Dish Technologies L.L.C.

Patent Trials and Appeals Board

Dec 28, 2020

2019004693 (P.T.A.B. Dec. 28, 2020)

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.
15/199,687 06/30/2016 Nicholas Newell 120299-8061.US00 8205
132861 7590 12/28/2020
Perkins Coie LLP - DISH Network
P.O. Box 1247
Seattle, WA 98111-1247
EXAMINER
CHEN, CAI Y
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS NEWELL, ADAM LAWSON,
PRAKASH SUBRAMANIAN, KAYHAN KARATEKELI,
and OMAR KHAN
____________

Appeal 2019-004693
Application 15/199,687
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant’s claimed invention is directed to “graphically present[ing]
a virtual environment” which “receives a request from an electronic device
an owner or a guest to present the owner’s virtual environment that includes
a virtual bookshelf case with a personal virtual digital video disc (DVD)
collection of the owner” (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for graphically presenting objects in a virtual
environment, the method comprising:

receiving a request, at a video community system, from
an electronic device of one of an owner of a virtual
environment or a guest visiting the owner’s virtual
environment,

wherein the owner’s virtual environment includes
a virtual bookshelf case with a personal virtual digital
video disc (DVD) collection of the owner that includes a
plurality of virtual DVDs located on the virtual bookshelf
case, and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies EchoStar Technologies L.L.C. as the
real party in interest. Appeal Br. 1.
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wherein the request is received from the electronic
device of the owner or the guest to present the owner’s
virtual environment on a display;

communicating data corresponding to an image of the
owner’s virtual environment from the video community system
to the electronic device, wherein the communicated data
comprises:

first data that is used to render a first image portion
that includes the virtual bookshelf case of the owner;

second data that is used to render a second image
portion that includes each of the plurality of virtual
DVDs that are included in the owner’s personal virtual
DVD collection; and

third data that is used to render a third image
portion that includes a virtual object, wherein the virtual
object corresponds to one of a physical object or a
service that is unrelated to media content, and wherein
the physical object or the service associated with the
virtual object may be purchased by the owner or the
visiting guest from a remote source that provides the
physical object or the service to the purchasing owner or
visiting guest; and

presenting the image on the display to the requesting
owner or guest, wherein the presented image comprises:

the first image portion corresponding to a
graphical representation of the virtual bookshelf case;

the second image portion that includes a plurality
of second images each corresponding to a graphical
representation of the plurality of virtual DVDs, wherein
the plurality of virtual DVDs are presented on at least
one shelf of the virtual bookshelf case; and

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the third image portion corresponding to the virtual
object,
wherein the owner or the visiting guest intuitively
understands that the virtual object corresponds to one of
the physical object or the service.

Appeal Br. 10–11 (Claims Appendix).

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Hastings US 2013/0042296 A1 Feb. 14, 2013
REJECTION
The Examiner made the following rejection:
Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Hastings. Final Act. 3.
ISSUE
The pivotal issue is whether the Examiner erred in finding that the
Hastings discloses the limitation of
third data that is used to render a third image portion that
includes a virtual object, wherein the virtual object corresponds
to one of a physical object or a service that is unrelated to
media content, and wherein the physical object or the service
associated with the virtual object may be purchased by the
owner or the visiting guest from a remote source that provides
the physical object or the service to the purchasing owner or
visiting guest,

as recited in independent claim 1, and similarly recited in independent claim
16.
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ANALYSIS
We adopt the Examiner’s findings in the Advisory Action, Answer,
and Final Office Action, and we add the following primarily for emphasis.
We note that if Appellant failed to present arguments on a particular
rejection, we will not unilaterally review those uncontested aspects of the
rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008)
(The Board may treat arguments Appellant failed to make for a given ground
of rejection as waived).
Appellant argues that Hastings fails to anticipate Appellant’s claim 1
because
there is no identity of invention since the recited third image
portion includes a virtual object that corresponds to one of a
physical object or a service that is unrelated to media content,
which is not identical to the Hastings Virtual Book, which is
expressly disclosed as content in Hastings

