Ex Parte Suzuki

Patent Trial and Appeal Board

Jun 26, 2017

13203411 (P.T.A.B. Jun. 26, 2017)

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.
13/203,411 09/12/2011 Tatsuya Suzuki 545-258 7072
27538 7590 06/28/2017
frihsinn Rr Dernier T T P
EXAMINER
89 Headquarters Plaza North
PMB 1469
SMITH, STEPHEN R
Morristown, NJ 07960 ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
info@gdiplaw.com
cmburgos @gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATSUYA SUZUKI
Appeal 2017-001004
Application 13/203,411
Technology Center 2400
Before ST. JOHN COURTENAY III, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—10, 12, 13, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2017-001004
Application 13/203,411
STATEMENT OF THE CASE
The present patent application concerns “a program, an information
storage medium, an image processing device, an image processing method,
and a data structure capable of collaboration between replay data and a
motion picture produced by an image capturing unit during a period
corresponding to the replay data.” Specification Abstract, filed August 25,
2011 (“Spec.”). Claims 1, 12, and 13 are independent. Claim 1 illustrates
the claimed subject matter:
1. A non-transitory information storage medium storing
instructions which are to be executed by a client computer
terminal, the instructions comprising:
instructions for executing a program in accordance with
user operation data received from a user input device and
generating a first plurality of frame images in accordance with a
first mode to produce a motion picture for display to the user
based on the program execution and user operation data;
replay data obtaining instructions for obtaining replay data
for reproducing a status of execution of the program when the
program is executed, wherein the replay data include the user
operation data and the replay data is produced simultaneously
with producing the motion picture for display to the user; and
motion picture for playback producing instructions for
generating, after obtaining the replay data, a second plurality of
frame images in accordance with a second mode for producing a
motion picture for playback by executing the program using the
obtained replay data, wherein the first and second modes are
different and the first and second plurality of frames are different
such that the motion picture for playback is at a lower resolution
than the motion picture for display, and that the motion picture
for playback is in condition to be uploaded from the client
computing terminal to a motion picture distribution server for
distribution over a computer data network.
Appeal Brief 13, filed February 9, 2016 (“App. Br.”).
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Application 13/203,411
REJECTIONS
Claims 1, 9, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brook et al. (US 2008/0268961 Al; Oct. 30, 2008) and
Wild et al. (US 2010/0035691 Al; Feb. 11, 2010).
Claims 2—5, 7, 8, and 15 stand rejected as unpatentable over Brook,
Wild, and Perlman et al. (US 2009/0118019 Al; May 7, 2009).
Claims 6 and 10 stand rejected as unpatentable over Brook, Wild,
Perlman, and Walker et al. (US 2008/0274798 Al; Nov. 6, 2008).
ANALYSIS
Claim 1 recites instructions for producing “a motion picture for
display to the user based on the program execution and user operation data,”
and obtaining “obtaining replay data for reproducing a status of execution of
the program.” App. Br. 13. Claim 1 also recites instructions for “producing
a motion picture for playback by executing the program using the obtained
replay data . . . such that the motion picture for playback is at a lower
resolution than the motion picture for display” and “is in condition to be
uploaded from the client computing terminal to a motion picture distribution
server.” Id. (emphasis added). Independent claims 12 and 13 recite similar
limitations. See id. at 15—16.
Appellant contends the cited art teaches away from these instructions.
See App. Br. 6—13. According to Appellant, Brook not only strongly warns
against lowering resolution but also teaches increasing the resolution of
video slated for distribution. See id. at 7—10. In Appellant’s view, the
Examiner’s combination renders Brook unsatisfactory for its intended
purpose of producing high-resolution video. See id. at 12. Appellant argues
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Application 13/203,411
the Examiner improperly downplays the portions of Brook that teach away
from the claimed invention and relies on improper hindsight reasoning. See
id. at 7—10.
We find Appellant’s arguments persuasive. “[A]n applicant may
rebut a prima facie case of obviousness by showing that the prior art teaches
away from the claimed invention in any material respect.” In re Peterson,
315 F.3d 1325, 1331 (Fed. Cir. 2003). A reference teaches away from a
claimed invention “when a person of ordinary skill, upon reading the
reference . . . would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
For example, a reference teaches away from a claimed invention when
proposed modifications to the reference would “defeat the purpose” of the
reference. See, e.g., In re Haruna, 249 F.3d 1327, 1336 (Fed. Cir. 2001)
(“Broadening the transparent region of conventional disks would defeat the
purpose of Benne .... Thus, Benne teaches away from the claimed
design.”). See also Manual of Patent Examining Procedure § 2143.01 (9th
ed. 2014) (explaining that a proposed modification cannot render the prior
art unsatisfactory for its intended purpose).
As argued by Appellant, modifying Brook in the manner proposed by
the Examiner would defeat Brook’s purpose. Brook discloses “[t]he first
benefit [of the disclosed invention] is the ability to drastically improve
rendering quality” of recreated gameplay sequences. Brook 116. Brook
explains that in the disclosed invention “graphics may be ‘cranked up’ to the
maximum levels of resolution and graphical quality. Furthermore, the video
may be captured, of those high-resolution graphics, at a very high resolution
as well.” Id. at 17. According to Brook this obviates the need to
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Application 13/203,411
“intentionally degrade . . . video capture software’s resolution” as was done
in prior art systems, “lead[ing] to an overall drastic improvement in the
resulting video presentation. Higher-quality videos are much more suitable
for broadcast by high definition television or for sharing via the web.” Id.
1116,18.
The Examiner’s proposed modification of Brook destroys this benefit
by reducing the resolution of recreated gameplay sequences. See Final
Rejection 5—6, mailed July 16, 2015 (modifying Brook to incorporate Wild’s
teaching of compressing replay segments). In light of this, we agree with
Appellant that Brook would lead one of ordinary skill in the art in a
“direction divergent from the path that was taken by the applicant.” Gurley,
27F.3dat 553. Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 9, and 12, as well as the Examiner’s rejection of their
respective dependent claims.
We note the Examiner provided “an example” of how Holthe (US
2008/0139301 Al; July 12, 2008) “might be applied regarding the subject
matter of claim 1 ... for informational purposes.” Notice of Panel Decision
from Pre-Appeal Brief Review 1, mailed January 28, 2016.1 The Examiner
stated this “rejection is not currently applied in this case.” Id. Because the
Examiner has “not currently applied” this rejection, we do not consider it. If
prosecution continues, the Examiner remains free to consider whether the
claims would have been anticipated by, or obvious in light of, Holthe or any
other applicable prior art.
1 The Notice does not have page numbers. We treat the Notice as if it were
numbered beginning with the Notice’s continuation sheet.
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DECISION
We reverse the Examiner’s rejection of claims 1—10, 12, 13, and 15.
REVERSED
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