Ex Parte Giuli

Patent Trial and Appeal Board

Dec 16, 2014

12366226 (P.T.A.B. Dec. 16, 2014)

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.
12/366,226 02/05/2009 Thomas J. Giuli 81158235 7429
28395 7590 12/16/2014
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
PATEL, HARESH N
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
12/16/2014 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
____________

Ex parte THOMAS J. GIULI1
____________

Appeal 2012-009486
Application 12/366,226
Technology Center 2400
____________

Before CARL W. WHITEHEAD JR., JAMES B. ARPIN, and
CATHERINE SHIANG, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–15. Br. 3.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Ford Motor Company is the real party-in-interest.
2 Throughout this opinion, we refer to (1) the Appeal Brief (Br.) filed
January 3, 2012; and (2) the Examiner’s Answer (Ans.) mailed March 14,
2012.
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INVENTION
Appellant’s invention relates to vehicle communications systems that
permit users in different vehicles to play computer games against each other.
See Spec. 1:6–8. In particular, Figure 1, reproduced below, illustrates an
embodiment of vehicle communications system 1 comprising processor 3, a
non-permanent memory, e.g., random access memory (RAM) 5; a
permanent memory, e.g., hard disk drive (HDD) 7; and a local transceiver,
e.g., nomadic device 53 or Bluetooth transceiver 15. Id. at 5:4–6:6.

This system is intended to operate on mobile, ad-hoc game networks,
specifically, such networks existing between vehicles. See id. at 3:15–21.
The Specification states that a mobile ad-hoc networking may include a
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plurality of mobile nodes, e.g., game player’s devices, which together form a
temporary network. Id. at 1:12–2:5. Because players are free to leave and
enter a given network, the makeup of the network may depend on the
players present. See id. at 2:15–3:4.
Independent claims 1 and 13 are pending in this appeal, and each of
claims 1 and 13 is directed to a vehicle communication system. Br., Claims
Appendix, 1, 3. Claims 2–12 depend from claim 1, and claims 14 and 15
depend from claim 13. Id. at 1–3. Claims 1 and 13 are illustrative and are
reproduced below, with disputed claim limitations emphasized:
1. A vehicle communication system comprising:

a computer processor in communication with persistent and
non-persistent memory;

a local transceiver operable to communicate with a
remote transceiver of another vehicle communication system
and in communication with the processor;

wherein the processor, in conjunction with the persistent
and non-persistent memory, is operable to maintain a game
state, including a player character;

wherein the processor is further operable to detect that a
change in game players has occurred;

wherein the processor is operable to determine whether
one or more players previously present in the game state are
still present in the game state, and, for at least one player no
longer present, to determine whether or not that player should
be replaced by a computer controlled player, wherein if the
processor determines that a no-longer present player should be
replaced by a computer controlled player, the processor is
operable to create a computer controlled player in place of the
no-longer present player.
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13. A vehicle communication system comprising:

a computer processor in communication with persistent
and non-persistent memory;

a local transceiver operable to communicate with a
remote transceiver of another vehicle communication system
and in communication with the processor;

wherein the processor, in conjunction with the persistent
and non-persistent memory, is operable to maintain a game
state, including at least a player character;

wherein the processor is further operable to detect when
the player character has entered a game and to determine if
there are any existing computer controlled characters in the
game;

wherein the processor is operable to replace an existing
computer controlled character with the player character.

The Examiner relies on the following references, in various
combinations, as evidence of unpatentability (Ans. 5):
Reference Name Reference Number Reference Date
Balahura US 2005/0026697 A1 February 3, 2005
Sullivan US 2008/0146343 A1 June 19, 2008
Srinivasan US 2008/0177554 A1 July 24, 2008
Chhabra US 2009/0011834 A1 January 8, 2009
Shi US 2009/0047982 A1 February 19, 2009

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THE REJECTIONS3
1. The Examiner rejects claims 1 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Sullivan and Srinivasan. Ans. 5–12.
2. The Examiner rejects claims 2–12, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Sullivan, Srinivasan, and Balahura. Id.
at 12–17.
3. The Examiner rejects claims 1 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Chhabra and Srinivasan. Id. at 17–21.
4. The Examiner rejects claims 2–12, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Chhabra, Srinivasan, and Balahura. Id.
at 21–26.
5. The Examiner rejects claims 1 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Shi and Srinivasan. Id. at 26–29.
6. The Examiner rejects claims 2–12, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Shi, Srinivasan, and Balahura. Id. at
29–34.

