Ex Parte Avent

Patent Trial and Appeal Board

Mar 29, 2016

12022000 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/022,000 01129/2008
63652 7590 03/31/2016
DISNEY ENTERPRISES, INC
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
Jason Avent
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.
07-DIS-183-DIMG-US-UTL 4891
EXAMINER
HU, KANG
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON A VENT
Appeal2014-001101
Application 12/022,000 1
Technology Center 3700
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Disney Enterprises,
Inc. (a wholly owned subsidiary of The Walt Disney Company). Appeal
Br. 1.
Appeal 2014-001101
Application 12/022,000
ILLUSTRATIVE CLAIM
1. A method of operating an interactive computer game
on a computer games terminal, comprising:
receiving, at the computer games terminal:
non-interactive user input data from a controller
associated with the computer games terminal, wherein
the non-interactive user input data includes control
information for playing the interactive computer game;
and
interactive game data associated with at least one
interactive game element; and
rendering the non-interactive user input data and the
interactive game data for display, wherein the rendering
includes rendering the interactive game element and a game
element associated with a non-interactive games player based
on the received control information.
CITED REFERENCES
The Examiner relies upon the following references:
Hightower US 2003/0054869 Al
Spanton et al. US 2007 /0117617 Al
(hereinafter "Spanton")
Yamada US 2009/0011831 Al
REJECTIONS
Mar. 20, 2003
May 24, 2007
Jan. 8,2009
I. The rejection of claim 23 under 35 U.S.C. § 112, second
paragraph (pre-AIA), 2 as being indefinite. Non-Final Act. 2-3.
2 The Examiner rejected claim 23 under either 35 U.S.C. § 112, second
paragraph (pre-AIA) or 35 U.S.C. § l 12(b). Non-Final Act. 2-3. Because
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Application 12/022,000
II. The rejection of claims 1, 3, 8-10, 12, 13, and 16-18 under 35
U.S.C. § 102(b) as anticipated by Hightower. Non-Final Act. 3-5.
III. The rejection of claims 2, 4, 5, 11, 14, 15, 20 and 21under35
U.S.C. § 103(a) as unpatentable over Hightower and Yamada. Non-Final
Act. 6-8.
IV. The rejection of claims 6, 7, 19, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Hightower and Spanton. Non-Final Act. 8-
10.
FINDINGS OF FACT
We rely on the Examiner's findings stated in the Answer. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
To facilitate our analysis, we address the rejections in a different order
than that presented in the Answer and Appeai Brief
Rejection II
On appeal, the Appellant has argued claims 1, 3, 8-10, 12, 13, and
16-18 as a group. Appeal Br. 9-15. In the discussion below, claim 1 is
selected as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejected claim 1 as anticipated by Hightower. Non-
Final Act. 3--4. Hightower discloses a vehicle racing computer game in
which a user's race sequence may be stored and played back as a "ghost"
the Appellant's application was filed before September 12, 2012, the pre-
AIA version of the statute is applied herein.
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Application 12/022,000
vehicle, such that the same or another user may compete against the former
race sequence. See Hightower Abstract, i-fi-16-12, 27-38, 59, Fig. 9.
The Appellant contends that Hightower does not disclose the "non-
interactive user input data from a controller" of claim 1 (Appeal Br. 19,
Claims App.) because the stored "ghost" vehicle data, which the Examiner
associates with the claimed "non-interactive user input data," cannot be
"from a controller" (Appeal Br. 11-14). Mindful of the Examiner's position
that "the ghost data in question is not only input by a game controller, but
more specifically that it is input by the player themselves" (Non-Final Act.
11 ), the Appellant characterizes the alleged shortcoming of Hightower as
"never show[ing] concurrently receiving and then rendering interactive
game data and also non-interactive game data" (Appeal Br. 14).
However, as the Examiner explains (Answer 5), claim 1 does not
require the identified activities to be performed concurrently, such that its
aUeged omission cannot be a basis for distinguishing Hightower.
The Appellant purports to offer "a second and separate point of claim
language distinction" (Appeal Br. 14) with regard to Hightower, whereby
Hightower would not satisfy claim 1 's feature of "rendering the interactive
game element and a game element associated with a non-interactive games
player based on the received control information" (Appeal Br. 19, Claims
App.). Yet, as the Examiner correctly points out, "[t]he Appellant again
appears to rely on real-time simultaneous game play between an interactive
and non-interactive player," a feature "not required by the claim language."
