations omitted). Quoting paragraph 0001 from the
Specification, Appellants argue that the field of Appellants’ endeavor is
directed “‘to entertainment devices, and in particular environmental
interactive entertainment devices that receive environmental data and
respond accordingly.’” Br. 16 (quoting Spec. ¶ 0001). Because the term
“entertainment” is subjective, we find that the proper field of endeavor
includes those devices used to monitoring inputs from a user within an
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environment and provide feedback. Additionally, even if the field of
endeavor is found to be limited to “entertainment” devices, we find such a
term is quite expansive due to its subjectivity.
That is, “entertain” is defined as “to engage the attention and retain
the company of one, by agreeable conversation, discourse or argument” and
“[t]o please; to amuse; to divert.” WEBSTER’S AMERICAN DICTIONARY OF
THE ENGLISH LANGUAGE (1828), available at
http://1828.mshaffer.com/d/word/entertain (second and sixth definitions).
Using this ordinary understanding, we find that both Filo and Tremblay’s
invention similarly are used to engage the attention of the user (e.g., Filo
creates a work environment, Tremblay provides feedback) and can please or
divert (e.g., both Filo’s work environment and Tremblay’s feedback device
can be diverting to the user). See Filo (Abstract; col. 3, ll. 16-19; col. 7, ll.
7-19); Tremblay (Title, Abstract). We therefore find Filo and Tremblay are
within Appellants’ field of endeavor.
Appellants also assert that “Appellants’ device is directed to devices
that interact with the real world . . . , not virtual reality devices.” Br. 18.
Yet, the Specification does not state that the device is intended to interact
only with the real world. See generally Specification. While Appellants
provide an example of “a dog-like robot toy” as the invention in the Brief
(Br. 16), this example is noticeably absent from the disclosure as the
Examiner indicates (Ans. 11). At best, Appellants describe in the
Background of the Invention section known devices that receive input from
the user (see FF 2), like a PDA, but this does not limit Appellants’ field of
endeavor to these or dog-like robot devices. As best understood, Appellants’
argument also focuses the sensors receiving “environmental data” in
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concluding that the real or normal “environment” is the only reasonable
construction of the claims, and thus Appellants’ field of the endeavor must
be applied to the real world or a “normal” environment. See Br. 15, 18.
However, as stated above and because “environment” has not been defined
(see FF 1), we disagree and find that construing claim 8 to include
environments other than the real world is not unreasonable.
Nonetheless, both Filo and Tremblay teach monitoring the user’s
movements within a real world or a normal environment. That is, Filo
teaches moving and monitoring the user’s head and hand movement within
the real world or an input by the user, such as activating a button. See col. 3,
ll. 16-19; col. 7, ll. 7-24. This movement is “environmental data” as
described by Appellants. See FF 3 (including data such as device’s
orientation and the device’s movement). Similarly, Tremblay also teaches
moving and monitoring hand movements (e.g., environment data as
described by Appellants (see id.)) within a real world. See col. 3, ll. 35-44.
Alternatively, we find that Filo and Tremblay are reasonably pertinent
to the problem to which Appellants were concerned. Citing paragraphs 2
and 3, Appellants state that Appellants’ problem to be solved is that known
entertainment devices cannot receive, process, and act upon environmental
data and perform conspicuous actions to obtain a user’s response. Br. 16.
These paragraphs also discuss the need for combining received input not
only from the environment but from other devices or users and reacts to
these inputs. See Spec. ¶¶ 0002-3. Similarly and as explained above, Filo
teaches a user’s computer 42 receives input from the environment (e.g.,
user’s head and hands move and are sensed by 38, 46 or activating a button)
or other users (e.g., other users in Fig. 3A) and reacts to these inputs by
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changing the view’s orientation or site. See col. 3, ll. 16-19; col. 7, ll. 7-24;
col. 9, ll. 24-51; Fig. 3A. Likewise, Tremblay teaches a feedback device that
senses body motion and reacts to the body’s movement or input. See, e.g.,
col. 3, ll. 30-44; col. 15, ll. 33-44.
We therefore find that Filo and Tremblay are analogous art, such that
they can be relied upon as a basis for a § 103 rejection.

