EMONSTER INC

Patent Trials and Appeals Board

Sep 8, 2020

15723068 - (D) (P.T.A.B. Sep. 8, 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.
15/723,068 10/02/2017 Enrique BONANSEA EMON-2015003c1 5425
46345 7590 09/08/2020
AEON Law
506 2nd Ave
Suite 3000
Seattle, WA 98104
EXAMINER
BUTTRAM, ALAN T
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
09/08/2020 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):
eofficeaction@appcoll.com
patents@aeonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ENRIQUE BONANSEA
___________________

Appeal 2020-001348
Application 15/723,068
Technology Center 2600
____________________

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 21–34, which constitute all of the
claims pending in this appeal.2 Appeal Br. 4. Claims 1–20 have been
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to the Specification, filed Oct. 2, 2017 (“Spec.”); the Final Office
Action, mailed Feb. 25, 2019 (“Final Act.”); the Appeal Brief, filed Aug. 7,
2019 (“Appeal Br”); the Examiner’s Answer, mailed Oct. 21, 2019 (“Ans.”);
and the Reply Brief (“Reply Br.”) filed Dec. 9, 2019.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Enrique Bonansea as the real party
in interest. Appeal Br. 4.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
messaging application (235) running on a mobile device to facilitate to a
user thereof creating and sharing with an intended recipient custom
animations of messages including text and emoji characters. Spec. ¶¶ 2, 15.
Figure 6 is discussed and reproduced below:

Figure 6 illustrates mobile device (605) for customizing animation of a
message including text and emoji characters (425, 430, 435) to be sent to
intended recipient (610). Spec. ¶ 28.
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As depicted in Figure 6 above, a user of mobile device (605) enters in
input field (615) a text message (“Hey!”) along with emoji characters (425,
430, 435), selects button (620) indicating a wish to animate the message
according to a predetermined animation routine, and sends the animated
message to a designated recipient. Spec. ¶ 28. Upon receiving the processed
message, the text messaging software in the recipient’s device renders the
frames of the animated messages to see the animation as specified by the
sender. Id. ¶ 29.
Illustrative Claim
Claims 21, 26, and 30 are independent. Claim 21, reproduced below
with disputed limitations emphasized, is illustrative:
A method performed by a computing system to create and
share an animated character, comprising:
receiving from a user a first input indicating a character;
receiving from the user a second input directing a manipulation
of the character;
generating an animation of the indicated character according
to the directed manipulation of the character;
displaying the generated animation;
receiving from the user a third input to deliver the generated
animation to a recipient; and
transmitting the generated animation to the recipient over a
communications network.
Appeal Br. 28 (Claims Appendix).

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III. REFERENCES
The Examiner relies upon the following references.3
Name Number Publ’d/Issued
Nishihata US 2003/0011643 A1 Jan. 16, 2003
Camp, Jr. US 2008/0182566 A1 July 31, 2008
Mellamphy US 2011/0246890 A1 Oct. 6, 2011
Fujisaki US 8,639, 214 B1 Jan. 28, 2014
Steele US 8,949,461 B2 Feb. 3, 2015
Bonansea ’123 US 2016/0035123 A1 Feb. 4, 2016
Bonansea ’532 US 9,779,532 B2 Oct. 3, 2017

IV. REJECTIONS4
The Examiner rejects claims 21–34 as follows:
1. Claims 21, 26, and 29 stand rejected under 35 U.S.C. § 102 as
anticipated by Camp. Final Act. 7.
2. Claims 22–24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Camp and Bonansea ’123. Final Act.
8–9.
3. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Camp and Fujisaki. Final Act. 10.
4. Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Camp and Nishihata. Final Act. 11.

