Ex Parte Sasaki et al

Patent Trial and Appeal Board

Aug 15, 2014

12483450 (P.T.A.B. Aug. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TETSUYA SASAKI, YOSUKE HATAYAMA,
DAISUKE NAKAMURA, YOCHITAKA SHIROTA,
MASARU MITSUYOSHI, YUTAKA TAKEHISA, and
KATSUYA EGUCHI
____________

Appeal 2012-004017
Application 12/483,450
Technology Center 3700
____________

Before NEAL E. ABRAMS, JENNIFER D. BAHR, and
EDWARD A. BROWN, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Tetsuya Sasaki et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 17–35. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
The claimed invention is directed to a game apparatus and method to
protect users from unsafe contact with unknown users in a communication
game system.
Claims 17–23 and 30 are independent. Claim 17, reproduced below,
is illustrative of the subject matter on appeal.
17. A game apparatus configured to protect users from
unsafe contact with unknown users in a communication game
system in which a plurality of game apparatuses communicate
and play in a multiplayer game across a network, comprising:
first storing means for storing self-identifying
information within the game apparatus, wherein the self-
identifying information used for the game apparatus does not
match the self-identifying information used for another game
apparatus;
registering means for registering opponent identifying
information in a friend list stored within the game apparatus,
the opponent identifying information corresponding to another
game apparatus and not matching the self-identifying
information of the game apparatus;
network connecting means for connecting to a network
access point to allow an access to a network for performing a
network communication;
network communication requesting means for
communicating with a server on the network and requesting to
play a game over the network with a particular opponent;
game apparatus information communication means for
sending to the server the self-identifying information stored
within the game apparatus and friend list information
corresponding to the requested particular opponent which is
stored within the game apparatus;
network communication connecting means for receiving
a network connection address from the server and making a
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network communication with the requested particular opponent
game apparatus.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Wohlgemuth US 2003/0233537 A1 Dec. 18, 2003
Canessa
Sasaki1
US 2004/0224772 A1
US 2009/0253518 A1
Nov. 11, 2004
Oct. 8, 2009

THE REJECTIONS2
Claims 17–35 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 17–22, 24–27, 34, and 35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Wohlgemuth.
Claims 23 and 28–33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wohlgemuth and Canessa.

OPINION
Claims 17–35
Written Description Requirement
The Examiner has taken the position that a plurality of phrases in the
independent claims are not described in the Specification in such a way as to
reasonably convey to one skilled in the art that the inventors, at the time the

