Ex Parte Shirakawa et al

Patent Trial and Appeal Board

Feb 14, 2018

12076599 (P.T.A.B. Feb. 14, 2018)

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.
12/076,599 03/20/2008 Mari Shirakawa 723-4206 6253
27562 7590 02/21/2018
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PIZIALI, JEFFREY J
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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 MARI SHIRAKAWA and GILES GODDARD
Appeal 2017-001580
Application 12/076,5991
Technology Center 2600
Before MARC S. HOFF, JAMES W. DEJMEK, and
ALEX S. YAP, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—18. Claims 19—27 have been withdrawn from consideration. Final
Act. 13. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Nintendo Co., Ltd. as the real party in interest. App.
Br. 3.
Appeal 2017-001580
Application 12/076,599
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is directed to “controlling
a movement of an object displayed on a screen on the basis of an input from
a pointing device.” Spec, (i): 13—14.2 Figure 5 is illustrative and is
reproduced below:
Fie, 5
HIT DETERMINATION IN A PiREGTiON VERTICAL TO INPUT DIRECTION
Figure 5 from Appellants’ Specification illustrates a hit determination of a
virtual object (104) in response to user input, but also identifies several
claimed elements. Spec. 8:10-11; 21:5—25. As shown, fO indicates a first
detected touched position and fl indicates a second detected touched
position. Spec. 21:7—9. B0 is a reference point of the virtual object (104)
2 We refer to the substitute Specification, filed April 29, 2011. We note
what has been labeled as page 1 begins on the second page of the
Specification. For ease of reference, we will use the page numbers on the
Specification as filed. We assign “(i)” to the first page of the Specification.
2
Appeal 2017-001580
Application 12/076,599
and cD represents a distance between the reference point of the virtual object
and a point (c) located between the first and second detected positions (fO,
fl). Spec. 21:11—25. In the Specification, Appellants provide an equation
wherein, after the user input, the resulting velocity of the virtual object may
be calculated based at least in part on the calculated distance (cD).
Spec. 22:19. According to the Specification, the shorter the distance (cD),
the greater the influence of the input is on the resulting movement velocity.
Spec. 22:22-23.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced with the disputed limitations emphasized in italics:
1. A non-transitory storage medium storing computer-
readable instructions for controlling a virtual object that is
processed by a computing system that includes a display for
displaying the virtual object and a user input device configured
to receive input from a user to control the virtual object, the
stored computer-readable instructions comprising instructions
configured to cause said computing system to:
detect a first input provided to the user input device;
detect a second input provided to the user input device;
determine a first position based on the detected first input;
determine a second position based on the detected second
input;
calculate a distance between a reference point of the
virtual object and an intersection point that is located between
the determinedfirst position and the determined second position;
calculate a movement velocity of said virtual object based
at least in part on the calculated distance; and
move said virtual object based at least in part on the
calculated movement velocity.
3
Appeal 2017-001580
Application 12/076,599
The Examiner’s Rejection
Claims 1—18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Orr et al. (US 6,722,987 B2; Apr. 20, 2004) (“Orr”). Final
Act. 13-23.
ANALYSIS3
The Examiner finds Orr anticipates each of independent claims 1, 6,
11, and 16. Final Act. 13—17, 19-23. We being our analysis with a brief
review of Orr.
Orr is generally directed to processing collisions between mobile
objects and “electronic ink.” Orr, col. 1,11. 8—12. Orr discloses that by
using a stylus (or other pen digitizer), a user may enter a free-form stroke on
a user input device. Orr, col. 5,11. 45—61. The term “electronic ink” is used
to refer to a sequence or set of strokes entered by the user to the input device
(e.g., a touch-sensitive display). Orr, col. 5,11. 62—65. Orr describes an
exemplary game wherein a plurality of multi-colored balls move about a
game space defined by walls and electronic ink, as entered by the user. Orr,
col. 6,11. 23—30. Throughout the game, the balls may collide with (or
bounce off) other balls, walls, or electronic ink. Orr, col. 6,11. 23—30. As a
ball collides with another object (i.e., another ball, a wall, or electronic ink),
the ball’s direction of travel (i.e., trajectory) will be altered. Orr, col. 6,
11. 50-53 (“[t]he angle of incidence of this collision equals the collision’s
3 Throughout this Decision, we have considered the Appeal Brief, filed
February 2, 2016 (“App. Br.”); the Reply Brief, filed November 8, 2016
(“Reply Br.”); the Examiner’s Answer, mailed September 8, 2016 (“Ans.”);
and the Final Office Action, mailed September 2, 2015 (“Final Act.”), from
which this Appeal is taken.
4
Appeal 2017-001580
Application 12/076,599
angle of reflection”). Regarding the electronic ink, Orr describes that
colored ink may change the color of a ball that hits the colored ink, whereas
the speed of a ball that hits translucent ink may slow down or speed up. Orr,
col. 7,11. 17-20.
Orr further discloses the underlying program is aware of the location
of mobile objects (i.e., balls) and electronic ink. Orr, col. 7,11. 35—40. “If
ink and a mobile object occupy the same location, then the mobile object has
collided with ink.” Orr, col. 7,11. 38—40. Orr notes that “other suitable
collision-checking techniques” could also be used and that ball-to-ball or
ball-to-wall collision detection techniques are well known in the art. Orr,
col. 9,11. 45—46, col. 10,11. 3—10. In a disclosed embodiment, Orr describes
a data structure may maintain the x and y coordinates of data points along
the periphery of a mobile object (i.e., ball). Orr, col. 8,11. 40-45. As a
plurality (e.g., two) of periphery points collide with free-form electronic ink,
an angle of collision may be determined such that the angle at which the ball
should leave (i.e., bounce) the electronic ink may be determined. Orr, col. 8,
11.31-39.
Appellants argue that Orr does not (i) calculate a distance between a
reference point of the object and an intersection point between a first and
second position (determined from a first and second input, respectively) or
(ii) calculate a movement velocity of the object based at least in part on the
calculated distance. App. Br. 14—15. Rather, Appellants assert Orr
describes the velocity of the object is determined by running into different
environment types, such as translucent ink. App. Br. 14. Additionally,
Appellants contend “there does not seem to be any disclosure in Orr of
5
Appeal 2017-001580
Application 12/076,599
calculating a distance from [a reference] point to an intersection point.”
App. Br. 15.
In response, the Examiner explains that in order to recognize a
collision (such as between a ball and electronic ink), Orr “must necessarily
determine or ascertain (i.e., the definition of ‘calculate’) that the distance
between the ball perimeter point and the hand-drawn ink touch stroke is
zero.” Ans. 18 (emphasis altered). Thus, the Examiner finds that Orr’s
collision module reasonably reads on Appellants’ claimed invention that a
virtual object’s movement is based on the distance between two points. Ans.
18—19. Further, the Examiner finds the disclosed ball perimeter points may
be considered the claimed “reference point[s].” Ans. 20. Alternately, the
Examiner finds the center point of the ball can also be considered the
claimed “reference point.” Ans. 21. Additionally, the Examiner explains
“[i]f you know two elements have collided, then you also inherently know
there is zero distance between them.” Ans. 22. According to the Examiner,
because the velocity of Orr’s object depends on whether it has collided with
the electronic ink, the velocity of the ball “necessarily depends on its
distance from hand-drawn ink touch strokes.” Ans. 22.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Additionally, to anticipate, a prior art reference must
disclose more than “multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also In re Arkley,
455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly
6
Appeal 2017-001580
Application 12/076,599
and unequivocally disclose the claimed [invention] or direct those skilled in
the art to the [invention] without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.”).
Further, the principle of “inherency” requires that any information not
expressly disclosed within a prior art reference would nonetheless be known
to be present in the subject matter of the reference, when viewed by persons
experienced in the field of the invention. However, “anticipation by inherent
disclosure is appropriate only when the reference discloses prior art that
must necessarily include the unstated limitation [or the reference] cannot
inherently anticipate the claims.” Transclean Corp. v. Bridgewood Servs.,
Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal citation omitted);
Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) (“consistent with
the law of inherent anticipation, an inherent property must necessarily be
present in the invention described by the count, and it must be so recognized
by persons of ordinary skill in the art”) (citations omitted). It is not
sufficient if a material element or limitation is “merely probably or possibly
present” in the prior art. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d
1292, 1295 (Fed. Cir. 2002) (citations omitted); see W.L. Gore &Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (anticipation
“cannot be predicated on mere conjecture respecting the characteristics of
products that might result from the practice of processes disclosed in
references”) (citation omitted). “To establish inherency, the extrinsic
evidence ‘must make clear that the missing descriptive matter is necessarily
present in the thing described in the reference.’” In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999) (quotation omitted).
7
Appeal 2017-001580
Application 12/076,599
Appellants dispute the Examiner’s finding that Orr’s collision
detection necessarily requires the calculation of a distance as set forth in
Appellants’ claims. Reply Br. 3. Appellants provide two examples of
approaches for detecting a collision without calculating a distance (a logical
operation based on position data, and use of a tracking frame buffer). Reply
Br. 3^4.
Appellants’ examples make clear that the velocity of the ball does not
necessarily depend on its distance from hand-drawn ink touch strokes, as the
Examiner finds, but is merely one possible approach to collision detection.
See Ans. 22. To the extent that a person of ordinary skill in the art would
understand that a collision of the ball with the electronic ink of Orr suggests
a distance of zero between the periphery of a virtual object and a point
located within the stroke of electronic ink (i.e., the claimed intersection
point), we agree with Appellants that such a suggestion falls short of
inherently disclosing the calculation of a distance between a reference point
of a virtual object and an intersection point, as set as recited in independent
claim 1. Independent claims 6, 11, and 16 recite commensurate limitations.4
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection under 35 U.S.C. § 102(b) of
independent claims 1, 6, 11, and 16. Additionally, we do not sustain the
Examiner’s rejection of claims 2—5, 7—10, 12—15, 17, and 18, which depend
therefrom.
4 We note that rather than calculating a “movement velocity” of the virtual
object based at least in part on the calculated distance, claim 11 recites
calculating a “speed value” of the virtual object based at least in part on the
calculated distance.
8
Appeal 2017-001580
Application 12/076,599
DECISION
We reverse the Examiner’s decision rejecting claim 1—18 under
35 U.S.C. § 102(b).
REVERSED
9