Ex Parte Kulas

Patent Trial and Appeal Board

Apr 25, 2016

12759425 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121759,425 04/13/2010 Charles J. Kulas
36707 7590 04/27/2016
CHARLES J. KULAS
651 ORIZABA A VE.
SAN FRANCISCO, CA 94132
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CJK-37-A 6949
EXAMINER
YEN,JASONTAHAI
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
charlie@trellislaw.com
megan@trellislaw.com
docket@trellislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. KULAS
Appeal2014-002172
Application 12/759,425 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles J. Kulas (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1 and 3-14.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is the inventor,
Charles J. Kulas. Appeal Br. 3 (filed Aug. 23, 2013).
2 Claim 2 is objected to by the Examiner as being dependent upon a
rejected base claim and otherwise indicated as being allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claim. See Final Act. 9 (transmitted Mar. 12, 2013). Claim 2 is
not part of the instant appeal.
Appeal2014-002172
Application 12/759,425
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellant's invention relates to "using a portable device such as a cell
phone to control gamepieces" in an electronic game. Spec. ,-r 1.
Claims 1, 10, and 14 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for controlling an electronic game, wherein a
first device is movable by a human hand and includes a display,
movement sensor, user input control and transceiver, the
method comprising:
detecting movement of the first device along a tabletop;
accepting a signal from the user input control;
determining a current position of the first device at the
time of accepting the signal;
using the current position, movement and signal to cause
an action in a game that is displayed on the first device; and
sending signals via the transceiver to one or more other
devices being moved on the tabletop by one or more other users
in the game, wherein the signals are responsive to the user input
control and the device position to affect gameplay.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 10, and 14 under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1, 8, and 9 of Kulas (US 8,123,614
B2, iss. Feb. 28, 2012 (hereinafter "Kulas '614")).
II. The Examiner rejected claim 1 under the judicially created
doctrine of obviousness-type double patenting as being
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Application 12/759,425
unpatentable over claim 1 of Kulas (US 8,267, 788 B2, iss. Sept.
18, 2012 (hereinafter "Kulas '788").
III. The Examiner rejected claims 1, 3-5, and 8-14 under 35 U.S.C.
§ 103(a) as being unpatentable over Huang (US 2010/0279768
Al, pub. Nov. 4, 2010).
IV. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over Huang and Jackson3.
V. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Huang and Moore4.
ANALYSIS
Re} ections I and II
Appellant has not furnished any substantive arguments against the
Examiner's obviousness-type double patenting rejections of claims 1, 10,
and 14. See Appeal Br. 5-7; Reply Br. 4 (filed Dec. 2, 2013). Therefore, we
summarily affirm Rejections I and II.
Rejection III
Each of independent claims 1, 10, and 14 requires, inter alia,
"detecting movement of the first device along a tabletop." See Appeal Br.,
Claims App.
The Examiner finds that Huang discloses most of the limitations of
independent claims 1, 10, and 14, but "does not explicitly disclose that the
devices are moved along a tabletop." See Final Act. 5---6 (citing Huang,
3 Josh Jackson, 5 great iPhone war games for under $5, pub. Jan. 5, 2009.
4 Derek Moore, Cannon Challenge-Be a Kid Again, pub. Aug. 18, 2008.
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Figs. 1, 3-5, iii! 2, 9, 16, 17, 19, 20, 25-29). Nonetheless, the Examiner
further finds that in Huang two-dimensional positioning for some interactive
games, such as a war game where players fire virtual rockets at other
players, requires transferring a reduced amount of information between
game devices. See id. at 6-7 (citing Huang iii! 21, 22). Thus, the Examiner
concludes that a person of ordinary skill in the art at the time the invention
was made would "place or move the devices on a flat surface such as a
tabletop in order to play [said] two-dimensional game[ s] that require[] less
information to be transferred between game devices." See id.
In response, Appellant argues that Huang teaches away from
Appellant's goal of tabletop gameplay because "Huang does not consider the
tabletop as suitable for gaming, but merely for calibration by restricting
device movement and position[ing] and aligning the devices." See Appeal
Br. 6; see also Reply Br.5. According to Appellant, "Huang does not
mention restricting rotation or moving the devices along a tabletop." See
Appeal Br. 7.
We are not persuaded by Appellant's arguments because Appellant
does not point to any passage in Huang that "criticize[s], discredit[s] or
otherwise discourage[s]" moving Huang's gaming device across a tabletop.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In fact, in addition
to calibration taking place on a flat surface or tabletop, Huang also discloses
an embodiment wherein games, such as a war game where players fire
virtual rockets at other players, can be played in two-dimensions. See
Huang iii! 9-12, 21-22. Although we appreciate Appellant's position that
Huang is silent regarding two-dimensional gameplay taking place on a flat
surface or tabletop, nonetheless, such silence, considered in the context of
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Application 12/759,425
Huang's disclosure as a whole, is not teaching away from detecting
movement of the first device along a flat surface or tabletop. See DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006) ("We will not read into a reference a teaching away from a process
where no such language exists."). As such, we agree with the Examiner that
because "Huang does not prevent players from using the tabletop as a game
playing surface," Huang does not constitute a teaching away. See Ans. 10-
11.
Appellant further argues that because of differences between Huang's
handheld device and Appellant's claimed tabletop device (see Reply Br. 6,
Table I), "Huang's approach of gaming with devices being held by players
as they move about renders inoperable Applicant's approach of tabletop
gaming where the devices are slid about on a tabletop." Reply Br. 5. We
are not persuaded by Appellant's argument because "[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). As discussed above, the Examiner reasons that the modification of
Huang would have been obvious "in order to play two-dimensional game[ s]
that requires less information to be transferred between game devices." See
Final Act. 7. Appellant has not explained why any differences between
Huang's handheld device and Appellant's claimed tabletop device are of
such a nature as to have dissuaded a person of ordinary skill in the art at the
time of Appellant's invention from utilizing Huang's handheld device on a
flat surface or tabletop. As the Examiner cogently explains, because the
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"down" coordinate can be ignored in certain games, such as war games
where players fire virtual rockets at other players, Huang's handheld device
can be used on a flat surface/tabletop when playing a game using only x-y
coordinates. See Ans. 10-11. In other words, as Huang's handheld device
can be used on a flat surface/tabletop for calibration and can rotate in three
dimensions, Appellant fails to explain why it cannot also be used for gaming
on a flat surface/tabletop when playing games that require using only x-y
coordinates and why it cannot rotate in two of the three dimensions. See
Reply Br. 6, Table I; see also Huang i-fi-19-12, 21, and 22.
Lastly, we are not persuaded by Appellant's argument that the
Examiner's modification of Huang is based on impermissible hindsight. See
Reply Br. 6-7. The Examiner has provided a reason with rational
underpinning, namely, "to play two-dimensional game[ s] that requires less
information to be transferred between game devices." See Final Act. 7; In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness
grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness") (cited with
approval in KSR, 550 U.S. at 418). Appellant has not persuasively argued
that the Examiner's conclusion lacks rational underpinning.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claims 1, 10, and 14, and their
respective dependent claims 3-5, 8, 9, and 11-13, under 35 U.S.C. § 103(a)
as being unpatentable over Huang.
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Rejections IV and V
With respect to Rejections IV and V, Appellant has not provided
additional substantive arguments other than the arguments presented supra.
See Appeal Br. 6-7; see also Reply Br. 4--7. For the same reasons as stated
above, we sustain the rejections under 35 U.S.C. § 103(a) of claim 6 as
unpatentable over Huang and Jackson, and of claim 7 as unpatentable over
Huang and Moore.
SUMMARY
The Examiner's decision to reject claims 1, 10, and 14 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1, 8, and 9 of Kulas '614 is affirmed.
The Examiner's decision to reject claim 1 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claim 1 of Kulas '788 is affirmed.
The Examiner's decision to reject claims 1 and 3-5, and 8-14 under 35
U.S.C. § 103(a) as being unpatentable over Huang is affirmed.
The Examiner's decision to reject claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over Huang and Jackson is affirmed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Huang and Moore is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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