Ex Parte Kawai et al

Patent Trial and Appeal Board

Jul 29, 2013

10842483 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TOSHINORI KAWAI and SHIGEYUKI ASUKE
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Appeal 2011-005144
Application 10/842,483
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-18. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

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Claimed Subject Matter
Claims 1, 8, and 15 are the independent claims on appeal. Claim 15 is
illustrative of the subject matter on appeal, and recites, with emphasis added:
15. A method of displaying a subsequent game scene in a video
game apparatus having a stored background scene image that is
larger than a screen area which is displayed, comprising:
determining, prior to displaying the subsequent scene, an
advancing direction in which a displayed player object is to be
displayed as facing in the subsequent game scene to be
displayed;
determining a position within the larger background
image for a display screen area that is used to provide a scene
background for a subsequent game scene;
determining an adjusted position of the display screen
area within the larger background image based on a position of
the player object within the display screen area and a
determined advancing direction of said player object, wherein
said adjusted position of said display screen area within the
larger background image results in the player object being
displayed within predefined distance limits from opposing
edges of the display screen area;
switching a displayed game scene to the subsequent
game scene if the player object is at a predetermined position in
said displayed game scene, wherein the subsequent game scene
is displayed using the adjusted position of the display screen
area within the background image.
Similarly, the game apparatus of claim 1 requires a “player object
boundary setting programmed logic circuitry configured to set up predefined
boundaries within the display screen area, wherein said boundaries are
defined by upper and lower ordinate value limits or left and right abscissa
value limits for said player object within the display screen area,” and the
storage medium of claim 8 requires “setting up predefined boundaries within
the display screen area, wherein said boundaries are defined by upper and
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lower ordinate value limits or left and right abscissa value limits for said
player object within the display screen area; . . . wherein said adjusting of a
displaying position of said display screen area within the larger background
image area results in the player object being displayed within predefined
distance limits from opposing edges of the display screen area.”
Drawings
The Examiner objected to the drawings at page 2 of the Final Office
Action, mailed January 19, 2010, and included this objection in the Answer
at pages 3-4. This inclusion may have been a response to the Appellants’
comments in the Status of Amendments section of the Appeal Brief (App.
Br. 6-7). See Ans. 3-4, 16. Subsequently, the Appellants sought review of
the Examiner’s objection to the drawings under 37 C.F.R. § 1.84(p)(4) and
responded to the objection. Reply Br. 4-6. However, the objection to the
drawings is a matter reviewable by petition under 37 C.F.R. § 1.181 (see
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201) and is
not within the jurisdiction of the Board. See also In re Mindick, 371 F.2d
892, 894 (CCPA 1967).
Rejections
The Appellants request our review of the following Examiner’s
rejections:
I. claims 1-7 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
II. claims 1-18 are rejected under 35 U.S.C. § 102(b) as anticipated by
Miyamoto (US 6,454,652 B2, iss. Sep. 24, 2002); and
III. claims 1-18 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
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Super Mario Bros. (Nintendo, Strategy NINTENDO POWER GUIDE,
Sg1/Np13 Nintendo Power for Super, Mario Bros. 3, (1990)).

OPINION
Rejection I - claims 1-7 rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement
Claim 1 recites “game operation control mechanism operable by the
player to produce game operation inputs for controlling game operations.”
The Examiner finds that the phrase “game operation control
mechanism,” as recited in claim 1, is subject matter which was not described
in the Specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention. Ans. 4-5. Additionally, the Examiner
finds that the term “game operation control mechanism” is not explicitly
mentioned in the Specification. Ans. 17.
The Appellants correctly assert that there is no in haec verba
requirement, i.e., the claimed invention need not be recited in the exact
language in the original specification to satisfy the written description
requirement. Reply Br. 6-7 (citing MPEP § 2163.02). See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). The
Appellants also point out that the Specification states:
The operating means 32 includes each of the above-
described operating buttons 18, 20, 22, 24, 26, 28, and 30, and
is capable of applying an operation input signal corresponding
to an operation of each of these operating buttons to the CPU
40. Therefore, the CPU 40 executes a process according to an
instruction of a player (user), which is applied through the
operating portion 32.
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Sub. Spec.1 16:21-25. See Spec. figs. 1, 2. The Appellants contend that
“buttons” are a non-limiting example and that “[o]ne of ordinary skill in the
art would recognize that operating portion 32 could encompass other
elements.” Reply Br. 7.
The Appellants’ contention is persuasive. Notably, the Examiner
construes the claimed term “game operation control mechanism” to
“encompass[] elements not supported by the original specification of the
instant application such as a mouse for a computer, a coin acceptor, or a
touch screen, to name a few examples.” Ans. 17. This construction suggests
that the Examiner requires the exact language in the original specification to
satisfy the written description requirement, which is contrary to the law and
to the guidance from the Manual of Patent Examining Procedure. The term
“game operation control mechanism” satisfies the written description
requirement because the disclosure reasonably conveys to skilled artisans
that the Appellants possessed the claimed invention as of the filing date. See
id.; Ariad at 1351.
Thus, the rejection of claims 1-7 as failing to comply with the written
description requirement is not sustained.

