Ex Parte Asuke

Patent Trial and Appeal Board

Mar 29, 2016

12534563 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/534,563 08/03/2009
27562 7590 04/19/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Shigeyuki ASUKE
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.
MEN-723-2598 9857
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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 SHIGEYUKI ASUKE
Appeal2014-001588
Application 12/534,563
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shigeyuki Asuke (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1-25, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-001588
Application 12/534,563
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter relates to "a game program
executable by a computer of a game apparatus which determines whether or
not objects contact[] each other in a game space and performs a game
process, depending on the result of determination." Spec. para. 1. Of those
claims before us on appeal, claims 1, 19-21, and 23 are independent.
Claims 1 and 23, reproduced below, are illustrative of the subject matter on
appeal. 1
1. A non-transitory computer readable storage
medium storing a game program executable by a computer of a
game apparatus which outputs to a display device a game image
showing a behavior of an object in a game space, the game
program causing the computer to execute instructions
compnsmg:
repeatedly determining whether or not a first object
contacts a second object at a first point in time and at a second
point in time, the second point in time being a latest result of
determination stored after the first point in time;
successively storing results of the repeated determination;
and
performing a predetermined process with respect to the
first object when, of the results of the stored determination, at
least one result of determination includes determining that the
first object contacted the second object at the first point in time.
1 'vVe do not rely on the Claims Appendix provided with Appellant's Appeal
Brief because it does not contain an accurate recitation of the claims on
appeal. \Ve refer instead to the claims as presented in the Arnendment filed
on November 29, 2012 (hereafter "'Amendment"), and entered by the
Examiner in the Final Action on January 16, 2013, for a listing of the clairns
currently pending in the subject application.
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23. A non-transitory computer readable storage
medium storing a game program executable by an information
processing apparatus which outputs to a display device a game
image showing a behavior of an object in a game space, the game
program causing the information processing apparatus to execute
instructions comprising:
displaying a first object and a second object in the game
space on the display device at a current frame of display;
determining if the first object contacted the second object
during a previous frame of display; and
visually depicting the first object as contacting the second
object during the current fame [sic] of display when the first
object contacts the second object during the previous frame of
display, a number of frames between the current frame and the
previous frame is determined based on a predetermined visual
delay time of the display device.
EVIDENCE
The Examiner relied upon the following evidence:
Matsuyama
Fleming
US 6,582,299 Bl
US 2009/0310027 Al
REJECTIONS
June 24, 2003
Dec. 17, 2009
Appellant appeals from the Final Action, dated January 16, 2013,
which includes the following rejections:
1. Claims 1-25 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
2. Claims 1-22 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
3. Claims 1-25 under 35 U.S.C. § 103(a) as unpatentable over
Matsuyama and Fleming.
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Application 12/534,563
ANALYSIS
First Ground of Rejection: Written Description
Claims 1-22
The Examiner found that the Specification does not provide adequate
written description support for "repeatedly determining whether or not a first
object contacts a second object at a first point in time and at a second point
in time," as recited in independent claims 1and19-21. Final Act. 2. In
particular, the Examiner found that "[t]he [S]pecification as filed only
describes determining contact for the current time and then storing the
results" wherein "[t]he saved results of determination are then used to act
according to the record of the determination that happened at a previous
point in time." Id. at 2-3. According to the Examiner, "[a]t best this would
be making a determination about the stored results and not, as the claims
require, a determination about whether the first object contacts a second
object at a first point in time." Ans. 4.
Appellant argues that the Specification provides adequate written
description support for the claim limitation because the Specification
"describes that a contact determination section 100 repeatedly determines
whether or not the player object 30 contacts a block 31" and "further
explains that since the game process is performed in units of 1/60 sec, the
contact determination is also performed at intervals of 1/60 sec." Appeal
Br. 13 (citing Spec. para. 96). According to Appellant, "[ o ]ne of ordinary
skill would understand that as the frames are being displayed, the game is
running over a period of time" and "the system could determine that contact
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is made in both the current frame (e.g., the second point in time) as well as
the previous frame (e.g., the first point in time)." Id. at 13-14.
