IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Aaron B. Sternberg
`In re Patent of:
`U.S. Patent No.: 8,894,066
`Issue Date:
`November 25, 2014
`Appl. Serial No.: 14/155,013
`Filing Date:
`January 14, 2014
`Title:
`METHOD OF FACILITATING USER PREFERENCE IN
`CREATIVE DESIGN OF A CONTROLLER
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 8,894,066 PURSUANT
`TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`1
`
`

`
`
`
`TABLE OF CONTENTS
`
`
`I.  Mandatory Notices Under 37 C.F.R. § 42.8(a)(1) ............................................ 4 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................... 4 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 4 
`C.  Designation of Counsel Under 37 C.F.R. § 42.8(b)(3) ................................. 4 
`D. 
`Service Information Under 37 C.F.R. § 42.8(b)(4) ...................................... 5 
`II.  Payment of Fees – 37 C.F.R. § 42.103 .............................................................. 5 
`III.  Requirements for IPR under 37 C.F.R. § 42.104 ............................................... 5 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................... 5 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested .................... 5 
`IV.  Summary of the ’066 Patent ............................................................................... 7 
`A.  Overview ....................................................................................................... 7 
`B.  Prosecution History of the ’066 Patent ........................................................ 7 
`V.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .................................... 10 
`VI.  Grounds for Rejection ...................................................................................... 13 
`A.  Rejections based on Building Robots as primary reference ....................... 13 
`1. 
`Ground 1 – Building Robots anticipates claims 1-6 and 8 .................... 13 
`2. 
`Ground 2 – Building Robots renders obvious claims 1-8 ..................... 21 
`B.  Rejections Based on Philo as primary reference ........................................ 24 
`1. 
`Ground 3 – Philo anticipates claims 1-6 and 8 ..................................... 24 
`2. 
`Ground 4 – Philo in combination with Building Robots renders obvious
`claims 1-8 ......................................................................................................... 30 
`3. 
`Ground 5 – Philo in combination with Building Robots and Gasperi’s
`Mindstorms Sensor Input Page renders obvious claims 2-4 ........................... 31 
`C.  Rejections Based on Shackelford as primary reference ............................. 33 
`1. 
`Ground 6 – Philo anticipates claims 1-4, 6 and 8 ................................. 33 
`D.  Rejections Based on Anderson as primary reference ................................. 39 
`1. 
`Ground 7 – Anderson anticipates claims 1-4, 6 and 8 .......................... 39 
`2. 
`Ground 8 – Anderson in combination with Xbox Forums renders
`obvious claim 8 ................................................................................................ 45 
`
`
`
`VII.  Conclusion ....................................................................................................... 45 
`
`2
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`

`
`
`
`A1
`
`A2
`
`
`B1
`
`
`B2
`
`B3
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`
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`B4
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`B5
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`B6
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`
`
`EXHIBITS
`
`U.S. Patent No. 8,894,066 to Aaron B. Sternberg et al. (“’066 patent”)
`
`File History of ’066 patent
`
`Building Robots with Lego ® MindstormsTM: The ULTIMATE Tool for
`Mindstorms Maniacs!, by Mario Ferrari, Giulio Ferrari, and Ralph
`Hempel, published 2002
`
`Philo’s Home Page, www.philohome.com
`
`Gasperi’s Mindstorms RCX Sensor Input Page,
`www.plazaearth.com/usr/gasperi/lego.htm
`
`U.S. Patent No. 6,443,796 to Shackelford
`
`U.S. Patent Publication No. 2002/0196250 to Anderson et al.
`
`Xbox Forums web page from 2005
`
`3
`
`

`
`Rubicon Communications, LP (“Petitioner”) petitions for Inter Partes
`
`Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-8 of
`
`U.S. Patent No. 8,894,066 (the “’066 patent”), entitled “Method of Facilitating
`
`Preference in Creative Design of a Controller,” which is assigned to Lego Systems
`
`A/S (“Patent Owner”). As discussed in further detail below, there is a reasonable
`
`likelihood that Petitioners will prevail with respect to at least one claim challenged
`
`herein.
`
`I. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Petitioner, Rubicon Communications, LP, and Smallworks, LLC are the real
`
`parties-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner filed an action against Petitioner, alleging infringement of the
`
`’066 patent. Lego Systems A/S v. Rubicon Communications, LP dba Smallworks
`
`and Smallworks, LLC, Case No. 3:15-cv-00823 (VLB) (D. Connecticut), filed June
`
`10, 2015) (“the Litigation”).
`
`C. Designation of Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel
`Eric B. Meyertons, Reg. No. 34,876
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`
`Backup Counsel
`Chris D. Thompson, Reg. No. 43,188
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`
`4
`
`

`
`(512) 853-8888
`emeyertons@intprop.com
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`(512) 853-8877
`cthompson@intprop.com
`
`Please address all correspondence and service to counsel at the address
`
`provided above.
`
`II.
`
`Payment of Fees – 37 C.F.R. § 42.103
`
`The Petitioners authorize the Patent and Trademark Office to charge the fee
`
`set out in 37 C.F.R. § 42.15(a) for this Petition and any additional fees that may be
`
`required, or credit any overpayment, to Deposit Account No. 501505/5805-
`
`04211/EBM.
`
`III. Requirements for IPR under 37 C.F.R. § 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’066 patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR on the grounds identified
`
`herein.
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Petitioner requests IPR of claims 1-8 of the ’066 patent on the grounds set
`
`forth in the table below and requests that each of these claims be found
`
`unpatentable.
`
`Ground
`
`’066 Patent Claims
`
`Basis for Rejection
`
`5
`
`

`
`Ground 1 1-6, 8
`
`Anticipated under § 102(b) by “Building
`
`Robots with Lego Mindstorms” by Mario
`
`Ferrari et al. (“Building Robots”), front and
`
`back covers, Table of Contents, Preface,
`
`Foreword, Chapters 4, 6, 9, 13, 16, 17, 18
`
`and Appendix A (Exhibit B1)
`
`Ground 2 1-8
`
`Obvious under § 103(a) in view of Building
`
`Robots, portions cited in Ground 1 and
`
`Chapter 26.
`
`Ground 3 1-6, 8
`
`Anticipated under § 102(b) by “Philo’s
`
`Home Page” website (“Philo”) (Exhibit B2)
`
`Ground 4 1-8
`
`Obvious under § 103(a) in view of Philo in
`
`combination with Building Robots
`
`Ground 5 2-4
`
`Obvious under § 103(a) in view of Philo in
`
`combination with Building Robots and
`
`Gasperi’s Mindstorms Sensor Input Page
`
`(Exhibit B3)
`
`Ground 6 1-4, 6, and 8
`
`Anticipated under § 102(b) by U.S. Patent
`
`No. 6,443,796 to Shackelford (Exhibit B4)
`
`Ground 7 1-4, 6, and 8
`
`Anticipated under § 102(b) by U.S. Patent
`
`6
`
`

`
`Publication No. 2002/0196250 to Anderson
`
`et al. (Exhibit B5)
`
`Ground 8 8
`
`Obvious under § 103(a)
`
`in view of
`
`Anderson in combination with Xbox Forums
`
`(Exhibit B6)
`
`
`
`Further explanation of why these claims are unpatentable under the statutory
`
`grounds identified above is provided below in section VI, identifying where each
`
`element is found in the cited prior art, and the relevance of that prior art. Section V
`
`below sets out how each challenged claim is to be construed.
`
`IV. Summary of the ’066 Patent
`
`A. Overview
`
`A. Description of the Alleged Invention of the ‘066 Patent
`
`The alleged invention of the ‘066 patent relates to a method of facilitating
`
`user preference in creative design of a controller for manipulating images or
`
`symbols on a display. The controller having a housing with an exterior surface and
`
`an interior region confining electrical components for producing signals for
`
`manipulating image or symbols on the display. Ex. A1, 2:66 – 3:17. The method
`
`includes providing a main casing configured to conformably fit around a portion of
`
`the exterior surface of and thereby receive the housing of the controller. Ex. A1,
`
`7
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`

