Ex Parte Shimizu

Board of Patent Appeals and Interferences

Jan 21, 2011

10763159 (B.P.A.I. Jan. 21, 2011)

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.
10/763,159 01/26/2004 Hideaki Shimizu 723-1464 6751
27562 7590 01/21/2011
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HALL, ARTHUR O
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
01/21/2011 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 HIDEAKI SHIMIZU
________________

Appeal 2009-015037
Application 10/763,159
Technology Center 3700
________________

Before SALLY G. LANE, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal No. 2009-015037
Application No. 10/763,159

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Nintendo Co.,
Ltd. [hereinafter “Appellant”], under 35 U.S.C. § 134(a), from a final
rejection of claims 1-15, the claims on appeal. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

References Relied on by the Examiner
Suzuki U.S. 5,356,156 Oct. 18, 1994
Kaneko U.S. 5,879,235 Mar. 9, 1999
Sciammarella U.S. 6,608,633 Aug. 19, 2003
Oakes U.S. 2003/0181241 A1 Sept. 25, 2003

The Invention
This invention pertains to a multi-user electronic game in which the
display area apportioned to each individual is based on how well each player
is doing in the game relative to the other players (Spec. 4:10-15).
Independent claim 1 is reproduced below (emphasis added):
1. A game apparatus used in association with a display, wherein a
plurality of players participate and play a game on a display screen displayed
on said display, said game apparatus comprising:
one or more game program storage areas for storing a game program;
an operating member operated by the player;
number-of-players detection programmed logic circuitry for detecting
the number of players who participate in the game;
screen partitioning programmed logic circuitry for partitioning a display
area included in said display screen by the number of the participating players,
and forming a plurality of divided areas;
game image generating programmed logic circuitry for generating game
images in each of said divided areas allotted to each player based on said game
program and an operation from said operating member;
Appeal No. 2009-015037
Application No. 10/763,159

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evaluating value setting programmed logic circuitry for setting an
evaluating value of each player based on how well each player is doing in the
game relative to the other players; and
size changing programmed logic circuitry for changing a size of said
divided areas allotted to each player based on said evaluating value. (App. Br.
Claims App’x 34).

The Rejections on Appeal
1. Claims 1, 2, 4, 5, 7, 8, 11, 12 and 15 are rejected as being obvious
under 35 U.S.C. § 103(a) over Oakes in view of Suzuki (Ans. 3-4).
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being obvious over
Oakes in view of Suzuki and further in view of Kaneko (Ans. 6).
3. Claims 6, 9, 10, 13 and 14 are rejected under 35 U.S.C. § 103(a) as
being obvious over Oakes in view of Suzuki and further in view of
Sciammarella (Ans. 8).

B. ISSUES
Would one of ordinary skill in the art of multi-user electronic games
have had reason to adjust an individual’s screen allotment based on relative
game skill when it was known to enlarge a player’s screen based on the
location of an object moving across the screen?

C. FINDINGS OF FACT
1. Oakes discloses a multi-user electronic game in which separate screen
areas are assigned to different controllers/players (Oakes ¶¶ [0052] –
[0053]).
2. Oakes discloses the manual use of a remote to “adjust and vary the
shape of one or more of the windows” in the split screen (Oakes ¶ [0055]).
Appeal No. 2009-015037
Application No. 10/763,159

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3. Suzuki discloses a multi-user electronic game in which an object that
moves between the players’ respective screens always displays the screen
where the object appears “in enlarged size” (Suzuki 2:28-31 and 3:16-18).
4. Suzuki’s enlarged screen size is displayed based on the location of the
moving object and not the offensive or defensive posture of the player
(Suzuki 6:45 to 7:20 and 7:44-47).

D. PRINCIPLES OF LAW
“The factual predicates underlying an obviousness determination
include the scope and content of the prior art, the differences between the
prior art and the claimed invention, and the level of ordinary skill in the art.”
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).

E. ANALYSIS
Appellant separately argues independent claims 1, 9, 15 and
dependent claim 3 (which depends from claim 1). Apparatus claim 1 and
method claim 15 are rejected by the Examiner based on the same art and will
be considered together (Ans. 3 and 9). Appellant’s contentions are discussed
below.

1. Claims 1 and 15 are Not Obvious in View of Oakes and Suzuki

Independent claim 1 requires circuitry that changes a player’s allotted
screen size “based on how well each player is doing” relative to the other
players. Independent claim 15 requires that “a first player who is beating a
second player” be given a larger screen partition.
Appeal No. 2009-015037
Application No. 10/763,159

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The Examiner finds that Oakes discloses many of the required
features of claim 1 but relies on Suzuki as disclosing the “evaluating value
setting” circuitry, the “size changing” circuitry and the allotment of screen
size “based on” the evaluating value (Ans. 4 and 5). Claim 15 is rejected by
the Examiner who finds that Suzuki discloses enlarging a player’s display
area based on whether the player is in an offensive (superior) or defensive
(inferior) position (Ans. 5, 6 and 10). The Examiner further determined that
Suzuki’s enlargement of the screen where the moving object appears does
not teach away from the alternative where the screen enlargement is “a result
of the player being in an advantageous offensive position” (Ans. 10).
Suzuki ascertains screen size based on which player’s screen contains
the moving object (Suzuki 2:28-31 and 3:16-18). Suzuki does inquire as to
whether a player is in an offensive position, but Suzuki’s screen enlargement
is determined by where a moving object is located and not on any answer to
this inquiry (Suzuki 6:45 to 7:20 and Fig. 7 flowchart). Suzuki teaches that
an attacker’s screen is enlarged only so long as the object is in the attacker’s
screen, once the object moves into the defender’s screen, then the defender’s
screen is enlarged (Suzuki 7:44-47).
The Examiner has not demonstrated on this record that one skilled in
the art would have had reason to allocate screen area based on relative player
performance in view of allocations based on the position of a moving object.
We reverse the Examiner’s rejection of claim 1 as being obvious over Oakes
in view of Suzuki.

Appeal No. 2009-015037
Application No. 10/763,159

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2. Dependent Claim 3 is Not Obvious over Oakes in View of Suzuki and
Further in View of Kaneko

Claim 3 depends from claim 1 and further requires a “circular
display” whose radial angle can vary based on player skill level. The
Examiner finds that Kaneko discloses a multi-player game having a circular-
shaped display area that can be divided into separate portions (Ans. 7 and
11). Kaneko’s screen discloses images related to a roulette wheel and does
not teach apportioning the circular display based on how well each player is
doing relative to the other players (Kaneko 9:9-12). We hold that Kaneko
does not remedy the deficiency of the combination of Oakes and Suzuki
discussed above. We reverse the Examiner’s rejection of claim 3 as being
obvious over Oakes in view of Suzuki and further in view of Kaneko.

3. Independent Claim 9 is Not Obvious over Oakes in View of Suzuki and
Further in View of Sciammarella

Claim 9 requires “end determining” circuitry that determines whether
one of the players has ended the game and “re-partitioning” circuitry that
allots the exiting player’s screen area to the remaining players “in
accordance with how the remaining players are performing.” The Examiner
finds that Sciammarella discloses a computer program that updates
information displayed on a screen in response to detected changes; for
example, if a program is no longer active or important, it would be removed
from the screen and the remaining programs would fill the void (Ans. 9 and
12). Appellant contends that Sciammarella has no players and that it lacks
“re-partitioning” circuitry that allocates available screen area based on how
well the remaining players are performing (App. Br. 32). Appellant further
Appeal No. 2009-015037
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contends that Sciammarella also fails to make up for the deficiencies in the
Oakes/Suzuki combination regarding determining whether one player is
“doing better or worse than” another (App. Br. 32). We agree with
Appellant and hold that Sciammarella does not remedy the deficiencies of
Oakes and Suzuki discussed above. We reverse the Examiner’s rejection of
claim 9 as being obvious over Oakes in view of Suzuki and further in view
of Sciammarella.

F. CONCLUSIONS OF LAW
One of ordinary skill in the art of multi-user electronic gaming would
not have had reason to adjust an individual’s screen allotment based on
relative game skill when it was known to enlarge a player’s screen based on
the location of an object moving across the screen.

G. ORDER
1. The rejection of claims 1, 2, 4, 5, 7, 8, 11, 12 and 15 as being obvious
under 35 U.S.C. § 103(a) over Oakes in view of Suzuki is reversed.
2. The rejection of claim 3 under 35 U.S.C. § 103(a) as being obvious
over Oakes in view of Suzuki and further in view of Kaneko is reversed.
3. The rejection of claims 6, 9, 10, 13 and 14 under 35 U.S.C. § 103(a)
as being obvious over Oakes in view of Suzuki and further in view of
Sciammarella 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).
REVERSED
Appeal No. 2009-015037
Application No. 10/763,159

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bim

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