Drake Sutton-Shearer

Patent Trials and Appeals Board

Aug 27, 2021

2021001234 (P.T.A.B. Aug. 27, 2021)

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.
12/795,546 06/07/2010 Drake Sutton-Shearer 113096.002US1 1139
79804 7590 08/27/2021
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/27/2021 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DRAKE SUTTON–SHEARER

Appeal 2021-001234
Application 12/795,546
Technology Center 3600

Before HUBERT C. LORIN, JAMES P. CALVE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 3–5, 8–11, 13, 14, 16, and 18–23,
which constitute all the claims pending in this application.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Bimodal, LLC as the real party in interest.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to providing virtual goods to users
within a virtual environment such that a given virtual good is expressed in a
default state as a primary expression and, responsive to activation, a
secondary expression of the given virtual good is made visible.” Spec., para.
1. Claim 5 is representative of the claimed subject matter:
5. A system configured to provide virtual goods to users
within a virtual environment, the system comprising:
one or more processors configured to execute computer
program modules, the computer program modules comprising:
an environment module configured to provide a virtual
environment to a first user such that the first user is presented
with views of the virtual environment; and
a goods module configured to express a first virtual good
associated with the first user as a primary expression or a
secondary expression within the views of the virtual
environment, the views of the virtual environment transmitted
via a network connection to a user device and presented for
display by a display associated with the user device, wherein:
in a default state of the first virtual good within the views
of the virtual environment the first virtual good is represented as
the primary expression of the first virtual good, and the primary
expression generically represents a first real world good;
the goods module being further configured such that
responsive to activation of the first virtual good, the secondary
expression of the first virtual good becomes visible in the views
of the virtual environment to the first user, and the secondary
expression comprises a branding that corresponds to a real world
provider of goods and/or services associated with the first real
world good;
a secondary expression module configured to determine
the secondary expression for the first virtual good based in part
on user information stored in a user profile associated with the
first user, the user information generated based on the first user's
actions in the virtual environment;
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the goods module is configured such that activation of the
first virtual good is triggered by selection of the primary
expression by manipulation of a first user interface element
associated with the primary expression of the first virtual good
presented in the views of the virtual environment by the display
by the first user; and
the goods module being further configured to determine
an amount to be charged to the real world provider of goods
and/or services associated with the secondary expression of the
first virtual good based on the activation of the secondary
expression of the first virtual good.
Appeal Br. 32–33 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
REJECTIONS
The following rejections are before us for review:
Claims 3–5, 8–11, 13, 14, 16, and 18–23 are rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter without
significantly more.
Claims 3–5, 8–11, 13, 14, 16, and 18–23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable VAN, Fujioka, and Cleland.
Name Reference Date
Cleland US 2009/0019472 A1 Jan. 15, 2009
VAN US 2009/0222424 A1 Sep. 3, 2009
Fujioka US 2011/0025707 A1 Feb. 3, 2011
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OPINION
The rejection of claims 3–5, 8–11, 13, 14, 16, and 18–23 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter without
significantly more.
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, representative claim 5 covers a “machine” and is thus
statutory subject matter for which a patent may be obtained.2 This is not in
dispute. (The other independent claims – claims 11 and 21 – are drawn to a
process and machine, respectively.)
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 5, for example, covers statutory
subject matter, the Examiner has raised a question of patent eligibility on the
ground that claim 5 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53
(Jan. 7, 2019) (“2019 Revised 101 Guidance”). See also id. at 53–54
(“consider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
101.”).
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Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Abstract Idea3
In the Final Rejection, the Examiner determined that the claims are
“directed to the abstract idea of providing goods to users, and more
particularly to providing an environment to a first user and expressing a first
good associated with the first user responsive to some form of activation of
the good.” Final Act. 3.
In the Answer, the Examiner changed the characterization of the
abstract idea to “[t]argeted advertising.” Answer 4.
These characterizations of what claim 5 is directed to do not comport
with a plain reading of the claim.
The first characterization suggests that the claimed system solves a
real world problem. However, claim 5 as a whole describes a system for
providing virtual goods to users within a virtual environment. While the
system (via a “goods module”) ultimately determines an amount to be
charged to a real world provider of goods and/or services, the claim as a
whole is not directed to providing goods to a user in the real world. Here the
operations of the claimed system are inextricably connected to a virtual
rather than a real world environment. Characterizing the abstract idea to
which the claim is directed in real world terms strips the claim of the heart of

3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 84 Fed. Reg. at 53. Step 2A is two prong inquiry.
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the invention; that is, a “system configured to provide virtual goods to users
within a virtual environment” (claim 5).
The second characterization is off the mark.
Though the Guidance has not been expressly followed,
the Examiner did in effect follow it by determining that “targeted
advertising is a certain method of organizing human activity such as
fundamental economic practices” (Answer 4). See the 2019 Revised 101
Guidance which enumerates “Certain methods of organizing human
activity” as a grouping of abstract ideas.4
That being said we nevertheless agree with Appellant that targeted
advertising is not an accurate characterization of what the claim is directed
to. See Reply Br. 3:
the computer system elements, including the claimed goods
module and secondary expression module, and virtual
environment are specifically integrated into the claim such that,
within a virtual environment, a virtual good can be presented to
a user as a first expression of that good and then as a second
expression based on information in and associated with the user
and virtual environment.
The question is: what is the claim directed to? EcoServices, LLC v.
Certified Aviation Services, LLC, 830 F. App’x 634, 642 (Fed. Cir. 2020)
explains the approach we must take:

4 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54.
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At step one of the Alice framework, “we look to whether
the claims ‘focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic
processes and machinery.’ ” Cardionet, LLC v. Infobionic, Inc.,
955 F.3d 1358, 1368 (Fed. Cir. 2020) (quoting McRO, 837 F.3d
at 1314). We also consider the patent's written description, as it
is “helpful in illuminating what a claim is ‘directed to.’ ” Id.
(quoting Chamberlain, 935 F.3d at 1346); ChargePoint, 920
F.3d at 766.
To answer that question we first consider the claim as a whole giving
it the broadest reasonable construction as one of ordinary skill in the art
would have interpreted it in light of the Specification at the time of filing.5,6,7
The system as claimed comprises a goods module and a secondary
expression module.
The goods module is configured
1. “to express a first virtual good associated with [a] first user as a
primary expression or a secondary expression within the views of the
virtual environment … wherein: in a default state of the first virtual
good within the views of the virtual environment the first virtual good
is represented as the primary expression of the first virtual good, and
the primary expression generically represents a first real world good”;
2. “responsive to activation of the first virtual good, the secondary
expression of the first virtual good becomes visible in the views of the

