12595298 (P.T.A.B. Oct. 22, 2018)

Ex Parte Kataoka et al

Patent Trial and Appeal BoardOct 22, 2018

12595298 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/595,298 11/24/2009 27538 7590 10/24/2018 Gibson & Dernier LLP 89 Headquarters Plaza North PMB 1469 Morristown, NJ 07960 FIRST NAMED INVENTOR Yumi Kataoka 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 545/185 2067 EXAMINER HUANG, TSAN-YU J ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 10/24/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): info@gdiplaw.com cmburgos@gdiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte YUMI KATAOKA and SHINICHI TANAKA Appeal2017-004620 1 Application 12/595,2982 Technology Center 3600 Before MEREDITH C. PETRA VICK, MICHAEL C. ASTORINO, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 25, 26, and 28-31. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed March 23, 2016) and Reply Brief ("Reply Br.," filed January 23, 2017), and the Examiner's Answer ("Ans.," mailed December 16, 2016), Advisory Action ("Adv. Act.," mailed January 5, 2016), and Final Office Action ("Final Act.," mailed November 2, 2015). 2 Appellants identify Sony Computer Entertainment Inc. as the real party in interest. App. Br. 2. Appeal2017-004620 Application 12/595,298 CLAIMED INVENTION Appellants' claimed invention "generally relates to information processing technology," and more particularly, to "information processing technology utilized in a game system comprising a plurality of game devices" (Spec. ,r 1 ). Claim 25, reproduced below with bracketed notations added, is the sole independent claim, and representative of the subject matter on appeal: 25. A game system, comprising: [(a)] a game console; and [(b)] a mobile game device, wherein [ ( c)] the game console and the mobile game device share an image file of a game program, and each includes a respective emulator program for reading and facilitating the execution of the image file of the game program, [ ( d)] at least one of the game console and the mobile game device are of a type not having a memory card interface for an external memory storage medium, [( e )] the game program is written in such a way that save data of a game is to be stored in the external memory storage medium, [(f)] the image file of the game program includes code that generates a virtual external memory storage medium that appears to the game program as if to be the external memory storage medium, and [ (g)] the game console and the mobile game device are connected via a wire or wirelessly so as to be able to replicate the save data of the game program from one of the game console and the mobile game device to the other of the game console and the mobile game device. REJECTIONS Claims 25, 26, and 29 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Guruparan (US 2007/0021216 Al, pub. Jan. 25, 2007), 2 Appeal2017-004620 Application 12/595,298 Best (US 7,278,031 B 1, iss. Oct. 2, 2007), Yoshino (US 2006/0094512 Al, pub. May 4, 2006), Connors (US 6,338,680 Bl, iss. Jan. 15, 2002), and Breckner et al. (US 2007/0067768 Al, pub. Mar. 22, 2007) ("Breckner"). Claim 28 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Guruparan, Best, Yoshino, Connors, Breckner, and Gatto et al. (US 2006/0160626 Al, pub. July 20, 2006) ("Gatto"). Claim 30 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Guruparan, Best, Yoshino, Connors, Breckner, and Sawano et al. (US 2001/0039212 Al, pub. Nov. 8, 2001) ("Sawano"). Claim 31 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Guruparan, Best, Yoshino, Connors, Breckner, and Ginter et al. (US 2002/0112171 Al, pub. Aug. 15, 2002) ("Ginter"). ANALYSIS In rejecting independent claim 25 underÂ§ 103, the Examiner cites Guruparan as disclosing a game device comprising a mobile device and a game console, "connected via a wire or wirelessly so as to be able to replicate save data ... from one ... to the other," i.e., limitations (a), (b), and (g), as recited in the claims (see Final Act. 5---6 ( citing Guruparan ,r,r 11, 18, 2 5)). The Examiner relies on Best, Yoshino, and Connors as disclosing various other limitations (id. at 6-9); but, the Examiner acknowledges that the combination of Guruparan, Best, Yoshino, and Connors does not explicitly teach an image file, as called for in claim 25 (id. at 9). The Examiner identifies Breckner' s ISO 9660 file (id. ( citing Breckner ,r,r 13, 17) as corresponding to the claimed image file. And the Examiner concludes that it would have been obvious to a person of ordinary 3 Appeal2017-004620 Application 12/595,298 skill in the art at the time of Appellants' invention to substitute the Breckner ISO 9660 file for Guruparan's game state data file because an image file is merely a "specific version" of a data file and would not change the functionality of Guruparan (id. at 9--10). During prosecution of the present application, Appellants filed an Amendment on October 2, 