Ex Parte Heatherly et alDownload PDFPatent Trial and Appeal BoardSep 27, 201813135538 (P.T.A.B. Sep. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/135,538 07/07/2011 63649 7590 10/01/2018 DISNEY ENTERPRISES, INC. C/0 FARJAMI & FARJAMI LLP 26522 LA ALAMEDA A VENUE, SUITE 360 MISSION VIEJO, CA 92691 FIRST NAMED INVENTOR Christopher W. Heatherly 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0260286C 8278 EXAMINER PHAM LU, NGAN T ART UNIT PAPER NUMBER 2626 NOTIFICATION DATE DELIVERY MODE 10/01/2018 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): docketing@farj ami. com farjamidocketing@yahoo.com ffarj ami @farj ami. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER W. HEATHERLY, KENLIP ONG, ARMEN MKRTCHYAN, JONATHAN BACKER, and BRIAN WHITE 1 Appeal2018-002306 Application 13/135,538 Technology Center 2600 Before BARBARA A. BENOIT, MICHAEL M. BARRY, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 31-34 and 41-50. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Disney Enterprises, Inc. App. Br. 2. Appeal2018-002306 Application 13/135,538 SPECIFICATION Appellants' Specification relates generally to the field of gaming, and more specifically, to gaming using touch sensitive surfaces. Spec. 1. The Specification discloses a system and method for providing physical pieces for interactive, applications using touch screen devices. Id. at 3. Figure la of the Specification is reproduced below: 100 Fig. 1a / TOUCH SCREEN OF.VICE -------~~~~~~~"' MEMORY I 120 j F~XE~~~~BLE j j'ToE~;irNGll I r;·~;;~S$~~;·1 r;;~;;;;.l L 2;1 -··· LJ , .,.rn. J 1 1fil: ....................... ..... .. . . L.., .. .,.,.l ........... L. ..... r ,:;=-................. J .............. :··-······················· ...... ' .. t .. .) ___________ J ....... '-124 TOUCN SCREEN DISPLAY '. 11c I 126 ,< 11'5b 12ll 112a ',c,,·::-::,-~ " \ ) _,..1_!.5c 11§ --Sil. / i ! ~fff __ \er,,: I I ! I I I I I ! . I \ \ \ \ I\ GAME PIECE 110a \ \ j j()c T~~~:;···~----:~ l ~ W" :11IB I 110b ....................... --·~-----l 102 Figure 1 a is a diagram of a touch-sensitive system for facilitating an interaction using a first peripheral device (game piece 102) and a second peripheral device (game piece 104). Spec. 4, 6. The touch-sensitive system includes electronic device 106 with touch surface 116. Id. at 5. Peripheral device 102 includes touch lead 108 and touch points 11 Oa, 11 Ob, and 11 Oc, 2 Appeal2018-002306 Application 13/135,538 which provide touches 111 a, 111 b, and 111 c, respectively, on touch surface 116. Id. Peripheral device 104 has corresponding components, which provide corresponding touches on touch surface 116. Id. Figure 1 b of the Specification is reproduced below: Fig. 1 b 116 i 152 ..; Figure 1 b also shows a touch-sensitive system for facilitating interaction using first and second peripheral devices. Spec. 4. In Figure 1 b, peripheral devices 102, 104, and 150 represent digital characters in a video game running on electronic device 106. Id. at 6. Lake 160, house 162, truck 164, car 166, road 168, horse 170, and grass 172 are digital elements displayed as images on touch surface 116. Id. Electronic device 106 runs the video game based on any of the identity, position, and orientation of peripheral devices 102, 104, and 150, which interact with the digital elements displayed on touch surface 116. Id. at 6, 7. 3 Appeal2018-002306 Application 13/135,538 CLAIMED INVENTION Independent claim 31, reproduced below, is illustrative of the claimed invention: Claim 3 1. A method of facilitating an interaction with a physical toy using a touch-sensitive system having a processor and a touch surface, the physical toy having a receiving part for attaching a physical accessory thereto and detaching the physical accessory therefrom, the method comprising: running an interactive software on touch-sensitive system; displaying digital elements on a screen display of the touch surface; detecting, using the touch surface and the processor, the