Appeal 2007-2005
Application 10/066,110
1 ANALYSIS
2 Claims 15-18, 21, and 22 rejected under 35 U.S.C. § 102(b) as anticipated by
3 Yoshida.
4 We note that the Appellant argues these claims as a group. Accordingly, we
5 select claim 15 as representative of the group.
6 The Examiner has set forth how Yoshida meets the elements of the body of
7 claim 1 and the Appellant do not contest these findings. The preamble of claim 15,
8 however, recites that the method is “using a game aid separate from the electronic
9 interactive game.” This separation is the matter under contention.
10 As the Appellant argues, such a structural limitation that limits the operation of
11 the method claim must be afforded patentable weight. And although the Examiner
12 has nominally indicated that no patentable weight was afforded, the Examiner’s
13 findings do imply that some weight was afforded, because the Examiner has found
14 that the game optimization signals are fed into the interactive game (Answer 4).
15 The issue turns thus on how broad the term “separate” is and whether the
16 processing shown in Yoshida, fig. 3, fits within the scope of this term when giving
17 it the broadest reasonable construction. As the Appellant notes, the preamble is
18 afforded weight where it breathes life and meaning into the claim. The only
19 portion of the claim that distinguishes the two parts that are to be separate, i.e. the
20 game aide and the interactive game, is the step that the game aid generates one or
21 more game input signals. Thus, separation is required to the extent that the game
22 aide produces output signals that are input to the game. The claim makes no
23 recitation as to whether the game or game aide are hardware or software, whether
24 they are processes or processors, or even the manner or degree of separation.
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