SONY INTERACTIVE ENTERTAINMENT INC.

Patent Trials and Appeals Board

Aug 12, 2020

15104141 - (D) (P.T.A.B. Aug. 12, 2020)

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.
15/104,141 06/13/2016 Shinichi Tanaka 545-568 9467
27538 7590 08/12/2020
Dernier IP Law, LLC
89 Headquarters Plaza North
PMB 1469
Morristown, NJ 07960
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/12/2020 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):
info@gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHINICHI TANAKA and TORU YAMAMOTO
____________

Appeal 2019-005926
Application 15/104,141
Technology Center 3600
____________

Before BRETT C. MARTIN, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Sony Interactive Entertainment Inc. as
the real party in interest. Appeal Br. 2.
Appeal 2019-005926
Application 15/104,141
2
THE INVENTION
Appellant’s invention relates to “an information processing
technology for processing applications.” Spec. ¶ 1. Claims 1 and 6 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. An information processing system comprising:
an information processing device;
a storage system transmitting or receiving save data to or from
the information processing device; and
a server system having a plurality of processing units
processing applications;
the server system processing an application using the
processing unit in response to a request to execute the application
from the information processing device, and transmitting a result of
the processing to the information processing device;
the server system storing save data of the application processed
by the processing unit in the storage system,
the information processing device being capable of obtaining
the save data stored in the storage system and storing the save data in
a local storage device of the information processing device, and the
storage system being capable of obtaining and storing save data stored
in the local storage device of the information processing device,
wherein a user of the information processing system must
maintain license information for the application in both the
information processing system and the server in order for the
information processing device to be permitted to obtain the save data
stored in the storage system and store the save data in a local storage
device of the information processing device, and for the storage
system to be permitted to obtain and store save data stored in the local
storage device of the information processing device.

Appeal 2019-005926
Application 15/104,141
3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Ishii US 2004/0098426 A1 May 20, 2004
Heatherly US 2009/0292640 A1 Nov. 26, 2009
Zhou US 2009/0325690 A1 Dec. 31, 2009
Li US 2013/0198085 A1 Aug. 1, 2013
The following rejections are before us for review:
I. Claims 1–3 and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Heatherly, Zhou, and Li.
II. Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as
unpatentable over Heatherly, Zhou, Li, and Ishii.
OPINION
Rejection I
Appellants argue claims 1–3 and 6 as a group. Appeal Br. 4–7. We
select independent claim 1 as representative, and claims 2, 3, and 6 fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Independent claim 1 recites, in the preamble, “[a]n information
processing system,” and further, that the information processing system
comprises “an information processing device” and “a server system.”
(Emphasis added). Claim 1 also recites, as a final claim limitation, “wherein
a user of the information processing system must maintain license
information . . . in both the information processing system and the server.”
The claim term “the server” lacks antecedent basis. Assuming the claimed
“server” refers back to “the server system,” this wherein clause requires the
Appeal 2019-005926
Application 15/104,141
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user to maintain license information in both the information processing
system (which includes the server system) and also in the server system
(which is already included in the information processing system). In other
words, by maintaining license information in the server system of the
information processing system alone, the user is maintaining license
information in both the information processing system and the server
system. Similarly, there is no antecedent basis for the claim terms “the
information processing system” and “the server” as recited in independent
claim 6.
Regarding independent claim 1, the Examiner finds, and Appellant
does not dispute, that Heatherly discloses the architecture of the claimed
information processing system: Heatherly’s synchoronization system 100
comprises an information processing device (i.e., portable device 160) with
an associated local storage device (i.e., the local storage device storing
portable user account 170), a storage system (i.e., the system storing online
user account 130), and a server system having units (i.e., server 120), as
claimed. Final Act. 3–4 (citations omitted); Appeal Br. 4–7; see, e.g.,
Heatherly, Fig. 1. The Examiner also finds, and Appellant does not dispute,
that Heatherly discloses that Heatherly’s information processing device (i.e.,
portable device 160) is capable of obtaining save data stored in the storage
system (i.e., the system storing online user account 130) and saving the save
data in a local storage device (i.e., the local storage device storing portable
user account 170), and that Heatherly’s storage system (i.e., the system
storing online user account 130) is capable of obtaining and storing save
data stored in the local storage device (i.e., the local storage device storing
Appeal 2019-005926
Application 15/104,141
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portable user account 170). Final Act. 4 (citations omitted); Appeal Br. 4–7;
see, e.g., Heatherly, Fig. 1.
Notably, Heatherly discloses that user account information is
maintained in both Heatherly’s information processing system (i.e.,
synchronization system 100), for example, in Heatherly’s local storage
device (i.e., the local storage device storing portable user account 170), and
also in Heatherly’s server, or server system (i.e., server 120 is associated
with Heatherly’s system storing online user account 130). See, e.g.,
Heatherly, Fig. 1. Heatherly also discloses that data sets may be used to
establish correspondence between the two accounts 130, 170 located in the
portable device 160 and server 120, respectively:
portable user account 270 is capable of hosting various data sets
. . . includ[ing] account identifiers and personal information
274. These data sets are merely representative of a wide variety
of data that may be utilized to establish correspondence
between portable user account 270 and online user account 130
in FIG. 1.
Id. ¶ 30. Heatherly further discloses that “identifiers and personal
information 274 . . . may contain, for example, information to identify and
authenticate the user account.” Id. ¶ 34.
The Examiner determines that Heatherly does not disclose the final
limitation of claim 1. Final Act. 4–5. Indeed, Heatherly may not be specific
about using authentication information to grant access to stored save data of
the application processed, wherein stored save data may be shared between
the server system’s storage system and the information processing devices’
local storage device, and further, that authenticating information may
include license information.
Appeal 2019-005926
Application 15/104,141
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The Examiner relies on Zhou for disclosing, inter alia, that “the user
must maintain authentication credentials at a client and matching credentials
at a server in order to download game save data from, and upload game save
data to, the server.” Final Act. 5 (citing Zhou ¶¶ 49, 50, 53) (emphasis
added). The Examiner reasons that it would have been obvious to modify
Heatherly’s system, in view of Zhou, “to prevent the server system from
being overburdened with download and upload requests from the general
public.” Id.
The Examiner determines that “Heatherly in view of Zhou does not
explicitly show that the maintained information is license information,” as
required by claim 1, and the Examiner relies on Li for disclosing that “a user
of an information processing system must maintain licensing information for
an application in both the information processing system and a server in
order for [the] application functionality to be permitted.” Final Act. 5–6
(citing Li ¶¶ 231–233, 255–259, 275–280) (emphasis added). The Examiner
reasons that it would have been obvious to “further modify the system of
Heatherly with the teachings of Li in order to generate revenue from the
operation of the system.” Final Act. 6 (emphasis added).
Appellant argues that
the techniques of Zhou . . . and Li . . . are in contradiction with
one another, and would not motivate a skilled artisan to modify
as the Examiner asserts. Indeed, to employ the licensing
technique of Li . . . (permitting data access by any device where
username/password is provided) would destroy the arrangement
of the game save data arrangement of Zhou . . . (which permits
access to an application only by specified device(s)).
Appeal 2019-005926
Application 15/104,141
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Appeal Br. 5–6. In support, Appellant submits that
[Zhou] make[s] clear that “roaming saved games” is employed
to provide users the ability to save a game once and continue
the saved game anywhere, where the user, or any other person
who has access to the user’s authentication credentials, may
download the saved games from another console, PC or other
device.
Id. at 6. Appellant also submits that
[w]hether Zhou . . . permits ‘access to everyone’ is immaterial.
Rather, the key issue (and the motivational issue to a skilled
artisan) is that the username/password technique of Zhou . . . is
not tied to a particular, specified device (or a set of specified
devices), but instead permits access to save data on any device
that has access to the online gaming service.
Id. at 6. Appellant further concludes that “license information is
foundationally different from username/password authentication in the
digital rights management context” and that “only by ignoring the technical
differences between the respective access approaches of each reference, the
Examiner erroneously concludes that Zhou . . . and Li . . . are not at odds
with another.” Reply Br. 4. Appellant also concludes that
[w]hen one takes into account the details of the operation of,
and the desired results of, the system of Li . . . – as a skilled
artisan would – one would take away the suggestion to employ
a licensing technique in controlling access to (execution of) a
particular software application, where the license is located on a
particular, specified user device (or specified user devices) in
order to restrict access to such devices.
Id. at 4–5.
Appellant also argues that the Examiner’s finding that “the technique
of Li . . . ‘does not perform licensing based on a device, but instead, on a
token or other information’ is also at odds with the express teaching of [Li],”
because Li “specifically states that access to an application is restricted to a
Appeal 2019-005926
Application 15/104,141
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specified device (or specific devices), where the license establishes the
specified device(s).” Appeal Br. 7.
Finally, Appellant concludes that the Examiner improperly relied on
hindsight. Appeal Br. 7.
We are not persuaded by Appellant’s arguments. As set forth supra,
the Examiner relies on Heatherly’s system architecture (not Zhou’s) for
disclosing a single information processing device with an associated local
storage device (i.e., portable device 160 and portable user account 170) in
communication (and sharing saved data) with a server system with an
associated storage system (i.e., server 120 and online user account 130).
Zhou discloses, inter alia, that the save data may be of the application
processed (i.e., game data), as compared to the various data sets disclosed in
Heatherly, and Li discloses that access may be restricted based on license
information, as compared to the authentication information disclosed in
Heatherly (as well as the passwords disclosed in Zhou). In other words,
Zhou’s disclosure that a single user’s authentication credentials can be used
by several users to access saved data related to an application processed by a
processing unit does not teach against using such authentication credentials
to access such saved data by the single user of Heatherly’s system (i.e., the
user of portable device 160). Heatherly associates authentication
information with computing components or devices, notwithstanding
Appellant’s argument that Zhou teaches that authentication information may
be associated with users. Nor does such a teaching in Zhou contradict Li’s
disclosure that authentication information can include license information, as
relied on by the Examiner supra.
Appeal 2019-005926
Application 15/104,141
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Moreover, Li discloses that “[l]icenses . . . are generally used to
control the manner in which client computing devices may access particular
applications,” and Appellant does not provide sufficient argument or
evidence for concluding that license information is so different from other
types of authentication information (i.e., password information for
controlling access to systems and data), such that the Examiner’s proposed
modification of Heatherly lacks rational underpinning. Li ¶ 2; see also Ans.
4 (“[b]oth Li and Zhou provide for restricting access to software
functionality”).
Appellant also does not address the Examiner’s reasons for modifying
Heatherly, in view of Zhou, and further in view of Li, and therefore, we are
not apprised of error in the Examiner’s reasoning as set forth supra. In other
words, Appellant does not explain why the Examiner’s reasoning lacks
rational underpinning to conclude that the Examiner improperly relied on
hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2, 3, and 6 fall therewith.
Rejection II
Appellant chose not to present arguments for the patentability of
claims 4 and 5, and therefore, for essentially the same reasons as set forth
supra, we also sustain the Examiner’s rejection of claims 4 and 5. Appeal
Br. 4–6.
Appeal 2019-005926
Application 15/104,141
10

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s) Affirmed Reversed
1–3, 6 103 Heatherly, Zhou, Li 1–3, 6
4, 5 103 Heatherly, Zhou,
Li, Ishii
4, 5
Overall
Outcome
1–6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED