Ex Parte Nishimura

Patent Trial and Appeal Board

Aug 28, 2013

10833132 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KATSUHITO NISHIMURA
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Appeal 2011-007590
Application 10/833,132
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/833,132

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-26, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention relates to “a game machine and a data storage
medium having stored therein a game program for connecting units of a
plurality of types to automatically generate a map.” Spec. 1, para. [0001].
Claims 1, 11, and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A game machine for generating a game map
which defines an area where an object can move in
the course of a game, the game machine
comprising:
at least one unit storage location having
previously stored therein a first unit type, which is
a unit zone including at least one connecting
portion and forming the game map, and at least
one second unit type, which is a unit zone
including at least one connecting portion and is
different in type from the first unit type;
first disposing programmed logic circuitry
which selects one unit from the first unit type and
the at least one second unit type that are stored in
the unit storage mechanism,[1] and disposes the
selected unit on the map area; and

1 We note that there is no antecedent basis for “the unit storage mechanism”
(also recited in the last paragraph of claim 1), which appears intended to
refer to the previously recited “unit storage location.” We treat this as an
inadvertent error that should be corrected in further proceedings.
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second disposing programmed logic
circuitry which repeats a process of selecting a unit
which is connectable to an unconnected connecting
portion included in a unit already disposed on the
map area and a process of disposing the selected
unit on the map area, wherein
the second disposing programmed logic
circuitry includes:
an unconnected connecting portion extractor
which extracts the unconnected connecting portion
from the connecting portions included in the unit
already disposed on the map area;
a random number generator which generates
a random number within a predetermined range;
a selection coefficient setter which sets a
selection coefficient to the connecting portion
extracted by the unconnected connecting portion
extractor, said selection coefficient determining the
probability that two different unit types will be
connected and thus controlling the connection
affinity between unit types;
a unit selector which compares the random
number generated by the random number generator
with the selection coefficient, and based at least in
part on the result, selects one unit from the first
unit type and the at least one second unit type; and
unit disposing programmed logic circuitry
which extracts the one unit selected by the unit
selector from the first unit type and the at least one
second unit type stored in the unit storage
mechanism, connects a connecting portion
included in the one unit to the connecting portion
extracted by the unconnected connecting portion
extractor, and disposes the one unit on the map
area.
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REFERENCES
The Examiner relies upon the following prior art references:
Nakamura
Tokita
Niwa
US 6,007,423
US 6,123,619
US 6,371,856 B1
Dec. 28, 1999
Sep. 26, 2000
Apr. 16, 2002
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1, 3-11, and 13-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tokita and Nakamura.
II. Claims 2, 12, and 23-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tokita, Nakamura and Niwa.
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds that Tokita
discloses a game machine for generating a game map that includes, inter
alia, a unit storage mechanism storing first and second unit types and at least
one connecting portion, an unconnected connecting portion extractor, a
random number generator, a selection coefficient setter that “sets a selection
coefficient to the connecting portion extracted by the unconnected
connecting portion extractor,” and “a unit selector which compares the
random number generated by the random number generator with the
selection coefficient.” Ans. 3-4. Regarding independent claim 11, the
Examiner states that Tokita discloses a storage medium for generating a
game map. Id. at 3. Although not explicitly stated, it appears to be the
Examiner’s position that Tokita discloses the process steps performed by the
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stored game program of claim 11 that correspond to the above-mentioned
elements of claim 1.
The Examiner concedes that Tokita “does not explicitly teach [a]
selection coefficient determining the probability that two different unit types
will be connected and thus controlling the connection affinity between unit
types,” but finds that Nakamura discloses “various selection coefficients . . .
such as end width of the course parts, difficulty of the racing game as the
game progresses, [and] average driving speed that determine[] the
probability that two different unit types . . . will be connected.” Id. at 4-5.
The Examiner concludes from these findings that “it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to incorporate the teachings of Nakamura into the teachings of Tokita,”
because such a modification would provide “a realistic and smoother
transition of the travel path for the game play thereby making the game more
interesting to the users.” Id. at 5.
Appellant argues that Tokita fails to disclose the claim 1 limitation of
“a selection coefficient setter which sets a selection coefficient to the
connecting portion extracted by the unconnected connecting portion
extractor, said selection coefficient determining the probability that two
different unit types will be connected and thus controlling the connection
affinity between unit types.” App. Br. 19.2 We agree that Tokita does not
disclose a “selection coefficient” that determines the probability that two
different unit types will be connected as required by claims 1 and 11.
Furthermore, Tokita does not disclose comparing a selection coefficient to a

2 As used herein, “App. Br.” refers to the Appeal Brief filed November 30,
2010.
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randomly generated number and selecting a unit based at least in part on the
comparison, as also required by claims 1 and 11.
The Examiner cites column 8, lines 29-64 and column 9, lines 30-59
of Tokita as disclosing
a selection coefficient / measure of numbers setter which
sets a selection coefficient to the connecting portion
extracted by the unconnected connecting portion
extractor; a unit selector which compares the random
number generated by the random number generator with
the selection coefficient based on predetermined criteria,
and selects either one unit from the first unit and the
second unit.
Ans. 4. However, neither of these passages in Tokita discloses comparing
the randomly generated number to any sort of a “coefficient.” Rather, the
randomly generated number is used to request a map associated with the
randomly generated number and stored on a CD-ROM 4. Tokita, col. 9,
ll. 30-37.
In addition, we disagree that Nakamura discloses any selection
coefficient that determines the probability of two different unit types being
connected. The Examiner has not adequately explained how the “difficulty
of the racing game as the game progresses” or the “average driving speed”
would serve as such a selection coefficient. The Examiner’s statement that
“the width of the connecting side/portion of the course parts as taught by
Nakamura functions as the selection coefficient [because] the width
determines the selection of the next course part” (Ans. 12) is not convincing.
Nakamura discloses several different types of course parts where only
course parts having common end widths can be connected. Nakamura, col.
8, ll. 10-13, 19-21; fig. 8. However, even assuming, arguendo, that the end
widths could be properly considered to be “selection coefficients,” there is
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no showing that the end widths determine the probability of two different
course parts being connected so as to control the connection affinity between
course parts. Instead, Nakamura discloses randomly selecting course parts
based on a predetermined probability set for each course part. Nakamura,
col. 7, l. 65 – col. 8, l. 3; col. 8, ll. 28-45; fig. 9. Furthermore, the Examiner
merely asserts that it would have been obvious “to incorporate the teachings
of Nakamura into the teachings of Tokita” (Ans. 5) without explaining how
Tokita would be modified in view of Nakamura to arrive at the claimed
invention.
In view of the above, we determine that the Examiner has not shown
that the combination of Tokita and Nakamura renders claims 1 and 11
obvious. We accordingly do not sustain the rejection of claims 1 and 11 and
of claims 3-10 and 13-22 depending therefrom.
Rejection II
The Examiner’s rejection of claims 2, 12, and 23-26 as obvious over
Tokita, Nakamura, and Niwa relies on the same erroneous finding noted
supra that Nakamura discloses various selection coefficients that determine
the probability of two different unit types being connected. Ans. 9. Niwa
does not cure this deficiency. Accordingly, we do not sustain the rejection
of claims 2, 12, and 23-26 for the same reasons stated supra with respect to
claims 1 and 12.
DECISION
We reverse the decision of the Examiner rejecting claims 1-26.

REVERSED
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