Buhr, Brian Douglas.

Patent Trials and Appeals Board

Nov 25, 2019

12634653 - (D) (P.T.A.B. Nov. 25, 2019)

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.
12/634,653 12/09/2009 Brian Douglas Buhr SONYP242 7898
16051 7590 11/25/2019
MPG, LLP and SONY
710 Lakeway Drive, Suite 200
Sunnyvale, CA 94085
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/25/2019 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):
mpdocket@mpiplaw.com
scea_patent_docket@Playstation.Sony.com
sonydocket@mpiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN DOUGLAS BUHR
____________

Appeal 2019-002095
Application 12/634,653
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated May 14, 2018) rejecting claims 9,
10, 61, 67, 68, 73, 75, 76, 80, 82, and 84–89. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Sony Interactive Entertainment America LLC is
identified as the real party in interest in Appellant’s Appeal Brief (filed Oct.
12, 2018). Appeal Br. 3.
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INVENTION
Appellant’s invention relates to “game controllers having
customizable settings.” Spec., para. 2. Claims 84 and 85 are independent.
Claim 84 is illustrative of the claimed invention and reads as follows:
84. A gaming system comprising:
a first game controller, wherein the first game controller
has a plurality of buttons that are assigned a default set of
game controller commands;
a first game console coupled to the first game controller;
a server coupled to the first game controller via the first
game console over a computer network,
wherein the server includes a controller settings store,
wherein the controller settings store is configured to store
game controller mapping information corresponding to a user
account, wherein the game controller mapping information
maps the default set of game controller commands assigned to
the plurality of buttons of the first game controller to a
modified set of game controller commands;
a second game controller, wherein the second game
controller has a plurality of buttons that are assigned the
default set of game controller commands; and
a second game console coupled to the second game
controller, wherein the server is coupled to the second game
controller via the second game console over the computer
network, wherein the second game console is configured to
obtain the game controller mapping information for the user
account via the computer network from the server for use of
the game controller mapping information by the second game
controller, wherein the game controller mapping information
is used to modify the default set of game controller commands
assigned to the plurality of buttons of the second game
controller to the modified set of game controller commands.

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REJECTIONS
I. The Examiner rejects claims 9, 10, 67, 68, 73, 75, 76, 80, 82,
84, 85, 87, and 89 under 35 U.S.C. § 103(a) as being
unpatentable over Feldman2 and Shi.3
II. The Examiner rejects claim 61 under 35 U.S.C. § 103(a) as
being unpatentable over Feldman, Shi, and Horvitz.4
III. The Examiner rejects claims 86 and 88 under 35 U.S.C.
§ 103(a) as being unpatentable over Feldman, Shi, and Ogata.5

ANALYSIS
Rejection I
Claims 9, 80, 84, and 87
Appellant does not present arguments for the patentability of
claims 9, 80, and 87 apart from independent claim 84. See Appeal Br. 23.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select
claim 84 as the representative claim to decide the appeal of the rejection of
these claims, with claims 9, 80, and 87 standing or falling with claim 84.
The Examiner finds Feldman discloses most of the limitations of
independent claim 84, but “does not appear to explicitly disclose a server
that distributes game controller commands from one game controller to
another.” Final Act. 2–3 (citing Feldman, paras. 19, 21, 32, 37, 38, 42, 43,
Figs. 1, 2). Nonetheless, the Examiner finds that “Shi teaches that users can

2 Feldman et al., US 2006/0097453 A1, published May 11, 2006.
3 Shi et al., US 2009/0163175 A1, published June 25, 2009.
4 Horvitz et al., US 2005/0132014 A1, published June 16, 2005.
5 Ogata, US 6,710,766 B1, issued Mar. 23, 2004.
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access a VSIM server where they can store their personalized settings for a
device,” such as a phone, and, when traveling, can download such settings
to a new device, such as a rental phone. Ans. 5 (emphasis omitted);6 Final
Act. 8 (“[T]he teachings of Shi . . . [show] how a user using one device can
upload their personal settings to a server to then be downloaded to a new
device ([0053]).”). Thus, according to the Examiner, the combined
teachings of Feldman and Shi disclose a server coupled to first and second
game controllers via first and second game consoles, respectively, that
allows a user to employ the settings from the first game controller and
console as settings for the second game controller and console. Final Act. 3
(citing Feldman, para. 49; Shi, para. 53).
Citing to paragraphs 32, 37, and 42 of Feldman and paragraph 53 of
Shi, Appellant argues that neither Feldman nor Shi discloses a “second
game console” that “is configured to obtain the game controller mapping
information for the user account via the computer network from the server
for use of the game controller mapping information by the second game
controller.” Appeal Br. 8–14. According to Appellant, Feldman’s
paragraph 32 describes a controller with inputs, such as, joysticks and
buttons, for playing a game; paragraph 37 describes a switching device for
entering information to configure the controller; paragraph 42 describes a
switching matrix for mapping the controller inputs to any suitable game
function; and Shi’s paragraph 53 describes customizing a rented mobile
handset with personal data and settings by storing onto and downloading
from a server the personal data and settings. Id.

