Ex Parte Dohta

Patent Trial and Appeal Board

Aug 12, 2016

11429249 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111429,249 05/08/2006
27562 7590 08/16/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Takuhiro Dohta
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.
723-1903 3072
EXAMINER
GALKA, LAWRENCE STEFAN
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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
Exparte TAKUHIRO DORTA
Appeal2014-007969
Application 11/429,249 1
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Takuhiro Dohta (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1, 2, 6, 12-17, 22, and 24--
26.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is Nintendo, Co. Appeal
Br. 3 (filed Feb. 6, 2014).
2 Claims 3 and 18 have been canceled. Final Act. 2. Claims 4, 5, 7-11, 19-
21, 23, and 27 have been allowed. Adv. Act. (mailed Nov. 12, 2013).
Although claim 27 is identified as being "allowed" in the November 12,
2013 Advisory Action, it is identified as being "rejected" in the subsequent
Notice of Panel Decision from Pre-Appeal Brief Review mailed January 9,
2014. See Pre-Brief Appeal Conference Decision (mailed Jan. 9, 2014). As
such, the status of claim 27 is ambiguous. Adding to the ambiguity, in the
Final Office Action, except for the withdrawn rejection under 35 U.S.C.
Appeal2014-007969
Application 11/429,249
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellant's invention relates to a game process performed by
obtaining control data from a game controller to generate and use distance
data associated with the distance between the game controller and a
predetermined measured reference provided in real space. See Spec.,
Abstract.
Claims 1, 17, 25, and 27 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A storage medium storing a video game program to be
executed by a computer of a video game device for performing a
game process by obtaining control data from a game controller,
§ 112, i-f 2 (see 1A..ns. 2), the Examiner did not issue an art rejection of claim
27; but the Examiner did, in the Response to Arguments section, indicate
Appellant failed to overcome the obviousness rejection of claim 27. See
Final Act. 11. Appellant's Appeal Brief, however, includes claim 27 and
discusses why it is patentable over Kim (namely, because it shares
limitations similar to the other independent claims at issue in this Appeal).
See Appeal Br. 10-18. Because we review the decision of the Examiner
presented in the Final Office Action, and because the Examiner indicated
claim 27 was allowed in the November 12, 2013 Advisory Action, we do not
consider claim 27 to be a subject of this appeal. Nevertheless, in case the
Examiner intended to include an art rejection of claim 27, and presuming
such an obviousness rejection of claim 27 would be similar to those issued
for claims 1, 17, and 25 (see, e.g., Non-Final Office Action 5 (mailed March
20, 2013)), for the reasons discussed in this appeal, we agree with Appellant
that Kim fails to disclose a system that "set[ s] a range of distances which
includes the calculated distance" or "in response to the calculated distance
being beyond the set range of distances, reset[ s] the range of distances to
include the calculated distance," as required by claim 27.
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Application 11/429,249
wherein the storage medium is a non-transitory storage medium
and the video game program instructs the computer to perform:
a distance data calculation including calculating distance
data associated with a distance between the game controller and
a constant measured reference structure provided in a real space,
by using the control data obtained from the game controller,
wherein the measured reference structure has a constant
measured spatial dimension and the control data includes
information of a view from the perspective of the game controller
of the constant measured spatial dimension;
defining an effective range which includes the calculated
distance and is based on a first distance value greater than the
calculated distance and a second distance value shorter than the
calculated distance;
calculating effective range position data representing at
least one position of the game controller in the effective range
based on a calculation of a second distance between the game
controller and the constant measured reference structure,
wherein the calculation of the second distance occurs after the
definition of the effective range;
a game process including performing a game process on a
virtual game world through an operation based on the effective
range position data; and
a display process including displaying, on a display
device, the virtual game world after the game process.
Appeal Br. 21-22 (Claims App.).
REJECTIONS3
I. The Examiner rejected claims 1, 2, 12-17, and 24--26 under 35
U.S.C. § 103(a) as unpatentable over Kim (WO 2004/012130
Al, pub. Feb. 5, 2004).
3 The Examiner's rejections of claims 22, 24, and 27 under 35 U.S.C. § 112,
i-f 2, have been withdrawn. Ans. 2.
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Application 11/429,249
IL The Examiner rejected claims 6 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Kim and Martin (US 6,067,007,
iss. May 23, 2000).
ANALYSIS
Rejection I
The issue at the heart of this appeal is one of claim construction:
whether each of independent claims 1, 17, and 25 requires a method (or
system that executes instructions to perform steps) that first calculates the
distance of a controller in real space and, subsequently, uses that calculated
distance to define an effective range associated with the controller. The
Examiner characterizes this dispute as follows:
Appellant would like examiner to read in an unstated limitation
that these calculating and determining steps are occurring during
game play and examiner has declined to do so. The calculation
and effective range determination are performed either by a
programmer as part of creating the game or by the game system
itself as part of an operator set up routine ....
