Ex Parte Nishimura

Patent Trial and Appeal BoardAug 28, 2013

10833132 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KATSUHITO NISHIMURA ____________________ Appeal 2011-007590 Application 10/833,132 Technology Center 3700 ____________________ Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007590 Application 10/833,132 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-26, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention relates to “a game machine and a data storage medium having stored therein a game program for connecting units of a plurality of types to automatically generate a map.” Spec. 1, para. [0001]. Claims 1, 11, and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A game machine for generating a game map which defines an area where an object can move in the course of a game, the game machine comprising: at least one unit storage location having previously stored therein a first unit type, which is a unit zone including at least one connecting portion and forming the game map, and at least one second unit type, which is a unit zone including at least one connecting portion and is different in type from the first unit type; first disposing programmed logic circuitry which selects one unit from the first unit type and the at least one second unit type that are stored in the unit storage mechanism,[1] and disposes the selected unit on the map area; and 1 We note that there is no antecedent basis for “the unit storage mechanism” (also recited in the last paragraph of claim 1), which appears intended to refer to the previously recited “unit storage location.” We treat this as an inadvertent error that should be corrected in further proceedings. Appeal 2011-007590 Application 10/833,132 3 second disposing programmed logic circuitry which repeats a process of selecting a unit which is connectable to an unconnected connecting portion included in a unit already disposed on the map area and a process of disposing the selected unit on the map area, wherein the second disposing programmed logic circuitry includes: an unconnected connecting portion extractor which extracts the unconnected connecting portion from the connecting portions included in the unit already disposed on the map area; a random number generator which generates a random number within a predetermined range; a selection coefficient setter which sets a selection coefficient to the connecting portion extracted by the unconnected connecting portion extractor, said selection coefficient determining the probability that two different unit types will be connected and thus controlling the connection affinity between unit types; a unit selector which compares the random number generated by the random number generator with the selection coefficient, and based at least in part on the result, selects one unit from the first unit type and the at least one second unit type; and unit disposing programmed logic circuitry which extracts the one unit selected by the unit selector from the first unit type and the at least one second unit type stored in the unit storage mechanism, connects a connecting portion included in the one unit to the connecting portion extracted by the unconnected connecting portion extractor, and disposes the one unit on the map area. Appeal 2011-007590 Application 10/833,132 4 REFERENCES The Examiner relies upon the following prior art references: Nakamura Tokita Niwa US 6,007,423 US 6,123,619 US 6,371,856 B1 Dec. 28, 1999 Sep. 26, 2000 Apr. 16, 2002 REJECTIONS The following rejections are before us on appeal: I. Claims 1, 3-11, and 13-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokita and Nakamura. II. Claims 2, 12, and 23-26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokita, Nakamura and Niwa. ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that Tokita discloses a game machine for generating a game map that includes, inter alia, a unit storage mechanism storing first and second unit types and at least one connecting portion, an unconnected connecting portion extractor, a random number generator, a selection coefficient setter that “sets a selection coefficient to the connecting portion extracted by the unconnected connecting portion extractor,” and “a unit selector which compares the random number generated by the random number generator with the selection coefficient.” Ans. 3-4. Regarding independent claim 11, the Examiner states that Tokita discloses a storage medium for generating a game map. Id. at 3. Although not explicitly stated, it appears to be the Examiner’s position that Tokita discloses the process steps performed by the Appeal 2011-007590 Application 10/833,132 5 stored game program of claim 11 that correspond to the above-mentioned elements of claim 1. The Examiner concedes that Tokita “does not explicitly teach [a] selection coefficient determining the probability that two different unit types will be connected and thus controlling the connection affinity between unit types,” but finds that Nakamura discloses “various selection coefficients . . . such as end width of the course parts, difficulty of the racing game as the game progresses, [and] average driving speed that determine[] the probability that two different unit types . . . will be connected.” Id. at 4-5. The Examiner concludes from these findings that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate the teachings of Nakamura into the teachings of Tokita,” because such a modification would provide “a realistic and smoother transition of the travel path for the game play thereby making the game more interesting to the users.” Id. at 5. Appellant argues that Tokita fails to disclose the claim 1 limitation of “a selection coefficient setter which sets a selection coefficient to the connecting portion extracted by the unconnected connecting portion extractor, said selection coefficient determining the probability that two different unit types will be connected and thus controlling the connection affinity between unit types.” App. Br. 19.2 We agree that Tokita does not disclose a “selection coefficient” that determines the probability that two different unit types will be connected as required by claims 1 and 11. Furthermore, Tokita does not disclose comparing a selection coefficient to a 2 As used herein, “App. Br.” refers to the Appeal Brief filed November 30, 2010. Appeal 2011-007590 Application 10/833,132 6 randomly generated number and selecting a unit based at least in part on the comparison, as also required by claims 1 and 11. The Examiner cites column 8, lines 29-64 and column 9, lines 30-59 of Tokita as disclosing a selection coefficient / measure of numbers setter which sets a selection coefficient to the connecting portion extracted by the unconnected connecting portion extractor; a unit selector which compares the random number generated by the random number generator with the selection coefficient based on predetermined criteria, and selects either one unit from the first unit and the second unit. Ans. 4. However, neither of these passages in Tokita discloses comparing the randomly generated number to any sort of a “coefficient.” Rather, the randomly generated number is used to request a map associated with the randomly generated number and stored on a CD-ROM 4. Tokita, col. 9, ll. 30-37. In addition, we disagree that Nakamura discloses any selection coefficient that determines the probability of two different unit types being connected. The Examiner has not adequately explained how the “difficulty of the racing game as the game progresses” or the “average driving speed” would serve as such a selection coefficient. The Examiner’s statement that “the width of the connecting side/portion of the course parts as taught by Nakamura functions as the selection coefficient [because] the width determines the selection of the next course part” (Ans. 12) is not convincing. Nakamura discloses several different types of course parts where only course parts having common end widths can be connected. Nakamura, col. 8, ll. 10-13, 19-21; fig. 8. However, even assuming, arguendo, that the end widths could be properly considered to be “selection coefficients,” there is Appeal 2011-007590 Application 10/833,132 7 no showing that the end widths determine the probability of two different course parts being connected so as to control the connection affinity between course parts. Instead, Nakamura discloses randomly selecting course parts based on a predetermined probability set for each course part. Nakamura, col. 7, l. 65 – col. 8, l. 3; col. 8, ll. 28-45; fig. 9. Furthermore, the Examiner merely asserts that it would have been obvious “to incorporate the teachings of Nakamura into the teachings of Tokita” (Ans. 5) without explaining how Tokita would be modified in view of Nakamura to arrive at the claimed invention. In view of the above, we determine that the Examiner has not shown that the combination of Tokita and Nakamura renders claims 1 and 11 obvious. We accordingly do not sustain the rejection of claims 1 and 11 and of claims 3-10 and 13-22 depending therefrom. Rejection II The Examiner’s rejection of claims 2, 12, and 23-26 as obvious over Tokita, Nakamura, and Niwa relies on the same erroneous finding noted supra that Nakamura discloses various selection coefficients that determine the probability of two different unit types being connected. Ans. 9. Niwa does not cure this deficiency. Accordingly, we do not sustain the rejection of claims 2, 12, and 23-26 for the same reasons stated supra with respect to claims 1 and 12. DECISION We reverse the decision of the Examiner rejecting claims 1-26. REVERSED Appeal 2011-007590 Application 10/833,132 8 mls