Ex Parte ABE et al

Patent Trial and Appeal Board

Sep 30, 2016

12781295 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121781,295 05/17/2010
27562 7590 10/04/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
GoroABE
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.
LB-723-2858 2451
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORO ABE, MAKOTO YOSHIZAWA, NORIHIRO SUGITA,
TOMOYUKI Y AMBE, and CHIE KAW ABE
Appeal2013-002443
Application 12/781,295
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Goro Abe et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the
Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1-8 and
12-21 as unpatentable over Sniper Elite 1 and Roberts (US 2008/0227546
Al; pub. Sept. 18, 2008); and (2) claims 9-11 as unpatentable over Sniper
Elite, Roberts, and Breving (US 7,654,901 B2; iss. Feb. 2, 2010). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and denominate the affirmance as NEW
1 Sniper Elite, XBOX Manual released Oct. 18, 2005. The Examiner further
cites to Sniper Elite Review on XBOX at GameSpot (hereinafter
"Game Spot") as evidence. See Final Act. 3.
Appeal2013-002443
Application 12/781,295
GROUNDS OF REJECTION PURSUANT TO OUR AUTHORITY
UNDER 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a storage medium having
a game program stored thereon, a game apparatus, a game system, and a
game processing method. Spec. Title, Figs. 10, 13A-13D. Claims 1 and
19-21 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A non-transitory computer-readable storage
medium having stored thereon a game program that is executed
by a computer of a game apparatus that performs game
processing on the basis of a designated position that is set in
accordance with an operation performed by a player with respect
to an input device, the game program causing the computer to
perform:
operation input obtaining for obtaining an operation input
performed by the player with respect to the input device;
designated position setting for setting a designated
position with respect to a virtual game world in accordance with
the operation input;
biological signal obtaining for obtaining a biological
signal from the player;
designated position change for changing the designated
position in accordance with the obtained biological signal; and
game processing for performing a predetermined game
process on the basis of the designated position.
ANALYSIS
Obviousness over Sniper Elite and Roberts
Appellants argue claims 1 and 19-21 as a group, and also present
separate arguments for claims 4, 7, and 12. Appeal Br. 11-15. We select
claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/781,295
Claims 2, 3, 5, 6, 8, and 14-21 stand or fall with claim 1. We address claims
4, 7, 12, and 13 separately below.
Claims 1-3, 5, 6, 8, and 14-21
Independent claim 1 calls for a game program causing a computer to
perform "designated position setting for setting a designated position" and
"designated position change for changing the designated position in
accordance with [an] obtained biological signal [from a player]." Appeal Br.
19, Claims App. The Examiner finds that "SniperElite discloses a game
where a player controls a the [sic.] position of gunsight (i.e. designated
position) and the gunsight can change based on the player/character's
heartbeat (GameSpot: 'When setting up your shot your gun will sway
slightly due to your breathing and heartbeat.')." Final Act. 2-3; see also
Ans. 4. As such, the Examiner finds that "Sniper Elite discloses changing
the position in accordance with a biological signal." Final Act. 10. The
Examiner finds Roberts similarly discloses "obtaining a biological signal
from the player which affects their physical functioning the game
environment." Final Act. 10; see also Roberts, para. 48. The Examiner
concludes it would have been obvious "to combine the game as disclosed by
Sniper Elite, together with the ability for sampled biological responses from
a player to affect game play, as taught by Roberts," because "this would
have increased player excitement and interest by providing an additional
level of realism in the game play environment." Final Act. 4; see also Ans.
5.
Appellants contend that neither Sniper Elite nor Roberts, "alone or in
combination, teaches or suggests a game apparatus that obtains a biological
signal from a player and changes the designated position in the game space
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Application 12/781,295
... in accordance with the obtained biological signal." Appeal Br. 11
(emphasis omitted). According to Appellants:
Sniper Elite does not teach "designated position change for
changing the designated position in accordance with the
biological signal". In Sniper Elite there is no biological signal
obtained from the player. The aiming hand of the player simply
sways due to breathing. Sniper Elite does not disclose . . .
obtaining a biological signal from the player, which biological
signal affects the designated position.
Response After Non-Final Act. 23 (filed Feb. 28, 2012); see also Appeal Br.
12. Appellants further contend that paragraph 48 of Roberts cited by the
Examiner "lists some general examples of increasing the difficulty of the
game," but"[ n ]one of [the] examples teaches or suggests the claimed nexus
between the obtained biological signal and the change in the designated
position." Reply Br. 2-3; see also Response After Non-Final Act. 23.
In this case, the Examiner determines that the position of the gunsight
corresponds to the "designated position" recited in claim 1, and this position
is controlled, or set, by the player. Final Act. 2-3. In describing Sniper
Elite, Game Spot discloses that "[ w ]hen setting up your shot your gun will
sway slightly due to your breathing and heartbeat."2 Gamespot 2. The
Examiner infers from this description that the position of the gunsight is
changed based on, or "in accordance with," the player/character's heartbeat.
Final Act. 3, 10.
2 Sniper Elite discloses that, when the heartbeat slows down sufficiently, such
that the trace is black, the player may activate "Empty Lung" mode, which
will steady the aim; however, when the heartbeat is too high, such that the
trace is red, "Empty Lung" mode is not possible. Sniper Elite 13.
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This, to us, is a reasonable inference. In our view, a person having
ordinary skill in the art would have immediately envisaged causing or
simulating a gun sway while setting up a shot by changing the position of
the gunsight relative to the target (i.e., the virtual game world). A
conclusion of obviousness must be supported by explicit findings and
analysis establishing an apparent reason to combine the known elements in
the manner required in the claim at issue. KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). However, "the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
[the PTO] can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ." Id. Thus, in our view, when
taking into account such inferences, Sniper Elite provides a sufficient
"nexus" between the biological signal (heartbeat) and the change in position
of the gunsight to satisfy that aspect of the rejection.
Appellants' contentions regarding Roberts are not persuasive because
nonobviousness cannot be established by attacking the applied references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner relies on Sniper Elite, not Roberts, for a "change in the
designated position." See Final Act. 10. The Examiner finds Roberts
discloses "a biological signal obtained by a player." Id.
Appellants contend that Roberts teaches away from Sniper Elite. See
Appeal Br. 12-14; see also Reply Br. 3-5. In particular, Appellants argue
that Roberts works opposite of Sniper Elite, because Roberts seeks to make
game play more difficult, while Sniper Elite provides a button that can be
pushed to make the game easier (the Empty Lung mode). See id.; see also
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Reply Br. 3-5.
Appellants' argument is not persuasive. In Sniper Elite, the change of
aim (gunsight position) in the event of a too high heart rate makes Empty
Lung mode unavailable, thereby preventing the Empty Lung mode from
keeping the aim (gunsight) steady. In other words, there is a change to the
position of the gunsight (the designated position) by the gun swaying around
(the realistic effect of the high heart rate).
We agree with the Examiner that Roberts' teaching of "using an
accelerated heart rate to adversely affect performance of physically
challenging tasks in a gaming environment" is consistent with Sniper Elite's
"teaching that not controlling biological signals (i.e. not emptying lungs)
degrades aim." Final Act. 12; see also Ans. 14. We further agree with the
Examiner that Roberts' teaching that "if the player does not allow his/her
heart rate to accelerate then the player's physical performance will [] not be
adversely affected" is consistent with Sniper Elite's "teaching that the
swaying of the gun due to heart rate can be minimized (i.e. by the player not
allowing his/her heart rate to accelerate, by emptying lungs)." Id.; see also
Ans. 14. More specifically, Sniper Elite discloses that, when the heartbeat
slows down sufficiently, such that the trace is black, the player may activate
"Empty Lung" mode, which will steady the aim; however, when the
heartbeat is too high, such that the trace is red, "Empty Lung" mode is not
possible. Sniper Elite 13.
Appellants contend that "[t]here is absolutely no suggestion in Sniper
Elite to use actual biological signals from a player to affect aim. [The]
references in Sniper Elite refer to the lungs of the player character not the
player." Appeal Br. 14; see also id. at 13; Reply Br. 3, 5.
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Appellants' argument is not persuasive because Appellants are
arguing the references individually rather than the combined teachings of
Sniper Elite and Roberts. See In re Merck & Co., 800 F.2d at 1097. As
discussed above, the Examiner finds Roberts discloses "a biological signal
obtained by a player." Final Act. 10.
Appellants further contend that the Examiner engages in impermissible
hindsight in combining the references. See Appeal Br. 15.
We are not persuaded. The Examiner cites specific teachings in the
references themselves, not Appellants' disclosure, in support of the
Examiner's articulated reasoning for combining the references as proposed
in the rejection. See Final Act. 2--4.
In conclusion, we sustain the Examiner's rejection of claim 1 over the
combined teachings of Sniper Elite and Roberts. We also sustain the
Examiner'srejectionofdependentclaims2, 3, 5, 6, 8, and 14-18, and
independent claims 19-21, which fall with claim 1. However, we
denominate the affirmance of the rejection of these claims as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our
analysis relies upon facts and reasoning that the Examiner did not use.
Claim 4
Appellants contend:
Claim 4 does not simply require changing a range of the
virtual game world in accordance to an action of the player (e.g.,
when the sniper mode is entered), but rather when the designated
position in the game space changes (e.g., wobbles) in accordance
to an obtained biological signal.
Again, claim 4 does not simply require the range of the
virtual game world change based on the player doing something,
e.g., entering the sniper mode, or based on the player's heartbeat
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Application 12/781,295
and breathing, but rather it requires the range being changed
based on the change of the designated position (due to the
obtained biological signal). This connection is not taught or
suggested by Sniper Elite.
Reply Br. 6; see also Appeal Br. 15-16
Appellants' argument is not persuasive because Appellants are
effectively arguing the applied references individually rather than the
combined teachings of Sniper Elite and Roberts. See In re Merck & Co.,
800 F.2d at 1097. As discussed above, the Examiner finds Roberts discloses
"a biological signal obtained by a player." Final Act. 10. As further
discussed above, we agree with the Examiner that Sniper Elite discloses a
"change of the designated position." Further, the Examiner finds that
Sniper Elite changes the "range" (i.e. extent of the display of the
virtual world) when the player enters "sniper scope mode"
(user's manual, page 12) .... In other words, when the sniper
mode is entered the view out the view finder changes, in concert
\"1ith entering a mode in \"1hich the displayed \"1orld moving along
with the player's aim. [Second], to the extent that the player in
Sniper Elite simply moves his/her aim in sniper mode the view
out the viewfinder will also change (this allows the player to aim
his/her gun, the primary goal of the game), and this aspect of
Sniper Elite also reads on the claimed limitation. [Third], the
player's heartbeat and breathing ... also distort the view of the
game world.
Ans. 17. Appellants do not provide persuasive evidence or arguments
apprising us of Examiner error.
Accordingly, we sustain the Examiner's rejection of claim 4 over the
combined teachings of Sniper Elite and Roberts. We denominate the
affirmance of the rejection of claim 4 as a NEW GROUND OF
REJECTION.
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Application 12/781,295
Claim 7
The Examiner finds:
Sniper Elite discloses "Empty Lung" mode (see user's manual,
page 13)). Empty lung mode is disclosed as a way to reduce
wobble over time ("You can hit a button to empty your lungs,
which will steady your hand for several seconds". Game Spot
Review, page 2.) What is more, to the extent that the player is
able to lower his or her heart rate ... that additionally will reduce
the wobble of the designated position over time, and at every
cycle of the cyclic biological signal (i.e. sampled heart beat).
Ans. 18 (emphasis omitted).
In this case, Appellants correctly point out that "[ m ]erely allowing the
player character to 'hold steady' during shooting does not necessarily say
anything about reducing the wobbling over time, let alone at every cycle of
the cyclic biological signal, as required by claim 7." Reply Br. 7.
Accordingly, we do not sustain the Examiner's rejection of claim 7
over the combined teachings of Sniper Elite and Roberts.
Claims 12 and 13
The Examiner finds:
[T]he fact that designated position as taught by Sniper Elite can
be different before and after the heart rate is sampled is irrelevant
as far as the limitations claimed in Claim 12, because the claim
does not require the designated position at the end of the cycle to
be the same as designated position before the sampling cycle.
Ans. 19.
However, Appellants correctly point out:
Claim 12 (depending from claim 1) recites "that a
designated position after the end of the operation becomes the
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designated position that is set by the designated position setting",
emphasis added, whereas, claim 1 recites "designated position
setting for setting a designated position with respect to a virtual
game world in accordance with the operation input".
Thus, the designated position at the end of the operation is
the same as the designated position that was set in accordance to
the operation input before the temporarily changing of the
designated position.
Reply Br. 8 (underline added). As such, Appellants have apprised us of
Examiner error.
Accordingly, we do not sustain the Examiner's rejection of claim 12,
and claim 13 depending therefrom, over the combined teachings of Sniper
Elite and Roberts.
Obviousness over Sniper Elite, Roberts, and Breving
Claims 9-11
Appellants do not present arguments for dependent claims 9-11
separate from those presented for claim 1. See Appeal Br. 18. Thus, for the
reasons set forth above, we sustain the Examiner's rejection of these claims.
See 37 C.F.R. § 41.37(c)(l)(iv). We denominate the affirmance of the
rejection of these claims as a NEW GROUND OF REJECTION.
DECISION
The decision of the Examiner to reject claims 1-6, 8-11, and 14-21 is
AFFIRMED.
The decision of the Examiner to reject claims 7, 12, and 13 is
REVERSED.
Because the fact finding and reasoning relied on by the Board to
sustain the rejections differs from the facts and reasoning relied on by the
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Application 12/781,295
Examiner, we designate our atlirmance of the rejections of these claims as a
NEW GROUNDS OF REJECTION so as to provide Appellants with a full
and fair opportunity to respond to the thrust of the rejections.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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