physical toy touching the touch surface of the touch-sensitive system when the physical accessory is not attached to the physical toy; determining, using the processor, a position of the physical toy with respect to the digital elements displayed on the touch surface; determining, using the processor, the physical accessory when the physical accessory is attached to the physical toy by detecting, using the touch surface, a signal generated by the physical toy, wherein the signal is generated in response to attaching the physical accessory to the receiving part of the physical toy; and interacting with the physical toy based on the physical accessory attached to the physical toy and the position of the physical toy with respect to the digital elements displayed on the touch surface. 4 Appeal2018-002306 Application 13/135,538 Gilboa Wolfson Cannon Hoang REFERENCES us 5,853,327 US 2008/0191864 Al US 2011/0227871 Al US 2012/0264089 Al REJECTIONS Dec. 29, 1998 Aug. 14, 2008 Sept. 22, 2011 Oct. 18, 2012 Claims 31, 32, 34, 41, 42, 44--46, and 48-50 stand rejected under pre- AIA 35 U.S.C. § I03(a) as unpatentable over the combination of Cannon and Gilboa. Final Act. 3. Claims 33 and 43 stand rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over the combination of Cannon, Gilboa, and Hoang. Final Act. 7. Claim 47 stands rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over the combination of Cannon, Gilboa, and Wolfson. Final Act. 8. ANALYSIS Claim 31 The Examiner finds that Cannon teaches all elements of claim 31, except the elements that recite (i) detecting the physical toy touching the touch surface of the touch-sensitive system when the physical accessory is not attached to the physical toy ("detecting element") and (ii) determining the physical accessory when the physical accessory is attached to the physical toy by detecting, using the touch surface, a signal generated by the physical toy, wherein the signal is generated in response to attaching the physical accessory to the receiving part of the physical toy ("determining- the-physical-accessory element"). Final Act. 3--4. The Examiner finds 5 Appeal2018-002306 Application 13/135,538 Gilboa teaches the detecting and determining-the physical-accessory elements. Id. at 4--5. For the latter element, the Examiner cites Figure 21 of Gilboa, 2 which is reproduced below: Fig. 21 11,,10 1,rno Figure 21 illustrates an electronic game board system adapted for the game titled "The Game of Knights." Gilboa 6:56-58. In this game, players add, remove, or move playing pieces, such as knights 1430, horses 1450, and canons 1460, on board 1410. Id. at 21:26-27. A sensing array in board 1410 detects when a piece is moved from one cell 1440 to another cell 1440. Id. at 21:28-33. When a knight 1430 is moved, a sound of footsteps is emitted. Id. at 21:41--42. When a sword is attached to knight 1430 and the knight moves, a different sound can be emitted. Id. at 21 :42--44. The Examiner finds Gilboa's disclosure regarding knight 1430, the knight's sword, and the sounds emitted when knight 1430 moves teaches the 2 Final Act. 5. 6 Appeal2018-002306 Application 13/135,538 determining-the physical-accessory element of claim 31. Ans. 3 35. Among other things, the Examiner finds that Gilboa uses its processor to determine that a sword (a physical accessory) is attached to knight 1430 (a physical toy) by using a signal generated by knight 1430. Ans. 5. The Examiner further finds that the signal generated by knight 1430 is responsive to attaching the sword to knight 1430. Id. Appellants dispute the Examiner's findings regarding knight 1430, the knight's sword, and the sounds emitted when knight 1430 moves. App. Br. 7-8. Appellants argue Gilboa teaches that each of its pieces or types of pieces generates a unique signal that can be used to identify the piece's location. Id. at 8. Appellants assert, therefore, that knight 1430 and the sword each emit a unique frequency and that Gilboa's