Ex Parte Martin et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10073486 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JOHN R. MARTIN and PATRICK G. RICE 8
___________ 9
10
Appeal 2008-3406 11
Application 10/073,486 12
Technology Center 3600 13
___________ 14
15
Decided: January 22, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and DAVID 19
B. WALKER, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE 27
28
John R. Martin and Patrick G. Rice (Appellants) seek review under 29
35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims pending 30
in the application on appeal. 31
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Application 10/073,486

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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 1
(2002). 2
3
We AFFIRM. 4
The Appellants invented a combination jukebox and electronic game 5
(Specification 2:15-18). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
1. An entertainment system comprising: 10
[1] a game subsystem; 11
[2] a jukebox subsystem; and 12
[3] a single control subsystem coupled to the game 13
subsystem and the jukebox subsystem, 14
[4] the control subsystem and the game subsystem 15
providing game functionality, and 16
[5] the jukebox subsystem and the control 17
subsystem providing jukebox functionality, 18
[6] the control subsystem exercising control over 19
the game subsystem and the jukebox subsystem. 20
21
This appeal arises from the Examiner’s Final Rejection, mailed 22
August 23, 2006. The Appellants filed an Appeal Brief in support of the 23
appeal on May 15, 2007. An Examiner’s Answer to the Appeal Brief was 24
mailed on September 24, 2007. 25
26
PRIOR ART 27
The Examiner relies upon the following prior art: 28
Miguel US 5,971,397 Oct. 26, 1999 29
Shteyn US 6,163,817 Dec. 19, 2000 30
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REJECTIONS 1
Claims 1-3, 5-8, 10, 11, 13, 14, 16, and 17 stand rejected under 35 2
U.S.C. § 103(a) as unpatentable over Shteyn. 3
Claims 4, 9, 12, 15, and 18-20 stand rejected under 35 U.S.C. § 103(a) 4
as unpatentable over Shteyn and Miguel. 5
6
ISSUES 7
The issues pertinent to this appeal are 8
• Whether the Appellants have sustained their burden of showing that 9
the Examiner erred in rejecting claims 1-3, 5-8, 10, 11, 13, 14, 16, and 10
17 under 35 U.S.C. § 103(a) as unpatentable over Shteyn. 11
• Whether the Appellants have sustained their burden of showing that 12
the Examiner erred in rejecting claims 4, 9, 12, 15, and 18-20 under 13
35 U.S.C. § 103(a) as unpatentable over Shteyn and Miguel. 14
The pertinent issue turns on whether it was predictable to include both 15
a jukebox and electronic game in a home theater system. 16
17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of the evidence. 20
Facts Related to Claim Construction 21
01. The disclosure contains no lexicographic definition of “game.” 22
02. The ordinary and customary meaning of “game” as a noun is an 23
activity providing entertainment or amusement.1 24
Shteyn 25
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03. Shteyn is directed to an information processing system with 1
first and second electronic sub-systems and control. A software 2
representation uses an abstraction of the sub-system for 3
representing the respective sub-system at a semantic level 4
common to the representations of the sub-systems controlled 5
through respective software representations. (Shteyn 2:32-45). 6
04. Shteyn describes how an all-digital multimedia system with 7
digital audio and digital video opens up new possibilities to the 8
consumer, including real time video processing, and how multiple 9
digital resources are going to be interrelated and integrated within 10
a single home system (Shteyn 1:17-27). 11
05. In a home theater environment, Shteyn’s sub-systems may be 12
display devices, VCR's, TV tuners, radio tuners, audio amplifiers, 13
DVD players, a CD jukebox, a digital video camera, a home 14
security system, among others. Shteyn uses the abbreviation 15
“etc.” implying this is not an exhaustive list. Shteyn’s control 16
means may be a PC or a home theater, or even a server (Shteyn 17
4:4-17). 18
06. The application running on Shteyn’s control means enables 19
sub-systems to cooperate in a coordinated and fully automated 20
manner through their software representations (Shteyn 4:18-20). 21
Miguel 22
07. Miguel is directed to a league and tournament system that is 23
particularly adapted to using electronic dart machines (Miguel 24
3:1-8). 25