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
6 “First, it is always important to look at the actual language of the claims. .
. . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the [S]pecification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
7 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 15 n. 14 (“If a claim,
under its broadest reasonable interpretation.”) (emphasis added).
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virtual environment to the first user, and the secondary expression
comprises a branding that corresponds to a real world provider of
goods and/or services associated with the first real world good”;
3. “activation of the first virtual good is triggered by selection of the
primary expression by manipulation of a first user interface element
associated with the primary expression of the first virtual good
presented in the views of the virtual environment by the display by the
first user”; and,
4. “to determine an amount to be charged to the real world provider of
goods and/or services associated with the secondary expression of the
first virtual good based on the activation of the secondary expression
of the first virtual good.”
The “a secondary expression module” is “configured to determine the
secondary expression for the first virtual good based in part on user
information stored in a user profile associated with the first user, the user
information generated based on the first user's actions in the virtual
environment.”
These two modules provide for a first virtual good associated with a
first user as an expression within the views of the virtual environment and
when the first virtual good is activated, a secondary real–world branded
expression of said first virtual good becomes visible in the views of the
virtual environment to the first user. The activation is triggered by selecting
the primary expression where the selecting is via manipulating a first user
interface element associated with the primary expression of the first virtual
good presented in the views of the virtual environment.
Thus, very generally, the claimed system provides for a first
expression of a virtual good which, when triggered, activates a second
expression of a virtual good.
The Specification supports this general characterization of the claimed
system. The Specification explains, by way of example, that
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a virtual good may have a primary expression that depicts a
generic food item (e.g., a piece of pizza). The virtual good may
have a secondary expression that depicts a branded beverage
complementary to the generic food item (e.g., beer, wine,
Coke®, and/or other beverages). As a default, the exemplary
virtual good may be expressed with the primary expression
representing the generic food item. Upon some activation, the
exemplary virtual good may be expressed with the secondary
expression representing the branded beverage.
Para. 5. The Specification states that “[t]his representation of the generic
food item with the branded beverage may entice users to purchase the
branded beverage.” Id.
This characterization of what the claim is describing – providing for a
first expression of a virtual good which, when triggered, activates a second
branded expression of the virtual good – comports with Appellant’s
characterization more so than the Examiner’s (i.e., “[t]argeted advertising”
(Answer 4)).
It remains to ascertain whether this claim focus – providing for a first
expression of a virtual good which, when triggered, activates a second
branded expression of the virtual good – is a technological improvement or
instead a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.
We are not placed in a position to make that determination. The
record insufficiently addresses the matter. This is so because neither the
Examiner nor the Appellant has had the opportunity to assess patent–
eligibility in light of our new articulation of the claim focus.
Because the Examiner’s characterizations of what the claim is
directed to are inaccurate, and since the remaining analysis stands or falls
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with those inaccurate characterizations, the rejection of the claims as being
patent–ineligible is not sustained.

The rejection of claims 3–5, 8–11, 13, 14, 16, and 18–23 under 35 U.S.C.
§ 103(a) as unpatentable VAN, Fujioka, and Cleland.
The difficulty with this rejection, as Appellant argues (see Appeal Br.
25–28 and Reply Br. 6–7), is that we are unable to find providing for a first
expression of a virtual good which, when triggered, activates a second
branded expression of a virtual good as claimed in the cited references. The
Examiner points to Figures 9–11 of Fujiokja (see Answer 9) but we do not
see there the triggering as claimed disclosed. The passage in Fujioka that
discusses said Figures states this:
As illustrated in FIG. 8, the item may be provided with colors,
patterns, and/or textures. In this way, the user may choose from
a wide palette of aesthetic offerings to customize the good. In
addition, and as described with greater detail hereinabove, media
may also be placed within the good. As illustrated in FIG. 9, the
user may select and modify any media to be placed in association
with the good. As discussed above, and as illustrated in FIG. 10,
media may, for example, be placed and automatically or
manually cropped within the good. As illustrated in the preview
window, the media shown may be limited to the visible area of
the sweatshirt. Media that may otherwise fill the space denoted
by the drawing square may be anchored by the small solid
squares. Once completed, as illustrated in FIG. 11, the item may
be displayed on an avatar representation. This feature may be
used on a user’s avatar, and may also be exported or “tried on”
by other avatars that wish to obtain the good. The goods may
also be placed in the user's account, as illustrated in FIG. 12.
Fujioka, para. 56. As this passage supports, we agree with Appellant that, in
contrast to what is claimed,
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Fujioka is void of any teaching of first presenting a generic
version of a good to a user and then, after activation of the
generic version of the good, presenting a branded version of the
same good. In Fujioka, the system may determine which goods
to present to users in a storefront and may also present different
brands of goods together along with user created goods.
Appeal Br. 27.
For that reason, the rejection is not sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3–5, 8–11,
13, 14, 16,
18–23
101 Eligibility 3–5, 8–11,
13, 14, 16,
18–23
3–5, 8–11,
13, 14, 16,
18–23
103(a) VAN, Fujioka,
Cleland
3–5, 8–11,
13, 14, 16,
18–23
Overall
Outcome
3–5, 8–11,
13, 14, 16,
18–23

REVERSED