Ex Parte 7492268 et al

Patent Trial and Appeal Board

Dec 17, 2012

95001470 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,470 10/15/2010 7492268 FER1947-004 8527
8698 7590 12/18/2012
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NINTENDO CO., LTD. and
NINTENDO OF AMERICA INC.
Requesters and Appellants

v.

MOTIVA, LLC.
Patent Owner and Respondent
____________

Appeal 2012-010784
Reexamination Control 95/001,470
Patent 7,492,268 B21
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination proceeding (the “‘268
Patent”) issued to Ferguson et al. on February 17, 2009.
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A. STATEMENT OF THE CASE
Summary
Third party requesters Nintendo Co. Ltd. and Nintendo of America
Inc. (collectively “Nintendo”) appeal under 35 U.S.C. §§ 134(c) and 315(b)
the Examiner’s decision not to reject claims 2, 4-12, 14, and 15.2 Patent
Owner Motiva LLC.3 (“Motiva”) contends that the Examiner’s decision
must be affirmed.4 An oral hearing was held on December 5, 2012. A
transcript of the hearing will be made of record in due course. We have
jurisdiction under 35 U.S.C. §§ 134(c) and 315(b).
We reverse the Examiner’s decision not to reject claims 2, 4-12, 14,
and 15. Pursuant to 37 C.F.R. § 41.77(b), our reversal constitutes a new
ground of rejection of those claims.
The Invention
Claims 10 and 15 are independent claims involved in this appeal.
Claims 11-14 ultimately depend on claim 10. Claims 2 and 5-9 ultimately
depend on claim 4. Claim 4, however, is not an independent claim and is
instead dependent on claim 3 which is in turn dependent on claim 1. Each of

2 See Nintendo’s Appeal Brief filed October 31, 2011 (“App. Br.”) and
Rebuttal Brief filed April 13, 2012 (“Reb. Br.”).

3 See Patent Assignment Abstract of Title, Reel 021805 Frame 0029 which
was entered into the record of this proceeding as “Title Report” on October
18, 2010.

4 See Motiva’s Respondent Brief filed November 30, 2011 (“Resp. Br.”).

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claims 1 and 3 have been cancelled. Because all of the briefing in this appeal
proceeding is focused on claim 4, that claim is reproduced below along with
cancelled claims 1 and 3 for context.5 (Resp. Br., p. 18, Claims App’x.):
1. (Canceled) A system for tracking position of a user,
comprising:
a first communication device, adapted for being attached to, or
held by, the user, comprising:

a transmitter for transmitting signals;

a receiver for receiving signals; and

an output device; and

a processing system, remote from the first communication
device, for wirelessly receiving the signals transmitted by the
transmitter, determining position information for the first
communication device and sending data signals to the receiver to
provide feedback or control data to the user;

wherein the first communication device receives and processes
the received data signals and generates sensory stimuli for the user,
based on the received data signals and delivered through the output
device.

3. (Canceled) The system of claim 1, wherein:

the first communication device comprises a user input device
adapted for communication with the processing system through the
transmitter.

5 We observe that the claims appendix of Nintendo’s Appeal Brief is not in
proper format. Claims 1, 3, and 4 are reproduced below as they appear in
Motiva’s Respondent Brief.

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4. (Original) The system of claim 3, wherein:

the user input device is adapted for calibrating the first
communication device to establish a reference position.

The Involved Rejection
The Examiner declined to reject claims 2, 4-12, 14, and 15 under 35
U.S.C. § 102 as anticipated by Foxlin6.
B. ISSUE
The issue thus before us is whether the Examiner correctly declined to
reject claims 2, 4-12, 14, and 15 over Foxlin.
C. ANALYSIS
The Examiner’s refusal to reject claims 2, 4-12, 14, and 15 over
Foxlin is predicated on the theory that Foxlin does not disclose the “user
input device” required by each of claims 4, 10, and 15.7 (ACP, p. 4.)
Motiva echoes that theory. (Resp. Br., pp. 11-14.) Nintendo takes an
opposing view, urging that Foxlin discloses a head-worn movement tracking
device which constitutes the user input device of the claims. (App. Br., pp.
13-17.)

