Ex Parte ASUKEDownload PDFPatent Trial and Appeal BoardMar 29, 201612534563 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/534,563 08/03/2009 27562 7590 04/19/2016 NIXON & V ANDERHYE, P,C 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Shigeyuki ASUKE 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MEN-723-2598 9857 EXAMINER DUFFY, DAVID W ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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 SHIGEYUKI ASUKE Appeal2014-001588 Application 12/534,563 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Shigeyuki Asuke (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-25, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal2014-001588 Application 12/534,563 CLAIMED SUBJECT MATTER Appellant's claimed subject matter relates to "a game program executable by a computer of a game apparatus which determines whether or not objects contact[] each other in a game space and performs a game process, depending on the result of determination." Spec. para. 1. Of those claims before us on appeal, claims 1, 19-21, and 23 are independent. Claims 1 and 23, reproduced below, are illustrative of the subject matter on appeal. 1 1. A non-transitory computer readable storage medium storing a game program executable by a computer of a game apparatus which outputs to a display device a game image showing a behavior of an object in a game space, the game program causing the computer to execute instructions compnsmg: repeatedly determining whether or not a first object contacts a second object at a first point in time and at a second point in time, the second point in time being a latest result of determination stored after the first point in time; successively storing results of the repeated determination; and performing a predetermined process with respect to the first object when, of the results of the stored determination, at least one result of determination includes determining that the first object contacted the second object at the first point in time. 1 'vVe do not rely on the Claims Appendix provided with Appellant's Appeal Brief because it does not contain an accurate recitation of the claims on appeal. \Ve refer instead to the claims as presented in the Arnendment filed on November 29, 2012 (hereafter "'Amendment"), and entered by the Examiner in the Final Action on January 16, 2013, for a listing of the clairns currently pending in the subject application. 2 Appeal2014-001588 Application 12/534,563 23. A non-transitory computer readable storage medium storing a game program executable by an information processing apparatus which outputs to a display device a game image showing a behavior of an object in a game space, the game program causing the information processing apparatus to execute instructions comprising: displaying a first object and a second object in the game space on the display device at a current frame of display; determining if the first object contacted the second object during a previous frame of display; and visually depicting the first object as contacting the second object during the current fame [sic] of display when the first object contacts the second object during the previous frame of display, a number of frames between the current frame and the previous frame is determined based on a predetermined visual delay time of the display device. EVIDENCE The Examiner relied upon the following evidence: Matsuyama Fleming US 6,582,299 Bl US 2009/0310027 Al REJECTIONS June 24, 2003 Dec. 17, 2009 Appellant appeals from the Final Action, dated January 16, 2013, which includes the following rejections: 1. Claims 1-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-22 under 35 U.S.C. § 112, second paragraph, as being indefinite. 3. Claims 1-25 under 35 U.S.C. § 103(a) as unpatentable over Matsuyama and Fleming. 3 Appeal2014-001588 Application 12/534,563 ANALYSIS First Ground of Rejection: Written Description Claims 1-22 The Examiner found that the Specification does not provide adequate written description support for "repeatedly determining whether or not a first object contacts a second object at a first point in time and at a second point in time," as recited in independent claims 1and19-21. Final Act. 2. In particular, the Examiner found that "[t]he [S]pecification as filed only describes determining contact for the current time and then storing the results" wherein "[t]he saved results of determination are then used to act according to the record of the determination that happened at a previous point in time." Id. at 2-3. According to the Examiner, "[a]t best this would be making a determination about the stored results and not, as the claims require, a determination about whether the first object contacts a second object at a first point in time." Ans. 4. Appellant argues that the Specification provides adequate written description support for the claim limitation because the Specification "describes that a contact determination section 100 repeatedly determines whether or not the player object 30 contacts a block 31" and "further explains that since the game process is performed in units