Ex Parte Takahashi et al

Board of Patent Appeals and Interferences

Jul 10, 2012

11118331 (B.P.A.I. Jul. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIROYUKI TAKAHASHI, SHUGO TAKAHASHI, HARUKI
KODERA, YUSUKE SUGIMOTO, TORU TAKAMATSU, and
TOSHIHARU IZUNO
____________________

Appeal 2010-004254
Application 11/118,331
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
The claimed subject matter encompasses a rally-type video game
(e.g., tennis). A particular aspect of play is tracked and based on an
accumulation of that aspect (e.g., movement around a playing field), a
player’s character is allowed to perform a special type of hitting motion.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A game system for executing a sport game in which a player
character and an opponent character rally a hit object in a
virtual game space, comprising:
movement controller for moving the player character in
the virtual game space in accordance with an operation by a
player;
moving amount detector for detecting the player
character's moving amount per predetermined unit time at each
predetermined time interval;
adder for adding the player character's moving amount
per predetermined unit time for accumulation; and
motion control programmed logic circuitry for
controlling the motion of the player character so as to provide
the player with the option of instructing the player character to
perform a hitting motion of a first type and to prohibit the
player from instructing the player character to perform a hitting
motion of a second type, different from the first type, when a
result of addition by the adder does not exceed a predetermined
value, and so as to provide the player with the option of
instructing the player character to perform the hitting motion of
the first type or the hitting motion of the second type when a
result of addition by the adder exceeds the predetermined value.

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References
The Examiner relies upon the following prior art references:
Morihira
Sanbongi
Togami
US 6,146,269
US 6,217,446 B1
US 6,428,411 B1
Nov. 14, 2000
Apr. 17, 2001
Aug. 6, 2002
Oyamada US 2004/0209680 A1 Oct. 21, 2004

Rejections
I. Claims 1-6 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Togami and Oyamada.
II. Claims 7-9 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Togami, Oyamada, Morihira, and Sanbongi.

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION.

OPINION
Each of the independent claims, in some form, requires an adder for
accumulating either a player’s movement (claims 1, 10) or a waiting time
(claims 7, 11). The player is initially allowed to perform a first type of
hitting motion (see, e.g., Spec., para. [0079], a normal shot), but not a
second type (see, e.g., Spec., para. [0080], a harder shot). If the value from
the adder reaches a predetermined threshold, the player is provided the
option to perform the second type of hitting motion. See also App. Fig. 7.
Appellants argue independent claims 1 and 10 as a first group and
independent claims 7 and 11 as a second group. For both groups, however,
Appellants raise a common dispositive issue, namely, whether the
Examiner’s rejections properly address the limitation directed to providing
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the player with the option of performing a hitting motion of a first or second
type when an addition result exceeds a predetermined value. App. Br. 18-
19, 22 (discussing Togami and Oyamada for claims 1 and 10) and 24-25
(arguing Togami/Oyamada fails to teach as argued above and that Morihira
does not teach this limitation). We review the Examiner’s two rejections in
light of this issue.
Togami and Oyamada
The Examiner found that Togami teaches a game system (for
volleyball) having a hitting motion of a first type (a hit or serve) and a
second type (a set). Ans. 5. The Examiner found that a player is prohibited
from attacking a set ball that is to be received. Id. The Examiner adds that
Togami does not teach the adder or prohibition of the player character
hitting motion based on the adder vale. Id.
The Examiner then found that Oyamada teaches a game system that
adds a player character’s moving amount by adding a shift amount to each
player character’s motion to simulate different running motions. Ans. 6.
The Examiner also found that Oyamada teaches prohibiting a hitting motion
of a second type when a result of addition by the adder does not exceed a
predetermined value, because:
it would have been obvious at the time of
invention to try an implementation in which the
player character performs ball serve or set ball
attack as disclosed by Togami when the shift
amount is greater than a predetermined value
proportional to the player characters running
ability since one having ordinary skill in the art
would have known to allow different types of
movement for running to kick a ball or hitting
motions in different locations or positions of travel
when running speed associated with the shift
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amount and player characters body size at the
different locations or positions of travel over time
is greater than the player characters running ability
or reproduction speed.
Ans. 6-7.
The Examiner notes that Oyamada’s device provides for player characters
having different running speeds, regardless of physique, allowing players to
develop strategies during the game.1 Ans. 7. Based on these findings, the
Examiner then concludes:
it would have been obvious to one having ordinary
skill in the art at the time the applicant's invention
was made to modify Togami in view of the
teachings of Oyamada for the purpose of providing
the gaming device of Togami having a CPU and
control circuitry that controls movement of the
player character for server or attack motions that
are interchangeable with or upgradeable to the
motion shift amount and predetermined
reproduction speed or running ability of players
characters for determining player character
movement disclosed by Oyamada in order to allow
players to develop game strategies for player
characters in the game regardless of the physique
of any player character in competition.
Ans. 7.

