Kiyoshi Mizuki et al.

Patent Trials and Appeals Board

Sep 17, 2019

13742759 - (D) (P.T.A.B. Sep. 17, 2019)

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.
13/742,759 01/16/2013 Kiyoshi MIZUKI RYM-723-3630 1916
27562 7590 09/17/2019
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LANEAU, RONALD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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 KIYOSHI MIZUKI, HIDETO YUZAWA, and
SHUNSAKU KATO
____________

Appeal 2017-010230
Application 13/742,7591
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7 and 9–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 “The real party in interest is NINTENDO CO., Ltd.” Appeal Br. 3.
Appeal 2017-010230
Application 13/742,759

2
ILLUSTRATIVE CLAIM
1. A game system including a plurality of terminal
devices and a predetermined server, the plurality of terminal
devices being respectively used by a plurality of users, the
game system comprising a processor system including at least
one processor, the processor system being configured to:
perform interaction processing with at least one of a
plurality of virtual game characters that exist in a predetermined
virtual game space, based on an instruction input from the user
of each terminal device;
generate posted information in connection with one
virtual game character selected from the plurality of virtual
game characters, based on an input of the user of each terminal
device;
store the generated posted information in the server in
association with identification information of the one virtual
game character;
draw a virtual space image which is an image
representing a virtual game space including a first virtual game
character,
select one item of posted information for the first game
character, from among a plurality of items of posted
information stored in the server, the plurality of items of posted
information being generated based on inputs by the plurality of
users, and the selected item of posted information being
associated with identification information of the first virtual
game character;
composite the selected item of posted information in the
virtual space image in association with the virtual game
character that is indicated by the identification information
associated with the selected posted information, a display
position of the selected item of posted information being
determined based on a display position of the first virtual game
character;
present the composite image to the user in each terminal
device, and
Appeal 2017-010230
Application 13/742,759

3
control movement of the virtual game character in the
virtual game space,
wherein the display position of the posted information is
changed according to the controlled movement of the virtual
game character.
CITED REFERENCES
The Examiner relies upon the following references:
Cho US 2007/0218997 A1 Sept. 20, 2007
Clanton et al. US 7,386,799 B1 June 10, 2008
(hereinafter “Clanton”)
Zalewski et al. US 2010/0041475 A1 Feb. 18, 2010
(hereinafter “Zalewski”)
Boutin US 2013/0029767 A1 Jan. 31, 2013
Oshita US 2013/0024544 A1 Jan. 24, 2013
REJECTIONS2
I. Claims 1–7 and 9–12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zalewski and Clanton.
II. Claims 13–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Boutin, Zalewski, Oshita, and Cho.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.

2 In addition to the rejections identified herein, the Final Office Action
(pages 2–3) rejects claims 1–7 and 9–12 under 35 U.S.C. § 101 as ineligible
subject matter. This rejection is withdrawn. See Answer 2.
Appeal 2017-010230
Application 13/742,759

4
ANALYSIS
Claims 1–7 and 9–12
Among the arguments presented for claims 1–7 and 9–12, the
Appellants contend that the rejection is erroneous, because the cited prior art
does not adequately teach or suggest the following limitation of independent
claim 1 (or the substantially similar limitations of independent claims 9–12):
select one item of posted information for the first game
character, from among a plurality of items of posted
information stored in the server, the plurality of items of posted
information being generated based on inputs by the plurality of
users, and the selected item of posted information being
associated with identification information of the first virtual
game character.
See Appeal Br. 20–28.
The Examiner relies upon Zalewski for this limitation, stating, in the
Answer:
Zalewski, in para. [0037], discloses a submission engine to
allow entry of posted information wherein the submission
engine comprises drop down menus to allow identification of
particular types of advice including defeating a particular
enemies and similar identification may occur with respect to
particular enemies. This implies that multiple users of the
system would be able to submit advice for the same particular
enemy, the advices being stored in a server. Hence, it would
read on the claim limitation when one of the advices with
respect to a particular enemy would be composited for posting.
Answer 13–14.
Yet, as the Appellants explain, the Examiner’s analysis does not
account for the claimed “select[ion]” of “one item of posted information . . .
from among a plurality of items of posted information” — a feature not
disclosed by Zalewski. See Appeal Br. 27–28; Reply Br. 5–7.
Appeal 2017-010230
Application 13/742,759

