Ex Parte Morimura et alDownload PDFPatent Trial and Appeal BoardDec 8, 201612367732 (P.T.A.B. Dec. 8, 2016) Copy Citation 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. 12/367,732 02/09/2009 Naoya Morimura MEN-3917-16 1542 23117 7590 12/12/2016 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER KEBEDE, BROOK ART UNIT PAPER NUMBER 2894 NOTIFICATION DATE DELIVERY MODE 12/12/2016 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 Ex parte NAOYA MORIMURA and HIROFUMI MATSUOKA Appeal 2014-005877 Application 12/367,732 Technology Center 2800 Before THU A. DANG, ERIC S. FRAHM, and JOHN D. HAMANN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in- part. Appeal 2014-005877 Application 12/367,732 Exemplary Claims Exemplary claims 1 and 4 under appeal, with emphases added to disputed portions of the claims, read as follows: 1. A game system including one or more processors and a plurality of pedometers each counting a step number, wherein said one or more processors comprising: a step count data acquiring unit for acquiring through communication a plurality of step count data which are respectively counted by said plurality of pedometers; an arithmetic operation unit for performing a predetermined arithmetic operation by utilizing said plurality of step count data; and a game processing unit for reflecting the result of the arithmetic operation by said arithmetic operation unit on a game. 4. The game system according to claim 1, wherein said one or more processors includes a plurality of game apparatuses and a server, said arithmetic operation unit is provided in said server, said game apparatus includes a first transmitting unit for transmitting the step count data acquired from at least one pedometer to said server and a first receiving unit for receiving the result of the arithmetic operation from said server, and said server includes a second receiving unit for receiving said step count data from each of the game apparatuses, and a second transmitting unit for transmitting the result of the arithmetic operation by said arithmetic operation unit to each of the game apparatuses. 2 Appeal 2014-005877 Application 12/367,732 The Examiner’s Rejection1 The Examiner rejected claims 1—16 under 35 U.S.C. § 103(a) over the combination of Arai (JP 2000-051528; published Feb. 22, 2000) and LeBoeuf (US 2008/0146890 Al; published June 19, 2008). Final Act. 12— 26; Ans. 2—12. Issues on Appeal Based on Appellants’ arguments in the Briefs (App. Br. 15—22; Reply Br. 1—7),2 the following issues are presented on appeal: (1) Did the Examiner err in rejecting claims 1 and 6—14 under 35 U.S.C. § 103(a) over the combination of Arai and FeBoeuf because the combination fails to teach or suggest the disputed limitations of representative independent claim 1? (2) Did the Examiner err in rejecting claims 2 and 3 under 35 U.S.C. § 103(a) over the combination of Arai and LeBoeuf because the combination fails to teach or suggest the arithmetic calculation (i) based on a 1 Although the Examiner rejected claims 1—16 under 35 U.S.C. § 103(a) over the combination of Arai and Fujiwara (see Final Act. 2—12), this rejection has been withdrawn (Ans. 12), and we will not address it further. 2 Appellants do not present arguments regarding the separate patentability of claims 6—14, and instead rely on the arguments presented as to claim 1 as to the patentability of claims 6—14 (see App. Br. 16—18). Therefore, we select independent claim 1 as representative of the group of claims (claims 1 and 6—14) rejected as being obvious over the combination of Arai and LeBoeuf. Appellants present separate arguments regarding the patentability of claims 2-4 (App. Br. 18—21). Appellants do not present any arguments as to claims 5, 15, and 16. Accordingly, we affirm the rejection of claims 5, 15, and 16 over the combination of Arai and LeBoeuf pro forma. 3 Appeal 2014-005877 Application 12/367,732 time slot, as recited in claim 2; and (ii) that determines a totalized value for the accumulated step count values, as recited in claim 3? (3) Did the Examiner err in rejecting claim 4 under 35 U.S.C. § 103(a) over the combination of Arai and LeBoeuf because the combination fails to teach or suggest a server as recited in claim 4?3 ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 12—22) in light of Appellants’ arguments in the Appeal Brief (App. Br. 15—22) and the Reply Brief (Reply Br. 1—7) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 2— 12). Claims 1—3 and 6—14 With regard to representative claim 1 and dependent claims 2 and 3, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 12—13; Ans. 2—3); and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 13—16). We concur with the 3 Appellants do not present arguments regarding the server feature found in claims 8—10, 13, and 14. We note that these claims have differing scope as regards the server feature, and our decision herein is based on the issues presented by Appellants’ arguments in the briefs, and therefore only addresses the server feature as to claim 4. Claim 4 positively requires a server (“arithmetic operation unit is provided in said server”), as this limitation is integral to the claim preamble as well as the body of the claim. In view of the foregoing, we only consider whether the server of claim 4 is met by the combination of Arai and LeBoeuf, and we make no decision as to arguments not made as to claims 8—10, 13, and 14. 4 Appeal 2014-005877 Application 12/367,732 conclusions reached by the Examiner with regard to the obviousness of claims 1—3 in view of the combination of Arai and LeBoeuf. We agree with the Examiner that Arai (Figs. 1—4) discloses a gaming system and method using a pedometer 10, central control circuit 20, and calculation parts 22—26 that performs calculations on collected pedometer data, including accumulating data, and LeBoeuf discloses plural pedometers and analyzing the data produced by the pedometers (1159). Accordingly, we sustain the Examiner’s rejections of independent claim 1, as well as claims 6—14 grouped therewith. Claims 2 and 3 We disagree with Appellants’ contentions (App. Br. 18—19 and 20; Reply Br. 2—A and 5) that the Examiner erred in rejecting dependent claims 2 and 3 for failing to teach or suggest the arithmetic calculations as set forth in claims 2 and 3. With regard to claim 2, we agree with the Examiner’s response found at pages 14—15 of the Answer as to claim 2 — that paragraphs 16 and 17 of Arai teach or suggest using step count values in time slots to calculate step count values per unit of time (by using walk amount calculation/recording part 22, walking speed calculation part 23, and current position calculating part 24 taken with the clock information TD, calendar data CD, and time/seasonal judgement part 25). With regard to claim 3, we agree with the Examiner’s response found at pages 15—16 of the Answer as to claim 3 — that paragraphs 29-31 of Arai describe a walk amount calculation/recording part 22 and a walking speed calculation part 23 that teach or suggest the performance of arithmetic operations that totalize accumulated step count values as claimed. 5 Appeal 2014-005877 Application 12/367,732 Specifically, walk amount calculation/recording part 22 operates on step information PD concerning the number of steps, measures a walk amount, and provides “totals for every period, and a total result is recorded (Step S10)” (129). As a result, we agree with the Examiner that the combination of Arai and LeBoeuf teaches or suggest the arithmetic computation limitations as recited in claims 2 and 3, and we sustain the Examiner’s rejection of dependent claims 2 and 3. Claim 4 Claim 4 positively requires (i) a game system (see claim 1 from which claim 4 depends); (ii) a “plurality of gaming apparatuses” (claim 4); and (iii) a “server” (claim 4). In addition, claim 4 requires the server be separate from the game apparatuses and not only store and provide step count data, but also perform arithmetic operations (see claim 4, “arithmetic operation unit is provided in said server”), and send the results to a receiving unit. In light of Arai’s description of storage part 21 as simply a storage unit, and separate calculation elements 22—26 that operate on the step count or walk data, the Examiner has failed to show or clearly articulate that the “server” limitation is met by storage part 21 (or any other portion) of Arai. Even if all of the elements cited by the Examiner at page 16 of the Answer (storage part 21, calculation parts 22—24, and image display controller 29) were considered together to be the “server,” this would violate the claim requirement that the server be separate and different from the “game apparatuses.” Additionally, the Examiner has not shown how it is reasonable that Arai’s “handheld” or “portable” game machine (see Arai, Title; Abs.; Tflf 7—9, 37, 38; Fig. 1) acts as a server. 6 Appeal 2014-005877 Application 12/367,732 We concur with Appellants’ contentions (App. Br. 20-21; Reply Br. 5—6) that Arai, and thus the combination of Arai and LeBoeuf, fails to disclose a server as set forth in claim 4. Arai’s storage part 21 is not a server, but a memory for storing data such as map data and walk data (^Hf 14—16; Fig. 4; Description of Drawings). The Examiner’s Final Rejection of claim 4 (Final Act. 4) generally alleges Arai discloses a server, but does not delineate which element from the figures corresponds to the recited server. The Examiner’s response to Appellants’ arguments at page 16 of the Answer leaves us to speculate as to which element is a server (storage part 21 or calculation parts 22—26), and is not sufficient to support a prima facie case of obviousness as to claim 4. Accordingly, we do not sustain the Examiner’s obviousness rejection of dependent claim 4. Claims 5, 15, and 16 Based on Appellants’ failure to address the Examiner’s prima facie case of obviousness for claims 5, 15, and 16 {see generally App. Br. 16—18), Appellants have failed to show that the Examiner erred in determining that the combination of Arai and LeBoeuf teaches or suggests the game system recited in claims 4 and 6. In view of the foregoing, we sustain the Examiner’s obviousness rejection of claims 5, 15, and 16 pro forma. See 37 C.F.R. § 41.37(c)(l)(vii) (requiring a statement in the briefs as to each ground of rejection presented by Appellant for review); 37 C.F.R. § 41.37(c)(l)(vii) (stating that arguments not presented in the briefs by Appellant will be refused consideration). 7 Appeal 2014-005877 Application 12/367,732 CONCLUSIONS (1) The Examiner erred in rejecting claims 1 and 6—14 under 35 U.S.C. § 103(a) over the combination of Arai and LeBoeuf because the combination teaches or suggests the disputed game system limitations of representative independent claim 1. (2) The Examiner did not err in rejecting claims 2 and 3 under 35 U.S.C. § 103(a) over the combination of Arai and LeBoeuf because the combination teaches or suggests the arithmetic calculation (i) based on a time slot, as recited in claim 2; and (ii) that determines a totalized value for the accumulated step count values, as recited in claim 3. (3) The Examiner erred in rejecting claim 4 under 35 U.S.C. § 103(a) over the combination of Arai and LeBoeuf because the combination fails to teach or suggest a server as recited in claim 4. DECISION The Examiner’s obviousness rejection of (i) claims 1—3 and 5—16 is affirmed, and (ii) claim 4 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation