Ex Parte 7,677,948 B2 et al

Patent Trial and Appeal Board

Mar 31, 2014

95001341 (P.T.A.B. Mar. 31, 2014)

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.
95/001,341 04/20/2010 7,677,948 B2 GANZ-36219US23 6099
26206 7590 04/01/2014
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
KISS, ERIC B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2014 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
____________

HASBRO, INC.
Requester

v.

GANZ
Patent Owner
____________

Appeal 2014-002518
Reexamination Control 95/001,341
Patent 7,677,948 B2
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU, and DENISE M.
POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION
Examiner’s Determination under 37 C.F.R. § 41.77(d)
37 C.F.R. § 41.77(f)

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In an earlier Decision, Appeal No. 2012-009496, mailed October 31,
2012 (“Decision”), the Board reversed the Examiner’s decision favorable to
the patentability of claims 1-31 and 33-68 of U.S. Patent No. 7,677,948 B2
(the “’948 patent”). Decision 13-14. In particular, we reversed the
Examiner’s decision not to reject claims 1-31 and 33-68 over prior art. Our
reversal of the Examiner’s decision in connection with the prior art
rejections of claims 1-31 and 33-68 was designated new grounds of rejection
pursuant to 37 C.F.R. § 41.77(b).
Patent Owner elected to reopen prosecution and submitted claim
amendments affecting claims 1, 16, 35 and 43.
1
Requester did not file
comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s
initial request to reopen prosecution. In accordance with 37 C.F.R.
§ 41.77(d), the Examiner determines that “the request to reopen prosecution
does not overcome the new grounds of rejection . . . .”
2
Hence, the
Examiner rejects the claims as follows:
1) Claims 1, 5-7, 14-16, 20-22, 29, 33-36, and 42 under 35
U.S.C. § 103(a) as unpatentable over Kim and Loyall;
and
2) Claims 2-4, 8-13, 17-19, 23-28, 30, 31, 36-41, and 43-68
under 35 U.S.C. § 103(a) as unpatentable over Kim,
Loyall, and Sims Booklet.

1
“Request to Reopen Prosecution After Decision By the PTAB,” dated
November 30, 2012 (“Patent Owner’s initial request to reopen prosecution”
or “PO Request”).
2
See “Determination under 37 CFR § 41.77(d)” mailed October 18, 2013
(“Examiner’s Determination” or “Ex’r Determ.”), p. 9.
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Pursuant to 37 C.F.R. § 41.77(e), Patent Owner submitted a response
to the Examiner’s Determination.
3
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.
Patent Owner argues that “there is no current rejection in place against
the claims of this application” (PO Response 3). We disagree with Patent
Owner because, as the Decision states, “[t]his decision contains new grounds
of rejection pursuant to 37 C.F.R. 41.77(b)” (Decision 14). Also, the
Examiner enumerates “new grounds of rejection” (Ex’r Determ. 3, citing
Decision 9-10).
Patent owner argues that the Decision “does not affirmatively put
Patent Owner on notice of any specific rejection or basis for rejection” (PO
Response 4; see also PO Response 9). We disagree with Patent Owner for
the previously stated reasons and because, at least, the Examiner explicitly
enumerates “new grounds of rejection” of claims 1, 5-7, 14-16, 20-22, 29,
33-36, and 42 under 35 U.S.C. 103(a) as obvious over Kim and Loyall and
claim 2-4, 8-13, 17-19, 23-28, 30, 31, 36-41, and 43-68 as obvious over Kim
Loyall, and Sims Booklet (Ex’r Determ. 3, citing Decision 9-10). In
addition, Patent Owner acknowledges the claim rejections by correctly
stating that “the Board reversed the Examiner’s previous affirmance of the
original patent claims, and entered a new rejection on the grounds that
claims 1-31 and 33-68 are unpatentable based on various combinations of
[Kim] and the Sims Booklet” (PO Request 16).

3
“Response After Decision Under 37 C.F.R. § 41.77(d),” filed November
18, 2013 (“PO Response”).
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In response to the new ground of rejection set forth in the Decision
and maintained by the Examiner, Patent Owner amended claim 1 to add the
following limitation: “subsequent to registering the first product and the
second product, displaying the first virtual representation of the first product
in a virtual room on the website together with said second virtual
representation of the second product” (PO Request 2-3). Claim 1 is
otherwise unchanged. Patent Owner does not assert or otherwise provide
specific arguments that such an amendment renders the claim patentable
over the cited prior art references or otherwise overcomes the new ground of
rejection set forth in the Decision and maintained by the Examiner. Indeed,
Patent Owner does not appear to provide arguments sufficient to
demonstrate persuasively that the claim amendments to claim 1 relate “to the
claims so rejected” as required under 37 C.F.R. § 41.77(b).
Instead, Patent Owner merely presents arguments similar to those
previously provided in support of original (unamended) claim 1 over the
cited references. For example, Patent Owner re-iterates the previously
presented argument that the combination of Kim and Loyall supposedly fails
to disclose or suggest a “user account” (PO Response 3-4; see also PO Resp.
Br.
4
5 – “Kim does not teach creation of a user account”). This argument
was fully addressed in the Decision (see, Decision 4-6, for example). Patent
Owner does not provide arguments sufficiently persuasive to modify the
Decision with respect to this issue.
Patent Owner also re-iterates the argument that Kim fails to disclose
or suggest “linking the product with the user account” (PO Response 6; see

4
Respondent’s Brief of Patent Owner, filed May 13, 2011 (“PO Resp. Br.”).
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also PO Resp. Br. 5-6). This claim limitation was also recited in original
(unamended) claim 1. Patent Owner’s previously presented argument was
previously addressed in the Decision (see, e.g., Decision 5-6). Patent Owner
does not provide arguments sufficiently persuasive to modify the Decision
with respect to this issue.
Patent Owner also argues that “information about the purchase [as
recited in claim 1 must be] stored in some memory” and that “Kim provides
no disclosure or suggestion of storing the purchase information in a
memory” (PO Resp. 9). Patent Owner’s argument does not constitute an
amendment or “new evidence” “relating to the claims so rejected” as
required under 37 C.F.R. § 41.77(b). For example, neither original claim 1
nor amended claim 1 recites “storing purchase information in a memory”
and therefore, the new ground of rejection was not based on this limitation
that is not present in the claim.
In any event, even assuming that claim 1 recites that purchase
information must be stored in a memory, as Patent Owner now contends,
Patent Owner does not persuasively refute the prima facie showing of
obviousness to one of ordinary skill in the art of storing data in a memory.
In fact, Patent Owner points out that “Kim has a database” and “has ‘local
buffers’ . . . that hold data related to users,” and “has memory locations
specific to a user . . . so Kim certainly does have memories” (PO Resp. 9).
Given that Kim explicitly discloses memory that stores data, we cannot
agree with Patent Owner that Kim supposedly fails to disclose or suggest
this feature. Also, based at least on the fact that Kim discloses storing data
in memory, Patent Owner does not adequately demonstrate that the practice
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of storing data in memory would have been beyond the capabilities of one of
ordinary skill in the art or would have been considered by one of ordinary
skill in the art to have been “uniquely challenging or difficult” to perform.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l, 550 U.S. at 421. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Patent Owner also argues that it would not have been obvious to one
of ordinary skill in the art to have combined the teachings of Kim and Loyall
(and Sims Booklet) because, according to Patent Owner the combination of
references “does not even recognize the problem that is solved by the
present claims” (PO Resp. 10) and that “[t]he solution of Claim 1 would not
be ‘obvious to try’” (PO Resp. 11). Patent Owner’s combinability
arguments do not constitute amendments or new evidence relating to “the
claims so rejected” as required under 37 C.F.R. § 41.77(b) for reopening
prosecution. We, therefore, need not address these arguments. In any event,
we disagree with Patent Owner’s argument regarding the obviousness of the
combinability of references to one of ordinary skill in the art for at least the
reasons set forth in the Decision and in the Examiner’s Determination (see,
e.g., Decision 4-13 and Exr’s Determ. 4-5).
Patent Owner argues that the combination of Kim and Loyall (and
Sims Booklet) fails to disclose or suggest “registering a second product” (PO
Resp. 11-12; see also RAN 8). Patent Owner’s argument does not constitute
an “amendment” or “new evidence” related to the “claims so rejected as
required by 37 C.F.R. § 41.77(b). Therefore, we need not consider Patent
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Owner’s argument. In any event, this issue was previously addressed in the
Decision and we disagree with Patent Owner for at least the previously
stated reasons (see e.g., Decision 8). Patent Owner does not provide
arguments sufficiently persuasive to modify the Decision with respect to this
issue.
In the Decision, we concluded that it would have been obvious to one
of ordinary skill in the art, given the combination of Kim and Loyall, to
provide an option to a user to switch control from a selected one of a first
and second virtual representation to the other of the first and second virtual
representations, as recited in claim 1 (Decision 9). Patent Owner argues that
the combination of Kim and Loyall (and Sims) “does not render it obvious to
display two avatars under control of the same user” (PO Resp. 15). Hence,
Patent Owner argues that the combination of Kim and Loyall fails to
disclose or suggest providing “the user an option to switch control from the
selected one of said first virtual representation and said second virtual
representation to the other of said first virtual representation and said second
virtual representation,” as recited in original (unamended) claim 1.
Patent Owner’s arguments do not constitute “an amendment” or “new
evidence” “relating to the claims so rejected” as required under 37 C.F.R. §
41.77(b) for reopening prosecution. Therefore, we need not consider Patent
Owner’s argument. In any event, even after reconsideration of Patent
Owner’s arguments (e.g., PO Resp. 14-17), we do not find them to be
persuasive for at least the previously stated reasons in the Decision (see, e.g.,
Decision 8-9). Patent Owner does not provide arguments sufficiently
persuasive to modify the Decision with respect to this issue.
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Therefore, we affirm the Examiner’s decision to maintain the rejection
of claim 1, and claims dependent therefrom.
Regarding claim 16, Patent Owner amends claim 16 to add the
limitation “linking the first registration code to said user account,” “said
second registration code being linked to said user account,” and that
specialized content is being linked “through said first and second registration
code.” Claim 16 is otherwise unchanged. Patent Owner does not assert or
demonstrate persuasively that the amendments to claim 16 overcome the
new ground of rejection as set forth in the Decision and maintained by the
Examiner. Hence, Patent Owner’s claim amendments do not relate “to the
claims so rejected” as required by 37 C.F.R. § 41.77(b) for reopening
prosecution.
Instead, Patent Owner re-iterates arguments for claim 1 in support for
claim 16 (e.g., “Kim and Loyall are completely silent as to user accounts”
(PO Resp. 7; see also PO Resp. Br. 5); “[n]either Kim nor Loyall/Sims
teaches or suggests . . . linking the . . . registration codes to the user account
so that the registration codes do not need to be entered again” (PO Resp. 8;
see also PO Resp. Br. 5-7, for example)). As described above, Patent
Owner’s arguments were fully addressed in the Decision. Patent Owner
does not provide arguments sufficiently persuasive to modify the Decision
with respect to this issue.
Therefore, we affirm the Examiner’s decision to maintain the rejection
of claim 16, and claims dependent therefrom.
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Regarding claim 43, Patent Owner amends claim 43 to recite
“linking” a first product with the user account, “linking” a second product
with the user account, and that second content is “linked” with the user
account. Claim 43 is not otherwise substantively amended. Patent Owner
argues that original (unamended) claim 43 recites that “the linked second
content is unavailable before both first and second products are registered”
(PO Resp. 18). Patent Owner’s arguments do not constitute “an
amendment” or “new evidence” “of the claims so rejected” as required under
37 C.F.R. § 41.77(b) for reopening prosecution. Therefore, we need not
consider Patent Owner’s argument. In any event, even after consideration of
Patent Owner’s arguments (e.g., PO Resp. 17-18), we do not find them to be
persuasive for at least the previously stated reasons in the discussion of
multiple avatars in the Decision (see, e.g., Decision 8-9). Patent Owner does
not provide arguments sufficiently persuasive to modify the Decision with
respect to this issue.
Therefore, we affirm the Examiner’s decision to maintain the rejection
of claim 43, and claims dependent therefrom.
Patent Owner amends claim 35 to add the limitation “moving said
virtual representation of said first product together with said virtual
representation of said second product into a virtual room on the website for
interactive play.” Claim 35 is otherwise unchanged. Patent Owner does not
provide additional arguments in support of claim 35 and does not explain
how the amendments of claim 35 overcome the new ground of rejection
relating to “the claims so rejected” as required under 37 C.F.R. § 41.77(b).
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Therefore, we affirm the Examiner’s decision to maintain the rejection of
claim 35, and claims that depend therefrom.
Patent Owner does not propose claim amendments to claim 55 and
does not provide “new evidence” that relates to claim 55 “so rejected” as
required under 37 C.F.R. § 41.77(b) for reopening prosecution. Thus,
prosecution of claim 55 (and claims that depend therefrom) is not reopened
under 37 C.F.R. § 41.77(b), Patent Owner not having met the criteria for
reopening prosecution under 37 C.F.R. § 41.77(b). The rejection of claim 55
(and claims depending therefrom) is maintained for reasons previously
stated in the Decision. Therefore, we affirm the Examiner’s decision to
maintain the rejection of claim 55, and claims dependent therefrom.
Patent Owner does not provide additional arguments in support of
dependent claims 2-15, 17-31, 33-34, 36-42, 44-54, and 56-68. We affirm
the Examiner’s decision to maintain the rejections of these claims.

CONCLUSION
We affirm the Examiner’s decision to maintain the rejection of claims
1, 5-7, 14-16, 20-22, 29, 33-36, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Kim and Loyall and claims 2-4, 8-13, 17-19, 23-28, 30,
31, 36-41, and 43-68 under 35 U.S.C. § 103(a) as unpatentable over Kim,
Loyall, and Sims Booklet.

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
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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

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ack

Patent Owner

PEARNE & GORDON LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108

Third Party Requester

Kenneth H. Ohriner
PERKINS COIE LLP
P.O. Box 1208
Seattle, WA 98111-1208