Ex Parte 7292151 et al

Patent Trial and Appeal Board

Jan 20, 2015

95000540 (P.T.A.B. Jan. 20, 2015)

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.
95/000,540 03/12/2010 7292151 FER1947-003 8172
8698 7590 01/20/2015
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/20/2015 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
____________

NINTENDO CO., LTD,
Requester,

v.

MOTIVA, LLC.,
Patent Owner.
____________

Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

NEW DECISION
37 C.F.R. § 41.77(f)

Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

2
I. INTRODUCTION
In an earlier Decision mailed August 31, 2012
1
(“Decision”), we
reversed the Examiner’s decision not to reject claims 12–16, 21–25, 27–34,
44, 57, 65, 68, 73–76, 81, and 84 of U.S. Patent No. 7,292,151 (“the ’151
patent”) under 35 U.S.C. § 102(b) as anticipated by Hinckley
2
, and we
entered a new ground of rejection of claims 16 and 68 under 35 U.S.C.
§ 103(a) as unpatentable over Okamoto
3
. Decision 16. Pursuant to 37
C.F.R. § 41.77(b), Patent Owner, Motiva, LLC (“Motiva”), was given the
option of either requesting rehearing or reopening prosecution. Id. at 16–17.
Motiva elected to reopen prosecution. To that end, Motiva challenges
the above-noted rejections and has submitted additional evidence in the form
of a Declaration of Kevin Ferguson under 37 C.F.R. § 1.132 (“Ferguson
Decl.”).
4
Mr. Ferguson is a named inventor of the ’151 patent that lies at the
center of this inter partes reexamination proceeding. Third-Party Requester,
Nintendo Co., Ltd. (“Nintendo”), filed comments under 37 C.F.R. § 41.77(c)

1
Appeal 2012-002525.

2
Hinckley, Ken, Synchronous Gestures for Multiple Person and Computers.
Volume 5, Issue 2, pp. 149–158 of the UIST 2003 Symposium on User
Interface Software & Technology.

3
Japanese Laid-Open Patent Application 2000-308756 published November
7, 2000 to inventor Koichiro Okamoto. In this New Decision, references to
Okamoto are to the English translation of the document that is of record in this
proceeding.

4
See “Respondent’s Submission of New Evidence to Reopen Prosecution”
filed September 28, 2012 (“PO Reopen Req.”).

Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

3
in response to Motiva’s submission.
5
In support of those comments,
Nintendo relied on additional evidence in the form of a Declaration of
Robert Dezmelyk (“Dezmelyk Decl.”). Additionally, in those comments,
Nintendo proposed additional grounds of rejection of claims 16 and 68 as
unpatentable over Okamoto and Levenberg,
6
and also over Okamoto and
Raviv
7
. In due course, the Examiner mailed a Determination pursuant to 37
C.F.R. § 41.77(d).
8
Nintendo subsequently filed comments under 37 C.F.R.
§ 41.77(e)
9
, and Motiva filed a response to those comments
10
.
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
11

5
See “Requester’s Comments” filed October 31, 2012 (“3PR 41.77(c)
Comm.”).

6
U.S. Patent No. 6,811,491 issued November 2, 2004.

7
U.S. Patent No. 6,592,461 issued July 15, 2003.

8
See “Determination Under 37 CFR 41.77(d)” mailed October 9, 2013
(“Ex’r Determ.”).

9
See “Requester’s Comments Pursuant to 37 CFR 41.77(e)” filed November
8, 2013 (“3PR 41.77(e) Comm”).

10
See “Respondent’s Response to Requestor’s Comments Pursuant to 37
CFR 41.77(e)” filed December 9, 2013 (“PO 41.77(e) Resp.”).

11
37 C.F.R. § 41.77(f) reads:
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
proceeding will be returned to the Board which shall
reconsider the matter and issue a new decision. The new
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

4
Claim 16, which depends on claim 1, is illustrative of the appealed
subject matter. Claims 1 and 16 are reproduced below:
1. A system for tracking movement of a user,
comprising:

a first communication device comprising a transmitter for
transmitting signals, a receiver for receiving signals and an
output device, said first communication device adapted to be
hand-held;

a processing system, remote from the first
communication device, for wirelessly receiving said transmitted
signals from said first communication device, said processing
system adapted to determine movement information for said
first communication device and sending data signals to said first
communication device for providing feedback or control data;
and

wherein said first communication device receives and
processes said data signals from said processing system and
wherein the output device provides sensory stimuli according to
the received data signals.
- - -
16. A system according to claim 1, wherein said first
communication device is adapted to accept various mechanical
extensions pieces depending on the application desired.

PO Reopen Req. Claims App’x i, ii.
12

decision is deemed to incorporate the earlier decision, except
for those portions specifically withdrawn.

12
Claim 1 has been reproduced with indentations in a manner which
complies with 37 C.F.R. § 1.75(i).
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

5
II. DISCUSSION
The Examiner summarized her determination as follows:

The new grounds of rejection of claims 16, 21, 22, 27,
33, 34, 44, 57, 68, 73, 74, and 84 as being anticipated by
Hinckley; and claims 16 and 18 as being unpatentable over
Okamoto made by the …PTAB in the Decision are maintained.
The additional proposed rejections of claims 16 and 68 as being
unpatentable over Okamoto in view of Levenberg or in view of
Raviv in 3PR Response are adopted.

PO Response with respect to claims 12-15, 23-25, 28-32,
65, 75, 76, and 81 is persuasive. The new grounds of rejection
of claims 12-15, 23-25, 28-32, 65, 75, 76, and 81 made by the
…PTAB in the Decision are not maintained. The claims are
confirmed for the reasons given under “Confirmed Claims.”

Ex’r Determ. 3-4 (emphasis removed).
Thus, the Examiner determined that: (1) the anticipation rejection of
claims 16, 21, 22, 27, 33, 34, 44, 57, 68, 73, 74, and 84 based on Hinckley is
maintained; (2) the rejection of claims 16 and 18 as unpatentable over
Okamoto is maintained; (3) the proposed rejections of claims 16 and 68 over
Okamoto and either Levenberg or Raviv are adopted; and (4) the rejection of
claims 12–15, 23–25, 28–32, 65, 75, 76, and 81 as anticipated by Hinckley is
not maintained.
A. Obviousness Based on Okamoto
The Examiner determined that the rejection of claims 16 and 18 as
unpatentable over Okamoto entered by the Board should be maintained. The
Examiner also determined that rejections of claims 16 and 68 proposed by
Nintendo based on Okamoto taken with either Levenberg or Raviv should be
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

6
adopted. In that respect, the Examiner has explained in detail how all the
features of claims 16 and 68 are satisfied by the above-noted prior art. Ex’r
Determ. 10–18. Motiva filed no comments responsive to the Examiner’s
explanation.
Claim 16 depends from claim 1, and claim 68 depends from claim 50.
Claims 1 and 50 are directed to a system and apparatus, respectively, “for
tracking movement of a user.” App. Br. 43, 48. As a part of the claimed
system, claim 1 includes recitation of a first communication device. Each of
Claims 16 and 68 adds that the first communication device or apparatus “is
adapted to accept various mechanical extensions [sic] pieces depending on
the application desired.” Id. At issue in connection with the above-noted
grounds of rejection, is whether one with ordinary skill in the art would have
appreciated, as obvious, that the input controller of a gaming device
disclosed in Okamoto may be adapted to accept various mechanical
extension pieces.
According to Motiva in its Request to Reopen Prosecution:
The Board has asked the Applicant to show that claims
16 and 68 are patentable in view of Okamoto. Claims 16 and
68 are patentable over Okamoto because there is no evidence
supporting the necessary factual findings required to
demonstrate that the invention is obvious under the “obvious to
try” rationale.

