Ex Parte Liccardo

Patent Trial and Appeal Board

Dec 18, 2013

11466476 (P.T.A.B. Dec. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/466,476 08/23/2006 Anthony J. Liccardo LIC000-00US 2056
112006 7590 12/18/2013
Graham Curtin, P.A.
4 Headquarters Plaza
Morristown, NJ 07962
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
12/18/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________

Ex parte ANTHONY J. LICCARDO
____________________

Appeal 2011-008633
Application 11/466,476
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
WILLIAM A. CAPP, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/466,476

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STATEMENT OF THE CASE
Anthony J. Liccardo (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 4-11, and 14-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter.
1. A method of video gaming by a player, comprising:
a computer operating a video game on a processor;
the computer displaying at a beginning of the video game
a screen having a plurality of characters, the computer
rendering each of the plurality of characters in a uniform
representative of a different manual labor trade so that the
player can select one of the plurality of characters;
the player selecting one of the plurality of characters on
the computer and the computer generating the selected
character;
the computer generating at least one enemy character;
the computer, based on the selected one of the plurality
of characters, generating a plurality of weapons for use by the
selected character in the trade, each of the plurality of weapons
being a tool used by the selected character;
based on the selected character, the computer selecting
and generating one fight environment from a plurality of fight
environments, each of the plurality of fight environments having
one or more structures related to one of the plurality of
characters and the selected and generated fight environment
being related to the selected character;
displaying the selected character, the at least one enemy
character and at least one of the plurality of weapons in the
fight environment and controlling the actions of the selected
character and the at least one of the plurality of weapons in the
fight environment based on controls selected by the player in a
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fight between the selected character and the at least one enemy
character.

Rejections
Claims 1, 4-7, 11, and 14-17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Final Fantasy1 and Oishi2.
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Final Fantasy, Oishi, Super Mario3, Electrician4, Mario
Bros.5, and Super V.G.6
Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Final Fantasy, Oishi, and Mortal Kombat
Deception7.

OPINION
Appellant relies on the same arguments asserted for independent
claim 1 in contesting the rejection of independent claim 11. Appellant does
not present any separate arguments for dependent claims 4-7 and 14-17 apart
from their independent claims 1 and 11. See App. Br. 14. Thus, pursuant to

1 FINAL FANTASY TACTICS instruction booklet, Squaresoft (1988).
2 US 6,340,330 B1, iss. Jan. 22, 2002.
3 SUPER MARIO RPG – LEGEND OF THE SEVEN STARS instruction
booklet, Nintendo of America, Inc. (1996).
4 YouTube – Let’s Randomly Play Famicom Games – Electrician (1986),
available at http://www.youtube.com/watch?v=iBj6Mf0VSs.
5 MARIO BROS. instruction booklet, Nintendo, Inc. (1983).
6 SUPER V.G. – Variable Geo 1.1 (2002), available at
http://www.gamefaqs.com/conso1e/snes/fi1e/564301/14903.
7 MORTAL KOMBAT DECEPTION instruction booklet, Midway Home
Entertainment, Inc. (2004).
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37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as representative, with
claims 4-7, 11, and 14-17 standing or falling therewith.
Appellant argues that Final Fantasy lacks the italicized features of
claim 1, and that the Examiner does not rely on Oishi to teach or suggest
these features. App. Br. 12-13.
In particular, Appellant asserts that while Final Fantasy shows
characters displayed in the game, it does not display a plurality of characters
“in a uniform representative of manual labor trades.” App. Br. 13. Instead,
according to Appellant, Final Fantasy shows “fighting characters in fighting
uniforms.” Id.
The Examiner contends that there is no novel and unobvious
functional relationship between the graphics decorating the characters (i.e.,
the recitation of the rendering of characters in manual labor trade uniforms)
and the underlying video game. Ans. 14. Consequently, according to the
Examiner, the recitation of rendering the characters in uniforms
representative of manual labor trades does not patentably distinguish the
claimed video gaming method from that of Final Fantasy, which Appellant
asserts shows characters attired in fighting uniforms. Id.
“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms of patentability.” In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Citing In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994), Appellant
argues that the principle of non-functional descriptive material (i.e., printed
matter) is not applicable to the present case because, in the present
application, “whatever can be considered printed matter is generated and
processed by a computer.” App. Br. 13-14. However, Lowry does not, as
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Appellant suggests, stand for the proposition that the “printed matter” cases
have no application in situations involving computer systems and data stored
on a memory. In the Lowry case, the Federal Circuit determined that
Lowry’s data structures, a plurality of attribute data objects (ADOs), were
not analogous to printed matter because they perform a function and
“provide increased efficiency in computer operations.” Lowry, 32 F.3d at
1580, 1584. In determining that the data structures were not analogous to
printed matter, the court noted that “Lowry’s ADOs do not represent merely
underlying data in a database.” Id. at 1583; see also id. (“Indeed, Lowry
does not seek to patent the Attributive data model in the abstract. Nor does
he seek to patent the content of information resident in a database. Rather,
Lowry's data structures impose a physical organization on the data.”). In the
claims before us, the recited rendering of each of the characters “in a
uniform representative of a different manual labor trade” is merely the
display of underlying graphics data stored in a memory. This uniform data
does not functionally affect the operation of the memory or the processor.
As noted by the Examiner, the graphics that “decorate the characters” are
“purely cosmetic” and do not change the underlying fighting game at all.
Ans. 14. Stated differently, this graphics data is “useful and intelligible only
to the human mind,” and thus cannot impart patentability to Appellant’s
claimed gaming method. Lowry, 32 F.3d at 1583 (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)); see also King Pharmaceuticals, Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (confirming that the
rationale underlying the printed matter cases extends to method claims as
well).
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For the above reasons, Appellant fails to convince us that the
Examiner erred in determining that the claim recitation “in a uniform
representative of a different manual labor trade” does not patentably
distinguish the subject matter of claim 1 from the video game of Final
Fantasy, which Appellant acknowledges shows characters attired in fighting
uniforms.
Appellant also argues that Final Fantasy “does not teach or suggest
generating a plurality of weapons for [use] based on a selected character,”
and that the Examiner does not rely on Oishi to teach or suggest this feature.
App. Br. 12. According to Appellant, the weapons shown on pages 24-26 of
Final Fantasy “are for jobs that ‘appear in the game.’” Id.
The Examiner finds that the player selects one of a plurality of
characters by exercising the “Change Job” option.8 Ans. 4; see Final
Fantasy 23. The Examiner finds that in Final Fantasy, the computer
generates a plurality of weapons for use by the selected character, each of
the plurality of weapons being a tool used by the selected character. Ans. 5,
12; see Final Fantasy 24-26. The Examiner further finds that “[w]hen the
battle scene is generated, the character is shown with weapons that are
generated specifically for the job of the character selected by the players.”
Ans. 12. Appellant does not specifically contest any of these findings.

