NINTENDO CO., LTD.

Patent Trials and Appeals Board

Dec 2, 2020

2019004623 (P.T.A.B. Dec. 2, 2020)

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.
15/213,653 07/19/2016 Naonori OHNISHI RYM-723-4349 2821
27562 7590 12/02/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
NGUYEN, PHU K
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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 NAONORI OHNISHI and HIROAKI HIRUMA
____________________

Appeal 2019-004623
Application 15/213,653
Technology Center 2600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–12, constituting all of the rejected claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is NINTENDO CO., LTD. (Appeal
Br. 3.)
2 Our Decision refers to the Specification (“Spec.”) filed July 19, 2016, Final
Office Action (“Final Act.”) mailed July 13, 2018, Appeal Brief (“Appeal
Br.”) filed December 3, 2018, Examiner’s Answer (“Ans.”) mailed April 1,
2019, and Reply Brief (“Reply Br.”) filed May 15, 2019.
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Application 15/213,653

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CLAIMED INVENTION
The claims are directed to a system and method that enable “operating
a three-dimensional object on the basis of an input performed with a
pointing device, and more particularly relates to a process of rotating a three-
dimensional object displayed on a screen.” (Spec. ¶ 1.)
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computer-readable non-transitory storage medium
having stored therein an information processing program
executed by a computer of an information processing apparatus
capable of receiving an input performed with a pointing device,
the information processing program causing the computer to
execute:
positioning a three-dimensional object in a virtual three-
dimensional space;
displaying a three-dimensional image obtained by
capturing the virtual three-dimensional space with a virtual
camera, on a screen;
calculating a first straight line on the basis of
predetermined two points in the three-dimensional object;
calculating a second straight line orthogonal to the first
straight line;
selecting either one of the first straight line and the second
straight line as a rotation axis on the basis of an input performed
with the pointing device; and
rotating the three-dimensional object about the selected
rotation axis.

(Appeal Br. 14 (Claims App.).)

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Application 15/213,653

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REJECTIONS & REFERENCE
Claims 1–12 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Chen (US 5,019,809, issued May 28, 1991), or, in the alternative, under
35 U.S.C. § 103 based on Chen. (Final Act. 2–7.)

ANALYSIS
Standard of Review
We undertake a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential).

§ 102(a)(1) Rejection of Claims 1 and 8–12
With respect to independent claim 1, Appellant argues Chen does not
disclose “calculating a second straight line orthogonal to the first straight
line” and “selecting either one of the first straight line and the second
straight line as a rotation axis on the basis of an input performed with the
pointing device.” (Appeal Br. 9–11; Reply Br. 2–4.) In particular,
Appellant argues, although Chen discloses that mouse movement on or
outside the reference circle produces rotation about the Z axis, “the z axis
(the [Examiner’s] alleged second straight line) is not a candidate along with
the first straight line (as the other candidate) for possible selection as the
rotation axis.” (Appeal Br. 10–11 (citing Chen 4:19–27, 6:45–54).)
Appellant asserts Chen’s disclosure of “mouse movement within the
reference circle, or alternatively mouse movement on or outside of that
reference circle” does not disclose “a selection between the first straight line
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and the second straight line (which are orthogonal to each other) as a
rotation axis.” (Id.; see also Reply Br. 2–4.)
Appellant’s arguments do not persuade us of Examiner error. The
Examiner finds, and we agree, that Chen describes activation of a control
movement mode in which mouse movement on or outside a reference circle
(circle C in Fig. 3) enables a rotation about a Z axis orthogonal to the XY
plane (see Fig. 2), thereby disclosing the claimed “calculating a second
straight line orthogonal to the first straight line.” (Final Act. 2–3 (citing
Chen 5:28–62, 6:12–54, Abstract); Ans. 7–8 (citing Chen 4:1–8, 4:19–32).)
That is, Chen’s Z axis is a second straight line orthogonal to a first straight
line (a line in the XY plane, such as Chen’s vector A representing another
rotation axis, see Fig. 4). (Final Act. 2–3; Ans. 7–8; see Chen 4:19–32, 5:1–
27.)
Appellant contends Chen does not disclose the claimed “selecting
either one of the first straight line and the second straight line as a rotation
axis” because “the z axis (the alleged second straight line) is not a candidate
along with the first straight line (as the other candidate) for possible
selection as the rotation axis.” (Appeal Br. 10.) Appellant argues when
mouse movement is within Chen’s reference circle, rotation is about vector
A (calculated by Equation 6, which simplifies to Equations 1 and 5 for
specific cases) located “strictly in the XY plane,” and “the z axis would thus
not be a possible selection for the axis of rotation.” (Id. at 10–11; see also
Reply Br. 2–4.) We are not persuaded by Appellant’s arguments because
the broad language of claim 1 allows a reading of Appellant’s claim on
Chen. (Ans. 7–8.) Claim 1 recites “selecting either one of the first straight
line and the second straight line as a rotation axis” and specifies the selecting
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“on the basis of an input performed with the pointing device,” but the claim
does not specify how “selecting” is particularly performed (e.g., what
operation(s), automated or user-controlled, would effect a rotation axis
selection). Thus, the claimed “selecting” is broad enough to include Chen’s
controlled choice of a rotation axis based on a user’s election “to move a
mouse pointer either within the reference circle or outside the reference
circle.” (See Chen 3:67–4:11, 6:46–54; Ans. 8 (“by dragging the mouse
pointer inside and outside the reference circle, we rotate the object around
vector A and Z axis, respectively, in which vector A and Z axis are
orthogonal.”).) Chen enables the user’s affirmative choice (via the mouse
pointer) between a rotation axis in the XY plane and a rotation axis along
the Z axis, which is commensurate with the broadly claimed rotation axis
“selecting” that is executed “on the basis of an input performed with the
pointing device.” (Ans. 8.)
For the above reasons, we sustain the Examiner’s anticipation
rejection of independent claim 1, and independent claims 11 and 12 argued
for the same reasons. (Appeal Br. 9; Reply Br. 2.) We also sustain the
Examiner’s anticipation rejection of dependent claims 8–10 not separately
argued.