(Reply Br. 11; see also Reply Br. 8, citing Hastings ¶ 133). Appellant
contends that
[b]ooks are a physical, tangible form of printed media content.
DVDs are a particular type of memory medium that stores
video/audio media content. Both books and DVDs are not
equivalent to the recited third data for rendering a virtual object
that is unrelated to media content (because books [and] DVDs
are both forms of media content)

(Reply Br. 8–9).
We are not persuaded by Appellant’s argument. The Examiner finds,
and we agree, that
[a]s stated in the claim, the claim limitation “media content”
does not contain an antecedent basis, and therefore, the
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examiner reasonably interprets “media content” as the media
content relating to the media content of the program (refers as
second data . . . virtual DVDs) from my movie as taught in
Hasting[s]

(Ans. 9–10, citing Hastings Fig. 10 element 24, ¶¶ 126, 133), and that
Hasting[s] discloses that the claim limitation “third data” as an
image of Virtual Books under my book [], in which the virtual
books may be . . . a form of media content, but in this case, the
virtual books are not the same form of media content of the
program from my movies

(Ans. 10, citing Hastings Fig. 10 element 32).
Here, the determining factor is not what Hastings considers as “media
content,” but what one skilled in the art would consider as Appellant’s
claimed “media content,” having reviewed Appellant’s disclosure.
Appellant points to no portion of the disclosure as reciting a definition of
media content, but does point to a portion of the disclosure as providing
support for the limitation at issue. See Appeal Br. 3. This portion states that
FIGURE 18 conceptually illustrates an example image
showing one or more virtual objects 1802 at other locations
within the virtual environment 1400. These virtual objects 1802
are then presented to the owner 1102, a visiting guest 1402,
and/or an interested third party when they are visiting the
virtual environment 1400 and/or are viewing the virtual DVD
collection 1104 of the owner 1102. As noted herein, the virtual
objects 1802 can be placed into the storage cabinets 1214 to
represent virtual objects 1802 that may be seen and/or
virtually handled by the owner 1102 and/or the visiting guest
1402. Further, such virtual objects 1802 may be placed
elsewhere in the virtual environment 1400, such as, but not
limited to, on a shelf 1212 of the virtual bookshelf case 1106,
on other virtual furniture elements such as a table, a desk, the
example couch 1118, the example media console 1124, or the
like, and/or on the floor of the virtual environment 1400
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(Spec. ¶ 411 (emphasis added); see also Fig. 18). One skilled in the art,
having read this portion of the disclosure and reviewed corresponding Figure
18, would consider such a virtual object to be unrelated to the media content
such as that signified by virtual DVD collection 1104. Significantly,
however, the disclosure regarding Figure 18 further indicates that a “non-
limiting example[] of the appearance of a virtual object 1802” includes
“books” (Spec. ¶ 414).
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted); In re Morris,
127 F.3d 1048, 1053-54 (Fed. Cir. 1997).
Thus, the Examiner’s claim interpretation is consistent with
Appellant’s disclosure, in which a virtual book “corresponds to one of a
physical object or a service that is unrelated to media content,” and in which
the “media content” is related to the “owner’s personal virtual DVD
collection.” Accordingly, Hastings anticipates Appellant’s claim 1.
Thus, we affirm the Examiner’s anticipation rejection of independent
claim 1, and independent claim 16 commensurate in scope, as well as
dependent claims 2–15 and 17–20 not separately argued. See Appeal Br. 5–
9.
CONCLUSION
The Examiner did not err in finding that the Hastings discloses the
limitation of
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third data that is used to render a third image portion that
includes a virtual object, wherein the virtual object corresponds
to one of a physical object or a service that is unrelated to
media content, and wherein the physical object or the service
associated with the virtual object may be purchased by the
owner or the visiting guest from a remote source that provides
the physical object or the service to the purchasing owner or
visiting guest,

as recited in independent claim 1, and similarly recited in independent claim
16.
DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 102 Hastings 1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED