COMMISSIONER'S DECISION
REISSUE, OBVIOUSNESS: TELEVISION GAME
Reissue is sought for the original patent for TV games. A pertinent reference
(Spiegel) came to light during world wide licence negotiations. Amended claims
emphasizing the detecting and coincidence feature were submitted after the
Hearing. Final Action: Amended claims accepted.
********
This decision deals with a request for review by the Commissioner of Patents of
the Examiner's Final Action dated May 2, 1980 on Reissue Application 286,872
entitled: TELEVISION GAMING APPARATUS AND METHOD. The applicant, Sanders
Associates, Inc., of the United States, was represented by Canadian Patent
Agents, Mr. Alex Macklin Q.C., and M. Szczepaniak. Also present were Messrs
Ralph H. Baer the inventor, Richard Seligman and James Williams United States
Patent attorneys, and Peter L. Mothersole, who spoke as an expert witness.
The present invention is shown by fig. 1 reproduced below. It is concerned with
the use of standard monochrome and color television receivers for generation,
manipulation, and display of symbols or geometric figures 20 1 and 20 2 for the
purpose of playing games by one or move participants. This is accomplished by
an electronic control unit 14 which generates a modulated carrier frequency
tuned to one of the channels of the receiver and is connected to the control
unit via its antenna terminals. The control unit normally contains a number of
control knobs 16, 17 which control the nature of the display permitting a
variety of games to be played. In addition, patterned overlay masks may be
removably attached to the television screen to assist in determining the nature
of the game to be played. The invention also contemplates interaction with
commercial TV, CATV, or closed circuit TV which would provide background and
other pictorial information on the screen. In this latter case the control unit
and antenna would be simultaneously connected to the receiver terminals. The
broadest aspect of the invention is the conversion of a home television receiver
from a passive to an active instrument via an electronic device which may be
purchased as a widely distributed, low cast, consumer product.
(see formula I)
Ia the Final Action the Examiner refused a large number of the claims as being
anticipated or obvious in view of the following references:
...
Canadian Patent
691,432 July 28, 1964 Cl. 350-48 Spiegel
(United States 3,135,815; June 2, 1964 corresponds)
Publications
(1) Electronic and Radio Engineering; Fourth Edition; McGraw-Hill -
1955 - page 659 - Terman
(2) Electronics and Nucleonics Dictionary; Third Edition; McGraw-Hill
- 1966 - Paged 357, 358 - Markus
Additional Reference of Interest
United States Patent
2,455,992 Dec. 14, 1948 C1. 315-26 Goldsmith Jr. et al
...
The Examiner applied that art in the following terms:
...
The Spiegel patent discloses a generating apparatus to be
used in combination with a conventional television receiver
to generate dots representing a target and a missile upon
the screen (or cathode ray tube) of the television
receiver. The examiner considers the Spiegel apparatus may
be termed a television game.
Terman is cited to show that coincidence circuits are well
known.
Markus is cited to show that light guns and pens are well
known.
Goldsmith Jr, et al has been cited to show that a
cathode-ray tube amusement device (or television game for
amusement or diversion) was disclosed and known some thirty
years ago. Admittedly, it did not use a standard or
conventional television receiver but rather a specialized
television receiver for playing games.
The rejection of claims 1 to 13, 24 to 31, 40, 41, 43 and 47
to 72 for failing to patentably define over the above cited
Spiegel patent is maintained.
Claims 1 to 12, 24, 26 to 31, 40, 41 43 and 47 to 72 are
obvious in view of Spiegel. That is, these claims may
contain one or more features not found in Spiegel but these
features are considered obvious to a person skilled in the
electronics art and particularly the television art.
Claims 13 and 25 are anticipated by Spiegel.
New claims 73 to 87 are rejected as obvious in view of
Spiegel.
The Examiner also objected to claims 1 to 3, 40, and 47 to 87 under Rule 25
respecting "selective coupling means" as not being fully supported by the
disclosure. He made this objection (in part) as follows:
...
The examiner maintains that the output of the Spiegel
apparatus would be connected, either directly or through
some kind of switching device, to the antenna terminals of
the conventional television receiver. Very little hindsight
is required to make this assumption.
Furthermore, quite apart from the Spiegel patent, there is
absolutely no inventive ingenuity involved in providing a
selective coupling from either the control unit of the T.V.
game or a standard T.V. signal source to the antenna
terminals of the standard television receiver. Applicant
even contemplates that this "selective coupling" feature
includes within its scope the manual disconnection of the
antenna lead from the television receiver antenna terminals
and connection of the lead from the output of the control
unit of the T.V. game to the television receiver antenna
terminals for operation in the "T. V. game" mode and vice
versa for operation in the standard television reception
mode. One cannot help but ask the question: "what could be
more obvious?". It is hard to imagine that any purchaser of
a television game would not know that for T.V. game
operation he would have to connect the output lead of the
T.V. game control unit to the antenna terminals of his
television receiver and for normal television reception he
would have to connect the lead from his T.V, antenna (or
other source of standard T.V. signal) to the antenna
terminals of his television receiver.
...
The applicant argues in his letter date May 17, 1979 that
the simplest form of providing this selective coupling is to
connect either from the control unit for playing of games or
from an antenna for the viewing of broadcast programs. The
examiner disagrees that this provides proper support for
this "selectively coupling" limitation. Since all rejected
claims are apparatus claims under consideration, applicant
must disclose a particular piece of apparatus to provide
this selective coupling, which he has not done.
The only piece of apparatus for this "selectively coupling"
limitation that applicant has disclosed is the output lead
of the control unit of his T.V. game. It must be remembered
that the lead from a user's T.V, antenna is already owned by
the user.
Merely mentioning in the disclosure that a person who has
purchased one of these T.V. games can watch standard
broadcast programs on his television receiver in addition to
being able to play games on his television receiver does not
provide proper and sufficient support for this "selectively
coupling" limitation defined in the rejected claims.
...
The Examiner also rejected new claims 73 to 87 under Rule 81 in the following
terms:
...
First, these claims are refused in that the petition for
reissue fails to mention anything regarding these new claims
73 to 87 as required by Rule 81 of the Patent Rules. Rule
81 states "Every petition for the reissue of a patent shall
set out fully in what respect the petitioner considers the
patent defective or inoperative, how the error arose so far
as can be ascertained and the time when the manner in which
the petitioner obtained knowledge of any new fact stated in
the revised disclosure or in the light of which any new
claims of which allowance is asked have been framed."
(Emphasis Added) Furthermore, the petition cannot be amended
to overcome this objection.
...
In a response dated October 28, 1980, applicant submitted numerous amendments to
the claims. These will be considered together with the other claims of record.
Applicant also submitted a brief and argued (in part) as follows:
In essence, the Examiner's position is that the rejected
claims in the application are either obvious or anticipated
by Canadian patent 691,432 July 28, 1964 to Spiegel. Other
references such as Electronic and Radio Engineering forth
edition McGraw Hill 1955 and Electronics and Nucleonic
Dictionary third edition McGraw Hill 1966 were applied as
was a reference of interest U.S. 2,455,992 to Goldsmith Jr.
but the principal reference in this case is the reference to
Spiegel.
The invention in this case relates to a television game or
in other words to an apparatus whereby active home
entertainment capability may be added to a home television
receiver which was previously employed only for passive
viewing of programs. Prior to this invention, there was no
such thing as a television game. What the present invention
has taught to the world is the fact that signals can be
generated in a person's home by connecting a box to his
television receiver so that he can generate "dots" on the
screen of his television receiver to play amusement games.
The world did not know of any such thing (T. V. home games)
and the invention disclosed in this application is the first
disclosure of the use of a home television receiver to play
amusement games thereon.
...
The claims therefore now particularly recite that the type
of games to be played are amusement games and that the
control unit provides active home entertainment capability.
It is clear and we submit the Spiegel never contemplated nor
would one skilled in the art reading the Spiegel patent
obtain from it the concept of playing games at home on a
television receiver for one's amusement. Spiegel's device
as disclosed is merely a training device and a television
receiver was used merely as a convenient display.
The Examiner has gone to great lengths in the final
rejection to point out that the term "games" has a broad
meaning and that which Spiegel discloses for training falls
within many dictionary definitions of the word "games". In
the second paragraph of page 8 of the action, the Examiner
points out that one of the meanings for games is listed as
"a competitive activity involving skill, chance, or
endurance on the part of two or more persons who play
according to a set of rules, usually for their own amusement
or for that of spectators." The Examiner points out that
the activity is usually for amusement but not necessarily
restricted to amusement. In the next paragraph, the
Examiner points out that the applicant cannot simply say
that the word "game" has a particular restrictive meaning
which is not supported by Spiegel.
In this regard, then applicant is by the present amendments
to claim 1 in fact applying and claiming a restricted
meaning to the word games, namely for active home
entertainment and, in particular amusement games. This is
the meaning to which applicant intended that the use of the
word games portray and by the present amendments to claim 1,
applicant has more clearly defined and restricted his
meaning of the word games and it is clear that Spiegel reeve:
contemplated amusement games of any kind or games to be
played at home on a home television receiver.
With respect to the selective coupling limitation which the
Examiner finds both not disclosed in the specification and
obvious, we must respectfully disagree. The Examiner points
out with respect to the selective coupling that the
coupling, in fact, is provided by the user connecting and
disconnecting leads from the television game control unit
and disconnecting leads from the television game control
unit and user's television antenna, and that it is improper
to claim the user as part of the claimed apparatus; and,
therefore, since the claims are apparatus claims, applicant
must disclose a particular piece of apparatus to provide the
selective coupling and this is not done.
With respect, we must disagree. The pieces of apparatus
that provide the selective coupling are the output cable
from the game control unit and that from an antenna. The
fact that manual coupling has to be made by a user does not
mean that the connecting cable is not proper apparatus. For
example, if a switch were provided to provide the coupling
from either the control unit or the antenna, the Examiner
would say that this is proper selective coupling; however,
we must point out tht the switch itself would also have to
be operated by the user. To switch the contact from the
television antenna or the game control unit would require
the intervention of a user. Such an intervention by the
user would be proper. Applicant, thus, cannot understand
why the fact of providing cables for doing the selective
coupling is also not proper, despite the fact that user
intervention is required to make the connections.
...
Lastly, claim 87 speaks to detecting coincidence at least
one time prior to the end of the playing period and as
mentioned regarding coincidence earlier, Spiegel only detect
coincidence at the end of the period when time runs out.
With respect to the refusal of claims 73 to 77 as not
complying with Rule 81, it is submitted that the petition
for reissue in this case was based on the discovery of the
patent to Spiegel and that newly filed claims were drafted
so as not to read on Spiegel. The petition did set out
fully in what respect the petitioner considered the patent
defective, how the error arose and the time in which the
petitioner obtained knowledge. The claims filed with the
petition for reissue were drafted to not read on Spiegel and
the further claims 73 to 87 filed do not claim any new
matter but rather are simply designed to reinforce the
claims in the reissue application that is to say to provide
claims that do not read on Spiegel. It is submitted these
claims are clearly allowable in the reissue application.
They do not attempt to claim anything beyond that set forth
in the petition for reissue and clearly comply with Rule 81
of the Patent Rules.
...
The issue before the Board is whether or not the application is directed to
patentable subject matter in view of the cited art. Claim 40 is representative,
and reads:
40. Apparatus for permitting the playing of amusement games
on the screen of a home television receiver previously
employed only for passive viewing of programs, by at least
one participant and generating "dots" upon the screen of the
home television receiver to be manipulated by at least one
participant, said apparatus comprising:
a control unit for generating signals
representing the "dots" to be displayed, said control
unit further including means for generating
horizontal and vertical sychronizing signals to
synchronize a television raster scan of a receiver
and means for manipulating the position of the "dots"
on the screen to play games; and
means for directly and selectively coupling the
generated signals only to a single television
receiver whereby in a first state said "dots" are
displayed only upon the screen of the single receiver
being viewed by the participant and in a second state
such television receiver is capable of receiving
broadest television signals.
At the Hearing Mr. Macklin presented the Board Chairman with copies of
affidavits sworn by the inventor Mr. Baer and by Mr. Mothersole. He also
introduced copies of jurisprudence on which he relied during the Hearing.
In making his presentation Mr. Macklin stated that the invention had
obtained great commercial success and it clearly was the genesis of the TV game
home entertainment industry as it is known today. He also noted that, the owner
of the basic patent, Sanders Associates earns royalties through an exclusive
licensee which in turn has many agreements with other companies in the industry.
In discussing the prior art respecting the issue of obviousness, Mr. Macklin
stated that the primary reference to Spiegel came late in the day since it did
not arise as a result of normal prosecution in any country respecting the
original patent. The reissue application with narrower claims was the result of
this knowledge. He then went on to state that Spiegel only teaches two manually
moveable dots and that other things such as coincidence, electronic ground
lines, time sequence, and flight time of the missile, are mere suggestions to
those persona skilled in the art of military training simulators. In short this
reference is open to many interpretations. He then stated that Spiegel was
deficient as a prior art reference because the public must be given clear
instructions to do something after the grant, and mere suggestions in a
reference are not good enough.
The inventor Mr, Baer was then introduced and spoke with reference to his
affidavit. During the period 1959 to 1972 he was a Division Manager with
Sanders Associates and supervised electronic development work, primarily of a
military nature. He then demonstrated his invention to the Board by means of a
circa 1967 circuitry mounted on a board known as a breadboard unit connected to
a standard television receiver. It contained switches to select a variety of
games, some of which he demonstrated. He stated that simple chase games, ping
pong games and handball games were developed, He also demonstrated coincidence
of two dots, causing one to disappear, and said this was achieved by a diode
logic circuit.
Mr. Baer then discusssed the Spiegel patent with reference to his knowledge and
the state of the electronics art at the time he conceived his invention in
1966. He stated that even if had known of Spiegel at that time, it would not
have helped in making his invention. Considering his military electronics
experience, he also stated that Spiegel does not provide enough information to
build a missile training simulator since Figure 1 describes only standard
textbook circuits, while the remainder of the description provides word pictures
but not electronic circuitry. He then stated that in making his invention, his
design philosophy was opposite to that of Spiegel since he took liberties with
NTSC design specifications. In particular he realized that a TV set could
operate with rudimentary input signals and also that blanking pulses were not
necessary, which is in direct contrast with Spiegel.
Mr. P.L. Mothersole then spoke with reference to his affidavit. A review of
paragraphs 4 and 5 of his affidavit shows that he is very well qualified in the
television engineering field. Items 8 to 24 of his affidavit are concerned with
Spiegel as a prior art reference and to the Sanders application as a description
of an invention. His statements respecting the inadequacy of Spiegel strongly
supported the views expressed by the inventor. With respect to Sander's
application, Mr. Mothersole believed that the Spiegel patent was clearly
deficient as prior art.
At the conclusion of the Hearing, Mr. Macklin reiterated his written arguments
that the claims were not open to rejection under Rules 25 and 81. With respect
to the latter Rule, he stated that one should be at liberty to submit additional
reissue claims subject only to restraints respecting scope of claims. He cited
Farbwerke Hoechst (1966) S.C.R. at page 611, as support for his statement.
Considering first the rejection made under Rule 81, we are satisfied by
Applicant's arguments that additional amended claims may be considered provided
that they are related to the same scope of invention for which the Petition is
filed. The rejection under Rule 81 of the Patent Rules should therefore be set
aside.
Considering next the Spiegel patent and the other references, we are persuaded
by the arguments advanced by the inventor, Mr. Baer, and Mr. Mothersole that the
application contains matter which is not found in the cited art. We find that
the means for detecting the coincidence as argued by the inventor and found in
the disclosure, is a significant feature of the invention. We therefore
contacted the Agent and explained our views. After due consideration, the Agent
submitted a set of amended claims on December 10, 1982.
Amended claim 1 reads:
Apparatus for adding active home entertainment capability to
a home television receiver by generating "dots" upon the
screen of the television receiver to be manipulated by at
least one participant, said apparatus comprising:
a control unit for generating signals
representing the "dots" to be displayed, said control
unit further including means for generating horizontal
and vertical synchronizing signals to synchronize a
television raster scan of a receiver, means for
generating first signals representing the horizontal
position of said "dots", means for generating second
signals representing the vertical position of said
"dots", means for manipulating the position of the
"dots" on the screen to play games, and means for
detecting coincidence of two of said "dots" on said
screen; and means for coupling the generated signals
representing the "dots" to be displayed and the
synchronizing signals only to a single television
receiver whereby the said "dots" are displayed only
upon the screen of the single receiver being viewed
by the participant.
We are satisfied that the amendments overcome the rejection based on the cited
art, and no further discussion is necessary.
In summary, the arguments advanced at the Hearing and the amendments made on
December 10, 1982, overcome the objections made in the Final Action. We
recommend that the amendments be accepted.
S.D. Kot M.G. Brown
Acting Chairman Member
Patent Appeal Board, Canada
I have reviewed the prosecution of the application and considered the seasonings
and findings of the Board. Accordingly, I direct that prosecution be resumed on
the basis of the amended claims.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 1st. day of March, 1983