Ex Parte 6369313 et al

Patent Trial and Appeal Board

Nov 27, 2013

95000409 (P.T.A.B. Nov. 27, 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.
95/000,409 10/27/2008 6369313 2202A/530 6024
909 7590 11/27/2013
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

745, LLC
Third Party Requester and Cross-Appellant

v.

ACTIVISION PUBLISHING, INC.
Patent Owner, Appellant and Respondent
____________

Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

2
Patent Owner Activision Publishing, Inc. (“Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject
claims 1-108.1 Third Party Requestor 745, LLC (“Requestor”) cross appeals
under 35 U.S.C. §§ 134(c) and 315(b) the Examiner’s decision not to adopt
certain proposed rejections for claims 24-32 and 73-91.2
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We heard oral arguments from Patent Owner on August 28, 2013, the
written transcript of which will be entered into the electronic record in due
course.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
United States Patent 6,369,313 B2 (hereinafter the “’313 Patent”),
issued to John R. Devecka on April 9, 2002, is the subject of the current
inter partes reexamination. With respect to the ’313 Patent claims,
Appellant amended each of the independent claims 1, 18, 24, and 33 and
numerous dependent claims. RAN 9. Claims 37-108 were also added. Id.
The continuation patent, United States Patent 6,835,887 B2
(hereinafter the “’887 Patent”) of the ’313 Patent, is also on appeal from an

1 See Patent Owner’s Appeal Brief, filed May 30, 2012 (hereinafter “App.
Br.”), at 2; Examiner’s Answer, mailed January 17, 2013, incorporating by
reference the Examiner’s Right of Appeal Notice, mailed April 5, 2011
(hereinafter “RAN”).
2 See Third Party Requestor’s Appeal Brief, filed July 18, 2011 (hereinafter
“TPR App. Br.”), at 1. Patent Owner also responds to the Requestor’s
appeal. See Patent Owner’s Respondent Brief, filed June 28, 2012
(hereinafter “PO Resp. Br.”), at 1.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

3
inter partes reexamination. See PO App. Br. 1-2; TPR App. Br 2. And the
’313 and ’887 Patents are the subject of co-pending Reissue Applications
No. 13/185,125 (filed July 18, 2011) and 11/646,617 (filed December 28,
2006), respectively. See PO App. Br. 2, Fn. 1.

THE INVENTION
The invention relates to an electronic drum system that includes
electronic drum pads, audio speakers, a visual display, training lights and an
overall control system to simulate, at home or in a coin-operated
environment, the excitement of a live drum or inactive musical jam session
for a user. Abstract; Spec. 1:8-17. The ’313 Patent also describes that other
user-controlled musical input source devices, such as a device looking like a
guitar or keyboard, may be employed. Spec. 3:24-28; 4:43-50.
Amended claim 24, which is illustrative of the appealed subject
matter, reads as follows:
24. (Amended) An audio-visual interactive music
apparatus for enabling users with little or no musical
training to simulate an experience of playing in a rock
band, the apparatus comprising:
a plurality of user input sensors;
an audio speaker system;
a video display system; and
a control system for receiving inputs from the
plurality of user input sensors; and for controllably
driving the audio speaker system and the video display
system; said control system being programmed to drive
the audio speaker system and the video display system to
provide a user with musical gameplay instruction cues
and user feedback as [a]the user is actuating one or more
of the plurality of user input sensors;
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

4
wherein, in at least one mode of play, the control
system causes one or more visual cues to be displayed
via the video display system that indicate which of the
plurality of user input sensors to play and at which times
while playing along to a user-selected song, wherein the
appearance of a displayed visual cues corresponds
visually to the appearance of a user input sensor and
further wherein the location of the displayed visual cue
corresponds to the relative location of the user input
sensor such that the user can determine which user input
sensor to play based on the visual correspondence
between the visual cue and the user input sensor; and
wherein the plurality of user input sensors
comprise a first set of user input sensors corresponding to
buttons or activators on a guitar-like device.
PO App. Br., Claims App’x.

PRIOR ART REJECTIONS
The prior art references, relied upon by Appellant in the proposed
rejections that have not been adopted, are:
Chen et al. 4,429,880 Feb. 7, 1984
Shimbo 4,599,716 July 8, 1986
Meyer et al. 4,643,421 Feb. 17, 1987
Enokian 4,662,635 May 5, 1987
Ikedo et al. 4,730,291 Mar. 8, 1988
Iwamoto 5,043,963 Aug. 27, 1991
Decker 5,107,743 Apr. 28, 1992
Watanabe et al. 5,223,655 June 29, 1993
Klynas 4,479,412 Oct. 30, 1994
Lewis 5,464,946 Nov. 7, 1995
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

5
Ahead Inc., Welcome to West Feedback Instructions (1994)
(hereinafter “West Feedback, Instructions”) and Virtual Guitar User’s
Manuel (1994) (hereinafter “West Feedback, User’s Manuel”) and).3
Mattel Electronics, Inc., Melody Blaster Instructions (1983)
(hereinafter “Melody Blaster”).
Patent Owner also relies on the Declaration of Douglas McCracken,
Jr., dated August 10, 2009 (PO Resp. Br., Evid. App’x., Ex. A) (hereinafter
“McCracken Decl.”), the Declaration of Garry E. Kitchen, dated August 10,
2009 (PO Resp. Br., Evid. App’x., Ex. B)(hereinafter “Kitchen Decl.”), and
the Supplemental Declaration of Garry E. Kitchen, dated November 4, 2010
(PO App. Br., Evid. App’x., Ex. 1) (hereinafter “Supp. Kitchen Decl.”).
Requestor also relies on the Declaration of Mark S. Izen, dated
September 8, 2009 (TPR App. Br., Ex. 13)(hereinafter “Izen Declaration”).

PATENT OWNER ISSUES
1. Did the Examiner err by rejecting claims 1-108 under 35 U.S.C.
§ 112, first paragraph, as failing to satisfy the written description
requirement?
2. Did the Examiner err by rejecting claims 1-108 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention?

3 The published instructions for West Feedback include two separate
documents: Virtual Guitar User’s Manual and Welcome to West Feedback
Instructions. See TPR App. Br., Evid. App’x., Ex. 1. Both documents are
directed to the same West Feedback system. See id.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

6
3. Did the Examiner err by rejecting claims 18-22, 55-70, 24-32,
and 73-91 under 35 U.S.C. § 314(a) as enlarging the scope of the claims of a
patent being reexamined?

REQUESTER ISSUE
Did the Examiner err by not adopting the proposed rejection of claims
24-32 and 73-91 under 35 U.S.C. § 103(a) as obvious over the cited
combinations of prior art?

DISCUSSION
Findings of Fact
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

The ’313 Patent
FF1. The invention generally relates to an interactive electronic drum
system and musical training method. Abstract. The system, using electronic
drum pads, speakers, training lights, and a control system, simulates the
excitement of a live drum or musical jam session for a user. Id.; see also
Spec. 1:8-17. The system may also include other features, such as stage
lights, camera, audience applause, microphone, etc., to enhance the playing
experience and simulate the experience of playing in a rock band Abstract;
Spec. 3:34-4:28.
FF2. A user may select from a variety of mode of operations or play
modes. Spec. 2:24-42. For example, the user may select to play along to a
App
Reex
Paten

selec
prog
emb
Agai
Spec
in le
LED
on th
strik
use o
to pl
Por
Spec
eal 2013-0
amination
t 6,369,3
ted song.
ression tha
odiment, th
nst the Ma
. 7:51-55;
FF3. Ins
arning how
S associat
e display
ing of the
f cuing LE
ay and wh
FF4. Fig
tions Iden
. Fig. 1.
06813
Control 9
13 B2
Spec. 2:33
t increase
e followin
chine”, “J
see also S
truction in
to use th
ed with th
are used to
drum pads
DS on th
en to play
. 1, reprod
Drum Set
tified as
5/000,409
-36. Ano
s in difficu
g modes
amming M
pec. Fig. 5
formation
e system.
e drum pad
instruct a
. Spec. 2:
e drum pad
it).
uced belo
Layout I
Cueing LE

7
ther mode
lty. Spec.
are identifi
usic”, “Ja
.
is provide
Spec. 3:38
s or altern
user to pl
24-29; see
s to visua
w, depicts
ncluding D
DS for L
is playing
2:37-39.
ed: “Jam t
m Lesson
d to begin
-44. For e
atively a v
ay the corr
also Spec
lly guide a
an exemp
rum Pad
eft and R
along wit
In one di
o CD”, “J
s” and “Ja
ning users
xample, c
ideo repre
ect sequen
. 5:53-57 (
user on w
lary drum
s with
ight Hand
h a drum
sclosed
am
m Alone.”
to assist
ueing
sentation
ce and
describing
hich drum
set layout

Striking
.

