Ex Parte Edwards

Patent Trial and Appeal Board

Mar 4, 2013

11393256 (P.T.A.B. Mar. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID COLE EDWARDS
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Appeal 2011-000601
Application 11/393,256
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-33. App. Br. 5. Claims 34-40 are withdrawn. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claims 1 and 25 are independent. Claim 1 is reproduced below:
1. A method for developing video games,
comprising:
providing a context sensitive graphic user interface
configured to receive input selections and provide options in
response to the input selections;
selecting images for use in the video game;
selecting activities related to the video game, the
activities each having a type and at least some of the activities
related to the images;
storing data associated with the activities; and
executing an engine that reads the data associated with
the activities and uses the images to play the video game.

REJECTIONS
Claims 1-6 and 8 are rejected under 35 U.S.C. § 102(b) as anticipated
by Weiss (US 2003/0148806 A1; pub. Aug. 7, 2003).
Claims 7-18 and 20-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weiss.
Claims 19, 24-30, and 32, and 33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Weiss, Shimomura (US 6,468,161 B1;
iss. Oct. 22, 2002), and Eiba (US 6,117,013; iss. Sep. 12, 2000).
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Weiss, Shimomura, and Takahashi (US 2003/0017863 A1; iss. Jan. 23,
2003).
ANALYSIS
Claims 1-6 and 8 as anticipated by Weiss
Regarding claim 1, the Examiner found that Weiss discloses a method
of using an authoring software tool for developing video games comprising a
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context sensitive graphical user interface (GUI). Ans. 4. The Examiner also
found that Weiss discloses that when a designer decides to select graphics,
audio clips, or video clips, the interface provides options (i.e., library data of
graphics, audio clips, or video clips) to select. Ans. 9 (citing para. [0031]).
The Examiner reasoned that a prior selection has to be made for a designer
to initiate the next selection as the GUI sequentially provides options to the
designer to solicit responses and thus each selection depends on a previous
selection input by a designer. Ans. 9-10. The Examiner found that Weiss
discloses selecting or creating activities (i.e., a set of instructions) related to
a video game where the activities have a type and at least some of the
activities are related to images because a designer uses a GUI to design
visual, mechanical movement, sound graphics, and logic aspects or activities
of a desired game presentation. Ans. 4 (citing paras. [0041, 0043]). The
Examiner also found that Weiss assembles pre-made elements stored in
libraries and the activities are produced on the fly from these library
selections via instructions and relate to video games and images. Ans. 10
(citing paras. [0036, 0052]). The Examiner further found that a designer can
create a game without personally inputting or writing any programming code
or machine language code by using graphic files, audio clips and video clips
in file formats. Ans. 10.
Appellant argues that Weiss does not disclose “a context sensitive
graphical user interface” because Weiss expressly teaches that a plurality of
presentation options are sequentially and interactively presented to the
designer in a pre-arranged order so a designer can interactively respond to
the presented options. App. Br. 12 (citing paras. [0041, 0054]). Appellant
argues that claim 1 calls for a context sensitive graphic user interface to be
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“configured to receive input selections and provide options in response to
the input selection” whereas Weiss provides options sequentially, that is, in a
prearranged order irrespective of user input and without regard to what was
previously selected, and the Examiner has not shown that the options must
be dependent on previous selections. App. Br. 12-13; Reply Br. 3-4.
Appellant also argues that the mere suggestion that options are presented
because a prior selection was made does not necessarily teach that the
options are dependent upon what was selected such that the graphical user
interface is context sensitive. Reply Br. 4.
These arguments do not apprise us of error in the Examiner’s findings
that Weiss discloses a context sensitive GUI by disclosing an interface that
provides options such as library data of graphics, audio clips, and video clips
when a designer selects graphics or audio or video clips. Ans. 9 (citing para.
[0031]). Nor do these arguments persuade us of error in the Examiner’s
findings that Weiss discloses a GUI that presents options in a sequential
order in response to a previous user selection. Ans. 9-10. Appellant does
not dispute this finding except to argue that such a selection “does not
necessarily teach that the options are dependent upon what was selected such
that the graphical user interface is context sensitive.” Reply Br. 4. Claim 1
is not so limited and we decline to read such a limitation into claim 1. Weiss
also discloses that in response to a designer’s selection of valid presentation
options at step 93, the selected options and the components that they require
are assembled and presented to the designer as utility library 60, presentation
library 61, audio library 63, video library 64, and graphics library 65. See
paras. [0054-0055]; figs. 2, 3A, 3B.

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Appellant also argues that Weiss teaches that instructions are created
to establish the flow of a game and the Examiner misinterpreted “creating
instructions” with “selecting activities related to the video game, the
activities each having a type and at least some of the activities related to the
images.” App. Br. 14-15. Appellant argues that Weiss does not disclose
that the instructions or activities created by the instructions have a type and
are related to the images because paragraph [0036] of Weiss teaches that the
game data player presents a sequence of instructions that control operation
of the gaming device and paragraph [0052] teaches that game data collector
stores game files that include a sequence of game instructions that control
operation of a game data player. Reply Br. 5-6. These arguments do not
persuade us of error in the Examiner’s findings that Weiss selects activities
related to a video game such as various scripts, graphics, audio clips, and
video clips and some of the activities relate to images for the video game.
Ans. 4, 9-10, see Weiss, para. [0031]. Once these desired game design files
are created by a designer’s selections, authoring computer 11 transfers the
game design files to game data collector 15, which converts the game design
files to a set of instructions that correspond to each operation required to
play the newly designed game. Weiss, paras. [0032-0033].
Claims 2 and 3
Claims 2 and 3 depend from claim 1 and recite that the data associated
with the activities contain no programming code (claim 2) and no machine
language code (claim 3). The Examiner found that Weiss discloses activities
that contain no programming or machine language code by teaching that the
authoring system allows a designer to design a game without inputting or
writing any programming or machine language code and the graphic files,
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audio clips and video clips are in file formats such as gif, jpeg, mp3, or avi
that are not programming language. Ans. 4-5 (citing paras. [0027, 0031]),
10.
Appellant argues that the Examiner has not established where Weiss
teaches that graphics, audio clips and video clips comprise no programming
code or machine language code as recited in claims 2 and 3. App. Br. 16.
Appellant also argues that although Weiss discloses that a designer need not
know computer programming to select the various script, graphics, audio
clips, and video clips to be used in the game, Weiss contains no express or
inherent teaching that data associated with the alleged activity does not
include programming or machine language code. App. Br. 17-18. These
arguments do not persuade us of error in the Examiner’s finding that Weiss
discloses data associated with activities such as graphics, audio clips, and
video clips in file formats such as gif, jpeg, mp3, or avi and these files are
not programming language or machine language code.
Claim 4
Appellant argues that Weiss does not disclose “storing data associated
with the activity in a frame of an action file” as recited in claim 4. App. Br.
19. We agree with the Examiner that Weiss discloses that each set of game
design files is compiled to form plural game data file sets corresponding to
frames in an action file that are used to play a game. Ans. 5 (citing paras.
[0018-0019]); 10-11. Appellant does not provide a lexicographic definition
of “frame” in the Specification or cite a commonly understood meaning of
“frame” that distinguishes the claimed frame from the game design files of
Weiss. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference
need not satisfy an ipsissimis verbis test).
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Claims 5 and 8
Appellant also argues that Weiss does not disclose that storing each
related activity in a different frame of the action file and storing different
activities in frames of other action files as recited in claim 5. App. Br. 20-
21. This argument does not persuade us of error in the Examiner’s finding
that Weiss discloses that sets of game design files are compiled to form a
plurality of game data file sets and these files correspond to different frames.
Ans. 5, 11 (citing Para. [0019]).
We sustain the rejection of claims 1-6 and 8.
Dependent claims 7-18 and 20-23 as unpatentable over Weiss
Claims 10-18 recite various activity types such as a launch, a damage,
a go to, an if action to self, a delete, a delete self, a reload, a bonus, and a
picture. Claims 20-23 recite that selecting activities comprise identifying an
absolute position at which a character is to appear (claim 20), identifying a
delta position where the character should move to (claim 21), specifying a
layer where a character is to appear (claim 22), and specifying a relative size
of a character in a video game (claim 23). The Examiner found that Weiss
discloses various scripts for game play, graphics, audio clips, and video clips
and that the claimed activity types are a matter of design choice that is well
within the level of ordinary skill and yield predictable results. Ans. 6, 11.
Appellant argues that Weiss does not provide any disclosure of the
features recited in claims 10-18 and 20-23 and therefore, the Examiner’s
reliance on design choice does not establish that these features are obvious.
App. Br. 24-33. We agree. The Examiner’s determination that claims 10-18
and 20-23 are obvious as a matter of design choice is not supported by a
rational underpinning. The Examiner has not adequately explained how the
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disclosure in Weiss of scripts for game play, graphics, audio clips, and video
clips renders obvious the claimed selectable types and selecting activities.
Appellant discloses that the features perform particular functions. See Spec.
16-20, paras. [0065-0070]; see also In re Chu, 66 F.3d 292, 298-99 (Fed.
Cir. 1995) (design choice is appropriate when an applicant fails to set forth
any reason why differences between a claimed invention and the prior art
result in a different function). We do not sustain the rejection of claims 10-
18 and 20-23. Appellant does not present argument for the separate
patentability of claims 7-9. Therefore, we sustain the rejection of those
claims.1
Claims 19, 24-30, 32, and 33 unpatentable over Weiss, Shimomura, Eiba
Claim 25 recites a tool for developing video games comprising a
context sensitive graphical user interface for creating activities related to
game play at least some pre-rendered in 3-dimensional images. Appellant
argues that Shimomura and Eiba do not provide disclosures that cure the
deficiencies of Weiss for claim 1. App. Br. 33-34. Appellant argues that
claims 19 and 24 are allowable due to their dependency from claim 1, and
claims 26-30, 32, and 33 are allowable due to their dependency from claim
25. App. Br. 34. As we sustain the rejection of claim 1, these arguments are
not persuasive. We sustain the rejection of claims 19, 24-30, 32, and 33.

1 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (noting with approval
the Board’s practice of requiring an appellant to identify alleged error in the
examiner’s rejection and “[t]he panel then reviews the obviousness rejection
for error based upon the issues identified by appellant, and in light of the
arguments and evidence produced thereon.”); 37 C.F.R. § 41.37(c)(1)(vii).
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Claim 31 unpatentable over Weiss, Shimomura, and Takahashi
Appellant argues that Shimomura and Takahashi do not remedy the
deficiencies of Weiss as to claim 25, from which claim 31 depends. App.
Br. 35. As we sustain the rejection of claim 25, there are no deficiencies for
Shimomura and Takahashi to cure. We sustain the rejection of claim 31.
DECISION
We AFFIRM the rejection of claims 1-6 and 8 under 35 U.S.C.
§ 102(b) as anticipated by Weiss.
We AFFIRM the rejection of claims 7-9 under 35 U.S.C. § 103(a) as
unpatentable over Weiss.
We REVERSE the rejection of claims 10-18 and 20-23 under 35
U.S.C. § 103(a) as unpatentable over Weiss
We AFFIRM the rejection of claims 19, 24-30, 32, and 33 under 35
U.S.C. § 103(a) as unpatentable over Weiss, Shimomura, and Eiba.
We AFFIRM the rejection of claim 31 under 35 U.S.C. § 103(a) as
being unpatentable over Weiss, Shimomura, and Takahashi.
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).

AFFIRMED-IN-PART

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