PO Reopen Req. 5–6.
Motiva’s statements are misplaced. We made no request that Motiva
“show” the patentability of claims 16 and 68. Moreover, Motiva’s limited
focus on alleged inadequate factual findings in connection with an “obvious
to try” rationale of obviousness provides little elucidation in resolving the
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

7
obviousness inquiry. To the extent that “obvious to try” is one underlying
theory en route to a conclusion of obviousness, it is not the only one.
Indeed, the phrase “obvious to try” does not appear in the Decision.
As we determined in the Decision, Okamoto discloses multiple
different embodiments of its controllers in which they appear in a variety of
different aesthetics including “a bar-like body (as in Okamoto’s Figure 3) or
some other shape, for example, a sword (as in Figure 4), fishing pole, or
magic wand (id. at p. 7, ¶ 0025.)” Decision 7. Although we determined that
it was not clear if Okatamo envisioned those controllers as being adapted to
receive mechanical extension pieces or as individual, separate controllers,
we concluded the following:
[E]ven if Okamoto does not convey that its controllers are
“adapted” in the manner set forth in claims 16 and 68, it would
have been readily apparent to one of ordinary skill in the art that
there are a limited number of options for obtaining the controllers
which are disclosed in that reference. Indeed, there are seemingly
only two viable options. Either the various types of controllers,
e.g., a sword and a fishing pole, are (1) formed as separate
devices; or (2) constructed from a single such controller capable
of reconfiguration into the particular desired controller form by
attachment and detachment of components having the pertinent
aesthetic. Where, as here, there are a limited number of identified
and predictable solutions to a particular problem, a person of
ordinary skill in the art has good reason to pursue the available
options within his technical grasp. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398,421 (2007). In our view, a skilled artisan guided by
the content of Okamoto’s disclosure, including the desirability of
controllers having different shapes, would have reasonably
appreciated that forming a controller such that it is adapted to
receive various mechanical extension pieces was an available and
viable option.

Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

8
Id. at 7–8. In that respect, we concluded that a person of ordinary skill in the
art seeking to address the problem of forming a controller of a desired shape
or aesthetic, reasonably would have selected between the two predicable
solutions to such a problem. In making such a selection, a skilled artisan
would have realized that a controller may be configured to receive
mechanical extension pieces reflective of the particular desired aesthetic.
We credit Mr. Dezmelyk’s testimony to that effect. See Dezmelyk Decl. ¶¶
9–24.
Motiva generally contends that Okamoto does not recognize any
problem in need of resolution, and that “the problems solved by the present
invention [of the ’151 patent] were not recognized by those in the art, nor
was the solutions obvious.” PO Reopen Req. 10–11. Motiva does not set
forth any description of what it considered the problems solved by the
invention of the ’151 patent. Motiva also does not express why the panel’s
discussion (reproduced above) in the Decision of the problem of presenting
controllers into a desired aesthetic shape based on the particular desired form
the controller is intended to resemble is in error. Motiva further does not
offer adequate explanation that the pertinent problem addressed by the ’151
patent was unrecognized by those of ordinary skill in the art. In that regard,
Motiva simply offers the unsupported testimony of the inventor of the ’151
patent, Mr. Ferguson, that he was the first to recognize “a problem with
previous controllers” in need of solution. Ferguson Decl. ¶ 9.
As discussed above it is clear from Okamoto that those of ordinary
skill in the art were cognizant of the need to present controllers of different
shapes. Neither Motiva nor Mr. Ferguson explains why, of the two
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

9
predictable options to address that need, the use of one of those options, i.e.,
mechanical extension pieces for the controllers, would have been unknown
or unavailable. Neither do they explain why selection of either of those
options is an inventive exercise rather than simply a matter of the exercise of
the routine skill of an ordinary artisan.
Nintendo has also points to Levenberg and Raviv in support of its
position that claims 16 and 68 are obvious. As explained by Nintendo, each
of those prior art references describes the use of various mechanical
extension pieces for the controllers of video gaming or computerized play
systems. 3PR 41.77(c) Comm. 6–10. Thus, the evidentiary record before us
shows that, contrary to Mr. Ferguson’s testimony, using mechanical
extension pieces to augment gaming controllers was not unknown to those of
ordinary skill in the art prior to the ’151 patent.
Accordingly, after careful consideration of the record at hand, we
conclude that the Examiner’s determination that claims 16 and 68 would
have been obvious in view of the prior art is correct. In that regard, we do
not discern error in the Examiner’s determination that claims 16 and 68
would have been obvious over Okomoto taken alone, or Okomoto taken
with either Levenberg or Raviv.
B. Anticipation Based on Hinckley
As noted above, the Examiner maintained the anticipation rejection of
claims 16, 21, 22, 27, 33, 34, 44, 57, 68, 73, 74, and 84 over Hinckley, but
did not maintain the anticipation rejection of claims 12–15, 23–25, 28–32,
65, 75, 76, and 81 based on that reference.
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

