Ex Parte Pelkey et al

Patent Trial and Appeal Board

Dec 16, 2013

11338726 (P.T.A.B. Dec. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CASEY J. PELKEY and DARREN C. SMITH
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Appeal 2012-001167
Application 11/338,726
Technology Center 3700
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Before MURRIEL E. CRAWFORD, GAY ANN SPAHN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001167
Application 11/338,726

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 10-28. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 10 and 28 are the independent claims on appeal. Claim 10,
reproduced below with a key limitation emphasized, is illustrative of the
appealed subject matter.
10. A non-transitory portable memory medium having
stored thereon an application executable by processing circuitry
of a video game system connected to a communication
network, the application comprising both video game program
code for a video game and messaging service program code for
a messaging service for communicating messages to other
messaging service users connected to the communication
network, whereby the messaging service is accessible when the
application is executed by the processing circuitry of the video
game system in a non-multi-tasking mode.

1 Appellants identify the real party in interest as Nintendo Co., Ltd. App.
Br. 3.
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REJECTIONS2
The following Examiner’s rejections are before us for review:
(1) the rejection of claims 10-15 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Darling (WO 93/23125 A1, pub. Nov. 25, 1993) (Ans. 5-
6);
(2) the rejection of claims 16-19 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Darling and FIBS (FIBS, the First Internet Backgammon
Server, 1-4, 1994, available at www.fibs.com/guide.html) (Ans. 6-7);

2 We consider the Examiner’s rejection of claims 10-27 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter for reciting a
processing program that is not claimed as embodied in a non-transitory
storage medium (Ans. 4-5 (Feb. 2, 2011)) to be withdrawn. Although the
non-final rejection of May 3, 2011 from which Appellants appeal does not
explicitly withdraw the § 101 rejection and includes the statement that
“Examiner notes that Applicant’s reply purports to respond to the Section
101, new grounds of rejection” (Non-Final Rej. 2 (May 3, 2011)), the
balance of evidence supports that the rejection was withdrawn by the
Examiner. In particular, the Examiner indicated that merely adding the word
“non-transitory” to the claim “shall overcome the rejection” (Ans. 5 (Feb. 2,
2011)), and Appellants made the Examiner’s proposed amendment in
Amendment Under 37 CFR 1.111 filed Apr. 4, 2011 (see also App. Br.,
Clms. App’x. (Jul. 18, 2011)). The Examiner also stated that “Examiner
notes that Applicant’s claim amendments are made to overcome the new
grounds of rejection (i.e.[,] Section 101) presented in the Examiner’s
Answer.” Non-Final Rej. 2 (May 3, 2011). Further, the Examiner explicitly
incorporated by reference all 35 U.S.C. § 103 rejections from earlier papers,
but made no similar reference to the 35 U.S.C. § 101 rejection. Id. Finally,
the Examiner had “no comment on the [A]ppellant[s’] statement of the
grounds of rejection to be reviewed on appeal” (Ans. 4 (Aug. 9, 2011) even
though Appellants did not include a reference to the earlier 35 U.S.C. § 101
rejection (App. Br. 9 (Jul. 18, 2011)). Subsequent references herein to
“App. Br.” will indicate Appellants’ Appeal Brief filed July 18, 2011, and
subsequent references to “Ans.” will indicate the Examiner’s Answer mailed
August 9, 2011.
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(3) the rejection of claims 20, 21, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Darling, FIBS, and Tang (US 5,960,173, iss.
Sep. 28, 1999) (Ans. 7-8); and
(4) the rejection of claims 22, 26, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Darling, FIBS, Tang, and IIMG (Viewz.com: For the
Printer - Instant Messaging Guide, 1-7, 1996, available at
www.viewz.com/features/imprint.htm) (Ans. 8-10).