6 United States Patent Application Publication No. 2002/0024675 published
February 28, 2002.

7 The Examiner’s Answer mailed March 13, 2012 incorporates by reference
the Right of Appeal notice mailed July 27, 2011 which, in turn, incorporates
by reference the Action Closing Prosecution (“ACP”) mailed March 25,
2011. This opinion therefore makes reference to the ACP.

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Foxlin discloses a “head-worn tracking device” which forms part of a
system used for “intuitive interaction techniques which exploit
proprioception” (Foxlin, Abstract) and is a “fully integrated wearable
[Virtual Reality] system” (id. at 3: ¶0058.) Head-worn tracking device 12 is
described as including a headset or head-worn display 15 and a head
orientation tracker 30. (Id.) Head-worn tracking device 12 may also include
a series of microphones 80, 82, 84 incorporating ultrasonic pulse detection
circuits and providing an “ultrasonic range finder” function. (Id. at 4: ¶0074;
see also Fig. 1.) The head-worn tracking device allows for the motion of a
user’s head to influence images displayed to a wearer of the device. (E.g.,
id. at 6: ¶0100.) Foxlin explains that its disclosed system may be used as
part of a portable virtual reality “tennis game or training system” (id. at 8:
¶0125) or for other type of activities (id. at 8: ¶0126):
such as a sword-fighting or gun-fighting game or trainer, a surgical
trainer, an immersive design environment, a human-computer
interface, or any other application known or not yet known which
requires tracking of a user’s head and one or more limbs or limb-
mounted devices.

In our view, a person of ordinary skill in the art would have readily
understood that Foxlin’s head-worn tracking device constitutes a device
which receives user input and is thus a “user input device” when the term is
afforded its ordinary meaning. That understanding is not seemingly in
dispute.8 Rather, in essence, Motiva stakes out two positions as to why the

8 Indeed, at oral argument, Motiva expressed, through its representative, that
it was also of the view that, outside the context of the ‘268 Patent, one with
ordinary skill in the art would have appreciated that Foxlin’s headset
provides for user input and thus generally constitutes a user input device.
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particular “user input device” required by the involved claims is not met by
Foxlin’s head-worn tracking device.
Motiva first submits that the specification of the ‘268 Patent gives a
special meaning to the term “user input device.” In particular, as was
advanced in oral argument and as laid out in its Brief (Resp. Br., p. 12.),
Motiva contends that a “user input device,” according to the claims, must be
narrowly construed as constituting a manually controlled input device, such
as a LCD touch screen or switch, that is “resident on” a controller or
communication device for controlling the system. As alleged support for
that contention, Motiva points to portions of the specification and drawings
of the ‘268 Patent describing and depicting preferred embodiments. (Id.)
There is a heavy presumption that terms of a patent claim take on their
“plain, ordinary, and accustomed meaning to one of ordinary skill in the
relevant art.” Prima Tek II, L.L.C. v. Polypap, S.A.R.L. 318 F.3d 1143, 1148
(Fed. Cir. 2003). Although a patent owner may overcome that presumption
by acting as their own lexicographer so as to assign a special definition to a
term, that definition must be “clearly set forth” and “explicit.” Id.
Here, we do not discern that the ‘268 Patent provides any clear and
explicit lexicographic definition of the term “user input device.” Indeed,
rather than direct to us to any such definition, Motiva is content to rely
simply on depictions and descriptions of various preferred embodiments of
the invention. Yet, mere drawings or description of embodiments, even if
preferred, do not operate to limit the meaning of a claim term. See id.; see
also E-Pass Technologies, Inc. v. 3Com Corp, 343 F.3d 1364, 1369 (Fed
Circ. 2003). While the ‘268 Patent may contemplate a “LCD and touch
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screen” (‘268 Patent, 34:6-8) or a “pushbutton switch” (id. at 34:52-57) as
exemplary forms of a “user input device,” that is insufficient to imbue the
term with a special meaning disassociated from its ordinary and customary
meaning. We therefore reject Motiva’s argument in that regard.
Motiva alternatively urges that Foxlin’s head-worn tracking device
cannot constitute the claimed “user input device” because the tracking
device has already been equated with a “first communication device.”
(Resp. Br., pp. 11-12; 13-14.) According to Motiva, the first communication
device and the user input device must be “separate” components from one
another. (Id.)
The language of the claims themselves evinces a tension in the
position advocated by Motiva. For instance, some of the claims introduce a
first communication device and then set forth that the “first communication
device comprises a user input device” (e.g., claims 3 and 15). As seemingly
recognized by Motiva, the term “comprises” is synonymous with “includes.”
(See Resp. Br., p. 13.) That recognition is in accord with the Manuel of
Patent Examining Procedure (“MPEP”) which also provides guidance as to
the meaning of the term “comprises” in a patent claim. To that end, the
MPEP expresses that the term is understood to be synonymous with each of
“‘including,’ ‘containing,’ or ‘characterized by’.” (MPEP § 2111.03.) That
the communication device includes or is characterized by the user input
device does not, in our view, preclude a single component from constituting
the two recited devices.
Indeed, in other of Motiva’s claims (e.g., claim 10) the user input
device is also expressly set forth as itself being a component “for
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communication” with a processing system. Thus, in that context, Motiva’s
own claims convey that the user input device is a device performing a
communication function and thus also operating as a communication device.
Motiva’s position is inconsistent with its own claims. Motiva makes no
attempt to reconcile that inconsistency. After due consideration of Motiva’s
position, we do not agree with Motiva that Foxlin’s head-worn tracker
device is somehow precluded from forming a first communication device
and a user input device.
In any event, even were we to assume arguendo that Motiva is correct
that a single given component cannot be both the communication device and
the user input device, we observe that Foxlin’s head-worn tracker device 12
is not itself a single component but is instead an assemblage of a multitude
of components. As seen, for instance, in Figure 1, head-worn tracker device
12 incorporates, among other things, a headset 15, a head orientation tracker
component 30, microphones 80, 82, and 84 and a cable connection 189 for
communicating with computer 10. Thus, head-worn tracker device 12 is
itself composed of multiple components or devices, including those which
provide communication with a processor and which receive user input. In
that regard, we do not discern why Foxlin’s head-worn tracker device is not
reasonably viewed as itself incorporating each of the first communication
device and user input device set forth in the claims.
We also observe that on page 13, lines 1-4 of its Respondent Brief,
Motiva offers a statement in the form of a single sentence apparently