`
`2:66 – 3:17. The main casing having a patterned surface portion configured to
`
`support a set of building elements that are configurable for mating to the patterned
`
`surface portion. Ex. A1, 2:66 – 3:34. The patterned surface includes a surface
`
`pattern in the form of an array of mutually spaced-apart cylindrical mating features
`
`or recesses. Ex. A1, 3:35 – 45. The building elements include left and right hand
`
`grips. Ex. A1, 3:17 – 34.
`
`The method further includes providing in the set of building elements a
`
`subset of building elements that are matable to one another. The subset of building
`
`elements are configured for a user to build on the patterned surface portion of the
`
`main casing a customized replica of at least a portion of a play item. Ex. A1, 3:46
`
`– 4:5. Building a customized replica of a portion of a play item purportedly
`
`transforms the exterior surface of the housing of the controller to a customized
`
`shape and appearance in accordance with the user's preference. Ex. A1, 4:51 – 5:3.
`
`B.
`
`Summary of the Prosecution History of the ‘066 Patent
`
`Sternberg filed U.S. Patent Appl. No. 14/155,013 (“the ‘013 application”) on
`
`January 14, 2014. Ex. A1. The ‘013 application is a continuation of Patent Appl.
`
`No. 13/347,414 filed on January 10, 2012, which issued as Patent No. 8,628,085
`
`(“the ‘085 patent”). The ‘085 patent is a continuation of Patent Appl. No.
`
`12/795,540, filed June 7, 2010, which issued as Patent No. 8,091,892 (“the ‘892
`
`patent”). The ‘892 patent is a continuation of Patent Appl. No. 12/278,102, filed
`
`8
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`

`
`August 1, 2008, which issued as Patent No. 7,731,191 (“the ‘191 patent”). The
`
`‘191 patent is a 371 of PCT/US07/03462 (“the ‘462 application), filed February 9,
`
`2007. The ‘462 application claims benefit of U.S. Provisional Patent Appl. No.
`
`60/772,343, filed February 10, 2006. Ex. A1. The ‘013 application issued as the
`
`‘066 patent on November 25, 2014. Ex. A1. The ‘066 patent names Aaron B.
`
`Sternberg as the purported inventor, and names IPPASA, LLC as the purported
`
`assignee. Ex. A1. The ‘066 patent was assigned by IPPASA, LLC to LEGO
`
`SYSTEMS A/S on December 6, 2014. The ‘066 patent was assigned by LEGO
`
`SYSTEMS A/S to LEGO A/S on September 21, 2015.
`
`All of the claims (claims 1-6) were rejected in a first non-final office action
`
`(“the first action”) issued on March 25, 2014. Ex. A2 at 93. Claims 1-6 were
`
`rejected for nonstatutory double patenting as being unpatentable over claims 1-8 of
`
`Patent No. 7,731,191, claims 1-6 of Patent No. 8,091,892, and claims 1-6 of Patent
`
`No. 8,628,085. Ex. A2 at 96. The nonstatutory double patenting rejections of
`
`claims 1-6 were overcome by the patentee filing an electronic terminal disclaimer
`
`on August 13, 2014. Ex. A2 at 101-104.
`
`Additionally claims 1-6 were rejected under 35 U.S.C. 101 as being held to
`
`claim an abstract idea. The first action stated that the rational for this rejection was
`
`that the method claims are directed to a set of instructions and do not provide a
`
`sufficient recitation of a machine or transformation because the claims are only
`
`9
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`

`
`mere statements of a general concept. Ex. A2 at 94. The patentee responded to the
`
`first action by filing an Amendment/Request for Reconsideration After Non-Final
`
`Rejection (“the amendment”) on September 24, 2014. Ex. A2 at 108-116. The
`
`patentee responded to the 101 rejection by amending claim 1 to recite at least in
`
`part “providing in the set of building elements a subset of building elements that
`
`are matable to one another and configured for a user to build on the patterned
`
`surface portion of the main casing a customized replica of at least a portion of a
`
`play item and thereby transform the exterior surface of the housing of the
`
`controller to a customized shape and appearance in accordance with the user's
`
`preference.” In the amendment the patentee referenced a telephonic interview with
`
`Examiner Chiu conducted on August 26, 2014, in which the patentee purported to
`
`have discussed the amendment to claim 1. The patentee stated in the amendment
`
`that Examiner Chiu purportedly indicated the phrases “to build on” and “and [to]
`
`thereby transform” added to claim 1 recite activity that implements the process
`
`and, therefore, overcome the Section 101 rejection. Ex. A2 at 115.
`
`The claims were allowed in a second action (“the second action”) issued on
`
`October 3, 2014. Ex. A2 at 126-129.
`
`V. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`In inter partes review, “A claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`10
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`