Answer 5. In particular, the Appellant proposes that, in Hightower's Figure
9, "[t]he vehicle 910 is a ghost vehicle, but it is not 'associated with a non-
interactive games player"' (Appeal Br. 14), because the ghost vehicle is
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Application 12/022,000
based upon stored game performance data. But there is no language in claim
1 that would prohibit "rendering ... a game element associated with a non-
interactive games player" based upon stored and replayed data.
Accordingly, the Appellant's arguments regarding claim 1 are not
persuasive. The Examiner's rejection of claim 1 is sustained. Because the
Appellant grouped claims 3, 8-10, 12, 13, and 16-18 together with claim 1
- and argued that the Examiner erred in rejecting these claims for the same
reasons-the Examiner's rejection of claims 3, 8-10, 12, 13, and 16-18 is
also sustained.
Rejection III
Dependent claim 2
The Examiner rejected claim 2 as obvious over Hightower and
Yamada. Non-Final Act. 6.
Claim 2 depends from claim 1 and adds the further limitation of
"inhibiting any interaction between" claim 1 's "non-interactive user input
data" and "interactive game data." Appeal Br. 19, Claims App.
The Appellant admits that Yamada "teaches [that] a ghosted vehicle
does not collide with an interactive player's vehicle," but the Appellant
contends that "claim 2 calls for two players to concurrently provide their
game data" and that such features are not taught by the combination of
Hightower and Yamada. Appeal Br. 16.
As the Examiner explains (Answer 6), claim 2 does not include the
supposed requirement of two players concurrently providing game data.
Accordingly, the Appellant's argument regarding claim 2 is not
persuasive and the Examiner's rejection is sustained.
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Dependent claim 43
Claim 4 depends from claim 1 and further states that the "game
elements" of claim 1 are "first and second avatars" that possess various
features set forth in the claim. Appeal Br. 19, Claims App.
The Appellant argues that Hightower "fails to teach any player
controlling the vehicle 910" (Appeal Br. 15)-vehicle 910 being the
element that the Examiner identified as being associated with claim 1 's
"game element associated with the non-interactive games player" (Non-
Final Act. 4) and, consequently, claim 4's "second avatar" (see Appeal Br.
19, Claims App.).
The Appellant's argument fails to address the substance of the
Examiner's rejection of claim 4 (Non-Final Act. 7) and devolves into
precisely the same issue addressed above, regarding claim 1 (in Rejection I)
- i.e., whether the "game element associated with the non-interactive
games piayer" may be rendered from stored data. As expiained above, this
argument is unpersuasive. In response, the Examiner (Answer 7) correctly
pointed out that Hightower discloses the disputed subject matter of claim 4
(and that Yamada also discloses this subject matter).
The Examiner's rejection of claim 4 is sustained.
3 Although the Examiner rejected claim 4 as obvious over a combination of
Hightower and Yamada (Non-Final Act. 7), the Appellant mistakenly stated
that the Examiner failed to set forth a rejection for claim 4 and that the
Examiner intended to include claim 4 among the claims rejected under 35
U.S.C. § 102(b) (Appeal Br. 9).
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Application 12/022,000
Dependent claims 5 and 11
Each of claims 5 and 11 depend from claim 1 and recite, among other
features, that there is no interaction between the recited "avatar[ s ]" (claim 5)
or "game element[ s ]" (claim 11 ). Appeal Br. 20, Claims App.
The Examiner rejected claims 5 and 11 as obvious over a combination
of Hightower and Yamada. Non-Final Act. 6.
However, in addressing the rejection of these claims, the Appellant
refers to Hightower only, arguing that "Hightower fails to show creation of
an avatar by a non-interactive games player by operating a controller" such
that "it also fails to show inhibiting interaction between the two avatars."
Appeal Br. 16.
The Appellants' argument does not explain any alleged error in the
Examiner rejection, which is based on a combination of teachings from
Hightower and Yamada, rather than Hightower alone. Thus, the Appellant's
argument is unpersuasive because, at the ieast, "[ o ]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." In re Keller, 642 F.2d
413, 426 (CCPA 1981) (citation omitted).
Notably, in rejecting claims 5 and 11, the Examiner (Non-Final Act.
6; Answer 7) relied upon Yamada for the very teaching (the inhibiting of
interaction between game elements) that the Appellant alleges to be lacking
in Hightower.
Accordingly, the Appellant's argument is not persuasive. The
Examiner's rejection of claims 5 and 11 is sustained.
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Dependent claims 14 and 15
The Examiner rejected claims 14 and 15 as obvious over Hightower
and Yamada. Non-Final Act. 6.
