Ex Parte lmai et al

Patent Trials and Appeals Board

Jun 18, 2019

14371328 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/371,328 07/09/2014
27538 7590
Gibson & Dernier LLP
89 Headquarters Plaza North
PMB 1469
Morristown, NJ 07960
06/20/2019
FIRST NAMED INVENTOR
Kenichi Imai
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.
545-481 3091
EXAMINER
MYHR, JUSTIN L
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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
cmburgos@gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHI LMAI, SHIGERU ENOMOTO, HIROSHI SAITO,
TOSHIMASA AOKI, and SATOSHI HASHIMOTO 1
Appeal2018-008101
Application 14/371,328
Technology Center 3700
Before MICHAEL L. HOELTER, JAMES P. CALVE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1-7, which constitute all the claims
pending in this Application. Final Act. 1 (Office Action Summary). We
have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons explained below, we AFFIRM the Examiner's
rejections of these claims under 35 U.S.C. § 103(a).
1 "Pursuant to 37 C.F.R. § 41.37(c)(l)(i), the real party in interest is Sony
Computer Entertainment Inc., assignee of record and the owner of the entire
interest in the instant application." App. Br. 2. Accordingly, we proceed on
the basis that, for the purposes of this Appeal, Sony Computer Entertainment
Inc. is the "Appellant."
Appeal2018-008101
Application 14/371,328
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to an information processing
technology and, more particularly, to a technology for processing content
such as games." Spec. ,r 1. Apparatus claims 1, 6, and 7 are independent.
Claim 1 is illustrative of the claims on appeal and is reproduced below.
1. A client information processing apparatus operated by a
first user, comprising:
an acquisition unit configured to acquire image data of a
game application being executed and played on another client
information processing apparatus of a second user, directly
from the other client information processing apparatus of the
second user;
a display processing unit configured to display an image
of game play of the game application using the acquired image
data;
a participation processing unit configured to allow the
first user to join the game application being played on the other
client information processing apparatus of the second user; and
an execution unit configured to activate game software
after it is determined that the first user joins the game,
wherein the display processing unit displays the image of
the game play while the execution unit is activating the game
software.
REFERENCES RELIED ON BY THE EXAMINER
Danieli et al. US 2006/0058103 Al Mar. 16, 2006
Jensen US 2006/0287106 Al Dec. 21, 2006
Spanton et al. US 2007/0117617 Al May 24, 2007
Pereira et al. US 2012/0004041 Al Jan. 5, 2012
THE REJECTIONS ON APPEAL
Claims 1-3 and 5-7 are rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Spanton, Pereira, and Danieli.
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Application 14/371,328
Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Spanton, Danieli, Pereira, and Jensen.
ANALYSIS
Appellant argues claims 1-3 and 5-7 together. 2 App. Br. 5-8. We
select claim 1 for review, with the remaining claims (i.e., claims 2, 3, and 5-
7) standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner primarily relies upon Spanton for disclosing the
limitations of claim 1, but acknowledges that Spanton does not disclose the
limitations of: (a) a processing unit that "displays the image of the game
play while the execution unit is activating the game software," and (b) the
acquisition unit acquiring image data "directly from the other client
information processing apparatus of the second user." See Final Act. 3--4.
The Examiner relies on the teachings of Pereira for disclosing "a continuous
video feed of a game during the process of activating a gaming software on
the gaming console." Final Act. 4. The Examiner further relies on the
teachings of Danieli for disclosing a gaming system that "can include a
direct communication connection between gaming consoles (paragraph
[0045])." Final Act. 4. For each reference, the Examiner provides a
separate reason for the inclusion thereof with Spanton. See Final Act. 4, 5.
Appellant addresses the limitation of a client information processing
apparatus acquiring game image data "directly from" another client
information processing apparatus. See App. Br. 6. Appellant initially
addresses Spanton stating that this reference teaches sending "gaming data
2 Appellant states that although the three independent claims 1, 6, and 7 "are
of differing scope, they do share some salient features." App. Br. 5.
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Application 14/371,328
to a server from which the server creates and distributes" the data to another
client. App. Br. 6. Appellant contends that there is no disclosure in Spanton
by which the data is conveyed "directly from the other client information
processing apparatus of the second user."3 App. Br. 6.
The Examiner appears to have already understood this deficiency in
Spanton and, as such, relied on Danieli ( and particularly paragraph 45
thereof) for teaching "a direct communication connection between gaming
consoles." Final Act. 4. The Examiner explains that Danieli "is relied upon
to teach the feature of the direct connection" and that "Danieli teaches that
[it is] known within the gaming media streaming art (see abstract of Danieli
regarding streaming for games) that connection types relying upon direct
connection are known." Ans. 2; see also id. at 4. The Examiner states that it
would have been obvious to modify Spanton' s gaming system so "that two
gaming devices can communicate directly with each other in order to
exchange data, as shown by Danieli" (Ans. 3), "thereby allowing less load
on the server" (Final Act. 5).
Appellant addresses Danieli stating that, in referenced Paragraph 45,
there is "no disclosure that such communications would include the
spectator event." App. Br. 7; see also id. at 8. Indeed, according to
Appellant, "the entirety of [Danieli' s Specification is] directed to the server-
client arrangement for spectator activities." App. Br. 7; Reply Br. 3. Thus,
Appellant argues, "the issue is whether the direct communication between
3 Appellant's Specification provides additional clarity stating that different
information processing apparatus "may directly transmit and/or receive data
with one another (without going through the server 5)." Spec. ,r 17.
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Application 14/371,328
game consoles disclosed in Danieli ... disclose and suggest using such
channelfor transmitting a spectator event."4 App. Br. 7.
First, we are instructed that "'[t]he use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.'" In re Heck, 699 F.2d 1331, 1333
(Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA
1968)). Second, we are also instructed that "[t]he obviousness analysis
cannot be confined ... by overemphasis on the importance of published
articles and the explicit content of issued patents" (i.e., the Examiner's
reasoning is not to be confined by that "disclosed in Danieli" as Appellant
asserts). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007); App. Br.
7.
In the matter before us, the Examiner notes Appellant's desire to limit
Danieli's teachings to only client-spectator connections, and not on Danieli's
broader disclosure of a direct connection being a common type of
connection in the gaming art. See Ans. 2--4; (see also Danieli Fig. 8
(illustrating "peer-peer connection" 488)). 5 Thus, as indicated above, the
Examiner reasons that "two gaming devices can communicate directly with
4 "The issue here is what is reasonably conveyed by Danieli ... to a skilled
artisan seeking to learn about what should be done in connection with a
particular situation." Reply Br. 3.
5 While it is understood that Figure 8 of Danieli discloses this peer-to-peer
connection between spectators, this disclosure would also seem to at least
suggest to a skilled person that a similar type of connection could likewise
be employed between participants (who are equally "peers" of each other).
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each other in order to exchange data, as shown by Danieli." Ans. 3.
Appellant does not apprise us of error in this reasoning.
Appellant further contends that the Examiner's reason to combine
Spanton with Danieli is flawed. 6 App. Br. 7. Appellant contends that there
is error because Spanton does not indicate that it "is 'modifiable' to perform
some function that it does not disclose." App. Br. 8. The test is not whether
the reference itself discloses that it might be modifiable, instead, the test is
whether the Examiner provided articulated reasoning with rational
underpinning to support the conclusion of obviousness. See KSR, 550 U.S.
at 418. Appellant does not explain how, by using a direct connection
bypassing the server, the Examiner's combination with Danieli would fail to
put "less load on the server" as expressed by the Examiner. 7 Final Act. 5.
Appellant's further contentions that the Examiner's reasoning "is a
conclusion," or is a "resort to 'hindsight"' (App. Br. 8; see also Reply Br. 4),
are likewise not persuasive.
Accordingly, and based on the record presented, we do not find the
Examiner erred in rejecting claims 1-3 and 5-7 as unpatentable over
Spanton, Pereira, and Danieli.
Regarding claim 4 ( which depends from claim 1 ), Appellant does not
proffer arguments in an attempt to rebut the Examiner's rejection of this
6 Appellant's argument refers to "Pereira," but we understand Appellant
meant Danieli because the reason addressed pertains to "less load on the
server." App. Br. 8: see also Final Act. 5.
7 The Examiner states that such a direct connection has the "benefit of
lowering the amount of game developer resources by allowing the
communication to be between the devices instead of relying upon a server to
communicate the flow of information between the devices." Ans. 4.
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claim in view of Spanton, Danieli, Pereira, and Jensen. Accordingly, we
likewise sustain the Examiner's rejection of claim 4 as being obvious in
view of these references.
DECISION
The Examiner's rejections of claims 1-7 under 35 U.S.C. § 103(a) are
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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