Ex Parte Zilber

Patent Trial and Appeal Board

Oct 17, 2014

12166831 (P.T.A.B. Oct. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID ZILBER
____________

Appeal 2012-007638
Application 12/166,8311
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, JASON V. MORGAN and
KIMBERLY J. McGRAW, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to communication blocks that can
convey information based on their arrangement. The blocks can be used as
an educational tool, such as for teaching arithmetic or spelling. See Spec.
¶¶ 1, 58–61, 63–66.

1 According to Appellant, the real party in interest is Med et al, Inc. Appeal
Br. 1.
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Claim 1, one of three independent claims, is the focus of Appellant’s
brief and is reproduced below.
1. A system comprising:
a plurality of apparatuses, each of which individually comprises:
a housing including a plurality of faces, the plurality of faces
including at least a first face and an adjoining second face, the first
and second faces lying in planes that cut one another;
a display configured to present information to a user;
a communication interface configured to exchange data with a
plurality of other apparatuses;
a plurality of detection components each of which is located
proximate a respective face of the housing,
each of the detection components being configured to
detect proximity of a respective face of the housing of the
apparatus with respect to the housing of one or more of the
other apparatuses,
wherein the plurality of detection components include at
least a first detection component located proximate the first
face, and a second detection component locate proximate the
second face, the apparatus thereby supporting a two-
dimensional arrangement of apparatuses; and
a processor configured to communicate with the display,
communication interface and detection components,
wherein when the apparatuses are grouped and arranged in
proximity with one another to form an arranged group of apparatuses,
the processor of each apparatus is configured to receive corresponding
indications from respective detection components, and receive data
from the other apparatuses in the group via a respective
communication interface, and
wherein the processor of each apparatus is configured to
calculate an output as a function of the number of apparatuses in the
group and arrangement of one or more apparatuses in the group, the
number and arrangement being determinable based upon the
indications and received data, and wherein the processor of each
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apparatus is configured to communicate the calculated output via a
respective display.

Appeal Br. 14, Claim App’x.

THE REJECTIONS
Claims 1–5, 10–16, and 20–28 stand finally rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Arlinsky2 in view of Ellis.3
Claims 6–8 and 17–19 stand finally rejected under 35 U.S.C. § 103(a)
as being unpatentable over Arlinsky in view of Ellis, and further in view of
Thompson.4
Claim 9 stands finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arlinsky in view of Ellis, and further in view of Ku.5

ISSUE
Did the Examiner err in concluding it would have been obvious to one
of ordinary skill in the art to combine the teachings and suggestions of
Arlinsky and Ellis?

2 U.S. Patent Application Publication No. 2003/0148700 A1 (Aug. 7, 2003).
3 U.S. Patent Application Publication No. 2006/0154711 A1 (July 13, 2006).
4 U.S. Patent Application Publication No. 2007/0205962 A1 (Sept. 6, 2007).
5 U.S. Patent Application Publication No. 2005/0253778 A1 (Nov. 17,
2005).
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DISCUSSION
Claims 1–5, 10–16 and 20–28
I.
We begin by noting that Appellant does not argue the patentability of
claims 1–5, 10–16, and 20–28 separately. As such, our analysis will focus
on independent claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).

II.
Arlinsky discloses a set of blocks that can be used for playing
educational games with children. The set has “playing blocks” and a game
controller playing block (a “controller block”). Appeal Br. 8; Arlinsky ¶ 6.
The playing blocks have four display sides, for displaying things such
as numbers or letters, and two contact sides, for contacting other blocks. A
set of blocks can be arranged in a row (a one-dimensional arrangement) to
spell out words (e.g., S – U – N) or to demonstrate an arithmetic operation
(e.g., 9 − 5 = 4). Arlinsky ¶ 19; see also, e.g., Figs. 4B, 4C. The playing
blocks and the controller block have electrical contacts on their contact
sides. When the contact sides of playing blocks and controller blocks are
placed next to each other, the electrical contacts can electrically couple with
each other. Depending upon whether the blocks are arranged in the correct
or incorrect order, the blocks can annunciate a phrase, such as
“CONTRATULATIONS, YOU ARE CORRECT” or “SORRY, TRY
AGAIN.” Arlinsky ¶ 19; Final Act. 3, citing ¶ 19.
Ellis is directed to electrical devices (toy blocks) that can
communicate with other blocks. Ellis ¶¶ 3, 26; see also Final Act. 2–4,
citing Ellis Figs. 1–3, ¶¶ 26–28, 31–32. Each block has a display side with
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an LCD screen that can display a simulated character, such as virtual pet.
Ellis ¶¶ 26, 32. Each block also has four contact sides. Each of the contact
sides has a “detection component” that can detect the proximity of another
block. Final Act. 4; Ellis Figs. 1–2, ¶ 27. Each of the four contact sides can
be connected to any of the four contact sides of another block. Ellis Fig. 2,
¶ 29. The four contact sides allow the blocks to be arranged in two-
dimensions. Ellis Figs. 1, 2, ¶ 29.
Each block also has a processor that communicates with the display,
the communication interface and the detection components. Final Act. 3–4
(stating that each module 100 (block) of Ellis has a processor 400 to
communicate with the display 430, communication interface and detection
components 140) and citing Ellis Figs. 1–2, ¶¶ 26, 27, 31.
The Examiner found that Arlinsky does not teach detection
components on multiple faces of the blocks that would support a two-
dimensional arrangement of blocks (Final Act. 3–4), a processor in each
block that is configured to communicate with the display, the
communication interface and the detection components (Final Act. 4), or
that when the blocks are arranged in proximity to each other, that the
processor of each block can receive indications and data from the other
blocks via the communication interface (Final Act. 4). However, the
Examiner found that these missing features are taught or suggested by Ellis.
Final Act. 2–4; Answer 6–7, 16–19, citing Ellis Figs. 1, 2, 3A–B, ¶¶ 26–29,
31–32. The Examiner further found that Ellis teaches that users desire
greater interactivity between hand-held devices. Answer 17; citing Ellis ¶ 5
(“While hand-held character simulations remain popular, users desire greater
interactivity.”).
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The Examiner concluded that it would have been obvious at the time
of the invention to modify Arlinsky to include the detection components on
multiple sides of the blocks, as taught by Ellis, as well as to include
individual processors for each apparatus in order to achieve the predictable
result of individually controlling each display in conjunction with others
arranged in a two-dimensional relationship. Final Act. 4; Answer 7.
The Examiner found that one of ordinary skill in the art would have
had a reason to modify the blocks of Arlinsky in order to increase the
versatility Arlinsky’s blocks. Specifically, the Examiner found one of
ordinary skill would have recognized the combination of Arlinsky and Ellis
allows the blocks to communicate with each other while arranged in more
than a one-dimensional arrangement as well as to display information while
interconnected in any configuration desired. Answer 16–17, citing Ellis
¶¶ 28, 29. The Examiner further found that one of ordinary skill would have
recognized that a multidimensional (two-dimensional) arrangement
increases the versatility of the blocks by increasing the possible
configurations that can be arranged by the user as well as increasing the
versatility of what can be displayed to the user. Answer 16, citing Ellis
¶¶ 29–29, Figs. 2, 3A–B.

