Ex Parte Tanaka et al

Patent Trial and Appeal Board

Sep 28, 2017

13350911 (P.T.A.B. Sep. 28, 2017)

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.
13/350,911 01/16/2012 Shinichi Tanaka 545-290 5974
27538 7590 10/02/2017
frihsinn Rr Dernier T T P
EXAMINER
89 Headquarters Plaza North
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PIERCE, DAMON JOSEPH
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3717
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI TANAKA and SHIGERU ENOMOTO
Appeal 2015-006561
Application 13/350,9111
Technology Center 3700
Before LISA M. GUIJT, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sony Computer Entertainment Inc. as the real party in
interest. App. Br. 2.
Appeal 2015-006561
Application 13/350,911
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An information processing apparatus, comprising:
a first receiving section for receiving a first recording
medium that has included thereon a first application program and
a first display file used to generate a display image concerning
the first application program;
a built-in type second recording medium;
a processor enabled to execute an install function;
a second receiving section for receiving a third recording
medium that has included thereon a second application program
and a second display file used to generate a display image
concerning the second application program; and
an image generator for generating the display image
concerning the first application program using the first display
file, and for generating the display image concerning the second
application program using the second display file,
wherein the third recording medium has a larger storage
area than the second recording medium,
wherein the processor includes an installer processing unit
configured to acquire the first display file from the first recording
medium and to install the acquired display file in the second
recording medium, but does not install the second display file
recorded in the third recording medium in the second recording
medium, and
wherein the image generator generates the display image
for the first application using the first display file installed in the
second recording medium instead of the first display file
recorded in the first recording medium, and generates the display
image for the second application using the second display file
recorded in the third recording medium.
2
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Application 13/350,911
THE REJECTIONS
Claims 1—4 and 11—13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Tanaka (US 2009/0024961
Al; publ. Jan. 22, 2009) (“Tanaka”)2 and two videos available from
YouTube.com, titled “How to Play PC Games Without the CD” and “How
to Run a Xbox 360 Game from External Hard Drive/Usb on a J-tagged Xbox
360 [HD].” Final Act. 2-7.
Claims 5—8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Tanaka and the following videos
available from YouTube.com, titled: “How to Play PC Games Without the
CD,” “How to Run a Xbox 360 Game from External Hard Drive/Usb on a J-
tagged Xbox 360 [HD],” “Portable Hard Drive Reviews,” and “30+ Xbox
360 Games Installed on my 250GB Hard Drive.” Final Act. 7—10.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Tanaka, Tanaka et al. (US
2008/0141018 Al; publ. June 12, 2008) and the following videos available
from YouTube.com, titled: “How to Play PC Games Without the CD,”
“How to Run a Xbox 360 Game from External Hard Drive/Usb on a J-
tagged Xbox 360 [HD],” “Portable Hard Drive Reviews,” and “30+ Xbox
360 Games Installed on my 250GB Hard Drive.” Final Act. 10—12.
2 For clarity, references to Tanaka in the analysis portion of this Decision
refer to US Publication No. 2009/0024961 Al, and not to US 2008/0141018
Al.
3
Appeal 2015-006561
Application 13/350,911
ANALYSIS
We have considered the Examiner’s rejections in light of each of
Appellants’ arguments and the evidence of record. We disagree with
Appellants’ arguments and are unpersuaded of error in the Examiner’s
rejections. We sustain the Examiner’s rejections of claims 1—13 and provide
the following analysis primarily for emphasis.
As an initial matter, we note that the present Application and the cited
Tanaka reference identity the same assignee and have one inventor in
common. Compare App. Br. 2 (identifying Sony Computer Entertainment,
Inc. as the assignee and real party in interest), with Tanaka (identifying Sony
Computer Entertainment, Inc. as the assignee). As explained below, we
disagree with many of Appellants’ characterizations of the disclosures and
teachings of Tanaka. Appellants are reminded that “[ejach individual
associated with the filing and prosecution of a patent application has a duty
of candor and good faith in dealing with the Office.” 37 C.F.R. § 1.56
(2012); accord MPEP § 2001.
Claims 1—4 and 9—133
The issues raised by Appellants’ arguments and the Examiner’s
findings center largely on what files and data are included in Tanaka’s
references to “application software” or “game software.” See, e.g., App. Br.
3 Appellants’ Appeal Brief includes headings stating “Allegation that Claims
1—4 and 11—13 are Obvious” (App. Br. 8) and “Allegation that Claims 5—8
are Obvious” (App. Br. 14). Appellants do not identify arguments directed
to claims 9 and 10. Claim 9 depends from claim 1, and claim 10 depends
from claim 9. As such, we treat claims 9 and 10 as though the claims were
included with the arguments directed to claims 1—4 and 11—13.
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Application 13/350,911
9 (stating the Examiner’s interpretation and conclusions regarding Tanaka’s
application software “are problematic on a number of levels”); Final Act. 3
(citing Tanaka Fig. 8, 24, 79); Ans. 12 (citing Tanaka 124). In particular,
Appellants argue the Examiner erred in finding Tanaka’s disclosures relating
to installation of application software or game software from a game disk to
a hard drive teach or suggest “that an installer processing unit acquires the
first display file from the first recording medium and installs the acquired
display file in the second recording medium.'1'’ App. Br. 9 (addressing “the
claims” generally).
Among other things, the Examiner finds Tanaka’s “application
software” or “game software” includes all of the data and files required to
run a game program on a computing device, including display data, image
icons, and other content information. Final Act. 3 (citing Tanaka Fig. 8,
24, 79); Ans. 12—13 (citing Tanaka Tflf 24, 28, 29). Further, the Examiner
interprets the claimed “first display file” to be included in the application
software or game software based on Tanaka’s teachings that the software
includes display data, image icons, and similar content information. Final
Act. 3 (citing Tanaka Fig. 8, Tflf 24, 79); Ans. 12—13 (citing Tanaka Tflf 24,
28, 29).
Appellants acknowledge that Tanaka “discloses that ‘application
software’ or ‘game software’ is read from a recording medium 50 and is
stored in a hard disk, main memory 102.” App. Br. 9 (citing Tanaka 24,
35, 60). According to Appellants, though, “the claims call for something
different: acquiring the first display file from the first recording medium and
installing the acquired display file in the second recording medium.'1'’ App.
Br. 9. Further, Appellants argue “the claims call for ‘a first application
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Application 13/350,911
program’ and ‘a first display file’” and “the terms ‘first application program’
and ‘first display file’ should be interpreted to require a separateness that is
well established by the instant specification and well understood in the art.”
App. Br. 9-10; cf. App. Br. 15 (claim 1 recites “a first application program
and a first display file used to generate a display image concerning the first
application program”); see Reply Br. 2.
Although Appellants’ claims and Appellants’ Specification reference
application programs and display files as separate files, Appellants’
Specification also explains that such files are part of a larger, comprehensive
“game file.” See, e.g., Spec. Tflf 14, 39, 79. Like Tanaka’s use of
“application software” and “game software” as comprehensive terms,
Appellants’ Specification uses the term “game file” as a broad term that
includes multiple separate files, stating that “[a] game file includes a boot
file, a group of files for executing a game such as a game program, and a
group of files to be used by the system software.” Spec. 114; compare
Tanaka H 28 (“game software at least includes: an executive program which
executes a game; parameter information . . .; and content information of an
application”), 29 (“content information is used for displaying the game title
in an icon form, or for displaying illustrative information to notify a user of
the content of a game, on a menu screen of the game device [and] may
include a still image icon/a moving image icon as an icon to be displayed”).
Further, consistent with the Examiner’s interpretation of the claimed first
display file as part of Tanaka’s “game software,” the Specification expressly
states that the “display file” is included among the recited parts of the “game
file,” stating “[a] display file, such as [a] resource file used for the
generation of board images, is included in the game file.” Spec. 139;
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accord Spec. 114 (explaining that a game file includes a group of files to be
used by system software, and “[t]he group of files to be used by the system
software includes, for instance, game icon image data to be displayed on a
menu image”).
Accordingly, we agree with the Examiner that the claimed “first
image data” includes data that makes up part of Tanaka’s “application
software” or “game software,” and, as noted above, Appellants acknowledge
Tanaka “discloses that ‘application software’ or ‘game software’ is read
from a recording medium 50 and is stored in a hard disk, main memory 102”
(App. Br. 9). See Ans. 12 (citing Tanaka 124); Tanaka 124 (“The
information processor may be any one which can install application software
from a media drive in which a recording medium is placed, into a recording
device such as a hard disk.”). As such, we agree with the Examiner that
those disclosures of Tanaka also disclose that the “first image data” is read
from a recording medium and stored in a hard disk.
We also agree with the Examiner that Tanaka teaches the claimed
“image generator for generating the display image using the display file
concerning the first application program using the first display file.” See
Final Act. 3^4; Ans. 19—20. Without rebutting the Examiner’s finding that
Tanaka discloses that limitation, Appellants challenge the Examiner citation
to the secondary references for the “wherein” clause relating to the image
generator. Specifically, Appellants contend the Examiner admits Tanaka
does not disclose the wherein clause and challenge the Examiner’s “position
that a skilled artisan would be motivated to modify Tanaka ... to require
generating the display image for the first application using the first display
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file installed in the second recording medium instead of the first display file
recorded in the first recording medium.'1'’ App. Br. 12—13 (underline added).