OBVIOUSNESS REJECTIONS BASED ON SULLIVAN AND SRINIVASAN
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said

3 The Examiner objects to the title of the application as non-descriptive.
Final Rej. 2. Appellant seeks review of the Examiner’s objection to the title
(Br. 8), but such matters are reviewable by petition under 37 C.F.R. § 1.181
(see MPEP §§ 1002.02(c) and 1201) and, thus, are not within our
jurisdiction. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
Each of claims 1 and 13 recites systems comprising four structural
components: a computer processor, a persistent memory, a non-persistent
memory, and a local transceiver. Br., Claims Appendix, 1, 3. The Examiner
relies on Sullivan to teach or suggest all of the limitations of claims 1 and
13, except for the ad-hoc network between vehicles. See Ans. 5–9.
Referring to Figure 1, Sullivan teaches video game system 100 comprising
processors 160; a non-persistent memory, i.e., memory 170; and a persistent
memory, i.e., disk drive 180. Ans. 5–7; see Sullivan ¶ 25. Referring to
Figure 3, Sullivan further teaches that wireless device 102 may comprise a
local transceiver, i.e., transceiver 302. Ans. 8; see Sullivan ¶ 38.
Specifically, the Examiner contends that:
The claimed invention is not limited to any particular type of
memory. The claimed invention is not limited to any particular
type of transceiver. The claimed invention is not limited to any
particular type of processor. As per the final office action paper
dated 10/12/11, the Appellant [sic] has chosen not to consider
the Appellant claimed “if,” “operable to” “wherein” limitations
of the argued claim.

Ans. 34–35; see Final Rej. 7.
The Examiner relies on Srinivasan to teach or suggest the ad-hoc
network between vehicles. Id. at 9–12. As noted above, the Examiner
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further relies on Balahura to teach or suggest additional limitations of
dependent claims 2–12, 14, and 15. Id. at 12–17.
Appellant does not contest that Sullivan teaches the structural
limitations of claims 1 and 13. See Br. 8–11. Appellant maintains, however,
that Sullivan does not teach or suggest all of the limitations of claims 1 and
13. Id. In particular, Appellant argues that Sullivan does not teach or
suggest the functional limitations emphasized above, and that neither
Srinivasan nor Balahura teaches or suggests the limitations of claims 1 and
13 that Appellant argues are missing from Sullivan or from Sullivan in
combination with Srinivasan. Id.
According to MPEP § 2114 (parallel citations omitted):
While features of an apparatus may be recited either structurally
or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than
function. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir.
1997) (The absence of a disclosure in a prior art reference
relating to function did not defeat the Board’s finding of
anticipation of claimed apparatus because the limitations at
issue were found to be inherent in the prior art reference). . . .
“[A]pparatus claims cover what a device is, not what a device
does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1469 (Fed. Cir. 1990) (emphasis in original).
A claim containing a “recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus satisfying the structural
limitations of that claimed.” Ex parte Masham, 2 USPQ2d 1647 (BPAI
1987); see MPEP § 2114.II. When determining whether a computer-
implemented, functional claim limitation is patentable over a combination of
references under § 103(a), “[f]unctional claim language that is not limited to
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a specific structure covers all devices that are capable of performing the
recited function. Therefore, if the prior art discloses a device that can
inherently perform the claimed function, a rejection under . . . 35 U.S.C. 103
may be appropriate.” MPEP § 2114.IV (emphasis added) (citing Schreiber,
128 F.3d at 1478). Further, “it is elementary that the mere recitation of a
newly discovered function or property, inherently possessed by things in the
prior art, does not cause a claim drawn to those things to distinguish over
the prior art.” In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971)
(emphasis added); see also Par Pharmaceutical, Inc. v. TWI
Pharmaceuticals, Inc., 2014-1391, 2014 WL 6782649, at *6–*7 (Fed. Cir.,
Dec. 3, 2014) (inherency is limited when applied to obviousness and is
present only when the limitation at issue is the “natural result” of the
combination of prior art elements; quoting In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)); MPEP § 2112.01 (showing inherency for purposes of
obviousness).
ISSUE
Under § 103(a), does a preponderance of evidence support the
Examiner’s finding that Sullivan teaches or suggests that the identified
structural elements of Sullivan inherently are capable of performing the
functional limitations of rejected claims 1 and 13?
ANALYSIS
1. Claim 1
Appellant argues that Sullivan does not teach or suggest the
limitations of claim 1, emphasized above. See Br. 8–10. We note that the
disputed limitation recites three related functions: (1) “the processor is
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operable to determine whether one or more players previously present in the
game state are still present in the game state”; (2) “for at least one player no
longer present, to determine whether or not that player should be replaced
by a computer controlled player”; and (3) “if the processor determines that a
no-longer present player should be replaced by a computer controlled player,
the processor is operable to create a computer controlled player in place of
the no-longer present player.” See Br., Claims Appendix, 1 (emphases
added). In particular, Appellant argues that Sullivan merely teaches that
“the personality and/or behavior of one video-game character may be moved
to another video-game character.” Br. 9 (quoting Sullivan ¶ 54).
The Examiner contends that Sullivan teaches that “[t]he wireless
device is capable of communicating with the ad-hoc connection through
other networks such that a video-game player in one region may move
between geographic regions without loss of game play and/or may join other
video games associated with other networks.” Sullivan, Abstract (emphasis
added); see Ans. 12. We are persuaded that this teaching expressly or at the
very least implicitly describes that Sullivan’s apparatus is capable of
determining whether players have left or joined a game. Further, Sullivan’s
Abstract states that:
In one embodiment, in response to the user joining the video
game, a selection of characters along with personalities and
behaviors based on attributes supplied by the user is presented
to the user for selection thereof. In another embodiment, the
user may transfer a selected personality to another character
associated with the video game, such as a computer operated
video-game character.

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Sullivan, Abstract (emphasis added); see also Ans. 12 (citing Sullivan, Fig.
6 (including steps 612, 614, and 616)); Sullivan ¶ 39 (Sullivan’s apparatus
may “generate video-game characters, create identities, create behaviors,
generate one or more personalities for each of the identities, and the like, as
described below”; emphases added). Thus, we are persuaded that the
remaining functions of this limitation would result naturally from the
combination of prior art elements described in Sullivan. Ans. 6. Further, the
Examiner contends, and Appellant does not dispute, that a person of
ordinary skill in the art would have reason to combine Sullivan and
Srinivasan to achieve the apparatus of claim 1. Id. at 9–11. Thus, we are
persuaded that the Examiner demonstrates that the structures of Sullivan
teach or suggest the structures recited in claim 1, that Sullivan’s structures
inherently are capable of performing the functions recited in claim 1, and
that Sullivan and Srinivasan teach or suggest all of the limitations of claim 1.
2. Claim 13
Turning to claim 13, we initially note that the identical structural
limitations are recited in claims 1 and 13. Ans. 12. Claim 13 further recites:
wherein the processor is further operable to detect when the
player character has entered a game and to determine if there
are any existing computer controlled characters in the game;

wherein the processor is operable to replace an existing
computer controlled character with the player character.

Br., Claim Appendix, 3.