§ 103 Rejection of Claims 1 and 8–12
The Examiner has rejected claims 1 and 8–12 “under
35 U.S.C. § 102(a)(1) as anticipated by or, in the alternative, under
35 U.S.C. § 103 as obvious over CHEN.” (See Final Act. 2.) Because we
find Chen teaches the disputed limitations of independent claims 1, 11, and
12 (as discussed supra), we also sustain the Examiner’s § 103 rejection of
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Application 15/213,653

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independent claims 1, 11, and 12, and dependent claims 8–10 not separately
argued.

§ 102 and § 103 Rejections of Claims 2–7
The Examiner finds the operations recited in dependent claim 2 are
“well known in the art as mathematical calculation for changing coordinate
system of the rotation axis and for re-projecting a vector in the
predetermined plane into the 3D space” and “obvious to a person of ordinary
skill in the art as a simple mathematical calculation.” (Final Act. 4; Ans. 9–
10.)
Appellant argues “there is no support, evidence or factual basis at all
for the Examiner’s broad allegation that the features of claim 2 are ‘well
known’” and
[t]here is no disclosure or suggestion in Chen of the . . . specific
steps of claim 2 of calculating the second straight line by
translating the fourth straight line from the predetermined plane
to the three-dimensional object within the virtual three-
dimensional space, wherein this second straight line or the first
straight line is selected as a rotation axis on the basis of an input
performed with the pointing device.

(Reply Br. 6; Appeal Br. 12.) We agree with Appellant’s substantive
argument. Claim 2, in view of its base claim 1, requires supplying two lines
as potential rotation axes, where one of the supplied lines (the second
straight line) is calculated by projecting the first straight line onto a
predetermined plane, calculating a fourth straight line, and translating the
fourth straight line from the predetermined plane to a 3D object within the
virtual 3D space. (Appeal Br. 14–15 (Claim 2).) Appellant contends, and
we agree, that Chen does not disclose or suggest providing or selecting a
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rotation axis that is calculated as the second straight line is calculated in
claim 2. (Appeal Br. 12.) Further, the Examiner has not responded, in the
Answer, to Appellant’s specific arguments.
As the Examiner has not identified sufficient evidence to support the
§ 102(a)(1) or § 103 rejections of claim 2, we do not sustain the Examiner’s
§ 102(a)(1) and § 103 rejections of claim 2 and claims 3–7 dependent
therefrom.

DECISION SUMMARY
The Examiner’s rejection of claims 1 and 8–12 under
35 U.S.C. § 102(a)(1) is AFFIRMED.
The Examiner’s rejection of claims 1 and 8–12 under 35 U.S.C. § 103
is AFFIRMED.
The Examiner’s rejection of claims 2–7 under 35 U.S.C. § 102(a)(1) is
REVERSED.
The Examiner’s rejection of claims 2–7 under 35 U.S.C. § 103 is
REVERSED.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 102(a)(1) Chen 1, 8–12 2–7
1–12 103 Chen 1, 8–12 2–7
Overall
Outcome
1, 8–12 2–7

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Application 15/213,653

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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 IN PART