Dish Technologies L.L.C.Download PDFPatent Trials and Appeals BoardDec 28, 20202019004693 (P.T.A.B. Dec. 28, 2020) Copy Citation 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 Appeal 2019-004693 Application 15/199,687 2 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. Appeal 2019-004693 Application 15/199,687 3 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 Appeal 2019-004693 Application 15/199,687 4 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. Appeal 2019-004693 Application 15/199,687 5 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 Appeal 2019-004693 Application 15/199,687 6 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 Appeal 2019-004693 Application 15/199,687 7 (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 Appeal 2019-004693 Application 15/199,687 8 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 Copy with citationCopy as parenthetical citation