Ex Parte Terrell et al

Patent Trial and Appeal BoardApr 19, 2016

12362804 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/362,804 0113012009 Scott Michael Terrell 30764 7590 04/21/2016 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 12275 EL CAMINO REAL, SUITE 200 SAN DIEGO, CA 92130 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. 13RZ-145973 1797 EXAMINER MORTELL, JOHN F ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): DOCKETING@SHEPPARDMULLIN.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT MICHAEL TERRELL, ANTONIO MENESES ORTEGA, and THOMAS JOHN ROBERTS Appeal2014-004878 Application 12/362,804 Technology Center 2600 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JON M. JURGOV AN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 filed this appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-3, 7, 12-24, 26, 31--42, 46--48, and 59. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 3 1 Appellants identify Performance Designed Products, LLC as the real party in interest. App. Br. 1. 2 Claims 4---6, 8-11, 25, 27-30, 43--45, and 49-58 were canceled. 3 Our Decision refers to the Specification filed Jan. 30, 2009 ("Spec."), the Final Office Action mailed Jan. 3, 2013 ("Final Act."), the Appeal Brief filed Sept. 6, 2013 ("App. Br."), the Examiner's Answer mailed Jan. 6, 2014 ("Ans."), and the Reply Brief filed Mar. 6, 2014 ("Reply Br."). Appeal2014-004878 Application 12/362,804 STATEMENT OF THE CASE The claims are directed to a tactile feedback stylus. Spec. i-f 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A game system, comprising: a game console; a stylus, wherein the stylus comprises: an electric motor, a receiver and a control circuit electrically coupled to the electric motor and electrically coupled to the receiver, wherein the control circuit is in communication with the game console through the receiver and controls the electric motor; and a cartridge detachably coupled to the game console, the cartridge comprising: a pulse width modulator configured to generate a signal pulse, and a transmitter electrically coupled to the game console and configured to transmit the signal pulse to the stylus to trigger activation of the electric motor. REJECTIONS RI. Claims 1-3, 7, 12-16, 20-24, 26, and 31-35 stand rejected under 35 U.S.C. Â§ 103(a) based on Rosenberg (US 7,688,310 B2; iss. Mar. 30, 2010), Dawson (US 7 ,348,968 B2; iss. Mar. 25, 2008), and Tajiri et al. (US 6,764,402 B2; iss. July 20, 2004). Final Act. 2-17. R2. Claims 17-19 and 46-48 stand rejected under 35 U.S.C. Â§ 103(a) based on Rosenberg, Dawson, Tajiri, and Ben Ayed (US 2005/0110778 Al; pub. May 26, 2005). Final Act. 17-21. R3. Claims 36-42 and 59 stand rejected under 35 U.S.C. Â§ 103(a) based on Rosenberg, Ben Ayed, and Tajiri. Final Act. 21-27. 2 Appeal2014-004878 Application 12/362,804 ANALYSIS Rejection RI -Independent Claims 1and21 Appellants contend the Examiner erred by finding the combination of Rosenberg, Dawson, and Tajiri teaches a cartridge comprising "a pulse- width modulator configured to generate a signal pulse, and a transmitter electrically coupled to the game console and configured to transmit the signal pulse to the stylus to trigger activation of the electric motor," as recited in independent claims 1and21. App. Br. 8-12; Reply Br. 3-8. The Examiner finds the combination of Rosenberg and Dawson teaches a game system comprising a stylus with an electric motor and a receiver, and a game console with a pulse-width modulator and a transmitter to control the stylus. Final Act. 3--4; Ans. 3-5 (citing Rosenberg col. 5, 11. 46--48 and col. 6, 11. 39--49; Dawson col. 5, 11. 19-24). The Examiner further finds Tajiri teaches a cartridge detachably coupled to a game console, the cartridge including a transmitter for communicating data between two game systems. Final Act. 5; Ans. 5 (citing Tajiri col. 9, 11. 44-- 54). The Examiner states it would have been obvious to combine the cartridge of Tajiri with the system of Rosenberg and Dawson, in order to enable wireless communication of game data between two separate game machines. Final Act. 4--5; Ans. 8-9. The Examiner concludes it would have been obvious to house the pulse width modulator of Rosenberg and Dawson in the cartridge of Tajiri for the benefit of locating the pulse width modulator with the transmitter. Final. Act 5; Ans. 10. Appellants contend Tajiri's game data communication cartridge is merely suitable for data communication among players, but Tajiri does not teach a cartridge for generating or transmitting modulated pulses to trigger 3 Appeal2014-004878 Application 12/362,804 activation of an electric motor in a stylus. App. Br. 9-10; Reply Br. 5-8. Appellants further argue the Examiner has not provided a proper teaching or motivation to move the pulse width modulator or transmitter of the system of Rosenberg and Dawson to the cartridge of Tajiri, and thus the combination is a result of improper hindsight reasoning. App. Br. 11-12; Reply Br. 5-8. We agree with Appellants' contentions that the Examiner erred. "[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has not identified any teachings of a cartridge that is used to control a stylus, nor has the Examiner provided a rational underpinning to support the conclusion that it would have been obvious to move the pulse width modulator and stylus-control transmitter of Rosenberg and Dawson to the game data-transmitting cartridge of Tajiri. Thus, we find the rejection lacks the reasoning and underpinning required for us to sustain the Examiner. Accordingly, we do not sustain the Examiner's rejection of independent claims 1 and 21, or claims 2, 3, 7, 12-16, 20, 22-24, 26, and 31-35 that depend therefrom. Re} ection R2 Claims 17-19 and 46-48 depend from claims 1 and 3 6, accordingly we do not sustain their rejection for the reasons discussed above. 4 Appeal2014-004878 Application 12/362,804 Rejection R3 -Independent Claim 36 Independent claim 3 6 recited features similar to those required by claim 1 (App. Br. 13-17). We therefore do not sustain Examiner's rejection of claims 36-42 and 59 for the reasons stated with respect to claim 1. DECISION The rejection of claims 1-3, 7, 12-16, 20-24, 26, and 31-35 under 35 U.S.C. Â§ 103(a), based on Rosenberg, Dawson, and Tajiri, is reversed. The rejection of claims 17-19 and 46-48 under 35 U.S.C. Â§ 103(a), based on Rosenberg, Dawson, Tajiri, and Ben Ayed, is reversed. The rejection of claims 36-42 and 59 under 35 U.S.C. Â§ 103(a), based on Rosenberg, Ben Ayed, and Tajiri, is reversed. REVERSED 5