3 All reference citations are to the first named inventor only.
4 The double patenting rejection previously entered by the Examiner has
been withdrawn in light of Appellant’s terminal disclaimer filed on May 14,
2019. Final Act. 3–6; Appeal Br. 8.
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5. Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Camp and Steele. Final Act. 12.
6. Claims 30, 31, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Camp and Mellamphy.
Final Act. 12–14.
7. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Camp, Mellamphy, and
Nishihata. Final Act. 14.
V. ANALYSIS
We consider Appellant’s arguments in the Appeal Brief, pages 9–27,
and the Reply Brief, pages 5–19.
1. Anticipation Rejection
Regarding the rejection of claim 21, Appellant argues, inter alia, that
Camp does not describe generating an animation of a user indicated
character according to the user-directed manipulation of the character for
transmission to a recipient over a communications network. Appeal Br. 13–
16. In particular, Appellant argues that Camp’s sending device ”is unable to
generate animations for recipients who do not already have designated
content files loaded on their devices”; it instead provides a message along
with a location of a content file residing on the recipient device, which
subsequently processes the identified file to generate the manipulated
character. Id. at 14, 15 (citing Camp ¶¶ 2, 13, 14, 18, 26, 28, 29, 34).
Appellant’s argument is persuasive of reversible Examiner error.
As a preliminary matter, we note that the disputed claim limitation
requires generating at a computing system an animation of a character
specified by a user for subsequently transmitting the animated character to a
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recipient. Therefore, claim 21 requires that the manipulated character be
generated at the sending computing device, which subsequently transmits
the animated character to the receiving computing device.
Camp discloses a method and system for providing and displaying an
animated short message service (SMS) with animated characteristics. Camp,
Abstr. According to Camp, the user enters at the sending device the text of
the SMS as well as a pointer specifying the location of the content file at the
receiving device as well as the animation type parameter indicating how the
content will be animated. Id. ¶¶ 2, 13–22, 28. Further, according to Camp,
the animation file can include emoticons, which are not attached in the SMS
message, but are included in a multimedia message (MMS). Id. ¶¶ 13, 34.
We do not agree with the Examiner’s determination that Camp’s
disclosure of generating an animation of a character describes the disputed
limitations. Ans. 11. Although Camp discloses generating an animation of a
character designated by a user, such generating of the animation is not
performed at the sending device as required by the disputed claim limitation.
Rather, Camp discloses performing the animation of the specified character
at the receiving device. See Camp ¶ 2. Therefore, Camp discloses the
sending device transmitting to the receiving device the SMS message along
with a pointer to the emoticon at the receiving device, which subsequently
generates the specified animation. At best, Camp discloses that the sending
device transmits to the receiving device a MMS message including a
multimedia file containing an emoticon as well as the desired type of
animation. However, we agree with Appellant that Camp is silent as to
whether the animation of the emoticon is performed at the sending device
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prior to transmitting the MMS, or at the receiving device after receiving the
MMS. See Appeal Br. 16, 17.
We do not reach Appellant’s remaining arguments because Appellant
has shown at least one reversible error in the Examiner’s anticipation
rejection.. Accordingly, we are persuaded of error in the Examiner’s
anticipation rejection of independent claim 21. We are likewise persuaded
of error in the Examiner’s anticipation rejection of the cited claims because
independent claims 26 and 29 also recite the disputed limitations discussed
above..
2. Obviousness Rejections
Regarding the rejections of dependent claims 22–25, 27, 28, and 30–
34, because the Examiner does not rely on any of the secondary references
to cure the noted deficiencies of Camp discussed above for independent
claims 21, 26, and 29, we are likewise persuaded of reversible error in the
Examiner’s obviousness rejections of the cited dependent claims.
VI. CONCLUSION
For the above reasons, we reverse the Examiner’s rejections of claims
21–34.
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VII. DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 26, 29 102 Camp 21, 26, 29
22–24 103 Camp, Bonansea 22–24
25 103 Camp, Fujisaki 25
27 103 Camp, Nishihata 27
28 103 Camp, Steele 28
30, 31, 34 103 Camp, Mellamphy 30, 31, 34
32, 33 103 Camp, Mellamphy, Nishihata 32, 33
Overall Outcome 21–34

REVERSED