The Appellant argues (Appeal Br. 1 7) that claims 14 and 15 should be
allowable for the reasons already evaluated herein in regard to claim 2
(Rejection II), claim 5 (Rejection IV), and claim 13 (Rejection I). The
referenced arguments were determined to be unpersuasive. For similar
reasons, the Examiner's rejection of claims 14 and 15 is sustained.
Independent claim 20
The Examiner rejected independent claim 20 as obvious over
Hightower and Yamada. Non-Final Act. 7-8.
The Appellant (Appeal Br. 17) contends that the combined teachings
of Hightower and Yamada do not render claim 20 unpatentable because
Yamada does not disclose the recited "displaying the first or second game
eiement as semi-transparent" (Appeai Br. 22, Ciaims App.). According to
the Appellant, "Yamada teaches that a ghosted element may be used to
provide instructions but never teaches ghosting either an interactive or a
non-interactive player's game element" (Appeal Br. 17).
As the Examiner points out (Answer 7), the Appellant's understanding
of Yamada is mistaken. Rather than "provid[ing] instructions," as the
Appellant contends, Yamada discloses that the ghosting technique may be
used to display a game player's past performance, such that a game element
rendered from the history of the player's operation- a "past self' - or that of
another player may be made to appear semi-transparently. See, e.g.,
Yamada i-fi-15, 159. Thus, contrary to the Appellant's argument (Appeal Br.
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Application 12/022,000
17), Yamada teaches rendering a player's "game element as semi-
transparent" (Appeal Br. 22, Claims App.), as set forth in claim 20.
Accordingly, the Appellant's argument as to claim 20 is unpersuasive.
The Examiner's rejection of claim 20 is sustained.
Independent claim 21
The Examiner rejected independent claim 21 as obvious over
Hightower and Yamada. Non-Final Act. 7-8.
The Appellant contends that claim 21 should be allowable over the
cited references for the same arguments presented as to claim 2. Appeal
Br. 17. As set forth above (in regard to Rejection II), those arguments are
unpersuasive.
The Examiner's rejection of claim 21 is sustained.
Rejection IV
The Examiner rejected claims 6, 7, 19, 22 and 23 as obvious over
Hightower and Spanton. Non-Final Act. 8-10.
The Appellant has not addressed the Examiner's reasoning as to these
claims; instead, the Appellant contends that these claims are allowable for
reasons set forth in the Appeal Brief in regard to claim 1. See Appeal Br.
17-18. Such arguments have been addressed herein, in regard to Rejection
I, and have been determined to be unpersuasive.
The Examiner's rejection of claims 6, 7, 19, 22 and 23 is sustained.
Rejection/
Claim 23 recites "[a] network of interconnected computer games
terminals each adapted for operating an interactive computer game"
comprising, in relevant part:
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Application 12/022,000
a plurality of first computer game terminals, each
compnsmg:
an interface for receiving interactive user input
data from a controller associated with the computer
games terminal;
an interface for receiving interactive user input
data from a controller associated with the plurality of
other first computer game terminals; and
a display driver for rendering a graphical
representation of a computer game based on the
interactive user input data of each of the plurality of first
computer game terminals.
Appeal Br. 24, Claims App. The claim further recites "at least one second
computer game terminal" comprising various features. Id.
The Examiner rejected claim 23 as being indefinite under 35 U.S.C.
§ 112, second paragraph, stating: "[I]t is unclear how a plurality of firsts can
exist. Are the game terminals from a first set or of a first type?" Non-Final
Act. 3.
The Appellant contends that "differing functionality" of the recited
"plurality of first computer game terminals" and "at least one second
computer game terminal" "is clear from explicit language of the claim" and
would not be confusing to a person of skill in the art. Appeal Br. 8-9.
In response, the Examiner states that "it is unclear what each of the
plurality of first game terminals comprises," for example whether "each of
the first terminals is connected to a controller from each of the other
terminals." Answer 3.
Considering the broadest reasonable interpretation of the "plurality of
first computer game terminals" and the related features thereof set forth in
claim 23, as would be understood by one of ordinary skill in the art, the
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Application 12/022,000
portions of the claim identified by the Examiner do not render the claim
indefinite. The Examiner's argument relies upon features that are not set
forth in claim 23, particularly a potential "connect[ion ]" (id.) between the
recited "plurality of first computer game terminals" (see Appeal Br. 24,
Claims App.).
Thus, the Examiner's rejection of claim 23 under 35 U.S.C. § 112,
second paragraph, as indefinite is not sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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