10
1. Claims 16, 21, 22, 27, 33, 34, 44, 57, 68, 73, 74, and 84
In its Request to Re-open Prosecution, Motiva contended that various
features required by the above-noted claims are absent from Hinckley. PO
Reopen Req. 12–27. Motiva relied, in part, on the Ferguson Declaration in
support of its contentions. Nintendo did not agree with Motiva and pointed
to the Dezmelyk Declaration in support of its position. 3PR 41.77(c) Comm.
10–19. The Examiner agreed with Nintendo and explained in detail where
all of the elements of claims 16, 21, 22, 27, 33, 34, 44, 57, 68, 73, 74, and 84
are found in Hinckley. Ex’r Determ. 4–9.
We have reviewed carefully the submissions of the parties and the
Examiner’s Determination. In so reviewing, we conclude that the record
establishes that Nintendo and the Examiner have shown claims 16, 21, 22,
27, 33, 34, 44, 57, 68, 73, 74, and 84 to be anticipated and, thus, we agree
that the rejection of those claims as anticipated by Hinckley should be
maintained.
For instance, claim 1, from which claim 16 depends, includes a
recitation that the involved tracking system includes a processing system
that is “adapted for determining movement information” of a first
communication device that is remote from the processing system. PO
Reopen Req. Claims App’x i. According to Motiva, in the context of claim
16, Hinckley does not disclose a processing system that determines
movement information of a remote communication device. Id. at 13. To
that end, Motiva discounts the “synchronous bumping recognition
algorithm” disclosed in Hinckley with respect to the procedure of detecting
when two tablets are in the vicinity of one another to be “bumped” together
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

11
and share information, as failing to constitute the determination of
“movement information” of any tablet. Id. at 13–14.
Neither Nintendo nor the Examiner agrees with Motiva that the
operation of the “synchronous bumping” in Hinckley does not describe the
determination of movement information. In that respect, each of Nintendo
(3PR 41.77(c) Comm. 10–11) and the Examiner (Ex’r Determ. 4–5) refers to
pages 152–154 of Hinckley describing the bumping operation of the tablets.
As noted by both Nintendo and Mr. Dezmelyk, Hinckley explains that over
the course of a bumping operation, processing systems of the tablets,
including sensors, convey information “both ‘before and after a synchronous
bump,’” which is urged as exchanging movement information between the
tablets. 3PR 41.77(c) Comm. 10–11; Dezmelyk Decl. ¶ 25.
With respect to “[s]ynchronous gesture recognition,” Hinckley
explains that:
Synchronous gesture recognition only needs to occur on one of
the two devices. When a synchronous bump is detected, that
device informs its remote partner of the gesture and its various
parameters.

Hinckley 154, col. 1.
Hinckley explains the following with respect to that interaction:
If significant movement (sensed by comparing a time-decaying
measure of changes to the tilt values to a simple threshold)
occurs while the user is holding the tablet, the local system
infers that the tablet has been moved away. If, however, the
user releases the tablet before motion stops, this indicates that
the user may simply be letting go of the tablet after docking, so
the docking state is maintained in this case. Furthermore a
short time-out is used after docking to ensure that the
movement required to dock the tablets does not trigger an
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

12
immediate (false positive) recognition of undocking. Once a
tablet recognizes undocking, it sends a message telling its
remote partner to also undock. The local tablet immediately
plays a short and distinct breaking sound and shows a broken
arrow on the screen. . . . The remote tablet provides the same
feedback when it receives the message telling it to undock.

Id. at 152–153.
Thus, Hinckley clearly conveys that movement of either a “local”
tablet or a “remote” tablet, or both, is required for entering a “docking” state
and an “undocking” state of the tablets. Hinckley also expresses that the
local tablet “infers” that the remote tablet has been moved away based on
comparison of certain sensed parameters. Motiva does not explain
adequately why Hinckley’s disclosure, including that noted above, with
respect to the inference or recognition of the movement of a remote tablet
does not amount to a processing system “adapted for determining movement
information” of a controller.
Motiva also contends in connection with the same limitation discussed
above, that Hinckley does not disclose a processing system that is “remote”
from the controller in the course of determining movement information of
the controller. PO Reopen Req. 15. We observe that this argument was
considered already by the panel, and rejected, in the original Decision.
Decision 10–11. Hinckley also does not explain adequately now why the
panel’s determination in that respect was in error. As we previously
observed, Hinckley, itself, “characterizes the tablets with respect to each
other as one being a ‘local device’ and the other a ‘remote device.’
(Hinckley, p. 151, first column, second paragraph.)”. Decision 10. Indeed,
that is also what is expressed in the portions of Hinckley that have been
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

13
reproduced, and discussed, above. Thus, as disclosed in Hinckley, during a
bumping procedure, the local tablet and the remote tablet convey movement
information about the tablets before docking and after undocking.
Moreover, we conclude that possible contact of the two tablets during an act
of bumping does not prohibit one tablet from being considered “remote”
from the other.
We have reviewed Motiva’s filings alleging that certain feature of
claims 16, 21, 22, 27, 33, 34, 44, 57, 68, 73, 74, and 84 are absent from
Hinckley. We have also reviewed the filings of Nintendo and the Examiner
conveying where all the features of those claims reside in Hinckley. On this
record, we are satisfied that Hinckley discloses all the features required by
the above-noted claims.
2. Claims 12–15, 23–25, 28-32, 65, 75, 76, and 81
Based upon Motiva’s Request to Reopen Prosecution, the Examiner
determined that the above-noted claims include features that are absent from
the disclosure of Hinckley. Ex’r Determ. 18–20. The Examiner discusses
the claims in the following groupings: (1) claims 12–15 and 65; (2) claims
23–25, 75, and 76; (3) claims 28–32; and (4) claim 81.
a. Claims 12–15 and 65
The Examiner determined the following with respect to these claims:
Regarding claims 12-15 and 65, Examiner agrees with
PO on pages 16-17 of PO Response that Hinckley does not
disclose training applications and downloading additional
training applications. 3PR asserts on page 12 of 3PR Response
that “Hinckley clearly discloses the use of training applications
as claimed in the figures on pages 152 and 154 thereof.”
However, claims 12-15 and 65 do not simply recite the use of
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

14
applications. Claims 12-15 recite “the first communication
device is configured with multiple training applications and
wherein the user may choose one training application to
activate, and wherein the user may download additional training
applications to the communication device.” Claim 65 recites
that “the apparatus is configured with multiple training
applications, each of which is selectively activated with the user
input device.”

Id. at 18–19.
The portion of Motiva’s Request to Reopen Prosecution with which
the Examiner agrees places emphasis on the characterization of the required
applications as “training” applications. PO Reopen Req. 17. To that end,
Motiva urges that “[t]he ‘151 patent discusses various training applications
such as training applications for rehabilitating injured limbs, or improving
athletic skills, or improving balance. See, ‘151 patent, cols. 11-12.” Id.
Motiva also maintains that “[t]he invention of Hinckley is not suited for use
with physical activity such as training applications because the tablets in
Hinckley do not detect movement information.” Id.
At the outset, for the reasons discussed above, we are not persuaded
that the tablets in Hinckley do not detect movement information. We also
share Nintendo’s view that none of claims 12–15 or 65 mandates “physical
activity” as some intrinsic, required aspect of the “training applications,”
much less any of the particular physical activities offered by Motiva. See
3PR 41.77(e) Comm. 3. Neither do we discern that columns 10–11 of the
’151 patent that are referenced by Motiva impose any special meaning to the
term “training applications.”
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

15
In the context of the ’151 patent, the broadest reasonable meaning of
the “training” that is consistent with the ’151 patent is “the skill, knowledge,
or experience acquired by one that trains.”
13
The term “train” in that context
means “to teach so as to make fit, qualified, or proficient.”
14
Thus claims
12–15 and 65 require applications that operate to make one fit, qualified, or
proficient in some aspect by acquisition of skill, knowledge, or experience.
Hinckley describes the use of “applications” that provide instruction to users
of computer tablet devices showing how to manipulate the devices with
respect to one another to “create one large display space” (Hinckley 153) or
provide “mutual sharing of information” (id. at 154) between the devices.
Motiva does not explain adequately why the instructions provided by the
applications on Hinckley’s tablet devices are not understood reasonably as
allowing a user to acquire skill, knowledge, or experience in connection
with, for example, enhanced display options incorporating two tablets, or
information exchange between the tablets.
Moreover, as is apparent from the disclosure of Hinckley noted above,
the disclosed computer tablets are implemented with software “applications”
for performing the tasks noted above. The claims at issue are directed to
either a “system” (claims 12–15) or “apparatus” (claim 65). We do not
discern, and neither Motiva nor the Examiner explains, how the claim
recitation that “wherein a user may download additional training application

13
See http://www.merriam-webster.com/dictionary/training (last accessed
December 19, 2014).

14
See http://www.merriam-webster.com/dictionary/train (last accessed
December 19, 2014).
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

16
to said communication device” structurally distinguishes the “system” or
“apparatus” of the claims over the disclosure of Hinckley.
Furthermore, with respect to claims 15 and 65, we are not persuaded
by the Examiner or Motiva that the user input device of the claims that “may
be used to calibrate” a communication device or apparatus “to establish a
reference pose of reference trajectory” differentiates the claims over
Hinckley. As noted by Nintendo, and its expert declarant, Mr. Robert
Dezmelyk
15
, the ’151 patent describes that “the term ‘pose’ includes
orientation or tilt information.” 3PR 41.77(c) Comm.; Dezmelyk Decl. ¶ 27
(both citing ’151 patent column 1, line 12). Hinckley explains that its
system may use a “10-degree deviation in tilt” as a “minimum threshold” in
establishing a “bump” used to initiate information exchange between tablets.
Hinckley 156. Mr. Dezmelyk testifies that the noted disclosure sets for a
calibration feature in establishing a “reference orientation for use in
determining if a bump has occurred.” Dezmelyk Decl. ¶ 27. Mr.
Dezmelyk’s testimony is reasonable in that respect, and Motiva does not
explain why it is incorrect.
We have considered the record before us, including the Examiner’s
recommendation that the rejection of claims 12–15 and 65 as anticipated by
Hinckley is overcome. For the foregoing reasons, however, we are not
persuaded that the Examiner is correct in that regard. Accordingly the
rejection of claims 12–15 and 65 as anticipated by Hinckley is maintained.

15
See “Expert Declaration of Robert Dezmelyk” filed October 31, 2012
(“Dezmelyk Decl.”)
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

17
b. Claims 23–25, 75, and 76
Claims 23–25 depend directly from claim 22. Claims 22 depends
from claim 20, which, in turn, depends from claim 1. Claims 75 and 76
depend directly from claim 74. Claims 74 depends from claim 72, which in
turn depends from claim 50. Claims 23–25, 75, and 76 require that the first
communication device include a nonvolatile memory, and that specific
“performance algorithms” for performing particular calculations or
producing particular results are stored on the memory.
In determining that the anticipation rejection of claims 23–25, 75, and
76 should not be maintained, the Examiner states the following:
Regarding claims 23-25, 75, and 76, Examiner agrees
with PO on pages 20 and 26 of PO Response that Hinckley
does not anticipate claims 23-25, 75, and 76. 3PR generally
asserts on page 15 of 3PR Response that “Clearly Hinckley
discloses performance algorithms as claimed.” However, claims
23-25, 75, and 76 recite further details with respect to
performance algorithms that are not found in Hinckley. Claim
23 recites that “the performance algorithms calculate custom
information personal to a user in real-time.” Claims 24 and 74
each recite that “the performance algorithm produces a
Motivation Index that represents the overall level of enthusiasm
or enjoyment for a particular activity.” Claims 25 and 76 each
recite that “the performance algorithm produces a composite
numerical value derived from a weighted average of statistical
performance indicators and subjective user input including at
least one of the following items: relative scoring improvements,
conformity to a range of motion pattern, duration of
participation, high activity access rate, relative skill level
improvement, daily goal achievement.”

Ex’r Determ. 18–19.
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

18
Motiva urges that the Examiner’s determination should be confirmed
by the panel. PO 41.77(e) Resp. 2. In contending that the Examiner’s
determination is in error, Nintendo argues that the required performance
algorithms “are inherent in the teachings of Hinckley.” 3PR 41.77(e)
Comm. 4. Nintendo bases that inherency theory on the following disclosure
of Hinckley: “‘[g]iven natural variations in user performance, the algorithm
requires some flexibility to reliably sense when the user brings two tablets
together, but the algorithm cannot be too flexible.’ (Hinckley at 154).” Id.
Inherency is not established by probabilities or possibilities.
MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed.
Cir. 1999). The prior art necessarily must function in accordance with, or
include, the claimed limitations, in order to anticipate. See id. Here, in
considering the entirety of the record now before us, it is not apparent how
the general “algorithm” set forth above as a part of Hinckley’s disclosure
necessarily amounts to disclosure of the particular stored performance
algorithms required by claims 23–25, 75, and 76. In that respect, Hinckley’s
disclosure of an algorithm that operates in connection with sensing when
two tablets are brought together does not convey intrinsically all algorithms,
including the specific performance algorithms required by the noted claims.
Accordingly, we are satisfied that, on this record, the Examiner is
correct in her determination that the rejection of claims 23–25, 75, and 76
should not be maintained.
c. Claims 28–32
Claims 29–31 ultimately depend from claim 28. Claims 28 and 32 are
reproduced below:
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

19
28. A system according to claim 27, wherein said
processing system is adapted to determine movement
information for both said first and second communication
devices and to calculate a displacement vector from said
movement information.
---
32. A system according to claim 27, wherein said
processing system is adapted to determine movement
information for both said first and second communication
devices and wherein a vector is calculated and compared to a
desired reference vector to calculate a numerical result and
wherein said processing system sends feedback signals to said
first communication device based on said numerical result, said
first communication device further comprised of an output
device for providing feedback stimuli to the user in response to
said received feedback signals.

PO Reopen Req. Claims App’x ii–iii.
Thus, each of claims 28 and 32 requires the calculation of a “vector”
based on movement information that has been determined for first and
second communication devices. In claim 28, that vector is characterized as a
“displacement vector.” In claim 32, the vector calculated is compared to a
“desired reference vector” to calculate subsequently a numerical result used
in conjunction with feedback signals provided by the processing system to
the first communication device.
Both the Examiner and Motiva take the position that Hinckley lacks
disclosure of the features directed to the vector calculations based on the
movement information that is required by claims 28-32. See Ex’r Determ.
19–20; PO Reopen Req. 23–24. Although, each of the Examiner and Motiva
refers specifically to “displacement vector” in expressing that position, it is
apparent, in our view, that the vector features of claim 32 also are urged as
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

20
being absent from Hinckley. Indeed, the Examiner makes clear that her
determination that claims 29–32 are not anticipated by Hinckley is based
also on the “additional limitations” recited in those claims, i.e., the vector
aspects of claim 32. Ex’r Determ. 20.
Nintendo’s Comments provided in response to the Examiner’s
Determination are unavailing insofar as providing clarity as to how Hinckley
discloses the above-noted vector features. During the course of this inter
partes reexamination proceeding, Nintendo has pointed generally to large
portions of Hinckley’s disclosure as satisfying the pertinent vector features
of the claims. In that respect, Nintendo urged that the pertinent features are
met in Hinckley with a citation to that reference of “See p. 152-153; p. 155”
and “See p. 154; 151.”
16
In reviewing those portions of Hinckley we discern
that they convey description of particular mechanics of Hinckley’s bumping
operation to facilitate information exchange between two computer tablets.
We conclude, however, that it is less than clear what specific content therein
amounts to the vector calculations and usages that are required by claims
28–32. In that respect, Hinckley does not refer to any “vectors,” and, on the
record before us, we have not been provided with suitable persuasive
argument that any description of Hinckley’s content constitutes such vectors.
Anticipation under 35 U.S.C. § 102 requires that each and every
element in a claim, arranged as is recited in the claim, must be found in a
single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001). In evaluating the record at hand, we do

