Ex Parte Kouhi

Patent Trial and Appeal Board

Oct 9, 2015

12469217 (P.T.A.B. Oct. 9, 2015)

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.
12/469,217 05/20/2009 Ross George Kouhi 23222-US 1486
23553 7590 10/09/2015
MARKS & CLERK
P.O. BOX 957
STATION B
OTTAWA, ON K1P 5S7
CANADA
EXAMINER
COLEMAN, WILLIAM D
ART UNIT PAPER NUMBER
2823
MAIL DATE DELIVERY MODE
10/09/2015 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 ROSS GEORGE KOUHI
____________

Appeal 2013-008795
Application 12/469,217
Technology Center 2800
____________
Before CHUNG K. PAK, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1‒23 of Application 12/469,217
under 35 U.S.C. § 103(a) as obvious, 35 U.S.C. § 112, ¶ 1 as not enabled,
under 35 U.S.C. § 112, ¶ 2 both as not directed to the subject matter that the
inventor regards as the invention and as indefinite. Final Act. (October 4,
2012). Appellant seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Appeal 2013-008795
Application 12/469,217
2
BACKGROUND
The ’217 Application describes methods for capturing, encoding, and
recording an activity such as a sporting event and sharing it with an audience
over a network. Spec. ¶ 1.
Claims 1 and 15 are representative of the ’217 Application’s claims
and are reproduced below:
1. A method of generating a game play file describing an
event, the method comprising:
capturing aspects of the event using a graphic user
interface;
generating a plurality of game activity messages, each of
which describes one of the captured aspects of the event; and
assembling the plurality of game activity messages into a
game play file.
App. Br. Claims App’x I.
15. A method by which an end user device displays game
play information, comprising:
identifying an event to a server;
retrieving game activity messages from the server for the
event, at least some of the game activity messages including a
position, a timestamp, and an identification of an element;
displaying a representation of a field of play and at least
one icon, each icon representing a different element; and
moving the at least one icon on the representation of the
field of play in accordance with the game activity messages.
App. Br. Claims App’x III.
Appeal 2013-008795
Application 12/469,217
3
REJECTIONS
On appeal, the Examiner maintains the following rejections:1
1. Claims 1‒23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lutnick2 and Kammler.3 Final Act. 7.
2. Claims 1‒23 are rejected under 35 U.S.C. § 112 ¶ 1 as based on a
disclosure which is not enabling. Final Act. 16.
3. Claims 1‒23 are rejected under 35 U.S.C. § 112 ¶ 2 as failing to set
forth the subject matter which applicant regards as his invention.
Final Act. 16.
4. Claims 1‒23 are rejected under 35 U.S.C. § 112 ¶ 2 as indefinite.
Final Act. 17.
DISCUSSION
Rejection 1. Appellant argues for reversal of this rejection with
respect to four groups of claims: (i) claims 1‒8 and 10‒14, Br. 7‒10;
(ii) claim 9, id. at 10‒11; (iii) claims 15 and 21, id. at 11‒13; and (iv) claims
16‒20, 22, and 23, id. at 13‒14. We address Appellant’s arguments
regarding each group of claims in turn.

