12259181 (P.T.A.B. Dec. 11, 2018)

Ex Parte Mikhailov et al

Patent Trial and Appeal BoardDec 11, 2018

12259181 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/259,181 10/27/2008 16051 7590 12/13/2018 MPG, LLP and SONY 710 Lakeway Drive, Suite 200 Sunnyvale, CA 94085 FIRST NAMED INVENTOR Anton Mikhailov 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. SONYP089A 1481 EXAMINER SKAARUP, JASON M ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 12/13/2018 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): sonydocket@mpiplaw.com mpdocket@mpiplaw.com scea_patent_ docket@Playstation. Sony. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTON MIKHAILOV and RICHARD MARKS Appeal2017-000144 1 Application 12/259, 181 2 Technology Center 3700 Before ANTON W. PETTING, KENNETH G. SCHOPPER, and MATTHEWS. MEYERS, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 from the Examiner's Final rejection of claims 34--71. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Oct. 5, 2015), the Reply Brief ("Reply Br.," filed Sept. 26, 2016), the Examiner's Answer ("Ans.," mailed July 26, 2016), and the Final Office Action ("Final Act.," mailed Apr. 2, 2015). 2 According to Appellants, the real party in interest is Sony Computer Entertainment Inc. Appeal Br. 3. Appeal2017-000144 Application 12/259, 181 BACKGROUND According to Appellants, "[t]he present invention relates generally to tracking the location of a game controller in a field of play, and more specifically to tracking the location and the movement of a game controller, which includes a ball attachment, using visual information." Spec. ,r 2. CLAIMS Claims 34, 47, 57, 67, and 71 are the independent claims on appeal. Claim 34 is illustrative of the appealed claims and recites: 34. A video game controller for wireless interfacing with a computing system, the video game controller comprising: an elongated body in a form of a handle, the elongated body having a first end and a second end; an object disposed at the second end of the elongated body, the second end being opposite to the first end along a longest dimension of the elongated body, the object having a shape for visual recognition; a light source exposed in the object, wherein the object is defined to be illuminated when the light source is active; buttons disposed between the first end and the second end of the elongated body; an inertial sensor disposed within the elongated body; and one or more circuits disposed in the elongated body, the one or more circuits defined to be in communication with the light source, the buttons, the inertial sensor, and an antenna, the antenna provided for wireless communication to and from the computing system. Appeal Br. 48, Claims App. 2 Appeal2017-000144 Application 12/259, 181 REJECTIONS 1. The Examiner rejects claims 34--36, 38-59, and 61-70 under 35 U.S.C. Â§ 102( a) as anticipated by Zalewski. 3 2. The Examiner rejects claims 34--36, 38-59, and 61-70 under 35 U.S.C. Â§ I03(a) as unpatentable over Zalewski. 3. The Examiner rejects claims 37, 60, and 71 under 35 U.S.C. Â§ I03(a) as unpatentable over Zalewski in view of Cao. 4 DISCUSSION We are persuaded of reversible error in the rejections of claims 34--71 because we agree that Appellants have shown that the features of Zalewski that were used to reject the claims were derived from the inventors' own work. See Appeal Br. 11-30. The MPEP provides the parameters by which an inventor may overcome a rejection under 35 U.S.C. Â§Â§ I02(e), and 103. Of relevance here, the MPEP states: when the unclaimed subject matter of a reference is an inventor's or at least one joint inventor's own invention, a prima facie case based on the patent, U.S. patent application publication, or international application publication, may be overcome by showing that the disclosure is a description of the inventor's or at least one joint inventor's own previous work. Such a showing can be made by proving that the inventor(s) of the U.S. patent, U.S. patent application publication, or the international application publication, was associated with applicant ( e.g., same assignee) and learned of the inventor's or at least one joint inventor's invention from the inventor or at least one joint 3 Zalewski, US 2008/0261693 Al, pub. Oct. 23, 2008. 4 Cao, US 2004/0256630 Al, pub. Dec. 23, 2004. 3 Appeal2017-000144 Application 12/259, 181 inventor directly or indirectly. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). MPEP Â§ 2135.05. In this situation, the MPEP notes that affidavits or declarations under 37 CPRÂ§ 1.132 are the appropriate means by which a rejection can be overcome. Id. Regarding examination under these circumstances, the MPEP provides: An unequivocal declaration under 3 7 CPR [ Â§] 1.13 2 by [inventor] S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or patent application publication and relied on in the rejection has been sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459,214 USPQ 933 (CCPA 1982). Depending on the situation, documentation created contemporaneously with the conception/invention and/or declarations/affidavits by the other inventor(s) named in the reference may be used to corroborate inventorship. See Emera Chem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CPR [Â§] 1.132 must also explain the presence of the additional inventor in the reference ( e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference). Testimony or disclaimer by the other inventor named in the reference is usually not required but, if submitted, should be considered by the [E]xaminer. MPEP Â§ 716.10. Here, Appellants have submitted a declaration under 37 CPRÂ§ 1.132 from the joint inventors providing an unequivocal statement that the elements relied upon in Zalewski are Appellants' own invention. See 4 Appeal2017-000144 Application 12/259, 181 Appeal Br., Evidence App., Ex. C ,r,r 7, 8. Appellants also submitted a declaration from Gary M. Zalewski, the inventor in Zalewski, which indicates that the features used to reject the claims here were communicated to him by Appellants. See id. at Evidence App., Ex. F ,r,r 4--7. Appellants also explain how the features of the claims are linked to the features provided in invention disclosure forms referenced in Appellants' declaration. See id. at 25-27; see also id. at Evidence App., Exs. A-1, A-2, and C ,r 7. In response to this evidence and Appellants' arguments related thereto, the Examiner "maintains that Exhibit[] C is not sufficient to overcome the prior art rejections." Ans. 21. The Examiner finds that Exhibit C does not set forth sufficient facts to prove that on or before the reference date the subject matter relied on in the rejection was communicated from Appellants to Zalewski. Id. at 22. The Examiner also finds that the declaration from Mr. Zalewski is also "deficient in this regard." Id. at 22-23. However, we are persuaded by Appellants' arguments that a preponderance of the evidence shows that Appellants have made a sufficient showing to overcome the rejections before us. See Appeal Br. 11-30; see also Reply Br. 3-12. Specifically, we agree that the declarations provide an unequivocal statement that the rejections rely on material invented by Appellants and that the invention disclosure form and Zalewski declaration provide corroborating evidence for this statement. Under the guidance set forth in the MPEP and the appropriate case law cited therein, we determine that Appellants have made a sufficient showing to overcome the rejections because the subject matter relied upon to reject the claims is Appellants' own invention and not "by another" under 35 U.S.C. Â§ 103(e). 5 Appeal2017-000144 Application 12/259, 181 Accordingly, we do not sustain any of the rejections before us, which each rely on the subject matter of Zalewski that has been shown to be Appellants' own invention. CONCLUSION We REVERSE the rejections of claims 34--71. REVERSED 6