Ex Parte Bethke et al

Patent Trial and Appeal Board

Jul 21, 2016

13244773 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/244,773 09/26/2011
107322 7590 07/25/2016
Schwegman Lundberg & Woessner I Zynga
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Erik Paul Bethke
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.
3291.004US3 9671
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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):
slw@blackhillsip.com
uspto@slwip.com
patents@zynga.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK PAUL BETHKE, SCOTT KOENIGSBERG,
AMITT MAHAJAN, and MATTHEW ADAM OCKO
Appeal2014-003488
Application 13/244,773
Technology Center 3600
Before: GEORGE R. HOSKINS, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-19 and 21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The claims are directed to providing rewards to users based on their
levels of influence over other users. See Spec. (Title). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
Appeal2014-003488
Application 13/244,773
1. A computer-implemented method comprising:
determining a level of influence of a user of a system over other
users of the system;
selecting the user based on the level of influence of the user of
the system over the other users of the system being greater
than a level of influence of an additional user of the system
over the other users of the system;
determining, using at least one processor of a machine, an
incentive reward that is to be provided to the user based on
a success of the user at influencing the other users to
perform a location-based action within a time period, the
determining of the incentive reward being based on the
level of influence of the user;
determining the success of the user at influencing the other users
to perform the location-based action; and
providing the reward to the user based on the determining of the
success of the user at influencing the other users to
perform the location-based action.
Appeal Br. 16 (Claims App.).
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Walker US 2003/0032476 Al Feb. 13,2003
REJECTION
Claims 1-19 and 21 are rejected under 35 U.S.C. 103(a) as
unpatentable over Walker.
ANALYSIS
Appellants argue independent claims 1, 7, and 13 as a group, with no
separate arguments for any of the dependent claims. See Appeal Br. 11-14.
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Application 13/244,773
We take claim 1 as representative, and claims 2-19 and 21 stand or fall with
claim 1.
The Examiner finds that Walker discloses all the features in claim 1
except "selecting the user based on the level of influence of the user of the
system over the other users of the system being greater than a level of
influence of an additional user of the system over the other users of the
system." See Final Act. 5-6 (quoting claim 1 ). Nonetheless, the Examiner
further finds that Walker teaches "factors used to determine offers for game
players including the friends of the player, players' success in playing games
relative to one or more other players (e.g.[, a] player is one of the 100 best)
used to determine offers." Final Act. 6-7. The Examiner reasons that it
would have been obvious to "to modify Walker to include selecting the user
based on the level of influence being greater than a level of influence of an
additional user of the system." Final Act. 7. As reasoning for this
modification, the Examiner states:
Walker already teaches that one factor used to determine which
offers to select and whom to provide those offers to based on the
''friends" of the game player. As such, Walker is already
selecting game players according to their level of social
influence. Therefore, common sense dictates that selecting users
with greater levels of influence as claimed would result in
potentially more friends completing required actions and thus,
potentially higher revenues generated for both the gaming
network as well as the location-based parties (e.g.[,] retailers or
subsidizers in Walker), of which is indicated by Walker as a need
in the art as per paragraphs [ 0011-13] and [ 0024-3 2]). Therefore,
it would have been obvious for Walker to implement as such,
particularly because Walker already looks at game players
relative to others (e.g. player's game performance relative to
other players).
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Application 13/244,773
Final Act. 7-8 (emphasis added). Thus, the Examiner finds that Walker
teaches using friends of a game player and a player's performance as factors
in choosing which offers to provide to the player, and the Examiner modifies
Walker based in part on this teaching.
Appellants contend that Walker does not teach selecting a user to
receive an offer as found by the Examiner. 1 Appeal Br. 11. In this regard,
Appellants state, "Walker discusses selecting an offer for a player based on
characteristics of the player. Walker does not teach or suggest selecting a
user to receive an offer, much less selecting a user based on a level of
influence of the user, as previously conceded by the Examiner." Appeal Br.
13 (emphases removed).
Regarding selecting a user based on the level of influence of the user,
the Examiner states, "Walker teaches that various factors and characteristics
of the user/game player are used to determine offers that would be presented.