`
`it appears.” 37 C.F.R. § 42.100(b). There is no suggestion that the “broadest
`
`reasonable construction” differs from the “broadest reasonable interpretation”
`
`(BRI) standard discussed in case law and the MPEP. Under this approach, the
`
`USPTO (or its reviewing court) “look[s] to the specification to see if it provides a
`
`definition for claim terms, but otherwise appl[ies] a broad interpretation.” In re
`
`Icon Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The BRI
`
`standard is broader than the standard applied during litigation, because the USPTO
`
`is not obliged to construe claims in order to preserve their validity. In re Am.
`
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Accordingly, when
`
`construed under BRI, a claim should encompass at least the same subject matter as
`
`when construed by a court, but may also encompass additional subject matter.
`
`In proceedings before the USPTO, it is possible for a patentee to overcome
`
`the default BRI standard for a given claim term, but this requires that the patentee
`
`define
`
`the
`
`term using “expressions of manifest exclusion or restriction,
`
`representing a clear disavowal of claim scope.” In re Am. Acad. of Sci. Tech Ctr.,
`
`367 F.3d at 1365. “Absent claim language carrying a narrow meaning, the PTO
`
`should only limit the claim based on the specification or prosecution history when
`
`those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d
`
`1320, 1325 (Fed. Cir. 2004). Accordingly, under BRI, a claim should be construed
`
`to encompass at least what is suggested by the intrinsic record of a patent, but
`
`11
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`

`
`should be limited by the intrinsic record only in the presence of “express
`
`disclaim[er]” representing “clear disavowal” of a broader interpretation.
`
`With regard to the following claim terms, Petitioner has been deliberately
`
`conservative in proposing constructions under the BRI standard. Accordingly,
`
`Petitioner submits that these claims should be construed at least broadly enough to
`
`encompass these proposed constructions. The fact that Petitioner has proposed
`
`these constructions does not mean that Petitioner is conceding that no broader
`
`construction of these terms is possible under the BRI standard.
`
`i.
`
` “building elements”: For purposes of this Petition only, this term
`
`should be construed to include any component or objects that are configured for
`
`mating to a patterned surface portion and to one another. This construction is
`
`consistent with the term’s usage in the intrinsic record of the ’066 patent. See, e.g.,
`
`A1, Figs. 1-9; 1:20-65; 3:36-4:60, and 5:29-6:35.
`
`ii.
`
` “set of building elements”: For purposes of this Petition only, this
`
`term should be construed to include a set of building elements which may include a
`
`subset of building elements. This construction is consistent with the term’s usage
`
`in the intrinsic record of the ’066 patent. See, e.g., A1, Figs. 1-9; 1:20-65; 3:36-
`
`4:60, and 5:29-6:35.
`
`iii.
`
` “subset of building elements”: For purposes of this Petition only,
`
`this term should be construed to include a group of building elements which do not
`
`12
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`

`
`have the same functionality as other building elements in the set. This
`
`construction is consistent with the term’s usage in the intrinsic record of the ’066
`
`patent.
`
`Petitioner does not seek to have any of terms of the ‘066 Patent claims
`
`construed as means-plus-function or step-plus-function clauses.
`
`
`
`VI. Grounds for Rejection
`
`A.
`
`1.
`
`Rejections based on Building Robots as primary reference
`
`Ground 1 – Building Robots anticipates claims 1-6 and 8
`
`The following claim chart shows that Building Robots teaches each and
`
`every limitation of claims 1-4, 6 and 8 of the ’066 patent, rendering those claims
`
`unpatentable under 35 U.S.C. § 102(b). Building Robots was not before the
`
`Examiner during prosecution of the ’066 patent and, as such, did not form the basis
`
`of any ground of rejection, and is not mentioned in the prosecution history of the
`
`’066 patent.
`
`Building Robots is book that teaches about building robots with Lego®
`
`MindstormsTM Robotics Invention System (“RIS”). Building Robots bears a
`
`copyright date of 2002. The Robotics Invention System enables builders to build
`
`creations that include the RCX “brick” control device combined with Lego play
`
`bricks and a multitude of other Lego elements to make robots and other items. See
`
`13
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`

