Ex Parte Chu

Board of Patent Appeals and Interferences

Jun 23, 2011

10317371 (B.P.A.I. Jun. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIVA CHU
____________

Appeal 2010-004475
Application 10/317,371
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004475
Application 10/317,371

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 65-70 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral
arguments were presented on June 7, 2011 by telephone.

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to a game playing
program wherein part of the game playing program is configured to be
populated with an add-on component (Spec.6:17-21). Claim 65, reproduced
below, is representative of the subject matter of appeal.

65. A computer-readable storage medium containing instructions
for controlling a computer system to conduct on-line commerce, by a
method comprising:
executing a game program on a remote gaming system, the game
program having areas defined for supporting on-line commerce during
execution of the game, the game program having game components
used by characters of the game program; and
during execution of the game,
sending, via a network connection, a request to an on-line commerce
server, the request requesting that an add-on component is to be
downloaded from the on-line commerce server to the remote gaming
system;
Appeal 2010-004475
Application 10/317,371

3
receiving, via the network connection, a response to the request, the
response including an add-on component to the game program, the
add-on component for dynamically updating an area of the game
program to support on-line commerce during execution of the game
program;
installing as part of the game program the add-on component that is
received in the request; and
after the add-on component has been installed by the game program,
displaying at an area of the game program a user interface
provided by the add-on component; and
when a user interacts with the displayed user interface, conducting on-
line commerce supported by the add-on component to purchase a new
game component for the game program wherein after the new game
component is purchased, the game
program executes with a character of the game program
using the new game component.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kurzweil US 6,754,823 B1 Jun. 22, 2004

The following rejections are before us for review:
1. Claims 65-70 are rejected under 35 U.S.C. § 102(e) as
anticipated by Kurzweil.

Appeal 2010-004475
Application 10/317,371

4
THE ISSUES
The issue turns on whether Kurzweil discloses “executing a game
program on a remote gaming system” or the “game program having
components used by characters of the game program”.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Kurzweil discloses a computer program product for installing
downloaded software over a network. The method includes generating an
access key by receiving an installation key produced using a random number
(Abstract).
FF2. Kurzweil at Figure, 3A, Col. 2:32-43, the Abstract, and the Summary
section does not disclose executing a game program on a remote gaming
system with the game program having game components used by characters
of the game program.

ANALYSIS
The Appellant argues that the rejection of claim 65 is improper
because Kurzweil does not disclose “executing a game program on a remote
gaming system” or suggest game components or characters of the game
program (Br. 5-6). The Appellant makes similar arguments in the Reply
Brief at page 2.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2010-004475
Application 10/317,371

5
In contrast, the Examiner has determined that Kurzweil discloses the
claim limitations above at Fig. 3A, Col. 2:32-43, the Abstract and Summary
(Ans. 4, 7).
We agree with the Appellant. Claim 65 requires “executing a game
program on a remote gaming system” and “the game program having game
components used by characters of the game program” and this is not shown
in Kurzweil where asserted by the Examiner (FF2).
For these reasons the rejection of claim 65 and its dependent claims is
not sustained.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 65-70 under 35 U.S.C. § 102(e) as anticipated by Kurzweil.

DECISION
The Examiner’s rejection of claims 65-70 is reversed.

REVERSED

MP