NINTENDO CO., LTD.

Patent Trials and Appeals Board

Mar 9, 2021

2019006029 (P.T.A.B. Mar. 9, 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.
15/061,159 03/04/2016 Ryutaro TAKAHASHI RYM-723-4297 1877
27562 7590 03/09/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DONABED, NINOS
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
03/09/2021 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 RYUTARO TAKAHASHI, HAYURU SOMA,
KAZUKI YOSHIHARA, GINGA KAMEI, and MASAYUKI OKADA

Appeal 2019-006029
Application 15/061,159
Technology Center 2400

Before JAMES R. HUGHES, JOHN A. EVANS, and
LARRY J. HUME, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–5 and 7–21 are pending, stand rejected, are appealed by
Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1–2; Appeal Br. 19.2 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. See Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Mar. 4, 2016
(claiming benefit of JP 2015-160050, filed Aug. 14, 2015); Appeal Brief
(“Appeal Br.”), filed Mar. 8, 2019; and Reply Brief (“Reply Br.”), filed Aug.
Appeal 2019-006029
Application 15/061,159

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CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, generally “relates
to an information processing system in which information terminals can
communicate data.” Spec. 1:10–11. More specifically, Appellant’s claimed
information processing system displays a representation of a character (an
avatar or graphical representation of the user) and an emotional pattern of
the character in correspondence based on emotion data obtained from
analysis of content of messages from (sent by) the user. See Spec. 1:13–
5:27; Abstract. Claims 1 (directed to a system), 17 (directed to a system), 18
(directed to an apparatus), 19 (directed to a storage medium), and 20
(directed to a method) are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An information processing system in which a plurality of
information processing apparatuses communicate data through a
server,
a first information processing apparatus configured to at
least perform:
a first message acceptance which accepts input of a
first message input by a user who operates the first information
processing apparatus, and
a first message transmission which transmits the
accepted first message and first character information to the
server,
a second information processing apparatus configured to
at least perform:

8, 2019. We also refer to the Examiner’s Final Office Action (“Final Act.”),
mailed June 12, 2018; and Answer (“Ans.”) mailed June 20, 2019.
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a second message acceptance which accepts input
of a second message input by a user who operates the second
information processing apparatus, and
a second message transmission which transmits the
accepted second message and second character information to
the server,
the first information processing apparatus further
configured to perform:
a representation output which provides display, in
chronological order, of the first message brought in
correspondence with a first character based on the first character
information and the second message brought in correspondence
with a second character based on the second character
information obtained through the server,
the representation output also providing display of
an emotional pattern of the character in correspondence with at
least one of the first and second messages based on emotion data
obtained as a result of an analysis of content of the at least one
of the first and second messages, the analysis of the content of
the at least one of the first and second messages including a
division of the content into unit clauses and an analysis of the
unit clauses to automatically set the emotion data for each of the
clauses, and
a reproduction output which provides audio output
of the first message and the second message.
Appeal Br. 18–19 (Claims App.) (emphasis added).
REFERENCE
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Kadirvel et al. (“Kadirvel”) US 2015/0121251 A1 Apr. 30, 2015
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Application 15/061,159

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REJECTION3, 4
The Examiner rejects claims 1–5 and 7–21 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Kadirvel. See Final Act. 6–13.
ANALYSIS
The Examiner rejects independent claim 1 (as well as independent
claims 17–20, and dependent claims 2–5, 7–16, and 21) as anticipated by
Kadirvel. See Final Act. 6–8; Ans. 3–4. Appellant contends that Kadirvel
does not disclose the disputed limitations of claim 1. See Appeal Br. 12–16;
Reply Br. 2–4. Appellant also contends that Kadirvel does not disclose the
disputed limitations of claim 21. See Appeal Br. 16; Reply Br. 4–6.
Specifically, Appellant contends, inter alia, that claim 1 requires
the representation output also providing display of an emotional
pattern of the character in correspondence with at least one of the
first and second messages based on emotion data obtained as a
result of an analysis of content of the at least one of the first and
second messages, the analysis of the content of the at least one
of the first and second messages including a division of the
content into unit clauses and an analysis of the unit clauses to
automatically set the emotion data for each of the clauses.
Appeal Br. 12 (quoting claim 1). Appellant further contends “Kadirvel
discloses an avatar displaying emotion. However, the emotions are user
selected or determined based upon a user selection, rather than being

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 102. Because the present application
has an effective filing date after the AIA’s effective date (March 16, 2013),
this decision refers to 35 U.S.C. § 102(a)(1).
4 The Examiner has withdrawn the rejections under 35 U.S.C. § 112(a) and
35 U.S.C. § 112(b). See Ans. 3; Final Act. 3–5. We do not address the
withdrawn rejections or Appellant’s arguments thereto. See Appeal Br. 11–
12.
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Application 15/061,159

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automatically set based on the content of the messages being divided into
unit clauses and analyzed as required by claim 1.” Appeal Br. 15; see
Appeal Br. 12–16; Reply Br. 2–4.
We agree with Appellant that the Examiner-cited portions of Kadirvel
do not disclose displaying an avatar (character representation) of a user that
includes an emotional expression (emotional pattern) derived from or based
on emotion data generated from analyzing message content (that is, parsing
(division of) the content of the messages, analyzing the parsed content, and
determining (automatically setting) emotion data for each portion (clause) of
the parsed content) as required by claim 1. See Appeal Br. 12–16; Reply
Br. 2–4. At best, Kadirvel describes displaying avatars and emotions, but
the emotions are user selected, not automatically generated. See Appeal Br.
12–16; Reply Br. 2–4.
The Examiner has not shown Kadirvel discloses the disputed features
of claim 1. To anticipate a prior art reference must “disclose all elements of
the claim within the four corners of the document, and it must disclose those
elements arranged as in the claim.” Microsoft Corp. v. Biscotti, Inc., 878
F.3d 1052, 1068 (Fed. Cir. 2017) (internal quotation marks omitted). See
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989);
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987); MPEP § 2131.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Kadirvel anticipates Appellant’s claim 1.
Independent claims 17–20 include limitations of commensurate scope.
Dependent claims 2–5, 7–16, and 21 depend from and stand with claim 1.
Accordingly, Appellant’s contentions persuade us of error in the Examiner’s
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anticipation rejection of representative independent claim 1 and we reverse
the Examiner’s rejection of claims 1–5 and 7–21.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–5
and 7–21 under 35 U.S.C. § 102(a)(1). We, therefore, do not sustain the
Examiner’s rejection of claims 1–5 and 7–21.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–21 102(a)(1) Kadirvel 1–5, 7–21

REVERSED