09817123 (B.P.A.I. Nov. 29, 2011)

Ex Parte Hazama

Board of Patent Appeals and InterferencesNov 29, 2011

09817123 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KATSUKI HAZAMA ____________ Appeal 2009-013299 Application 09/817,123 Technology Center 3700 ____________ Before: MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013299 Application 09/817,123 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 6-15, and 39-40. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to a data carrier, a game machine using the data carrier, an information communication method, an information communication system using the data carrier, automated travelling control system and storing medium, and more particu1ar1y, to a non-contact type data carrier, and above-mentioned various app1ication using the non-contact type data carrier. (Spec. 1:7-13). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A game apparatus comprising: a body including a first control device for transmitting and receiving data required in terms of an advancement in a game; and plural game pieces arranged on the body, each of the plural game pieces including a data carrier having a control means for transmitting and receiving driving electric power and transferring the data between a respective one of said plural game pieces and said body; means for notifying the first control device that the received driving electric power has reached a predetermined quantity of electric power; and a multi-value memory in said each of the plural game pieces, said multi-value memory containing identifying information relating to the respective one of said plural game pieces, said multi-value memory being provided a plurality of multi-value cells, each of said multi-value cells being capable of storing three or more predetermined values relating to at least one of a particular game piece identification and sequential location information. Appeal 2009-013299 Application 09/817,123 3 The Examiner relies upon the following prior art: Blenkinsop GB 2 103 943 A Mar. 2, 1983 Bergeron US 4,764,666 Aug. 16, 1988 Carroll US 4,857,893 Aug. 15, 1989 Hikawa US 5,526,306 Jun. 11, 1996 Takemoto US 5,741,184 Apr. 21, 1998 Gilboa US 5,853,327 Dec. 29, 1998 Andrews US 5,099,226 Mar. 24, 1992 Zalewski US 5,991,693 Nov. 23, 1999 Claims 1, 6-7, 10-11, 15, and 39-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gilboa in view of Zalewski and Hikawa; and claims 8-9 and 12-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gilboa in view of Zalewski, Hikawa, and Bergeron. We REVERSE and enter a NEW GROUND of rejection pursuant to 37 C.F.R. § 41.50(b). ISSUE Did the Examiner err in asserting that a combination of Gilboa, Zalewski, and Hikawa renders obvious independent claim 6? The issue turns on whether Gilboa renders obvious the “control means” and “means for providing a notification” recited in independent claim 6. FINDINGS OF FACT Specification Figure 2 of the Specification is illustrated below. App App a blo type inclu gene func whic 2 is p trans carri oper anten and t indu pow eal 2009-0 lication 09 FF1. A ck diagram data carrie des an ant ration noti tion unit 6 FF2. Th h a coil an rovided to mit radio er 1 (13:30 FF3. Th ating elect na circuit o store the ction in a c FF4. Th er generati 13299 /817,123 s illustrate showing r 1 takes a enna circu fying unit and a seco e antenna d a capaci receive r waves 21 t -35). e operatio ric power 2 receivin electric p apacitor ( e power g ng unit 3 s d above, th a non-con card-like it 2, an op 4, a surfac nd functio circuit 2 i tor C are c adio wave o the read n power g for the non g the radio ower gene unillustrat eneration tores the c 4 e Specific tact type d shape, and eration po e/undersid n unit 7 ( s construc onnected s 20 transm er 10 from enerating -contact t waves 20 rated throu ed) (13:36 notifying u apacitor w ation disc ata carrie , as show wer gener e judging 13:22-29). ted of a re in parallel itted from the non-c unit 3 is st ype data c transmitt gh a mag -14:4). nit 4 dete ith a pred loses that r. This no n in Figure ating unit unit 5, a f sonance ci . The ante a reader ontact typ ructured t arrier 1 by ed from th neto-electr cts that th etermined Figure 2 is n-contact 2, 3, a power irst rcuit in nna circui 10 and to e data o generate the e reader, ic e operation quantity o t f Appeal 2009-013299 Application 09/817,123 5 electric power, and notifies the reader of this effect. The power generation notifying unit 4 outputs a completion-of-charging signal S1 to the 10 antenna circuit 2, and notifies the reader of it by transmitting the radio waves 21 from the antenna circuit 2 (14:5-12). Gilboa FF5. Gilboa discloses that for each piece 120 game includes power source 260 which powers the circuitry in the piece, particularly transceiver circuit 250. Such an arrangement may be inconvenient, since each of pieces 120 requires periodic replacement of batteries and there may be a large number of pieces 120. Thus, according to an alternative embodiment of Gilboa, a capacitor replaces transceiver circuit 250 and battery 260. The capacitor and coil 240 form a resonance circuit, such as the resonance circuit described in Blenkinsop, incorporated herein by reference. According to this embodiment, the excitation (query) signal, which is preferably characterized by an abrupt change in electromagnetic flux, activates the resonance circuit which, thereby, resonates at its resonance frequency. Thus, the frequency of the answer signal is determined by the frequency of the resonance circuit (col. 11, ll. 16-32). Blenkinsop FF6. As illustrated below, Figure 2A of Blenkinsop is a circuit diagram including upright ferrite core 28, coils 30, and capacitor. App App of G Br. 6 a “m pow respe prov 3). I “mea “com the n “con cons Com mere Uniq disti prior a not eal 2009-0 lication 09 We are p ilboa, Zale -13; Reply eans for p er generati ctively co iding a no n particula ns for pro pletion-of ormal can trol means idered sep m'n, 988 F surplusag ue Concep nct claim e art must a ification.” 13299 /817,123 ersuaded wski, and Br. 2-8). roviding a on notifyin rrespond t tification” r, unit 4 in viding a n -charging ons of clai ” and “me arate. See .2d 1165, e. An exp ts, Inc. v. lements sh lso show The Exam AN the Exami Hikawa re Independ notificatio g unit 4 ( o the recit (FF1-FF4 the Spec otification signal S1” m constru ans for pro Texas Ins 1171 (Fed ress limita Brown, 93 ould each separate “c iner, how 6 ALYSIS ner erred i nders obv ent claim n.” We fi hereinafter ed “contro ). Appella ification co ,” as unit 4 (FF1, FF ction that t viding a n tr. Inc. v. U . Cir. 1993 tion canno 9 F.2d 15 be given ontrol me ever, cite n asserting ious indep 6 recites a nd that an “unit 4”) l means” a nt is in ag rresponds , by itself 2, FF4). T wo claim otification nited Sta ) (claim l t be read 58, 1563 ( full effect) ans” and “ s the reson that a com endent cla “control m tenna circu in the Spe nd “mean reement (R to the rec , generates his compo elements, ,” should tes Int'l Tr anguage ca out of the Fed. Cir. 1 . Accordi means for ance circu bination im 6 (App eans” and it 2 and cification s for eply Br. ited rts with the be ade nnot be claim); 991) (two ngly, the providing it of . Appeal 2009-013299 Application 09/817,123 7 Gilboa/Blenkinsop as corresponding to both the “control means” and the “means for providing a notification” (FF5, FF6; Exam’r’s Ans. 4, 10-12). Accordingly, we cannot sustain this rejection, or the rejection of dependent claims 6-15 and 40. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject independent claim 1 under 35 U.S.C. § 112, second paragraph, for indefiniteness. Specifically, we find indefinite the aspect “means for notifying the first control device that the received driving electric power has reached a predetermined quantity of electric power,” as recited in independent claim 1. Appellant asserts that unit 4 alone corresponds to the recited “means for notifying” (Reply Br. 3). However, the Specification discloses that unit 4 can only “notify” the first control device (reader 10) via radio waves 21 transmitted from antenna circuit 2 (FF4). Therefore, we are unclear as to how unit 4 alone can correspond to the recited “means for notifying,” when unit 4, by itself, cannot complete the recited function. And further complicating the claim construction, antenna circuit 2 alone already corresponds to the recited “control means” in independent claim 1. Accordingly, because we cannot ascertain whether unit 4 alone, or a combination of unit 4 and antenna circuit 2, properly corresponds to the recited “means for notifying,” we newly reject independent claim 1 under 35 U.S.C. § 112, second paragraph, for indefiniteness. We do not reach the merits of the rejection of independent claim 1, and its dependent claim 39, under 35 U.S.C. § 103 at this time. Before a proper review of the rejections under 35 U.S.C. § 103 can be performed, the Appeal 2009-013299 Application 09/817,123 8 subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since the claims fail to satisfy the requirements under 35 U.S.C. § 112, second paragraph, we are constrained to reverse, pro forma, the Examiner’s rejection of independent claim 1 and dependent claim 39 under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.”) DECISION The rejection of claims 1 and 39 is REVERSED, pro forma. The rejection of claims 6-15 and 40 is REVERSED. We enter a NEW GROUND of rejection, and reject claims 1 and 39 under 35 U.S.C. § 112, second paragraph, for indefiniteness. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2009-013299 Application 09/817,123 9 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) hh