Ex Parte 5816918 et al

Board of Patent Appeals and Interferences

Sep 7, 2010

90006601 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Addrcss: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virgmia 223 13- 1450
www.uspla.gov
EXAMINER I
C/O Intellevate LLC HARRISON, JESSICA
CONFIRMATION NO.
P.O. BOX 52050
Minneapolis, MN 55402
90/006,60 1 041 1 512003 5816918 BLLYPO26.REO I 9274
ATTORNEY DOCKET NO. FIRST N A M E D INVENTOR AI'I'LICATION NO FILING DATE
A R T UNIT
Please find below and/or attached an Office communication concerning this application or proceeding.
PAPER NUMBER
MAIL DATE
The time period for reply, if any, is set in the attached communication.
1
DELIVERY MODE
09/07/20 10 PAPER

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte SIERRA DESIGN GROUP, INC.,
Appellant and Patent Owner
____________________
Appeal 2009-011644
Reexamination Control 90/006,601
Patent 5,816,918
Technology Center 3900
____________________

Before KEVIN F. TURNER, DANIEL S. SONG, and KEN B. BARRETT
Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for commencing a civil action, as recited in 37
C.F.R. § 1.304 begins to run from the “MAIL DATE” (paper delivery mode)
or the “NOTIFICATION DATE” (electronic delivery mode) shown on the
PTOL-90A cover letter attached to this decision.

Appeal 2009-011644
Application 90/006,601

2
STATEMENT OF THE CASE
Appellant requests that we reconsider the Panel’s Decision of
September 15, 2009 (“Decision”), in Appellant’s Request for Rehearing
(hereinafter “Req. for Reh’g”), filed November 16, 2009, wherein we
affirmed the Examiner’s rejection of claims 34, 35, 37, 39, 41, 42, 44, 78,
and 80-82 under 35 U.S.C. § 102(e) as anticipated by Ringo, claims 36, 37,
43, 79, and 80 under 35 U.S.C. § 103(a) as being unpatentable over Ringo
and Schneier, and claims 40, 43, 79, and 80 under 35 U.S.C. § 103(a) as
being unpatentable over Ringo and Thacher.2
Appellant alleges that all of the claim rejections are erroneous and
should be reversed (Req. for Reh’g 2). Specifically, Appellant argues that
we did not consider the limitations of Ringo and the “distinctly different
limitations” of the appealed claims (Req. for Reh’g 3).
We have reconsidered the prior Decision in light of Appellant’s
arguments in the Request for Rehearing, and we acknowledge an error in our
analysis. Because we find this error to be minor, and having no effect on the
ultimate outcome of the Appeal, we affirm the prior Decision, other than the
changes discussed infra.

ANALYSIS
With respect to independent claim 34 and thus all of the appealed
claims, Appellant argues that our Decision relies on the disclosure of Ringo
to expand the claims of Ringo beyond what is actually claimed, and thus

2 Appellant also addresses the rejection of claims 38 and 45 under 35 U.S.C.
§ 103(a) as being unpatentable over Ringo and Wendkos (Req. for Reh’g 2),
but that rejection was withdrawn in the Answer (Ans. 2-3).
Appeal 2009-011644
Application 90/006,601

3
takes into account what Ringo could have claimed but did not (Req. for
Reh’g 7). Appellant also argues that to extent that the Decision relies upon
descriptions in Ringo beyond what is actually claimed, this either expands
Ringo’s claims beyond the claims’ explicit scopes or encroaches into the
area of anticipation based on description, rather than based on interfering
claims (Req. for Reh’g 8). We do not agree.
As discussed in our Decision, Appellant previously argued that
Appellant should be able to antedate Ringo through its proffered Declaration
under 37 C.F.R. § 1.131, and we found we were precluded to review the
results of Appellant’s Petition, seeking suspension of the rules, which was
denied (Decision 11). We did not address whether Appellant had other
means of redress, and looked to the decisions of the Examiner to determine
aspects on the merits which were reviewable. To that end, we examined the
propriety of the Examiner’s determination of whether Ringo’s claims and
Appellant’s claims are directed to the same patentable invention (id.). To
that end, we considered the claims in the instant reexamination and Ringo’s
claims under a two-way patentability analysis under 37 C.F.R. § 41.203(a),
to find that they were directed to the same invention or were patentably
indistinct (Decision 13).
As Appellant is no doubt aware, § 1.131 provides the language of:
“which claims the same patentable invention as defined in § 41.203(a),”
where the latter provides “if the subject matter of a claim of one party
would, if prior art, have anticipated or rendered obvious the subject matter of
a claim.” As such, our analysis in the Decision was drawn to both
anticipation and obviousness, to determine the propriety of the Examiner’s
Appeal 2009-011644
Application 90/006,601

4
determination that Ringo’s claims and Appellant’s claims were drawn to the
same patentable invention. In that narrow analysis, we considered the
Abstract of Ringo, which was improper.
In terms of determining the propriety of an interference-in-fact,
obviousness considerations require whether the prior art would have
suggested to those of ordinary skill in the art that they should make the
claimed device and whether such a skilled artisan would have a reasonable
expectation of success. These factors must be found in the prior art and not
in disclosure of the subject claim’s patent. Noelle v. Lederman, 355 F. 3d
1343, 1351-1352 (Fed. Cir. 2004) (citing In re Vaeck, 947 F.2d 488, 493
(Fed. Cir. 1991) and In re Dow Chem. Co., 837 F.2d 469, 473 (Fed. Cir.
1988)). Our Decision took the Abstract of Ringo, i.e., distribution of an
award to plural tournament winners, into account in finding such distribution
to be an obvious variation of claims 1 and 2 of Ringo. This was in error.
However, we need not resort to the disclosure of Ringo to determine
that claim 2 of Ringo renders the instant, rejected claims to be obvious.
Both Schneier (col. 1, l. 59 – col. 2, l. 10) and Thacher (col. 1, ll. 12-25),
cited in the obviousness rejections, suggest the distribution of a tournament
prize value to one or more winning players from the tournament participants.
The disclosures of both Schneier and Thacher suggest the variation possible
for Ringo’s claim 2, and show that such variation would have a reasonable
expectation of success. In this respect, we found no error in the Examiner's
reliance on secondary references. (Decision 13). As such, we still find that
the Examiner did not error in finding Appellant’s rejected claims to be
Appeal 2009-011644
Application 90/006,601

5
obvious over claim 2 of Ringo, and thus directed to the same patentable
invention.
With respect to Appellant’s overall arguments, if § 41.203(a)
specified that the subject matter of one claim would have to anticipate the
subject matter of the other claim, we would agree with Appellant’s
arguments that our analysis would have expanded the scope of the claims;
however, § 41.203(a) provides for “anticipated or rendered obvious.” Our
analysis did not otherwise address the specifics of the anticipation or
obviousness rejections of Appellant’s claims because Appellant provided no
arguments pointing out errors in those rejections (Decision 14). As such, we
find no error in the Decision, other than the minor error in the analysis
discussed supra.
In addition, while Appellant raises issues separately with respect to
different groupings (Req. for Reh’g 2, 9-13), Appellant’s arguments are the
same with respect to our Decision’s alleged expansion of Ringo’s claims,
and do not specifically point out errors in the rejections applying Ringo,
Schneider, and Thatcher, only that they should not have been applied as the
Examiner provided in the final rejection.

CONCLUSION
Based on the analysis above, we discern no error in our conclusion
that the Examiner correctly rejected claims 34-37, 39-44, and 78-82 over the
prior art of record. Accordingly, we modify our Decision only to the extent
discussed above.
Appeal 2009-011644
Application 90/006,601

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED
ack

cc:

Patent Owner:
TIPS/BALLY
c/o Intellevate LLC
P.O. BOX 52050
Minneapolis, MN 55402

Third Party Requester:
Marc S. Kaufman
NIXON PEABODY, LLP
401 9th, N.W.
Suite 900
Washington, DC 20004