9 While Figure 1 illustrates that cable 18 operates to communicate the
computer 10, Foxlin also discloses that in lieu of such a connection a
“wireless connection” may be employed (Foxlin, 8: ¶0126).
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directed to a different feature required by the claims. To that end, Motiva
states that “Foxlin does not teach or suggest a ‘first communication device’
that is comprised of a user input device for calibrating the system as
claimed.” As apparent support for that statement, Motiva points to content
of the ‘268 patent describing an embodiment of its invention involving the
use of an LCD touch screen as a calibrating component. However, the
description of an example embodiment in the ‘268 Patent provides little if
any meaningful explanation as to why Motiva is of the view that Foxlin
lacks or does not disclose calibration of its system using its disclosed
devices. Moreover, Motiva offers no elucidation as to why Nintendo’s
detailed assessment (App. Br., 18-19) as to the content of Foxlin in
connection with its disclosed calibrating components is incorrect. We also
do not discern why or how there is error in that assessment.
Upon consideration of the record, we are of the view that Foxlin is
properly considered as a reference which anticipates Motiva’s claims 2, 4-
12, 14, and 15. We therefore think those claims should have been rejected
under 35 U.S.C. § 102 in the manner set forth at pages 86-122 of Nintendo’s
Request for Inter Partes Reexamination filed November 15, 2010.
Accordingly, pursuant to 37 C.F.R. § 41.77(b), we exercise our authority and
enter a ground of rejection of claims 2, 4-12, 14, and 15 under 35 U.S.C.
§ 102 as anticipated by Foxlin, the underlying basis of which is explained in
the above-noted portion of Nintendo’s Request for Reexamination.
D. CONCLUSION
The record adequately establishes that the Examiner incorrectly
declined to reject claims 2, 4-12, 14, and 15 as anticipated by Foxlin.
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E. ORDER
The Examiner’s decision not to reject claims 2, 4-12, 14, and 15 under
35 U.S.C. § 102 as anticipated by Foxlin is reversed.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
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Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
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and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).

REVERSED; 37 C.F.R. § 41.77(b)

PATENT OWNER:

STANDLEY LAW GROUP LLP
6300 RIVERSIDE DRIVE
DUBLIN, OH 43017

THIRD-PARTY REQUESTER:

NIXON & VANDERHHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203

lb