Ex Parte Pearson

Board of Patent Appeals and Interferences

Mar 30, 2007

09669087 (B.P.A.I. Mar. 30, 2007)

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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CARL P. PEARSON
____________________

Appeal 2007-0754
Application 09/669,087
Technology Center 3700
____________________

Decided: March 30, 2007
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Before MURRIEL E. CRAWFORD, STUART S. LEVY, and LINDA E.
HORNER, Administrative Patent Judges.

LEVY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellant invented a video game system using trading cards.
(Specification 3). A video game features characters on the trading cards. A
control system carrying out the game controls a screen in accordance with a
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software program and in accordance with the character information
associated with the trading cards selected by the players of the game.
Claim 1 is representative of the claims on appeal and reads as follows:
1. A video game system using trading cards,
comprising:

a local electronic game system for use with a video
screen for displaying the playing of a selected video game featuring
characters on trading cards, the characters having associated character
information, including characteristics which define the playing of the
game, the electronic game system including a control system for
carrying out the video game and controlling the display on the screen
in accordance with a stored software program and in accordance with
the character information associated with the trading cards selected by
the players of the game for use in the game;

trading cards having characters indicated thereon for
playing the video game;

an identification system for identifying the trading cards
selected by players for playing the video game;

a server control unit for connecting the local electronic
game system to a website at a remote location through a global
computer network; and

a processing system at the website for verifying that the
players of the video game have the right to use the selected trading
cars in the playing of the selected video game, wherein the website
includes means for storing information associated with the characters
on said trading cards and for downloading said information to the
video game control system, which includes means for receiving said
downloaded information and which is capable of using said
downloaded information and said associated character information
from the trading cards to carry out the video game after the selected
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trading cards have been identified and the player’s rights to use the
selected trading cards have been verified.

The Examiner rejected claims 1 to 28 under 35 U.S.C. § 103(a) (2004)
as being unpatentable over Peppel in view of Sehr and Pearson.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pearson US 5,411,259 May 2, 1995
Peppel US 6,200,216 B1 Mar. 13, 2001
Sehr US 6,325,292 B1 Dec. 4, 2001

With respect to claims 1-22, Appellant contends (Br. 3-4) that Peppel
does not teach that the information stored on the remote website associated
with a character on a selected trading card is "downloaded directly into the
control system of the local electronic game system." Appellant states that
"[t]he character information used in Pepple [sic, Peppel] for carrying out the
video game comes into play only from the medium of the ETCs themselves
(the trading cards)," whereas Appellant's system is capable of using both
downloaded information from a website and information on a trading card to
carry out the game. (Id.). Appellant contends (id.) that Sehr does not teach
this feature. Appellant further contends (Br. 3-4) that there is no teaching in
Peppel of verifying that individual players have the right to use the trading
card selected by the player for playing the video game. With respect to
claims 23-28 Appellant contends the he has claimed a single, stand-alone
configuration of a video game using trading cards, and that the Examiner has
not cited any reference which discloses or suggests any such arrangement.
(Br. 5-6).
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The Examiner contends that it would have been obvious to combine Peppel
with the security and authentication programs of Sehr and the media
structure of Pearson (Answer 5). The motivation provided by the Examiner
is that Peppel states that his system is for disassociated consumer media; i.e.,
multimedia products that allow customers to browse, create, collect, and
exchange, as well as play games (Answer 4).

We AFFIRM-IN-PART.

ISSUE
Has Appellant shown that the Examiner erred in holding that the
combined teachings and suggestions of Peppel, Sehr, and Pearson would
have suggested to an artisan the invention of claims 1-28? With respect to
claims 1-22, the issue turns on whether the references teach or suggest
verifying that the players have the right to use the selected trading card in
the playing of the video game, and whether the prior art teaches or suggests
that the website includes means for downloading information associated
with the characters on the trading cards to the video game control system, as
required by claim 1. With regard to claims 23-28, the issue turns on whether
the prior art would have suggested combining the electronic game system,
video screen, and trading card reader into a "single, stand-alone unit."

