Ex Parte 7,677,948 B2 et al

Patent Trial and Appeal Board

Apr 20, 2015

95001341 (P.T.A.B. Apr. 20, 2015)

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.
95/001,341 04/20/2010 7,677,948 B2 GANZ-36219US23 6099
26206 7590 04/21/2015
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
KISS, ERIC B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/21/2015 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
____________

HASBRO, INC.,
Requester,

v.

GANZ,
Patent Owner.
____________

Appeal 2014-002518
Reexamination Control 95/001,341
Patent 7,677,948 B2
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU, and DENISE M.
POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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BACKGROUND
On October 31, 2012, the Board reversed the Examiner’s decision that
the claims 1–31 and 33–68 of U.S. Patent No. 7,677,948 B2 (the ’948
patent) were patentable but presented new grounds of rejection for these
claims. Pursuant to 37 C.F.R. § 41.77(f), the proceeding returned to the
Board to reconsider the matter and issue a new decision. On April 1, 2014,
we affirmed the Examiner’s decision to reject claims 1–31 and 33–68.
Patent Owner files a “Request for Rehearing” of the April 1, 2014 decision
(Req. Reh’g), questioning the status of the present matter. In particular,
Patent Owner requests clarification as to whether prosecution was, in fact,
“reopened,” whether the Examiner considered the new claim amendments,
whether claim amendments submitted in Request to Reopen Prosecution
After Decision by the Patent Trial and Appeal Board (PTAB), dated
November 30, 2012 (“Request”) were entered, and whether a Declaration of
Karl Borst (“Borst Declaration”), which Patent Owner asserts was filed
November 18, 2013, was considered. Req. Reh’g 4-8.
We provide the following clarification. Prosecution was indeed
“reopened” pursuant to 37 C.F.R. §§ 41.77(b)(1) and 41.77(d) (see, e.g.,
“Order Remanding Inter Partes Reexamination,” dated July 31, 2013
(“Remand Order”) and Examiner’s Determination under 37 C.F.R.
§ 41.77(d) dated October 19, 2013 (“Examiner’s Determination”)), the
Examiner considered Patent Owner’s claim amendments (see, e.g.,
Examiner’s Determination), and Patent Owner’s amendments to claims 1,
16, 35, and 43, as submitted in the Request, were entered (see, e.g., Remand
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Order, Examiner’s Determination, or the Decision, dated April 1, 2014
(“Decision II”)).
The “Borst Declaration” was filed November 18, 2013 with the
Response After Decision Under 37 C.F.R. § 41.77(d), in response to the
Examiner’s Determination. We note that 37 C.F.R. § 41.77(b)(1) states that
the Patent Owner may “file a response requesting reopening of prosecution
before the examiner” and that the response “must be either an amendment of
the claims so rejected or new evidence relating to the claims so rejected, or
both.” Patent Owner does not indicate that the Borst Declaration was filed
under 37 C.F.R. § 41.77(b)(1) as new evidence. Instead, Patent Owner
states that the Borst Declaration was filed November 18, 2013, which is in
response to the Examiner’s Determination (i.e., filed pursuant to 37 C.F.R.
§ 41.77(e)). We note that 37 C.F.R. § 41.77(e) states that “the owner . . .
may once submit comments in response to the examiner’s determination
[under 37 C.F.R. § 41.77(d)]” but does not permit Patent Owner to file new
evidence (e.g., the Borst Declaration). Hence, the Borst Declaration is
untimely filed and is not considered. In any event, Patent Owner’s
opportunity to file the Borst declaration was with the Request. On the
record, Patent Owner does not cite to, refer to, or otherwise rely on the Borst
Declaration in the Request. See, e.g., Decision, dated October 31, 2012
(“Decision I”), Request, Remand Order, Examiner’s Determination, and
Decision II.
Patent Owner also reiterates previously presented arguments and
asserts that we refused consideration of the arguments. Each of these
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arguments was previously addressed. Patent Owner restates the following
arguments:
1) “[T]he Board . . . did not put the Patent Owner on notice of a
rejection.” Req. Reh’g 9. See also Decision II 3-4.
2) The cited references fail to disclose or suggest a “user account.”
Req. Reh’g 10. See also Decision II 4, Decision I 4-6.
3) The cited references fail to disclose or suggest purchase
information stored in memory. Req. Reh’g 10-11 (citing
Decision II 5). See also Decision II 5-6.
4) It would not have been obvious to one of ordinary skill in the
art to combine the cited references. Req. Reh’g 11. See also
Decision II 6.
5) The cited references fail to disclose registering a second
product. Req. Reh’g 11-12 (citing Decision II 6). See also
Decision II 6-7, Decision I 8-9.
6) The cited references fail to “recognize[] the need or problem to
save the password such that it would not need to be entered
again.” Req. Reh’g. 12 (citing Decision II 8). See also
Decision II 6-7, Decision I 6-9.
7) The cited references fail to disclose switching control from one
virtual representation to the other. Req. Reh’g 12 (citing
Decision II 7). See also Decision II 7, Decision I 9.
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8) The cited references fail to disclose linking the first registration
code to the user account. Req. Reh’g 13 (citing Decision II 8).
See also Decision II 8, Decision I 4-6.
9) The cited references fail to disclose linking the first and second
products. Req. Reh’g 13 (citing Decision II 8). See also
Decision II 9, Decision I 8-9.
10) The cited references fail to disclose moving the virtual
representation. Req. Reh’g 13 (citing Decision II 9). See also
Decision II 9-10.

As stated and indicated above with reference to Decisions I and II, all
of these issues were previously addressed in detail. Patent Owner does not
demonstrate persuasively that we overlooked or misconstrued any points
regarding these issues.
For at least the foregoing reasons, Patent Owner’s Request for
Rehearing is denied.

REHEARING DENIED

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Application 95/001,341

6

ack

for PATENT OWNER:

PEARNE & GORDON LLP
1801 EAST 9TH STREET
CLEVELAND, OH 44114-3108

for THIRD PARTY REQUESTER:

PERKINS COIE L.L.P.
P.O. BOX 1208
SEATTLE, WA 98111-1208