III.
The central thrust of Appellant’s arguments is that there is no
rationale for combining Arlinsky and Ellis to arrive at the subject matter of
the claimed invention. For example, Appellant asserts (a) that “nowhere
does the Examiner provide any rationale or other explanation as to what
would have prompted one skilled in the art to combine the references in the
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manner alleged,” Appeal Br. 7, (b) that the proffered combination would
result in an improper change in the functions of Arlinsky because it would
reduce the number of Arlinsky’s indicia-displacing faces, and thus the
utilities of its blocks, (c) that there is no reason to modify Arlinsky to
include an individual processor because Arlinsky does not have a display,
(d) that the Examiner has not cited Ellis for its displays or provided a reason
to modify Arlinsky to include the displays of Ellis, and (e) modifying
Arlinsky to include the display of Ellis would impermissibly change the
principle of operation of Arlinsky. Appeal Br. 5–13.
We have considered Appellant’s argument in light of the record and
do not see reversible error in the Examiner’s findings of fact or conclusion
of obviousness.
Contrary to the Appellant’s assertion, the Examiner articulated a
reason with a rational underpinning for combining the cited references. In
particular, the Examiner found that adding the detection components on
additional faces of the blocks and providing individual processors for
controlling the display in each block, as taught by Ellis, would increase the
versatility of Arlinksy’s blocks. Answer 16. Users would not be limited to
using the blocks in a linear (one-dimensional) manner, but rather would have
the versatility of being able to arrange the blocks “in any configuration, if
desired” such as in a two-dimensional manner. Answer 16, citing Ellis ¶ 29.
Additionally, the Examiner further found that Ellis teaches that users desire
greater interactivity between hand-held devices. Answer 17, citing Ellis ¶ 5
(“While hand-held character simulations remain popular, users desire greater
interactivity.”).
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Appellant’s argument that modifying Arlinsky to have a two-
dimensional arrangement would negatively impact Arlinsky’s purpose
because it would reduce the number of indicia playing faces, and thus the
utility of the blocks, is also unpersuasive. See Appeal Br. 9–11. The
Examiner found, and we agree, that although the arrangement of detection
components on the Ellis blocks may reduce the total number of display
faces, the arrangement would not reduce the utility of the blocks. Answer
18. The liquid crystal display (LCD) faces of Ellis can provide a “near
limitless arrangement of displayed indicia on the displace faces of each
block” thereby providing an increase to the utility of the blocks of Arlinsky.
Answer 19, citing Ellis, Figs. 2, 3A–B, 6, 7, ¶¶ 26, 31–32. Additionally, the
ability to provide a one or two-dimensional arrangement of blocks expands
the possible arrangements, increases the interactivity between blocks, and
increases utility. Answer 18.
Appellant argues that because the Arlinsky blocks do not include
controllable displays, one skilled in the art would not have been motivated to
modify Arlinsky to incorporate the processor of Ellis. Appeal Br. 11–12.
We disagree. The Examiner found that Ellis teaches both a controllable
display as well as an individual processor that is in communication with the
display. Answer 17, citing Ellis ¶¶ 26, 31. The Examiner concluded that
one of skill in the art would have been motivated to modify Arlinsky’s
regular playing blocks to individually control each display. Answer 7.
Appellant’s assertion that the Examiner did not cite Ellis for controllable
displays is contrary to the evidence of record. See Final Act. 4 (discussing
“display 430” and citing to Ellis ¶ 31; see also Final Act. 3, citing Ellis ¶¶
31–32; Answer 6, citing Ellis ¶¶ 31–32, Answer 7 (discussing “display 430”
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and citing to Ellis ¶ 31), Answer 17–19 (discussing display faces of Ellis
block).
We are also not persuaded by Appellant’s argument that modifying
Arlinsky to include Ellis’ display “impermissibly change[s] the principle of
operation of Arlinsky, at least insofar as the modification renders Arlinsky’s
printed digits/pictorial element(s) and shift registers storing their respective
unnecessary.” Reply Br. 5. The difference in the display does not affect the
overall principle of displaying information on the blocks. See In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (affirming obviousness rejection and
stating that eliminating optical components and substituting with electrical
components does not destroy the principle of operation of the claimed
invention, which is directed to the device’s high level ability to receive
inputs and processing the output to obtain an arithmetic result).
Considering the evidence of record and arguments of the Appellant,
we find the Examiner has articulated reasoning with rational underpinnings
for combining the Arlinsky and Ellis references so as to arrive at the subject
matter of the claimed invention and thus see no error in the Examiner’s
rejection of claims 1–5, 10–16, and 20–28.
Claims 6–8, 9, and 17–19
Claims 6–8 and 17–19 stand rejected as being unpatentable over
Arlinsky in view of Ellis, and further in view of Thompson. Claim 9 stands
rejected as being unpatentable over Arlinsky in view of Ellis, and further in
view of Ku.
Appellant argues that Thompson does not cure the deficiencies of
Arlinsky and Ellis with respect to claims 6–8 and 17–19, and that Ku does
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not cure the deficiencies of Arlinsky and Ellis with respect to claim 9.
Appeal Br. 13.
Because we do not find any deficiencies in the rejection of claims 1–
5, 10–16, and 20–28 over Arlinsky and Ellis, the Examiner has not erred in
rejecting claims 6–8, 9, and 17–19.
DECISION
For the reasons stated above, we affirm the Examiner’s decision
rejecting claims 1–28 under 35 U.S.C. § 103(a) over the cited art.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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