T 0188/11 () of 3.5.2013

Summary of Facts and Submissions

I. The appellant (applicant) lodged an appeal, received on 09 September 2010, against the decision of the examining division dispatched on 11 August 2010 to refuse the European patent application No. 03008019.6, the appeal fee was paid simultaneously. The statement setting out the grounds for appeal was received on 17 December 2010.

The examining division held that the application did not meet the requirements of Article 52(1) in combination with Article 56 EPC for lack of inventive step having regard to inter alia the prior art

game "Combo Racer" © 1990 by Gremlin Graphics, referred to as D3 and described in

D3a: Hans-Joachim Amann, "Echt Abgefahr'n", aktueller Software Markt, ASM vol. 9, 1990 and

D3c: "Combo Racer", review in "Amiga Joker", vol. 4, 1990, page 36.

II. Oral proceedings before the Board were duly held on 03 May 2013.

III. The appellant requested that the decision under appeal be set aside and a patent be granted on the basis of a set of claims according to a single request filed with a letter dated 02 April 2013 and received on 03 April 2013.

IV. The wording of the independent claims (1 and 3) of the single request on file at the time of the present decision reads as follows:

1. "A game apparatus for operating a plurality of characters including a movable character (601) traveling in a game space, a driver character (602) driving the movable character, a fellow passenger character (603) riding on the movable character, the game apparatus comprising:

a first operation switch provided in a first controller (104);

a second operation switch provided in a second controller (105) which is different from the first controller; and

image processing means executing a game program in response to operation data (Fig.4) of the first and second operation switches to generate a game image including images based on image data of the plurality of characters, wherein the image processing means comprises:

means to set a character selected by the user from a plurality of characters as the driver character (602) and the fellow passenger character (603);

first motion control means (S302) for controlling motions of the driver character (602) and the movable character (601) in response to operation data of the first operation switch;

second motion control means (S303) for controlling a motion of the fellow passenger character (603) in response to operation data of the second operation switch, and changing a motion of the movable character based on the motion and the character data of the fellow passenger character; and

character change means (S105) for switching, while the game is being played, the driver character (602) and the fellow passenger character (603) with each other in response to operation data of a third operation switch (301) provided in the first and/or second controller,

exchange means (S206) for exchanging the operation data of the first and the second operation switch and for exchanging the character data of the driver character and the fellow passenger character;

when the driver character and the fellow passenger character are switched with each other by the character change means, the first motion control means controls the motions of the driver character and the movable character in response to operation data of the second operation switch instead of operation data of the first operation switch, and

when the driver character and the fellow passenger character are switched with each other by the character change means, the second motion control means controls the motion of the fellow passenger character in response to operation data of the first operation switch instead of an operation data of the second operation switch, and changes the motion of the movable character based on the motion and the character data of the fellow passenger character changed by the exchange means (S206) for character data."

3. "A computer-readable recording medium storing a game program which causes a computer, which is included in a game apparatus operating a plurality of characters including a movable character (601) traveling in a game space, a driver character (602) driving the movable character and a fellow passenger character (603) riding on the movable character, to execute a set of steps in response to operations performed on first and second controllers, the set of steps comprising:

a storing step of storing user selected character data for setting the driver character (602) and the fellow passenger character (603);

an operation instruction receiving step of receiving, from the first and second controllers (104, 105), operation data representing operation instructions inputted into the first and second controllers; and

an image processing step (S104-S111) of generating a game image including images based on image data of the characters in response to the operation data, wherein

the image processing step comprises:

a first motion control step (S302) of controlling motions of the driver character (602) and the movable character (601) in response to a first operation instruction inputted into the first controller;

a second motion control step (S303) of, in response to a second operation instruction inputted into the second controller, controlling a motion of the fellow passenger character (603), and changing a motion of the movable character based on the motion and character data of the fellow passenger character; and

a character change step (S105) of switching, while the game is being played, the driver character (602) and the fellow passenger character (603) with each other in response to a third operation instruction inputted into the first or second controller,

an exchange step (S206) for exchanging the operation data of the first and the second operation switch and for exchanging the character data of the driver character and the fellow passenger character;

at the first motion control step (S302), when the driver character and the fellow passenger character are switched with each other by character change means, the motions of the driver character and the movable character are controlled in response to an operation instruction inputted into the second controller instead of the first operation instruction, and

at the second motion control step (S303), when the driver character and the fellow passenger character are switched with each other by the character change mans, the motion of the fellow passenger character is controlled in response to an operation instruction inputted into the first controller instead of the second operation instruction, and the motion of the movable character is changed based on the motion and the character data of the fellow passenger character as exchanged by the exchange step."

V. The appellant's arguments may be summarised as follows:

The closest prior art is the "Combo Racer" game, D3. Like the invention this is a kart racing game in which two players control a driver and passenger character riding on a kart, whereby both characters contribute to steering the kart.

The central differences with respect to the prior art "Combo Racer" game is that players can select characters having different character data and that the players can decide to swap the roles played by the characters during a game.

Setting character data and changing roles of a player during a game may - although not necessarily and not in combination - be considered as relating to rules of a game. However, swapping roles of characters during play is a technical feature by which the game is implemented and is not derivable from a game rule. In combination with the selection of characters, swapping the roles of characters addresses the problem of making the game more surprising and therefore exciting for the players. Generating the element of surprise in the game is comparable to the generation of chance encounter events with less predictability in T0012/08. Since none of the cited prior art suggests swapping the roles of character during play, the subject matter of the claims is not obvious and so involves an inventive step.

Furthermore, the independent claims define that the character data of the passenger influences the motion of the kart. This is mainly disclosed in the application as achieved by modelling characters to emulate kart riders in the physical world where their weight influences how the kart moves. In this case, because players select different characters having different character weight data, switching the roles of the driver and passenger characters during the game changes the dynamic response of the simulated driver/passenger/kart body to player actions in an unpredictable way, thereby solving the above problem in a new and inventive way.

Reasons for the Decision

1. The appeal is admissible.

2. Background; "mixed" inventions

2.1 The present invention sets out to provide a game machine in which a player has a more involved relationship with the subjects they operate in a game space, see application as filed, page 3 lines 12-15. A further aim of the invention is to provide a game in which two players can together operate the same character, such as a racing kart, in a game. It is stated that this aspect of the game provides a novel experience for the players in that they enjoy cooperating with each other, see application as filed, page 5, line 20 to page 6, line 5. The detailed embodiments concern a simulated kart racing game machine having two controllers for two players to act as a team in operating a virtual kart, see for example page 21, lines 14-25 and figures 1, 6a and 6b.

2.2 In detail, a first player uses a first controller to control a kart driver and a second player uses a second controller to control a fellow passenger. Both simulated driver and simulated passenger ride on the simulated kart and both contribute to determining the movement of the driver/passenger/kart body. In particular a first player can control a simulated driver to steer the kart, as for example is explained on page 32, lines 16-19. At the same time, a second player can control the simulated passenger to apply their weight (to the left or right) in order to influence the travelling direction of the kart, as for example is explained on page 33, lines 8 to 16.

2.3 Weight data as character data is discussed in the application as filed, see for example the sentence bridging pages 30 and 31 and page 50 lines 10 to 13. Although the independent claims are not restricted to character data including weight data, the appellant has presented arguments as to why in particular such a restriction would make the claim inventive with respect to the "Combo Racer" game. For the purposes of assessing inventive step, the Board will therefore interpret character data as including weight data.

2.4 It is common ground that the game apparatus of claim 1 and corresponding computer readable medium of claim 3 include subject matter related to schemes, rules or methods for playing games, such as characters, a game space and game images. This subject matter as such is excluded from patentability under Articles 52(2)(c) and 52(3) EPC. However, being also directed to an apparatus having switches, image processing means etc., the claims possess overall technical character (following T0258/03 OJ EPO 2004, 575), even if they are "mixed" (with both technical and non-technical aspects).