of 1/60 sec, the contact determination is also performed at intervals of 1/60 sec." Appeal Br. 13 (citing Spec. para. 96). According to Appellant, "[ o ]ne of ordinary skill would understand that as the frames are being displayed, the game is running over a period of time" and "the system could determine that contact 4 Appeal2014-001588 Application 12/534,563 is made in both the current frame (e.g., the second point in time) as well as the previous frame (e.g., the first point in time)." Id. at 13-14. Appellant's Specification describes that "contact determination section 100 repeatedly determines whether or not the player object 30 contacts the block 31 ... at intervals of 1/60 sec." Spec. para. 96. We agree with Appellant that "by making the determination in a current frame and then using that determination later (while continuing to make the determination in a 'future' current frame) [the system] in effect makes the determination at two points in time." Appeal Br. 14. As such, a person of ordinary skill in the art, upon reading the Specification, would understand Appellant to have had possession as of the filing date of the claimed game program "repeatedly determining whether or not a first object contacts a second object at a first point in time and at a second point in time." See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ("[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.") (citations omitted). For these reasons, we do not sustain the rejection of claims 1-22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 23-25 The Examiner found that the Specification does not provide adequate written description support for the limitation in independent claim 23 of: visually depicting the first object as contacting the second object during the current fame [sic] of display when the first object 5 Appeal2014-001588 Application 12/534,563 contacts the second object during the previous frame of display, a number of frames between the current frame and the previous frame is determined based on a predetermined visual delay time of the display device. Final Act. 3. The Examiner explains that "the claim as written describes that the frame is displayed to the user and thus must have already been rendered and sent to the display device, thus it is not possible to modify the currently displayed frame as it is already done being processed." Ans. 4. According to the Examiner, "[t]he [disclosed] system could clearly modify some subsequent frame but it cannot alter the 'current frame of display' without some sort of time travel." Id. at 4-5. Appellant argues, and we agree, that the Specification provides adequate written description support for the above limitation. See Appeal Br. 13-14; see Reply Br. 3. In particular, we agree with Appellant that "[ w ]hile it may be true that a current frame of display cannot be technically modified [since it already has been processed], the claim is not written in a manner that limits the current frame to be modified." Reply Br. 3. Moreover, the Examiner's assertions, as set forth supra, suggest that claim 23 calls for a particular sequence of executing the recited steps, yet the claim requires no such sequence. Appellant's Specification describes: The predetermined period of time . . . is set to have a value corresponding to a delay time between when the execution of contact determination by the contact determination section 100 and the display of a game image showing a game space subjected to the contact determination on the liquid crystal television. 6 Appeal2014-001588 Application 12/534,563 Spec. para. 100. The Specification further describes "that the predetermined period of time should be set to have an appropriate value, depending on the delay time." Id. As such, a person of ordinary skill in the art, upon reading the Specification, would understand Appellant to have had possession as of the filing date of the claimed game program visually depicting on a display two objects contacting during a current frame when the objects contacted in a previous frame, wherein a predetermined number of frames occurs between the current and previous frames based on a predetermined delay time for a display. For these reasons, we do not sustain the rejection of claims 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Second Ground of Rejection: Indefiniteness Independent claims 1 and 19-21 recite "repeatedly determining whether or not a first object contacts a second object at a first point in time and at a second point in time." Amendment 2, 8, 9. The Examiner determined that this limitation renders the claims indefinite because "[i]t is unclear if the determination itself is occurring at the two times, if the determination is about the contact of the objects at two times or something else." Final Act. 3-4. The Examiner further explains "that the wording of the claims makes it unclear if the system is repeatedly determining at two points in time or making a determination for two points in time repeatedly." Ans. 4. Appellant argues, and we agree, that the limitation is sufficiently clear when read in light of the Specification. Reply Br. 2. In particular, the Specification describes repeatedly determining whether or not a player 7 Appeal2014-001588 Application 12/534,563 object contacts another object at intervals of 1/60 second. Spec. para. 96. We agree with Appellant that "[ o ]ne of ordinary skill would understand that as the frames are being displayed, the game is running over a period of time" and "the system could determine that contact is made in both the current frame (e.g., the second point in time) as well as the previous frame (e.g., the first point in time)." Appeal Br. 13, 14. As such, the claims are not indefinite because the scope of the claims is clear to those skilled in the art when the claim is read in light of the Specification. Accordingly, we do not sustain the rejection of claims 1-22 under 35 U.S.C. § 112, second paragraph. Third Ground of Rejection: Obviousness Claims 1-22 Independent claims 1 and 19-21 recite "performing a predetermined process with respect to the first object when, of the results of the stored determination, at least one result of determination includes determining that the first object contacted the second object at the first point in time." Amendment, 2, 8, 9-10. The Examiner relied on Fleming to address this limitation and found that Fleming discloses that "it is known to account for the latency in rendering a game on a display by determining the interaction of player element and game element at a first and second time and use the first time to determine contact when the player makes inputs." Final Act. 5 (citing Fleming, paras. 93, 100, 110). The Examiner explained that: In order to be able correctly determine whether the falling cue ... was in contact with the target marker within the window, 8 Appeal2014-001588 Application 12/534,563 the game [of Fleming] must make repeated determinations every time the player makes an input as to whether or not the first object (the cue) contacted the second object (the marker) at a first point in time (3 frames previous) and a second point in time (the current frame) in order to operate as disclosed. Ans. 6 (emphasis added). However, the Examiner does not point to, nor do we discern, any explicit support in Fleming for this assertion. Rather, the Examiner's position that Fleming repeatedly determines cue and marker contact each time a user makes an input appears to be based on a speculative assumption. The Examiner has not established, by a preponderance of the evidence, that Fleming discloses performing a predetermined process when it is determined that the first object contacted the second object at the first point in time as called for in the claims. For this reason, we do not sustain the rejection of independent claims 1 and 19-21, and of claims 2-18 and 22 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over Matsuyama and Fleming. Claims 23-25 With regard to the rejection of independent claim 23, Appellant relies on the arguments made for patentability of independent claim 1, stating only that claim 23 "recite[s] similar features." Appeal Br. 15. Appellant does not apprise us of error in the Examiner's rejection because claim 23 does not recite limitations similar to those argued by Appellant for patentability of independent claim 1. Namely, claim 23 does not call for successively storing results of a repeated determination about contacts between a first object and a second object and then "performing a predetermined process with respect to the first object when, of the results of the stored 9 Appeal2014-001588 Application 12/534,563 determination, at least one result of determination includes determining that the first object contacted the second object at the first point in time." Amendment 10. Rather, claim 23 calls for determining if the first object contacted the second object during a previous frame of display and visually depicting the first object as contacting the second object during the current frame of display using a visual delay time of the display device. We agree with the Examiner that Fleming discloses accounting for display lag in the visual display of a game as called for in claim 23. Final Act. 6-7. As such, Appellant's arguments discussed supra with respect to claim 1 are not commensurate with the scope of claim 23. Accordingly, we sustain the rejection of independent claim 23, and of dependent claims 24 and 25, for which Appellant does not make any separate patentability arguments, under 35 U.S.C. § 103(a) as unpatentable over Matsuyama and Fleming. DECISION The decision of the Examiner to reject claims 1-25 under 35 U.S.C. § 112, first paragraph, is REVERSED. The decision of the Examiner to reject claims 1-22 under 35 U.S.C. § 112, second paragraph, is REVERSED. The decision of the Examiner to reject claims 1-22 under 35 U.S.C. § 103(a) as unpatentable over Matsuyama and Fleming is REVERSED. The decision of the Examiner to reject claims 23-25 under 35 U.S.C. § 103(a) as unpatentable over Matsuyama and Fleming is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R. § l.136(a)(l )(iv). 10 Appeal2014-001588 Application 12/534,563 AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation