Ex Parte Mayer et al

Board of Patent Appeals and Interferences

Aug 29, 2008

10139637 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UMRAO MAYER, BOB BAKER, JOHN BRANDWOOD,
MIKE KNAUER, and COLIN PALMER
____________

Appeal 2008-4208
Application 10/139,637
Technology Center 3700
____________

Decided: August 29, 2008
____________

Before JAMES D. THOMAS, JAY P. LUCAS,
and CAROLYN D. THOMAS, Administrative Patent Judges.
THOMAS J., Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, and 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2008-4208
Application 10/139,637

As expressed at the top of page 10 of the Specification as filed:
In accordance with the preferred embodiment of the invention [See
figure 7], a first analog joystick is used to control the directional
movement of the player while a second analog joystick is used to pass
the ball. An important advantage of the invention is that it makes the
moving direction and the passing direction independent from one
another.

Thus, the passing of a virtual ball in a game in one direction may be
different than the direction which the virtual player in the game is moving on
the virtual playing field. This is generally said to enhance gameplay.
These concepts are expressed in independent claim 1 on appeal:
1. In a sports videogame having at least two virtual teams, wherein a
user, using a game controller having a first joystick and a second joystick,
interactively controls a game player having a game object used to score
points in a virtual game environment, the method comprising:

monitoring signals from the first joystick, operable to adjust a
direction in which the player moves, wherein when a signal directing player
movement is received from the first joystick, determining in which direction
the joystick is pressed and directly controlling the movement of the game
player by moving the game player in a direction corresponding to the
direction in which the first joystick is pressed, and wherein the first joystick
is further operable to adjust the speed of a player, based on an angle of
inclination thereof;

monitoring signals form the second joystick, operable to cause a pass
upon reaching a predetermined angular threshold, while the movement of the
player is being controlled by the first joystick, wherein the second joystick is
further operable to control at least the speed, the type, or the distance of the
pass based an angle of inclination thereof:

determining in which direction the second joystick is pressed when a
signal from the second joystick indicating the pass is received and displaying
the pass of the game object in a direction corresponding to the direction in
2
Appeal 2008-4208
Application 10/139,637

which the second joystick is pressed, while simultaneously, at the time the
pass is indicated, allowing the user to indicate a new moving direction for
the game player by detecting a change in the direction in which the first
joystick is pressed, and directly controlling the movement of the game
player based on the new direction in which the first joystick is pressed;

providing a plurality of trick animations for the player that display the
player moving in one direction while passing in another direction; and

selecting a trick animation for display form the plurality of animations
when the user causes the player to pass in a direction that is different from
the direction that the player is moving in at the time of the pass.

The following references are relied on by the Examiner:

Barnes US 5,929,844 Jul. 27, 1999
Couch US 6,033,309 Mar. 7, 2000
DeVolpi US 6,067,005 May 23, 2000
Mathias US 6,196,917 B1 Mar. 6, 2001

Cliams 1, 3, and 5 stand rejected under 35 U.S.C. § 103. As evidence
of obviousness, the Examiner relies upon Mathias in view of Couch, further
in view of Barnes and DeVolpi.
Rather than repeat verbatim the positions of the Appellants and the
Examiner, reference is made to the Brief and Reply Brief for Appellants’
positions, and to the Answer for the Examiner’s positions.

OPINION

For the reasons well expressed by the Examiner in the Answer, the
rejection of claims 1, 3, and 5 on appeal is sustained as embellished upon
3
Appeal 2008-4208
Application 10/139,637

here. No arguments are presented in the Brief and Reply Brief as to
dependent claims 3 and 5 on appeal.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at 1740.
The Court noted that “[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 1742.
4
Appeal 2008-4208
Application 10/139,637

The Federal Circuit recently concluded that it would have been
obvious to combine (1) a device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) a
processor-driven device capable of playing the sound associated with a first
letter of a word in a book. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007). In reaching that conclusion, the
Federal Circuit recognized that “[a]n obviousness determination is not the
result of a rigid formula disassociated from the consideration of the facts of a
case. Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not.” Id.
at 1161 (citing KSR, 127 S. Ct. 1727, 1739 (2007)). The Federal Circuit
relied in part on the fact that Leapfrog had presented no evidence that the
inclusion of a reader in the combined device was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. (citing KSR, 127 S. Ct. at 1740-41).
In the absence of separate arguments with respect to claims subject to
the same rejection, those claims stand or fall with the claim for which an
argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Dovetailing with this precedent, we note further that the test for
obviousness has been further characterized as not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. It is also not that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
5
Appeal 2008-4208
Application 10/139,637

those of ordinary skill in the art. In re Keller, 642 F.2d 414, 425 (CCPA
1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the ‘analogous-art’ test . . . has long been part of the primary Graham
analysis articulated by the Supreme Court. See Dann [v. Johnston,]
425 U.S. [219,] 227-29 (1976), Graham, 383 U.S. at 35. The
analogous-art test requires that the Board show that a reference is
either in the field of the applicant’s endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in
order to rely on that reference as a basis for rejection. In re Oetiker, at
1447. References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill in
the art. Id. (“[I]t is necessary to consider ‘the reality of the
circumstances,’- in other words, common sense-in deciding in which
fields a person of ordinary skill would reasonably be expected to look
for a solution to the problem facing the invention.” (quoting In re
Wood, 599 F.2d 1032 (C.C.P.A. 1979)).

Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.”).
The Examiner’s analysis of the four references of the applied prior art
in the statement of the rejection at pages 3 through 6 of the Answer appears
to be consistent with the requirements of the above-noted case law in
addition to the Examiner addressing Appellants remarks that it would not
have been obvious to have modified the basic system in Mathias at pages 19
and 20 of the principal Brief on appeal beginning at page 7 of the Answer.
6
Appeal 2008-4208
Application 10/139,637

Indeed, the Examiner has characterized in a general manner the view that the
combined teachings from the applied prior art is in accordance with known
methods yielding a predictable result, which analysis is plainly consistent
with the above-noted case law.
Beginning at least at page 11 of the principal Brief on appeal,
Appellants urge that independent control in Mathias does not mean
simultaneous control and that there is no inherency in Mathias as to this
capability. We understand the Examiner’s position in the statement of the
rejection and of his analysis of the applied prior art to be consistent with the
observation at the bottom of page 9 of the Answer that “[s]ince Examiner
has never stated that Mathias inherently taught simultaneous independent
control, the proper question is how one of ordinary skill in the art view [sic
views] Mathias’s disclosure.” We agree with this approach.
In turn, within Mathias, the abstract initially indicates the desirability
of controlling the movement of plural objects such as to reveal a realistic
rendering of the plural objects’ paths. The Examiner’s reliance upon the
paragraph at column 1, beginning at line 41 of this reference is telling and is
the focus of the arguments between the Appellants and the Examiner in the
Brief and the Rely Brief.
We note, however, the compelling teaching at lines 33 through 35 of
column 1 that “a football player does not necessarily pass the football in the
same direction that he is traveling.” In lines 57 through 59 it is stated that
“[c]omputer games and simulations must support the independent motion
control of figures and objects if they are to convey a representation that is
lifelike.” The same sentiments, which are the same as the disclosed
7
Appeal 2008-4208
Application 10/139,637