16
See Nintendo’s “Requester’s Appeal Brief” filed May 16, 2011, pp. 23–
24.
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

21
not discern that the Examiner was incorrect in concluding that certain
features of claims 28–32 are not set forth by Hinckley. We, thus, do not
discern error in the Examiner’s determination that claims 28–32 are not
anticipated by Hinckley.
d. Claim 81
Claim 81 is reproduced below:
81. An apparatus according to claim 50 further comprised
of an output device and wherein said apparatus processes said
feedback data from the processing system and provides
stimulus from said output device to cue the user to move in a
predetermined direction to assess the user’s ability to balance.

PO Reopen Req. Claims App’x vii.
Motiva generally contends that claim 81 is not anticipated by
Hinckley “based on the reasons given above for other claims having
common limitations.” Id. at 26. Yet, it is not apparent what other claims
discussed by Motiva have “common limitations” with claim 81, or
correspondingly, what the “reasons” relied upon by Motiva are. The
Examiner concludes that the recitation of “to assess the user’s ability to
balance” distinguishes claim 81 over Hinckley. Ex’r Determ. 20.
Hinckley describes that “audio feedback” and “visual feedback” may
be provided to a user to signal when connection has been made or broken
between linked tablets based on movement of the tablets that are handled by
a user. Hinckley 152. Indeed, as was noted by the Examiner (see Ex’r
Determ. 20), Hinckley describes by way of example:
A user can “pour” information from his tablet into another
user’s tablet by tilting hit tablet up when bumping with the
other user’s tablet. If the table it tilted more than 15 degrees
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

22
relative to the other tablet when the users bump tablets, the
software send the clipboard information to the other device.
The table receiving the clipboard data makes the sound of water
dripping in a pool to suggest the pouring metaphor.

Hinckley 153.
Thus, Hinckley describes that movement and orientation of a tablet
held by a user provides a stimulus in the form of an audio cue that influences
a user’s movement. In another example, and as noted by Nintendo (Req.
41.77(e) Comm. 5–7), Hinckley explains that “arrows” may be displayed on
the display of one device “pointing at the edge of the screen that the other
display will dock to,” which cues movement by a user to bring the
corresponding devices into appropriate docking orientation. Hinckley 152.
Although the Examiner generally contends that the recitation “to
assess the user’s ability to balance” somehow differentiates claim 81 from
Hinckley, it is not apparent what or who is performing the assessment, or
how such assessment operates to structurally distinguish the apparatus of
claim 81 from the devices of Hinckley’s disclosure. Moreover, it is evident
in Hinckley that facilitating the linking or docking of devices requires some
level or degree of coordinated motion by a user. We do not discern why that
requirement of coordinated motion falls short of some assessment of a user’s
ability to balance.
Accordingly, we are satisfied that Hinckley sets forth all the structural
characteristics required by claim 81, and conclude that the Examiner was
incorrect in determining that the claim is not anticipated by Hinckley.
Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

23
III. CONCLUSION
In this New Decision under 37 C.F.R. § 41.77(f), we modify our
earlier decision (2012-002525), which forms part of this present decision, to
withdraw rejections of claims 23–25, 28–32, 75, and 76 under 35 U.S.C.
§ 102 as anticipated by Hinckley.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

Appeal 2014-004293
Reexamination Control 95/000,540
Patent 7,292,151 B2

24
ack
PATENT OWNER:
STANDLEY LAW GROUP LLP
6300 RIVERSIDE DRIVE
DUBLIN, OH 43017

THIRD-PARTY REQUESTER:
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11
TH
FLOOR
ARLINGTON, VA 22203