Ex Parte Hillis et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10735400 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL W. HILLIS and BRAN FERREN
____________

Appeal 2009-007453
Application 10/735,400
Technology Center 3700
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, 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.

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The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and apparatus for
collectively operating and controlling a plurality of controllers for one or
more on-screen entity (Spec. 3).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A video game controller hub, comprising:
means for receiving a plurality of control input sets from a
corresponding plurality of video game controllers, each of said
control input sets comprising a plurality of control inputs;
means for reducing said control input sets to at least one
reduced control input set according to a reduction scheme; and
means for providing said at least one reduced control input set
to a video game console;
wherein each reduced control input set determines an action of
a separate on-screen entity; and
wherein said video game controllers collectively control at least
one on-screen entity.
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The References
The Examiner relies on the following references as evidence:
Stiles Jr. US 5,404,305 Apr. 4, 1995
Tanaka US 2002/0072410 A1 Jun. 13, 2002

The Rejections
The following rejections are before us for review:
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Stiles and Tanaka.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

II. ISSUE
Has the Examiner erred in finding that the combination of Stiles and
Tanaka teaches or fairly suggests “means for providing said at least one
reduced control input set to a video game console” and “said video game
controllers collectively control at least one on-screen entity”, as recited in
claim 1?

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III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.
The PTO's construction here, though certainly broad, is
unreasonably broad. The broadest construction rubric
coupled with the term “comprising” does not give the
PTO an unfettered license to interpret claims to embrace
anything remotely related to the claimed invention.
Rather, claims should always be read in light of the
specification and teachings in the underlying patent. See
Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S.
211, 217, 61 S.Ct. 235, 85 L.Ed. 132 (1940).

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(In re Suitco Surface, Inc., No. 2009-1418, 2010 WL 1462294, at *4 (Fed.
Cir. 2010).)

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.

Stiles
1. Stiles discloses a dual piloted aircraft control system having
two control stations:
The present invention provides a significant
improvement over the prior art by providing a wholly
new mode of priority sharing between pilot and co-pilot
control stations. For small pilot inputs, the pilot and co-
pilot are permitted approximately equivalent control
priority to thereby permit transfer of control smoothly
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between stations and to permit an instructor pilot to work
with a student pilot through small, uninhibited inputs,
and additionally to permit the pilot and co-pilot to
tolerate small malfunctions of either controller. As the
pilot input increases above a first threshold magnitude
however, opposing co-pilot inputs are greatly attenuated.
In this situation, the pilot always has authority during a
difference in control from the co-pilot so that one of the
pilots is always in control of the aircraft. At very large
co-pilot inputs, the authority mismatch between the pilot
and co-pilot is attenuated so that the co-pilot can mitigate
a situation where the pilot input fails in a hard over
condition. In this situation, the co-pilot can input a
command opposite the failed hard over condition to
regain control of the aircraft prior to de-selecting the pilot
controller.

(col. 2, l. 57-col. 3, l. 10) (Emphases added).

Tanaka
2. Tanaka discloses a method and system of multiple game
controllers to control the game character icons simultaneously:
The exemplary case shown in which FIG. 5, the
transceiver 35A on the side of the video game machine
30 establishes radio communication with the transceivers
42a to 42c on three respective controllers 40a to 40c
(referred to as a controller group 50A, hereinafter) in a
one-to-three manner, and the transceiver 35B establishes
radio communication with the transceivers 42d and 42e
on two respective controllers 40d and 40e (referred to as
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a controller group 50B, hereinafter) in a one-to-two
manner.
The individual controllers 40a to 40e in the third
embodiment have display portions 41a to 41e similarly to
the foregoing embodiments, on which the controller
numbers, character icons or so assigned by the video
game machine 30 are displayed so as to explicitly be
recognized by the players.
([0087]-[0088], Fig. 5) (Emphases added).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
Claim Grouping
37 C.F.R. § 41.37(c)(1)(vii) follows in pertinent part.

When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the
appeal with respect to the group of claims as to the ground of rejection
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on the basis of the selected claim alone. Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the patentability of any
grouped claim separately.

Grouping of Claims

The Appellants have elected to argue claims 1-20 together as a
group (App. Br. 10). Therefore, we select independent claim 11 as the
representative claim for this group, and we will address the Appellants’
arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

35 U.S.C. § 103(a) rejections

We will address Appellants’ arguments with respect to independent
claim 1. With respect to claim 1, the Appellants contend that the
combination of Stiles and Tanaka fails to teach disputed claim limitations
because “Tanaka does not teach or suggest that the control inputs from the
individual controllers are reduced in any way.” (Reply Br. 4). According to
the Appellants, the Tanaka reference merely teaches individual control of a
single game character (Reply Br. 6). In addition, “Applicants have carefully
reviewed the entire disclosure and find no teaching or suggestion of multiple
players using multiple controllers to collectively control one game
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character.” (Reply Br. 5). The Appellants further contend that Stiles fails to
teach a video game controller collectively control at least one on-screen
controller (App. Br. 13). The Appellants also contend that “there is no
motivation to combine Stiles and Tanaka because neither reference is
improved by combining it with the other reference.” (Reply Br. 7).
We disagree with the Appellants’ contentions. We start our analysis
with claim construction. We broadly yet reasonably construe the claim
limitation “collectively control” as control “relating to or made by a number
of individuals taken or acting as a group.”2 We find Stiles teaches that a pilot
and a co-pilot work together to control an aircraft (FF 1), which reads on the
claimed language “collectively control” under our claim construction. We
also find Stiles teaches that when the input of one pilot is increased over a
threshold, the input of another pilot is decreased (FF 1). Additionally,
Figure 2 of Stiles shows the circuitry for summing or combining the signals
and reducing the two signals to a single signal. Thus, we conclude that
Stiles teaches reducing inputs and collectively controlling. We further find
Tanaka teaches that a plurality of game controllers in one or more video
game hubs controls on-screen game character icons (FF 2).
The Supreme Court noted that an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged

2 See WEBSTER’S II New Riverside University Dictionary (1994 ed.), at
281 (“collective”).

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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S., at 418.
The knowledge that collectively controlling an aircraft and simultaneously
controlling multiple character icons on the screen by a plurality of game
controllers would have been within the skill in the art, as evidenced by Stiles
and Tanaka. We, therefore, find that combining the well-known elements of
creating a scheme of one or more character icons collectively controlled by a
plurality game controller is nothing more than a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S., at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1 and 11. We also sustain the Examiner’s obviousness rejection of
its dependent claims 2-10 and 12-20, which have not been separately
argued, and fall with their base claims. 37 C.F.R. § 41.37 (c)(1)(vii). See
In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
VI. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of the applied references, with Appellant’s
countervailing evidence and arguments for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1-20 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).

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VII. ORDER
We affirm the obviousness rejections of claims 1-20 under 35 U.S.C.
§ 103(a).
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.
§ 1.136(a)(1)(iv).
AFFIRMED

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