Rejection II - claims 1-18 rejected under 35 U.S.C. § 102(b) as anticipated
by Miyamoto
The Appellants persuasively contend that Miyamoto fails to disclose
“‘determining an adjusted position of the display screen area..., wherein said
adjusted position of said display screen area... results in the player object
being displayed within predefined distance limits from opposing edges of the

1 “Sub. Spec.” refers to the substitute Specification filed February 5, 2007.
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display screen area;’ (claim 15).” App. Br. 23. Notably, the claims call for
predefined distance limits that are set/positioned a certain distance away
from and within each edge of the display screen area and are used to limit
the left/right or up/down positioning of an object character which is to be
displayed in the display screen area upon switching to a new scene. See
App. Br. 26. The Examiner finds that “all game actions and screens are
calculated based on x and y coordinate[] position[s] of [a] game character,”
and the player object, i.e., “Mario,” is displayed in accordance with
particular camera modes which are adjusted during game play. Ans. 7, 18-
19. However, these findings fall short of providing adequate support for
correspondence to the aforementioned limitations of claim 15, and the
similar limitations of claims 1 and 8. App. Br. 25-26, Reply Br. 8-10.
Thus, the rejection of claims 1, 8, and 15, and their dependent claims,
as anticipated by Miyamoto is not sustained.

Rejection III - claims 1-18 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Super Mario Bros.
The Appellants persuasively contend that Super Mario Bros. fails to
disclose the same claim limitations that Miyamoto fails to disclose. App. Br.
23-26. As discussed supra, the claims call for predefined distance limits that
are set/positioned a certain distance away from and within each edge of the
display screen area and are used to limit the left/right or up/down positioning
of an object character which is to be displayed in the display screen area
upon switching to a new scene. See App. Br. 26. The Examiner finds that
Super Mario Bros. discloses a 2D video game where the player object, i.e.,
“Mario,” slides down a slope and enters a pipe to change game screens, and
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that these movements within the 2D game world result in different game
images and game sections that are adjusted and displayed based on the a
player’s control commands and the location of the player character. See
Ans. 12-13, 19-20. However, these findings fall short of providing adequate
support for correspondence to the aforementioned limitations of claim 15,
and the similar limitations of claims 1 and 8. App. Br. 25-26, Reply Br. 11-
12.
Alternatively, the Examiner reasons that:
. . . it is well known to one of ordinary skill in the art that video
games use coordinate systems in order to calculate and execute
game play features. Super Mario Bros. game is a two-
dimensional video game played on an electronic video game
system using a display monitor that uses an x-y coordinate
system to calculate game player actions and representation of
game play including player characters, enemies, background
images, display scenes, and screen portions presented to a game
player during game play.
Therefore, it would have been obvious to a person of
ordinary skill in the art to program the Super Mario Bros. video
game with an x-y coordinate system in order to provide
challenging, fun, and sophisticated video game play.
Ans. 14. This reasoning does not establish a prima facie case of obviousness
since limitations at issue in this appeal, e.g., “‘determining an adjusted
position of the display screen area..., wherein said adjusted position of said
display screen area... results in the player object being displayed within
predefined distance limits from opposing edges of the display screen area;’
(claim 15),” and the similar limitations of claims 1 and 8, are not adequately
addressed by the Examiner’s reasoning. See App. Br. 23, Reply Br. 10-12.
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Thus, the rejection of claims 1, 8, and 15, and their dependent claims,
as anticipated or, in the alternative, unpatentable over Super Mario Bros. is
not sustained.

DECISION
We REVERSE the rejection of claims 1-18.

REVERSED

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