Ex Parte Feeney et al

Board of Patent Appeals and Interferences

Mar 29, 2012

11738433 (B.P.A.I. Mar. 29, 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.
11/738,433 04/20/2007 Robert J. Feeney 21695-104 7502
43914 7590 03/29/2012
JOSEPH SWAN, A PROFESSIONAL CORPORATION
1334 PARKVIEW AVENUE, SUITE100
MANHATTAN BEACH, CA 90266
EXAMINER
CHAN, KAWING
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
03/29/2012 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 ROBERT J. FEENEY, JEFF E. HAAS,
and BRENT W. BARKLEY
____________

Appeal 2010-001616
Application 11/738,433
Technology Center 2800
____________

Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001616
Application 11/738,433

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, 8-15, and 17-20. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellants’ invention involves devices (e.g., toys) that musically
interact with each other wirelessly by playing different parts of a musical
composition. In one implementation, interchangeable modules are
removably attached to the devices to modify their identity and musical style.
See generally Spec. ¶¶ 02-03, 09-10, 46, 50, 103. Claim 1 is illustrative with
key disputed limitations emphasized:
1. A system of musically interacting devices, comprising:
a first device having a first identification code, a first wireless
communication interface and a first audio player; and
a second device having a second identification code, a second wireless
communication interface and a second audio player,
wherein the first device and the second device are configured to
participate in an interaction sequence in which:
the first device wirelessly communicates using the first wireless
communication interface and the second device wirelessly communicates
using the second wireless communication interface,
a musical composition is selected based on both the first identification
code and the second identification code, and
the first device and the second device cooperatively play the musical
composition, with each of the first device and the second device playing a
different part of the musical composition,
wherein at least one device from among the first device and the
second device is disposed within a housing that has an overall outward
appearance of a toy character, and
wherein said at least one device has attached to it a removable
module that: (1) stores information causing a modification of the
identification code of said at least one device, and (2) has an outward
appearance indicating said modification.
Appeal 2010-001616
Application 11/738,433

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The Examiner relies on the following as evidence of unpatentability:
Yokoo US 6,560,511 B1 May 6, 2003
Small US 2004/0038620 A1 Feb. 26, 2004
Thai US 6,822,154 B1 Nov. 23, 2004
Wright US 2004/0259465 A1 Dec. 23, 2004
McClintock US 2005/0140185 A1 June 30, 2005

THE REJECTIONS
1. The Examiner rejected claims 1, 3-5, 8-10, 18, and 19 under 35
U.S.C. § 103(a) as unpatentable over Thai, Small, and Yokoo. Ans. 3-6.1
2. The Examiner rejected claims 2 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Thai, Small, Yokoo, and Wright. Ans. 6.
3. The Examiner rejected claims 11-13, 15, and 172 under 35 U.S.C.
§ 103(a) as unpatentable over Thai, Small, Yokoo, and McClintock. Ans. 7-
9.
4. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Thai, Small, Yokoo, McClintock, and Wright. Ans. 9-10.

THE OBVIOUSNESS REJECTION OVER THAI, SMALL, AND YOKOO
The Examiner finds that Thai’s system of musically-interacting
devices has every recited feature of independent claim 1 except for at least

1 Throughout this opinion, we refer to (1) the Appeal Brief filed March 23,
2009; (2) the Examiner’s Answer mailed July 16, 2009; and (3) the Reply
Brief filed September 15, 2009.
2 Although the Examiner erroneously includes cancelled claim 16 in this
rejection (Ans. 7), we nonetheless present the correct claim listing here for
clarity.
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Application 11/738,433

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one device having an attached removable module that (1) stores information
causing a modification of the device’s identification code, and (2) has an
outward appearance indicating the modification. Ans. 3-6, 11-12. The
Examiner, however, cites Small and Yokoo as teaching these features in
concluding that the claim would have been obvious. Id.
Appellants challenge these findings, arguing, among other things, that
the Examiner erred in construing limitation (1) in the last clause of claim 1
as pertaining to the removable module, yet construing limitation (2) as
pertaining to the recited device. App. Br. 9-13; Reply Br. 2. That is, both
these limitations are said to pertain to the recited module—not the device.
Reply Br. 2. The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Thai, Small, and Yokoo collectively would have taught or suggested at
least one device having an attached removable module that (1) stores
information causing a modification of the device’s identification code, and
(2) has an outward appearance indicating the modification?
This issue turns on whether the Examiner erred in construing
limitations (1) and (2) above as pertaining to the removable module and
device, respectively.