5
Therefore, we do not sustain the rejection of independent claim 1
(along with claims 2–7 depending therefrom) and, for like reasons,
independent claims 9–12 under 35 U.S.C. § 103(a).
Claims 13–17
The Appellants argue claims 13–17 as a group. See Appeal Br. 28–
32. Independent claim 13 is selected for analysis herein. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Appellants argue that the rejection is erroneous, because the cited
prior art references (Boutin, Zalewski, and Cho) do not teach or suggest the
following limitation of claim 13 (emphasis added):
prompting a user to select a stage while a composite
image including at least stored posted information generated by
another user is displayed in the virtual space image, in
association with the icon image of the stage that is indicated by
the stage identification information of the posted information
generated by another user.
See Appeal Br. 28–32, Reply Br. 7–12.
The Appellants’ argument hinges on whether the cited prior art
teaches or suggests the temporal aspect of the identified claim limitation of
claim 13 — i.e., the claimed “prompting” occurs “while” a “composite
image” (having certain features) “is displayed.” (Emphasis added).
Indeed, regarding Boutin’s alleged deficiency, the Appellants assert:
“Boutin . . . does not teach prompting a user to select any icon image of a
game while comments is being displayed in association with the
corresponding game.” Appeal Br. 30.
Similarly, the Appellants contend that the Zalewski reference lacks
the claimed simultaneity of the “prompting” and “display[ing]” features:
Appeal 2017-010230
Application 13/742,759

6
Zalewski vaguely suggests displaying game play advice after
the user has already entered certain points of game play related
to certain levels or stages. Namely, in Zalewski, when the user
is promoted to select a game stage, the game play advice has
not yet been displayed. Zalewski thus fails to teach prompting
a user to select a stage while any game play advice is being
displayed in association with the corresponding stage.
Id.
Likewise, in the Appellants’ assessment, Cho fails to provide the
temporal relationship of “prompting” and “displaying” required in claim 13:
Cho only teaches displaying icon images in allowing a user to
select a level to play, but not prompting a user to select a stage
while game play advice is being displayed in association with a
corresponding stage.
Id. at 31.
The Examiner regards the simultaneity of “prompting” and
“displaying” as a modification of the combined teachings of Boutin,
Zalewski, and Cho, wherein “[t]he motivation for presenting the user-
generated comment during the stage selection is to inform players about the
game from the perspective of other players.” Answer 15.
Alternatively, the Examiner explains that the claim term “while” does
not have a temporal meaning, in the context of the claim; rather, the word
“while,” in claim 13, merely means whereas:
[T]he conjunction “while” has several meanings, one of which
is “at the same time as”; however “while” also means
“whereas”. Using broadest reasonable interpretation of
“whereas” meaning of “while”, the combination of Boutin,
Zalewski and Cho would definitely read on the claimed
language.
Id.
Appeal 2017-010230
Application 13/742,759

7
We agree with the Appellants’ argument that, in the present context,
the claim term “while” should not be construed to mean whereas. See Reply
Br. 10–12. Interpreting “while” to mean whereas would not permit a logical
reading of the claim language, because claim 13 affords no sense of contrast
between the phrases “prompting a user to select a stage” and “a composite
image . . . is displayed.”
Yet, the Appellants do not address the Examiner’s position that the
combination of references may be modified to achieve the simultaneous
“prompting” and “display[ing],” in order “to inform players about the game
from the perspective of other players.” Answer 15. Therefore, the
Appellants do not present a reason for error in the Examiner’s position that
the teachings of Boutin, Zalewski, and Cho may be combined and modified
to include the claimed “prompting” during the “display[ing]” the “composite
image.” Id. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections.”) (citing Ex parte Frye, Appeal No. 2009-
006013, at 9–10, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential)).
In view of the foregoing, we sustain the rejection of claims 13–17
under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner’s decision rejecting claims 1–7 and 9–
12 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner’s decision rejecting claims 13–17 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal 2017-010230
Application 13/742,759

8
AFFIRMED-IN-PART