Ex Parte Murakami

Board of Patent Appeals and Interferences

Dec 28, 2011

10558321 (B.P.A.I. Dec. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/558,321 11/23/2005 Hiroyuki Murakami 09792909-6555 1580
26263 7590 12/29/2011
SNR DENTON US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
RUSTEMEYER, MALINA K
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
12/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROYUKI MURAKAMI
____________

Appeal 2010-002806
Application 10/558,321
Technology Center 3700
____________
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 10. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Appeal 2010-002806
Application 10/558,321

2
Appellant’s invention is directed to a recording medium having a
program recorded thereon in order to print a desired image in a game.
(Specification 1)
Claim 1 is illustrative:
1. A computer-readable recording medium having a program
recorded therein, the program causing a computer game machine to
perform a game playing function, the program comprising the steps
of:
placing a game screen image in a still state in response to a first
controller actuation while a game is being played;
converting the game screen image into image-editable image data;
selecting an arbitrary region in the game screen image, selection of
said arbitrary region being responsive to a second controller
actuation;
saving the image data of the selected arbitrary region in a memory;
converting the image data into print data; and
outputting the print data to a printer.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Kinjo US 6,336,865 B1 Jan. 8, 2002
Tanimura US 2005/0122541 A1 Jun. 9, 2005

Machine Translation of JP 200384926

Appellant appeals the following rejections:
Claims 1, 4, 7 and 10 under 35 U.S.C. § 103(a) as being unpatentable
Appeal 2010-002806
Application 10/558,321

3
over Tanimura (US 2005/0122541 A1, iss. Jun 9, 2005) in view of
Tateyama (JP 200384926) machine translation.
Claims 2, 3, 5, 6, 8 and 9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanimura in view of Tateyama machine translation
as applied to claims 1, 4, and 7 above, and further in view of Kinjo
(US 6,336,865 B1), iss. Jan. 8, 2002.

ISSUE
Did the Examiner err in rejecting the claims because Tanimura fails to
disclose converting the game screen image into image-editable image data?

FACTUAL FINDINGS
We adopt the Examiner’s findings found on pages 3 to 4 of the
Answer. Ans. 3 to 4.

ANALYSIS
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Tanimura fails to disclose converting the game
screen image into image-editable image data. We agree with the Examiner
that the transition information disclosed in Tanimura is image data as
broadly claimed because it contains data that that can be used to print an
image. In this regard we find that Tanimura discloses that this data allows
the user to obtain a photo of an image obtained through play [0105-0106].
We also agree with the Examiner that the transition information is editable
data because Tanimura teaches that the resolution of the drawn image may
Appeal 2010-002806
Application 10/558,321

4
be changed (see paragraph [0107] of Tanimura). We note that Appellant’s
disclose that changing the resolution of the image is image processing
(Specification 8).
We also agree with the Examiner that as claim 1 recites “image
editable image data” the claim only requires that the image be capable of
being edited. The claim does not positively recite that the image data is
edited. Therefore, Appellant’s argument that the editing takes place at a
print laboratory in Tanimura is unpersuasive of error on the part of the
Examiner.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the Examiner’s rejection of the remaining
claims on appeal because the Appellant has not addressed the separate
patentability of these claims.
DECISION
The decision of the Examiner 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) (2009).

AFFIRMED

JRG/NLK