Ex Parte BaszuckiDownload PDFPatent Trial and Appeal BoardSep 21, 201712701214 (P.T.A.B. Sep. 21, 2017) 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. 12/701,214 02/05/2010 David Baszucki P798 9548 24739 7590 09/25/2017 CENTRAL COAST PATENT AGENCY, INC 3 HANGAR WAY SUITE D WATSONVTT.T.E, CA 95076 EXAMINER ELL, MATTHEW ART UNIT PAPER NUMBER 2172 NOTIFICATION DATE DELIVERY MODE 09/25/2017 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): officeactions@CENTRALCOASTPATENT.COM plambuth@centralcoastpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID BASZUCKI Appeal 2017-006360 Application 12/701,214 Technology Center 2100 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3—5, 7, 9, and 10, which are all the claims pending in this application. Appellant has previously canceled claims 2, 6, 8, and 11—14. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2017-006360 Application 12/701,214 The Invention The disclosed and claimed invention relates to optimization of user interaction with online virtual world (VW) systems. Spec. 11. Representative Claim 1. A method comprising the steps of: (a) identifying a player logged into a virtual-reality gaming web site presented by software executing on a web server from a machine-readable, non-transitory physical medium; [LI ] (b) determining that the player is a new player based on a predetermined definition regarding length of time since initial registration to the web site; [L2] (c) determining, through tracking game-playing activity at the gaming web site of the new player, genre of virtual reality games preferred by the new player; [L3] (d) tracking successes of other new users playing specific virtual reality games within the determined genre; [L4] (d) presenting navigation links in an interactive display to the new user to the specific virtual reality games having successes with the other new users and having genre the same or similar to the genre preference determined for the new user; and [L5] (e) providing a textual description of individual ones of the specific games proximal the navigation links presented, the textual description including an indication of the genre. (Contested limitations lettered and emphasized in italics.) Rejection Claims 1, 3—5, 7, 9, and 10 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Smith (U.S. 8,298,087 Bl; issued Oct. 30, 2012) and Fischer et al. (U.S. 2007/0282987 Al; pub. Dec. 6, 2007) (hereinafter “Fischer”). 2 Appeal 2017-006360 Application 12/701,214 Grouping of Claims Based upon Appellant’s arguments, we decide the appeal of the rejection of independent claims 1 and 7, on the basis of representative claim 1. To the extent Appellant has not advanced separate, substantive arguments for rejected dependent claims 3—5, 9, and 10, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. Regarding the rejection of claims 1 and 7, we disagree with Appellant’s arguments, and we adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Final Action (2-4) from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in the Answer (2—8) in response to Appellant’s arguments. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection of Independent Claim 1 under 35 U.S.C. § 103(a) We decide the following issue presented in this appeal: Issue: Under § 103, did the Examiner err by finding the cited combination of Smith and Fischer would have taught or suggested contested limitations LI—L5, within the meaning of claim l?1 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, YU F.3d 1048, 1054 (Fed. Cir. 1997). See, e.g.. Spec. 15,11. 16-23: “It should be apparent to the skilled person that the embodiments described above are exemplary, and that many details may be altered without departing from the spirit and scope of the invention. For example, the windows may be 3 Appeal 2017-006360 Application 12/701,214 Contested Limitation LI of Claim 1 Contested limitation LI recites: “determining that the player is a new player based on a predetermined definition regarding length of time since initial registration to the web site.” (Claim 1.) The Examiner finds limitation LI is taught or suggested by Fischer’s description of a new user to a website who, after a period of time has lapsed, has his temporary registration converted to a permanent registration. (Final Act. 4 (citing Fisher, Abstract, and Fisher’s claim 10).) Appellant contends Fischer’s user “enters the site as a result of an invitation, wherein the invitation is what identifies the user as qualifying for a temporary ID, not based on a predetermined definition regarding length of time since initial registration to the web site, as taught and claimed in Appellant’s invention.” (App. Br. 9.) Appellant further argues “claim 10 of Fischer fail[s] to distinguish what event the