Ex Parte Engelsma et al

Patent Trial and Appeal Board

Sep 11, 2013

11766446 (P.T.A.B. Sep. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN R. ENGELSMA, MATHIEU C. HANS,
VENUGOPAL VASUDEVAN, and JAMES C. FERRANS
____________________

Appeal 2011-0028641
Application 11/766,446
Technology Center 2100
____________________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
JOHN A. EVANS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Motorola Inc. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21-40. (App. Br. 2.)2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for enhancing the
functionality of a gaming system having a virtual feature paired with a
controller. In particular, the virtual feature is dynamically altered to reflect
the age or degree of use of the controller paired therewith. (Spec. [0022],
[0029], Fig. 5).
Illustrative Claim
Independent claim 21 further illustrates the invention as follows:

21. A method for enhancing functionality in gaming systems
running a game, the method comprising the steps of:

2 We refer to the supplemental Appeal Brief filed on June 02, 2010.
Initially, we note claims 21-40 stand rejected under 35 U.S.C. §102(b) and
§103(a). However, Appellants only present arguments against the rejection
of claims 21, 30 and 36, but do not address the rejections of claims 22-29,
31-35, and 37-40. (See App. Br. 2-7). The Board has jurisdiction over all the
claims because: (1) the Notice of Appeal is silent as to specific claims being
appealed, (2) there is no clear statement in the Appeal Brief that Appellants
intend not to appeal some of the rejected claims, and (3) the Appeal Brief
omits rejections from the Grounds of Rejection to be reviewed on appeal.
Thus, because the Board has jurisdiction over all the claims pending in this
appeal and claims 22-29, 31-35, and 37-40 were not addressed in the Appeal
Brief, the final rejections of these claims are pro forma affirmed.
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pairing the gaming system running the game with an accessory
capable of controlling a virtual feature within the game; and

dynamically altering the virtual feature within the game based
on an age of the paired accessory.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Bouton US 5,551,701 Sep. 3, 1996
Komoto US 6,270,416 B1 Aug. 7, 2001
Yamamoto US 6,659,860 B1 Dec. 9, 2003
Rogers US 2005/0137015 A1 Jun. 23, 2005

Rejections on Appeal3
The Examiner rejects the claims on appeal as follows:
1. Claims 21-23, 29-32, 35-38, and 40 stand rejected under 35 U.S.C.
§ 102(b), as being anticipated by Komoto.
2. Claims 24-26, and 28 stand rejected under 35 U.S.C. § 103(a), as
being unpatentable over the combination of Komoto and Rogers.
3. Claims 27, 34, and 39 stand rejected under 35 U.S.C. § 103(a), as
being unpatentable over the combination of Komoto and
Yamamoto.
4. Claim 33 stands rejected under 35 U.S.C. § 103(a), as being
unpatentable over the combination of Komoto and Bouton.

3 See supra note 2.
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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 4-7.
Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding that Komoto describes dynamically altering a virtual feature of a
game based on the age of an accessory paired with the virtual feature, as
recited claim 21?
Appellants argue that the Examiner erred in finding that Komoto
describes the disputed limitations emphasized above. According to
Appellants, Komoto discloses pairing a controller with a virtual feature
(weapon), and dynamically altering the virtual feature based on the age or
degree of use of the weapon. That is, Komoto’s dynamic alteration of the
virtual feature is based on the age of the weapon associated therewith, but
not the age of the controller paired therewith. (App. Br. 6-7.)
In response, the Examiner finds that because Komoto’s controller is
paired with the virtual feature/weapon for at least the duration of a particular
game session, the age of the virtual feature also reflects the age of the
controller for that particular session. Therefore, the alteration of the virtual
feature is based on the age/degree of use of the weapon, which is also the
age of the controller for that session. (Ans. 22-23.)
Further, the Examiner finds unpersuasive Appellants’ argument that
Komoto does not describe a controller that retains its age even when
separated from a gaming device and coupled with another device because
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such argument is not commensurate with the scope of the claim. (Ans. 24.)
We fully agree with the afore-cited Examiner’s findings, which we adopt
herein as our own. It follows that Appellants have not shown error in the
Examiner’s rejection of claim 21.
Claims 30 and 36 not separately argued fall with claim 21 above. See
37 C.F.R. § 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejections of claims 21-40 as set forth
above.
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

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