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Application 11/738,433

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ANALYSIS
As noted in the issue statement above, this dispute hinges on the
Examiner’s construction of the last clause of claim 1—a construction that we
find erroneous for the reasons indicated by Appellants. Reply Br. 2.
Notably, the last clause of claim 1 enumerates both storage and
indication features with reference numerals—a two-item list that
immediately follows the recited removable module. As such, when
interpreted in light of the Specification, this list clearly and unambiguously
pertains to the module—not the device. Accord Spec. ¶¶ 09, 46, 50
(discussing the features of interchangeable module 72 in Figure 3 and its
identification code functionality with respect to Figure 4); see also Spec.
¶ 103 (discussing modular component 383 with cowboy hat and associated
country-music codes).
The Examiner takes the position that that limitation (1) of the recited
list pertains to the module, but limitation (2) pertains to the device. See Ans.
11-12. Notably, the Examiner maps Yokoo’s IC card 21 to the recited
removable module that stores information modifying the device’s
identification code. Id. The Examiner, however, maps Yokoo’s virtual
electronic pet device 22 to the recited device which is said to have an
outward appearance indicating the modification via its displayed screen. Id.
Accord Ans. 5 (noting that the pet’s and robot’s appearances indicate the
recited modification); id. (noting that it is known to use different device
appearances to indicate code modifications). This selective mapping of the
two enumerated items to two different recited elements (i.e., the device and
module, respectively) of claim 1’s last clause is simply incorrect under any
reasonably broad construction in light of the Specification.
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Nevertheless, to the extent that it would have been implied, or at least
obvious, to provide some sort of visually-distinguishing indicia on Yokoo’s
IC card (i.e., the “removable module”) such that its outward appearance
indicates the identification-based modification caused by inserting the card
into the corresponding device in Yokoo’s Figure 2, such a position has not
been articulated on this record, nor will we engage in that inquiry here in the
first instance on appeal. We therefore leave that question to the Examiner.
What we can say, however, is that the Examiner’s articulated position is
untenable on this record.
In view of the Examiner’s flawed construction of claim 1 noted above,
we are persuaded that the Examiner erred in rejecting claim 1;
(2) independent claim 18, which recites commensurate limitations; and
(3) dependent claims 3-5, 8-10, and 19 for the same reasons. Since this issue
is dispositive regarding our reversing the rejection of these claims, we need
not address Appellants’ other arguments pertaining to (1) the references’
combinability, or (2) claim 10 (App. Br. 13-15; Reply Br. 2-3).

THE OBVIOUSNESS REJECTION OVER THAI, SMALL, YOKOO, AND
MCCLINTOCK
The last clause of independent claim 11 recites a similar two-item list
pertaining to the recited removable module, but differs from the other
independent claims in calling for the stored information to cause a
modification of the device’s musical style instead of its identification code.
But the Examiner’s interpretation of these limitations and reliance on Yokoo
is flawed for the same reasons indicated for the other independent claims.
See Ans. 14 (noting that the device has an outward appearance indicating the
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modification); see also Ans. 8 (noting that the pet’s and robot’s appearances
indicate the recited modification).
Since the Examiner has not shown that the other cited prior art
references cure these deficiencies, we reverse the obviousness rejection of
(1) independent claim 11, and (2) dependent claims 12, 13, and 15-17 for the
same reasons. Since this issue is dispositive regarding our reversing the
rejection of these claims, we need not address Appellants’ other arguments
pertaining to (1) the references’ combinability, or (2) claims 13 and 17 (App.
Br. 22-25; Reply Br. 6-8).

THE OTHER OBVIOUSNESS REJECTIONS
Since the Examiner has not shown that the other cited prior art cures
the deficiencies noted above regarding the independent claims, we reverse
the obviousness rejections of claims 2, 14, and 20 (Ans. 6, 9-10) for the
same reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-5, 8-15, and 17-20 under §
103.

ORDER
The Examiner’s decision rejecting claims 1-5, 8-15, and 17-20 is
reversed.

REVERSED

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Application 11/738,433

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