Specifically, one of these characteristics used in determining an offer
includes 'friends of the player' as per [0163-165]." Ans. 5. The Examiner
1 Appellants contend that the Examiner did not address Appellants'
arguments made during prosecution. See Appeal Br. 9-10; see also Reply
Br. 2--4. If the Examiner failed to follow procedural requirements of the
Manual of Patent Examining Procedure (MPEP), Appellants' remedy is by
way of petition to the Director, not appeal to the Board. The Board has no
supervisory authority over the procedures used by patent examiners during
examination. In ex parte appeal cases, the Board addresses substantive
issues concerning rejections consistent with patent law, rules, and case law,
which are within its jurisdiction and raised by the Appeal Brief and Answer.
See, e.g., 37 C.F.R. § 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.").
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Application 13/244,773
finds that Walker's use of the "friends of a player" as a factor in granting
offers corresponds to determining a level of influence of a user over other
users. Ans. 5. The Examiner also finds that Walker uses the relative
performance of a player as a factor in deciding whether a particular offer is
provided inasmuch as Walker determines whether a player is one of the 100
best players. Ans. 5. The Examiner states, "the obviousness rejection was
made for the specific limitation of 'the level of influence of the user ... being
greater than a level of influence of an additional user of the system over
other users."' Ans. 6.
In reply, Appellants assert that Walker uses the above-noted
characteristics noted by the Examiner "in determining which offer to present
to a player, whether a particular subsidizer would be interested in acquiring
a particular player as a customer, and/or what activity or benefit to include
in an offer to be presented to the player." Reply Br. 6 (citing Walker i-f 72)
(emphasis added). Noting that Walker does not use the word "influence,"
Appellants contend "Walker does not teach or suggest that the
characteristics may be used to 'determin[ e] a level of influence of a user of a
system over other users of the system,' as recited in each of independent
claims 1, 7, and 13." Reply Br. 6.
We are not persuaded by Appellants' arguments on these points.
Appellants' Specification states:
The game networking system 120b may determine a players '
level of influence based on various factors, including the number
of in-game or out-of-game connections of the player (e.g., in-
game friends of the player with respect to a computer-
implemented game executing on the game networking system
120b or out-of-game connections of the player with respect to the
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Appeal2014-003488
Application 13/244,773
social networking system 120c ), how successful the player has
been at influencing people (e.g., his in-game or out-of-game
connections) to perform location-based actions, how well the
player has performed within the computer-implemented game
(e.g., a number or magnitude of experience points, levels, high
scores, or other achievements awarded to the player or a player
character of the player).
Spec. i-f 180 (emphases added). Thus, influence may be determined based on
the number of friends of a player or on how well the player has performed in
the game. As noted by the Examiner, "characteristics used [by Walker] to
determine offers for game players include friends of the player, [and]
players' success in playing games relative to one or more other players."
Final Act. 5 (emphasis added). In this regard, Walker states, "[e]xamples of
characteristics of a player that may be utilized in determining an offer
include, but are not limited to ... the player's success in playing games
relative to one or more other players (e.g., is the player one of the 100 best at
Scrabble[TivIJ?)." Walker il 165. Thus, consistent with how the term
"influence" is used in Appellants' Specification, Walker teaches using a
player's influence relative to other players in determining an offer.
Further, contrary to Appellants' assertion that Walker does not teach
selecting a user to receive an offer and instead "discusses selecting an offer
for a player based on characteristics of the player" (Appeal Br. 13), Walker
provides an offer to a player based on the player's characteristics (see, e.g.,
Walker i-fi-1 163-165). This corresponds to selecting the player, as found by
the Examiner (see Final Act. 7-8). In other words, Walker chooses amongst
players, such that certain players receive a particular offer, and other players
do not receive that offer.
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Application 13/244,773
Appellants assert that the Examiner's rationale for modifying Walker
as proposed is "pure speculation," and "the Examiner's assertion that the
mere discussion of the existence of 'characteristics of a player' that include
'friends of a player' teaches or suggests 'determining a level of influence of
a user of a system over other users of the system,' as recited in each of
independent claims 1, 7, and 13 does not defy dispute." Reply Br. 6-7.
