Ex Parte Kawamoto et al

Patent Trial and Appeal Board

Jan 29, 2014

10895078 (P.T.A.B. Jan. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KOUICHI KAWAMOTO and TOSHIAKI SUZUKI
____________________

Appeal 2011-010561
Application 10/895,078
Technology Center 3700
____________________

Before EDWARD A. BROWN, MITCHELL G. WEATHERLY, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010561
Application 10/895,078

2
STATEMENT OF THE CASE
Kouichi Kawamoto et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 21-33. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b) (2013).

CLAIMED SUBJECT MATTER
Claims 21, 23, and 30-33 are the independent claims on appeal.
Claim 21 is illustrative of the claimed subject matter and reads:
21. A game system for causing a three-
dimensional virtual game space to be displayed on a
display device in a direction of a predetermined line of
sight, the three-dimensional virtual game space having a
plurality of objects appearing therein, and at least two of
the plurality of objects being set as selected objects, the
game system comprising:
a movement controller to control the movements
of the objects;
a line-of-sight direction setting programmed logic
circuitry to set the direction of the line of sight;
a frame-setting-plane setting programmed logic
circuitry to set a frame planar area in the three-
dimensional game space;
a frame-coordinate-value calculator to calculate,
for each of the selected objects, a frame coordinate
value indicative of a point of intersection of the frame
planar area and a straight line passing through the
selected object in the three-dimensional game space and
extending along the line of sight set by the line-of-sight
direction setting programmed logic circuitry;
a frame setting programmed logic circuitry to
virtually set a rectangular frame defining the frame
planar area, the frame including every position indicated
Appeal 2011-010561
Application 10/895,078

3
by a frame coordinate value for each of the selected
objects;
a frame deforming programmed logic circuitry to
deform the frame set by the frame setting programmed
logic circuitry in accordance with movements of the
selected objects;
a view volume determination unit determining
each vertex of a view volume, wherein each vertex is on
a straight line passing through a vertex of the frame
deformed by the frame deforming programmed logic
circuitry and extending along the line of sight set by the
line-of-sight direction setting programmed logic
circuitry;
a display controller to cause the game space to be
included in the view volume determined by the view
volume determination unit to be displayed on the
display device, and
a selected object changing programmed logic
circuitry to add a new selected object or delete at least
one of the selected objects,
wherein, when every position indicated by the
frame coordinate value of each of the selected objects is
moved by at least a predetermined distance inward from
one side of the frame on the frame planar area, the
frame deforming programmed logic circuitry deforms
the frame so that the side is moved towards the inside of
the frame,
when a position indicated by a frame coordinate
value of anyone of the selected objects is moved outside
of one side of the frame on the frame planar area, the
frame deforming programmed logic circuitry deforms
the frame so that the side is moved towards the outside
of the frame, and
when an addition or a deletion is performed by
the selected object changing programmed logic
circuitry, the frame deforming programmed logic
circuitry deforms the frame so that a moving distance of
one side of the frame per predetermined unit time is
shorter than a predetermined distance.
Appeal 2011-010561
Application 10/895,078

4
REJECTION
Claims 21-33 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Heisei1 (JP 2002-163676; published Jul. 6, 2002) and Ishihata2 (WO
02/47780 A1; published Jun. 20, 2002).

ANALYSIS
Rejection of Claims 21-33
The Examiner found that Heisei discloses the game system and
method recited in claims 21, 23, and 30-33 except for the limitations (a) “a
selected programmed logic circuitry to add a new selected object or delete at
least one of the selected objects,” and (b) “when an addition or a deletion is
performed by the selected object changing programmed logic circuitry, the
frame deforming programmed logic circuitry deforms the frame so that a
moving distance of from one side of the frame per predetermined unit time is
shorter than a predetermined distance.” Ans. 5. Claims 21, 23, and 30 recite
limitations “a” and “b,” and claims 31-33 recite steps similar to these
limitations. The Examiner found that Ishihata discloses limitations “a” and
“b” and concluded that it would have been obvious to one of ordinary skill
in the art to combine the teachings of Heisei and Ishihata “to allow for a
dynamic set of objects to be chosen to be displayed by the display device.”
Id.