`
`Building Robots, front and back covers, page xxv. The RCX “brick” includes a
`
`processor, batteries, and other electric components houses in with a two-part
`
`plastic housing (a yellow top shell portion and gray bottom shell portion), and an
`
`electronic display and control buttons on the front. See Building Robots, pp. 98-
`
`99; p. 393, Figure 20.1, p. 79, Figure 4.15:
`
`
`
`
`
`
`
`
`
`A portion of the front of housing of the RCX brick has an array of Lego
`
`studs. A portion of the rear of the housing of the RCX brick has a surface that
`
`couples with the studded surfaces found on numerous types of Lego parts. By
`
`way either or both of these front and rear surfaces, the RCX brick can be installed
`
`in, or coupled with, various assemblies and constructions of other Lego elements.
`
`See, for example, Building Robots, Figure 18.2:
`
`Claim Language
`Claim 1
`[1 preamble] A
`method of
`facilitating user
`preference in
`creative design of a
`
`Discussion
`Building Robots discloses facilitating user preference in
`creative design of Lego constructions with the RCX brick.
`See Building Robots, back cover: “This book unleashes the
`full power and potential of the tools, bricks, and components
`that make up LEGO Mindstorms.”. B1, p. 361, Figure 18.12:
`
`
`14
`
`

`
`controller for
`manipulating
`images or symbols
`on a display, the
`controller having a
`housing with an
`exterior surface and
`an interior region
`confining electrical
`components for
`producing signals
`for manipulating
`image or symbols
`on the display,
`comprising:
`
`
`
`
`
`
`
`The RCX brick is a controller with a display, See id., p. 79,
`Figure 4.15:
`
`
`
`
`
`Building Robots states: “The RCX is a computer… Its only
`gates to the external world are a small display, three input
`ports, three output ports, four push-buttons, and an infrared
`(IR) serial communication interface… the processor, an
`Hitachi H8300, which executes
`the machine code
`instructions. The processor cooperates with additional
`components that convert signals from the ports into digital
`data, using chips that provide memory for data and program
`storage.” Id. at pp. 98-99. The RCX brick includes a two-
`part housing (yellow top shell, gray bottom shell) that has an
`exterior surface and an interior region confining electrical
`components that produce signals for manipulating images or
`symbols on the display. Id. at p. 393, Figure 20.1:
`
`
`15
`
`

`
`[1a] providing a
`main casing
`configured to
`conformably fit
`around a portion of
`the exterior surface
`of and thereby
`receive the housing
`of the controller,
`the main casing
`having a patterned
`surface portion
`configured to
`support a set of
`building elements
`that are
`configurable for
`mating to the
`patterned surface
`portion; and
`
`
`
`
`
`“What I could not know at that time is that 30 years later I
`would hold in the palm of my hand a microcontroller with
`more raw speed and memory than the one the astronauts used
`to get to the moon and back. That computer would be
`encased in yellow ABS plastic and would change the world
`of hobby and educational robotics.” Id. at pp. xxv, lines 5-9.
`main casing. Building Robots discloses a main casing that
`conformably fits around a portion of the exterior surface of
`the housing. See, for example, Building Robots, p. 351,
`Figure 18.1 (R2-D2-type robot with RCX brick installed),
`and p. 352, Figure 18.2 (the R2-D2-type robot with RCX
`brick removed from casing).
`
`
`
`
`
`See also Figures 17.8 (turtle robot with RCX brick installed)
`and 17.13 (the turtle robot with RCX brick removed from
`casing).
`
`
`16
`
`

`
`
`
`
`
`
`
`patterned surface portion. The main casing has Lego
`elements with a patterned surface portion that supports a set
`of building elements that mate to the patterned surface
`portion. See, for example, id., Figure 18.1 and 17.8 (above),
`in which Lego elements are stacked on Lego elements
`forming the portion of the casing that receives the RCX
`brick.
`
`Building Robots discloses a subset of building elements that
`are matable to one another for a user to build on a patterned
`surface of the main casing a customized replica of a play
`item (e.g., robot, drum set). See Building Robots, Figures
`18.1, 17.8, 18.12, and 21.1
`
`
`
`
`
`
`
`
`
`17
`
`[1b] providing in
`the set of building
`elements a subset
`of building
`elements that are
`matable to one
`another and
`configured for a
`user to build on the
`patterned surface
`portion of the main
`casing a
`customized replica
`of at least a portion
`of a play item and
`thereby transform
`the exterior surface
`of the housing of
`the controller to a
`customized shape
`and appearance in
`accordance with
`
`