ANALYSIS
Rejection (1)
The Examiner’s rejection acknowledges that Darling “does not
explicitly disclose that the game code and the messaging code are provided
in a single application.” Ans. 10. However, the Examiner concludes that the
limitation of “the application comprising both video game program code . . .
and messaging service program code” as recited in claim 10 would be
obvious either (i) as “a matter of design choice;” or (ii) for reasons
“enumerated in MPEP [§] 2144 ([i.e., r]ationale may be in a reference, or
reasoned from common knowledge in the art, scientific principles, art-
recognized equivalents; [m]aking portable; [m]aking integral; [m]aking a
process more efficient; [o]bvious to try).” Ans. 10-11.
At the outset, we note that the Examiner’s reliance on MPEP § 2144
alone is misplaced since it appears that the Examiner is using a per se rule of
obviousness in place of a fact-specific analysis. See In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995) (the use of per se rules is improper in applying
the test for obviousness under 35 U.S.C. § 103(a) since such rules are
inconsistent with the fact-specific analysis of claims and prior art mandated
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by section 103). Rather, the key to supporting any rejection under 35 U.S.C.
§ 103 is the clear articulation of the reason(s) why the claimed invention
would have been obvious. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). Although the Examiner states that it would be obvious to one
of ordinary skill in the art “to modify Darling to have an application to
incorporate both the communications program in ROM (34) and the game
program in ROM (21) as shown in FIG. 1” (Ans. 11), the Examiner provides
no fact-specific analysis as to which of the many legal precedents discussed
in MPEP § 2144 the Examiner is relying on or by articulating a reason with
a rational underpinning as to why one of ordinary skill in the art would
modify Darling to incorporate both of the communications and game
programs into a single application.
With respect to reliance on design choice, the Examiner contends that
providing the game code and messaging code in a single application versus
multiple applications is “noncritical” when considering Appellants’
Specification (Ans. 10 (citing Spec., para. [0004])) and that “Darling’s
gaming and messaging functions would perform the same whether run in
separate applications or combined into one” (Ans. 11)).
Appellants contend that “combining these programs into one
application allows both of these functions [i.e., gaming and messaging] to be
used at the same time without requiring a multi-tasking platform.” App. Br.
11. Thus, Appellants contend that the programs “would operate differently
if they were separate applications.” Id. Appellants further contend that
“combining two different functions into a single application is not merely a
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matter of just adding two applications together” and is not “merely . . . a
matter of an obvious design choice.” Reply Br. 2.
We are persuaded by Appellants’ argument that the Examiner’s use of
design choice is inappropriate here. Design choice applies when old
elements in the prior art perform the same function as the now claimed
structure. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and
“would be an obvious matter of design choice within the skill of the art”
(citations omitted)). In the present case, the claimed structure is a memory
medium having an application stored thereon, the application comprising
both video game program code for a video game and messaging service
program code for a messaging service. The benefit of the claimed invention
is that “[t]he messaging service can be provided even though video game
systems typically do not have a multi-tasking desktop on which a messaging
service client may reside.” Spec., para. [0004]. Accordingly, the claimed
structure solves the problem of making both gaming and messaging capable
in the absence of a multi-tasking desktop. The messaging code being in the
same application as the gaming code so that the messaging service is
accessible when the application is executed in a non-multi-tasking mode is
in contrast to the Darling prior art which does not contemplate the gaming
and messaging codes being in the same application, and thus, functions
differently than the claimed structure. The Darling prior art contemplates
multi-tasking because the central processing unit (CPU) 11 of the game
machine 10 and communications processing unit 31 of communications unit
30 “access the database on a time-sharing basis.” Darling, p. 11, ll. 4-5. As
the Examiner’s reliance on design choice is inappropriate, the Examiner has
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not articulated on the record before us adequate reasoning with rational
underpinning to support the legal conclusion of obviousness.
For the foregoing reasons, Appellants have shown that the Examiner
erred in concluding that the subject matter of claims 10 and 28 would have
been obvious over Darling, and we do not sustain the rejection of claims 10
and 28, and claims 11-15 which depend therefrom, under 35 U.S.C. § 103(a)
as unpatentable over Darling.

Rejections (2)-(4)
The Examiner articulates no persuasive reason why the teachings of
FIBS, Tang, or IIMG might have remedied the deficiencies of Darling as
applied to parent claims 10 and 28 and as discussed hereinabove. Ans. 6-10.
For the foregoing reason, the Examiner erred in concluding that the subject
matter of: claims 16-19 and 25 would have been obvious from the
combination of Darling and FIBS; claims 20, 21, 23, and 24 would have
been obvious from the combination of Darling, FIBS, and Tang; and claims
22, 26, and 27 would have been obvious from the combination of Darling,
FIBS, Tang, and IIMG.
Accordingly, we do not sustain the rejections, under 35 U.S.C.
§ 103(a), of: claims 16-19 and 25 under as unpatentable over Darling and
FIBS; claims 20, 21, 23, and 24 as unpatentable over Darling, FIBS, and
Tang; and claims 22, 26, and 27 as unpatentable over Darling, FIBS, Tang,
and IIMG.

Appeal 2012-001167
Application 11/338,726

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DECISION
The Examiner’s decision to reject claims 10-28 under 35 U.S.C.
§ 103(a) is REVERSED.

REVERSED

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