1 We refer herein to the English-language computer translation of Heisei as
“Heisei.”
2 The Examiner indicates that US Patent No. 7,336,276 B2, which issued
February 26, 2008 to Ishihata et al., is an English-language equivalent to JP
2002-163676 (Ans. 3), and cites to the ‘276 patent. For consistency, we also
refer herein to the ‘276 patent when referring to Ishihata.
Appeal 2011-010561
Application 10/895,078

5
Appellants contend that the claimed invention positions a two-
dimensional (2D) frame in a three-dimensional (3D) game space to capture
an image of selected virtual objects in the game space. App. Br. 22.
Appellants contend that the claimed “frame” or “frame planar area” defines
the display (id.), and the “frame” is determined based on the positions of
objects (id. at 23).
Appellants contend that Heisei and Ishihata do not determine a display
area based on “a frame planar area” (claims 21, 23, 31, and 32) or “a
rectangular frame” (claims 30 and 33) as claimed. Id. Appellants contend
that Heisei and Ishihata position a virtual camera in 3D game space to
capture an image of the game space, determine the display area with the
virtual camera, and establish an area of a game space to be displayed by
moving the viewpoint of the virtual camera. Id. at 22-23.
In response, the Examiner stated that “a virtual camera is a frame
planar area.” Ans. 7. Appellants contend that the Examiner incorrectly
equated the field of view captured by a virtual camera with the claimed
frame planar area because the field of view cannot be deformed as claimed.
Reply Br. 1. Appellants contend that when a virtual camera is moved
forward or backward, the entire planar area in the field of view contracts or
expands and all sides of the planar area shorten or enlarge. Id. at 1-2.
Appellants contend that a virtual camera does not allow adjustment of
individual sides of the planar area in the field of view and thus cannot
directly manipulate a side of the frame planar area. Id. at 2.
Appellants also contend that the Examiner incorrectly equated
Heisei’s “boundary box” with the claimed “frame planar area.” App. Br. 23.
Appellants contend that Heisei teaches that the field of view of the virtual
Appeal 2011-010561
Application 10/895,078

6
camera includes the “boundary box” around virtual objects (id. (citing
Heisei, para. [0008])) used to determine whether the objects are included in
the screen image captured by the virtual camera (id). Appellants also
contend that if the boundary box extends outside the camera’s field of view,
the camera is adjusted to include the entire boundary box. Id. at 23-24.
Appellants further contend that Heisei shows the boundary box at least
partially outside of the field of view of the virtual camera and outside of the
displayed area (id. at 24)3 and, for this reason, does not define the frame to
be displayed (id.).
We note that Drawing 4(A) of Heisei shows boundary box 200
partially outside screen area 250, and Drawing 4(B) shows boundary box
200 entirely outside screen area 250. See also Heisei, paras. [0068]-[0069].
Heisei states “[i]t is required in any case, to change the position of the
virtual camera of a frame or direction this time so that the boundary box for
a judgment may be settled in a screen area.” Id. at para. [0069] (emphasis
added). Drawing 5 of Heisei shows how a virtual camera is moved when the
boundary box is not in the screen area. Id. at para. [0070]. Heisei discloses
a virtual camera, screen area 320 determined by the virtual camera when at
position 310, boundary box 330, objects 340 inside boundary box 330, and

3 Appellants reference Figures 12a and 12b; 5a and 5b; 6a, and 8a in Heisei.
App. Br. 24. Heisei depicts and describes “Drawing 5” (see Heisei, paras.
[0070]-[0077]), “Drawing 6” (see Heisei, paras. [0078]-[0085]), “Drawing
8” (see Heisei, paras. [0088]-[0093]), and “Drawing 12” (see Heisei, paras.
[0109]-[0110]), but none of these drawings includes the caption “a” or “b.”
It appears that Appellants may be referring to Drawings 7(A) and 7(B)
(shown above the caption “Drawing 12”) as Figures 12a and 12b; Drawings
4(A) and 4(B) (shown above the caption “Drawing 5”) as Figures 5a and 5b;
Drawing 5 (shown above the caption “Drawing 6”) as Figure 6a; and
Drawing 6 (shown above the caption “Drawing 8”) as Figure 8a.
Appeal 2011-010561
Application 10/895,078

7
screen area 324 determined by the virtual camera when moved to position
314. See also Heisei, paras. [0070]-[0077]. Boundary box 330 is partially
outside screen area 320 and entirely within screen area 324. Drawing 6 of
Heisei shows how a virtual camera is rotated when the boundary box is not
in the screen area. Id. at para. [0078]. Drawing 6 shows a virtual camera,
screen area 420 determined by the virtual camera when at position 410,
boundary box 430, objects 440 inside boundary box 430, and screen area
424 determined by the virtual camera when rotated to position 414. See also
Heisei, paras. [0078]-[0085]. Boundary box 430 is shown partially outside
screen area 420 and entirely within screen area 424.
Claim 21 recites the limitation:
when every position indicated by the frame
coordinate value of each of the selected objects is
moved by at least a predetermined distance inward
from one side of the frame on the frame planar
area, the frame deforming programmed logic
circuitry deforms the frame so that the side is
moved towards the inside of the frame.
Emphasis added. Claim 21 further recites the limitation “when a position
indicated by a frame coordinate value of any one of the selected objects is
moved outside of one side of the frame on the frame planar area, the frame
deforming programmed logic circuitry deforms the frame so that the side is
moved towards the outside of the frame.” Emphasis added. Claims 23 and
30-33 each recite similar limitations. The Examiner indicated that Heisei
discloses these limitations at paragraph 14. Ans. 4-5. However, this
paragraph does not appear to disclose these limitations. See Heisei, para.
[0014].
Appeal 2011-010561
Application 10/895,078

8
We also note that Drawings 5 and 6 of Heisei do not appear to show
either moving a side of the boundary box “towards the inside of the frame”
(i.e., relative to the inside of the boundary box itself) or “towards the outside
of the frame” (i.e., relative to the outside of the boundary box itself).
Appellants also contend that Heisei’s boundary box is not the same as,
and does not define, the field of view of the virtual camera, but is a tool used
to check whether the field of view includes all of the objects in the boundary
box. Reply Br. 2 (citing Heisei, para. [0047]). As discussed supra,
Appellants correctly contend that the virtual camera is moved to adjust the
field of view to include the boundary box. Id. at 2-3 (citing Heisei, paras.
[0129]-[0134]).
Appellants also contend that Ishihata does not teach limiting
adjustments to the sides of the frame when virtual objects are selected or
deselected (deleted) in the frame shown on the display. App. Br 25
(referring to claim limitation “b” discussed supra). Appellants contend that
Ishihata teaches changing a camera viewpoint to include objects in the
virtual game space, not changing the shape of a frame in accordance with the
positions of objects to be displayed, or setting a limit on the deformation of a
frame. Id. at 25-26. The Examiner found that Figure 7 of Ishihata shows a
virtual camera as it zooms out on objects. Ans. 7. We note that Figure 7
shows moving a camera viewpoint C1-C3 to accommodate objects P1-P4
within the field of vision. See also Ishihata, col. 7, ll. 41-65. Figure 7 does
not show a side of a frame being moved “towards the inside of the frame” or
“towards the outside of the frame,” as claimed.
The Examiner also referenced Figures 5A-5C of Ishihata. Ans. 9-11.
However, these figures also do not appear to show a side of a frame being
Appeal 2011-010561
Application 10/895,078

9
moved “towards an inside of the frame” or “towards the outside of the
frame,” as claimed. Rather, we note that Ishihata discloses that the
viewpoint is moved in these figures. See Ishihata, col. 12, ll. 22-58.
Claim 21 recites “the frame deforming programmed logic circuitry
deforms the frame so that a moving distance of one side of the frame per
predetermined unit time is shorter than a predetermined distance.”
Emphasis added. The Examiner stated “if the predetermined distance is
infinite, any distance would read on this limitation.” Ans. 12. Appellants
contend that it is unreasonable to construe “predetermined distance” as
infinite because this term has no bounds or end. Reply Br. 3. We agree with
Appellants that the Examiner’s construction renders the requirements
limiting the change to the frame planar image superfluous. Id. at 4.
The Examiner also found that Ishihata discloses automatically
returning the viewpoint “at a slow predetermined state.” Ans. 12 (citing
Ishihata, col. 13, l. 66 - col. 14, l. 3). However, the Examiner did not make a
finding that Ishihata discloses the limitation reciting “a moving distance of
one side of the frame per predetermined unit time is shorter than a
predetermined distance,” as claimed.
In view of the above, we do not sustain the obviousness rejection of
claims 21-33.

New Ground of Rejection
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Claims 31-33 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Appeal 2011-010561
Application 10/895,078

10
Independent claims 31-33 are each directed to “[a] computer-readable
storage medium stored therein a game program.” We do not find any
description in Appellants’ Specification limiting the scope or meaning of
this limitation.4 We only note the description stating “an optical disc 4,
which is one example of an information storage medium storing a game
program.” See Spec. para. [0030]. Under the broadest reasonable
interpretation, the “computer-readable storage medium” of claims 31-33
encompasses transitory signals. Accordingly, claims 31-33 are directed to
non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1357-58
(Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is not a
‘process, machine, manufacture, or composition of matter.’... [T]hus, such a
signal cannot be patentable subject matter.”); see also Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) (“A claim drawn to such a computer readable medium that
covers both transitory and non-transitory embodiments may be amended to
narrow the claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the
claim.”).
In light of the above, we conclude that claims 31-33 are directed to
non-statutory subject matter under 35 U.S.C. § 101.

DECISION
The Examiner’s decision rejecting claims 21-33 is REVERSED.
This decision contains a NEW GROUND OF REJECTION of claims
31-33 pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground

4 We refer to the Substitute Specification filed on February 23, 2007.
Appeal 2011-010561
Application 10/895,078

11
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 ground 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 proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

hh