Ex Parte YAMADA et al

Patent Trial and Appeal BoardMar 14, 2016

12868889 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/868,889 08/26/2010 27562 7590 03/16/2016 NIXON & V ANDERHYE, P,C 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Y oichi YAMADA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MEN-723-2884 6804 EXAMINER ROWLAND, STEVE ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 03/16/2016 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 YO I CHI YAMADA, HIDEMARO FUJIBA Y ASHI, HIROMU TAKEMURA, and YUTAKA HIRAMUKI Appeal2014-002424 Application 12/868,889 Technology Center 3700 Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from a final rejection of claims 1-20. 1 Final Act 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Examiner incorrectly identifies claims "1-21" as being rejected, but there is no claim 21 on appeal. Appellants added new claim 21 in their Amendment mailed October 19, 2012, but this claim was subsequently canceled in their Amendment mailed April 16, 2013. Appeal2014-002424 Application 12/868,889 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a computer-readable storage medium having stored therein a game program of operating a player object in a virtual space, and more specifically, to control of processing configuring a game world in the virtual space." Spec. ,-i 1. Claims 1 and 18-20 are independent; claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A non-transitory computer-readable storage medium having stored therein a game program which is executed by a computer of a game apparatus executing a game of operating a player object in a game world created in a virtual space, the game program causing the computer to perform functionality comprising: setting a first area in the virtual space; setting a second area in the virtual space; generating a first object to be placed in the set first area, based on first configuration information for configuring a first state in at least a part of the game world; generating a second object to be placed in the set second area, based on second configuration information for configuring a second state different from the first state at a predetermined position in the virtual space to which the first configuration information is applied; and displaying at least a portion of a game world of the second state over a displayed game world of the first state in the virtual space. REFERENCE RELIED ON BY THE EXAMINER Tsuchiya US 2004/0157662 Al Aug. 12, 2004 THE REJECTION ON APPEAL Claims 1-20 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Tsuchiya. 2 Appeal2014-002424 Application 12/868,889 ANALYSIS Each independent claim on appeal (i.e., claims 1 and 18-20) includes the limitation "displaying at least a portion of a game world of the second state over a displayed game world of the first state in the virtual space." See also Reply Br. 2. The Examiner does not address this limitation in the Final Office Action. See Final Act. 2. Appellants, in their Appeal Brief, contend that Tsuchiya is not "displaying the second game state over the first game state" as recited. 2 App. Br. 13. Accordingly, Appellants contend that "the rejection of the independent claims" must be reversed. App. Br. 14. In response, the Examiner further explains how Tsuchiya discloses the "first state" and "second state" of this limitation3 and also addresses that part of this limitation directed to a "display" of the first and second zones. 4 Ans. 2-3; App. Br. 13. Because the Examiner finds that Tsuchiya displays first and second zones, the "Examiner submits that this comprehensively depicts the zones in the game space."5 Ans. 3. However, the Examiner does not 2 Appellants reiterate that "Tsuchiya is not displaying first and second game states, let alone displaying a portion of one game state over the other game state." App. Br. 13-14; see also Reply Br. 2. Appellants also state that "[ c ]laim 1 requires displaying at least a portion of a game world of the second state over a displayed game world of the first state in the virtual space." App. Br. 14. 3 The Examiner finds that "objects 501-1-501-4 have differing configurations based on the differing game states, i.e., their location relative to the special zones." Ans. 2. 4 The Examiner finds that "[t]hese effects are depicted in the game as concentric circles" and that "[t]hese circles demonstrate the size and location of the zones." Ans. 3. 5 Appellants contend that even if Tsuchiya discloses two zones in adjoining rings, such zones "are not displayed one over the other" (Reply Br. 2), "let alone a second zone being displayed over a displayed first zone" (Reply Br. 3). 3 Appeal2014-002424 Application 12/868,889 indicate where Tsuchiya teaches or discloses displaying a portion of the "game world of the second state over a displayed game world of the first state" as claimed. We are instructed by our reviewing court that "[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Here, there is no showing by the Examiner where this limitation directed to displaying one game state over another can be found, either expressly or inherently, in Tsuchiya. Lacking same, we reverse the Examiner's rejection of independent claims 1 and 18-20. Further, as each dependent claim 2-17 depends, directly or indirectly, from one of these independent claims, we likewise reverse the Examiner's rejection of these dependent claims as well. DECISION The Examiner's rejection of claims 1-20 as being anticipated by Tsuchiya is reversed. REVERSED 4