Ex Parte Miyamoto et al

Patent Trial and Appeal BoardAug 19, 2013

11522357 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TAKESHI MIYAMOTO and YOSHIKAZU YAMASHITA ____________________ Appeal 2011-007485 Application 11/522,357 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and PATRICK R. SCANLON, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007485 Application 11/522,357 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellants’ claimed invention relates to “a storage medium having a game program for drawing an object in accordance with an inclination of an input device including an acceleration sensor, and a game apparatus.” Spec., para. [0001]. Claims 1 and 9 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A storage medium having stored thereon a game program executable by a computer of a game apparatus for moving an object located in a virtual game space and displaying the object on a display device, using an acceleration detected by an input device including an acceleration sensor for detecting an acceleration in at least one axial direction, the game program causing the computer to execute: an acceleration obtaining step of obtaining acceleration data which is output from the acceleration sensor; a support position calculation step of calculating a support position coordinate set which represents a position, in the virtual game space, of a support provided on the object, based on the acceleration data obtained in the acceleration obtaining step; an input device inclination calculation step of calculating an inclination of the input device in a real space, based on the acceleration data obtained in the acceleration obtaining step; an object inclination calculation step of calculating an inclination for an object at which the object is inclined in the virtual game space while the object is supported and with respect to the support, in accordance with the inclination of the Appeal 2011-007485 Application 11/522,357 3 input device calculated in the input device inclination calculation step; and a display control step of locating the object in the virtual game space and displaying the object on the display device, using the support position coordinate set calculated in the support position calculation step and the parameter representing the object inclination calculated in the object inclination calculation step. Evidence Relied Upon Akada Goschy Miyamoto US 6,120,374 US 6,545,661 B1 US 6,634,947 B1 Sep. 19, 2000 Apr. 8, 2003 Oct. 21, 2003 Albanna US 2005/0076161 A1 Apr. 7, 2005 The Rejections The following rejections are before us on appeal: I. Claims 1-4, 8-12, and 16 under 35 U.S.C. § 103(a) as unpatentable over Goschy, Miyamoto, and Albanna. II. Claims 5-7 and 13-15 under 35 U.S.C. § 103(a) as unpatentable over Goschy, Miyamoto, Albanna, and Akada. ISSUE Independent claim 1 calls for the game program stored on the storage medium to cause the computer to execute a support position calculation step based on acceleration data obtained during the acceleration obtaining step from an input device having an acceleration sensor. Independent claim 9 contains a similar limitation. Initially, the Examiner found that Goschy discloses a hand-held gun embodiment that utilizes a support position calculation step as claimed. Appeal 2011-007485 Application 11/522,357 4 Ans. 4 (citing Goschy, col. 3, ll. 2-19); Office Action dated April 14, 2010, at 2. Appellants argued that while Goschy determines the tilt (inclination) of the gun based upon acceleration data from the accelerometer in the input device, such determination is not the calculation of a support position, and Goschy does not disclose utilizing acceleration data to determine a support position. App. Br. 20-21. The Examiner then changed positions to find that Goschy’s sword embodiment inherently discloses a support position calculation step as claimed. Ans. 10-12. Specifically, the Examiner reasoned that Goschy’s system could not translate input device movement to virtual game space movement without knowing the initial position (which the Examiner equates to the support position) of the input device. Ans. 11-12. Appellants argue that Goschy does not inherently disclose such calculation because the initial position of the virtual object may be determined by other methods, such as software steps that specify an initial position. Reply Br. 3. The determinative issue of this appeal is whether Goschy expressly or inherently discloses a support position calculation step as claimed. OPINION The Examiner’s initial finding that Goschy’s hand-held gun embodiment utilizes a support position calculation step as claimed is not adequately supported by the reference. See Ans. 4. Goschy discloses that game controller 15 processes acceleration data from accelerometer 18 of control unit 14 (input device) to determine the tilt of the control unit to Appeal 2011-007485 Application 11/522,357 5 control movement of game character 21 on display 12, so that character 21 moves in response to the tilt of control unit 14.1 Goschy, col. 2, l. 64-col. 3, l. 19; fig. 2. Such disclosure relates to the use of acceleration data (from accelerometer 18) to calculate the inclination (tilt) of the input device (control unit 14), but provides no evidence that a support position is calculated based on acceleration data. Regarding the Examiner’s finding that Goschy inherently discloses a support position calculation step, we are mindful that there is a line of cases, such as In re Swinehart, 439 F.2d 210, 213 (CCPA 1971), indicating that where an examiner has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require an applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. However, before an applicant can be put to this burdensome task, the examiner must provide a sound basis to establish the reasonableness of the examiner's belief that the functional limitation is an inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir 1990). In the case at hand, the Examiner reasoned that the sword embodiment of Goschy’s system could not translate input device movement to virtual game space movement without knowing the initial position (support position) of the input device. Ans. 11-12. The Examiner explains that there must be initial position (support position) data; however, the Examiner fails to explain that this initial data is calculated based on acceleration data as 1 When control unit 14 moves left or right, character 21 moves left or right, when control unit 14 moves up or down, character 21 moves backwards or forwards, respectively. Goschy, col. 3, ll. 8-19. Appeal 2011-007485 Application 11/522,357 6 called for in independent claims 1 and 9. See Reply Br. 1 (noting this omission by the Examiner). Consequently, the Examiner has not demonstrated a reasonable basis for the belief that Goschy inherently discloses a support position calculation step based upon acceleration data as claimed. Because both rejections rely upon this flawed finding, we reverse both rejections. CONCLUSION Goschy does not expressly or inherently disclose a support position calculation step as claimed. DECISION We reverse the Examiner’s decision to reject claims 1-16. REVERSED mls