1 In the Final Action, the Examiner also objected to the ’217 Application’s
drawings. Final Act. 17‒18. Appellant argues that this objection is
improper, Br. 17, and the Examiner includes the objection in the Answer,
see Ans. 14‒15. Appellant’s argument is misdirected. We lack jurisdiction
to review the propriety of an Examiner’s objections. See 35 U.S.C. §§ 6(b),
134(a) (granting PTAB jurisdiction to review rejections). Objections or
other requirements imposed by an Examiner are reviewed by way of a
petition to the Director under Rule 181. 37 C.F.R. § 1.113(a) (2013).
2 US 2009/0093300 A1, published April 9, 2009.
3 US 2009/0233707 A1, published September 17, 2009.
Appeal 2013-008795
Application 12/469,217
4
Claims 1‒8 and 10‒14. Appellant argues for reversal of the rejection
of these claims as obvious based upon the limitations of independent claim 1
and does not present substantive argument with respect to dependent claims
2‒8 and 10‒14. The dependent claims, therefore, stand or fall with
representative claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Appellant argues that the rejection of claim 1 as unpatentable over the
combination of Lutnick and Kammler should be reversed because the
Examiner did not establish a case of prima facie obviousness.4 See Br. 7‒10.
For the reasons set forth below, we agree with Appellant.
Claim 1 recites a method that includes the step of “capturing aspects
of the event using a graphic user interface.” In rejecting claim 1, the
Examiner found that “Lutnick discloses a method of generating a game play
file substantially as claimed. See FIGS. 1‒61, where Lutnick would suggest
the following limitations. . . . capturing aspects of the event using a graphic
user interface (see paragraph [211]).” Final Act. 7‒9. In response to

4 Appellant also repeatedly complains that the Response to Argument
section of the Final Action cites portions of Lutnick and Kammler not
previously cited. E.g., Br. 7‒8. Appellant states that “a Final Action is
therefore improper.” Id. at 7. Appellant’s complaint regarding the alleged
premature finality of the Examiner’s rejection is both unpersuasive and
misdirected:
Any question as to prematureness of a final rejection
should be raised, if at all, while the application is still pending
before the primary examiner. . . . It may therefore not be
advanced as a ground for appeal, or made the basis of
complaint before the Board of Patent Appeals and
Interferences. It is reviewable by petition under 37 CFR
[§] 1.181. See MPEP § 1002.02(c).
MPEP § 706.07(c) (8th ed., rev. 9 August 2012) (emphasis added).
Appeal 2013-008795
Application 12/469,217
5
Appellant’s arguments, the Examiner also cited ¶ 121 of Lutnick as
supporting this finding of fact. Id. at 3‒4.
The Examiner’s finding that the cited portions of Lutnick describe or
suggest the step of “capturing aspects of the event using a graphic user
interface” constitutes reversible error. The cited portions of Lutnick do not
describe the recited step to a person of ordinary skill in the art at the time of
the invention. Nor does the Examiner explain adequately how or why these
portions of Lutnick would have suggested the claimed step to such a person.
Paragraph 211 of Lutnick does not describe the capture of any aspect
of the event using a graphic user interface. Rather, this portion of Lutnick
describes the display of playing cards used in a game of chance (e.g.,
blackjack or poker). Lutnick ¶ 211.
Nor does ¶ 121 of Lutnick describe the claimed step. Rather, this
portion of Lutnick describes a terminal used to show information to a player
that may be equipped with any of a variety of input devices. Lutnick ¶ 121.
Although a person of ordinary skill in the art might infer the use of a graphic
user interface from some of the input devices, the Examiner did not argue
that such an inference supports the finding that Lutnick describes or suggests
the claimed step.5

5 The Examiner also stated that ¶ 121 is under the heading “Reconstructing
An Event With Graphics.” Final Act. 3‒4. This, too, is erroneous, although
not reversibly so. Paragraph 121 is part of the following section of
Lutnick’s Specification, which is headed “Showing Information to a Player
at a Table.” Furthermore, the methods used to capture gaming events
described in the section preceding ¶ 121 do not use a graphic user interface.
See Lutnick ¶ 114.
Appeal 2013-008795
Application 12/469,217
6
Finally, the Examiner’s blanket citation of Lutnick’s 61 figures cannot
constitute adequate support for this finding. Such a generic citation does not
provide an applicant with adequate notice about the basis of the rejection.
While factual support for the Examiner’s rejection might be found in
Lutnick’s figures, the Examiner cannot require an applicant to hunt through
a mass of generically cited material and guess the Examiner’s basis for a
rejection. Nor will this Board do so, because we review rejections. While
we may enter new grounds of rejection, see 37 C.F.R. § 41.50(b), we are not
required to—and generally will not—do so.
For the reasons set forth above, we reverse the rejection of claims 1‒8
and 10‒14 of the ’217 Application.
Claim 9. Claim 9 ultimately depends from claim 1. Because we have
reversed the rejection of claim 1 as unpatentable over the combination of
Lutnick and Kammler, we also reverse the rejection of claim 9.
Claims 15 and 21. Appellant argues for reversal of the rejection of
claims 15 and 21 on the basis of claim 15’s limitations. See Br. 13. We,
therefore limit our discussion to claim 15; claim 21 will stand or fall with
claim 15. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the rejection of claim 15 should be reversed
because the Examiner has not established a prima facie case of obviousness.
Br. 11‒13. For the reasons set forth below, we agree with Appellant.
Claim 15 is directed to a method for displaying game play information
on an end-user device and includes the step of “moving the at least one icon
on the representation of the field of play in accordance with the game
activity messages.” The Examiner found that “Lutnick would suggest” the
claimed step. Final Act. 14. Appellant argues that the Examiner failed to
identify the portion of Lutnick that describes or suggests this step. Br. 12‒
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Application 12/469,217
7
13. The Examiner appears not to have responded to this argument. See
Final Act. 6. The Examiner, therefore, has not identified factual support for
the finding that the prior art describes or suggests the recited step.6
For the reasons set forth above, we reverse the rejection of claims 15
and 21.
Claims 16‒20, 22, and 23. Claims 16‒20, 22, and 23 ultimately
depend from claim 15. Because we have reversed the rejection of claim 15
as unpatentable over the combination of Lutnick and Kammler, we also
reverse the rejection of these claims.
Rejection 2. The Examiner rejected claims 1‒23 as not enabled. In
particular, the Examiner concluded that
“Game Activity Message[,]” [sic, which is] critical or essential
to the practice of the invention[] but not included in the
claim(s)[,] is not enabled by the disclosure. . . . Applicants use
the term GAM without providing any particular message. The
only messages that can be understood from Applicants
disclosure are “HIGHLIGHT”, “VIEW HIGHLIGHT” and
“ADVERTISEMENT”. It is not clear as to if these terms are a
figure of speech or are they to be taken literally. Correction is
required.. [sic]
Final Act. 16 (emphasis added).

6 The Examiner cited ¶¶ 114‒121 of Lutnick as describing the limitation of
displaying a representation of a field of play and of at least one icon. Final
Act. 6. We might infer that the Examiner intended this citation as also
supporting the finding regarding the next step in claim 15. If we were to do
so, however, the Examiner has not explained how the high level description
contained in this portion of Lutnick describes or suggests the recited step.
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Application 12/469,217
8
In fact, Appellant has provided an enabling description of the term
“Game Activity Message.” See, e.g., Spec. ¶¶ 25, 32‒35; Fig. 3. We
reverse this rejection.
Rejections 3 and 4. The Examiner rejected claims 1‒23 for failing to
comply with 35 U.S.C. § 112, ¶ 2. Final Act. 16‒17. These rejections are
based upon the Examiner’s stated inability to interpret the claim term “Game
Activity Message.”
We reverse these rejections. Appellant’s Specification allows a
person of ordinary skill in the art to interpret this term. See, e.g., Spec.
¶¶ 25, 32‒35; Fig. 3. It is clear that Appellant intends for their claims to
have a broad scope. See, e.g., Spec. at ¶ 59 (defining the terms game, sports
event, or competition as “refer[ring] to any event which involves a progress
of actions or movements culminating in a conclusion, whether competitive
or demonstrational, professional or amateur, human or animal.”). Breadth,
whether of disclosure or claim scope, does not require the conclusion that an
application’s claims are indefinite. In re Miller, 441 F.2d 689, 693 (CCPA
1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not
indefiniteness.”).
We, therefore, reverse the rejections of claims 1‒23 under § 112, ¶ 2.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1‒
23 of the ’217 Application.
REVERSED

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