Ex Parte McCarten et al

Patent Trial and Appeal Board

Jan 29, 2014

11175044 (P.T.A.B. Jan. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID MCCARTEN, PETER ECK, SCOTT ELLIOTT, and
HIROSHI KAMADA
____________________

Appeal 2011-013615
Application 11/175,044
Technology Center 3700
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013615
Application 11/175,044

2
STATEMENT OF THE CASE
David McCarten et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1-3 and 5-32. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1, 24, and 25 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and reads (emphasis added):
1. Apparatus for use in a car, comprising:
a car area network disposed in a car to enable
communications between various devices in the car;
an existing consumer electronics device
corresponding to a DVD player, a CD player, or a
car radio system, the existing consumer electronics
device being coupled to the car area network and
having an existing consumer electronics device
function, wherein the consumer electronics device is
reprogrammed so that the existing consumer
electronics device is transformed into a virtual video
game player using a video game emulator or
transcompiler program to support an additional
control function that includes controlling execution
of video games, the consumer electronics device
including:
processing circuitry already existing in the
consumer electronics device for the purpose of
supporting the existing consumer electronics device
function,
a car area network interface for interfacing the
processing circuitry with the car area network;
a user interface coupled to the processing
circuitry;
Appeal 2011-013615
Application 11/175,044

3
a memory, coupled to the processing circuitry,
for storing video game emulator or transcompiler
program code executable by the processing circuitry
for use by the processing circuitry in supporting play
of one or more video games;
a game server coupled to the car area network
for assisting the reprogrammed consumer electronics
device in supporting play of one or more video
games;
a video game display device coupled to the car
area network for displaying video game information
to a car occupant in accordance with a game being
executed under the control of one or both of the
reprogrammed consumer electronics device and the
game server;
a multifunction controller for transmitting
control information to the reprogrammed consumer
electronics device via the car area network to permit
a car occupant to control the reprogrammed
consumer electronics device to permit the occupant to
play a video game displayed on the video game
display; and
one or more audio or visual devices coupled to
the car area network and configured to be controlled
by commands transmitted from the reprogrammed
consumer electronics device or from the
multifunction controller over the car area network.

REJECTIONS
I. Claims 1-3, 5-21, and 24-32 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Eck (US 2002/0045484 A1; published Apr. 18,
2002).
II. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Eck and Razavi (US 6,507,810 B2; issued Jan. 14,
2003).
Appeal 2011-013615
Application 11/175,044

4
ANALYSIS
Rejection I
The Examiner found Eck discloses each and every limitation of claim
1, including “an existing consumer electronics device corresponding to a
DVD player, CD player, or car radio system.” Ans. 5. The Examiner found
“televisions, PCs, video game platforms, or any other general purpose
display device corresponds to the above [existing consumer electronics
device].” Id. (emphasis added) (citing Eck, paras. [0108]-[0117]). The
Examiner also stated “PCs, televisions, video game platforms, and other
general purpose display devices are all well known to have DVD, CD, or
radio capabilities[,]” and that “[t]he majority of PCs and video game
platforms, for example, all contain at the very least, an optical disc-based
media (e.g.[,] Blu-Ray, HD-DVD, DVD, or CD)[]” and “these devices are
considered DVD players, CD players, or radios.” Id. at 13 (emphases
added). The Examiner also stated that Ecks’s computers “correspond to” a
CD player or a DVD player, in that Eck discloses the system includes a
removable optical disk, such as a CD ROM or other optical media (e.g.,
DVD). Id. at 13-14 (citing Eck, para. [0224]).
Appellants contest the Examiner’s finding that Eck discloses “an
existing consumer electronics device corresponding to a DVD player, CD
player, or car radio system,” as claimed. App. Br. 14. Rather, Appellants
contend that Eck is primarily directed to the use of “general purpose” or
“generic” computing devices, and loading and executing emulator software
onto such devices. Id. at 14-15.
Appellants contend that none of “televisions, PCs, video game
platforms, or any other general purpose display device” found by the
Appeal 2011-013615
Application 11/175,044

5
Examiner “is” “a DVD player, a CD player, or a car radio system,” as
specifically claimed. App. Br. 14. In support, Appellants provide a
dictionary definition of “correspond” as to “‘[h]ave a close similarity; match
or agree almost exactly.’” Reply Br. 3. Appellants also contend that “the
specification discloses that a DVD player, a CD player, or a car radio system
actually is the existing consumer electronics device.” Id. (emphasis added).
In support, Appellants reference the following description:
The existing consumer electronics device 18 may
be, for example, a car radio, a sound system, a CD
player, a DVD player, a GPS navigator, a
television, a satellite radio, a mobile radio, etc.,
that is adapted to interface with a car area network
(described later) and to perform a variety of
control entertainment functions including video
gaming function that would otherwise not be
performed by the existing CED.
Id. (citing Spec. para. [0023]; emphasis added).
We understand Appellants’ position is that “corresponding to” means
“is,” and hence, claim 1 requires “an existing consumer electronics device
[that is] a DVD player, a CD player, or a car radio system.”
“The Patent and Trademark Office (‘PTO’) determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). Appellants do not direct us to a specific definition of
“corresponding to” in the Specification. However, we agree with Appellants
that the Examiner's apparent construction of the limitation “corresponding to
Appeal 2011-013615
Application 11/175,044

6
a DVD player, a CD player, or a car radio system,” as merely requiring the
existing consumer electronics device have “DVD, CD, or radio capabilities,”
is not consistent with the Appellants’ definition of “correspond,” as well as
with the description in the Specification pertaining to an “existing consumer
electronics device” noted supra.
The Examiner did not make a finding that Eck discloses any existing
consumer electronics device that is a DVD player, a CD player, or a car
radio system, and is also reprogrammed to have an additional video game
control function, as claimed. We understand the Examiner found Eck’s
disclosed “video game playing platform” (see Eck, para. [0114]) is as “an
existing consumer electronics device,” as claimed. However, Appellants’
Specification describes CD players, DVD players, and car radio systems, as
claimed, as being “non-gaming platforms” and, as such, contrasts such
platforms with existing game platforms as desirable to keep cost to a
minimum by using existing non-gaming platforms that already exist in cars.
See Spec. para. [0010]. Moreover, claim 1 calls for an existing consumer
electronics device reprogrammed to have video games control functionality,
in addition to an existing consumer electronics device function. The
Specification distinguishes between televisions and the claimed CD players,
DVD players, and car radio systems. Id. Accordingly, the Examiner’s
determination that Eck’s disclosure of “televisions” (see Eck, paras. [0115]-
[0116]) that can be added to a plane or train to provide a video gaming
network meets the claim limitation reciting “an existing consumer
electronics device corresponding to a DVD player, CD player, or car radio
system” is not consistent with the Specification, which further disavows
Appeal 2011-013615
Application 11/175,044

7
coverage of such add-on systems in favor of using existing consumer
electronics devices that come standard on a car.
We also agree with Appellants that Eck’s disclosure of “a personal
computer” (see Eck, para. [0113]) and “any other special or general purpose
display device” (see Eck, paras. [0117]) does not meet the claim limitation.
In this regard, Appellants contend “general purpose computing devices are
designed to load and execute different types of programs[]” (App. Br. 16),
“[b]ut that is not the case for a DVD player, a CD player, or a car radio
system installed in a car network. These thin devices are designed only to
do what their highly-specialized, respective embedded program or logic is
pre-configured to do” (id. at 17). We understand that the claimed “existing
consumer electronics device” is a specialized-purpose device that is only
designed to play a DVD (DVD player), a CD (CD player), or radio (car
radio system) and already exists in a car, not a general-purpose device that
has multiple functionalities, or can be added or retrofitted to a car. We agree
with Appellants that the Examiner did not make a finding supported by a
preponderance of the evidence that Eck discloses “an existing consumer
electronics device,” as claimed.
The Examiner also found Eck’s device “is “reprogrammed,” as
claimed. Ans. 5 (citing Eck, paras. [0118]-[0119]). According to the
Examiner, because Eck’s regular devices may also support video game
emulation and multipurpose configurations, they are reprogrammed for this
support. Id. (citing Eck, paras. [0135]-[0136]). However, because the
Examiner’s finding that Eck discloses “an existing consumer electronics
device,” as claimed, is not supported by Eck, it follows that Eck also does
not disclose the claim limitation reciting “the consumer electronics device is
Appeal 2011-013615
Application 11/175,044

8
reprogrammed so that the existing consumer electronics device is
transformed into a virtual video game player using a video game emulator or
trans compiler program to support an additional control function that
includes controlling execution of video games.”
In view of the above, we do not sustain the rejection of claim 1, or its
dependent claims 2, 3, 5-21, and 31, as being anticipated by Eck.
Claim 24 recites limitations similar to those discussed supra for claim
1. The Examiner’s findings for claim 24 are the same as those made for
claim 1. Ans. 12. Thus, we do not sustain the rejection of claim 24, or its
dependent claim 32, as being anticipated by Eck for reasons similar to those
discussed supra for claim 1.
Claim 25 is directed to “a method for using a car area network
disposed in a car to enable communications between various existing
consumer electronic devices in the car” comprising, inter alia,
adapting one or more of the existing consumer
electronic devices using a video game emulator or
transcompiler program so that the adapted
consumer electronic device functions as a virtual
video game platform to support play of video
games, where the adapted consumer electronic
device corresponds to one or more of a DVD
player, a CD player, or a car radio system.
Emphasis added. The Examiner’s findings for claim 25 are the same as
those made for claim 1. Ans. 12. Thus, we do not sustain the rejection of
claim 25, or its dependent claims 26-30, as being anticipated by Eck for
reasons similar to those discussed supra for claim 1.

Appeal 2011-013615
Application 11/175,044

9
Rejection II
Claims 22 and 23 depend from claim 1. The Examiner’s application
of Razavi for this rejection (Ans. 12-13) does not cure the deficiencies of the
rejection of claim 1. Thus, we do not sustain the obviousness rejection of
claims 22 and 23.

DECISION
We REVERSE the rejections of claims 1-3 and 5-32.

REVERSED

hh