Ex Parte Pisarsky

Board of Patent Appeals and Interferences

May 24, 2007

10066110 (B.P.A.I. May. 24, 2007)

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for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte VLADIMIR R. PISARSKY
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Appeal 2007-2005
Application 10/066,110
Technology Center 3700
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Decided: May 24, 2007
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and
ANTON W. FETTING, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
This appeal from the Examiner’s rejection of claims 15-25, 28, 29, and 31, the
only claims pending in this application, arises under 35 U.S.C. § 134. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6.

We AFFIRM.

Appeal 2007-2005
Application 10/066,110

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The Appellant has invented a way to automate standard game situations that
allow algorithmic solutions using a special computational unit, separate from the
main game platform. (Specification 2). An understanding of the invention can be
derived from a reading of exemplary claim 15, which is reproduced below.
15. A method for interacting with an electronic interactive game using
a game aid separate from the electronic interactive game, the method
comprising:
the game aid receiving output from a first player;
the game aid receiving data regarding a current state of the electronic
interactive game; and
the game aid generating one or more game input signals based on the
current state of the electronic interactive game and the output from the
first player, wherein the one or more game input signals provide
game-specific optimization data for the electronic interactive game.

This appeal arises from the Examiner’s Final Rejection, mailed July 18, 2005.
The Appellant filed an Appeal Brief in support of the appeal on January 9, 2006,
and the Examiner mailed an Examiner’s Answer to the Appeal Brief on May 15,
2006.
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PRIOR ART 1
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The prior art references of record relied upon by the Examiner in rejecting the
appealed claims are:
Rosenberg U.S. 6,366,272 B1 Apr. 2, 2002
(filed Nov. 3, 1999)
Perkins U.S. 2002/0165026 A1 Nov. 7, 2002
(filed May 1, 2001)
Yoshida EP 1 029 5691 A2 Aug. 23, 2000

REJECTIONS
Claims 15-18, 21, and 22 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Yoshida.
Claims 23, 24, 28, and 31 stand rejected under 35 U.S.C. § 103(a) as obvious
over Yoshida.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over Yoshida
and Perkins.
Claims 19, 20, and 25 stand rejected under 35 U.S.C. § 103(a) as obvious over
Yoshida and Rosenberg.

1 The Examiner incorrectly typed this as EP 1 029 559 A2 (Answer 4) – the 559 is
actually 569.
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ISSUES 1
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The Examiner finds that Yoshida discloses a method for enabling a user to
interact with an electronic game. Its game aid receives an output from a first
player. Data regarding a current state of the electronic game is received by the
game aid. One or more game input signals based on the current state of the
electronic interactive game and the output from the first player are generated by the
game aid. The one or more game input signals provide game-specific optimization
data for the electronic interactive game. (Answer 4). The Examiner states that no
patentable weight is afforded the preamble limitation of separation between the
game aide and the interactive game in method claim 15. (Answer 5).
The Examiner admits that Yoshida lacks a separate game aid device that is
operatively connected between the first input device and the game platform device
in system claim 23. The Examiner contends that that deficiency is overcome
because although Yoshida discloses that the CPU in the game platform device
performs all the calculations to generate the game signals, whether or not the CPU
is in the game platform device or a separate processing device does not affect the
overall outcome of the invention in that it still optimizes the game data for the
player no matter where the processing is conducted. The Examiner contends that
using multiple processors for certain applications where the workload can be
divided to avoid processing bottlenecks. Thus, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time the invention
was made that they could separate the processor in the game platform device into a
separate "game aid" device that is connected between a first input device and the
game platform device. (Answer 6).
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The Appellant contends that the preamble limitation in claim 15 calling for the
game aid to be separate and apart from the electronic interactive game is clearly a
structural limitation, and that it is permissible for a method claim to specify
structural limitations insofar as they relate to elements used to carry out the steps
of the method. The Appellant also contends that the final rejection does not
attempt to establish the obviousness of claim 23. (Br. 7).
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Thus, the issues pertinent to this appeal are
• Whether the rejection of claims 15-18, 21, and 22 under 35 U.S.C. § 102(b)
as anticipated by Yoshida is proper.
o In particular, how much patentable weight is to be afforded the
preamble limitation of separateness, and to the degree weight is
afforded, whether Yoshida is able to show that.
• Whether the rejection of claims 23, 24, 28, and 31 under 35 U.S.C. § 103(a)
as obvious over Yoshida is proper.
o In particular, whether the Examiner’s evidence concerning inserting a
separate processor is sufficient to demonstrate obviousness of the
invention as a whole.
• Whether the rejection of claim 29 under 35 U.S.C. § 103(a) as obvious over
Yoshida and Perkins is proper. The Appellant raises no contention
regarding this claim, and thus it stands or falls with its parent claim 23.
• Whether the rejection of claims 19, 20, and 25 under 35 U.S.C. § 103(a) as
obvious over Yoshida and Rosenberg is proper. The Appellant raises no
contention regarding these claims, and thus they stand or fall with their
parent claims 15 and 23.
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FACTS PERTINENT TO THE ISSUES 1
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The following Findings of Fact (FF), supported by a preponderance of
substantial evidence, are pertinent to the above issues.
01. Yoshida divides its processing into the separate processes shown in
Yoshida, fig. 3, viz. a test for the current state (S11, S12, and S13), a
process to input the operational information from the input devices, such
as steering wheel and brake (shown as S25, S21, S18, and S14, which
are collectively the same process as modified by the current state), a
process to modify the vehicle behavior operation in the game to assist
the operator (a game aide) (shown as S26, S23, S19, and S16, which are
collectively the same process as modified by the current state), and the
game process itself (shown as S27, S24, S20, and S17, which are
collectively the same process as modified by the current state).
02. The signals from the first three of these sets of processes feed into the
game process as shown in Yoshida, fig. 3. See also the narrative
describing the signal flow in Yoshida, fig. 3 (Yoshida, [0044]-[0088]).
03. Yoshida relies on multiple processors to divide up its processing. In
particular, Yoshida uses separate processors for geometry processing
(22), rendering processing (27) and audio processing (30) (Yoshida, fig.
1).

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PRINCIPLES OF LAW 1
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Claim Construction
We begin with the language of the claims. The general rule is that terms in
the claim are to be given their ordinary and customary meaning. Johnson
Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989, 50 USPQ2d 1607, 1610
(Fed. Cir. 1999). In the USPTO, claims are given their broadest reasonable
interpretation in light of the Specification as interpreted by one of ordinary skill in
the art.
[T]he Board is required to use a different standard for construing
claims than that used by district courts. We have held that it is error
for the Board to “appl[y] the mode of claim interpretation that is used
by courts in litigation, when interpreting the claims of issued patents
in connection with determinations of infringement and validity.” In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320 (Fed. Cir. 1989); accord
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023 (Fed. Cir. 1997)
(“It would be inconsistent with the role assigned to the PTO in issuing
a patent to require it to interpret claims in the same manner as judges
who, post-issuance, operate under the assumption the patent is
valid.”). Instead, as we explained above, the PTO is obligated to give
claims their broadest reasonable interpretation during examination.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 U.S.P.Q.2d

1827, 1830 (Fed. Cir. 2004).

“ [A] claim preamble has the import that the claim as a whole suggests for
it.” Bell Communications Research, Inc. v. Vitalink Communications Corp. , 55
F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed.Cir. 1995). If the claim preamble,
when read in the context of the entire claim, recites limitations of the claim, or, if
the claim preamble is “necessary to give life, meaning, and vitality” to the claim,
then the claim preamble should be construed as if in the balance of the claim.
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Kropa v. Robie , 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951). “If,
however, the body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble offers no distinct
definition of any of the claimed invention's limitations, but rather merely states, for
example, the purpose or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to constitute or explain
a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
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Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
compositions, either generically or as alternatives, the claim is deemed anticipated
if any of the structures or compositions within the scope of the claim is known in
the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
Cir. 2001). "The identical invention must be shown in as complete detail as is
contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9
USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required
by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is
not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990).
Obviousness
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A claimed invention is unpatentable if the differences between it and the prior
art are “such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
§ 103(a) (2000); In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citing Graham v.
John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham, the Court held that that
the obviousness analysis begins with several basic factual inquiries: “[(1)] the
scope and content of the prior art are to be determined; [(2)] differences between
the prior art and the claims at issue are to be ascertained; and [(3)] the level of
ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After ascertaining these
facts, the obviousness of the invention is then determined “against th[e]
background” of the Graham factors. Id. at 17-18.
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The Supreme Court has provided guidance for determining obviousness based
on the Graham factors. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82
USPQ2d 1385 (April 30, 2007). “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” id. 127 S. Ct. at 1739, 82 USPQ2d at 1395. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” id. 127 S. Ct. at 1741-42, 82 USPQ2d at 1397. “One of the ways in
which a patent’s subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” id. 127 S. Ct. at 1742, 82 USPQ2d
at 1397.
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ANALYSIS 1
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Claims 15-18, 21, and 22 rejected under 35 U.S.C. § 102(b) as anticipated by
Yoshida.
We note that the Appellant argues these claims as a group. Accordingly, we
select claim 15 as representative of the group.
The Examiner has set forth how Yoshida meets the elements of the body of
claim 1 and the Appellant do not contest these findings. The preamble of claim 15,
however, recites that the method is “using a game aid separate from the electronic
interactive game.” This separation is the matter under contention.
As the Appellant argues, such a structural limitation that limits the operation of
the method claim must be afforded patentable weight. And although the Examiner
has nominally indicated that no patentable weight was afforded, the Examiner’s
findings do imply that some weight was afforded, because the Examiner has found
that the game optimization signals are fed into the interactive game (Answer 4).
The issue turns thus on how broad the term “separate” is and whether the
processing shown in Yoshida, fig. 3, fits within the scope of this term when giving
it the broadest reasonable construction. As the Appellant notes, the preamble is
afforded weight where it breathes life and meaning into the claim. The only
portion of the claim that distinguishes the two parts that are to be separate, i.e. the
game aide and the interactive game, is the step that the game aid generates one or
more game input signals. Thus, separation is required to the extent that the game
aide produces output signals that are input to the game. The claim makes no
recitation as to whether the game or game aide are hardware or software, whether
they are processes or processors, or even the manner or degree of separation.
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Yoshida, fig. 3 clearly shows that the processes embodying the game aide
output signals that are input to the processes embodying the game itself (FF
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02).
Thus, in Yoshida, the game aide and the interactive game are separate to the extent
that the output signals of the game aide are input to the game, and we therefore
cannot find reversible error in the Examiner’s findings.
Accordingly we sustain the Examiner's rejection of claims 15-18, 21, and 22
under 35 U.S.C. § 102(b) as anticipated by Yoshida.

Claims 23, 24, 28, and 31 rejected under 35 U.S.C. § 103(a) as obvious over
Yoshida.
The Examiner has argued the notoriety of using multiple processors for certain
applications where the workload can be divided to avoid processing bottlenecks,
supra. Thus, the Examiner concluded that it would have been obvious to one of
ordinary skill in the art at the time the invention was made that they could separate
the processor in the game platform device into a separate "game aid" device that is
connected between a first input device and the game platform device. Yoshida
provides direct evidence of this notoriety in its own exploitation of specialized
processors to take on portions of the processing (FF03). Thus, Yoshida provides
evidence of a known problem of needing to share processing among specialized
processors and the solution of putting this processing in a separate processor that is
inserted within the overall process.
The claims would be invalid under §103 if the Examiner has provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82
USPQ2d 1385, (point cite) (2007) (quoting Kahn). For the foregoing reasons, we
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find that the Examiner has shown that Yoshida discloses each step of the claim and
its limitations and articulated an apparent reason with some rational underpinning
to arrive at the claimed invention from Yoshida. Appellant argues the significance
of a “separation” element alleged to be set forth in the preamble of the claims.
However, taking claim 23 as representative, no such preamble or “separation”
element is recited. Appellant has therefore not shown that the Examiner’s
reasoning is flawed. Since Appellant has moreover shown no secondary factors to
dislodge a determination that the claimed subject matter is obvious, we affirm the
rejection.
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Accordingly we sustain the Examiner's rejection of claims 23, 24, 28, and 31
under 35 U.S.C. § 103(a) as obvious over Yoshida.

Claim 29 rejected under 35 U.S.C. § 103(a) as obvious over Yoshida and Perkins.
The Appellant raises no contention regarding this claim, and thus it stands or
falls with its parent claim 23. Accordingly we sustain the Examiner's rejection of
claim 29 under 35 U.S.C. § 103(a) as obvious over Yoshida and Perkins.

Claims 19, 20, and 25 rejected under 35 U.S.C. § 103(a) as obvious over Yoshida
and Rosenberg.
The Appellant raises no contention regarding these claims, and thus they stand
or fall with their parent claims 15 and 23. Accordingly we sustain the Examiner's
rejection of claims 19, 20, and 25 under 35 U.S.C. § 103(a) as obvious over
Yoshida and Rosenberg.
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REMARKS
We note that the Examiner has recognized that claim 31 is written in improper
form because it refers to claim 30, which is cancelled. The Examiner has chosen to
object to this as an obvious typographical error, rather than rejecting the claim
under 35 U.S.C. § 112. The Examiner concluded that claim 31 is meant to refer to
claim 23, which is the claim that cancelled claim 30 referred to. (Answer 6). We
agree that this is an obvious error and remind the Appellant that correction will be
required in any further prosecution.

DECISION
To summarize, our decision is as follows:
• The rejection of claims 15-18, 21, and 22 under 35 U.S.C. § 102(b) as
anticipated by Yoshida is sustained.
• The rejection of claims 23, 24, 28, and 31 under 35 U.S.C. § 103(a) as
obvious over Yoshida is sustained.
• The rejection of claim 29 under 35 U.S.C. § 103(a) as obvious over Yoshida
and Perkins is sustained.
• The rejection of claims 19, 20, and 25 under 35 U.S.C. § 103(a) as obvious
over Yoshida and Rosenberg is sustained.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED 23
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