Filo, Tremblay, and The Ancient Art of War Collectively
Would Have Taught or Suggested the Disputed Limitations
Based on the record before us, we find no error in the Examiner’s
rejection of claim 8, which recites in pertinent part, sensors in sensory
contact with an environment. Appellants assert that Tremblay fails to teach
sensors in contact with a real world environment. Br. 24. We disagree.
Tremblay teaches sensors for moving body parts (e.g., hand sensors on a
glove in Fig. 18A or sensors on a knee in Fig. 24A) and monitoring body
movements (e.g., environmental data as described by Appellants (see FF 3))
within the real world. See Ans. 4-5 (citing col. 3, ll. 30-44; col. 15,
ll. 33-43). Thus, Tremblay teaches sensors in sensory contact with an
environment.
Appellants further argue that Filo fails to teach or suggest storing
environmental data received from the environment by way of the sensors.
See Br. 23. As stated above, the recited “environment” has not been defined.
See FF 1. Also, while the example in the Background of the Invention
section may include a real world environment and input (see FF 2), claim 8
is not limited by these examples. Moreover, while noting that claim 8 is not
limited to a real world environment, Filo teaches the user moves the user’s
head and hand within the real world or “a normal environment” and the
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helmet’s and glove’s sensors (e.g., 38, 46) are in sensory contact with the
user’s movements and thus the environment in which the head and hands
move. See col. 3, ll. 16-19; col. 7, ll. 7-19; Fig. 3A. Filo also suggests
sensing real world data. See col. 4, ll. 16-19. Filo thus teaches or suggests
sensors (e.g., 38, 46) that receive environmental data (e.g., orientation or
body movement) from the environment (e.g., the environment the body
moves within) as recited.
Additionally, the Examiner cites Figure 3A in Filo, when addressing
the storing data within a datastore limitation. See Ans. 4-5. Notably,
Appellants have not defined a datastore. See generally Specification. Figure
3A shows the position data (either through sensors 38, 46 or other user’s
positions) is transmitted to computer 42 that contains database 60, a
memory, and a processor. See Fig. 3A; col. 7, ll. 16-30; col. 8, ll. 42-45.
While Appellants contend changes in the user’s movements are “instantly”
changed in Filo (see Br. 23), position information of the user is shown to be
received by the computer and stored somewhere for processing. Also, while
Filo does not explicitly state the received position information is stored in
the database 60 (see col. 8, ll. 48-52), Filo at least suggest the users’ updated
and changed position information need to be stored somewhere for future
reference and to map the users’ positions in the future. For example, Figure
13 shows how other images and data, other than maps, can come from
multiple forms or sources, including a database. See Fig. 13. We therefore
find that Filo teaches or suggests storing received data in a datastore, as
broadly as recited.
Appellants also contend that Filo does not perform conspicuous action
for attracting the attention of the user in response to the received data.
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Br. 23-24. We disagree. Filo teaches how the user views or senses changes
in motion (e.g., pivoting) when the user turns his head and changes a
designated site when actuating a switch. Col. 9, ll. 24-51. Both of these
updated views are actions (e.g., change in view based on change in
orientation, change in view based on actuating a switch) intended for the
user to sense and are thus conspicuous consistent with the disclosure. See
FF 4. Additionally, Filo teaches that updates in position information of
other users are provided to the user. See col. 7, ll. 25-30. This position or
physical change is also intended for the user to view or sense and is a
conspicuous action performed to attract the user’s attention in response to
the received data consistent with the disclosure.
We therefore find that Filo and Tremblay collectively teach or suggest
the disputed limitations.

The Examiner Has Articulated a Rational Reason
to Combine the Teachings of the Cited References
Lastly, Appellants contend that: (1) there is no logical association
between Filo, Tremblay, and The Ancient Art of War (Br. 19); (2) the
teaching, suggestion, and motivation (TSM) test has not been performed (Br.
21); and (3) Filo is not adaptable for the entertainment industry (Br. 22-23).
We first note that KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), states
that the TSM test is not the only test to establish obviousness (id. at 419) and
discusses various rationales for supporting a § 103 rejection (id. at 416-421),
including articulating a reason with some rational underpinning to support a
legal conclusion of obviousness (id. at 418).
Also, above, we have addressed how Filo can be an “entertainment”
apparatus, giving the subjectivity of term “entertain.” Thus, contrary to
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Appellants’ contention (Br. 22-23), Filo is adaptable for the “entertainment”
industry, as broadly as recited. Additionally, the Examiner cites The
Ancient Art of War to demonstrate how military strategy and operations
(e.g., Filo) were known to be applied to computer games to provide a source
of entertainment. See Ans. 5. Thus, the Examiner has articulated a reason to
combine the teachings of the Ancient Art of War with Filo. See id.
Tremblay also teaches that its device can be used in entertainment
applications. Col. 2, ll. 7-9. Tremblay further teaches providing a glove unit
with feedback to allow a user to control their body motions. See
Ans. 6-7 (citing col. 15, ll. 33-43). The Examiner has thus provided
reasoning for combining Filo with Tremblay that has a rational
underpinning. See id. We therefore disagree that there is no logical
association among Filo, Tremblay, and The Ancient Art of War.
In summary, for the above reasons, Appellants have not persuaded us
of error in the rejection of independent claim 8 and claims 9, 14-16, and 25
not separately argued with particularity.