We are not persuaded by Appellants' arguments on this point. First, as
discussed above, the Examiner correctly finds that Walker teaches selecting
a player based on certain characteristics (e.g., the player's friends and the
player's game performance), contrary to Appellants' assertion that "Walker
does not teach or suggest selecting a user to receive an offer" (Appeal Br.
13). Further, the Examiner's rationale is not required to "defy dispute."
Rather, there must be
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [T]he analysis
need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). As discussed above, Walker
uses "influence" (the relative game performance of a player as well as the
player's friends) in determining whether to provide particular offers to that
player. The Examiner modifies Walker to make its selection based on the
player's level of influence being greater than a level of influence of another
user. As Walker teaches a comparison to other players (by disclosing
relative game performance) and teaches that the player's friends are
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Application 13/244,773
considered, we find the Examiner' rationale to select players with "greater
levels of influence" (see Final Act. 6-8) to be supported by rational
underpinning. See Ans. 5 (stating "a player with 100 friends would
reasonably be understood to have a higher level of influence than a player
with only 10 friends, particularly when considering the activities and actions
of a player and their friends are tracked in Walker in order to determine the
benefits").
Appellants next contend that modifying Walker as proposed by the
Examiner would change the principle of operation in Walker as well as
render Walker unsuitable for its intended use. See Appeal Br. 13-14. In this
regard, Appellants assert
Walker operates under the principle of "aiding players
who do not do well when playing a game on a Web site such that
they are not discouraged from returning to the Web site."[] In
contrast, each of independent claims 1, 7, and 13 recites, in part,
"select[ing] the user based on the level of influence of the user
of the system over the other users of the system."
Appeal Br. 13 (citing Walker i-f 13) (internal citation omitted) (emphasis
added). Further, Appellants state, "to change Walker to select users to
receive rewards based on their level of influence instead of how well they
are doing when playing a game would be to change the principle of
operation of Walker." Appeal Br. 13. Appellants contend, "[i]f Walker was
modified to select players to receive[] rewards based on their level of
influence instead of how well they are doing in the game, Walker would not
be suitable for its intended purpose of preventing players who are not doing
well from being discouraged from returning to the Web site." Appeal Br.
13.
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Application 13/244,773
Appellants also contend that modifying Walker to select a user
because his level of influence over the other users is greater than a level of
influence of an additional user limits the players to which benefits are
offered. Reply Br. 5. Appellants contend this "is contrary to the goal of
Walker of 'helping entities that manage gaming Web sites to obtain
additional revenue without simply raising entry fees and thus risking
alienating customers.'" Reply Br. 5.
We are not persuaded by Appellants' arguments on these points. As
noted above, Walker may provide an offer to a player based on the player's
success in a game, such as status as one of the 100 best players of that game.
See Walker i-f 165. Accordingly, Appellants' characterizations of Walker's
principle of operation and intended purpose are overly narrow. Further,
Appellants fail to explain persuasively how selecting users based on their
relative level of influence over other uses is in any way "contrary to the
goal" of Walker. As for the possibility of undesirably limiting the players
receiving offers, as discussed above, Walker chooses which players receive
particular offers based on certain characteristics. Accordingly, even before
the Examiner's proposed modification, Walker limits the number of players
receiving a particular offer. Further, Walker states, "[n]ote that an offer may
not be determined for every player at a gaming Web site. For some players,
the central computer 105 may determine not to output an offer." Walker
i-f 169. Thus, Walker teaches limiting the number of players receiving offers
in general. Consequently, Appellants' arguments are not congruent with
Walker's disclosure.
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Appeal2014-003488
Application 13/244,773
We have considered all of Appellants' arguments for the patentability
of claim 1, but we find them to be unpersuasive. Accordingly, the
Examiner's rejection of claim 1 as unpatentable over Walker is sustained,
and claims 2-19 and 21 fall with claim 1.
DECISION
The Examiner's rejection of claims 1-19 and 21 is affirmed. 2
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
2 Should there be further prosecution of this application, the Examiner may
wish to consider reviewing all of the claims for compliance under 35 U.S.C.
§ 101 in light of the most recent Patent Office guidance on § 101.
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