Shigeru MiyamotoDownload PDFPatent Trials and Appeals BoardMay 7, 20202019001359 (P.T.A.B. May. 7, 2020) Copy Citation 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. 12/216,171 06/30/2008 Shigeru Miyamoto MEN-723-2374 5879 27562 7590 05/07/2020 NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER SUHOL, DMITRY ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/07/2020 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 SHIGERU MIYAMOTO Appeal 2019-001359 Application 12/216,171 Technology Center 3700 Before DANIEL S. SONG, JAMES P. CALVE, and MICHAEL L. WOODS, Administrative Patent Judges. SONG, 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 1–9, 13–19, 21, and 22. 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 2019-001359 Application 12/216,171 2 CLAIMED SUBJECT MATTER The claims are directed to a video game. Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added): 1. A non-transitory computer-readable storage medium comprising a game program executed by a computer of a game apparatus for performing a game process in accordance with a user making an operation input, and starting the game process by using saved data, the game program causing the computer to: store, in a memory of the game apparatus, user saved-data which is generated in accordance with a user making an operation input during a game process; store a plurality of pieces of digest saved-data which are previously generated so as to be associated with predetermined scenes, respectively, in a game; start the game process without using the user saved-data or the plurality of pieces of digest saved-data; resume the game process by loading the user saved-data; generate for display a list of one or more of the predetermined scenes, associated with the plurality of pieces of digest saved-data, and at least one moving image associated with a scene selected from the list of the one or more of the predetermined scenes, the game process being selectively advanceable to a point in the game associated with one of the scenes selected from the list; advance the game process by using any of the plurality of pieces of digest saved-data to update the game based on the point in the game associated with the selected scene corresponding to the respective digest saved-data; and generate the user saved-data and store the user saved-data in a user saved-data storage. Appeal 2019-001359 Application 12/216,171 3 REJECTIONS2 1. The Examiner rejects claims 1–9, 13–15, 17–19, 21, and 223 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Miyaki (US 2002/0082063 A1, published June 27, 2002). Final Act. 3. 2. The Examiner rejects claim 164 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Miyaki. Final Act. 15. OPINION Rejection 1: Anticipation The Examiner rejects claims 1–9, 13–15, 17–19, 21, and 22 as anticipated by Miyaki. Final Act. 3. The Appellant argues that Miyaki does not disclose the limitation italicized in the above reproduced claim 1 because, inter alia, Miyaki does not generate for display, a “moving image associated with the selected item in the list (e.g., to preview the scene to which the game will advance).” Appeal Br. 17. According to the Appellant, “Miyaki describes displaying a picture (i.e., a still image) when the branch selection is displayed (e.g., as shown in Fig. 8) and does not display a moving image.” Reply Br. 4; see also Reply Br. 5–6. The Examiner explains that Miyaki discloses this limitation in Figure 8 which “shows a list of two menu selections available to the player, elements #300 and #301, which serve as the list of scenes (to branch to). Also in Figure 8, above the two menu selections is an image described as ‘a 2 The Appellant requests the Board to summarily reverse the rejections of claims 20 and 23 that have been withdrawn by the Examiner. Reply Br. 2; Ans. 2–3. We decline to do so because a withdrawn rejection is not before the Board for decision. 3 The Examiner’s rejection of claim 23 has been withdrawn. Ans. 3. 4 The Examiner’s rejection of claim 20 has been withdrawn. Ans. 3. Appeal 2019-001359 Application 12/216,171 4 picture . . . of a train running’ [Miyaki, para 0095].” Ans. 4. Thus, the Examiner’s finding is premised on Figure 8 of Miyaki, which is described as showing “a picture . . . of a train running.” Miyaki ¶ 95; Fig. 8; Ans. 4, 5. However, nothing in Miyaki indicates that the shown “picture” is a “moving image” as required by claim 1. In that regard, in view of the plain language of the claim and as interpreted in view of the Specification, the recited “moving image” is a sequence of image frames that provide the visual impression of movement, and not simply a still image, even if the still image is that of a moving object. Spec. ¶¶ 76, 82, 92, 94. Although the text of Miyaki indicates the train shown is “running,” that does not necessarily mean that the picture shows a moving image of the train. The “picture . . . of a train running” may be a still picture of a train with the background blurred to indicate that the train is moving. Thus, the Examiner’s finding that Miyaki discloses a “moving image” instead of a “still image” is speculative, and is not sustainable. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency, however, may not be established by probabilities or possibilities.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The Appellant also argues that in Miyaki, the displayed picture is not “associated with a scene selected from the list of . . . the predetermined scenes” so that Miyaki “fails to show[] an item on the menu with a corresponding moving image depicting a selected menu item.” Reply Br. 4, 5. In that regard, the Appellant also argues that the branch point illustrated in Figure 8 of Miyaki “does not display a list of scenes where a moving Appeal 2019-001359 Application 12/216,171 5 image associated with a selected/highlighted scene is displayed next to the menu.” Reply Br. 3–4. According to the Appellant, Miyaki just displays text associated with the next points for selection in the storyline along with an image of the currently displayed scene. Miyaki does not at all display the selection of the next points in the storyline with images associated with each selectable point, let alone a moving image associated with a scene selected from the list. Appeal Br. 17. We generally agree with the Appellant. There is no indication in Miyaki that the illustrated picture of a train is associated with either of the predetermined “BOY GOES TO SHINJUKU” or “BOY GOES TO SHIBUYA” scenes listed when a scene is selected. Miyaki ¶ 95; Fig. 8. To the contrary, Miyaki discloses that if “BOY GOES TO SHINJUKU” is selected, “a picture of a subway is displayed,” and if “BOY GOES TO SHIBUYA” is selected, “a picture of inside of a train is displayed.” Miyaki ¶ 96. Thus, the Appellant appears correct that the illustrated picture in Figure 8 is not associated with a scene that is selected from the list. The Examiner responds that claim 1 “does not specify a time element associated with any of the items in the list. . . . The Claim does not require a specific association between a scene in the list and the image.” Ans. 4, 6. However, that is not correct considering that the claim recites “image associated with a scene selected from the list,” thereby requiring the recited moving image to be associated with the “scene selected from the list.” Appeal Br., Claim App. To the extent that the Examiner is interpreting the limitation at issue to allow for separate displaying of the list and the moving image such that the moving image is displayed at a later time, we find this interpretation problematic in view of the structure of the claim language that Appeal 2019-001359 Application 12/216,171 6 recites “generate for display a list . . . and at least one moving image,” and also unreasonably broad in view of the Specification, notwithstanding the lack of the apparent disclosure as to a moving image. Spec. ¶ 82; Fig. 15. Accordingly, we agree with the Appellant that in reading the claim in view of the Specification, “one of ordinary skill would understand that the display includes both the list of scenes and a moving image associated with a scene selected from the list.” Reply Br. 4; see also id. at 5. Therefore, in view of the above considerations, we reverse the anticipation rejection of claim 1, and claims 2–5, 9, 13, 14, 17–19, 21, and 22 that depend from claim 1. As the Appellant correctly points out, independent claims 6–8 and 15 recite limitations that are substantively similar to those of claim 1 discussed above. Appeal Br. 18. Thus, we also reverse the anticipation rejection of claims 6–8 and 15. Rejection 2: Obviousness The Examiner’s obviousness rejection of dependent claim 16 does not address the deficiencies of the rejection as to claim 15 from which claim 16 depends. Final Act. 15. Therefore, this rejection of claim 16 is likewise reversed. CONCLUSION The Examiner’s rejections are reversed. Appeal 2019-001359 Application 12/216,171 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 13–15, 17–19, 21, 22 102 Miyaki 1–9, 13–15, 17–19, 21, 22 16 103 Miyaki 16 Overall Outcome 1–9, 13–19, 21, 22 REVERSED Copy with citationCopy as parenthetical citation