Ex Parte Jutzi et al

Board of Patent Appeals and Interferences

Aug 30, 2006

09218822 (B.P.A.I. Aug. 30, 2006)

1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CURTIS E. JUTZI and JAY CONNELLY
____________
Appeal No. 2006-1597
Application No. 09/218,822
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BRIEF
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Before HAIRSTON, RUGGIERO, and MACDONALD, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of claims 1-16 and 18-25, which
are all of the claims pending in this application. Claim 17 has been canceled.
The disclosed invention relates to gaming, such as gaming computer programs, utilizing
actual telemetry data. A source of actual telemetry data regarding an event, such as a sporting
event, is provided to a gaming application which utilizes the actual telemetry which enables the
game player to play the game as if the game player were actually involved in the sporting event.
Appeal No. 2006-1597
Application No. 09/218,822
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Claim 1 is illustrative of the invention and reads as follows:
1. A system comprising:
a source of actual telemetry data regarding an event, wherein the telemetry data
comprises quantitative data measurements of characteristics of the event, wherein the
source comprises at least one data measurement instrument to collect the quantitative data
measurements;
a media manager to manage bandwidth and multicast address assignment and to
export interfaces used to configure and retrieve the actual telemetry data;
a capture manager to manage stream objects, wherein each stream object is to
send a stream relating to the event;
a controller to communicate announcements regarding the event via an exported
internal interface; and
a gaming application utilizing the actual telemetry data to provide a viewing
experience of the event comprising viewing shots and angles not covered by cameras at
the event.
The Examiner relies on the following prior art:
Anderson 5,714,997 Feb. 03, 1998
Khosla 6,080,063 Jun. 27, 2000
(filed Jan. 06, 1997)
Riggins, III (Riggins) 6,195,090 Feb. 27, 2001
(filed Feb. 24, 1998)
Claims 1-16 and 18-25 stand finally rejected under 35 U.S.C. § 112, first paragraph, as
being based on an inadequate disclosure. Claims 1-16 and 18-25 further stand finally rejected
under 35 U.S.C. § 102(e) as being anticipated by any one of, in the alternative, Riggins, Khosla,
or Anderson.
Appeal No. 2006-1597
Application No. 09/218,822
The Appeal Brief was filed March 7, 2005. In response to the Examiner’s Answer1
mailed June 3, 2005, a Reply Brief was filed August 5, 2005, which was acknowledged and
entered by the Examiner as indicated in the communication dated November 2, 2005.
3
Rather than reiterate the arguments of Appellants and the Examiner, reference is made to
the Briefs and Answer for the respective details.1
OPINION
We have carefully considered the subject matter on appeal, the rejections advanced by the
Examiner, the arguments in support of the rejections and the evidence of anticipation relied upon
by the Examiner as support for the prior art rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, Appellants’ arguments set forth in the Briefs along
with the Examiner’s rationale in support of the rejections and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us, that Appellants’ specification in
this application describes the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. We are also of the opinion that the disclosures of any of the
Riggins, Khosla, and Anderson references do not fully meet the invention as recited in claims 1-
16 and 18-25. Accordingly, we reverse.
We consider first the Examiner’s assertion of lack of enablement of Appellants’
disclosure with respect to appealed claims 1-16 and 18-25 and note that, in order to comply with
the enablement provision of 35 U.S.C. § 112, first paragraph, the disclosure must adequately
describe the claimed invention so that the artisan could practice it without undue
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Application No. 09/218,822
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experimentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 305 (CCPA 1974); In re
Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293 (CCPA 1973); and In re Gay, 309 F.2d
769, 774, 135 USPQ 311, 316 (CCPA 1962). If the Examiner has a reasonable basis for
questioning the sufficiency of the disclosure, the burden shifts to Appellants to come forward
with evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232
(CCPA 1973), cert. denied, 416 U.S. 935 (1974); In re Brown, 477 F.2d 946, 950, 177 USPQ
691, 694 (CCPA 1973); and In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971).
However, the burden is initially upon the Examiner to establish a reasonable basis for
questioning the adequacy of the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ
561, 563 (CCPA 1982); In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976);
and In re Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
The Examiner has questioned (Answer, pages 3 and 4) the sufficiency of Appellants’
disclosure in describing the implementation of a system which incorporates a game player into a
real time interaction with events from which telemetry data has been collected. After careful
review of the arguments of record, however, we are in agreement with Appellants’ position as
stated in the Briefs. As asserted by Appellants (Brief, pages 14 and 15; Reply Brief, pages 1-3),
the Examiner, aside from a general allegation of insufficiency, has never specifically indicated
how Appellants’ disclosure would not be enabling with regard to the particular features recited in
the appealed claims.