2.5 In dealing with such "mixed" inventions, the Board adopts the approach as set out in T1543/06 (Gameaccount), reasons 2.1-2.9, which is based foremost on T0641/00 (OJ EPO 2003, 352). Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject matter alone however original it may be. The mere technical implementation of something excluded cannot therefore form the basis for inventive step. A consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter. In the present case it is necessary to consider what claimed aspects are non-technical, how they have been technically implemented, and whether such implementation is inventive over the prior art.

2.6 The Board considers game rules to form part of "…a regulatory framework agreed between players and concerning conduct, conventions and conditions that are meaningful only in a gaming context. It is important to note that it is normally so perceived by the players involved, and as serving the explicit purpose of playing a game. As such an agreed framework it is a purely abstract, mental construct, though the means for carrying out the game play in accordance with such a set may well be technical in nature", See T0336/07, reasons 3.3.1. As noted in T0012/08, reasons 4.6, game rules "form the abstract formal structure of a game describing the interplay between player actions and the choices offered within the game." A set of game rules thus determines inter alia how game-play evolves from beginning to end in response to player actions and decisions and the goals to be achieved to conclude game-play.

3. Inventive step

3.1 In the following, the Board will consider claim 1. The appellant does not dispute that the "Combo Racer" game apparatus, as described in D3a and D3c, can be considered as the closest prior art. For the skilled person, a game system developer with software engineering skills, the game is a good starting point for developing the present invention.

3.1.1 The "Combo Racer" game is played on a computer apparatus see D3a, left-hand column "System". The apparatus operates a plurality of (virtual) characters including a kart (movable character), a driver character and a fellow passenger character, both of whom ride on the kart, see D3a, second column, lines 20-34.

3.1.2 The characters are controlled by two players operating respective first and second joystick controllers. The first player controls the virtual driver to steer the kart whilst the second player controls the posture of the virtual passenger to contribute to steering the kart, see D3c, second column, lines 20 to 26. Implicitly a joystick controller comprises an operation switch. Therefore the "Combo Racer" game apparatus comprises first and second switches as claimed.

3.1.3 That the "Combo Racer" game apparatus includes image processing means as claimed, generating a game image of the game characters, is evident from the game image screen shots of D3a and D3c.

3.1.4 Players of the "Combo Racer" game see how the driver, passenger and kart game characters move in response to operation of their joysticks. See in particular the screen shots of D3c. Therefore, implicitly, the game apparatus likewise comprises a first and second motion control means as claimed.

3.1.5 It is claimed that "the second motion control means [is] for changing the motion of the moveable character based on the motion and character data of the fellow passenger character". D3a discloses that the player controlling the virtual passenger contributes to steering the kart by shifting the weight of the passenger on the machine, see middle of second column ("[der Beifahrer] muss…durch geschickte Gewichtsverlagerung die Maschine durch die Kurven lenken."). A player controls the passenger character to steer the kart by leaning left or right in curves, see screen shots of D3c. The passenger character in the "Combo Racer" game is thus simulated as having weight. Therefore the second motion control means of the "Combo Racer" game is arranged for changing a motion of the kart (movable character) based on the passenger's character data, in this case weight.

3.2 The appellant does not dispute that the "Combo Racer" game includes the above features. It is therefore common ground that that the differences between the gaming apparatus of claim 1 and that of the "Combo Racer" game are the following claimed features, with feature labels added by the Board:

(a) means to set a character selected by the user from a plurality of characters as the [initial] driver character and the [initial] fellow passenger character;

(b) character change means (8105) for switching, while the game is being played, the driver character (602) and the fellow passenger character (603) with each other in response to operation data of a third operation switch (301) provided in the first and/or second controller,

(c) exchange means (c1) for exchanging the operation data of the first and second operation switch and (c2) for exchanging the character [weight] data of the driver character and the fellow passenger data;

(d) when the driver character and the fellow passenger character are switched with each other by the character change means, the first motion control means controls the motions of the driver character and the movable character in response to operation data of the second operation switch instead of operation data of the first operation switch, and

(e) when the driver character and the fellow passenger character are switched with each other by the character change means, the second motion control means controls the motion of the fellow passenger character in response to operation data of the first operation switch instead of an operation data of the second operation switch, and changes the motion of the movable character based on the motion and the character [weight] data of the fellow passenger character changed by the exchange means (S206) for character [weight] data.

3.3 The Board is of the opinion that game rules underpin the features (a) to (d).

3.3.1 The driver character and fellow passenger characters referred to in the claim may be considered as the players' "characters". Initially, a first character is driver and a second character is the fellow passenger riding on a kart.

In the prior art "Combo Racer" game, when playing with two players, at the start of play only one player can control the driver and so the other must control the passenger. Players will be unable to start the game unless they have decided which of them will control the passenger and which will control the driver. Such a game choice offered to players falls under the above definition of a game rule.

According to feature (a) of claim 1 of the invention, players additionally have a choice of character.

From feature (e), the character [weight] data changes when character roles are swapped. The Board interprets this to mean that characters from which players can select according to feature (a) must have different weights. This interpretation is confirmed by the description, page 23, lines 5 and 6 which states that "each character has a unique attribute (for example body weight, etc…)".

The Board considers that a first game rule relating to players selecting a character before the race according to feature (a) can therefore be expressed as:

i) Before the race, each player selects a character from a plurality of characters of differing weight that they will control throughout the game and selects their initial role in the race.

3.3.2 The Board considers that a second game rule relating to the fact that players can initiate a role-swap for their characters during the game underpins the differing features (b) to (e). The rule can be expressed as:

(ii) During the race, players can choose to have their characters swap places and therefore also their roles on the kart, so that the character driving before the swap becomes the passenger after the swap and vice versa.

3.3.3 The appellant does not dispute that the selection of a character from a plurality of characters in a game can be considered as a game rule.

However, the appellant considers that the combination of characters having different weights and being able to swap roles is a technical feature since weight is intrinsically technical and together these aspects imply a change of the physical characteristics of the simulated system, which surprises players when the swap is made.

3.3.4 The Board does not follow this argument. Attributing weight to a virtual character in a game has no physical effect, since a virtual character does not have physical weight. Rather the concept determines the way the virtual characters respond to user inputs in the game space. The fact that different characters have different weights therefore means no more than that different characters respond differently to user inputs when moving in the game space. This is a purely abstract concept conceived of by the game designer as part of the structure of the game, for example in order to make the game more interesting or more realistic. This concept therefore falls under the definition of a game rule. This holds irrespective of whether the game involves characters swapping roles because the concept of different characters being modelled in the game to have different weights does not cease to be a game rule because a further game rule determines that those characters can swap roles during the game.

3.3.5 The appellant has furthermore argued that, in contrast to the concept of swapping roles of a player, the concept of swapping roles of a character in a game is not a game rule but a technical aspect of the game apparatus claimed that makes the game more exciting.

The Board does not follow this argument for the following reasons:

The application as filed, page 23, lines 1 to line 5, discloses that players have the possibility during the game of causing the roles played by the character they have selected before the race to be exchanged. However, it does not disclose any technical problem or considerations associated with the concept of players' characters being able to swap roles during the game.

The application as filed sets out to allow players to experience a novel sensation while playing a game, see page 3, lines 12 to 15. It is not in dispute that such a swap could increase the excitement of playing the game for the players, however the Board holds that swapping roles is an abstract idea which neither solves a technical problem, nor involves technical considerations. In the Board's view, the excitement players may derive from this is a direct result of the conceptual structure of the game allowing players to swap roles of their characters during the game. By making this choice, a player changes the game dynamics and therefore how the game evolves. The Board considers that such a concept is an abstract gaming choice conceived of by the games designer to increase excitement for the players. The Board holds that it therefore falls under the above definition of a game rule.

Moreover the Board considers that this role-swap possibility will be perceived to be a game rule by the players themselves. Players know that they can change the narrative of the game by initiating the swapping of characters' roles at a timing of their choice, see page 23, lines 1 to 5 and page 27, lines 6 to 13. An animated cartoon video sequence is then displayed to players featuring their characters swapping places. See the application as filed, page 27, line 11 to page 28 line 8 and Fig. 8. Thus players will be aware of the role-swap possibility, will understand how it changes the game narrative and will consider it to be part of the rule structure of the game.

3.3.6 In summary, the Board considers that two rules underpin features a to d of the game apparatus claimed. These rules are as follows:

- (i) Before the race, each player selects a character from a plurality of characters of differing weight that they will control throughout the game and selects their initial role in the race.

- (ii) During the race, players can choose to have their characters swap places and therefore also their roles on the kart, so that the character driving before the swap becomes the passenger after the swap and vice versa.

3.4 Adopting the approach outlined above, sections 2.4 to 2.6, inventive step cannot be found in the mere technical implementation of the above rules, but must reside in the particular manner of implementation. It is therefore necessary to consider how these rules are implemented in the game apparatus of claim 1. This question is to be considered from the point of view of the skilled person - here a gaming software engineer - who is given the task of modifying the prior art "Combo Racer" game apparatus to implement the above rules.

3.4.1 Considering the implementation of rule (i)

Rule (i) states that before the race, each player selects a character from a plurality of characters of differing weight that they will control throughout the game and selects their initial role in the race.

The skilled person, a gaming software engineer, tasked with implementing the character selection rule (i) knows that some means need to be provided to allow players to make their selection. Feature (a) defines that the implementation is carried out by a "means", without specifying any particular means. This feature therefore merely states the obvious. As the technical implementation of rule (i) this feature thus does not involve an inventive step.

3.4.2 Considering the implementation of rule (ii)

Rule (ii) states that during the race, players can choose to have their characters swap places and therefore also their roles on the kart, so that the character driving before the swap becomes the passenger after the swap and vice versa.

(a) Starting from the "Combo Racer" game, it will be immediately obvious to the skilled person that some means will have to be provided to implement rule (ii). The skilled person would therefore arrive at "means" for switching the driver and passenger whilst the game is being played without making an inventive step. The Board considers that the skilled person would therefore obviously arrive at the first part of feature (b), which essentially states that character change means are provided without specifying what those means are.

(b) Tasked with implementing rule (ii), the skilled person would also need to provide some means in the configuration and software of the "Combo Racer" by which players can instruct the apparatus to swap character roles. In this context it is important to note that this rule requires more than just the players swapping controls, which would leave what is happening in the virtual game space unaffected and indeed require no structural modification. Rather it is the virtual characters the players control that swap roles in the game, which is something that can only be effected in the virtual game space. Thus the rule cannot be implemented simply by players exchanging controls. It is clear that if the swap is to take place in virtual game space which is generated by software in the apparatus, it must receive a data instruction from a player to this effect.

The Board considers that the simplest way to do this is to provide an operation switch. It is standard practice to provide video game joystick controllers with control switches. For the skilled person it would be entirely routine to either programme such an existing switch on one or both of the joystick controllers to activate a swap-over, or to provide a further switch on one or both of the joystick controllers to perform that function. In either case such a switch would be additional to the switches within each of the joysticks that provide the control data for controlling motion of the respective character(s). The skilled person, in implementing rule (ii), would thus arrive at differing feature (b) of claim 1 in an obvious manner.

(c) Furthermore, for characters to actually swap roles in virtual game space it will be obvious to the software engineer that he must modify the software generating the game space. This raises the question as to how the game space of the "Combo Racer" game is generated. As explained above in sections 3.1.3 to 3.1.4, the "Combo Racer" game apparatus includes image processing means generating images of the characters in the game and first and second motion control means. It is implicit in the context of a computer game that such means are software routines.

At the software routine level, a role-swap for the characters in the game implies that the motion of the kart now responds firstly to the character who was formerly passenger and secondly to the character who was formerly driver. This means that after the swap, the kart motion is determined firstly in response to data associated with the character who was formerly passenger where it previously was determined using that of the driver character. Secondly, kart motion is adjusted in response to data associated with the driver character who is now passenger where it previously was determined using the passenger character data. Thus, this swap-over of roles must be mirrored by an exchange of data at the control or software level used to generate the virtual game space. This implies that some form of "exchange means" exchanging the two sets of data as in feature c) of claim 1 is necessary and would therefore be obvious for the software engineer implementing rule (ii).

(d) What particular data needs to be exchanged depends on how the swap is realised at the player level. There are only two possibilities: the players must either swap joysticks as their characters swap roles, or retain their joysticks to continue to control their characters in the new, swapped roles. Both are obvious options for the software engineer asked to implement the character role-swap, and each has its own relative advantages.

Opting as a matter of obviousness for the second possibility has the benefit of ensuring game continuity. In this case the operation data from the joystick that controls the character who was formerly in the passenger seat must now be used for motion control of the kart and its driver, while the operation data from the joystick that controls the character who was previously in the driver seat is now used to adjust kart motion. In this case the data exchange must include the operation data from the operation switches of the two joystick controls, feature c1). Hence it is a matter of obviousness for the skilled person to arrive at differing feature c1) of claim 1.

(e) At the level of virtual game space, the two characters change places when the swap takes place. This should be reflected in the dynamics of the game space as well as in the display, as will be obvious to the skilled person. This naturally includes data relative to the characters appearance on the display (shape, colour, size). Where the games designer has decided that different characters have differing weights in accordance with rule (i), so that the game response varies with different characters in the passenger seat, then this data should likewise be included. Thus the skilled person would arrive at differing feature c2 of claim 1 as a matter of obviousness.

(f) The inevitable result of the data exchanges defined in features (c1) and (c2) is that, at the game software level responsible for generating the game space, those parts responsible for determining motion of the kart and driver on the one hand and the passenger on the other hand, exchange the data sets they use for generating motion in the game space. Thus control of the motion of the driver and kart is now in response to the operation data from the joystick that was formerly controlling the character in the passenger seat (the display control will also use the character data associated with the character to display the character in the drivers seat). This is differing feature (d). Likewise control of the motion of the passenger uses data from the other joystick, namely that which was formerly controlling the character in the driving seat, while its character [weight] data is now used to adjust movement of the kart (and display the character in the passenger seat). This is differing feature (e). Thus the skilled person would arrive at all the differing features of the claim without making an inventive step.

3.4.3 The appellant has argued that a technical effect of surprise for the players is derived from the technical implementation of combined concepts of characters having differing weight data, and players being able to swap roles played by the characters during a game. The dynamics of the driver/passenger/kart system change as a result of the swap, thereby surprising the players. The appellant argues that this is a further technical effect not directly following from the concepts themselves, but from their combination.

The Board does not follow this argument. When the role of the characters are swapped, each player suddenly has a new and different task. Although this itself may surprise the players, in particular if they are not familiar with their new task, this is a direct consequence of the idea of swapping roles - a game rule - and is not attributable to how the rule is technically implemented.

The Board can accept that the way the players interact as a team may change when they swap roles and give rise to a new experience. This however is again inherent in the idea of swapping roles as a game rule, not its particular implementation. Equally, players may have a different experience of the game when they choose a character of a different weight from one game to another, particularly when their character acts as passenger during game play. However this is a result inherent in the abstract concept of associating different weights and different responses with different characters, this latter concept essentially being a further detail (or refinement) of the known game rule of simulating kart movement under the influence of passanger character weight, but as such being a game rule nevertheless.

Furthermore the change in dynamics of the driver/passenger/kart body at the time of characters swapping roles is a direct consequence of swapping characters having differing weights, in fact also being inherent in the very idea of cart movement simulation, therefore this likewise follows directly from the rules themselves rather than from their implementation.

3.4.4 In summary the Board holds that all differing features (a) to (e) of claim 1 follow in an obvious manner when the skilled person, a software engineer specialising in gaming software, is asked to implement the new game scheme allowing for a choice of different characters with different characteristics in the different roles and the possibility a swap-over of roles in the game space during game play. The same conclusion holds for the computer readable medium of claim 3 which rephrases the various element of the apparatus of claim 1 in terms of their function.

The Board has arrived at these conclusions even when considering the term "character data" narrowly, as including character weight data. Naturally, the same conclusion must be reached for a broader interpretation of the claims, since weight data falls within the term "character data".

3.5 Therefore the subject matter of independent claims 1 and 3 does not meet the requirements of Article 52(1) in combination with Article 56 EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.