processor determines a sword is attached to the knight by determining that both the sword and the knight are both at a particular cell 1440. Id. Therefore, according to Appellants, no signal generated by knight 1430 indicates that the sword is attached to knight 1430 (i.e., knight 1430 emits the same signal regardless of whether the sword is attached to it). Id. at 8-9. Appellants also assert that that the signal that knight 1430 emits when it has a sword attached is not generated in response to the sword being attached to the receiving part of the knight 1430 (i.e., knight 1430 emits the same signal regardless of whether the sword is attached). Id. at 9; Reply Br. 3--4. Because the rejection of claim 31 is based on obviousness, the issue before us is whether Gilboa teaches or suggests the disputed element (i.e., the determining-the physical-accessory element). We agree with the 3 The Examiner filed an Answer, dated December 14, 2017. In response to a Patent Appeal Center Return, the Examiner filed another Answer dated December 28, 2017, which is the Answer that we cite in this Decision. 7 Appeal2018-002306 Application 13/135,538 Examiner that it does. See Ans. 5 ( citing Gilboa, Fig. 21, 21 :26-46). First, we are not persuaded by Appellants' argument that Gilboa teaches that the sword would emit its own identifying signal. Gilboa teaches that, in a preferred embodiment, each of its different playing pieces or types of playing pieces would generate unique signals. Gilboa 4:41-52; see App. Br. 8 (citing Gilboa 4:42-52). Gilboa, however, does not refer to the sword as a playing piece. In fact, Gilboa identifies knights 1430, horses 1450, and canons 1460, but not the knight's sword, as playing pieces. Id. at 21:26-28. Similarly, in Gilboa, playing pieces are moved on board 1410, and Gilboa describes the knight, but not the sword, as moving on the board. Id. at 21:40-46. Second, Gilboa's description of exemplary circuitry to be used to generate its unique signals suggests that such circuitry would be in the knight, but not the sword. Figures 9 and 10 of Gilboa are reproduced below: Fig. 9 Fig. 10 8 Appeal2018-002306 Application 13/135,538 Figure 9 illustrates an electronic game board system, and Figure 10 illustrates a playing piece 120, with internal circuitry, for that electronic game board system of Figure 9. Id. at 6:13-20. Playing piece 120 is shown in both Figures 9 and 10. Figure 10 illustrates that the internal circuitry of playing piece 120 includes coil 240, which functions as a receiving- transmitting antenna; transceiver 250; and power source 260. Id. at 10: 16- 33. The scale of the illustrated circuitry relative to a playing piece that is moved on the board suggests incorporation into the knight, rather than the sword. See Figures 10 and 21 above. As illustrated, the internal circuitry constitutes a sizeable portion of the volume of playing piece 120, and, Figure 21 illustrates knight 1430 (the playing piece) as having far greater volume than the sword. See Figures 10 and 21 above. This suggests incorporating a variation of the involved circuitry into the knight, rather than the sword, which in tum, suggests having the knight emit the signal indicating the attachment of the sword in response to that attachment (i.e., the sword could not emit such a signal). Accordingly, we sustain the rejection of claim 31. Claims 32, 34, 41, 42, 44-46, and 48-50 Appellants do not separately argue claims 32, 34, 41, 42, 44--46, and 48-50 from claim 31. App. Br. 11. Accordingly, we sustain the rejection of 32, 34, 41, 42, 44--46, and 48-50. Claims 33, 43, and 47 Appellants present the same arguments for claims 33, 43, and 47 as for claim 31. App. Br. 12-13. Accordingly, we sustain the rejections of claims 33, 43, and 47. 9 Appeal2018-002306 Application 13/135,538 DECISION We affirm the rejections of claims 31-34 and 41-50. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 10 Copy with citationCopy as parenthetical citation