With emphasis on the “instead of’ language in the wherein clause
(Final Act. 4), the Final Office Action cites Play PC Games w/o CD as an
explicit teaching that it would have been obvious to use a display file
installed in the second recording medium (hard disk) “instead of’ the data
stored on a CD. Final Act. 4. The Examiner’s Answer clarifies the rejection
explaining that Tanaka discloses installing a game into a hard disk, including
the first display data, and, after installing the game software into the hard
disk, the game system has the option of using the game software on the hard
disk or the CD. Ans. 18—19 (citing Tanaka 1128, 29, 79). Further, the
Answer clarifies that it is knowledge generally available to one of ordinary
skill that a computer processor may simultaneously use data from multiple
memory mediums such as a hard disk and a CD/DVD drive. Ans. 19—20.
Although we determine the Examiner’s citation to the secondary
reference in the Final Office Action was unnecessary (see, e.g., Ans. 18—19),
we disagree with Appellants’ arguments that the Examiner erred. As
explained above, we agree with the Examiner that Tanaka teaches the first
display file installed on a hard drive and an “image generator for generating
the display image using the display file concerning the first application
program using the first display file.” See Final Act. 3; Ans. 18—20. We
agree with the Examiner that those teachings of Tanaka teach or reasonable
suggest using the first display file installed in the second recording medium
(Tanaka’s hard disk).
We also disagree with Appellants’ characterization of the Examiner’s
rejection with respect to the claimed third recording medium. App. Br. 13.
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Appellants argue the Examiner’s proposed modification of Tanaka would
yield only two recording mediums, a hard drive and an external hard drive
(App. Br. 13—14), because “[tjhere is no rational basis to conclude that one
skilled in the art would retain the CD 50 given that the emphasis of Play PC
Games w/o CD ... is to eliminate the CD” (App. Br. 13). The Examiner
explains, and we agree, that the CD satisfies the first recording medium, the
hard disk satisfies the second recording medium, and the external drive
satisfies the third recording medium. Ans. 19-20; see also Tanaka 135
(explaining a “disk start game” is read out from the recording medium 50
while an “installed game” is executed from a hard drive). Appellants’
contentions that a user may discard a CD after installing the game software
are inapposite.
Claims 5—8
Finally, we also disagree with Appellants’ characterization of the
Examiner’s rejection of claims 5—8 and the cited disclosures. See App. Br.
14; Reply Br. 4. Appellants argue the Examiner’s reasoning in the proposed
combination of references is flawed because, according to Appellants, in the
Examiner’s combination, Tanaka “would be modified to include a
component to produce a menu — which the Examiner asserts is already
present.” App. Br. 14. Further, Appellants argue “the display image is not a
menu image.” App. Br. 15.
According to Appellants’ discussion of the “context of the claimed
invention,” “display files contain data for producing respective display
images (e.g., see FIGS. 6-7) for respective application programs. A given
display image may be presented to the user prior to executing the associated
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Application 13/350,911
application program to provide the user with general information regarding
the application program.” App. Br. 7—8. Further, “[t]he display image may
also provide an [i]con 202 to start the application program,” and “icon
images may be used to produce a menu image to the user, so that the user
may select one of the icon image [sic] to invoke an associated one of the
application programs.” App. Br. 8.
As explained by the Examiner, both Tanaka and the secondary
references teach menus and icons, and the Examiner states that the rejection
could have relied on Tanaka alone for its teachings regarding the first and
second image generating units of claim 5. See Ans. 22; see also, e.g.,
Tanaka Figs. 4—9, ^fl[ 9, 29, 58, 64—76. Notably, Tanaka discloses and
describes menus and icons similar to those of Appellants’ Specification.
Compare Tanaka Figs. 8 (depicting icon 222, labeled “ABC TENNIS”), 9
(same), with Spec. Figs. 6 (depicting icon 202, labeled “ABC TENNIS”), 7
(same); see also Spec. ^fl[ 33 (“The image generator 130, which has a
function of generating display images, includes a menu image generating
unit 132 and a board image generating unit 134.”), 39 (describing “a display
image concerning the game identified by the icon image” is generated and
has the role of having the user instruct the start of the game). Other than
Appellants’ conclusory and unsupported statements that Tanaka “would be
modified to include a component already present” and “a display image is
not a menu image,” Appellants’ arguments do not substantively address how
claims 5—8 distinguish the cited teachings of Tanaka, nor do Appellants
substantively address what a person of ordinary skill would have understood
from the cited combination of references. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (appellants must advance substantive arguments
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beyond mere recitation of the claim elements and naked assertions that the
corresponding elements were not found in the prior art); In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; . . . the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”). As such, Appellants’ arguments amount to mere attorney
argument and do not persuade us of error in the Examiner’s rejection.
In conclusion, having considered the Examiner’s rejections of claims
1—13 in light of Appellants’ arguments and the evidence of record, we
disagree with Appellants, and we sustain the Examiner’s rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1-13.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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