Claim 10
Claim 10 recites a memory stores operational instructions to cause the
processing module to assign a priority to the received data to ensure
execution of processes by order of importance. Appellants contend that the
Examiner fails to demonstrate how Filo teaches ensuring execution of
processes by order of importance. Br. 24-25. We agree. The Examiner
relies on Filo’s column two, line 62, through column three, line 67, and the
discussion of the immersion levels as teaching this limitation. See Ans. 6.
This passage in Filo teaches different degrees of immersion for different
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users but the Examiner fails to show how this passage teaches or suggests
that one user is assigned a priority to the received data stored in the datastore
to ensure the processes are executed by an importance order. See col. 2, l.
62–col. 3, l. 67. For the foregoing reasons, Appellants have persuaded us of
error in the rejection of claim 10.

Claims 11 and 13
Based on the arguments presented, we find no error in the Examiner’s
rejection of claim 11. Appellants argue that Filo does not store data from the
datastore in order to detect an event. Br. 25. Because claim 11 does not
recite storing data in order to detect an event but rather comparing the stored
data to other data to detect an event, this argument is thus not commensurate
in scope with claim 11. Also, this comparing limitation has not been
disputed by Appellants. See id. Additionally, merely quoting the comparing
claim language (id.) is not considered an argument.
Appellants further argue that Filo does not collect the information
from the helmet sensor and use this information for further processing of
events. Id. We disagree for the above discussed reasons in connection with
claim 8. Filo teaches how the body position information gathered from the
sensors or actuating a button can be used to process events, such as changes
in orientation or site. See col. 7, ll. 16-30; col. 9, ll. 24-51.
Claim 13 depends from claim 11 and recites the event comprising one
of many listed events, including orientation. Appellants dispute that the
Examiner has not provided any reasoning why Filo teaches a change in the
recited events. We disagree. The Examiner relies on Figure 3A and
discusses that Filo detects position or orientation information. See Ans. 6.
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As explained above, Filo teaches various changes in orientations (hand or
head) that are detected and recorded. See col. 7, ll. 16-30; col. 9,
ll. 24-51.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claims 11 and 13.

Claims 17 and 26
Claim 17 recites, in pertinent part, the memory further stores
instructions to cause the processing module to auto-initiate a conspicuous
action for attracting the attention of the user at a desired frequency and
modify the desired frequency of the conspicuous action. Claim 26 recites a
limitation that is commensurate in scope with claim 17. Appellants argue
that the Examiner relies on Tremblay and modifying an audible level to
teach this limitation and this does not relate to the recited change in
frequency. See Br. 25. We disagree that the Examiner relies on a volume
discussion to meet claim 17 limitations. See Ans. 7 (discussing an alert
feature when a knee flexes beyond a safe limit). Nonetheless, we find the
Examiner has not sufficiently demonstrated how Tremblay’s frequency of
this alert feature is modified as recited. The Examiner finds that Tremblay’s
biofeedback mechanism allows the user to attempt to modify the alert
frequency. See Ans. 7, 13. Yet, even if this were possible, this discussion
does not teach or suggest the memory stores operational instructions to
cause the processing module to modify the desired frequency of the
auto-initiated conspicuous activity. That is, the user in the Examiner’s
example – not the operational instructions – would cause modification of the
desired frequency.
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For the foregoing reasons, Appellants have persuaded us of error in
the rejection of claim 17 and claim 26, which recites commensurate
limitations.

CONCLUSIONS
Under § 103, the Examiner did not err in rejecting claims 8, 9, 11,
13-16, and 25, but erred in rejecting claims 10, 17, and 26.

DECISION
The Examiner’s decision rejecting claims 8-11, 13-17, 25, and 26 is
affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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Notice of References Cited

Application/Control No.

10/174,258
Applicant(s)/Patent Under
Reexamination
Aaron Conti et al.
Examiner

David Faber
Art Unit

2100

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