Kaori ANDO et al.

Patent Trials and Appeals Board

Apr 13, 2021

2020004980 (P.T.A.B. Apr. 13, 2021)

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.
14/993,542 01/12/2016 Kaori ANDO RYM-4074-41 2832
27562 7590 04/13/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BLAISE, MALINA D
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/13/2021 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 KAORI ANDO, YUKI OKADA, NORIO MATSUMURA, and
MASAYUKI WADA
Appeal 2020-004980
Application 14/993,542
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–14, 16–23, 26, 27, and 29–32.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Nintendo Co.,
Ltd. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a game system. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A game system, comprising:
a game device having processing circuitry including, a
memory, a processor configured to perform information
processing related to a game and a communication device
configured to communicate via a network; and
a server having processing circuitry including, a memory,
a processor, and a communication device configured to perform
communication with the game device via the network, wherein
the processing circuitry of the game device is further
configured to transmit a purchase request for a first item to be
used in the game to the server by communication through the
communication device,
the processing circuitry of the server further configured to:
receive the purchase request for the first item transmitted
by the game device;
access the memory of the server to determine a
cumulative number of first items purchased by a user who plays
the game with the game device;
determine if the purchase request for the first item
exceeds an upper limit set for the cumulative number of first
items to be purchased for the user in order to increase security of
the user purchasing the first item; and
impart the first item in response to the received
purchase request based on the determination of whether the
purchase request for the first item exceeds the upper limit set for
the cumulative number of first items, and
the processing circuitry of the game device is further
configured to:
receive the first item imparted from the server and
store the first item in the memory of the game device; and
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update game data in the game using the first item
stored in the memory of the game device, wherein
the processing circuitry of the server is further configured
to impart a second item to be used in the game to the user in a
case where the cumulative number of the purchased first item
reaches the upper limit, and
the first item is imparted in a case where the second item
is used in the game.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Schultz US 9,582,965 B1 Feb. 28, 2017
Kim US 9,623,335 B1 Apr. 18, 2017
Graziosi US 2014/0194197 A1 July 10, 2014
Setoriyama JP 2009-213736 A Sept. 24, 2009
REJECTIONS
Claims 1–7, 9–11, 13, 14, 16–23, 26, 27, and 29–32 are rejected under
35 U.S.C. § 103 as being unpatentable over Schultz, Setoriyama, and
Graziosi.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Schultz, Setoriyama, Graziosi, and Kim.
OPINION
Claim 1
Appellant argues claims 1–7, 9, 10, 13, 14, 16–23, 26, 27, 29, and 31
as a group. Appeal Br. 18–22. We select claim 1 as representative. See 37
C.F.R. § 41.37(c)(iv). Claims 2–7, 9, 10, 13, 14, 16–23, 26, 27, 29, and 31
stand or fall with claim 1. Appellant does not present separate argument for
claim 12, which depends from claim 1.
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Appellant disputes what a number of the cited references teach, but
does not dispute any particular rationale provided by the Examiner to
combine the teachings of the various references. See Appeal Br. 18–22.
Further, a number of the purported teachings disputed by Appellant are not
relied on in the Examiner’s findings. The actual bases for the Examiner’s
rejections appear largely unrebutted.
Appellant characterizes Schultz as teaching that “[a] balance goal is
used to encourage players to acquire virtual currencies using real-world
money consideration to receive premium items,” with “[t]he balance goal
. . . chang[ing] after a period of time elapses.” Appeal Br. 18. Appellant
contends that “even assuming for sake of argument that Schultz describes
some goal associated with obtaining virtual items/currency, Schultz does not
impart a second item when a cumulative number of purchased first items
reach an upper limit.” Id. at 18–19 (emphasis omitted). Appellant contends
that “Schultz determines if a user has met a balance goal and distributes
rewards to users if the goal is met,” but “does not at all describe imparting a
second item when a cumulative number of purchased first items reaches an
upper limit.” Id. at 19–20.
It appears that Appellant is disputing the Examiner’s finding that
Schultz’s
processing circuitry of the server is further configured to impart
a second item to be used in the game to the user in a case where
the cumulative number of the purchased first item reaches the
upper limit (column 9, line 58- column 10, line 14 - when a user
reaches the max limit for purchase of the first item, a second item
is imparted to the user (e.g., a premium virtual item)).
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Final Act. 4. Appellant offers no meaningful explanation, however, as to
why the premium virtual item in Schultz cannot be considered the recited
“second item” or why the “balance goal” in Schultz cannot be considered the
recited “upper limit.” As noted above, Appellant acknowledges that
“Schultz determines if a user has met a balance goal and distributes rewards
to users if the goal is met.” Appeal Br. 19. Appellant’s additional
contention that “Schultz [does not] impart a first item in a case where a
second item is used” (id.) is also unpersuasive because the Examiner does
not rely on Schultz for such a finding, but instead Graziosi (see Final Act. 6).
Appellant contends that “Setoriyama does not describe imparting one
virtual item when another virtual item has been used,” “Setoriyama is not
imparting a second item when a cumulative number of purchased first items
reach an upper limit,” and “Setoriyama is not imparting a second item when
a cumulative number of purchased first items reaches an upper limit.”
Appeal Br. 20–21 (emphasis omitted). The Examiner’s findings, however,
do not rely on Setoriyama for imparting items (see Schultz), but instead for
teaching whether or not a cumulative number of items has been achieved.
See Final Act. 5 (“Setoriyama discloses to determine if the purchase request
for the first item exceeds an upper limit set for the cumulative number of
first items to be purchased for the user in order to increase security of the
user purchasing the first item.”), 6 (“The combination of Schultz in view of
Setoriyama does not specifically disclose the first item is imparted in a case
where the second item is used in the game.”).2

2 Graziosi is relied on for such teaching. See Final Act. 6.
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Appellant contends that “Graziosi fails to cure any of these
deficiencies” noted above. Appeal Br. 21. Appellant indicates that
“Graziosi explains that a player can collect virtual currency every time a
virtual tree is tended (up to ten times),” and “[a]fter the ten times, the player
may receive other awards but does not receive additional units of virtual
currency.” Id. at 21–22. Appellant contends that “even assuming for sake
of argument that Graziosi allows the player to collect different items,
Graziosi does not do so when a cumulative number of purchased first items
reach an upper limit.” Id. at 22. Again, however, this is not responsive to
the Examiner’s rejection. See Final Act. 6 (“Graziosi discloses the first item
is imparted in a case where the second item is used in the game (paragraphs
[0042] - [0045], [0081], [0082] - player obtains a special and/or bonus item
(e.g., money tree interpreted as second item) which imparts a first item (e.g.,
virtual currency) when it is used in the game).”). Although Appellant
alleges that “Graziosi [does not] impart a first item in a case where a second
item is used,” there is no corresponding explanation to support this
allegation. Appeal Br. 22.
Because Appellant does address the actual findings relied on by the
Examiner in any meaningful way, and does not dispute the rationale for the
proposed combination, we are not apprised of error in the rejection of claims
1–7, 9, 10, 13, 14, 16–23, 26, 27, 29, and 31.
Claim 11
Claim 11 depends from claim 1, and further recites that “the game
device includes a display processing device configured to perform
processing of displaying a purchasable number of the first items in
accordance with the upper limit.” The Examiner finds that Setoriyama
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teaches this additional feature and proposes further modifying Schultz’s
system accordingly. Final Act. 11–12.
Appellant contends that although “Setoriyama . . . describes a
conventional sale/purchase of a virtual item where the display shows the
item with a corresponding price listing,” it “does not display a purchasable
number of items in accordance with an upper limit.” Appeal Br. 23
(emphasis omitted). The Examiner responds that “[b]y displaying the upper
limit, and the price of each item in the shop for purchase, Setoriyama is
disclosing a display of purchasable number of items in accordance with an
upper limit” because “[a] player viewing the information provided in
Setoriyama can deduce how many items they can afford based on their
monetary balance which shows their upper limit.” Ans. 41. Appellant
counters that “even if Setoriyama displays a money balance total in an item
purchasing screen, Setoriyama does not display a purchase number of items
in accordance with an upper limit” because “simply showing an account
balance does not reasonably correspond to displaying a purchasable number
of items based on an upper limit.” Reply Br. 7–8. Appellant has the better
position.
Regardless of whether Setoriyama teaches displaying information that
could be used to determine the recited “purchasable number of items,” there
is no dispute that Setoriyama does not teach the recited “display processing
device configured to perform processing of displaying a purchasable number
of the first items in accordance with the upper limit.” Moreover, the
Examiner does not rely on any proposed modification of Setoriyama’s
teachings to arrive at the claimed arrangement.
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Because the Examiner fails to make sufficient findings, or articulate
sufficient reasoning, to fully address the claimed subject matter, we do not
sustain the Examiner’s decision to reject claim 11.
Claim 30
Claim 30 depends from claim 1, and further recites that “the second
item is imparted during a first time period and is then made unavailable until
a second time period.” The Examiner does not propose modifying Schultz’s
teachings to make its premium virtual item (the recited “second item”)
unavailable at any particular time. Rather, the Examiner finds that Schultz
teaches this additional feature. Final Act. 35 (citing Schultz, 10:1–45).
Appellant acknowledges that “Schultz . . . describes making a ‘highly
desired premium’ item available during a time period if a particular goal is
met (e.g., maintaining a target balance of 100 gems in a 48 hour period).”
Appeal Br. 24. Appellant contends, however, that “[e]ven assuming . . . that
the ‘premium’ virtual item is ‘imparted during a first time period,’ Schulz
does not mention that the item then becomes unavailable until a second time
period.” Id. at 24–25. Appellant contends that “[a]t best, Schulz indicates
that an item can be ‘imparted’ if a particular goal is met but is silent as to
whether the item becomes unavailable, let alone unavailable until a second
time period.” Id. at 25. Appellant has the better position.
After reviewing the cited portion of Schultz, we do not find anything
specifying exactly when, if ever, the premium virtual item (the recited
“second item”) is made unavailable. Schultz simply explains that when a
balance goal is obtained, the user receives a premium virtual item. See
Schultz, 9:58–10:45.
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Because the Examiner fails to make sufficient findings, we do not
sustain the Examiner’s decision to reject claim 30.
Claim 32
Claim 32 ultimately depends from claim 1, and further recites that
“the award is imparted during a specified interval of time and the award
cannot be imparted again until the specified interval of time has elapsed.”
The Examiner finds that Schultz teaches this additional feature. Final Act.
36 (citing Schultz, 10:1–45).
Appellant contends that “Schultz does not at all indicate that the item
cannot be imparted again until a specified interval of time has elapsed”
because “Schultz is silent on what occurs to the ‘highly desirable premium
virtual item’ after it has been imparted and instead merely indicates that
another ‘highly desirable premium virtual item’ may become obtainable.”
Appeal Br. 26. Appellant’s contentions are not persuasive.
The cited portion of Schultz provides one example where goals and
corresponding premium item rewards are provided in 48 hour intervals.
Appellant does not identify error in the Examiner’s finding that this 48 hour
interval corresponds to the recited “specified interval” or why one skilled in
the art would not have understood the cited disclosure of Schultz as teaching
that its premium virtual item (“award”) is imparted during that 48 hour
interval with another premium virtual item (“award”) not being imparted
again until the next 48 hour interval (“specified interval”). See Schultz,
9:58–10:14.
Accordingly, we are not apprised of error in the Examiner’s decision
to reject claim 32.
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CONCLUSION
The Examiner’s rejections are affirmed in part.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 9–11,
13, 14, 16–
23, 26, 27,
29–32
103 Schultz,
Setoriyama,
Graziosi
1–7, 9, 10,
13, 14,
16–23, 26,
27, 29, 31, 32
11, 30
12 103 Schultz,
Setoriyama,
Graziosi, Kim
12
Overall
Outcome
1–7, 9, 10,
12–14,
16–23, 26,
27, 29, 31, 32
11, 30

TIME PERIOD FOR RESPONSE
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)(iv).
AFFIRMED IN PART