invention, are carried through in the context of the Summary of the
Invention in Mathias at column 2. In contrast to the independent type of
control of the prior art discussed at the bottom of column 1, the Summary of
the Invention permits “independent control of the movement of multiple
figures and objects without requiring a discrete context switch” as expressed
at column 2, lines 13 and 14. Even in the context of the admitted prior art in
Mathias, the discussion at column 1, beginning at line 60 permits dual
control using two discrete joysticks. Even here it is said in lines 64 through
66, that “[o]ne of the joysticks or controls is used to control, for example, the
motion of the football player, while the other is used to control the passing of
the football (emphasis added).”
We agree with the Examiner’s views that these teachings, even as
applied to the discussion of the prior art approaches in Mathias, are an aim
of Mathias in an effort to simplify the control of two objects such as to
permit the simultaneous, independent control of two objects which is the
basic theme of the Examiner’s position in the Answer. From an artisan’s
perspective, we agree with the Examiner’s view that both independent and
simultaneous are contemplated and discussed by the teachings in Mathias.
The word “while” in the sentence above, in our view, and to the artisan,
has/conveys the same meaning as the use of the words “while
simultaneously” are used in the feature argued in claim 1 on appeal. Plainly,
the context of the use of the word “while” as quoted above from the bottom
of column 1 of Mathias means at the same time as the independent control of
plural objects is provided that is emphasized in the Summary of the
Invention. Furthermore, it is stated at column 2, lines 57 through 61 that
8
Appeal 2008-4208
Application 10/139,637

“[w]hen the user activates a switch, such as a mouse button or trigger, at the
target location, the simulated football player that is carrying the football
throws the football in the direction of the target location.” The use of the
word “when” also clearly indicates simultaneity of control by the user.
Additionally, this view of Mathias’ teachings at the bottom of column
1 is significantly buttressed by the showing in figure 4 of Mathias as well as
its corresponding discussion at the bottom of column 5, lines 41 to 64. By
the use of the word “while” at line 59 again in this reference, two objects are
illustrated and described as moving in two different directions at the same
time under the independent control of one user.
For emphasis, we make mention of Couch’s showing in figure 19B of
dual joysticks 10 and 66 with a common microprocessor controlled
controlpad 64. The underlying structure is shown in figure 21 to illustrate
that plural joysticks 74 and 76 are found within the input device 68 for one
user having a microprocessor control pad 72 that permits simultaneous,
independent control of game objects in a game. Identical structure elements
are shown with respect to another input device 70 for another user in this
figure.
Likewise dovetailing with the previously noted teachings, the control
10 in Barnes has plural control sub-units 14 and 16, which are embodied in
the form of trackballs and joysticks. The artisan would appreciate the
analogous nature of trackballs to joysticks. As noted by the Examiner in the
Answer’s reasoning as to the Examiner’s reliance upon this reference,
column 4, lines 39 through 41 states that “joysticks and trackballs have
9
Appeal 2008-4208
Application 10/139,637

existed for some time and it requires no great imagination to try using one of
each concurrently.” This simultaneity of use is an aim of Barnes.
Thus, Couch and Barnes buttress the Examiner’s positions already
plainly set forth in the Answer with respect to Mathias. Even considering
Mathias alone, we do not agree with Appellants’ urging in the Brief and
Reply Brief that this reference does not disclose or suggest simultaneous
control. Many of the positions set forth by Appellants in the Brief and Reply
Brief appear to be based upon mere speculation. We also do not agree with
Appellants’ urging, such as at the bottom of page 14 of the principal Brief
that the word “while” used by Mathias at the bottom of column 1 of that
reference can only mean “and,” thus attempting to emphasize only
independent control rather than simultaneous, independent control that we
and the Examiner believe the artisan would plainly understand from
Mathias, let alone the additional supplementary teachings we have noted
from Couch and Barnes. We therefore do not agree with Appellants’ urging
at the top of page 8 of the Reply Brief essentially that none of the prior art
teaches simultaneous direct control over two objects in a video game.
In view of the foregoing, the decision of the Examiner rejecting the
claims on appeal under 35 U.S.C. §103 is sustained since Appellants have
not presented convincing reasoning or evidence of error in the Examiner’s
positions and rejection of the claims on appeal. Therefore, the decision of
the Examiner is affirmed.

10
Appeal 2008-4208
Application 10/139,637

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

pgc

NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
11