2012, including a supporting declaration of inventor, Yumi Kataoka. In their "Remarks," Appellants describe differences between an image file and save data of a game, namely, that an image file includes the complete memory content of a memory medium on which the game program is stored whereas save data of a game are data specific to the execution of the game program by a user, which contain the state of the game in play (see Oct. 2, 2012 Amendment 7). Mr. Kataoka, in his declaration, also opines that a designer would not consider employing an ISO image file to carry over game state information from a game console to a mobile game device; instead, according to Mr. Kataoka, those skilled in the art would treat an ISO image file and a game state information file as completely different files, which are not capable of simply being substituted one for the other (Kataoka Deel. ,r,r 9, 10). The Examiner does not address the Kataoka Declaration either in the Final Office Action or in the Examiner's subsequent January 5, 2016 Advisory Action. However, in the Advisory Action, the Examiner disagrees that an image file and save game data are different, and asserts, "[ a ]n ISO file is an image of a CD/DVD that contains a collection of data. In regards to gaming, the collection of data can include game state data" (Adv. Act 2). The Examiner's sole consideration of the Kataoka Declaration appears in a 1\tfisce11aneous Communication mailed l\1arch 18, 2016. There, the 4 Appeal2017-004620 Application 12/595,298 Examiner acknowledges l\!1r. Kataoka's contention that it is improper to substitute the Breckner ISO 9660 image file for Gun1paran' s game state data file. But the Examiner takes the position that the Final Office Action does not propose that substitution: In the [Atlidavit] filed 10/2/12, Yumi Kataoka contends that it is improper to substitute the ISO 9660 image file of Breckner for the game state data file of Guruparan. However, the Final Rejection filed 11/2/15 does not attempt to perform such [a] substitution. Rather, the Final Rejection (Paragraphs 14-15) substitutes the I SO 9660 image file of Breckner for the game software executable binary image of Yoshino (i.e. the term "game program" in the limitation "the game console and the mobile game device including a respective ernu1ator program for reading and facilitating the execution of the game program"). The Examiner, thus, maintains in the l\1iscellaneous Communication that the Final Office Action substitutes the ISO 9660 image file of Breckner for the game software executable binary image of Yoshino, rather than for .__., ... '-- Â·' Guruparan's game state data file. Yet, as described above, the Examiner, in the January 5, 2016 Advisory Action, explicitly rejects Appellants' argument that an ISO image file cannot be substituted for a game state data file: Applicant contends an image file and a save data of a game are fundamentally different, and as a result an ISO image file cannot be substituted for a game state data file. The Examiner respectfully disagrees. An ISO file is an image of a CD/DVD that contains a collection of data. In regards to gaming, the collection of data can include game state data. Adv. Act. 2. The Examiner also expresses this same disagreement, in responding to Appellants' arguments in the Answer, without any mention of the Kataoka Declaration: Appellant contends the substitution of the game state data file of Guruparan for the IS09660 image file of Breckner is improper. The Examiner respectfully disagrees. An ISO file is 5 Appeal2017-004620 Application 12/595,298 an image that contains a co 11 ection of data. In the context of gaming, the collection of data can include game state data. Ans. 3. The law is clear that ''[a]fter a prima facie case of obviousness has been made and rebuttal evidence submitted, all the evidence must be considered anew." In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990) (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)); Piasecki, 7 45 F .2d at 14 72 ("Prima facie obviousness is a legal conclusion, not a fact. Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself" ( citations omitted)). Appellants place considerable reliance on the Kataoka Declaration to overcome the prima facie case. Yet, it clearly appears that the Examiner never properly addressed the declaration. Whether the claimed invention would have been obvious cannot be detennined without considering evidence attempting to rebut the prima facie case. The Examiner's treatment of the Kataoka Declaration is improper in that the Examiner has not reweighed the merits of the rejection in light of the declaration. Because the Examiner did not properly consider the submitted evidence, we do not sustain the Examiner's rejections of claims 25, 26, and 28-31 under 35 U.S.C. Â§ 103(a). DECISION The Examiner's rejections of claims 25, 26, and 28-31 under 35 U.S.C. Â§ 103(a) are reversed. REVERSED 6