period of time, lapsed, is determined from.” (Id.) We are not persuaded by Appellant’s argument and find a preponderance of the evidence supports the Examiner’s findings. (Final Act. 4). We find Fischer’s conversion of a user’s temporary identity to a permanent identity after a period of time has elapsed teaches, or at least suggests, the disputed limitation “determining that the player is a new player based on a predetermined definition regarding length of time since initial rendered in a broad variety of ways. The links illustrated may also be rendered in different ways. The software that enables functionality may be coded in many different ways as well. Design of web sites is notoriously well known to be variant. The invention in its broadest aspects may be enabled and practiced in many different ways. The invention is defined by the scope of the claims that follow.” (Emphasis added.) 4 Appeal 2017-006360 Application 12/701,214 registration to the web site,” as recited in claim 1. Given that Appellant has not pointed to a definition in the Specification for any of the claim terms, we find no definition recited in the contested claim language which precludes the Examiner’s broader reading. See n.2, infra. We additionally note Appellant has not filed a Reply Brief to rebut the Examiner’s responsive clarifications and findings in the Answer. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Contested Limitation L2 of Claim 1 Contested limitation L2 recites: “determining, through tracking game-playing activity at the gaming web site of the new player, genre of virtual reality games preferred by the new player.” (Claim 1 (emphasis added).) The Examiner finds Smith teaches determining a preferred genre though game-playing activity. (Final Act. 3; Ans. 3 (citing Smith 8:15—46, 8:65-9:2).) Appellant contends: “the portion of col. 8 of Smith, relied upon by the Examiner, discusses parameters, and the parameter of genre is selected by the user, and not determined by the system, as claimed.” (App. Br. 7.) We are not persuaded by Appellant’s argument, because it is not commensurate with the broadest reasonable interpretation of the scope of limitation L2 of claim 1. See n. 1, supra. This limitation does not recite a determination made by a system, nor does the scope of the claim limit who or what performs the steps or acts recited in method claim 1. We find a preponderance of the evidence supports the Examiner’s findings (Final Act. 3; Ans. 3), because Smith’s video game parameters 5 Appeal 2017-006360 Application 12/701,214 include game genre and players’ rating of games, which we find teach or suggest contested limitation L2. (Smith 8:15—46, 8:65—9:2) We additionally emphasize that ‘“the question under 35 U.S.C. [§] 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.’” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F. 2d 804, 807-08 (Fed. Cir. 1989); see also MPEP § 2123. (emphasis added). Therefore, on this record, we are not persuaded the Examiner’s reading of contested limitation L2 on the corresponding cited features of Smith is overly broad or unreasonable.2 Contested Limitation L3 of Claim 1 Contested limitation L3 recites: “tracking successes of other new users playing specific virtual reality games within the determined genre.” (Claim 1 (emphasis added).) The Examiner finds Smith’s users’ rating of online games (col. 8, 11. 32—34) teaches, or at least suggests, tracking “successes.” (Final Act. 3; Ans. 4.) Appellant contends: “Appellant does not believe that one with skill in the art understands that accepting data of a player while rating or recommending a game equates to tracking successes of new users playing specific reality games.” (App. Br. 7.) 2 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (internal citation omitted). 6 Appeal 2017-006360 Application 12/701,214 However, as a matter of claim construction, Appellant has not pointed to a definition of “successes” in the Specification or claims that would preclude the Examiner’s broad but reasonable reading. (Final Act. 3; Ans. 4.) Nor has Appellant argued a particular definition. It is the Appellant’s burden to precisely define the invention, not the PTO’s. Morris, 127 F.3d at 1056. Although a patent applicant is entitled to be his or her own lexicographer of patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The Applicant must do so by placing such definitions in the Specification with sufficient clarity to provide a person of ordinary skill in the art with clear and precise notice of the meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).3 Here, the Examiner’s interpretation for the claim term “successes” is not inconsistent with the context of “game-playing success” as described in Appellant’s Specification. (See e.g., Spec. 2,1. 15.) Therefore, on this record, we are not persuaded of error regarding the Examiner’s finding that Smith’s description of ratings of games played by users, teaches, or at least suggests, “successes” as recited in claim 1. (Ans. 3—5.) 3 Our reviewing “court has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). 7 Appeal 2017-006360 Application 12/701,214 Contested Limitation L4 of Claim 1 Contested limitation L4 recites: “presenting navigation links in an interactive display to the new user to the specific virtual reality games having successes with the other new users and having genre the same or similar to the genre preference determined for the new user.” (Claim 1 (emphasis added).) The Examiner finds the disputed limitation of “presenting navigation links” is taught or suggested by Smith’s teaching of a user being sent a delivery of links to the recommended games. (Final Act. 3; citing Smith col. 8,11. 2—9; col. 9,11. 14—28; Ans. 5.) The Examiner further finds Smith’s clicking on a demo to download or begin the game also teaches a “navigation link” to that game. (Id.) Appellant contends: “[tjhere is no teaching or suggestion that the demo is a navigation link, in fact the portion of the art specifically teaches that the demos are downloaded to the player’s console, therefore, no navigation would be necessary.” (App. Br. 8.) However, we find a preponderance of the evidence supports the Examiner’s findings, because we find Smith’s delivery of links to the recommended games teaches or at least suggests limitation L4. (Smith 11:48-56). See Merck, 874 F. 2d at 807-08 (Fed. Cir. 1989). Contested Limitation L5 of Claim 1 Contested limitation L5 recites: “providing a textual description of individual ones of the specific games proximal the navigation links presented, the textual description including an indication of the genre.” (Claim 1 (emphasis added).) 8 Appeal 2017-006360 Application 12/701,214 Appellant urges the claim term “genre” is to be given patentable weight throughout the claim and is not “merely descriptive to be ignored.” (App. Br. 8.) We find Appellant’s contention regarding contested limitation L5 turns on the particular informational content of nonfunctional descriptive material (NFDM), where the recited provided “textual description . . . including an indication of the genre” is merely data intended for human perception (e.g., on a display) by a “user.” (Claim 1.) Therefore, we conclude limitation L5 is directed to conveying a message or meaning to a human reader. The Patent Trial and Appeal Board (PTAB) has provided guidance in decisions regarding claims that differ from the prior art based only on NFDM which is data. See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer- implemented product or process”); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff d, 191 F. App’x 959 (Fed. Cir. 2006) (Rule 36) (“[Nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art”); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious”). The Manual of Patent Examining Procedure (MPEP) guides that “[ejvidence against a functional relationship” may exist, for example, “where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product.” MPEP 9 Appeal 2017-006360 Application 12/701,214 § 2111.05 (I.)(B.) (9th Rev. 07.2015, revised Nov. 2015) (emphasis omitted). This reasoning is applicable here regarding the contested provided “textual description . . . the textual description including an indication of the genref as recited in limitation L5. (See Claim 1.) Because Appellant’s contention regarding limitation L5 turns on the informational content of NFDM merely intended for human perception by a user (e.g., viewed on a display), on this record, we are not persuaded of error regarding the Examiner’s broad but reasonable claim interpretation, underlying factual findings, and ultimate legal conclusion of obviousness. For at least the aforementioned reasons, on this record, and based upon a preponderance of the evidence, Appellant has not persuaded us the Examiner erred in finding that contested limitations LI—L5 of claim 1 would have been taught or suggested by the cited combination of Smith and Fischer. (See Final Act. 2-4.) Accordingly, we sustain the rejection of representative independent claim 1, and the rejection of grouped independent claim 7, which falls with claim 1. See Grouping of Claims, supra. We also sustain the rejection of dependent claims 3—5, 9, and 10, not argued separately. See 37 C.F.R. § 41.37(c)(l)(iv). 10 Appeal 2017-006360 Application 12/701,214 DECISION We affirm the Examiner’s decision rejecting claims 1, 3—5, 7, 9, and 10 under pre-AIA 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 41.50(f). AFFIRMED 11 Copy with citationCopy as parenthetical citation