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Further, our review of Appellants’ specification (e.g., page 7, line 7 through page 8, line
7) finds an ample description of the operations of the claimed media manager which operates to
manage address assignments as well as to export the necessary interfaces to configure the system
to receive telemetry data. This same portion of the specification also provides a disclosure of the
claimed capture machine manager, stream sender, and serve controller.
In view of the above, since we find that the Examiner has not established a reasonable
basis for challenging the sufficiency of the instant disclosure with respect to the appealed claims,
we will not sustain the rejection of claims 1-16 and 18-25 under the enabling clause of the first
paragraph of 35 U.S.C. § 112.
We consider next the rejection of claims 1-16 and 18-25 under 35 U.S.C. § 102(e) as
being anticipated by Riggins. Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984).
With respect to the appealed independent claims 1, 14, and 20, the Examiner attempts to
read the various limitations on the disclosure of Riggins. In particular, the Examiner directs
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attention (Answer, pages 4 and 5) to various portions of columns 2, 5, 8, 9, and 12 of Riggins as
well as the illustration in Riggins’ Figure 2.
Appellants’ arguments in response assert that the Examiner has not shown how each of
the claimed features is present in the disclosure of Riggins so as to establish a case of
anticipation. In particular, Appellants contend (Brief, pages 16 and 17; Reply Brief, pages 3 and
4)) that, in contrast to the claimed invention, Riggins does not disclose a media manager which
adjusts bandwidth and multicast address assignments as well as exports interfaces for configuring
the system to receive telemetry data.
After reviewing the Riggins reference in light of the arguments of record, we are in
general agreement with Appellants’ position, as stated in the Briefs, that the Examiner has never
attempted to show how each of the claim limitations is suggested by the teachings of the applied
prior art. In particular, we agree with Appellants that the Examiner has made no attempt at
addressing the specific language of the claims. For example, while the Examiner points to the
portions of Riggins at column 2, line 45 through column 3, line 43, column 4, lines 6-67, and
column 6, lines 13-34 and the collection station 17, we find no disclosure which corresponds to
the claimed bandwidth management, multicast address assignment, and interface exporting
operations. It is further our view that, to whatever extent the Examiner is suggesting that the
operations associated with the claimed media manager are “inherent” in the system of Riggins,
any suggestion of inherency with regard to the existence of these operations in Riggins is simply
not supported by any disclosure in the Riggins reference. To establish inherency, evidence must
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make clear that the missing descriptive matter is necessarily present in the thing described in the
reference and would be recognized as such by persons of ordinary skill. In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency,
however, may not be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” Id. citing Continental, 948
F.2d at 1269, 20 USPQ2d at 1749.
In view of the above discussion, since all of the claim limitations are not present in the
disclosure of Riggins, we do not sustain the Examiner’s 35 U.S.C. § 102(e) rejection of
independent claims 1, 14, and 20, nor of claims 2-13, 15, 16, 18, 19, and 21-25 dependent
thereon.
Turning to a consideration of the Examiner’s 35 U.S.C. § 102(e) rejection of appealed
claims 1-16 and 18-25 based on each one of Khosla and Anderson, we do not sustain these
rejections as well. In our view, the Examiner’s stated rejections based on Khosla and Anderson
suffer the same deficiencies as discussed supra with regard to Riggins.
We don’t necessarily disagree with the Examiner’s summation of the operation of the
systems of Khosla and Anderson, both of which generally involve the capturing of data
associated with a live event and transporting the captured data to a game player permitting
interaction with an event simulation. We find no indication, however, from the Examiner as to
how such summation would satisfy the language of the appealed claims. As previously discussed
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with regard to the Examiner’s rejection based on Riggins, each of the appealed independent
claims 1, 14, and 20 sets forth a specific combination involving a media manager, which, inter
alia, operates to export configuration interfaces, a capture manager, and a controller which
communicates over exported internal interfaces. While the Examiner (Answer, pages 5, 6, and
13-16) makes reference to various portions of the applied Khosla and Anderson references in
asserting that the claimed features are allegedly disclosed by the prior art, the Examiner has made
no attempt to explain how the features described in the references correspond to the claimed
features, let alone how such features might interact in the specific manner set forth in the
appealed claims.
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Application No. 09/218,822
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In summary, we have not sustained any of the Examiner’s rejections of the claims on
appeal. Therefore, the decision of the Examiner rejecting claims 1-16 and 18-25 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
)BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge )INTERFERENCES
)
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
JFR/rwk
Appeal No. 2006-1597
Application No. 09/218,822
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