.

Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

8
FF5. As shown in Fig. 1, the drum set layout includes electronic drum
pads for the hi-hat cymbal, snare, toms 1-4, crash cymbal, and ride cymbal,
as well as foot pedals or activators for the bass drum and the hi-hat cymbal.
Spec. 3:10-15 and Fig. 1. Each electronic drum pad includes a sensor that
senses when the pad is struck. Spec. 3:17-24.
FF6. A foot pedal or activator may be provided to add a variety of
additional sound effects. 3: 15-17. Additionally, as shown in Fig. 1, either
a drum pad or a foot pedal can be employed for the hi-hat cymbal.
Spec. 3:10-15 and Fig. 1 (items 22 and 30).
FF7. The Specification describes that the system may be adapted to
other formats, with different input sensors, such as a guitar with buttons or a
keyboard with keys. Spec. 4:43-50; see also Spec. 3:24-28 (identifying
other formats may be employed, such as a guitar-like device, a keyboard, or
a simple switch arrangement).
FF8. Fig. 1 also shows exemplary cuing LEDS or indicia 21A-29A
and 21B-29B on the drum pads to visually guide the user. In particular, the
lights will cue the user to strike the appropriate pads or pedals of the drum
set layout at the appropriate time. Spec. 3:36-43; see also 2:27-31
(describing that the cuing LEDs or other indicia associated with the drum
pads will guide the user in the correct sequence and striking of the drum
pads).
FF9. Instructional guidance may also be provided through use of the
display. Specifically, the “display will preferably be utilized to provide user
cues and instruction information” to the user. Spec. 4:11-13. The
Specification, in the Summary of the Invention, further describes that a user
App
Reex
Paten

selec
repre
strik
Spec
and g
[disp
to be
Di
Spec
“jam
discu
pad o
of th
eal 2013-0
amination
t 6,369,3
ts a play m
sentation
ing of the
FF10. In
ification s
raduated
lay].” Sp
FF11. F
selected b
splay Scre
D
. 7:59-61;
against th
ssed in th
r pedal an
FF12. D
e display.
06813
Control 9
13 B2
ode throu
on the disp
drum pads
generally
tates that “
steps of rh
ec. 5:64-66
ig. 5, repro
y a user a
en Depict
rum Nam
9:51-53 an
e machine
e context o
d striking
uring a “s
In particu
5/000,409
gh an inte
lay may g
. Spec. 2:
describin
the correc
ythmical s
.
duced bel
nd also an
ing the D
es and M
d Fig. 5.
mode,” (S
f FIG. 5 m
had [sic] o
ound chec
lar, the dis

9
ractive ser
uide the u
28-31.
g the oper
t order or
equences
ow, depic
exemplary
rum Pad
enu Selec
In particu
pec. 8:66
ay also be
r foot.” S
k,” a user
play, “as s
ies of men
ser in the c
ation of th
rhythms o
may also b
ts a way o
manner o
Layout w
tion Instr
lar, when a
-67) the di
used to h
pec. 9:51-
will also b
hown in F
us and the
orrect seq
e system,
f striking t
e displaye
f presentin
f cueing a

ith Corres
uctions
user sele
splay “suc
ighlight th
53.
e cued thr
ig. 5” will
n a video
uence and
the
he drums
d on the
g options
user.
ponding
cts the
h as that
e correct
ough use
depict

Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

10
“both the name of the pad or pedal and the shape and location of the drum
pad or pedal with relation to the other pads may be displayed in the correct
sequence to illustrate the desired warm up sequence.” Spec. 8:27-31.
FF13. In some play modes, a user’s performance may be rated. Spec.
6:21-24. In describing one embodiment, the Specification states that “the
user's score is preferably based on repetition, accuracy and speed. Scoring
may be based on a point system with a value for each correct strike….”
Spec. 9:55-59.
FF14. The system may accept various payment forms, including a
credit card, debit card, or smart card. Spec. 7:33-36.
FF15. While the Specification describes that the system is a money
operated arcade game, it also notes that the system can be implemented in
the home environment.” Spec. 4:34-40; see also Spec. 1:12-15 (identifying
the invention is related to a method and apparatus suitable for use in a home
video game).
FF16. The Specification describes additional enhancements to further
simulate the experience of playing in a rock band. For example, a display
may show a crowd scene and speakers may play the sound of a crowd
starting to clap and cheer as it occurs during a concert. Spec. 7:40-44; see
also Spec. 8:53-55. Lighting may be arranged to simulate a live concert
atmosphere and may be controlled in response to the user’s activity.
Spec. 8:55-65. Additionally, a camera may record a user’s performance.
Spec. 4:2-4.
FF17. The Specification describes that a second or younger, less
coordinated user may enjoy the system by, for example, using a joystick or
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

11
other activator and a button or buttons to play sounds. Spec. 3:28-37. “For
example, a left to right or back and forth movement of the joystick 33 may
allow a second user to make other sounds such as hi-hat, maraca,
tambourine, or other sounds. The button or buttons 34 may allow the second
user or a less advanced user to activate a sequence of drum rhythms or the
like.” Spec. 3:31-37.
FF18. The’313 Specification further recites that:
While the above described components are shown in the
drawings and discussed in the context of a presently preferred
embodiment of the invention, it will be recognized that similar
and other components may be added to enhance the system or
that certain of these components may be subtracted to reduce
the cost of the system.

Spec. 4:28-34.

West Feedback
FF19. West Feedback discloses instructions for playing a musical
home video game designed for use with a personal computer. A person
plays West Feedback by strumming a guitar-like musical input device called
the Virtual Guitar in time with a song. West Feedback, User’s Manual p. 2.
FF20. West Feedback states that “[t]he Virtual Guitar looks and feels
like an electric guitar, except it finds the right notes and chords for you. So
all you have to learn is the rhythm of the songs.” West Feedback, User’s
Manual p.1. Moreover, a user “play[s] the Virtual Guitar like a traditional
electric guitar, except you don’t have to finger the notes and chords. The
Virtual Guitar finds the right notes and chords for you. All you have to learn
is the rhythm of the songs.” West Feedback, User’s Manual p.16.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

12
FF21. The game includes a “status bar” showing the song’s rhythm,
as well as the rhythm of the player attempting to play the song.
Additionally, a Reputation Score is also displayed and scores how well the
user has played the rhythm. West Feedback, Instructions pp. 13-14.

Melody Blaster
FF22. Melody Blaster discloses instructions for playing a musical
home video game designed for the Mattel Intellivision game console. The
main game screen depicts a piano keyboard with a red reference line above
it. Melody Blaster, p. 3.
FF23. A player uses a piano keyboard controller with keys
corresponding to the keyboard displayed on the screen. Notes fall from the
top of the screen toward the keyboard, and a player must press the
corresponding key when a note crosses the reference line. A laser beam will
emerge from the key actually pressed, and if the correct key was pressed, the
laser will strike the falling note and the television speakers will sound the
note. The more accurate the player is, the higher the score earned. Melody
Blaster, pp. 3-4.

Analysis
PATENT OWNER ISSUE #1
Claims 1, 18, 24, and 33
Based on the record before us, we find that the Examiner erred in
rejecting claims 1, 18, 24, and 33 under 35 U.S.C. §112, first paragraph for
failing to comply with the written description requirement. In particular, we
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

13
disagree with the Examiner that there is no support for the visual cues to
correspond in visual appearance and relative location to the drum pads (or
input sensors). See RAN 12.
The Examiner here admits that the Specification supports displaying
visual cues corresponding in appearance to drum pads in a sound check
mode, but the Examiner rejects that this teaching would apply to any other
disclosed play mode. RAN 14. In particular, the Examiner states “such
performance of a sound check has nothing to do with gameplay or gameplay
instruction, and is not performed while playing along to a user selected
song.” Id. According to the Examiner, the Specification only supports
using “lens shape” visual cues while playing along to a song. RAN 12-
13(citing Spec. Figs. 1 and 5); see also RAN 22-23. We disagree.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). “And while the description requirement does not
demand any particular form of disclosure, or that the specification recite[s]
the claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Id. at 1352 (internal
citations omitted).
The Specification here repeatedly describes that the display may be
used to visually cue the user, without limitation to the play mode. See FF3
and FF9-12. For example, after identifying that a user may select a play
mode through interactive menus, the Specification describes “a video
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

14
representation on the display may guide the user in the correct sequence and
striking of the drum pads.” Spec. 2:28-31. The Specification also while
generally describing features of the disclosed display, states that the “display
will preferably be utilized to provide user cues and instructional
information” (FF9) and that the correct order or rhythms of striking the
drums may be depicted on the display. FF10.
Moreover, visual cues corresponding in appearance to the drum pads
are used while playing in different play modes. For example, in the “jam
against the machine mode,” the display “such as that discussed in the context
of FIG. 5 may also be used to highlight the correct pad or pedal and striking
had [sic] or foot.” FF11. Additionally, as the Examiner acknowledges
(RAN 14), the Specification expressly discloses using the name, shape, and
location of a drum pad, as shown in Fig. 5, to visually cue a user during a
warm up sequence. FF12.
While the Specification only identifies using these visual cues
corresponding in appearance to the drum pads in two play modes, namely
the jam against the machine mode and the warm-up sequence, we see no
reason why the described visual cues would be limited to only those play
modes when Specification repeatedly and consistently describes using visual
cues on a display to guide the user. See FF3 and FF9-12. Together, these
teachings demonstrate that a skilled artisan would understand that the
invention included, and thus the Specification supports, displaying visual
cues corresponding in appearance and location to the drum pads to visually
cue a user, regardless of play mode.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

15
These teachings are also at odds with the Examiner’s finding that the
“appearance” of the visual cues is limited only to a “lens shape.” See
RAN 14. The highlighted “lens shape” portion of the drum pad is merely
one example provided of a visual cue. FF4 and FF8; see also
PO App. Br. 9-10. By displaying the corresponding name, shape, location,
and indicator lenses locations in Figs. 1 and 5, the Specification also
discloses that the visual cues correspond in “appearance” to the drum pads.
FF4 and FF11. Therefore, we disagree with the Examiner that the
Specification fails to support using visual cues that correspond in
“appearance” to the drum pads.
We likewise disagree with the Examiner that there is insufficient
support for the visual cues to correspond in appearance and location to the
input sensors (claim 24). The Examiner here finds insufficient support
because “[t]here is no support in the disclosure for an arrangement wherein
the appearance and relative location of visual cues correspond to anything
other than the appearance and relative location the drum pads.” RAN 15.
The drum pads, however, are input sensors. FF5. The Specification
also expressly identifies that the drum pads may be replaced by other input
sensors. For example, button presses and switch closures, such as those on
other musical input source devices like a guitar with buttons or a keyboard
with keys. PO App. Br. 11-12; see also FF7. Thus, because there is support
for visual cues corresponding in appearance to the drum pads and for
replacing the drums pads with alternative input sensors, we agree with the
Patent Owner that the Specification supports displaying visual cues
corresponding in appearance and relative location to the input sensors.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

16
We similarly reject the Examiner’s reasoning that because the
Specification only expressly identifies a guitar-like device with buttons, a
guitar with activators is not supported. See RAN 14-15. As the Patent
Owner points out, the Specification discloses musical input source devices
including activators. PO App. Br. 15. Moreover, a skilled artisan would
know, buttons are activators. As such, we agree with the Patent Owner that
the Specification sufficiently supports the claimed guitar-like device may
include buttons or activators.
Therefore, we agree with the Patent Owner that the Examiner erred in
rejecting claims 1, 18, 24, and 33 under 35 U.S.C. §112, first paragraph for
failing to comply with the written description requirement. Accordingly, we
reverse the rejection as to these claims.

Dependent Claims 2-17,1 9-23, 25-32, 34-39, 43, 45-57, 61, 63-73, 78, 80-
92, 96, 98-108
We likewise disagree with the Examiner regarding additional
dependent claims. Specifically, based on the record before us, we find that
the Examiner erred in rejecting dependent claims 2-17,1 9-23, 25-32, 34-39,
43, 45-57, 61, 63-73, 78, 80-92, 96, 98-108 under 35 U.S.C. §112, first
paragraph for failing to comply with the written description requirement.
RAN 15-18. The Examiner here fails to consider the teachings of the
Specification as a whole and at times disregards express teachings of the
Specification.
For example, with respect to claims 3 and 20, the Examiner admits
that “[t]he disclosure suggests that scoring is based on repetition, accuracy
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

17
and speed.” RAN 15. The Examiner explains though that this is insufficient
to support scoring based on accurate timing because “accuracy does not
necessarily suggest hitting a drum pad at the right time since it could merely
mean hitting the right drum pad.” RAN 15; see also RAN 16 (presenting the
same analysis regarding claim 29 reciting input sensor). As the Patent
Owner points out, the Specification discloses that the visual cues instruct a
user what drum pad to play and when to play it (FF8) and that the user may
be rated on playing the visual indicators. PO App. Br. 17-18; FF13.
Together, this demonstrates that the Specification supports scoring based not
only on striking the correct input sensor but also striking it at the correct
time.
Similarly, with respect to claims 49, 67, and 102, the Examiner states
that there is no support for illuminating the displayed visual cues. RAN 17.
According to the Examiner, the Specification only discloses, and thus
supports, illuminating indicia on the drum pads. Id. To the contrary, as the
Patent Owner again points out, the Specification states that the display may
be used to highlight the correct pad or pedal to play. PO App. Br. 24; FF11.
We agree with the Patent Owner “highlighting” the correct pad or pedal to
play on the display would support the claimed illuminating displayed visual
cues.
The Examiner uses similarly flawed reasoning to support the
remaining rejections of the cited dependent claims. See RAN 15-18 and 24-
27; PO App. Br. 17-21 and 23-26. Therefore, for at least the reasons
identified by the Patent Owner, we agree that the Examiner erred in rejecting
claims 2-17,1 9-23, 25-32, 34-39, 43, 45-57, 61, 63-73, 78, 80-92, 96, 98-
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

18
108under 35 U.S.C. §112, first paragraph for failing to comply with the
written description requirement. Accordingly, we reverse the rejection as to
these claims.

Additional Musical Input Source Device Dependent Claims (Claims 40-42,
44, 58-60, 62, 74-77, 79, 93-95 and 97)
We disagree, however, with the Patent Owner with respect to the
additional musical input source device claims. Specifically, based on the
records before us, we find that the Examiner did not err in rejecting claims
40-42, 44, 58-60, 62, 74-77, 79, 93-95 and 97 as failing to comply with the
written description requirement.
The Patent Owner argues that the Specification supports adding
additional musical input source devices, including various
types/combination of musical input source devices, to enable additional
users to play the game. PO App. Br. 21-23. We disagree.
Notably, in supporting its argument, the Patent Owner erroneously
expands on what is disclosed in the Specification. For example, the Patent
Owner relies on the following description:
By way of example, a joystick or other activator 33 and a
button or buttons 34 may be employed to allow a second user or
a younger, less coordinated user to enjoy the system. For
example, a left to right or back and forth movement of the
joystick 33 may allow a second user to make other sounds such
as hi-hat, maraca, tambourine, or other sounds. The button or
buttons 34 may allow the second user or a less advanced user to
activate a sequence of drum rhythms or the like.

Spec. 3:28-36.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

19
According to the Patent Owner, this demonstrates that two or more of
any type of input devices are supported. PO App. Br. 21-22. However, the
Specification here merely describes that a second or less coordinated user
may use a limited device, not a musical input source device such as the
claimed guitar-like or keyboard-like devices, but a joystick or other
activator. FF17.
We are not persuaded by the Patent Owner that the Specification
supports replacing the joystick with a musical input source device. See RAN
16-17. The Specification describes musical input source devices as devices
that “look like” instruments to simulate playing of music for the user and
include numerous input mechanisms, e.g. drum pads and pedals of a drum
set, keys of a keypad, and buttons on a guitar. FF17. In contrast, the
Specification discloses a joystick, as shown in Fig. 1, with a single motion or
activation with a button. Id.
Moreover, the described participation by the second user is also
limited. A single movement on the joystick can make sounds or a button or
buttons can activate a sequence of drum rhythms. FF17. The Specification
thus does not disclose the second user playing an instrument or playing the
game. See RAN 16-17. We therefore agree with the Examiner that the
Specification here falls short of supporting the claimed additional musical
input source devices enabling play by additional users.
The Patent Owner further points to Fig. 2, 4 depicting a drum set
layout as well as a joystick, as supporting additional input devices. PO App.