6 Examiner’s Answer, dated Nov. 21, 2018.
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We are not persuaded by Appellant’s arguments because
“[n]onobviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. [Each reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, we
appreciate that Feldman does not disclose a “second game console,” as
called for by claim 84. However, as correctly noted by the Examiner, “in
the combination of Feldman and Shi there . . . [are] two gaming consoles.”
Ans. 6 (emphasis omitted). In particular, Feldman discloses a first game
controller 12 and processor 14 (game console) including, inter alia,
switching device 24, 26 for configuring controller 12 by assigning game
functions (game controller commands) to various controller input joysticks
and buttons that are different from the choices made by the game designer
(default set of game controller commands). Feldman, paras. 32–34. Shi
discloses a cellular network to upload personalized settings from a first
mobile phone to a server, and, upon accessing a user account, to download
the personalized settings to a second mobile phone, when the user is
traveling. Shi, Abstract, para. 53.
Hence, Feldman discloses a first game controller and a first game
console7 and selectively configuring the first the game controller with

7 We note the Examiner’s shorthand writing to describe a device including a
game controller and a game console as “controller/console.” See, e.g., Ans.
5; Reply Brief 2 (filed Jan. 16, 2019, hereinafter “Reply Br.”). We do not
agree with Appellant’s position that the Examiner considers a “controller”
to be the same or similar as a “console” as these terms are not used by the
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personalized game mapping information. Shi discloses a network (cellular)
to upload data, i.e., personalized settings, from a first device (first mobile
handset) to a server, and, upon accessing a user account, to download the
stored data to a second device (second mobile handset). Thus, in the
gaming system of Feldman, as modified by Shi, a user configures a first
game controller with personalized game settings, as per Feldman, and then,
according to Shi, uploads the settings via a network from the first game
controller to a server, and upon accessing a user account, downloads the
stored settings to a second game controller. As such, we agree with the
Examiner that the combined teachings of Feldman and Shi disclose a
second game controller and a second game console, “wherein the second
gaming console is . . . configured in a similar manner with the user’s
personalized settings just like the first gaming console.” Ans. 6.
Appellant further argues that “[n]o prima facie case of obviousness of
claim 84 is made because no articulated reasoning as to why it would have
been obvious to combine Feldman with Shi is provided.” Appeal Br. 15.
According to Appellant, the Examiner’s reasoning “is merely conclusory.”
Id.
We are not persuaded by Appellant’s argument because the
Examiner’s reasoning to combine the teachings of Feldman and Shi to
allow a user to “have access to his personal settings of a gaming controller
when he is on a device that is new or temporary to the user” has rational
underpinnings. See Final Act. 6. The Examiner explains, and we agree,
that:

Examiner interchangeably. See id. at 2–5; see also Final Act. 2 (describing
Feldman’s controller 12 and console 14 as different elements).
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[A] user in Feldman would be able to have his/her controller
settings (Feldman [0032]) which they really like, but now they
are visiting a friend, or using a temporary system (Shi [0053])
and they want to use their really cool controller settings
(Feldman [0032]) which luckily using the method of Shi they
are able to upload their awesome controller settings to a server
and then are able to download them to the new temporary
device (Shi [0053]).

Final Act. 8 (emphasis omitted). Appellant does not persuasively explain
why the Examiner’s findings and reasoning are in error.
Citing to paragraph 49 of Feldman and paragraph 53 of Shi,
Appellant argues that Feldman does not disclose a server and Shi does not
disclose storing “game controller mapping information” on a server. See
Appeal Br. 16–22. According to Appellant, although Feldman discloses
that various processor functions are distributed among remotely located
processors, “none of the processors . . . in Feldman is a server or a part of a
server.” Id. at 18. More specifically, Appellant asserts that the processors
disclosed in Feldman’s paragraph 49 are located either within controller 12
or game processor 14. Id. at 20. Appellant further contends that in contrast
to “a server [which] is defined as ‘a computer in a network that is used to
provide services (such as access to files or shared peripherals or the routing
of e-mail) to other computers in the network’,” none of the processors of
Feldman provides such a service to another processor. Reply Br. 15 (citing
online Merriam-Webster dictionary). Appellant further asserts that the
“‘personal settings’ of Shi are not ‘game functions’ that can be assigned ‘to
controller input devices of a controller’ of Feldman,” but rather, constitute
“personal data,” such as, ring tones, videos, mp3 music files, photos, wall
paper, and text files. Id. at 17.
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We are not persuaded by Appellant’s arguments that Feldman fails to
disclose a server. In particular, paragraph 49 of Feldman discloses that the
various functions of the control, sensor, signal, game, and switching device
processors may be distributed among various computer systems that are
disposed remotely of each other and communicate via a network (LAN,
WAN, Internet, Intranet, wireless (cellular), hardwire, modem connection).
We further agree with the Examiner’s finding that Feldman’s paragraph 42
further describes the switching device as “external of the controller.” See
Ans. 4. Thus, a skilled artisan would readily understand from Feldman’s
paragraphs 42 and 49 that Feldman discloses a switching device as a
remotely located computer system, i.e., processor, which via a network,
provides a service, i.e., mapping information, to another computer system,
i.e., controller input devices. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962) (“An artisan must be presumed to know something about the art apart
from what the references disclose.”).
Stated differently, similar to Appellant’s definition of a “server,”
Feldman discloses the control, sensor, signal, game, and switching device
processors as parts of a computer network where the switching device
constitutes a computer system on the network and provides a service, i.e.,
game controller mapping information, to another computer system, i.e.,
game controller, on the same network. We, thus, agree with the Examiner
that “even though Feldman does not use the explicit word of ‘server[,] the
components of a server and what a server is . . . [as] described in [0049].”
Ans. 7.
Furthermore, the Examiner is correct that in contrast to Feldman, Shi
explicitly discloses using a server for uploading and downloading
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personalized settings (see id. at 7–8) and, thus, the combined teachings of
Feldman and Shi disclose a server. Although we appreciate that Shi’s
server does not upload and download game controller mapping information,
we note that the content of the information (i.e., Shi’s personalized settings
or Feldman’s game controller mapping information) does not change the
structure of the gaming system recited in claim 84. Apart from the content
of the information, Appellant does not persuasively show any structural
difference between a server configured to store game controller mapping
information, as called for by claim 84, and the server of Shi that uploads
and downloads personalized settings. Moreover, as the Examiner’s
rejection is based on a combination of Feldman and Shi, the server of
Feldman, as modified by Shi, uploads and downloads game controller
mapping information.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 84 as unpatentable over
Feldman and Shi. Claims 9, 80, and 87 fall with claim 84.

Claim 10
Appellant argues that the combined teachings of Feldman and Shi do
not disclose that “the game controller mapping information is provided to
the server by way of a computer readable” because (1) Feldman does not
disclose a server and (2) Shi’s “personal data” does not constitute “game
controller mapping information.” See Appeal Br. 40–45 (citing Feldman,
para. 49; Shi, para. 53).
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As we are not persuaded by such arguments for the reasons set forth
supra, we likewise, sustain the rejection of claim 10 over the combined
teachings of Feldman and Shi.

Claims 67, 68, 73, 75, 76, 82, 85, and 89
Appellant relies on the same arguments discussed supra. See Appeal
Br. 23–39. Therefore, for the same reasons discussed above, we also
sustain the rejection under 35 U.S.C. § 103(a) of claims 67, 68, 73, 75, 76,
82, 85, and 89 as unpatentable over Feldman and Shi.

Claims 87 and 89
Each of dependent claims 87 and 89 requires, inter alia, that “the
second game console has a biometric sensor.” See Appeal Br. 63 (Claims
App.).
The Examiner finds that because Shi discloses a “biometric sensor . .
. configured to sense biometric information of a user to allow access to the
user account,” “the combination of Feldman and Shi teaches that the second
game console has a biometric sensor,” as called for by claims 87 and 89.
Final Act. 4, 6 (citing Shi, para. 37) (emphasis omitted).
Appellant argues that Shi’s paragraph 37 does not disclose that “the
second game console has a biometric sensor,” as called for by claims 87
and 89. Appeal Br. 45. According to Appellant, “[t]here is no disclosure or
suggestion in Shi of the ‘game console,’ as is recited in claims 87 and 89.”
Id. at 47.
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Appellant’s argument once more is attacking the disclosures of
Feldman and Shi individually, whereas the Examiner’s rejection is based on
a combination of Feldman and Shi. Although we appreciate that Shi does
not disclose a gaming console, but rather a mobile handset having a
biometric sensor, we note that the Examiner employs Feldman for teaching
a gaming console and Shi for disclosing a biometric senor. See Final
Act. 2, 4, 6. We agree with the Examiner that “adding . . . [Shi’s] biometric
sensor to the gaming console of Feldman would have been obvious [to a
skilled artisan] such that only particular users may gain access to a
personalized setting store.” Ans. 9 (citing Feldman, para. 49; Shi, paras. 37,
53). Thus, the Examiner is correct that the combination of Feldman and Shi
discloses a second gaming console with a biometric sensor, as called for by
claims 87 and 89. Id.
Accordingly, for the foregoing reasons, we also sustain the rejection
of claims 87 and 89 over the combined teachings of Feldman and Shi.

Rejection II
As Appellant does not argue the rejection under 35 U.S.C. § 103(a)
of claim 61 as unpatentable over Feldman, Shi, and Horvitz, we summarily
sustain the rejection of this claim. See Appeal Br. 6.

Rejection III
Each of independent claims 86 and 88 requires, inter alia, that “the
first game console includes a slot for receiving a computer-readable
medium.” See Appeal Br. 62–63 (Claims App.).
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The Examiner finds that because Ogata discloses a game console
having a slot for receiving a computer readable medium holding game
controller mapping information, in the combination of Feldman, Shi, and
Ogata “the first game console is configured to send the game controller
mapping information to the server via the computer network.” Final Act. 7
(citing Feldman, para. 49; Shi, para. 53; Ogata, col. 14, ll. 14–25, Fig. 1).
According to the Examiner, “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to include [Ogata’s]
memory slots in the gaming console [of Feldman, as modified by Shi,] so
that personalized computer information could be quickly saved and easily
transported.” Id. at 8.
Appellant first argues that because (1) Feldman does not disclose a
server and (2) Shi’s “personal data” does not constitute “game controller
mapping information,” the combination of Feldman and Shi does not
disclose “that ‘the first game console is configured to send the game
controller mapping information to the server via the computer network’.”
Appeal Br. 48–55.
We are not persuaded by Appellant’s argument because Appellant is
once more attacking the disclosures of Feldman and Shi individually,
whereas the Examiner’s rejection is based on a combination of Feldman and
Shi. For the reasons discussed supra in Rejection I, in the gaming system
of Feldman, as modified by Shi, a user configures a first game controller
with personalized game settings, as per Feldman, then, according to Shi,
uploads via a network the personalized game settings from the first game
controller to a server, and upon accessing a user account, downloads the
stored personalized game settings to a second game controller. Moreover,
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as noted above in Rejection I, we agree with the Examiner that “even
though Feldman does not use the explicit word of ‘server[,] the components
of a server and what a server is . . . [as] described in [0049].” Ans. 7
(emphasis omitted).
Appellant further argues that:
No reason is provided as to why it would be obvious to [a
skilled artisan to] combine the “game consoles” of Feldman
with the “VSIM server” and “personal data and settings” of Shi
to arrive at the recitation, in claims 86 and 88, that “the first
game console is configured to send the game controller
mapping information to the server via the computer network.”

Appeal Br. 56. According to Appellant, “the inclusion of the ‘memory slots
in the gaming console so that personalized computer information could be
quickly saved and easily transported’ is merely conclusory” and is not a
reason to combine Feldman and Shi “to arrive at the recitation . . . that ‘the
first game console is configured to send the game controller mapping
information to the server via the computer network’.” Id. at 56–57.
We are not persuaded by Appellant’s arguments because including
memory slots “so that personalized computer information could be quickly
saved and easily transported” provides adequate reasoning why a skilled
artisan would combine the teachings of Feldman, Shi, and Ogata and not
Feldman and Shi. The reasoning to modify the gaming system of Feldman,
according to Shi, was discussed supra in Rejection I, where we agreed with
the Examiner that allowing a user to “have access to his personal settings of
a gaming controller when he is on a device that is new or temporary to the
user” has rational underpinnings. See Final Act. 6; Ans. 10.
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In conclusion, for the foregoing reasons, we also sustain the rejection
under 35 U.S.C. § 103(a) of claims 86 and 88 as unpatentable over
Feldman, Shi, and Ogata.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9, 10, 67,
68, 73, 75,
76, 80, 82,
84, 85, 87,
89
103(a) Feldman, Shi 9, 10, 67, 68,
73, 75, 76, 80,
82, 84, 85, 87,
89

61 103(a) Feldman, Shi,
Horvitz
61
86, 88 103(a) Feldman, Shi,
Ogata
86, 88
Overall
outcome
9, 10, 61, 67,
68, 73, 75, 76,
80, 82, 84–89

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).

AFFIRMED