Referring again to the Sullivan’s Abstract, Sullivan teaches expressly
or at the very least implicitly that Sullivan’s apparatus can detect when a
player joins or leaves the game and may transfer a selected personality to a
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“computer operated video game character.” Ans. 11–12. Accordingly,
Sullivan’s apparatus is capable of determining “if there are any existing
computer controlled characters in the game” and of generating such a
computer controlled character or creating identities, personalities, and/or
behaviors for such a character to replace a departing player. Id.; see Sullivan
¶ 39. Further, the Examiner contends, and Appellant does not dispute, that a
person of ordinary skill in the art would have reason to combine Sullivan
and Srinivasan to achieve the apparatus of claim 13. Ans. 9–11. Thus, we
are persuaded that the Examiner demonstrates that the structures of Sullivan
teach or suggest the structures recited in claim 13, that Sullivan’s structures
inherently are capable of performing the functions recited in claim 13, and
that Sullivan and Srinivasan teach or suggest all of the limitations of claim
13. Therefore, we sustain the obviousness rejection of claims 1 and 13 over
Sullivan and Srinivasan.
3. Claims 2–12, 14, and 15
The Examiner rejects claims 2–12, 14, and 15 as rendered obvious
over Sullivan, Srinivasan, and Balahura. Ans. 12–17. Appellant does not
contest the rejections of 2–12, 14, and 15 separately. Br. 11–12. Instead,
Appellant argues that Balahura does not supply the limitations of claims 1
and 13 that allegedly are missing from Sullivan and Srinivasan and that
combining the teachings of Sullivan and Srinivasan with those of Balahura
would change impermissibly Balahura’s operation. Id.
For the reasons set forth above, we are not persuaded that Sullivan
and Srinivasan fail to teach or suggest all of the limitations of claims 1 and
13. In addition, the Examiner contends that the proposed combination does
not change Balahura’s operation. Ans. 42–43. The Examiner proposes to
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combine the teachings of Srinivasan and Balahura with those of Sullivan,
not the teachings of Sullivan and Srinivasan with Balahura. The
preservation of Balahura operation is not necessary in the asserted
combination. See MPEP § 2143.01.V–VI. Because we remain persuaded
that the Examiner demonstrates that the evidence of record supports the
rejection of the independent claims, we also sustain the obviousness
rejections of claims 2–12, 14, and 15 over Sullivan, Srinivasan, and
Balahura.

OBVIOUSNESS REJECTIONS BASED ON CHHABRA OR SHI IN COMBINATION
WITH SRINIVASAN
As noted above, each of claims 1 and 13 recites the same four
structural components. The Examiner argues that Chhabra or Shi teaches or
suggests each of these components. Ans. 17–21, 26–29, 43–47, 48–51.
With respect to Chhabra, the Examiner cites only generally to paragraphs
15–22, Figure 2, and the Abstract of Chhabra in support of the rejections.
Id. at 17–21, 43–47. However, the Examiner fails to indicate where
precisely each of the structural limitations are taught or suggested by
Chhabra. Similarly, with respect to Shi, the Examiner cites only generally to
paragraphs 17–26 and Figure 1 of Shi in support of the rejections. Id. at 26–
29, 48–51.
Our reviewing court has set forth the standard for determining the
sufficiency of an Examiner’s rejection:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
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information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
That section “is violated when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted)
(alterations in original). During prosecution and in the Answer, the
Examiner relies on citations to large portions of the disclosures of Chhabra
and Shi in support of the obviousness rejections based on those references.
Nevertheless, we are persuaded that these citations do not identify in
sufficient detail the structures of functions of Chhabra and Shi upon which
the Examiner is relying to support the rejections of claims 1 and 13. See Br.
13 (“Responsive to this argument, the Examiner has not presented any actual
evidence of what portion of paragraphs 15–22, or other portions of Chhabra
contain this element, but rather has simply referred back to the naked,
unsupported allegation that Chhabra teaches ‘transfer of character of video
game upon joining/loss of game play player.’”); 14–15 (“No attempt is even
made to point out, with any greater degree of specificity, how these
paragraphs support this characterization.”). Therefore, we conclude that the
Examiner fails to establish a prima facie case of obviousness with respect to
the rejections of claims 1 and 13 based on the combinations of the teachings
of Chhabra and Srinivasan or of Shi and Srinivasan. Therefore, we do not
sustain the obviousness rejections of claims 1–15 based on Chhabra or Shi in
combination with Srinivasan.

CONCLUSION
The Examiner did not err in rejecting claims 1 and 13 under 35 U.S.C.
§ 103(a) as rendered obvious by Sullivan and Srinivasan and of claims 2–12,
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14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Sullivan,
Srinivasan, and Balahura. Nevertheless, the Examiner erred in rejecting
claims 1 and 13 under 35 U.S.C. § 103(a) as rendered obvious by Chhabra or
Shi, together with Srinivasan, and of claims 2–12, 14, and 15 under 35
U.S.C. § 103(a) as unpatentable over Chhabra or Shi, together with
Srinivasan and Balahura.

DECISION
For the reasons set forth above, the Examiner’s decision rejecting
claims 1–15 is affirmed.
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

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