1 In responding to Appellants’ arguments regarding the rejection under
35 U.S.C. § 112, first paragraph, the Examiner cited this reference as being a
“corresponding publication.” Ans. 16.
2 The rejection of claims 25, 27, 29, 32, and 34 under 35 U.S.C. § 112,
second paragraph, was withdrawn. See Final Rej. 4; Ans. 4.
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application was filed, had possession of the claimed invention. Ans. 5. The
major issue concerns the recitation in the preamble of each of the
independent claims “to protect users from unsafe contact with unknown
users.” Id. at 5. This terminology is not explicitly recited in the original
disclosure. However, although we have carefully considered the Examiner’s
comments, we are persuaded by the arguments presented by Appellants that
one of ordinary skill in the art nevertheless would understand from the
Specification that the inventors had possession of the claimed invention at
the time the application was filed. See Appeal Br. 11 and Reply Br. 1–2.
Other terminology placed in issue by the Examiner appears in claims 23 and
30. Ans. 5–6. Appellants’ arguments regarding these phrases also are
persuasive (see Appeal Br. 11–13 and Reply Br. 2–4).
The rejection of claims 17-35 as failing to comply with the written
description requirement of the first paragraph of 35 U.S.C. § 112, is not
sustained.
Claims 17–22, 24–27, 34, and 35
Anticipation – Wohlgemuth
In the rejection of claim 17, the Examiner states that paragraph 85 of
Wohlgemuth discloses storing means for storing within the game apparatus
user self-identifying information and opponent self-identifying information,
that paragraph 72 also discloses storing friend self-identifying information in
the game apparatus, and that paragraphs 45, 46, 48 and 50 disclose game
apparatus information communication means for sending the self-identifying
information and the opponent self-identifying information stored within the
game apparatus. App. Br. 7-8. In response to Appellants’ arguments, the
Examiner further explains that component 554 of Figure 8 is “a network
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adapter that is part of the recited game apparatus and is interpreted as the
network communication connecting means.” Id. at 19.
Appellants argue that Wohlgemuth’s security gateway 404 (Fig. 7) is
not part of the recited game apparatus “and so cannot constitute the recited
‘network communication apparatus.’” Appeal Br. 15. Citing Wolhgemuth’s
paragraph 21, Appellants also point out that “Wohlgemuth makes it clear, as
evidenced by Fig. 1 . . . that his client game devices 102(l)…102(n)
communicate only with his ‘“Presence and Notification System’ 104, and
never directly with one another.” Reply Br. 5. Appellants assert that “the
[Wohlgemuth] [S]pecification makes it clear that the Presence and
Notification System 104 is solely responsible for maintaining and
communicating information to each of the game devices/consoles. See e.g.,
paragraphs [0001], [0004] and [0005],” as is “clearly taught by Figure 1,”
and “there is no direct communication between client devices 102. Rather . .
. all communications between the game devices/consoles are hosted by
Presence and Notification System 104.” Id. Appellants further point out
that “[i]n Appellants’ arrangement, once mutual registration is confirmed
and the server has sent a connection address to a game device, the server
effectively drops out of the communications between the game devices,
unlike Wohlgemuth in which the server always remains as a go-between
host.” Id. at 8–9.
As explained in paragraph 21, the system shown in Wohlgemuth’s
Figure 1 comprises multiple game apparatuses (client devices) 102(1)–
102(n) coupled to a separate Presence and Notification System 104. Thus,
the game apparatuses communicate with one another only via a Presence and
Notification System, and do not contain game information. The same is true
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regarding Presence and Notification System 104, as shown in more detail in
Figure 2 and which, as explained in paragraphs 22 and 23, maintains
information regarding users logged into the system, such as “security
information.” Figure 7 discloses an “exemplary online gaming environment
400,” comprising “[m]ultiple game consoles 402(1), 402(2) . . . , 402(n)
[which are] coupled to a security gateway 404 via a network 406.” Para.
107. Wohlgemuth teaches that “[s]ecurity network 404 operates as a
gateway between the public network 406 and a private network 408” (para.
109, emphasis added). It also fails to disclose or teach that the information
regarding the user and opponents is within the game apparatus. Figure 8
illustrates “a general computer environment 500” (para. 125), “in the form of
a computer 502 [which] can be, for example, a presence and notification
system 104 of FIG.1, and a presence server 120 of FIG. 2” (para. 126), and
“[c]omputer 502 can operate in a networked environment using logical
connections to . . . a remote computing device 548” which “can be a . . .
game console.” Para. 135. Adapter 554, which the Examiner “interpreted”
to be a network communication connecting means located in the game
apparatus, is shown in Figure 8 as a part of computer 502, likened by
Wohlgemuth to Presence and Notification System 104 of Figure 1, and
which, as stated supra, is not within the game apparatus.
Thus, the portions of Wohlgemuth cited by the Examiner fail to
provide support for the Examiner’s findings that Wohlgemuth teaches that
the self-identifying information and the opponent identifying information are
stored within the game apparatus, are then sent to a server, and then through
a network communication connecting means a network connection is
received from the server for making a network connection with the requested
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particular opponent’s game apparatus, as is required by claim 17. This being
the case, Wohlgemuth does not anticipate the subject matter recited in claim
17, and the rejection is not sustained.
Independent apparatus claims 19, 20, and 22 recite the invention in
somewhat different terms. However, all require that the self-identifying
information and the friend opponent player identifying information be stored
within the game apparatus, and that the game apparatus comprises means for
communicating to the opponent via a network connection. As explained
supra, this subject matter is not disclosed or taught by Wohlgemuth, and
therefore the rejection of independent claims 19, 20, and 22, and dependent
claims 24–27, as being anticipated by Wohlgemuth is not sustained.
The methods set forth in independent claims 18 and 21 also require
that the self-identifying information and the friend opponent information be
stored “within the game apparatus,” and that this information be
communicated to a server, which thereafter makes a network connection
with the selected opponent’s game apparatus. These steps are not disclosed
or taught by Wohlgemuth, and the rejection of independent claims 18 and 21
and dependent claims 34 and 35 is not sustained.
Claims 23 and 28–33
Obviousness – Wohlgemuth and Canessa
Among the requirements of independent apparatus claim 23 and
independent method claim 30 are storing user and friend identifying
information within the game apparatus and communicating this information
to the opponent over a network. Canessa was cited by the Examiner for its
teaching of communicating with multiple friends simultaneously. Ans. 14.
However, Canessa fails to overcome the deficiencies in Wohlgemuth as
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pointed out supra in the discussion of the anticipation rejections. This being
the case, the rejection of independent claims 23 and 30 and dependent claims
28, 29 and 31–33 is not sustained.
DECISION
The rejection of claims 17–35 under 35 U.S.C. § 112, first paragraph,
is reversed.
The rejection of claims 17–22, 24–27, 34, and 35 under 35 U.S.C.
§ 102(b) as being anticipated by Wohlgemuth is reversed.
The rejection of claims 23 and 28–33 under 35 U.S.C. § 103(a) as
being unpatentable over Wohlgemuth and Canessa is reversed.

REVERSED

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