4 During oral argument, Patent Owner also pointed to Fig. 2 of the related
’887 Patent. Transcript of August 28, 2013 Oral Hearing at 13. In contrast
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

20
Br. 21. As discussed above though, we are not persuaded that the
Specification demonstrates to a skilled artisan that a joystick may be
replaced with a musical input source device. In particular, the Specification
only equates a joystick to an activator, not a musical input source device.
FF17.
We are also not persuaded by the additional arguments and evidence
presented by the Patent Owner. See PO App. Br. 22-23. In particular, the
Patent Owner’s reliance on the disclosure of other musical input source
devices is also misplaced. These other musical input source devices, such as
a guitar-like device or keyboard, are presented as alternatives to the drum
set. FF7. The Specification states that while the drum set is preferred, “the
present invention may be adapted to other formats,” including for example a
guitar-like device having buttons or a keyboard. Spec. 4:45-51.
Finally, the Patent Owner also relies on a broad, generic statement
about providing additional components to enhance the system.
PO App. Br. 22. Notably absent from this disclosure though is any
discussion of additional musical input source devices or additional users.
FF18.
Accordingly, we affirm the rejection of claims 40-42, 44, 58-60, 62,
74-77, 79, 93-95 and 97 as failing to comply with the written description
requirement.

to Fig. 2 of the ’313 Patent, Fig. 2 of the ’887 Patent additionally depicts a
guitar and keyboard as inputs into the system. These features, however, are
denoted as alternatives to the depicted drum set. See ’887 Patent, Fig. 2
(identifying the drum set as 20, the guitar as 20ʹ, and the keyboard as 20ʹʹ).
Furthermore, as noted, Fig. 2 here in the ’313 Patent only includes a drum
set.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

21

PATENT OWNER ISSUE #2
Based on the record before us, we find the Examiner erred in rejecting
claims 1-108 under 35 U.S.C. 112, second paragraph as indefinite.
As an initial matter we note that the Examiner here seems to
erroneously apply the written description analysis. See RAN 18-19. In
particular, the Examiner states that there is allegedly insufficient “support”
for corresponding appearance of the visual cues and input sensors because
there is only support for corresponding shape. Id. The test for definiteness,
however, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted).
As the Patent Owner points out, appearance is a commonly
understood term having a plain meaning that would be understood by a
skilled artisan. PO App. Br 27; PO Rep. Br. 3; RAN 28 (defining
appearance as “the outward or visible aspect of a person of [sic] thing”); see
also Webster’s II New College Dictionary 1995 (defining appearance as
“outward aspect”). The Specification further supports this meaning. For
example, the appearance of the visual cues shown in Fig. 5 corresponds to
the appearance of the drum pads shown in Fig 1. See Figs. 1 and 5
(depicting the same drum pad name, shape, location, and indicator lights).
Therefore, for at least the reasons identified by the Patent Owner, we are
persuaded that the Examiner erred in finding “appearance” indefinite.
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

22
Accordingly, we reverse the rejection of claims 1-108 under 35 U.S.C.
112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention.

PATENT OWNER ISSUE #3
We find that the Examiner erred by rejecting claims 18-22 and 55-70
and claims 24-32 and 73-91 under 35 U.S.C. 314(a) as enlarging the scope
of the claims of the patent being re-examined.
The Patent Owner amended claim 18 as follows:
providing a money validation unit for enabling a user to
[inserting] insert money and for recognizing if the amount of
inserted money corresponds to a predetermined amount of
money [into a money validation unit];…PO App. Br., Claims
App’x.

Thus, the Patent Owner deletes the step of inserting and instead requires
providing a money validation unit that enables a user to be able to insert
money. As the Patent Owner notes though, the claim “still requires that an
amount of money be inserted.” PO App. Br. 28. Specifically, the system is
only activated “upon recognition of the insertion of the predetermined
amount of money.” PO App. Br., Claims App’x. We agree. Therefore, we
find that the Examiner erred in finding that the scope is improperly
broadened.
The Examiner also finds that claim 24 has been improperly broadened
because gameplay instructions are distinct from musical instructions. RAN
20. We disagree. Notably, the Patent Owner did not remove the “musical”
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

23
limitation, but merely adds that the musical instruction cue must also be a
gameplay instruction cue. See PO App. Br. 29; Claims App’x. Thus, the
scope is not improperly broadened.
We likewise disagree with the Examiner that claim 24 is improperly
broadened, because the claim “recites that the input sensors correspond to
buttons or activators, but the disclosure only describes input device with
buttons as an alternative to user input sensors.” RAN 20. We are not
persuaded that the Specification describes an input sensor as an alternative to
a button. To the contrary, as discussed above, a skilled artisan would
understand that a button is an input sensor. FF5 and FF7; see also
PO App. Br. 29-30.
Therefore, for at least the reasons identified by the Patent Owner, by
amending the claim to recite that the plurality of input sensors includes a
first set of input sensors corresponding to buttons or activators on a guitar-
like device does not broaden the scope of the claim.
Accordingly, we reverse the rejection of claims 18-22 and 55-70 and
claims 24-32 and 73-91 under 35 U.S.C. 314(a) as enlarging the scope of the
claims of the patent being re-examined.

REQUESTOR ISSUE
Based on the record before us, we find the Examiner has not erred by
not adopting the proposed rejections of claims 1-108 under 35 U.S.C. §
103(a) as obvious over the cited art.
The Examiner explains that while West Feedback and Melody Blaster
teach displaying visual cues to a user, those cues do not correspond visually
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

24
to the appearance of the input sensor or that the location of the displayed cue
corresponds to the relative location of the input sensor. RAN 34-35. Thus,
according to the Examiner, the cited combination does not render the
claimed invention obvious. Id.
On the other hand, Requestor asserts that the Examiner erred by
failing to consider Melody Blaster’s displayed keyboard keys as visual cues.
TPR App. Br. 8-9. Requestor maintains that these keys, in conjunction with
the falling musical notes and the horizontal red line, are visual cues that
correspond visually to the appearance of the input sensor. Id.
The Requestor points out that the falling musical notes by themselves
are insufficient to be a visual cue for the user. Id. More specifically,
Requestor argues that:
[T]he juxtaposition of a falling note and a particular displayed
keyboard key provides the sensor-selection function, and
comparison of the positions of the falling note and the
horizontal line provides the sensor-timing function. Because
the Examiner admits that Melody Blaster teaches visual cues
that provide these functions, the keyboard keys and the
horizontal line also should be viewed as visual cues or, at least,
as part of a visual cue.
Id.
As discussed above, Melody Blaster teaches falling musical notes that
cue a user which key to strike when the note approaches a horizontal red
line. FF23. Thus, it is the falling musical note’s location that cues the user
which key to strike, not the key itself. Further, assuming en arguendo that
the keyboard keys were part of a visual cue, the complete visual cue as a
whole, that is the falling musical note, the horizontal red line, and the
Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

25
displayed keyboard keys, would not visually correspond to the appearance of
the input sensor, i.e., a keyboard key.
Moreover, we agree with the Patent Owner that West Feedback
teaches away from the combination with Melody Blaster. PO Resp. Br. 6-7.
As identified by the Patent Owner, West Feedback expressly teaches that a
user does not have to learn the notes and chords, but must only learn the
rhythm of the songs to play the game. FF20; see also PO Resp. Br. 6-7.
Melody Blaster, on the other hand, precisely focuses on identifying which
keyboard keys to play. FF23.
Thus, because West Feedback expressly teaches that a user not having
to learn the keys is an improvement of the game, a skilled artisan would
recognize that West Feedback teaches away from the combination with
Melody Blaster. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)(identifying
that a reference teaches away when a person of ordinary skill, upon reading
the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant).
As such, we agree with the Examiner that the cited combination fails
to render the claimed invention obvious. The additionally cited references
also do not cure the deficiencies of the combination of West Feedback and
Melody Blaster.
Accordingly, we sustain the decision not to adopt the proposed
rejection of claims 24-32 and 73-91.

Appeal 2013-006813
Reexamination Control 95/000,409
Patent 6,369,313 B2

26
DECISION
The Examiner’s decision to reject claims 1-39, 43, 45-57, 61, 63-73,
78, 80-92, 96, and 98-108 is reversed, but the Examiner’s decision to reject
claims 40-42, 44, 58-60, 62, 74-77, 79, 93-95 and 97 is affirmed.
Additionally, the Examiner’s decision to not adopt the proffered
rejections of claims 24-32 and 73-91is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART

THIRD-PARTY REQUESTER:
Bromberg & Sunstein, LLP
125 Summer Street
Boston, MA 02110-1618

PATENT OWNER:
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102