NINTENDO CO., LTD.

Patent Trials and Appeals Board

Jul 21, 2020

13764079 - (D) (P.T.A.B. Jul. 21, 2020)

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.
13/764,079 02/11/2013 Daiki IWAMOTO RYM-723-3647 4017
27562 7590 07/21/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PATEL, DHAIRYA A
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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 DAIKI IWAMOTO
Appeal 2019-002582
Application 13/764,079
Technology Center 2400
Before JEAN R. HOMERE, ERIC B. CHEN, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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.
Appeal 2019-002582
Application 13/764,079

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STATEMENT OF THE CASE
Introduction
The Application is directed to an “information-processing system [in
which] processing for posting posted information and processing for
displaying posted information are performed as [a] game proceeds.”
Spec. 6:15–16. Claims 1–15 are pending; claims 1, 10, 11, and 12 are
independent. Appeal Br. 19–25. Claim 1 is reproduced below for reference
(emphasis added):
1. An information-processing system comprising:
a non-transitory computer readable medium for storing
instructions; and
a processing system, including a processor, the processing
system upon executing the instructions providing functionality
comprising:
an execution to execute an application program;
a prompting to prompt a user to post to a service for
sharing posted information, in response to a repeated mistake or
failure being made by a virtual character operated by the user at
a same location in virtual space for a predetermined plural
number of times in the executed application program; and
a posting to post posted information corresponding to the
repeated mistake or failure to the service in accordance with a
user input with respect to the prompting, wherein the execution
stores coordinates indicating the same location in the virtual
space respectively at different times where the repeated mistake
or failure is made by the user at the same location in the virtual
space for the predetermined plural number of times; and
wherein the prompting prompts the user to post to the
service for sharing posted information upon determination that
the user has made the repeated mistake or failure at the same
location in the virtual space for the predetermined plural number
of times.
Appeal 2019-002582
Application 13/764,079

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References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Beitel US 6,025,801 Feb. 15, 2000
Yoshida US 2010/0146097 A1 June 10, 2010
Hawkins US 2011/0275442 A1 Nov. 10, 2011
Hwang US 2011/0304584 A1 Dec. 15, 2011

Claims 1–15 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of Hawkins, Beitel, Yoshida, and Hwang. Final Act. 2

ANALYSIS
Appellant argues the Examiner’s rejection is in error, because the
“combination of Hwang, Hawkins, Bietel and Yoshida would not teach or
suggest ‘a repeated mistake or failure being made by a virtual character
operated by the user at a same location in virtual space for a predetermined
plural number of times in the executed application program’ as claimed.”
Appeal Br. 11. In particular, Appellant contends “[n]one of the[] operations
in Hwang describes a mistake or failure, or a repeated mistake or failure
being made by a virtual character operated by the user.” Id. at 15.
Appellant contends that, rather, “Hwang teaches successfully generating a
same touch location even in the case where the touch location is minutely
changed regardless of the user’s intention.” Id. at 12 (emphasis omitted).
The Examiner relies on two alternative bases in citing to Hwang for
teaching the recited “a repeated mistake or failure being made by a virtual
character operated by the user at a same location in virtual space for a
predetermined plural number of times.” Ans. 3, 7.
Appeal 2019-002582
Application 13/764,079

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For the first basis, the Examiner cites to Hwang’s disclosure of a
touch screen input based on a user’s finger “touch[ing] the same location
substantially over a predetermined time (here, the term ‘substantially’ is
used in order not to exclude the case where the touch location is minutely
changed regardless of the user’s intention).” Hwang ¶ 47; Ans. 4. The
Examiner finds the claimed “virtual character is a user input means (i.e.
finger) which touches a specific point A (i.e. mistake or failure) in the object
screen,” as “[o]ne of ordinary skill in the art, can interpret touch event at the
virtual touch location at a same location substantially over predetermined
times as a failure event, wherein the user keeps touching/arriving at a
particular spot in the virtual location.” Ans. 4 (emphasis omitted).
For the second basis, the Examiner relies on Hwang’s disclosure of
“user fatigue due to successive panning operations” when operating a “scroll
bar [that] is decreased in the case of browsing a massive amount of data such
as telephone number list.” Ans. 7 (citing Hwang ¶ 81). The Examiner finds
this teaches the claimed “failure,” because a “user feeling more fatigue due
to successive panning operation is non-performance of scrolling.” Id.
We are persuaded the Examiner errs, under either basis proffered by
the Examiner. Hwang’s disclosures—of (1) a user touching incorrect
locations on an input screen and (2) user fatigue—are not mistakes or
failures being made by a virtual character, as claimed.2 At most, such

2 In the event of further prosecution, the Examiner may wish to determine
whether Hawkins’s disclosure, of optionally sending a message about
retreating from a battle, teaches or suggests prompting a posting about a
mistake or failure being made by a virtual character. See Hawkins ¶ 56. We
note “[t]he Board’s primary role is to review the adverse decision as
Appeal 2019-002582
Application 13/764,079

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teachings would be mistakes or failures of the user, which is not a virtual
character as claimed, because “a user’s finger used in [] the real-world to
touch an object screen to specify a point is . . . . part of the user
himself/herself.” Reply Br. 5. To the extent Hwang includes virtual
characters, Hwang discloses the virtual display of the touch screen excludes
potential mistakes in determining input commands. See Hwang ¶¶ 47–49
(describing input commands based on a user’s intention), 81 (“[T]he present
disclosure has continuity and infinity, and therefore the limits of
conventional techniques using a scroll bar, in other words the limits in
expressivity caused by limitations on display hardware may be easily
overcome.”). That is, rather than a mistake or failure made by a virtual
character, Hwang teaches the virtual display ignores or prevents mistaken
inputs. See id.; Reply Br. 3 (“Hwang repeatedly teaches interpreting user
touch event(s) to be a successful indication to successfully perform an
operation.”).
Based on the foregoing, we are persuaded Hwang’s user input does
not teach a mistake or failure being made by a virtual character. The
Examiner does not rely on the other cited references for this limitation. See
Final Act. 4. Because Appellant has shown at least one reversible error in
the Examiner’s rejection of claim 1, we do not reach Appellant’s remaining
arguments. Accordingly, we do not sustain the Examiner’s obviousness
rejection of independent claim 1, as well as the rejection of independent
claims 10, 11, and 12 which recite similar limitations, and the claims
dependent thereon.

presented by the Examiner, and not to conduct its own separate examination
of the claims.” MPEP § 1213.02.
Appeal 2019-002582
Application 13/764,079

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 103(a) Hawkins, Beitel,
Yoshida, Hwang
1–15

REVERSED