NINTENDO CO., LTD.

Patent Trials and Appeals Board

Dec 30, 2021

2020005219 (P.T.A.B. Dec. 30, 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.
15/070,130 03/15/2016 Tomohiro YAMAMURA RYM-723-4299 6665
27562 7590 12/30/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GOODWIN, SCHQUITA D
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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 TOMOHIRO YAMAMURA and TOSHIHARU IZUNO
Appeal 2020-005219
Application 15/070,130
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JUSTIN BUSCH, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–15, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Nintendo Ltd. Appeal Br. 3.
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Application 15/070,130

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STATEMENT OF THE CASE2
The claimed subject matter is directed to an “Information Processing
System in Which Range of Application of RF Tag Can Be Expanded,
Method of Controlling Information Processing System, Server, Non-
Transitory Storage Medium Encoded with Computer Readable Program,
Information Processing Apparatus, and Method of Controlling Information
Processing Apparatus.” See Spec. (Title). In particular:
The claimed embodiments of this application enable
playing a game using player characters (See[,] e.g., FIG. 4)
whose information, such as player character characteristics data
and game execution condition information, is stored as medium
information in respective information storage mediums from
which the information is read via contactless communication by
respective information processing apparatuses. A server, which
obtains the medium information stored in respective
information storage mediums via respective corresponding
information processing apparatuses, then identifies a matched
combination of the player characters based on the obtained
medium information and sets the matched combination for the
corresponding information processing apparatuses to establish
mutual communication connections through the network.
Appeal Br. 11.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis and formatting added to contested prior-art limitations):

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 10, 2020); Reply Brief (“Reply Br.,” filed July 6, 2020); Examiner’s
Answer (“Ans.,” mailed May 6, 2020); Final Office Action (“Final Act.,”
mailed Oct. 1, 2019); and the original Specification (“Spec.,” filed
Mar. 15, 2016).
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1. An information processing system, comprising:
a server;
a plurality of information storage mediums; and
a plurality of information processing apparatuses, each
information processing apparatus configured to communicate
with the server and at least another information processing
apparatus through a network,
each information processing apparatus obtaining medium
information from a respectively corresponding one of the
plurality of information storage mediums which is external to
the information processing apparatus by establishing
contactless communication with the respectively corresponding
information storage medium,
the server:
identifying a matched combination comprising two
or more of the plurality of information processing
apparatuses based at least upon matching a plurality of
user-designated game execution conditions in the
obtained medium information for each of said two or
more information processing apparatuses; and
setting the matched combination of the two or
more information processing apparatuses which establish
mutual communication connections through the network,
and wherein
each information processing apparatus of the
matched combination, establishing communication
with at least another information processing
apparatus using a unique identifier of the at least
another information processing apparatus
transmitted by the server and performing data
communication processing with the at least another
information processing apparatus of the matched
combination by using, through the network, the
medium information obtained from the
information storage medium by the information
processing apparatus.
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REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Farnham et al. (“Farnham”) US 2005/0192097 A1 Sept. 1, 2005
Koivisto et al. (“Koivisto”) US 2007/0097832 A1 May 3, 2007
Kajii US 2011/0190063 Al Aug. 4, 2011
Reiche et al. (“Reiche”) US 2014/0162785 A1 June 12, 2014
Sethi et al. (“Sethi”) US 8,771,079 B1 July 8, 2014
REJECTIONS
R1. Claims 1–5, 8, 9, and 11–15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Reiche, Kajii, and
Sethi. Final Act. 5.
R2. Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Reiche, Kajii, Sethi, and Koivisto.
Final Act. 15.
R3. Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Reiche, Kajii, Sethi, and Farnham.
Final Act. 17.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 11–18) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection R1 of claims 1–5, 8, 9, and 11–15 on the basis of
representative claim 1. Remaining claims 6, 7, and 10 in Rejections R2 and
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R3, not argued separately, stand or fall with the respective independent
claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–15
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the
Action from which this appeal is taken, and (2) the reasons and rebuttals set
forth in the Examiner’s Answer in response to Appellant’s arguments. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
1. § 103 Rejection R1 of Claims 1–5, 8, 9, and 11–15
Issue 1
Appellant argues (Appeal Br. 1–18; Reply Br. 2–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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combination of Reiche, Kajii, and Sethi is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a]n information processing system” that includes “a server,”
wherein, the server, inter alia, “identif[ies] a matched combination
comprising two or more of the plurality of information processing
apparatuses based at least upon matching a plurality of user-designated game
execution conditions in the obtained medium information for each of said
two or more information processing apparatuses,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. at 425 (citation omitted).
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Analysis
The Examiner finds Sethi “discloses wherein the game execution
conditions are a plurality of user-designated game execution conditions
(FIG. 7A, option 704; col. 11 lines 37-50 and 61-67 provides for option 704
to meet geographic location in proximity to a user).” Final Act. 9. With
respect to motivation to combine the references, the Examiner further finds:
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One of ordinary skill in the art before the effectively filed
date of the claimed invention would have recognized the ability
to utilize the teachings of Sethi for narrowing a player match
due to geographic location. The opt[]ion options of Sethi, when
implemented with the interactive video game toys of the
Reiche/Kajii system, will allow one of ordinary skill in the art
to configure the server to match various players in a multiplayer
mode by their geographic location. One of ordinary skill in the
art would be motivated to utilize the opt-ion options of Sethi
with the interactive video game toys of the Reiche/Kajii system
in order to allow the server to match players in a friendly player
matching mode. Therefore, the examiner concludes it would
have been obvious to one of ordinary skill in the art at the time
of applicant’s invention to arrive at the above-claimed
invention.
Final Act. 9–10.
Generally, Appellant contends “Sethi does not disclose ‘user-
designated game execution conditions.’” Appeal Br. 12 (emphasis omitted).
Specifically, Appellant argues the Examiner erred in relying upon the
teachings of Sethi because “Fig. 7A option 704 and the associated
description (e.g., column 11 lines 37-50 and 61-67) relate merely to the
ability for each user in a social gaming platform to identify other players to
play with.” Id. Furthermore, “geographic conditions for identifying another
player to meet for playing the game, is not a game execution condition, as
recited in claim 1 (and the other independent claims).” Appeal Br. 13.
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Figure 7A of Sethi is replicated below:

“FIG. 7A illustrates an example of a display for an opt-in request
presented to a user of the computer-implemented online game.” Sethi 2:65–
67.
The Examiner responds to Appellant’s allegation by noting
“Appellant’s [S]pecification does not provide an explicit definition of ‘user-
designated game execution conditions’. . . [and] in lieu of an explicit
definition, the [S]pecification provides exemplary conditions, such as the
singles/doubles game type (FIG. 6), play mode (FIG. 7), play time (FIG. 7),
partner selection (FIG. 7), and a YES-or-NO option to start a game
(FIG. 10).” Ans. 5. The Examiner also cites to a dictionary definition of
“condition” and finds “a condition as ‘a prerequisite, or something essential
to the appearance or occurrence of something else.’ Thus, one having
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ordinary skill in the art would interpret a user-designated game-execution
condition to be any factor/qualification, designated by a user, that is matched
with another factor/qualification, wherein the matched factors/qualifications
result in a matched combination of apparatuses.” Id. (quoting Merriam-
Webster dictionary).
The Examiner further explains the rejection by finding:
Kajii, as discussed in paragraph 0035, discloses server 10
utilizing its hostile mode matching unit 44 to search for players
having a similar level and a similar area ID of a player
requesting multiplayer play. The hostile mode and the player
level of Kajii are a plurality of user-designated factors/
qualifications that, when matched, result in a matched
combination of apparatuses. In addition, Sethi, as discussed in
col. 11 lines 37–50, discloses a game networking system 108b
that performs match-making by user-selected options 704-708
and YES button 710. The geographic location (option 704) and
the game level (option 705) of Sethi are a plurality of user-
designated factors/qualifications that, when matched, result in a
matched combination of apparatuses. Therefore, both Kajii and
Sethi of the Reiche/Kajii/Sethi system teach or suggest “user-
designated game execution conditions.”
Ans. 5–6.
For the reasons stated by the Examiner as quoted above, we are not
persuaded by Appellant’s arguments that, under the broadest reasonable
interpretation, the reference combination fails to teach or suggest the
contested “user-designated game execution conditions” in claim 14, and the
commensurate recitations in each of independent claims 11–15.
Additionally, Appellant asserts, “[e]ven if arguendo one considers
Sethi’s geographic criteria of users to meet and/or player level conditions as
game execution conditions, such game execution conditions are not taught
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by Sethi to be in the medium information obtained from respective
information storage mediums that are external to each information
processing apparatus as required by claim 1.” Appeal Br. 13–14.
The Examiner responds:
Reiche of the Reiche/Kajii/Sethi system was relied upon to
disclose “medium information from a respectively
corresponding one of the plurality of information storage
mediums.” Specifically, FIG. 3, 0036, and 0052 of Reiche
discloses character information, i.e.[,] medium information,
which is stored in the rewritable memory of a toy 150, i.e.[,] an
information storage medium. Paragraph 0048 of Reiche
discloses “the toy data area contains fields for values . . . [such
as] fields that store score values, experience levels, or other
information of the character.” Kajii, in a similar field of
endeavor, discloses a server that matches players based on
character level and area ID (0035). One having ordinary skill in
the art would write the level and area ID of Kajii into the
rewritable memory of the toy 150 of Reiche.
Ans. 6–7.
We are not persuaded by Appellant’s arguments because they are
attacking the references separately, when the rejection relies upon Reiche for
this particular limitation and what the combination of references would have
suggested to a person with skill in the art. See Keller, 642 F.2d at 426.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2–5, 8, 9, and 11–15, which fall therewith. See Claim Grouping,
supra.
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2. Rejections R2 and R3 of Claims 6, 7, and 10
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 and R3 of claims 6, 7, and 10 under § 103 (see
Appeal Br. 18), we sustain the Examiner’s rejection of these claims.
Arguments not made are forfeited.4
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.

4 Appellant merely argues, “claim 1 and its dependent claims are patentable
over the cited combination of Reiche, Kajii and Sethi. Independent claims
11–15 recite similar distinguishing features as claim 1, and are therefore
each patentable over the proposed combination for at least the same reasons
as claim 1.” Appeal Br. 18. See In re Google Technology Holdings LLC,
2020 WL 6685948, slip op. at * 3 (Fed. Cir. 2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 [] (1938)) (additional citations omitted). The two scenarios
can have different consequences for challenges raised on
appeal, id. at 733–34, [] and for that reason, it is worth
attending to which label is the right one in a particular case.  
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CONCLUSIONS
We AFFIRM the Examiner’s rejections.
More specifically, Appellant has not persuasively argued that the
Examiner erred with respect to obviousness Rejections R1 through R3 of
claims 1–15 under 35 U.S.C. § 103 over the cited prior art combinations of
record, and we sustain the rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1–5, 8, 9,
11–15 103
Reiche,
Kajii, Sethi.
1–5, 8, 9,
11–15
6, 7 103
Reiche,
Kajii, Sethi,
Koivisto.
6, 7
10 103
Reiche,
Kajii, Sethi,
Farnham
10
Overall
Outcome 1–15
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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED