Ex Parte Lord et al

Patent Trial and Appeal Board

Oct 23, 2018

14267824 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/267,824 05/01/2014 Josh Lord
23410 7590 10/23/2018
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
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.
ACTV-001.101 3619
EXAMINER
YEN,JASONTAHAI
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
10/23/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSH LORD, STEPHEN MILLER, and
DAVID ROWE
Appeal2018-000771
Application 14/267 ,824
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Activision Publishing, Inc. is the Applicant and real-party-in-interest.
Appeal Br. 2.
Appeal2018-000771
Application 14/267,824
THE INVENTION
Appellants' invention relates to video game special effects. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of outputting an asset and exhibiting a
simulated physical effect in a video game being played by a
user, compnsmg:
assigning a coverage zone to a secondary effect of an
activity in the video game, the secondary effect simulating a
force caused by the activity;
assigning a detection zone to an object in the video game;
determining the coverage zone intersects with the detection
zone;
causing the object to emit an asset based on the intersection
of the coverage zone and the detection zone, the asset
corresponding to a simulated physical effect of the simulated
force acting on the object; and
exhibiting the simulated physical effect perceivable by the
user playing the video game.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Shimokawa
Nishimori
Ogrin
US 2004/0063501 Al
US 2006/0258445 Al
US 2013/0331189 Al
Apr. 1, 2004
Nov. 16, 2006
Dec. 12, 2013
The following rejections are before us for review:
1. Claims 3, 8, 9, 14, 15, and 16 are rejected as indefinite under 35
U.S.C. § 112(b) for failing to particularly point out and distinctly claim the
subject matter which the inventors regard as the invention.
2. Claims 1 and 14--17 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Nishimori.
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3. Claims 2--4 and 8-10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nishimori and Ogrin.
4. Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishimori, Ogrin, and Shimokawa.
5. Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishimori and Shimokawa. 2
OPINION
Indefiniteness of Claims 3, 8, 9, 14, 15, and 16
The Examiner maintains that use of the modifier "substantially" in the
claim term "substantially spherical" in these claims renders them indefinite.
Final Action 3, Ans. 10. Appellants argue that courts routinely allow use of
the modifier "substantially" in patent claims. Appeal Br. 8 ( citing Andrew
Corp v. Gabriel Electronics, Inc., 847 F.2d 819 (Fed. Cir. 1988)).
Over the years, the Federal Circuit has consistently maintained that
words of approximation, such as "generally" and "substantially" are
descriptive terms "commonly used in patent claims 'to avoid a strict
numerical boundary to the specified parameter."' Anchor Wall Systems, Inc.
v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310-11 (Fed. Cir.
2003); see also Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed.
Cir. 2001), Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed.
Cir. 1995); Andrew Corp, 847 F.2d at 821-22.
Under the facts and circumstances presented by this case, we see no
reason not to apply the general principles regarding terms of approximation
2 A rejection of claims 1-20 under the written description requirements of 35
U.S.C. § 112(a) has been withdrawn. Ans. 3. A rejection of claims 5, 6, 11,
12, 18, and 19 as indefinite under 35 U.S.C. § 112(b) has also been
withdrawn. Id.
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enunciated, for example, in Anchor Wall Systems. Consequently, we do not
sustain the Examiner's indefiniteness rejection of claims 3, 8, 9, 14, 15,
and 16.
Anticipation of Claims 1 and 14-17
by Nishimori
Appellants argue claims 1 and 14--17 as a group. Appeal Br. 17-18.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Nishimori discloses all of the limitations of
claim 1. Final Action 4--5. In particular, the Examiner finds that Nishimori
causes an object to emit an asset based on an intersection of a coverage zone
and a detection zone. Id. at 5 (citing Nishimori ,r,r 69-70). The Examiner
further finds that the asset corresponds to a simulated physical effect of a
simulated force acting on the object. Id. The Examiner further explains that
Nishimori causes a bomb to explode thereby generating a blast such that the
"bomb object" is "erased" when the bomb object is exploded. Id. at 10.
According to the Examiner, erasing the bomb object when the bomb
explodes is considered a "simulated physical effect of the simulated force
acting on the object." Id.
Appellants argue that the Examiner's rejection is based on the position
that "erasing the bomb" is the "asset" emitted by the object. Appeal Br. 17.
[I]n effect, the Examiner is asserting that the coverage zone of
the bomb is also the detection zone of the object (i.e., the
Examiner is equating the object with the bomb and the claimed
"activity" is the explosion of the same bomb).
However, the Examiner's rejection does not anticipate the
claimed invention which requires that the object is a different
element than the activity and that the coverage zone pertains to
the activity and the detection zone pertains to the object, such
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Application 14/267,824
that the coverage zone and detection zone are related to
different elements.
Id. In addition, Appellants argue that Nishimori only teaches that the bomb
explodes when a timer expires, and that the bomb is erased when it explodes.
Id. at 18. Appellants contend that Nishimori does not teach that the
bomb is erased based on the intersection of a coverage zone of the bomb and
a detection zone of the same bomb. Id. Thus, according to Appellants,
"Nishimori does not teach or suggest that an object emits an asset when a
coverage zone assigned to a secondary effect of an activity intersects with a
detection zone of an object, as required by Applicant's claimed invention."
Id.
In the Answer, the Examiner elaborates on the findings of fact of the
Final Action and determines that, when areas 73 and 76 of Nishimori are in
contact with each other, player character 71 performs a "turning motion"
toward the explosion. Ans. 6, 11. Such turning motion is considered an
asset that is emitted by the object, i.e., the player character. Id.
In reply to the Examiner's findings of fact, Appellants argue that
Nishimori does not teach that an object (player character 71) emits an asset
that corresponds to a simulated physical effect of a simulated force acting on
the object. Reply Br. 5. Appellants distinguish Nishimori's turning motion
as a reflex action by the virtual character to visualize the explosion as
opposed to a simulated physical effect of a simulated force acting on the
object (player character 71). Id.
In the Background of the Invention section of Appellants'
Specification, Appellants explain that, in real life, objects may react to
secondary effects of an environmental or impact activity. Spec. 1. "For
example, if a bomb explodes, a nearby fence may rattle in response to the
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resulting shockwave." Id. Appellants define "object" broadly to encompass
"a physical object, person, or other living creature." Id. Thus, in accordance
with Appellants' explicit definition, player character 71 of Nishimori
qualifies as an "object" within the meaning of claim 1. Similarly,
Appellants' Specification uses the term output "asset" broadly to essentially
encompass any audio, visual, or audio-visual effect triggered by a "force
other than a direct hit." Id. "In other words, the asset is output in response
to a secondary effect of the activity." Id. at 1-2. The Specification further
explains that sounds may be related to an "environmental activity" or an
"impact activity." Id. "Environmental activity" refers to activity such as
flies buzzing, water running, footsteps, a car engine, etc. Id.
According to Appellants' Specification, a secondary force ("force
other than a direct hit") can originate from either an environmental activity
or an impact activity. Spec. 2. In their invention, an "object" is
programmed to react to a secondary force. Id. Although the Specification
discloses that the "activity" is "typically" an explosion and that the
"secondary effect" is "typically" a shockwave from the explosion (see id.),
the output asset may vary based on the "type of activity." Id. Based on
Appellants' description of their invention, including definitions, the activity
that produces the secondary effect encompasses subject matter other than
just explosions and their resulting shockwaves.
The activity may be a weather event or natural phenomenon
such as an earthquake, lightning strike, hurricane, tornado,
tsunami, volcanic eruption, etc. The activity may be a sonic
boom from an aircraft, or a force wave from a supernatural
power. The activity may be recoil or reverberation from firing
a weapon, or a shockwave from a large building falling or an
aircraft crashing.
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Id. at 4.
Figure 8 of Nishimori shows a game space where player character 71
is attacked by a bomb. Nishimori ,r 69, Fig. 8. Player character 71 is
surrounded by hitting determination area 73. Id. ,r 70, Fig. 8. Bomb
object 75 explodes thereby generating hitting determination area 76. Id.
,r 69, Fig. 8. Game apparatus 3 then determines whether player character 71
is "influenced" by the explosion based on whether hitting determination
areas 73 and 76 are in contact with each other. Id. ,r 70. If these areas
contact each other, game apparatus 3 causes player character 71 to tum
toward the explosion. Id.
In the instant case, there is little, if any, dispute between the Examiner
and Appellants regarding whether Nishimori' s player character 71
corresponds to the claimed "object." Nishimori, ,r,r 69-70, Fig. 8. Similarly,
there is no genuine dispute that the explosion of bomb object 75 with
associated hitting determination area 7 6 qualifies as an activity that causes a
secondary effect with an assigned coverage zone as claimed. Id. We agree
with the Examiner that having player character 71 tum to the explosion
qualifies as an object emitting an asset based on intersection of a coverage
zone and a detection zone. Id. Thus, the controversy between the Examiner
and Appellants boils down to whether the turning motion described in
Nishimori ,r 70 is properly considered to be an asset that corresponds to a
simulated physical effect "of the simulated force" acting on the object as
claimed. Claims App. claim 1.
As illustrated by Appellants' use a coverage zone, the strength of a
shock wave dissipates as it radiates to greater distances from the point of
origin of the explosion. Thus, at an outer periphery of the shock wave ( or
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coverage zone) of an explosion, the force of the shock wave may be
sufficiently weak so as to accomplish no more than attract a person's
attention, prompting the person to tum in the direction of the blast.
Furthermore, a bomb explosion may cause a number of secondary
effects besides just a shock wave, such as a flash of light, a cloud of smoke
and dust, a loud sound, and a field of flying shrapnel and debris. For
purposes of our analysis, we now focus on the sound that emanates from an
explosion and whether such a sound qualifies as a "force" within the
meaning of claim 1.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly
during prosecution is not unfair to the applicant, because the applicant has
the opportunity to amend the claims to obtain more precise claim coverage.
In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Generally, a sound is comprised of vibrations that travel in waves
through the air and eventually impact on the ear of a person or other animal.
As sound waves are generally known to cause a person's ear drum to
vibrate, sound waves may properly be considered a "force" for purposes of
construing and applying claim 1. We have reviewed Appellants' entire
disclosure and are of the opinion that a person of ordinary skill in the art
would consider sound waves generated by an explosion to constitute a
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"force" within the ordinary and customary meaning of the term in the
context of Appellants' disclosure. See e.g., Spec. 1-2.
We next consider whether turning toward the explosion in Nishimori
is properly characterized as an asset that corresponds to a simulated physical
effect of the simulated force (sound) acting on the object (player
character 71 ). We determine that it does. Appellants define "object"
broadly so as to encompass persons as well as inanimate objects. Spec. 1.
Persons, as opposed to inanimate objects, are capable of a broader range of
responses and reactions to external stimuli. Although an inanimate fence
may "rattle" in response to being exposed to an explosion, a person with
sensory perception of sight, hearing, touch, and smell is capable of a much
broader range of responses and reactions. A loud noise such as an explosion
would naturally have the effect of attracting the attention of a person hearing
the noise and then prompting the person to tum in the direction of where the
noise is coming from. This is sufficient to satisfy the limitations of claim 1.
We have considered the following argument of Appellants from their
Reply Brief:
The Examiner interprets the turning motion of the virtual
character when it is determined that an explosion contacts the
virtual character as emitting an asset. However, in marked
contrast to Appellant's claimed invention, Nishimori teaches
that the virtual character performs a turning motion ( what the
Examiner interprets as emitting the asset) as a response to being
hit by a simulated object, not as a simulated physical effect of a
simulated force acting on the virtual character (the object in the
method of Nishimori). In other words, the turning motion is for
the character to visualize the point of contact of the explosion
or a reflex action by the virtual character and NOT a simulation
of the force of the explosion acting on the virtual character.
Indeed, the turning of the virtual character in Nishimori is
actually towards the explosion, which is in the opposite
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direction that a simulated force from the explosion would
cause.
Reply Br. 5 (emphasis supplied by Appellants). Appellants' argument
focuses too narrowly on the shock wave as being the only force generated by
the explosion. Appellants acknowledge that Nishimori' s player character 71
turns to "visualize the point of contact of the explosion," which admits there
is a cause and effect relationship between the explosion and the turning. Id.
Appellants, however, fail to recognize that the sound waves emanating from
the explosion constitute a force within the meaning of claim 1. Similarly,
Appellants fail to consider that the shock wave, at its outermost periphery,
may only have enough strength to attract a person's attention to prompt a
turning motion. At closer distances to an explosion, it may be true that a
shock wave will forcibly displace a person or object in a direction away
from the source of the explosion, however, as we have explained, such may
not be the case at greater distances from the source of the explosion.
In short, Appellants have described and claimed their invention more
broadly than they are now willing to concede for purposes of a patentability
analysis. The Examiner's findings of fact are supported by a preponderance
of the evidence and, accordingly, we sustain the Examiner's anticipation
rejection of claims 1 and 14--1 7.
Unpatentability of Claims 2-5, 8-11, and 18-20
over Combinations based on Nishimori
These claims stand rejected as being unpatentable over Nishimori in
combination with additional references. Final Action 7-9. Appellants do
not argue for the separate patentability of these claims apart from arguments
that we have previously considered and found unpersuasive with respect to
the anticipation rejection of parent claim 1. Appeal Br. 18-20.
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Thus, we are not apprised of error and, accordingly, we sustain the
rejections of claims 2-5, 8-11, and 18-20.
DECISION
The Examiner's decision to reject claims 3, 8, 9, 14, 15, and 16
under 35 U.S.C. § 112(b) as indefinite is REVERSED.
The Examiner's decision to reject claims 1 and 14--17 under 35
U.S.C. § 102 as anticipated by Nishimori is AFFIRMED.
The Examiner's decision to reject claims 2-5, 8-11, and 18-20 as
unpatentable under 35 U.S.C. § 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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