1 American Heritage Dictionary of the English Language (4th ed. 2000).
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08. Miguel describes how, as the choice of games to play on 1
electronic dart machines has continued to increase, the user 2
interface necessary to permit selection and set-up of those games 3
has become more complicated and burdensome for the player 4
(Miguel 2:37-40). 5
Facts Related To The Level Of Skill In The Art 6
09. Neither the Examiner nor the Appellants has addressed the level 7
of ordinary skill in the pertinent arts of systems analysis and 8
programming, home entertainment systems design, video game 9
design, or control systems design. We will therefore consider the 10
cited prior art as representative of the level of ordinary skill in the 11
art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 12
2001) (“[T]he absence of specific findings on the level of skill in 13
the art does not give rise to reversible error ‘where the prior art 14
itself reflects an appropriate level and a need for testimony is not 15
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 16
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 17
Facts Related To Secondary Considerations 18
10. There is no evidence on record of secondary considerations of 19
non-obviousness for our consideration. 20
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PRINCIPLES OF LAW 1
Claim Construction 2
During examination of a patent application, pending claims are 3
given their broadest reasonable construction consistent with the 4
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 5
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). 6
Limitations appearing in the specification but not recited in the claim 7
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 8
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 9
specification” without importing limitations from the specification into the 10
claims unnecessarily). 11
Although a patent applicant is entitled to be his or her own 12
lexicographer of patent claim terms, in ex parte prosecution it must be 13
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 14
must do so by placing such definitions in the specification with sufficient 15
clarity to provide a person of ordinary skill in the art with clear and precise 16
notice of the meaning that is to be construed. See also In re Paulsen, 30 17
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 18
specific terms used to describe the invention, this must be done with 19
reasonable clarity, deliberateness, and precision; where an inventor chooses 20
to give terms uncommon meanings, the inventor must set out any 21
uncommon definition in some manner within the patent disclosure so as to 22
give one of ordinary skill in the art notice of the change). 23
Obviousness 24
A claimed invention is unpatentable if the differences between it and 25
the prior art are “such that the subject matter as a whole would have been 26
obvious at the time the invention was made to a person having ordinary skill 27
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in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 1
Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 2
(1966). 3
In Graham, the Court held that the obviousness analysis is bottomed 4
on several basic factual inquiries: “[(1)] the scope and content of the prior art 5
are to be determined; [(2)] differences between the prior art and the claims at 6
issue are to be ascertained; and [(3)] the level of ordinary skill in the 7
pertinent art resolved.” 383 U.S. at 17. See also KSR, 127 S. Ct. at 1734. 8
“The combination of familiar elements according to known methods is likely 9
to be obvious when it does no more than yield predictable results.” Id. at 10
1739. 11
“When a work is available in one field of endeavor, design incentives 12
and other market forces can prompt variations of it, either in the same field 13
or a different one. If a person of ordinary skill can implement a predictable 14
variation, § 103 likely bars its patentability.” Id. at 1740. 15
“For the same reason, if a technique has been used to improve one 16
device, and a person of ordinary skill in the art would recognize that it would 17
improve similar devices in the same way, using the technique is obvious 18
unless its actual application is beyond his or her skill.” Id. 19
“Under the correct analysis, any need or problem known in the field 20
of endeavor at the time of invention and addressed by the patent can provide 21
a reason for combining the elements in the manner claimed.” Id. at 1742. 22
23
ANALYSIS 24
Claims 1-3, 5-8, 10, 11, 13, 14, 16, and 17 rejected under 35 U.S.C. § 25
103(a) as unpatentable over Shteyn. 26
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The Appellants argue these claims as a group. Accordingly, we select 1
claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 2
The Examiner found that Shteyn described all the limitations in claim 3
1 except for explicitly describing an electronic game. The Examiner found 4
that Shteyn described using any electronic subsystem, including a jukebox or 5
any software application, in its system and thus concluded that such any 6
system would be an obvious variation of the claim limitations. 7
The Appellants contend that Shteyn does not list an electronic game 8
and because Shteyn lists several examples, the fact that an electronic game is 9
not among them indicates that Shteyn did not contemplate an electronic 10
game (Br. 3-4). The Examiner responds it would be impractical for Shteyn 11
to list every possible system that it might incorporate. 12
We agree with the Examiner. First, we construe the term “game” 13
which is not defined in the Specification (FF 01). The usual and customary 14
meaning is an activity providing entertainment or amusement (FF 02). 15