Appellant's Specification describes that "contact determination
section 100 repeatedly determines whether or not the player object 30
contacts the block 31 ... at intervals of 1/60 sec." Spec. para. 96. We agree
with Appellant that "by making the determination in a current frame and
then using that determination later (while continuing to make the
determination in a 'future' current frame) [the system] in effect makes the
determination at two points in time." Appeal Br. 14. As such, a person of
ordinary skill in the art, upon reading the Specification, would understand
Appellant to have had possession as of the filing date of the claimed game
program "repeatedly determining whether or not a first object contacts a
second object at a first point in time and at a second point in time." See
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en bane) ("[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.")
(citations omitted). For these reasons, we do not sustain the rejection of
claims 1-22 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Claims 23-25
The Examiner found that the Specification does not provide adequate
written description support for the limitation in independent claim 23 of:
visually depicting the first object as contacting the second object
during the current fame [sic] of display when the first object
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contacts the second object during the previous frame of display,
a number of frames between the current frame and the previous
frame is determined based on a predetermined visual delay time
of the display device.
Final Act. 3. The Examiner explains that "the claim as written describes that
the frame is displayed to the user and thus must have already been rendered
and sent to the display device, thus it is not possible to modify the currently
displayed frame as it is already done being processed." Ans. 4. According
to the Examiner, "[t]he [disclosed] system could clearly modify some
subsequent frame but it cannot alter the 'current frame of display' without
some sort of time travel." Id. at 4-5.
Appellant argues, and we agree, that the Specification provides
adequate written description support for the above limitation. See Appeal
Br. 13-14; see Reply Br. 3. In particular, we agree with Appellant that
"[ w ]hile it may be true that a current frame of display cannot be technically
modified [since it already has been processed], the claim is not written in a
manner that limits the current frame to be modified." Reply Br. 3.
Moreover, the Examiner's assertions, as set forth supra, suggest that
claim 23 calls for a particular sequence of executing the recited steps, yet the
claim requires no such sequence.
Appellant's Specification describes:
The predetermined period of time . . . is set to have a value
corresponding to a delay time between when the execution of
contact determination by the contact determination section 100
and the display of a game image showing a game space subjected
to the contact determination on the liquid crystal television.
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Application 12/534,563
Spec. para. 100. The Specification further describes "that the predetermined
period of time should be set to have an appropriate value, depending on the
delay time." Id. As such, a person of ordinary skill in the art, upon reading
the Specification, would understand Appellant to have had possession as of
the filing date of the claimed game program visually depicting on a display
two objects contacting during a current frame when the objects contacted in
a previous frame, wherein a predetermined number of frames occurs
between the current and previous frames based on a predetermined delay
time for a display. For these reasons, we do not sustain the rejection of
claims 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Second Ground of Rejection: Indefiniteness
Independent claims 1 and 19-21 recite "repeatedly determining
whether or not a first object contacts a second object at a first point in time
and at a second point in time." Amendment 2, 8, 9. The Examiner
determined that this limitation renders the claims indefinite because "[i]t is
unclear if the determination itself is occurring at the two times, if the
determination is about the contact of the objects at two times or something
else." Final Act. 3-4. The Examiner further explains "that the wording of
the claims makes it unclear if the system is repeatedly determining at two
points in time or making a determination for two points in time repeatedly."
Ans. 4.
Appellant argues, and we agree, that the limitation is sufficiently clear
when read in light of the Specification. Reply Br. 2. In particular, the
Specification describes repeatedly determining whether or not a player
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object contacts another object at intervals of 1/60 second. Spec. para. 96.
We agree with Appellant that "[ o ]ne of ordinary skill would understand that
as the frames are being displayed, the game is running over a period of time"
and "the system could determine that contact is made in both the current
frame (e.g., the second point in time) as well as the previous frame (e.g., the
first point in time)." Appeal Br. 13, 14. As such, the claims are not
indefinite because the scope of the claims is clear to those skilled in the art
when the claim is read in light of the Specification. Accordingly, we do not
sustain the rejection of claims 1-22 under 35 U.S.C. § 112, second
paragraph.
Third Ground of Rejection: Obviousness
Claims 1-22
Independent claims 1 and 19-21 recite "performing a predetermined
process with respect to the first object when, of the results of the stored
determination, at least one result of determination includes determining that
the first object contacted the second object at the first point in time."
Amendment, 2, 8, 9-10. The Examiner relied on Fleming to address this
limitation and found that Fleming discloses that "it is known to account for
the latency in rendering a game on a display by determining the interaction
of player element and game element at a first and second time and use the
first time to determine contact when the player makes inputs." Final Act. 5
(citing Fleming, paras. 93, 100, 110).
The Examiner explained that:
In order to be able correctly determine whether the falling
cue ... was in contact with the target marker within the window,
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Application 12/534,563
the game [of Fleming] must make repeated determinations every
time the player makes an input as to whether or not the first object
(the cue) contacted the second object (the marker) at a first point
in time (3 frames previous) and a second point in time (the
current frame) in order to operate as disclosed.
Ans. 6 (emphasis added). However, the Examiner does not point to, nor do
we discern, any explicit support in Fleming for this assertion. Rather, the
Examiner's position that Fleming repeatedly determines cue and marker
contact each time a user makes an input appears to be based on a speculative
assumption. The Examiner has not established, by a preponderance of the
evidence, that Fleming discloses performing a predetermined process when
it is determined that the first object contacted the second object at the first
point in time as called for in the claims. For this reason, we do not sustain
the rejection of independent claims 1 and 19-21, and of claims 2-18 and 22
depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over
Matsuyama and Fleming.
Claims 23-25
With regard to the rejection of independent claim 23, Appellant relies
on the arguments made for patentability of independent claim 1, stating only
that claim 23 "recite[s] similar features." Appeal Br. 15. Appellant does not
apprise us of error in the Examiner's rejection because claim 23 does not
recite limitations similar to those argued by Appellant for patentability of
independent claim 1. Namely, claim 23 does not call for successively
storing results of a repeated determination about contacts between a first
object and a second object and then "performing a predetermined process
with respect to the first object when, of the results of the stored
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Application 12/534,563
determination, at least one result of determination includes determining that
the first object contacted the second object at the first point in time."
Amendment 10. Rather, claim 23 calls for determining if the first object
contacted the second object during a previous frame of display and visually
depicting the first object as contacting the second object during the current
frame of display using a visual delay time of the display device. We agree
with the Examiner that Fleming discloses accounting for display lag in the
visual display of a game as called for in claim 23. Final Act. 6-7. As such,
Appellant's arguments discussed supra with respect to claim 1 are not
commensurate with the scope of claim 23. Accordingly, we sustain the
rejection of independent claim 23, and of dependent claims 24 and 25, for
which Appellant does not make any separate patentability arguments,
under 35 U.S.C. § 103(a) as unpatentable over Matsuyama and Fleming.
DECISION
The decision of the Examiner to reject claims 1-25 under 35 U.S.C.
§ 112, first paragraph, is REVERSED.
The decision of the Examiner to reject claims 1-22 under 35 U.S.C.
§ 112, second paragraph, is REVERSED.
The decision of the Examiner to reject claims 1-22 under 35 U.S.C.
§ 103(a) as unpatentable over Matsuyama and Fleming is REVERSED.
The decision of the Examiner to reject claims 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over Matsuyama and Fleming is AFFIRMED.
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).
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Appeal2014-001588
Application 12/534,563
AFFIRMED-IN-PART
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