Ex Parte Root et al

Patent Trial and Appeal Board

Jan 16, 2019

14962251 (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/962,251 12/08/2015 Jason E. Root
30636 7590 01/16/2019
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
40205/00503(005CP2) 4084
EXAMINER
DEBNATH, SUMAN
ART UNIT PAPER NUMBER
2495
MAIL DATE DELIVERY MODE
01/16/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON E. ROOT, ALEXANDER D. WESTERMAN,
and DEBORAH A. LEVINE 1
Appeal2018-005773
Application 14/962,251
Technology Center 2400
Before JASON V. MORGAN, ADAM J. PYONIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 37---60, all the pending claims in the present application. 2 See
Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants name Viacom International Inc. as the real party in interest. See
Appeal Br. 2.
2 Claims 1-36 are cancelled. See Appeal Br., Claims Appendix 1.
Appeal2018-005773
Application 14/962,251
STATEMENT OF THE CASE
Invention
Appellants indicate their invention relates to "controlling a virtual
environment of a user of a network, such as the Internet, by which multiple
users interact." Spec. ,r 1. Specifically, the invention seeks to "eliminate
language or other content that is inappropriate or unsuitable for children, and
to prevent the transmission of personally identifiable information."
Spec. ,r 3. 3
Exemplary Claims
Claims 37 and 48 are independent claims. Claims 37, 38, and 59 are
exemplary and are reproduced below with limitations at issue emphasized:
3 7. A method comprising:
providing a virtual environment in which users interact
with one another using system-generated prewritten messages
and user-generated messages;
transmitting information to an agent;
receiving from the agent a return transmission of the
information to authorize the agent to control the virtual
environment of a first one of the users; and
controlling the virtual environment of the first user based
on additional information received from the agent setting a
permitted level of the first user's interaction with other users,
the level of interaction determining whether the first user can
3 This Decision refers to: (1) Appellants' Specification ("Spec.")
filed December 8, 2015; (2) the Final Office Action ("Final Act.") mailed
September 7, 2016; (3) the Appeal Brief ("Appeal Br.") filed March 3, 2017;
(4) the Examiner's Answer ("Ans.") mailed April 17, 2018; and (5) the
Reply Brief ("Reply Br.") filed May 15, 2018.
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Application 14/962,251
use the user-generated messages, the user-generated messages
being assembled by:
receiving an input from the first user;
comparing the input to items contained in a system
permissible items dictionary; and
when the input is contained in the system
permissible items dictionary, assembling the user-
generated message.
38. A method according to claim 37, further
compnsmg:
checking user-generated messages using a message
checker to prevent communication of user-generated messages
comprising predetermined combinations of items from the
system permissible items dictionary.
5 9. The method according to claim 3 7, further
compnsmg:
when the input is not included in the system permissible
items dictionary, preventing assembly of the user-generated
message.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Patron et al. ("Patron")
Aaron
Shochet et al. ("Shochet")
US 2005/0060167 Al
US 2008/0242268 Al
US 2011/0202605 Al
3
Mar. 17, 2005
Oct. 2, 2008
Oct. 4, 2012
Appeal2018-005773
Application 14/962,251
REJECTIONS
Claims 37-39, 47-50 and 58---60 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Shochet and Aaron.
Final Act. 2-5.
Claims 40-46 and 51-57 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Shochet, Aaron, and Patron.
Final Act. 6-8.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
ANALYSIS
We refer to, rely on, and adopt the Examiner's findings and
conclusions, insofar as they relate to issues raised in this appeal, as set forth
in the Office Action and Answer. See Final Act; 2-8; Ans. 2---6. Our
discussion here will be limited to the following points of emphasis.
Rejections under§ 103(a) of Claims 37 and 39-58
Issue: Does the Examiner err in finding the combination of Shochet
and Aaron teaches or suggests "comparing the input to items contained in a
system permissible items dictionary; and when the input is contained in the
system permissible items dictionary, assembling the user-generated
message," as recited in independent claim 37?
Appellants dispute the Examiner's factual findings. Appellants argue
that "[i]n the cited art, any message entered by a user is authorized and no
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message is compared to any dictionary before being sent." Appeal Br. 5; see
Reply Br. 3.
We find this argument unpersuasive because the Examiner's findings
are supported by substantial evidence. The Examiner finds "Shochet
discloses a communication mode in a free form manner wherein [a] user
enters texts and these texts are compared against a permissible items
dictionary to delete unwanted words/phrases." Ans. 3 (citing Shochet ,r 49).
We agree with the Examiner's finding that Shochet's "open chat" mode
teaches, or at least suggests, "comparing the input to items contained in a
system permissible items dictionary," as claimed, because Shochet's
discussion of a "message filter" suggests a dictionary is used to determine
and "automatically delete[] specific words or phrases" such as "bad
language." Id. Shochet's message filter acts as a permissible items
dictionary by deleting impermissible words and leaving only permissible
words for assembly as a user-generated message. See Shochet ,r 49.
As noted by Appellants, in a second message mode "Shochet
discloses customized hierarchical menus that include a library of words and
phrases which may be selected by a user to generate a message." Appeal
Br. 5. This "Speed Chat" mode of Shochet "allow[s] a user to access a menu
110 of selectable, pre-prepared chat messages" and "it limits interaction to
pre-determined words and phrases." Shochet ,r 32. Then, "a representation
of the finally selected word/phrase may then be submitted to the game server
20 as part of a process to display the chat message ... to one or more other
users within the game network environment." Shochet ,r 32. Thus, we agree
with the Examiner's finding (see Final act. 3) that Shochet's Speed Chat
mode teaches or at least suggests, "when the input is contained in the system
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permissible items dictionary, assembling the user-generated message," as
claimed, because the Speed Chat mode only allows generation of a message
if the user's input is included within Shochet's dictionary (i.e., "library of
words and phrases") (Appeal Br. 5).
Appellants' argument that in Shochet "no message is compared to any
dictionary before being sent" and that Shochet does not teach or suggest "' a
system permissible items dictionary"' is unpersuasive because it is not
commensurate with the scope of Appellants' claim. Appeal Br. 5; Reply
Br. 3. Appellants provide no evidence that the Specification discloses the
phrase "system permissible items dictionary." Appellants' Specification,
however, does describe a dictionary as "contain[ing] a limited set of
complete messages that are deemed appropriate or suitable for the intended
users." Spec. ,r 39. Appellants, therefore, fail to persuasively establish why
Appellants' claimed dictionary fails to encompass Shochet's dictionary of
permissible "predetermined words and phrases." Shochet ,r 32. Further,
Shochet teaches "that the two-communication modes above described may
be used in cooperation." Shochet ,r 49. Accordingly, we agree with the
Examiner's finding that Shochet's Speed Chat and open chat modes, used in
cooperation with each other, teach the limitations at issue.
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 37. We also sustain, for similar reasons, the Examiner's§ 103(a)
rejection of independent claim 48, which is argued with independent claim
37. See Appeal Br. 6. Dependent claims 40-47, 49--58, and 60 are not
argued separately with respect to the disputed limitation and fall with their
respective independent claims. See Appeal Br. 6-9.
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Rejections under§ 103(a) of Claims 38, 39, 43, 49, 50, and 52-57
Issue: Does the Examiner err in finding the combination of Shochet
and Aaron teaches or suggests "checking user-generated messages using a
message checker to prevent communication of user-generated messages
comprising predetermined combinations of items from the system
permissible items dictionary," as recited in independent claim 38?
The Examiner relies on Shochet' s Speed Chat and open chat modes to
teach or suggest the limitation at issue in claim 38. See Final Act. 4--5;
Ans. 4--5 (citing Shochet 37, 39).
Appellants dispute the Examiner's factual findings arguing Shochet
does not teach checking user-generated messages because Shochet inhibits
inclusion of words or phrases prior to generation of the message. See
Appeal Br. 6-7. In particular, Appellants argue that both of the text modes
from Shochet cited by the Examiner "relate to steps that are performed
before any message is generated" and "[ o ]nee these phrases/words have
been included in the menus, the system of Shochet seemingly permits their
use in any combination as no function or mechanism is shown or described
for checking the actual messages that are generated by the users." Appeal
Br. 7; see Reply Br. 5.
We find this argument unpersuasive of Examiner error. Shochet's
open chat mode uses "a message filter that automatically deletes specific
words or phrases" such as bad language "that are typed by the players."
Shochet ,r 49. As discussed above with respect to claim 1, Shochet's
message filter teaches or at least suggests using a dictionary. Shochet's open
chat mode, therefore, teaches checking user-generated messages ( e.g., open
chat messages "typed by the players") using a message checker ("message
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filter") to prevent communication of user-generated messages comprising
predetermined combinations of items ( e.g., letters or words making up
"words or phrases" indicated as bad language in Shochet's dictionary). See
Shochet ,r 49. Appellants argument that Shochet's steps "are performed
before any message is generated" is unpersuasive because Appellants fail to
demonstrate why a user typing keys using Shochet's open chat mode does
not teach or suggest a user-generated message, as claimed.
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 3 8. We also sustain, for similar reasons, the Examiner's § 103 (a)
rejection of dependent claim 49, which is argued with independent claim 37.
See Appeal Br. 7. Claims 39, 43, 50, and 52-57, which variously depend
from claim 38 or 49, are not argued separately and so we affirm the
rejections of these claims for similar reasons. Id.
Rejections under§ 103(a) of Claims 59 and 60
Issue: Does the Examiner err in finding the combination of Shochet
and Aaron teaches or suggests "when the input is not included in the system
permissible items dictionary, preventing assembly of the user-generated
message," as recited in claim 59, or "preventing the user-generated message
including the input from being sent," as recited in claim 60?
The Examiner relies on Shochet' s Speed Chat to teach or suggest the
limitation at issue in claims 59 and 60. See Final Act. 5 ( citing Shochet
,r,r 37, 39); see also Ans. 5---6.
Appellants dispute the Examiner's factual findings arguing that
"disabling the free-form message generating functionality of Shochet, in no
way indicates that any user generated message is ever checked against any
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dictionary of permissible items. Nor does Shochet ever describe or suggest
that any message is ever prevented from being assembled or sent." Appeal
Br. 8; see also Reply Br. 6-7.
We find Appellants' argument unpersuasive of error. We agree with
the Examiner's finding that Shochet's Speed Chat mode teaches the
limitation at issue because in Shochet's Speed Chat mode, a user can neither
assemble nor send a desired message unless that message is included in the
pre-determined message hierarchy. See Shochet ,r 32. Accordingly, when
the input message desired by the user is not included in the system
permissible items dictionary (e.g., "menu 110 of selectable, pre-prepared
chat messages" or the "pre-prepared [message] library"), the desired
message cannot be assembled nor sent as a user-generated message because
Shochet's Speed Chat mode "limits interaction to predetermined words and
phrases" found in menu 110, i.e., to messages in the dictionary. Shochet
,r,r 32, 37 (emphasis omitted).
Appellants also argue the limitation at issue is not taught by Aaron.
Appeal Br. 8. We need not reach this argument because we agree with the
Examiner that Shochet teaches the disputed limitation, as discussed here.
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claims 59 and 60.
DECISION
We affirm the Examiner's§ 103(a) rejections of claims 37---60.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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