Second, we find that the only contention by the Appellants is that Shteyn 16
fails to describe including a game in its system. There is no contention as to 17
the jukebox or control subsystem and the operation of the control subsystem 18
over other subsystems. Accordingly, the only issue is whether it was 19
predictable to one of ordinary skill to include a game subsystem in Shteyn. 20
Shteyn describes a home theater (FF 05). A home theater is designed 21
to provide entertainment and amusement. Shteyn also describes its 22
application to all digital multimedia systems (FF 04). Shteyn lists several 23
types of sub-systems that may be controlled. Although Shteyn does not list 24
a game among those examples, Shteyn implies the list is not exhaustive (FF 25
05). Shteyn controls the sub-systems via software (FF 06). 26
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The issue then is whether one of ordinary skill would have found a 1
game to be a predictable species of the Shteyn’s sub-systems. We find that 2
one of ordinary skill would have so found. Shteyn’s reference to a 3
multimedia system clearly suggests the system was for entertainment. 4
Shteyn’s usage of PC’s and software to control the sub-systems and Shteyn’s 5
reference to digital sub-systems suggests sub-systems that are controlled by 6
software. We find that one of ordinary skill would have immediately viewed 7
games as a prototypical species of digital entertainment devices controllable 8
by software. There is nothing about games that would have suggested that 9
Shteyn’s system would not be useful toward them. 10
When a work is available in one field of endeavor, 11
design incentives and other market forces can 12
prompt variations of it, either in the same field or a 13
different one. If a person of ordinary skill can 14
implement a predictable variation, § 103 likely 15
bars its patentability. For the same reason, if a 16
technique has been used to improve one device, 17
and a person of ordinary skill in the art would 18
recognize that it would improve similar devices in 19
the same way, using the technique is obvious 20
unless its actual application is beyond his or her 21
skill. 22
23
KSR, 127 S. Ct. at 1740. 24
The Appellants have not sustained their burden of showing that the 25
Examiner erred in rejecting claims 1-3, 5-8, 10, 11, 13, 14, 16, and 17 under 26
35 U.S.C. § 103(a) as unpatentable over Shteyn. 27
Claims 4, 9, 12, 15, and 18-20 rejected under 35 U.S.C. § 103(a) as 28
unpatentable over Shteyn and Miguel. 29
The Appellants argue claims 4 and 18. Claim 4 further requires a dart 30
game and claim 18 is an independent claim requiring that the game, jukebox, 31
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and control be within a single unit. The remaining claims 9, 12, and 15 1
stand or fall with claim 4 and claims 19-20 with claim 18. 2
As to claim 4, the Examiner found that Miguel described a dart game 3
and that one of ordinary skill would have incorporated it in Shteyn to 4
minimize the number of components (Answer 5-6). The Appellants contend 5
that Miguel’s game is not connected to a jukebox and such a combination 6
does not describe a single control subsystem (Br. 10-11). We disagree with 7
the Appellants. The Appellants are arguing that Miguel does not describe 8
those claim limitations for which Shteyn is applied. Nonobviousness cannot 9
be established by attacking the references individually when the rejection is 10
predicated upon a combination of prior art disclosures. See In re Merck & 11
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Miguel simply provides 12
evidence that a dart game was known to those of ordinary skill in digital 13
entertainment, and we already found supra that it would have been obvious 14
to include a game in Miguel’s system. To defeat obviousness when claiming 15
a subset of a range disclosed in a prior art patent, one generally must show 16
that “the claimed range achieves unexpected results relative to the prior art 17
range.” See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The 18
Appellants have made no showing of unexpected results for dart games in 19
particular. 20
As to claim 18, the Examiner found that one of ordinary skill would 21
have known to include the components in a single unit to conserve space 22
(Answer 6-7). The Appellants contend that claim 18 is directed to three 23
components in a single unit that were not previously in a single unit (Br. 15). 24
We disagree with the Appellants. Nothing in Shteyn states that the 25
subsystems are in separate units. To the contrary, Shteyn states that multiple 26
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digital resources are going to be interrelated and integrated within a single 1
home system. The claim does not limit the nature of the unit. Thus, a home 2
that encapsulates a home system would be a single unit that contained all the 3
components of Shteyn’s system. 4
The Appellants have not sustained their burden of showing that the 5
Examiner erred in rejecting claims 4, 9, 12, 15, and 18-20 under 35 U.S.C. § 6
103(a) as unpatentable over Shteyn and Miguel. 7
8
CONCLUSIONS OF LAW 9
The Appellants have not sustained their burden of showing that the 10
Examiner erred in rejecting claims under 35 U.S.C. § 103(a) as unpatentable 11
over the prior art. 12
DECISION 13
To summarize, our decision is as follows: 14
• The rejection of claims 1-3, 5-8, 10, 11, 13, 14, 16, and 17 under 35 15
U.S.C. § 103(a) as unpatentable over Shteyn is sustained. 16
• The rejection of claims 4, 9, 12, 15, and 18-20 under 35 U.S.C. § 17
103(a) as unpatentable over Shteyn and Miguel is sustained. 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2008). 20
21
AFFIRMED 22
23
24
25
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1
hh 2
3
John J. Held 4
McAndrews, Held & Malloy, Ltd. 5
34th Floor 6
500 West Madison Street 7
Chicago, IL 60661 8