8 Further, the Examiner determines that, while Final Fantasy does not
explicitly indicate whether a player selects a character and job (via the
“Change Job” option) when beginning a game or may only select new jobs
once the game is underway, it would have been obvious to permit a Final
Fantasy player to select a character at the beginning of the game, as taught
by Oishi, “to allow a player to customize their game characters to make the
game more enjoyable.” Ans. 6.
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The Examiner’s findings establish that in Final Fantasy the computer
generates a plurality of weapons for use by the selected character, based on
the selected character.
Appellant additionally argues that Final Fantasy fails to teach or
suggest the computer selecting and generating, based on the selected
character, a fight environment “related to the selected character” and
“having one or more structures related to one of the plurality of characters.”
App. Br. 12.
The Examiner points out that the various job characters of Final
Fantasy, such as warriors, monks, and priests, for example, are not restricted
to one location and can carry out their job anywhere, i.e., on any battlefield.
Ans. 12. Thus, the Examiner contends that each fighting environment
(battlefield) generated in Final Fantasy “is an appropriate background for the
selected characters.” Id. Given the breadth of the term “related,” and the
absence of any explicit definition of that term in Appellant’s Specification
dictating a more narrow construction than that applied by the Examiner, the
Examiner’s finding that Final Fantasy’s generated battlefields are “related to
the selected character” is reasonable.
The Examiner additionally finds that Final Fantasy generates a
fighting environment that includes a monastery. Ans. 12; see Final Fantasy
8 (disclosing Orbonne Monastery as the site of the first battle). This finding
adequately addresses the claim limitation that the generated fighting
environment has one or more structures (i.e., the Monastery) related to one
of the plurality of characters (i.e., a Monk). See Final Fantasy 24 (disclosing
a Monk as one of the job characters).
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For the above reasons, Appellant’s arguments fail to apprise us of
error in the Examiner’s rejection of claim 1 as being unpatentable over Final
Fantasy and Oishi. We sustain the rejection of claim 1 and of claims 4-7,
11, and 14-17, which fall with claim 1.
In contesting the rejections of the remaining dependent claims,
Appellant merely relies on the arguments asserted against independent
claims 1 and 11. See App. Br. 15-16. These arguments fail to apprise us of
error in the Examiner’s rejections, for the reasons set forth above. Thus, we
also sustain the rejections of claims 8-10 and 18-20 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s decision rejecting claims 1, 4-11, and 14-20 is
affirmed.
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).
AFFIRMED

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