Ex Parte 6193520 et al

Patent Trials and Appeals Board

Jul 29, 2013

90010666 - (R) (P.T.A.B. Jul. 29, 2013)

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.
90/009,524 08/17/2009 6193520 ADC520 6819
56031 7590 07/30/2013
Whitaker Law Group
1218 Third Avenue
Suite 1809
Seattle, WA 98101
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/30/2013 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
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.
90/010,666 09/04/2009 6193520 6620-82302-03 8556
164 7590 07/30/2013
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/30/2013 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 ADC TECHNOLOGY, INC.
______________

Appeal 2012-012256
Reexamination Control Nos. 90/009,524 and 90/010,666
Patent 6,193,520 B1
Technology Center 3900
______________

Before JOHN C. MARTIN, MICHAEL R. ZECHER,
and GLENN J. PERRY, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In a Request for Rehearing of Board Decision (hereinafter “Request”)
filed on March 11, 2013, Appellant requests rehearing of our Decision on
Appeal dated January 11, 2013 (“Decision”). Specifically, Appellant
requests rehearing of our decision to sustain the Examiner’s rejection of
claim 24 under 35 U.S.C. § 103(a) for obviousness over Chernow in view of
Tsumura and Tashiro. Decision 49-51.
Claim 24 reads as follows:
Appeal 2012-012256
Reexamination Control Nos. 90/009,524 and 90/010,666
Patent 6,193,520 B1

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24. (NEW) The communication system according to
claim 23, wherein the communication terminal device displays
a number of players who can participate in the real-time
interactive communication between the at least two
communication terminal devices.
Claims App. (Br. 31). The rejection of claim 24 was stated as follows at
page 50 of the Final Action: “Claims 24 and 44 are rejected under 35 U.S.C.
103(a) as being unpatentable over Chernow et al. (USPN 4,999,806) in view
of Tsumura (USPN 5,547,202) and in further view of Tashiro et al. (USPN
4,998,199).” Regarding the rejection of claim 24, the Examiner further
explained:
Tashiro demonstrated that it was known at the time of [the]
invention to display a number of players who can participate in
the real-time interactive communication between the at least
two communication terminal devices (Tashiro: column 6, lines
1-5; figure 7; column 6, lines 29-33). It would have been
obvious to one of ordinary skill in the art at the time of
invention to implement the game system of Chernow and
Tsumura with display of a number of players in a real-time
interactive communication as found in Tashiro’s teaching.
Final Action 50-51. We sustained the rejection claim 24 because
Appellant fails to address the Examiner’s reliance on Tashiro
for the claimed feature. . . . As pointed out by the Examiner:
“Appellant argues this claim [24] in the section listed as
Rejections Under 103 (Chernow in view of Tsumura) [Br. 10],
however this claim is rejected under Chernow in view of
Tsumura and in further view of Tashiro.” Answer 55-56.
Decision 50 (alterations in Decision). Specifically, the Brief, under the
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Patent 6,193,520 B1

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heading “Rejections Under 35 U.S.C. § 103 (Chernow in view of Tsumura)”
(bolding and underlining omitted), states that “[c]laims 1, 4-6, 15, 18-20,
and 22-26 were rejected as being unpatentable over Chernow in view of
Tsumura (USP 5,547,202).” Br. 10. In the discussion under this heading,
the Brief further states (at 18): “Amended Claim 24 recites ‘the
communication terminal device displays a number of players who can
participate in the real-time interactive communication’. None of the art on
record discloses this limitation.” However, neither the Brief nor the Reply
Brief acknowledges that the art of record includes Tashiro. Furthermore, the
sections of the Brief and Reply Brief having the heading “Grounds of
Rejection to be Reviewed on Appeal” (bolding omitted) likewise misidentify
claim 24 as rejected for obviousness over Chernow in view of Tsumura. Br.
4; Reply Br. 3.
The Request argues that the rejection of claim 24 is improper because
Tashiro does not describe the number of players who can play the game.
See, e.g., Request 3 (“[T]he teachings of Fig. 7 of Tashiro make clear that
the number of players shown is actually the number of players who are in
fact playing and not those who can play.”). As justification for presenting
this argument regarding Tashiro at this time, the Request states:
Patent Owner believes the Board misapprehended the
Examiner’s mischaracterization of the claims. For example, the
Examiner states that “[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to implement
the game system of Chernow and Tsumura with display of a
number of players in a real-time interactive communication as
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Reexamination Control Nos. 90/009,524 and 90/010,666
Patent 6,193,520 B1

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found in Tashiro’s teaching.” The claim however recites
“displays a number of players who can participate.”
In fact, Tashiro does not teach displaying a number of
people who “can participate” in the game ---Tashiro does not
teach displaying anything related to the number of players who
can play the game.
Request 2. However, our decision to sustain the rejection of claim 24 was
not based on any such misapprehension of the Examiner’s position. Rather,
it was based on Appellant’s failure to show error in the Examiner’s reliance
on Tashiro. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (an appellant may attempt to overcome an examiner’s
obviousness rejection on appeal to the Board by: (1) submitting arguments
and/or evidence to show that the examiner made an error in either (a) an
underlying finding of fact upon which the final conclusion of obviousness
was based or (b) the reasoning used to reach the legal conclusion of
obviousness; or (2) showing that the prima facie case has been rebutted by
evidence of secondary considerations of nonobviousness). See also id. (“If
an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
Furthermore, presenting new arguments about Tashiro in the Request
is contrary to 37 C.F.R. § 41.52, which reads in relevant part as follows:
§ 41.52 Rehearing.
(a)(1) . . . Arguments not raised, and Evidence not
previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47
are not permitted in the request for rehearing except as
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Patent 6,193,520 B1

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permitted by paragraphs (a)(2) through (a)(4) of this section. . .
.
(2) Appellant may present a new argument based upon a
recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board’s decision contains an
undesignated new ground of rejection are permitted.
37 C.F.R. § 41.52 (2012. The Request fails to assert, let alone demonstrate,
that any of these exceptions applies. We recognize that the Request cites
“the Federal Circuit’s recent holding in Kinetic Concepts, Inc. et al. v. Wake
Forest University Health Sciences [sic; v. Smith & Nephew, Inc.], Case
2011-1105, at page 32 (Fed. Cir. August 13, 2012)” (688 F.3d 1342, 1361-
62) as support for the argument that “[e]xactly as in Kinetic Concepts,
Tashiro teaches away from the element for which it is offered.” Request 3.
However, the principle that obviousness is not demonstrated by references
that teach away from the claimed invention appears in numerous earlier
court decisions, including In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006),
which is cited for this proposition in Kinetic Concepts, 688 F.3d at 1362.
We have considered Appellant’s arguments but are not persuaded that
we misapprehended or overlooked any point when we sustained the rejection
of claim 24 for obviousness over Chernow in view of Tsumura and Tashiro.
The Request for Rehearing is denied.

DENIED
Appeal 2012-012256
Reexamination Control Nos. 90/009,524 and 90/010,666
Patent 6,193,520 B1

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For Patent Owner/Requester in Reexamination 90/009,524:

Whitaker Law Group
1281 Third Avenue
Suite 1809
Seattle, WA 98101

For Third Party Requester in Reexamination 90/010,666:

Klarquist Sparkman, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, Oregon 97204

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