FINDINGS OF FACT
Based upon a preponderance of the evidence, we make the following
findings of fact:
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1. Appellant invented a video game system using characters
featured on trading cards. A control system carries out the
game in accordance with a stored software program and in
accordance with the character information associated with
the trading cards selected by the players of the game for use
in the game. A website stores information associated with
the characters in said trading cards and downloads the
information to the video game control system, after the
trading cards have been identified and verified, for playing
the video game. (Specification 3).
2. Peppel is directed to an electronic trading card. (Peppel, col.
1, l.1).
3. The invention of Peppel provides electronic hardware and
software architecture for electronic trading cards (ETCs).
(Peppel, col. 4, ll. 50-52).
4. Peppel discloses that the components function together as a
system that supports activities such as game playing with
electronic trading cards. (Peppel, col. 4, ll. 51-58).
5. Peppel discloses that single or multiple ETCs may be copied
onto writable media. (Peppel, col. 8, ll. 60-61).
6. ETC adventure games are similar in structure to existing
video and computer games except that the ETCs move the
action forward and can generate ETCs in the course of a
game. (Peppel, col. 10, l. 66-col. 11, l. 3).
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7. Sehr is directed to a card system and methods utilizing
collector cards. (Sehr, col. 1, ll. 1-2).
8. Sehr discloses that the cardholder can exchange data with
remote databases, as well as update or manipulate data
stored in the card. (Sehr, col. 3, ll. 42-47).
9. Collector card 11 of Sehr comprises a handheld card device
that is used by the cardholder to store collectible
information, request various services, and pay for the
purchase of goods and services. The collector card includes
smart cards that have the shape of credit cards and have an
embedded circuit. The collector cards can further include
handheld terminals or any pocket-sized computer
configurations. The embedded circuits give the cards
database storage means, processing means and display
means. Card data can be retrieved or loaded into the card by
a card read/write device. (Sehr, col. 5, ll. 43-59).
10. In Sehr, biometrics are used to verify if a cardholder is
legitimate. (Sehr, col. 6, ll. 15-17).
11. The database of Sehr includes the cardholder identification
number. (Sehr, col. 7, ll. 13-16).
12. Full-motion video segments can be retrieved and stored in
the card. (Sehr, col. 10, ll. 23-25).
13. The method of Sehr includes verifying the identity of the
cardholder. (Sehr, col. 11, ll. 66-67).
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14. To ensure that the cardholder in Sehr is entitled to receive
the requested service, the identity of the cardholder can be
verified. (Sehr, col. 16, l. 66-col. 17, l. 1).
15. Pearson is directed to a video sports game system using
trading cards. (Pearson, col. 1, ll. 1-2).
16. In Pearson, trading card elements have input data stored
thereon concerning performance information of players in
the video game. The information can be read by a card
reader. (Pearson, col. 1, ll. 61-64).
17. As shown in figure 1 of Pearson, the monitor 14, card reader
22, and control system 12 are separate elements.

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the applied prior art. Appellant may sustain this burden by showing that,
where the Examiner relies on a combination of disclosures, the Examiner
failed to provide sufficient evidence to show that one having ordinary skill
in the art would have done what Appellant did. United States v. Adams, 383
U.S. 39, 48, 148 USPQ 479, 482 (1966); In re Kahn, 441 F.3d 977, 987-88,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick, Co., 464 F.3d 1356, 1360-61, 80 USPQ2d
1641, 1645 (Fed. Cir. 2006). The mere fact that all the claimed elements or
steps appear in the prior art is not per se sufficient to establish that it would
have been obvious to combine those elements. United States v. Adams, id;
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Smith Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51
USPQ2d 1415, 1420 (Fed. Cir. 1999).
ANALYSIS
We begin with claims 1-22. Appellant argues these claims as a group.
Accordingly, we select claim 1 as representative of the group. We note at
the outset that Appellant does not dispute the combinability of the
references, but rather argues to the effect that the combined teachings of the
prior art would not result in the claimed invention. From facts 13 and 14 we
find that Sehr suggests verifying the identity of the cardholder, as well as
verifying that the cardholder is entitled to receive the requested service.
However, although Sehr describes downloading full motion video segments
that can be retrieved and stored in the card (fact 12), we find no disclosure in
Sehr of using the trading cards with video games, and no teaching of this has
been pointed to by the Examiner. Nor do we find in Sehr any teaching or
suggestion of downloading from a website any information to a video game
control system.
With respect to Peppel and Pearson, although these references are
directed to trading cards used with video games, we find no teaching or
suggestion in either reference of downloading from the processing system at
the website information associated with the characters on the trading cards,
to the video game control system. The Examiner has not pointed to any
description in the applied prior art for this claimed feature. In response to
Appellant's assertion (Br. 4-5) that this feature is not suggested, the
Examiner's response (Answer 7) is that Peppel teaches media and platform
independence, and refers to columns 3-5 of Sehr for a teaching of updating a
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card through a remote database. Firstly, the Examiner's broad reference to
columns (instead of col./line) of the reference is not helpful to us in deciding
this appeal. Secondly, a description of media and platform independence
does not address downloading to the video game control system. Thirdly,
the fact the Sehr describes downloading to the card is not a description or
suggestion of downloading to the video game control system, because the
claims require downloading to the video game control system, not to the
trading card.
From all of the above, we agree with Appellant that the teachings and
suggestions of the prior art fall short of suggesting all of the limitations of
claim 1. It follows that we cannot sustain the rejection of claims 1-22.
We turn next to claims 23-28. Appellant's arguments are directed to
claim 23. Accordingly, we select claim 23 as representative of the group.
From fact 9, we find a description in Sehr of the card being a handheld
computing device. However, we find no description in Sehr that the card
read/write device will be part of the handheld device. However, claim 23 is
not specific as to how the components of the game system, display and card
reader are integrated into a single, stand-alone unit. In the absence of
solving any problem in the art or the recitation of any unobvious structure,
we find that to make integral, or in one piece that which was known to be
made in plural pieces would have been obvious to an artisan. See In re
Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Accordingly, we find that to make the card reader, display and game system
as a single, stand-alone unit, would have been within the level of ordinary
skill of an artisan. It follows that we are not convinced of any error on the
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part of the Examiner in rejecting claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over the teachings and suggestions of Peppel, Sehr, and
Pearson. The rejection of claims 23-28 is sustained.

CONCLUSION OF LAW
Appellant has met his burden of establishing that the Examiner erred
in rejecting claims 1-22 under 35 U.S.C. § 103(a). Appellant has not met his
burden of showing the Examiner erred in rejecting claims 23-28 under 35
U.S.C. § 103(a).

DECISION
The Examiner's rejection of claims 1-22 is reversed. The Examiner's
rejection of claims 23-28 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) (2006).
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AFFIRMED-IN-PART

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