Ans. 2. In response, Appellant states:
The effective range is a range of distances which includes
the calculated distance. Because it includes the calculated
distance, the effective range cannot be defined without knowing
the calculated distance. In a manner similar to claim 1,
independent claims 17, 25 and 27 require defining an effective
range to include a calculated distance. The need to know the
calculated distance to define the effective range is not an unstated
timing limitation.
Reply Br. 1-2. Resolving the scope of the claims is dispositive because
Appellant's patentability argument is that Kim does not utilize the actual
distance between a controller and a display to establish an effective range.
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Application 11/429,249
Appeal Br. 12-18. Instead, Appellant contends, Kim utilizes a
predetermined distance, or range of distances, to establish where a controller
should be located relative to a display and compares the actual distance of
the controller to that value, or range of values, to effect game play. Id.;
Reply Br. 2-3.
Independent claims 1, 17, and 25 each use language indicating a
process for calculating a distance, in real space, of the controller relative to a
reference structure. Claim 1 recites, "calculating distance data associated
with a distance between the game controller and a constant measured
reference structure provided in a real space, by using the control data
obtained from the game controller"; claim 17 recites, "calculating a first
distance representative of a real space distance between the controller and
the reference structure"; and claim 25 recites, "calculate a first distance
representative of an actual physical distance between the game controller at
afirst instance and the reference structure."4 Appeal Br. 21-26 (Claims
App.) (emphasis added). The plain meaning of the above claim language
indicates the "distance data" and "first distance" is a value representing the
actual location, in real space, of the controller relative to a reference
structure.
Consistent with the claim language, the Specification describes,
"calculating distance data associated with a distance ( d) between the game
controller and a predetermined measured reference provided in a real space,
4 Claim 27 recites, "calculate in real time a calculated distance
representative of an actual physical distance between the controller and the
reference structure based on the control data." Appeal Br. 26 (Claims App.).
As such, our analysis of the claim construction issue for claims 1, 17, and 25
applies equally to claim 27. See supra note 2.
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Application 11/429,249
by using the control data obtained from the game controller." Spec. 4:4-7.
In addition, the distance data calculation "calculates the distance data
associated with the distance between the game controller and the imaging
target, by using the captured image itself or the result of performing a
predetermined operation on the captured image included in the control data."
Id. at 4: 18-22. Lastly, the Specification sets forth a process for using the
reference structure and the data received from the controller to calculate the
distance separating the controller and the reference structure in the real
world. Id. at 44:8--45:20. Therefore, in view of the claim language and the
Specification, we agree with Appellant that each independent claim requires
either a "distance data" or "first distance" calculation, which is
representative of the actual "distance in the real world between a game
controller and a reference structure, such as a display." Appeal Br. 13.
Independent claims 1, 17, and 25 also recite, "an effective range" or
"an effective distance range," which have a value dependent upon either the
calculated "distance data" or "first distance." Specifically, claim 1 recites,
"defining an effective range which includes the calculated distance and is
based on a first distance value greater than the calculated distance and a
second distance value shorter than the calculated distance"; claim 17
recites, "defining an effective range as between a first distance from the
reference structure to a second distance from the reference structure, wherein
the effective range is defined to include the calculated first distance between
the controller and the reference structure"; and claim 25 recites, "define an
effective distance range wherein the first distance between the game
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Application 11/429,249
controller and the reference structure is within the effective range."5 Appeal
Br. 21-26 (Claims App.) (emphasis added). The plain meaning of the above
claim language indicates that the minimum and maximum distance values of
the "effective range" and "effective distance range" must encompass the
calculated value of the actual distance separating a game controller in the
real world from a reference structure, such as a display (i.e., "calculated
distance" or "first distance").
Appellant's Specification supports and is consistent with this
interpretation. For example, the Specification states:
The effective range as used herein refers to a range defined for
the position of the controller 7 with respect to a reference. A
value based on the position of the controller 7 with respect to the
effective range is given to the video game program and used in
the game process. In the present embodiment, the distance d
from the markers SL and SR to the tip of the controller 7 is used
as the value representing the position of the controller 7.
Therefore, the effective range is defined with respect to the
distance d, \vith the lov,rer limit of the effective range being 0 and
the upper limit thereof being 1. A value between 0 to +l
according to the position of the controller 7 in the effective range
is selected as the value according to the position of the
controller 7. . . . While the effective range is defined in the
illustrated example so that its center coincides with the position
of the controller 7, the present invention is not limited thereto,
and the effective range can be defined in any manner as long as
the initial position of the controller 7 is included therein.
5 Claim 27 introduces a similar concept by reciting: "set[ s] a range of
distances which includes the calculated distance" and "in response to the
calculated distance being beyond the set range of distances, reset[ s] the
range of distances to include the calculated distance." Appeal Br. 26-27
(Claims App.). As such, our analysis of the claim construction issue for
claims 1, 17, and 25 applies equally to claim 27. See supra note 2.
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Spec. 47: 16-48: 18; see also id. at 48: 19-52:7, Figs. 15, 17 A, and 17B. In
view of the above description and the related claim language, we also agree
with Appellant that independent claims 1, 17, and 25 require the actual
distance separating a game controller from a reference structure to be
determined before the "effective range" and "effective distance range" can
be established. Reply Br. 1-2. Furthermore, we agree that "the need to
know the calculated distance [associated with the actual location of the
controller in the real world] to define the effective range is not an unstated
timing limitation." Id.
The Examiner finds Kim's disclosure of a "standard position" or
"reference distance Do" corresponds to the claimed "distance data" and "first
distance" calculation. Final Act. 4--5, 7, 9; see also, Ans. 3 (finding "Do, or
standard position, is interpreted to be a calculated distance"). A
preponderance of the evidence does not support this finding. As discussed
above, the claimed "distance data" and "first distance" calculations refer to a
determination indicative of the actual distance in the real world between the
controller and a reference structure.
In contrast, Kim teaches that Do, or standard position, is a "set" value,
which may be a distance that is proportional to the actual size of a display
screen or randomly selected. Kim 15: 1, 7-8. Appellant correctly notes Kim
utilizes the standard position, Do, to establish a desired location for the
controller and compares the actual location of the controller, D, to the
desired location to effect game play (i.e., changes the operation of the game
based on how close or far away the controller actually is to the desired
location set for the controller). See Reply Br. 2 (citing Kim 5:24--6:2,
22:24--23:4). The Examiner has not identified any evidence showing Kim
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Application 11/429,249
contemplates setting the reference distance Do, or standard position, to a
calculated value representing how far away the controller actually is from a
reference structure in the real world.
The Examiner also finds Kim's disclosure of a range of reference
distances, Doa-Dob, corresponds to the claimed "effective range" and
"effective distance range." Final Act. 5, 7-9 (citing Kim 22:22-27); see also
Ans. 3 (finding "Doa-Dob are an effective range around [the Do, or standard
position,] distance"). But, a preponderance of the evidence fails to support
this finding as well.
As we explain above, the claimed "effective range" and "effective
distance range" require a range that encompasses the calculated value of the
actual distance separating a game controller in the real world from a
reference structure (i.e., "calculated distance" or "first distance").
Explaining "Doa-Dob", Kim states,
when the reference distance Do is not a point but a distance
having a certain variation range, the variation range is set to
Doa-Dob. If the distance D is measured and the measured distance
D falls within the variation range, a normal state is maintained
and a normal game is provided at step S 104. If the measured
distance D does not satisfies the variation range, that is, the
measured distance D is a shorter distance D 1 or greater distance
Do, the degree of difficulty or the situations of the game are
changed at step S 105. That is, the game environment of a
different condition is provided depending upon a distance from
the model gun 10, which induces the player to have an interest in
the game.
Kim 22:25-23:4. The above passage makes clear that Doa-Dob and Do are
both reference/ standard positions representing the desired location for the
controller. Notably, rather than a range encompassing Do, as the Examiner
finds, Kim teaches using the range Doa-Dob as an alternative to Do, when it is
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desirable to have a varying reference/standard position versus one that is a
point.
As Appellant correctly asserts (Appeal Br. 14--16), Kim teaches
Doa-Dob is a preset range of desired locations for the controller, which is
determined independently of where the controller is actually located, and is
subsequently compared to the actual location of the controller to effect game
play (i.e., changes the operation of the game based on how close or far away
the controller actually is to the desired location set for the controller). See
Kim 5:26---6:2, 8: 17-20, 22:25-23:4. The Examiner does not explain why a
skilled artisan would understand the range Doa-Dob to encompass Do, or to
use Do to establish Doa-Dob, even if Do were characterized properly as
disclosing the claimed "distance data" and "first distance" calculations. The
Examiner, furthermore, provides no evidence or reasoning to support a
finding that a skilled artisan would understand Kim as disclosing the use of
the measured distance D, which is a calculated value of the actual distance
separating a game controller in the real world from a reference structure, to
establish the range Doa-Dob.
Therefore, for the foregoing reasons, we do not sustain the Examiner's
rejection of claims 1, 2, 12-17, and 24--26 under 35 U.S.C. § 103(a) as
unpatentable over Kim.
Rejection II
Claim 6 depends from claim 1, and claim 22 depends from claim 1 7.
Appeal Br. 22, 24 (Claims App). The Examiner does not cite Martin to cure
the deficiencies of Kim discussed above (see supra, Rejection I) regarding
independent claims 1 and 17. For similar reasons set forth above regarding
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claims 1 and 17, therefore, we likewise do not sustain the Examiner's
rejection of claims 6 and 22 as unpatentable over Kim and Martin.
SUMMARY
We reverse the Examiner's decision to reject claims 1, 3-5, and 7-9.
REVERSED
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