1 Oyamada is directed to realistically depicting running animations for
differently sized characters. Para. [0004]. In order to appear realistic, one
step of a large player should shift (move) the player further than one step of
a smaller player, due to the length of their strides. Para. [0115]. To
accurately depict a running motion, therefore, the shift amount must be
proportional to the size of the character. Para. [0118]. By varying the
reproduction speed (i.e., the running animation) and the shift amount (i.e.,
movement), any combination of player size and speed can be realistically
depicted. Paras. [0116], [0118].
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Reviewing the Examiner’s findings and reasoning, it is not apparent to
us how Togami and Oyamada are understood by the Examiner to render
obvious the adder and motion control programmed logic circuitry of claims
1 and 10. The Examiner indicates that Oyamada supplies a teaching for
allowing a second hitting motion based on an adder, but Oyamada does not
appear to discuss hitting motions or allowing/disallowing actions based on
the shift amount (the shift amount being, apparently, what the Examiner
considers to correspond to the adder’s value). The Examiner has not
cogently explained how, in light of this lack of disclosure, the proposed
combination nevertheless is rendered obvious by the teachings of Oyamada
and Togami. Accordingly, we cannot sustain the Examiner’s rejection of
independent claims 1 and 10, or of claims 2-6, which depend therefrom.
Togami, Oyamada, Morihira, Sanbongi
Independent claims 7 and 11 require that the adder add a
predetermined parameter value based on a waiting time between a hitting
motion operation (e.g., pressing a button) and the hitting motion (e.g., an
animation depicting the player-character swinging). The Examiner’s
relevant findings with respect to Togami and Oyamada are as discussed
above. Ans. 13-14. The Examiner then found that Togami and Oyamada do
not teach “adder features as claimed.” Ans. 15.
With respect to Morihira, the Examiner found an adder for adding a
predetermined parameter value: “a win calculator [that] accumulates the win
counts and provides the win count to the winning game character.” Ans. 16.
The Examiner found that Morihira suggests that game players will become
uninterested in the game if the players are unaware of the game winner until
after accumulated points of the game characters are determined (presumably,
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at the end of a match). Ans. 16-17. Based on these findings, the Examiner
concludes that it would have been obvious:
to modify Togami in view of the teachings of
Oyamada, and further in view of the teachings of
Morihira for the purpose of providing the gaming
device of Togami alone or in combination with
Oyamada having movement control and detection,
adder and parameter calculation features that are
interchangeable with or upgradeable to the score
difference and parameter correction features
disclosed by Morihira via programming so as to
remove the edge one player may have over an
opponent in a game based solely on the virtual
physical strength of the player's game character
allowing unfair waiting or evasive actions in order
to prevent the opponent from losing fighting spirits
or interest in the game before the match has
finished.
Ans. 17.
Reviewing the Examiner’s findings and reasoning, it is not apparent to
us how the proposed combination is understood by the Examiner to render
obvious the adder and motion control programmed logic circuitry limitations
of claims 7 and 11. The “adder” identified by the Examiner in Morihira is
merely a win count that does not have anything to do with accumulating a
parameter (based on a waiting time) as claimed. Further, Morihira does not
cure the underlying deficiency identified above with respect to the motion
control programmed logic circuitry limitation. Accordingly, we cannot
sustain the Examiner’s rejection of claims 7 and 11, or of claims 8 and 9,
which depend therefrom.
New Ground of Rejection
Claims 10 and 11 are both directed toward a “computer-readable
storage medium.” The Specification is silent as to the meaning of
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“computer-readable storage medium.” Accordingly, the claimed “storage
medium” encompasses transitory propagating signals containing the game
program. See David J. Kappos, Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“The
broadest reasonable interpretation of a claim drawn to a computer readable
medium … typically covers forms of … transitory propagating signals”).
Such a claim covers non-statutory subject matter and must be rejected under
35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject matter)2.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter
a new ground of rejection under 35 U.S.C. § 101 for claims 10 and 11 as
directed to non-statutory subject matter.

DECISION
We reverse the Examiner’s decision regarding claims 1-11.
We enter a new ground of rejection for claims 10 and 11.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

2 As noted in Subject Matter Eligibility of Computer Readable Media, “[a]
claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record.…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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