`
`the user's
`preference.
`
`Claim 2
`The method of
`claim 1, further
`comprising control
`actuators
`operatively
`connected to the
`electrical
`components, the
`control actuators
`including a type of
`actuator that
`responds to user
`movement of the
`controller to
`produce the signals
`for manipulating
`the images or
`symbols.
`Claim 3
`The method of
`claim 2, in which
`the type of actuator
`is a motion sensor.
`Claim 4
`The method of
`claim 1, further
`comprising control
`
`
`Building Robots discloses control actuators in the form of
`rotation sensors. Building Robots further discloses that the
`rotation sensors are operatively connected to the electrical
`components of the RCX brick. The rotation sensors respond
`to user movement of the controller. The output of the
`rotation sensors produces signals that affect the images or
`symbols on the display. See Id., p. 71. “The rotation sensor
`returns four possible values that correspond to four states,
`let's call them A, B, C, and D. For every complete turn, it
`passes through the four states four times-that's why we get 16
`counts per turn. Turning the sensor clockwise, it will read the
`sequence ABCDA..., while turning it counterclockwise will
`result in the sequence ADCBA.... The RCX polls the sensor
`frequently, and when it detects that the state has changed, it
`can not only deduce that the sensor has turned, but also tell in
`which direction it has turned.”
`
`
`Building Robots discloses an actuator that is a type of motion
`sensor (see discussion of rotation sensor above with respect
`to claim 2.)
`
`that are
`Building Robots discloses “touch sensors”
`operatively connected to electrical components of the RCX
`brick. The touch sensors are control actuators of a type
`that responds to tactile manipulation of the controller to
`
`18
`
`

`
`actuators
`operatively
`connected to the
`electrical
`components, the
`control actuators
`including a type of
`actuator that
`responds to user
`tactile manipulation
`of the controller to
`produce the signals
`for manipulating
`the images or
`symbols.
`Claim 5
`The method of
`claim 1, further
`comprising a hand
`grip section having
`a patterned surface
`portion configured
`for operative
`connection to the
`main casing to
`provide a gripping
`portion on which
`the user can grasp
`during play
`activity.
`Claim 6
`The method of
`claim 1, in which
`the set of building
`elements
`constitutes a first
`set of building
`elements, and
`further comprising
`providing a second
`
`produce signals that affect the images or symbols on the
`display. See id., p. 58. “The touch sensor (Figure 4.1) is
`probably the simplest and most intuitive member of the
`LEGO sensor family. It works more or less like the push
`button portion of your doorbell: when you press it, a circuit is
`completed and electricity flows through it. The RCX is able
`to detect this flow, and your program can read the state of the
`touch sensor, on or off”. The touch sensors respond to tactile
`manipulation of the controller. The output of the touch
`sensors produces signals that affect the images or symbols on
`the display. Building Robots also discloses a touch sensor in
`the R2-D2 robot shown in Figure 18.1: “A touch sensor
`detects the central position of the head through the tip of the
`cam…” Id., p. 18:7-8.
`
`Building Robots discloses robots and other constructions
`with a section having a patterned surface portion connected
`to its main casing and which the user can grasp during play
`activity, such as, for example, the shoulder of the R2-D2
`robot shown in Figure 18.1, the shoulder of the robot shown
`in Figure 18.12, or the tail of the turtle shown in 17.8.
`
`Building Robots discloses a set of building elements in the
`form of multiple components having matable and non-
`matable surfaces. The multiple components contribute to
`the building on the patterned surface portion of the main
`casing a customized replica of a portion of a play item. See,
`for example, Figure 18.1 (robot rings have matable and non-
`matable surfaces) and 21.1 (drum set elements has matable
`and non-matable surfaces)
`
`19
`
`

`
`
`
`
`
`
`
`
`
`Building Robots discloses a building element in the form of a
`play item having a surface that is not matable to the patterned
`surface portion. See discussion relative to claim 6.
`
`20
`
`set of building
`elements in the
`form of multiple
`components having
`matable and
`nonmatable
`surfaces, the
`matable surfaces
`configured to mate
`with building
`elements in the
`subset and the
`nonmatable
`surfaces configured
`to not mate with
`the patterned
`surface portion of
`the main casing or
`the first set of
`building elements,
`the multiple
`components of the
`second set of
`building elements
`contributing to the
`building on the
`patterned surface
`portion of the main
`casing a
`customized replica
`of at least a portion
`of a play item
`configured for use
`in play activity.
`Claim 8
`The method of
`claim 1, in which
`the set of building
`elements includes a
`building element in
`
`

`
`the form of a play
`item having a
`surface that is not
`matable to the
`patterned surface
`portion.
`
`
`2.
`
`
`
`Ground 2 – Building Robots renders obvious claims 1-8
`
`As to claims 1-6 and 8, Petitioner submits that Building Robots discloses
`
`every limitation of these claims for the reasons set forth in Ground 1 above.
`
`Petitioner further submits that Building Robots discloses these features within one
`
`or more particular anticipating embodiments. This ground of rejection is being
`
`introduced to foreclose a potential argument that Building Robots does not disclose
`
`all of the features “arranged or combined in the same way as in the claim[s].” Net
`
`MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008).
`
`Accordingly, even supposing, for the sake of argument, that Building Robots failed
`
`to explicitly disclose that these features were combined within a single anticipating
`
`embodiment, the collective teachings of Building Robots nevertheless would be
`
`readily combinable by one of ordinary skill to yield the claimed subject matter,
`
`thus rending these claims unpatentable as obvious under 35 U.S.C. § 103. This is
`
`especially so given that a theme of Building Robots is the use of various teachings
`
`of book to make new creations rather than simply copy specific examples
`
`described in the book. For example, in its preface, Building Robots states: “ .”
`
`21
`
`

`
`Building Robots, p. xxxi, lines 17-33. Also, Building Robots has an entire
`
`Appendix that lists books, websites, and other resources for Mindstorms inventors,
`
`with accompanying summaries of what information is in each reference. Building
`
`Robots, Appendix A.
`
`Claim 7 is directed to: “The method of claim 1, in which the controller
`
`comprises a cellular telephone and a control section, the cellular telephone being
`
`operationally responsive to user-entered commands that are delivered to the control
`
`section.” Building Robots discloses a control section of a controller (see Building
`
`Robots, p. 99:3-100:2). Building Robots also discloses a communication link
`
`between the RCX brick and a personal computer (via infrared), by which
`
`information is passed. See Building Robots, p. 99:1-2; 100:17-19. Although
`
`Building Robots does not expressly disclose a cellular phone operationally
`
`responsive to user-entered commands that are delivered to the control section, it
`
`would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to provide a communication link between the control section of the RCX
`
`and a cellular telephone to allow users to interact with the RCX by a more portable
`
`device than a personal computer. Petitioner notes that Building Robots has, for
`
`example, an entire section (three chapters) devoted
`
`to participation
`
`in
`
`MINDSTORMS robotic contests and challenges, many of which involve meeting
`
`competitors at a competition site. See Building Robots, pp.514-516. In such
`
`22
`
`

`
`settings, small, portable devices to interact with the RCX brick would clearly be
`
`desirable.
`
`B.
`
`1.
`
`Rejections based on the Philo website as primary reference
`
`Ground 3 – Philo anticipates claims 1-6 and 8
`
`The following claim chart shows that the Philo’s Home Page web site at
`
`www.philohome.com (“Philo”) teaches each and every limitation of claims 1-6 and
`
`8 of the ’066 patent, rendering those claims unpatentable under 35 U.S.C. § 102(b).
`
`Philo was not before the Examiner during prosecution of the ’066 patent and, as
`
`such, did not form the basis of any ground of rejection, and is not otherwise
`
`mentioned in the prosecution history of the ’066 patent.
`
`Philo is an Internet home page and group of sub-pages available at
`
`www.philo.home more than one year prior to the earliest priority date of the ‘066
`
`Patent. For purposes of this petition, the portions of the website are provided from
`
`the web page as of December 4, 2004. As with the Building Robots reference,
`
`Philo teaches about building robots with Lego[R] Mindstorms[TM] Robotics
`
`Invention System, with numerous constructions based on the RCX “brick” control
`
`device combined with Lego play bricks and other Lego elements. One sub-page
`
`accessible from the Philo home page, identified as “Lego Mindstorms & Lego
`
`Technic” (“Mindstorms/Technic page”), appears next to an image of the RCX
`
`brick. Clicking on the hyperlink for this sub-page took the user to a page with
`
`23
`
`

`
`numerous constructions including the RCX brick, including a “Simon” memory
`
`game replica, cars, a see-saw, and robots.
`
`Claim Language
`Claim 1
`[1 preamble] A
`method of
`facilitating user
`preference in
`creative design of a
`controller for
`manipulating
`images or symbols
`on a display, the
`controller having a
`housing with an
`exterior surface and
`an interior region
`confining electrical
`components for
`producing sig